Alice Experts and the Return of Second Pair of Eyes to the PTO

By Gene Quinn
July 24, 2016

Queen of Hearts

The Queen of Hearts from Alice in Wonderland, famously known for frequently shouting: “Off with his head!”

“I have not yet run into an Art Unit that does not have someone designated as an Alice expert,” explained JiNan Glasgow of Neopatents. “They won’t always tell you who it is, but they all say they have an Alice expert.”

This was a revelation that came out during our preparation call for a webinar I will be hosting on Thursday, July 28, 2016. The title of the webinar, Overcoming Alice: The Light at the End of the Tunnel, will begin at 1pm ET and run for 1 hour. Registration is free.

While discussing the importance of doing interviews in every single case, Glasgow explained that although it is not something that has been generally publicly disclosed by the Patent Office, “in every art unit examiners confirm that there is an examiner within the Art Unit who is the Alice expert and that examiners have said that even if they are ready to allow a case, nothing can be allowed without the approval of that Alice expert.” This applies to TC 3600 and beyond according to Glasgow.

If what examiner after examiner has told Glasgow is correct this means there is a return of so-called “second pair of eyes” review to the Patent Office.

Those who have been involved in patent prosecution going back 12-15 years will recall that after the initial rush of business method patents began, in about 2002, the Patent Office instituted what they referred to as “second pair of eyes” review. Under no circumstances could a patent be issued on anything that related to a computer-implemented invention unless and until it had been approved by two separate patent examiners. It certainly sounds like that is what is happening once again.

Second pair of eyes review wreaked enormous havoc on the patent system, and was one of the primary reasons patent pendency got out of control and the backlog of patent applications grew to well over 1 million unexamined patent applications. It is not at all an exaggeration to say that second pair or eyes review nearly broke the Patent Office and crippled the U.S. patent system. The fact that second pair of eyes, or some Alice equivalent or hybrid, has returned to the Office is disheartening.

“Of course, if the examiner assigned to the case decides not to issue the claims the Alice expert does not get involved,” Glasgow explained.

In some cases, it can be helpful to invite the Alice expert into the conversation during prosecution, for example in a telephonic interview, if it does not appear that progress is being made with the examiner. It can be helpful to ask the examiner if the Alice expert in their Art Unit would be available to participate, if only to streamline the process and determine if there is any likelihood of success at all within that particular Art Unit.

overcoming-alice-ReedThe return of second pair of eyes to Alice affected Art Units could explain why so many applicants seem to believe that the SAWS program (short for Sensitive Application Warning System) continues despite announcements from the USPTO that it has been discontinued. When a process is in place requiring multiple reviews (official or de facto) before allowance, even if you are lucky enough to be working with an examiner who is inclined to allow your patent claims there is no guarantee that you will get your claims allowed. The ultimate decision maker may not be the examiner you are working with, even if you are working with a primary examiner. Of course, primary examiners are supposed to have decision-making authority. Instead, the final decision maker, whether officially or informally, is the Alice expert assigned to the Art Unit where you find your application assigned. This suggests it is very important for applicants and patent practitioners to attempt to secure the presence of the Alice expert during any interview, particularly when roadblocks have been encountered or you are in an Art Unit with a particularly low allowance rate.

Despite the return of second pair of eyes review, we do still know that the Patent Office continues to allow software patents, albeit in smaller number than they should. There seems to be no favoritism being played, with large multi-national corporations sometimes suffering the reopening of prosecution after a successful appeal or after filing an appeal brief, for example. For patent practitioners the randomness of patent prosecution means that advanced strategies need to be employed and a one-size-fits all approach to prosecution simply will not work.

On Thursday, July 28, 2016, at 1pm, JiNan Glasgow, John White and I will discuss the problems facing patent attorneys and their clients, as well as various strategies to attempt to get to “yes” in an Office that increasingly seems intent on saying “no.” Click here to register to join us.

Among other things, we will discuss the essential nature of doing interviews when prosecuting an application facing an Alice rejection, drafting applications to steer away from Art Units with low allowance rates and reputations for being unreasonable, lessons from Enfish and BASCOM, and what to do when you get trapped and it seems clear the examiner is simply not going to allow anything.

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 64 Comments comments.

  1. Anon July 24, 2016 11:58 am

    This thread appears to be in sync with the following comment from the Prosecution Reopened thread:

    =-=-=

    Prizzi’s Glory,

    SAWS was ended. What you may think you see as SAWS procedures continuing to be followed are not SAWS.

    That being said, the problem with SAWS did not go away with the Office public announcement of ending SAWS.

    This is because the Office volunteered an admission that should have been seized by the public and additional scrutiny should have been applied. The public abandonment of SAWS was done in the hopes that attention would go elsewhere, and that ploy has largely succeeded.

    To wit, that (most likely inadvertent) statement was the admission that SAWS was merely one of some unnumbered like-situated Star-Chamber like programs being run undocumented (at least to the public) and uncontrolled, completely outside of the purview of both the public and those directly affected by such programs (which violates the law in and of itself, given that ALL examination is supposed to be done solely on the written record).

    Your argument is not with SAWS.

    Your argument is with the Office that employs the reasons why SAWS was antithetical to justice and the law in the manner of shadow politics unknown and unknowable to those being affected.

    It should also be to no one’s surprise that many of the vocal apologists for the SAWS and SAWS-like programs are exactly the same ones who have an anti-business method and anti-software patent agenda. These generally are also the same ones who would champion an unrestricted Supreme Court to not be held by statutory law, circumscribing the Constitutional chain of command for authority of patent law.

    These are not coincidences.

    =-=-=

    I would add that any version of “Second Set of Eyes” may – or may not – be “new” in that we do not – and in truth, cannot – know just how many Shadow programs are in operation at the Office.

    No matter what you call it, when you have operations behind closed doors making decisions on an application, you are violating the spirit if not the letter of 37 CFR 1.2, which in pertinent part states:

    The action of the Patent and Trademark Office will be based exclusively on the written record in the Office.

  2. step back July 24, 2016 2:44 pm

    Cool.

    I’m planning to outsource my second pair of virtual reality eyes work to Russia.

    It seems that they have a glut of believers over there.

    (Them that believe the Yanks are actually self-destructing their own patent system in order to give a fair and balanced chance for others to take over leadership of the free technology world.)

    We’re a generous people you know.

    What’s ours is yours, what’s yours is yours.
    Gotta love our supreme fearless leaders and them who so willingly follow them off the edge of the cliff.

    http://patentu.blogspot.com/2016/07/welcome-russcinites-dah-it-is-true.html

  3. Prizzi's Glory July 24, 2016 6:05 pm

    @Anon #1, As I pointed out in my comment responding to you on the other thread, I am not so worried about the name of the secret program, but I am concerned about what Examiners and APJs are doing under the secret program because the transgression is far worse than merely violating 37 CFR 1.2: BUSINESS TO BE TRANSACTED IN WRITING.

