PTAB declares MRI machine an abstract idea, patent ineligible under Alice

By Gene Quinn
January 3, 2017

Idiotic definitionIn what can be described only as an utterly ridiculous, intellectually insulting, and idiotic decision, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) has done the truly absurd. In Ex parte Hiroyuki Itagaki the PTAB has ruled a magnetic resonance imaging (MRI) machine to be patent ineligible because it is an abstract idea, citing the United States Supreme Court’s decision in Alice v. CLS Bank for support.

The application in question is U.S. Patent Application No. 20100119136, titled Magnetic resonance imaging apparatus and image classification method, which relates back to a Patent Cooperation Treaty filing date from April 2008. The applicant appealed two different obviousness rejections. The PTAB overruled the patent examiner, finding the claims were not obvious, but instituted a new ground of rejection. That new ground of rejection for this MRI machine related to lack of patent eligibility under 35 U.S.C. 101 because the machine is nothing more than an abstract idea.

The illustrative claim discussed by the PTAB in the decision was claim 1, which unambiguously relates to a machine. Claim 1 covers:

A magnetic resonance imaging apparatus comprising:

an image acquisition unit configured to divide an imaging region of an object to be examined into a plurality of stations of respective station positions, and acquire a plurality of stations of respective station positions, and acquire a plurality of images having different image types for each station, while moving a table on which the object is mounted, station by station;

a display unit configured to display the plurality of images in a predetermined display format; and

a classification processing unit configured to classify the plurality of images by image types and station position, based on imaging condition including imaging parameters,

wherein the display control unit displays the plurality of images by image types in spatial order of station positions, based on the classification result by the classification processing unit.

For reasons not explained by the PTAB panel, the Alice/Mayo framework was used to determine whether this machine claim is patent eligible.

The Alice/Mayo Framework

The Alice/Mayo framework is the decisional approach adopted by the Supreme Court for determining whether a patent claim embody patent eligible subject matter. To this point the framework has only been used with respect to software patents and life science related innovations, but I have not seen the framework applied to machines. Indeed, the Alice/Mayo framework has been limited in applicability to when there is a possibility that one of the three so-called judicial exceptions to patent eligibility may be in play. Those three judicial exceptions relate to abstract ideas, laws of nature and nature phenomena.

The Alice/Mayo framework requires the decision maker, whether a patent examiner, administrative tribunal or reviewing court to ask and answer a series of questions before determining whether the patent claim in question constitutes patent eligible subject matter. The first question (commonly referred to as Step 1) is whether the patent claim covers an invention from one of the four enumerated categories of invention defined in 35 U.S.C. §101 (i.e., is the invention a process, machine, article of manufacture, or composition of matter). If the answer to this question is no then the patent claim is patent ineligible. If the answer is yes the decision maker must move on to the next inquiry because the statutory test established by Congress is no longer the complete test for patent eligibility in the United States.

The second question (commonly referred to as Step 2A), where the Alice/Mayo framework truly begins, requires the decision maker to ask whether the patent claim seeks to cover one of the three specifically identified judicial exceptions to patent eligibility. Although there is no textual support for the creation of any judicial exceptions to patent eligibility in the Patent Act, the Supreme Court has long imposed their extra-judicial view of the statute relative to patent eligibility. At the moment there are only three identified judicial exceptions, which are: laws of nature, physical phenomena and abstract ideas. If the claim does NOT implicate one of those judicial exception then the claim is patent eligible.

In the case where the patent claim seeks to cover a judicial exception to patent eligibility, the final question (commonly referred to as Step 2B) asks whether the inventive concept covered in the claimed invention added “significantly more” than the judicial exception, or whether the claimed invention did not add “significantly more” and, therefore, was seeking to merely cover the judicial exception.

The PTAB’s Analysis of the Alice/Mayo Framework

In this case the PTAB panel did not examine the statutory language to determine whether the claims were drawn to a process, machine, article of manufacture, or composition of matter. Had they done so they might have noticed that the invention being claimed is a machine (i.e., apparatus, which in patent terms is indistinguishable from a machine).

The PTAB panel starts their Alice/Mayo analysis with Step 2A, and somehow determined that “the claimed subject matter is direct to classification.” How or why the panel chose to ignore the explicit language of the claim is not explained. Neither is it explained how they could possibly determine that a claim explicitly drawn to a machine was not directed to a machine. In any event, the PTAB panel concluded “the classification concept is an abstract idea.”