  4. Prizzi's Glory July 24, 2016 6:24 pm

    I just don’t see how a patent prosecutor can effectively work to overcome a § 101 rejection if he is not directly responding to Office Actions from the § 101 expert examiner.

  5. Night Writer July 25, 2016 10:45 am

    The problem is that Alice is not law, but equity. Alice is just outrageous. No one even admits that Alice modifies –at least–KSR. A judge can just invalidate you under significantly more and do the 103 analysis all by themselves. Just outrageous.

  6. Gene Quinn July 25, 2016 10:49 am

    Night Writer (and anyone)-

    What do you make of my argument in the article that it is impossible for a claim that has passed muster under 103 to be abstract and defective under Alice?

    Here the Board reversed all of the 103 rejections made by the examiner. How can something that is non-obvious be abstract? If you can even begin to conduct an obviousness inquiry that has to mean as a matter of fact and law that the claims are NOT abstract.

    Thoughts?

    -Gene

  7. Edward Heller July 25, 2016 11:40 am

    Gene, can you give us a link to the argument you are making? Is this focused primarily on step two of Alice?

    I was just thinking back to Bilski. The claims there were directed to a method for balancing risk and had a number of detailed dependent claims, all of which were found to be ineligible. I believe the dependent claims laid out the mathematical algorithms involved in detail.

    What we can learn from this case is that the level of detail of the business method involved has nothing to do with eligibility to the extent that the detail is directed to mathematics or logic.

    However, we have had later cases, for example Versata, where the detailed data processing method was described and claimed. Even though the PTAB and the Federal Circuit both held the claims to be in eligible under 101, I believe they should have been sustained because they were not directed to logical improvements of calculating price, but to improvements in data processing.

  8. Curious July 25, 2016 11:42 am

    How can something that is non-obvious be abstract?
    Being obvious (or not) is an observation about the prior art and what it would have suggested to one having ordinary skill in the art. While being directed to a fundamental economic practice long prevalent in our system of commerce may be one way to identify an invention directed to an “abstract idea,” it isn’t the only way. As such, an invention that is still directed to an abstract idea can still be rejected under 101 even if the combination is not obvious.

    101 and 103 don’t look at the same thing. Thus, you should be able to get different results

  9. Curious July 25, 2016 11:49 am

    As to the “second pair of eyes,” one of many (many) questions is what makes them experts?

    The Supreme Court states “we tread carefully in construing this exclusionary principle lest it swallow all of patent law.” From my experience (and evidenced by the near 100% application of the Alice-type 101 rejections in the business method art units of TC 3600), these experts are not treading carefully.

    These second set of eyes agreeing that all of these applications (being rejected under 101 based upon Alice) can only be employing a broad-brush approach to Alice since “abstract idea” identified in Alice was very limited in scope. This broad-brush approach is in direct contradiction to the approach described by the Supreme Court. As such, these so-called experts are blatantly misrepresenting the law (although they are following the wishes of their masters by killing them all).

  10. Appearance of ... July 25, 2016 12:08 pm

    @5 Gene,

    To me, your reasoning looks a lot like the reasoning used in the recent Federal Circuit Bascom case.

    But until the USPTO implements Bascom as an examiner guidance, does Bascom really exist?

  11. Prizzi's Glory July 25, 2016 12:23 pm

    @Curious, #9. Good question. The PTO acknowledges that examiners should have some expertise in the art of the patent applications they examine.

    The abstract idea question belongs to epistemology and in the case of effective computability to mathematical logic.

    Does the PTO have many epistemologists or mathematical logicians on the staff?

    While I believe that an examiner could learn enough epistemology to judge § 101 eligibility in 5 days and that passing the patent bar is considerably more complex, the PTO would have to decide that teaching examiners some basic formal epistemology is important and desirable.

    Of course, if § 101-eligibility were no longer a black art, it could not be used as a magic wand to kill patents and patent applications.

  12. step back July 25, 2016 1:21 pm

    @6 Gene,

    Yeah I’m going to have to side with your detractors on this one.
    “Obviousness” is in the subjective eye of the beholder.
    Just like “abstractness” is in the eye of the beholder.

    Per Alice (of wonderland -actually it was Humpty who figured this one out:) a word can mean anything I want it to mean.

    Apparently for a majority of our supreme fearless leaders, everything is “obvious” and “abstract” too because you can walk into any Silicon Valley coffee shop, spout your “idea” to any 2nd year undergraduate, utter the magic words “Apply it” and it will be so before the weekend is done.

    So how can one find (non)obviousness and abstraction at the same time? Easy. Give the problem to a 2nd year undergraduate and utter the magic words.

    Your question poses no cognitive dissonance problem for them who truly understand obviousness (to one skilled in a useful art) and abstraction. 😉

    http://patentu.blogspot.com/2016/07/welcome-russcinites-dah-it-is-true.html

  13. Appearance of ... July 25, 2016 2:38 pm

    Note that my previous comment:

    “But until the USPTO implements Bascom as an examiner guidance, does Bascom really exist?”

    was originally marked as “sarcastic” using a pseudo-hypertext type sarcasm marker.

    Alas, the “sarcastic” markings were stripped out by the blog system software.

    I am, in fact, worried that the USPTO will be slow to implement Bascom as an examiner guidance. Perhaps they will ignore it altogether.

  14. Gene Quinn July 25, 2016 4:44 pm

    Edward Heller-

    Sorry, I got my threads confused. I published an article earlier today where I asked how it is possible that something that has been concretely claimed enough to be evaluated for non-obviousness (and determined by the Board to be non-obvious) can be abstract.

    See: http://www.ipwatchdog.com/2016/07/25/anatomy-bogus-alice-rejection/id=71192/

    I’ve been thinking about this for a while and I’m looking for thoughts, comments, suggestions. This has bothered me for a while. My thinking harkens back to the way the Kappos Administration told examiners to handle 101 after Bilski. Push past 101 if at all possible and use 101 only in extraordinary circumstances. Get to 112 and if there is something there then it would really have to pass 101 muster. So I’m going another step here. A lot of times when prosecution is reopened it is after the Board has reversed the examiner on 103 rejections, so the claims are non-obvious. How can something that is non-obvious be abstract? If it is abstract it would defy comparison and evaluation.

    -Gene

  15. Paul Cole July 25, 2016 5:28 pm

    Readers may care to note that the relationship between 101 aand 103 was a major discussion point in my brief in the Sequenom case before the Federal Circuit

    http://patentdocs.typepad.com/files/cole-brief.pdf

    and in the brief before the Supreme Court filed by CIPA, and of which I was the lead author

    http://www.kayescholer.com/docs/sequenom-certiorari-chartered-institute-of-patent-attorneys/_res/id=File1/15-1182.amicus.final.CharteredInstitute.pdf

    In particular, if the claimed features produce a new function or result which is evidence of unobviousness under section 103, it is strongly arguable that this evidence should also support eligibility under Section 101.

  16. Alex in Chicago July 25, 2016 5:33 pm

    Gene,

    The answer lies in two things:
    1. A section 112 that is essentially useless in substantively rejecting applications. Sure there are examiners that will issue a “gotcha” rejection after “CTRL-F”ing language, or find a vague antecedent basis issue, but they cannot issue a 112 rejection for language that does not “particularly point out and distinctly claim the invention”.
    2. Oftentimes abstractions/exceptions are not, themselves, indefinite (such as Pythagorean’s theorem), but there is no findable motivation for combining the abstraction into the whole, and some ALJs are bad at handwaving motivations.

    Thus, we get to the reality that modern 101 jurisprudence is stepping into voids created because of previous judicial decisions in other areas of the law. Much like how “Substantive due process” law under the 14th Amendment exists because the Slaughterhouse cases eviscerated the “Privileges and immunities” clause.

  17. Anon July 25, 2016 6:11 pm

    I think that the answer is even simpler:

    One does not even get to apply 103 to something that does not pass 101.

    102/103/112 are requirements after you pass through the front gate of 101.

    How many have noticed those with no understanding of patent law attempt to use “examples” of the literary sense (or other fine arts)? The parade of horribles goes like “if we let X pass 101, the. It would be like letting books through – and every little change would pass “obviousness” and there would be a bedlam of such patents.

    Of course, no such thing would happen if 101 were treated appropriately and NOT as any type of “proxy” for 103.

    All of this makes sense as well if one were to recognize exactly what happened in the Act of 1952 and what Congress did in reaction to the preceding age of anti-patent Supreme Court rulings.

    But let’s return to Gene’s quandary.

    I believe that Gene’s dilemma arises because the claim survives a 103 challenge. I think that Gene innately is thinking that to even get to that point of being challenged on a 103 basis – that is, by a combination of prior art items that speak to the section of law that 103 controls, that that combination AND the claim must have already “walked through the gate.”

    After all, it simply does not make any type of legal logic to say “that piece of music is non-obvious.”

    Unfortunately, the wax nose of 101 has been mashed beyond recognition and is used as a proxy of 103 (or even as some new conglomerate proxy of 103/112).

    Those that would have the law of 101 follow the design of Congress and not interject “judicial policy” would easily be follow the straight forward two parts of what 101 speak to:

    1) utility of a non-fine arts nature
    2) loosely fitting into one or more (very) broad statutory classes.

    That is it.

    Once that view is taken, then the “quandary” disappears since the 101 bar is meant to be fairly easy to pass, and then the reconfigured pre-1952 single paragraph can be properly followed into (and through) each of the new and distinct sections of law that Congress put together from that pre-1952 single paragraph.

    Further, ALL of the gobbledygook of “semantic meaning or “epistemological” attempts at “divining meaning” is nothing but dust kicking and post facto justifications for turning judicial activism into some type of post-legislative “proper” law-making.

    Bottom line is that patent law is statutory law, not judge-made or common law; and every “layer” of attempting to make 101 somehow more than the two simple things I have listed only create more havoc.

  18. Anon July 25, 2016 6:17 pm

    Alex in Chicago,

    You may not be aware of the sub silento approval that comes along with the “gap filling” view.

    As per my last post, this non-statutory law effect is decidedly against the Constitutional separation of powers and the direct and explicit delegation of power solely to one single branch of the government.

    There just is not any room for the type of void-filling judicial authority that your position allows (and perhaps requires). This is a critical point in understanding patent law: it was never meant to be common law; and while Congress did indeed “punt” early on and did provide authority to the judiciary to set the meaning of the word “invention” through the power of common law evolution, that power and authority was removed with the Act of 1952.

  19. Edward Heller July 25, 2016 9:55 pm

    Alex@15, I think you are partially right, but only partially. Abstractness in the traditional sense, the sense we got from cases such as Le Roy v. Tatham and O’Reilly v. Morse, includes, if not exactly corresponds to failing to claim the invention with sufficient detail – at too high a level of abstraction. I see from Gene’s article today that he thinks of abstractness in exactly this way.

    But if the detail is in something nontechnical as it was in Bilski, for example by adding enormous amounts of detail of the mathematics, then the claim is not detailed in the sense required by Alice, which requires an inventive application, which means something new or improved in what we would refer to as technology, namely a machine, manufacture or composition.

    We have had some good discussions about the way the Europeans approach this issue and they approach exactly this way where the level of detail has to be in the tactical as opposed to the nontechnical.

  20. Edward Heller July 25, 2016 10:07 pm

    Gene, I looked at your article and the remanded application; and I agree with you that that application which you discuss should not have received a 101 rejection because it provided an improvement in the technical way a message was communicated from a wireless device across the Internet.

    As a further response, please look at Alex’s post at 15 and my response at 18. It appears to me, and consistent with the practice in Europe, that the level of detail necessary to pass Alice step two has to be in the technical aspects of the invention as opposed to the non-technical aspects of the invention. Thus in Bilski, adding a lot of detail to the mathematics, which is considered to be non-technical, added nothing.

    So if this is true, is not really important whether there is novelty in the claimed invention, it is important that the novelty be in something technical, or at least that something technical be improved by the non-technical aspects of the invention. For an example with respect to the latter, consider the disk drive servo that has to determine the least-time acceleration deceleration profile to move the head/arm actuator from one track to another, distant track. In modern disk drives, all this is done through improved servo algorithms in software. Thus the real innovation with respect to this drive servo systems is not in the mechanics of a disk drive, but in its software algorithms, which can comprise a whole lot of mathematics.

  21. step back July 26, 2016 12:48 am

    @14 Gene:

    I respectfully suggest that you have the logic backwards.

    If something is (yes) obvious to one skilled in the art (a useful art) then in THAT case it cannot be “abstract” because an ordinarily skilled artisan would not contemplate abstractions because the likelihood of successful physical implementation of an abstraction is nill.

    On the other hand, if something is nonobvious, then it could be either of nonabstract or abstract.

    An example of a nonobvious abstraction might be a new string theory of how the universe is put together. It would not be obvious and it would at the same time be purely in the realm of mathematical theory with no apparent useful application (no 101 utility).

  22. formulae July 26, 2016 7:45 am

    Gene, imagine Pythagoras never existed and I discovered a^2+b^2=c^2.

    Today I file a patent application claiming: A computer configured to calculate c by taking the square root of (a^2 +b^2), wherein c is the hypotenuse of a right triangle and a and b are the other sides of the right triangle.

    No one knew of this formula before, so there’s no prior art. It’s non-obvious. But it’s abstract!

  23. Gene Quinn July 26, 2016 8:26 am

    Formulae-

    Actually, your example really proves my point. You try and give an example of a mathematical equation, which is not patentable, but I believe you have failed. What you have described is a calculator (i.e., a computer configured to calculate) and calculators are absolutely patent eligible.

    -Gene

  24. formulae July 26, 2016 8:54 am

    Gene, I agree that a claim reciting “A computer configured to calculate.” is patent eligible since no abstract idea is present in the claim.

    But you can’t honestly argue that a claim reciting “A computer configured to calculate X using [non-obvious formula].” is patent eligible.

    Mathematical formulas are – per SCOTUS – abstract.

    Tacking on a generic computer to even a non-obvious mathematical formula doesn’t save the claim. Even the most ardent software patent supporter can’t argue that in view of current case law.

    Is it counter-intuitive that narrowing a claim (i.e., adding the abstract formula) renders it ineligible? Of course.

    Is it correct in view of current case law? Absolutely.

    The non-obvious = non-abstract argument falls apart in view of the formula example. (Though BASCOM may give an out.)

  25. Anon July 26, 2016 9:08 am

    Mr. Heller’s contribution above is ultra vires and is not in accord with US law.

    It is decidedly unhelpful at times to try to find justification in foreign law.

    This is one of those times.

  26. Edward Heller July 26, 2016 10:44 am

    Paul Cole@15, if obviousness in the United States were well understood to require a functional difference or improvement, then I would agree with you that the finding of nonobviousness necessary would mean a finding of functional difference or improvement which would passed Alice step two.

    But the way things are actually done in the United States is that the limitations have to be found in the prior art and if they are not, then the claims are deemed to be novel or nonobvious regardless of whether the differences are functional.

  27. don't be disingenuous July 26, 2016 10:53 am

    Gene, a computer configured to calculate is eligible. A computer configured to calculate X using formula Y is not. That’s basic stuff.

  28. Gene Quinn July 26, 2016 10:55 am

    Step-

    You say: “An example of a nonobvious abstraction might be a new string theory of how the universe is put together.”

    But theories are not patentable. A theory would fail even the tradition (and really only legitimate) patent eligibility test, which is whether what is being claimed falls within the statutorily defined 4 categories of innovation listed in 101.

    If you have claimed an invention that falls within one of the 4 enumerated 101 categories (i.e., machine, process, article of manufacture, composition of matter) and what you are describing is concrete and specific enough to conclude that it is non-obvious, I fail to see how it could possibly be abstract.

    Further, I don’t think a theory would not be described sufficient to satisfy current 112 jurisprudence, certainly not a theory as convoluted as string theory where there are many competing views and evolving scientific “certainties.”

    Also, as with the mathematical equation example, the example you pose with string theory would seem to more naturally fit into the “natural law” or “physical phenomenon” judicial exceptions anyway.

    -Gene

  29. Night Writer July 26, 2016 11:21 am

    @22 and @23:formulae

    >>No one knew of this formula before, so there’s no prior art. It’s non-obvious. But it’s abstract!

    This is patent eligible, but obvious. This is a good example of the fact that 103 does a fine job of policing subject matter. Your problem is that nothing non-obvious was done. The calculation is normal. The equation is normal and obvious compared with a different equation to calculate the result.

    You see the problem? You did nothing non-obvious.

    You also see the problem with the witch hunters. They try to compare the claims to an abstraction in their head to invalidate the claims rather than just dealing with 102/103/112.

    No one has shown me a claim yet that needed 101 (other than useful arts), that couldn’t be handled by 102/103/112. This challenge is out for years.

  30. cut the hyperbole July 26, 2016 11:41 am

    @27

    Here you go.

    A method for determining a price, the method comprising:
    (1) receiving a selection of one of multiple water bottles;
    (2) if the selected water bottle is red, divide the average weight of all Samsung refrigerator models by the average lifespan of an American living in California and multiply by 0.05 to determine the price of the red water bottle; and
    (3) if the selected water bottle is yellow, multiply the wingspan of a honeybee by 515.4 and divide by the average weight of a great white shark to determine the price of the blue water bottle.

  31. step back July 26, 2016 11:54 am

    @27, @26:

    Let me add to this that virtually all inventors are seeking to solve real world problems with practical applications/ implementations that can be monetized on. Otherwise, why bother to file for a patent?

    All the anti-patent examples given thus far (including my string theory one) are straw-men pre-designed to have no practical, real world applications.

    One can easily go the other way and set up examples where the outcome is a practical result (and one that cannot be carried out “merely” in one’s Medieval “mind”).

    Say I’m a doctor.
    I own a car and a boat.
    My house is along a first side of an angled shoreline while the hospital is located at a point along the other side of the angled shoreline.

    During rush hour, but while I’m off duty, I get a frantic call that one of my patients needs emergency surgery. I have to get to the hospital as soon as possible (ASAP).

    Do I take the car or do I take the boat?
    Which will get me to the hospital faster?

    Let’s say there is a newly invented computer “algorithm” that uses internet connections to determine current traffic conditions, current wind speeds in the bay and it uses a triangle equation as part of its “calculations” to tell me which mode of transportation will right now in the real world get me to the hospital faster.

    Patent eligible?

  32. Gene Quinn July 26, 2016 11:57 am

    I have to agree with Night Writer. In only the most extreme case (of which I cannot even think of an example at present) would a claim fail to pass 101 muster under a strict analysis of the 4 enumerated categories while still being deemed patent eligible under 102, 103 and 112. Any example that could be provided would be illustrative of policy, not law (i.e., human organisms even if made by man are not patent eligible)

    The pythagorean theorem is also a description of a physical phenomenon. So the mathematical equation itself would not be patentable, but as Diamond v. Diehr teaches the use of the pythagorean theorem in a software program would not render the software patent ineligible. According to the Supremes, Diamond v. Diehr is still good law and has not been overruled.

    -Gene

  33. Curious July 26, 2016 12:52 pm

    35 USC 102 begins “A person shall be entitled to a patent unless …” 35 USC 103 is based upon 102 and inherits the same condition. Thus, the law states an inventor is entitled to an invention unless there is something (i.e., anticipatory prior art or obviousness) that stands in the way. The presence or absence of prior art says NOTHING about whether the invention is directed to an abstract idea.

    Of course 102/103 are conditions for patentability and 101 is not — an issue we’ve discussed in the past.

  34. Edward Heller July 26, 2016 3:11 pm

    Curious, assuming the subject matter being claimed is a new or improved machine, manufacture or composition, or a method of making or using one of these to produce a new result ( read, manufacture), then I think you are right that the law should not invalidate a claim under 101. But it should under 112 if claimed at the level of an abstraction. Morse, after all, was really about 112.

  35. Gene Quinn July 26, 2016 4:25 pm

    formulae-

    You ask: “But you can’t honestly argue that a claim reciting “A computer configured to calculate X using [non-obvious formula].” is patent eligible.”

    Did you really asking whether a computer should be considered patent eligible? OK. I’ll bite. Yes. A computer is patent eligible.

    A computer is a machine and machines are one of the specific categories enumerated as patent eligible in 35 USC 101. Further, a machine (such as a computer) is very real and tangible. The claim you are drafting would clearly be patent eligible under the first prong of Alice/Mayo, which asks whether the claim is seeking to cover a judicial exception to patent eligibility. The judicial exceptions are (1) abstract idea; (2) laws of nature; and (3) physical phenomenon. A computer is not an abstract idea, it actually exists in tangible working form. A computer is not a law of nature. A computer is not a physical phenomenon. So clearly, a computer is patent eligible.

    The problem you seem to have is you don’t understand patent law at all. You think you are giving me a hard question and one where my answer will somehow be embarrassing. The trouble is you have asked an enormously easy question to answer and the answer is that it is patent eligible, even in this anti-patent climate. You would understand that if you knew patent law.

    Your trouble is you are conflating the patenting of a mathematical equation with the patenting of a machine or process that uses a mathematical equation. If you want to inform yourself read Diamond v. Diehr.

    -Gene

  36. Gene Quinn July 26, 2016 4:48 pm

    don’t be disingenuous-

    Fake name, fake e-mail, yet you have no trouble anonymously saying I’m being disingenuous. Interesting.

    The truth is I’m correct and whoever you are you obviously don’t know the first thing about patent law.

    Your considered opinion seems to be that a computer is patent eligible (at least you got that right) but then when that computer is configured to do something useful the computer itself ceases to be patent eligible. That is just stupid. The computer is always going to be patent eligible. The fact that its purpose is to do one thing or another is not going to change the fact that the computer is patent eligible.

    To better inform yourself why not take a look at this patent: http://www.freepatentsonline.com/8896526.html

    Notice the above patent covers a smartwatch, which is defined in claim 1. Notice claim 12, which explains that the watch is configured to measure rotational speed. I wonder how it would do that? Oh… wait… with a mathematical formula!

    -Gene

  37. are you trolling us? July 26, 2016 5:10 pm

    Gene, anonymity has nothing to do with a correct reading of the law. You’re embarrassing yourself with the responses @35 and @36.

    You argue that a computer is clearly abstract because it’s a “machine” that’s “real and tangible.”

    The Supreme Court dispatched this argument:

    “The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ Brief for Petitioner 39, is beside the point. There is no dispute that a computer is a tangible system (in § 101 terms, a ‘machine’), or that many computer-implemented claims are formally addressed to patent-eligible subject matter. But if that were the end of the § 101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept.”

    You next argue that a computer is not an abstract idea because “it actually exists in tangible working form” and thus wins under Alice Part 1.

    Your statement that a claim directed to a “computer is always patent eligible” is bizarre. If that was the case, there wouldn’t be any eligibility problem. Alice would have gone the other way. Ultramercial too. And every other 101 case directed to a programmed computer.

    It’s really your opinion that, under current 101 jurisprudence, a claim reciting “A computer configured to calculate X using [non-obvious formula].” is patent eligible?

    You’d advise a client to spend money litigating that claim? To file a patent application including that claim?

  38. Anon July 26, 2016 5:14 pm

    Mr. Heller @34,

    Once again your statements do not accord with the law.

    For some reason (and I can provide a pretty solid guess what that reason is), you seem unable and unwilling to recognize the full reach of the statutory category of process, as you continue to post definitions that fail to fully encapsulate the changes of Congress as passed in the Act of 1952 (for this particular omission, you ignore 35 USC 100(b) and the attempted limitation to the pre-1952 “process” related to hard good items, and refuse to see the change of a [mere] new use.

    I have to wonder if you care at all that these repeated corrections to your statements have a rather undesirable effect on the veracity of your other positions in patent law discussions.

  39. Gene Quinn July 26, 2016 6:28 pm

    are you trolling us?

    I am NOT arguing that a computer is is abstract. I am arguing that a computer is patent eligible.

    You say: “Your statement that a claim directed to a “computer is always patent eligible” is bizarre. If that was the case, there wouldn’t be any eligibility problem.”

    Really? Take a look at the claims that SCOTUS has ruled patent ineligible. Oh, they were not claims to a computer. They were METHOD claims. They do all the analysis on the method claims and then say ditto for the system claims, which is why method claims do nothing more than contaminate software patents at this point. Of course, the claims are not to “A computer comprising…”

    You ask: “It’s really your opinion that, under current 101 jurisprudence, a claim reciting “A computer configured to calculate X using [non-obvious formula].” is patent eligible?”

    I’d actually define the computer, and I wouldn’t be so stupid as to write it like you and others are suggesting including the mathematical formula, but there are absolutely ways to protect that general construct and if you don’t understand that then god help your clients!

    I notice you didn’t mention the smartwatch patent I pointed in my comment earlier. I understand. If you mentioned that you’d have to acknowledge I’m correct and you’d rather pretend I’m ignorant. I get it. Really, I understand. But the fact that you can’t figure this out doesn’t mean that a good patent attorney would ever tell anyone that a computer… or iPhone… or smartwatch… or tablet… or whatever is patent ineligible. To say that those things are patent ineligible is asinine.

  40. Yes, I am July 26, 2016 6:38 pm

    @37

    Well, the simple answer to your question is that Gene doesn’t know what he is talking about – considering that Alice specifically mentioned that the reason Diehr was patentable is because it IMPROVED an existing process, something your hypothetical doesn’t indicate (132 S. Ct. at 2358)

    The more complicated answer to your question is that Gene thinks patents should be subjected to registration only and not examination.

  41. Gene Quinn July 26, 2016 6:46 pm

    Yes, I am-

    Oh… I see… so Gene was right so we need to change the hypothetical. LOL.

    So your brilliant analysis is that the hypothetical we’ve been addressing isn’t patent eligible because it does not improve an existing process. That really sucks given in the hypothetical it was a first of its kind never before conceived of process. LOL. So I guess that means truly unique, incredibly innovative, first generation, never before done innovations are not patent eligible because there isn’t something that has preceded them that is being improved. WOW! Thanks for clearing that up!

    Thanks for also clearing up that a computer ought to be patent ineligible. What about an iPhone? Are iPhones patent ineligible also? How about smartwatches? Are smartwatches similarly patent ineligible?

    Given the utterly ridiculous comments that show a complete lack of understanding I can only assume one or more examiners from TC 3600 are trolling here. While I appreciate the continued clicks, moving forward when individuals are going to make utterly ridiculous assertions we deserve real names so we can know who you are and why it is that you either don’t understand what you are talking about or your bias against patentees.

    _Gene

  42. Come on may July 26, 2016 7:07 pm

    Gene, you’re confusing what you think the law should be with what the law actually is. It’s a really annoying trend I see with established practitioners – whine about it instead of focusing on a solution (which here is legislative reform to 101, AIPLA is working on it).

    Your iPhone and smartwatch examples are straw men. Of course an iPhone and a smartwatch – when properly claimed – are patent-eligible. So is a computer.

    But you (and NWPA) asked for an example of a non-obvious claim that’s also abstract. Here it is.

    A computer configured to calculate X using [non-obvious formula].

    This claim is ineligible under the Alice test. That’s a fact. And it’s also non-obvious. I don’t care if you wouldn’t write a claim like that, that’s not the point. The point is non-obviousness does not equal non-abstract, at least in terms of Fed Cir and SCOTUS jurisprudence on 101 (see Ultramercial).

  43. Gene Quinn July 26, 2016 7:12 pm

    Come on may-

    I can see you are an examiner. If you provide your real name or a real e-mail address I will be happy to respond.

    -Gene

  44. Anon July 26, 2016 7:22 pm

    Gene,

    There is a problem with your view (or to put it more correctly, a problem with Alice).

    Claims deemed ineligible included claims that both sides of that case had stipulated (and thus this aspect was not an issue correctly before the Court) that the claims covered machines.

    Yes, Gene, Alice did – and does – make the distinction of actually meeting a statutory category disappear with its ruling.

    the system and media claims expressly recite a computer, and the parties have stipulated that the method claims require a computer as well. slip op at 3.

    Not just the method claims fell for being abstract, Gene – the system and media claims fell as well.

    Now page 10 does apply Step II to the method step. They dance away from the required presence of the computer though by saying that such is not enough to NOT have the claim be “abstract” – they create something not found in the actual law be requiring a “patentable application” slicing away actual claim terms (elements of a claim that must be present for infringement). They have “Gisted” away something that BOTH sides of the argument stipulated to be there.

    There policy rationale? “Computers are ubiquitous, so we are treating them like they do not exist.” Or they say that such physicality is something that merely “link[s] ‘the use of the [method] to a particular technological environment” slip op at 16.

    Also at slip op page 16: “Put another way, the system claims are no different from the method claims in substance.

    There you have it Gene, the magic of the Supreme Court making the words of Congress of 101 (the actual statutory categories) disappear. And they do this with a dismissive “draftsman’s art” slam. Never mind the fact that Congress specifically laid out that it is the inventor (and through the inventor, that very same draftsman) that DEFINES the invention (35 USC 112).

    They also have the audacity to use a “nose of wax” reference as they themselves mash that very nose into oblivion.

  45. Gene Quinn July 26, 2016 7:25 pm

    Everyone-

    Reading the comments from the one or more examiners who choose to remain anonymous made me go back and re-read Ultramercial. It would seem that these examiners are treating Judge Mayer’s concurring opinion in Ultramercial as the rule of law from the Federal Circuit. That does explain a lot. The views of those in TC 3600 are quite consistent with a number of Mayer’s concurring opinions. Sadly, they treat Mayer’s pronouncements as law (gospel really) when in fact they are entitled to no precedential value whatsoever.

    Come on examiners, why don’t you let us know who you are? What are you afraid of? Are you really only capable of lashing out at me in anonymous coward fashion?

    -Gene

  46. Anon July 26, 2016 7:26 pm

    Come on may,

    You presume too much.

    The law as it actually is is NOT the same as the rewritten ultra vires law of the Supreme Court.

    And while right now the Court has the upper hand, that simply does not make that upper hand to be the correct one.

  47. Anon July 26, 2016 7:34 pm

    Come on may,

    Your point proves TOO much.

    to wit: “The point is non-obviousness does not equal non-abstract, at least in terms of Fed Cir and SCOTUS jurisprudence on 101” also plainly holds that things that are stipulated to be actual physical objects are – nonetheless – ALSO “abstract.”

    This magical feat is possible in part because the term “abstract” is not actually defined by the Court.

    Never mind reality, grins the Chesire Cat…

  48. sigh July 26, 2016 7:39 pm

    Anon, bring that argument into court. Until you do that and succeed, who is playing with the ball of wax? “Well I don’t have to listen to SCOTUS precedent because they were wrong” isn’t a winning argument. It’s one that gets you sanctioned and has your clients paying attorney fees.

    Gene, I’m not an examiner, but it seems to me you’re either confused or purposefully trying to obfuscate. A lot of what you’ve said is incorrect. Honestly, re-read the case law and re-read your comments with a clear head. Your clients will appreciate it.

  49. Gene Quinn July 26, 2016 8:11 pm

    sigh-

    First, if you do not use a real name and real e-mail address this is almost certainly the last comment anyone will read of yours on IPWatchdog.com.

    With every comment you slightly change your name and you use a different fake e-mail address. In each instance I’ve had to rescue your comment from spam (which is really where it belongs).

    NEW POLICY… If you use a fake name and a fake e-mail address I am NOT going to rescue your comment from spam.

    In terms of substance, your views are straight from Judge Mayer’s concurrence, which is not the law. If you were a lawyer you’d understand that. So you can stop the charade, we all know you are an examiner.

    -Gene

  50. Gene Quinn July 26, 2016 8:19 pm

    Just permanently deleted a comment from “Also not in 3600 or maybe I am,” found in spam.

    If you choose to use a fake name and a fake e-mail address I will not save your comment from spam. We get too many commercial spam messages every day and purposefully making your comment look like spam is about as clear an indication as I can think of that you are not seriously interested in meaningful dialogue and debate.

  51. Anon July 26, 2016 8:54 pm

    Gene @ 49,

    Thank you for allowing the spam filter to serve its purpose.

    I look forward to your thoughts of what the Court really has done as noted in my comments at 44, 46 and 47 (the Court really has “gisted” away actual physical things as being “abstract”).

  52. Gene Quinn July 26, 2016 9:11 pm

    Anon-

    It is hard to argue with you that the actual language of the Supreme Court decision in Alice has “gisted away” (as you put it) the physical presence of a computer. For some time now I have recommended that applicants give up on method claims because I think they taint the entire application. Would a court, any court, even the Supreme Court, say that a system defined with sufficient detail to support 112 is abstract? You may recall that in other articles going back since the beginning of the Alice era I’ve practically been begging attorneys to go back to the claim construct used in the 1970s after Gottschalk v. Benson, which was to claim “A computer….”

    Going to mix metaphors… or at least references… to get out of Wonderland we are going to have to definitively prove that the Emperor is wearing no clothes. That is what it took to finally dispatch with Freeman-Walter-Abele. The realization that there is no uniformity and the test leads to absurd results will cause the test to crash on its own. If a court were to actually rule as this/these examiners suggest that a computer is abstract that would be met with great derision, and a lot of lobbying money to once and for all put an end to Supreme nonsense. Too much money is made by elite companies who own various patents on computers for the thought of a computer being abstract to ever be the law of the land.

    I come to this seemingly naive conclusion because it happened once before. Remember, when Congress was debating the CAFC and setting it up because the Supremes had never seen a patent that wasn’t invalid they decided Chakrabarty and Diehr back to back. They can get it right when they have their backs to the wall, and at some point they will because these decisions are going to destroy the high tech economy in the U.S.

    So I say do away with anything that is remotely abstract, like methods, and claim only things that are tangible. The Court won’t be able to say “ditto” for the analysis like they did in Alice on the system claims, which was an utter disgrace really. Make the Court say (if they will) that a computer or a system is only claiming a judicially enumerated exception. Make them say computers are abstract. I don’t think even they would say such a thing. They got off not having to say it in Alice because they concluded that these claims were just claiming the same subject matter as the method they just said was abstract.

  53. Gavin H. July 27, 2016 8:14 am

    Gene @52,

    I have absolutely, positively no doubt that a court addressing only device/system claims would have no problem invalidating them under 101 if they would have otherwise rejected corresponding method claims (similarly tied to a computer).

    Fundamentally, you seem caught up on this “tangible” argument that, as pointed out above, SCOTUS faced head on and dismissed as unpersuasive.

    When courts invalidate claims directed to programmed generic computers, they aren’t saying the generic computer hardware is abstract. They’re saying that adding generic computer hardware to what’s otherwise an abstract idea doesn’t fix the claim’s eligibility problems. Or put differently, claiming abstract idea + generic hardware is no different than claiming the abstract idea standing alone.

    What’s an abstract idea? Who knows. That’s what I believe is the root of this entire issue. I think Ultramercial is a bigger problem than Alice, because Ultramercial essentially held that a very narrow set of claim elements can be an abstract idea.

  54. Gene Quinn July 27, 2016 8:46 am

    Gavin H.

    Perhaps you are correct about courts seeing no difference even if they are not allowed to simply say “ditto” for the systems claims, as the Supreme Court did in Alice. And let’s not make more of the systems claims in Alice than the opinion deserves, they spent all of 2 paragraphs and merely concluded that because the system was claiming the same thing it too was abstract.

    If a court were to hold that a device that operates in a certain way is abstract and, therefore, patent ineligible that court would have clearly jumped the shark. That kind of moment (devoid of any blurring by method claims that messy the matter) is likely what is going to be required in order to get relief from these idiotic rulings. So I say give courts the opportunity to do the right thing. We see in DDR, Enfish and Bascom at least some on the CAFC are starting to do the right thing. Counting heads, with the right en banc panel that includes Judge Linn, pro-patent forces are at or close to a majority. If the Supreme Court were to then say a computer or iPhone or Android device is abstract such a ruling would not last long; it would be quickly overruled with legislation.

    I would agree with you about Ultramercial, particularly Mayer’s concurrence (which 3600 seems to follow as if it is an en banc majority opinion). The only glimmer of hope would be Enfish and Bascom, which suggest some on the CAFC have had enough. We will know MUCH more when the McRo case is finally decided.

    As far as tangibility goes, I think patent attorneys make a BIG mistake treating tangibility as if it doesn’t matter. So far the Supreme Court has only had an opportunity to decide software cases relating to financial business method patents. Does anyone really think they would be so easy and quick to come to the same conclusion if faced with IBM’s Watson, artificial reality or any number of truly futuristic software enabled innovations?

    -Gene

  55. Easwaran July 27, 2016 9:29 am

    “Come on may” @42 write the following:

    “But you (and NWPA) asked for an example of a non-obvious claim that’s also abstract. Here it is.

    A computer configured to calculate X using [non-obvious formula].

    This claim is ineligible under the Alice test. That’s a fact. And it’s also non-obvious. I don’t care if you wouldn’t write a claim like that, that’s not the point. The point is non-obviousness does not equal non-abstract, at least in terms of Fed Cir and SCOTUS jurisprudence on 101 (see Ultramercial).”

    This type of oversimplification that is very annoying. Here are two key mistakes in this analysis:

    First point: your example is not necessarily ineligible. If the “X” being calculated applies the formula in an interesting way, then the claim may not be “directed to” the formula itself, but to a practical application of the formula. This was the point of Diehr, as you should know, and it was also the escape valve mentioned by the Supreme Court in the Myriad decision (“[a]s the first party with knowledge of the [BRCA1 and BRCA2] sequences, Myriad was in an excellent position to claim applications of that knowledge. Many of its unchallenged claims are limited to such applications”). Moreover, this is essentially the analysis provided by the Federal Circuit just this month in Rapid Litigation Management v. CellzDirect, where that court found claims not directed to a judicial exception: “The end result of the ’929 patent claims is not simply an observation or detection of the ability of hepatocytes to survive multiple freeze-thaw cycles. Rather, the claims are directed to a new and useful method of preserving hepatocyte cells.” The point is that the “directed to” analysis requires consideration of claims as a whole. And even if it didn’t, the “inventive concept” analysis surely does, as the Federal Circuit also made clear in Rapid Litigation Management and also in another recent case, Bascom Global Internet v. AT&T Mobility. So at the end of the day, the “X” must be known for any eligibility determination to be rendered.

    Second point: “non-obviousness does not equal non-abstract” in some cases, but it does in others. For instance, if the “abstract idea” is a mathematical algorithm or formula, then you are surely correct that obviousness is irrelevant to that determination. But if the concept is abstract because it is supposedly a “fundamental economic practice long prevalent in our system of commerce,” then non-obviousness undercuts the assumption that that the concept is fundamental in the first place. The two are incompatible as a matter of basic logic. The July 2015 Update released by the USPTO makes the same “nonobviousness is not relevant” argument as “Come on may” @42, and I can’t tell in either case if this argument is simply a mistake in reasoning or an intentional obfuscation borne of policy preference.

  56. Edward Heller July 28, 2016 12:31 pm

    Gene, may I suggest this simple analysis regarding computer programs:

    1. If the claim is directed to improving the computer or computer system (Enfish), it passes step 1.

    2. If the claim is not so directed, and fails step 1, then if is implemented on detailed and very specific, non generic, computer hardware, it might pass step 2.

    Claims involving larger processes (Diehr) and machines (Alappat) have no 101 problem and have not had 101 problems for decades now.

    This applies whether the claim is nominally directed to a machine, system or process. As others have pointed out, simply adding the generic computer to otherwise ineligible subject matter does not transform the claim into an inventive application.

  57. Anon July 28, 2016 1:17 pm

    Mr. Heller,

    Your “suggestion” of point two ignores law and reality.

    The law deals with patent equivalency of hardware and software – See Alappat.

    The fact deals with whether or not something is done in software or hardware is merely a design choice (this is the factual underpinning of the legal result of Alappat.

    I will also (again) point out that your “larger process or machine” has NO tether to the actual law – as written by Congress.

    When all else fails, read the statute.

  58. Gene Quinn July 28, 2016 2:41 pm

    Edward Heller-

    You say: “simply adding the generic computer to otherwise ineligible subject matter does not transform the claim into an inventive application.”

    But that leaves the unanswerable question without any useful guideposts to figuring out a rationale resolution. What is “otherwise ineligible subject matter”?

    That becomes particularly vexing when some patent examiners simply conclude that nothing significantly more is added to the claims because what is being claimed is abstract. But to get that far in the analysis the conclusion was already reached that the claim was covering something abstract. Without a definition of what it means to be abstract it is impossible to know whether significantly more has been added, or whether the examiner properly defined the abstract idea the claim captures. Truthfully, in most rejections the examiner simply belittles the invention, purposefully mischaracterizing what is claimed. So a payment gateway is abstract because it merely claims opening an account. Well that isn’t factually correct.

    -Gene

  59. Edward Heller July 28, 2016 3:09 pm

    Gene, I fully agree with you that meaning and scope of “abstract” per Bilski/Alice is a problem, especially if the examiner or court declares something abstract that is clearly directed to technology. Anything that clearly directed to technology should pass 101 even though it might have problems under 112 if too broad or indefinite. That is the clear lesson of Enfish.

    Which leaves us with the observation that the only subject matter that should fail Alice step one is a claim directed to (the asserted novelty lies in) something that is not technical. Which means, that “abstract” is being used to as a nonce word for anything that is not either a machine, manufacture or composition of matter, or a traditional process (MOT). Abstract is not being used in its traditional sense, the sense it was first used in cases like Le Roy v. Tatham and O’Reilly v. Morse, which were more concerned with claims that were too broad and nonspecific – principles in the abstract, basically claiming at the level of the idea. But as we all know, such concerns are addressed under 112; and that is exactly where the Supreme Court placed the statutory basis for its holding regarding claim number 8 in Morse.

    I think this fairly describes the situation as it is today.

    But let us hearken back to the law the way it was before State Street Bank. Prior to that time, business methods were not patentable subject matter alone – as such – but were patentable in connection with new or improved means. With that principle in mind, I think claims such as we saw in Versata should have passed 101 because the means claimed involved novel and unobvious software procedures, even though they were used to calculate price. These novel and obvious software procedures calculated the improved price more efficiently, and for that reason should pass 101.

    So when you argue that when the claims have novel and nonobvious subject matter in them they should automatically pass 101, I tend to agree, but with the caveat that the novel and unobvious subject matter must essentially be technical in character – for example, improved software methodologies, or improved hardware.

  60. Anon July 28, 2016 3:26 pm

    Mr. Heller @59,

    What does “directed to” mean? And why is “technology” a magic pass? (It was not a magic pass before State Street, by the way).

    Further, your retreat (again) to a clue (MoT) masquerading as law, which is a nonstarter.

  61. Edward Heller July 28, 2016 3:40 pm

    Anon, I think “directed to” means the same thing as “the asserted novelty is.” Effectively, what is purportedly new in the claim.

    Now a lot of the claims that the courts have addressed under 101, it is easy to tell that there is no apparent novelty in the computer means because these are claimed only generically.

    Regarding technology, it is a word that seems to be well understood in Europe. I think we have a fair understanding of what it is in the United States as well. I also think that our own section 101 fairly describes what technology is, new or improved machines, manufactures, compositions or processes (art, method).

    The MOT aptly describes all processes that have been heretofore approved by the Supreme Court. Regarding software, I believe there is a good argument that if the software is specific regarding the ask the computer must do the process data efficiently, we are talking about an improved machine or machine process that would pass the “M” portion of the MOT.

  62. Anon July 28, 2016 5:57 pm

    Mr. Heller at 61,

    You want to conflate even more novelty with eligibility?

    The statutory classes and the right type of utility are ALL that is required in 101.

    As to anything “Europe” – full stop. I do not live in Europe. My patent law was not made in Europe. I do not abide by the Larger Transnational urge to make some One World Order and confuse US law with that of Europe.

    As to your wrap around back to 101 and the statutory classes, I am still waiting for you to show that you appreciate what 35 USC 100(b) means as far as the statutory class of process (here is a hint: it is not a redundancy in the definition, nor a circularity that “process” is used as it is used. The inclusive “process” is what you often refer to, and the larger definition is what Congress did in 1952 to greatly expand process to its present meaning).

    As to MoT, it is more than telling that you want patent law here (expanded from what the Court actually uses MoT as – a clue) to be so expanded as law based not on what the legislature has written, but instead – in your typical dereliction of maintaining a proper sense of the separation of powers – your elevation of the Supreme Court.

    Lastly, while not directly evident in your immediate comments, I will note that you still seem intent on bypassing the fact that software is a manufacture in its own right and a machine component, and that there is NO – and can be NO – “just use” unless and until a machine is first changed and re-configured with the software component. By doing so, one must realize that the changed machine is an improved machine (which would satisfy even your apparent elevation of MoT as law).

  63. Anon July 30, 2016 9:29 am

    sigh @ 48.

    Show me where I am incorrect in my reading of case law.

    Thanks.

  64. Anon July 30, 2016 11:47 am

    sigh – I see that you were saying that Gene was incorrect in his reading of case law.

    My bad.

    However, you do misunderstand what I wrote as to the Court being wrong. I hope that you realize that you have an ethical obligation to law that does not stop at merely “obeying” what the Supreme Court says. Yes, I do console my clients according to what the Supreme Court says and no, that does not stop with a “let’s all folks and a shrug of the shoulders.” If you are stopping there, then YOU need to examine your own understanding of your role in the system of law and justice.

    You are not a sheep and your connection with the law does not stop with you being a sheep.

    Courts – even the Supreme Court – have often been wrong and have often been needed to be told that they are wrong. To think that one cannot appeal to a higher court than the Supreme Court ends the matter is not to understand the reality of law, of the Constitution, of the separation of powers, and of the several manners that decisions of the Supreme Court can be changed, modified or even nullified.

    Don’t be a sheep.