The PTAB panel then moved on to Step 2B of the Alice/Mayo framework in search of an inventive concept. The panel wrote: “We see nothing in the subject matter claimed that transforms the abstract idea of classification into an inventive concept.” The decision goes on:

The classification as claimed is more particularly image classification. But applying the concept of classification to images in particular does not make the classification concept any less abstract. At best it provides a practical application for the classification concept in the image domain. But a recitation of practical application for any abstract idea is insufficient to transform an abstract idea into an inventive concept.

Of course, completely missing the point that what is claimed is a machine.

Eventually, the PTAB panel does get around to acknowledging: “Claim 1 describes a multi-station MRI, comprising an image acquisition unit, a display control unit, a classification processing unit.” The decision, however, seems to search for its own vindication of ruling a machine patent ineligible by pointing out that there is no requirement that the MRI be computer-implemented.

Ultimately, the PTAB panel concludes: “[M]erely reciting a generic multi-station MRI so as to apply the classification abstract idea to its images is insufficient to transform the classification abstract idea into an inventive concept.”

Conclusion

I am at a loss with respect to what to say.

I suppose the first thing is to state the obvious — the Administrative Patent Judges that participated in this panel should immediately be subject to some kind of internal discipline. These APJs should be suspended or removed from the PTAB altogether, and if that isn’t possible within the bureaucracy of the federal government they should simply be sidelined indefinitely. At least that way they cannot do any more damage.

My second thought is that a decision finding a machine claim abstract has to be a bridge too far for even the most vocal proponent of the Alice/Mayo monstrosity. But even as I type that I know that some will celebrate a finding that the patent eligibility of machines can now be called into question because it fits their anti-patent ideology. I do suspect, however, that more thoughtful believers in the Alice/Mayo framework will cringe and realize this decision goes too far and will bring the industry together to fight in a way that they have been unwilling to do up to this point. But if a machine can be declared patent ineligible because it is an abstract idea there is no point in keeping your powder dry, the fight must be now and it must be won.

My final thought is with respect to those who said Alice v. CLS Bank wasn’t a bad decision. Many people openly mocked me, for example, as I wrote that the decision would be used and intentionally misinterpreted by those who ideologically oppose patents. In the 30 months since the decision my predictions have sadly come all too true. It didn’t take a rocket scientist to know how those with an anti-patent ideology would apply Alice, and apply it with an anti-patent vigor they have!

Since the Supreme Court issued the ill conceived Alice decision I have been practically begging patent attorneys to give up on method claims. In article after article and speech after speech I have suggested going all in on machine or apparatus claims, putting that specific language in the preamble and building the body of the claim accordingly, just as was done in the representative claim at issue here. Let’s have the discussion about whether a machine can be an abstract idea, I would say. Once we have a decision that declares a machine to be an abstract idea we will have jumped the shark and perhaps then the entire industry will see what a mess the Supreme Court has made of patent jurisprudence. Perhaps then there will be a chance to come together to find a consensus solution.

We have reached that moment, the shark has been jumped, and the emperors without any clothes have decided that a machine is an abstract idea. If this decision stands we might as well shutter the Patent Office because little of consequence in the age of artificial intelligence and virtual reality will be patent eligible if a machine is an abstract idea.

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 163 Comments comments. Join the discussion.

  1. step back January 3, 2017 4:02 pm

    It’s hard to imagine what is in the minds of the PTAB ALJs who rendered this decision.

    Maybe they want to push this reductum absurdia up to the CFAC and then ultimately to the Supreme Court?

    Every claim inherently brings with it the abstract idea of having claims and the abstract ideas of what the words in the claim mean. The claim however, is not the claimed subject matter per se. Rather the claim defines the subject matter that is sought to be patented. This is not a pipe. Get it?

    Apparently someone at the PTAB does not.

  2. JPM January 3, 2017 4:29 pm

    It is time to shut the PTAB down. It is nothing more than a kangaroo court, bought, paid for and set up by the infringer lobby (Google et al).

    As an inventor I am hopeful that the Trump administration repeals the America Invents Act or shuts the PTAB down as a part of their drain the swamp initiative.

  3. Examiner January 3, 2017 4:45 pm

    “Let’s have the discussion about whether a machine can be an abstract idea, I would say.”

    A machine that displays ads – a generic cellphone lets say-, is directed towards an abstract idea, that of providing advertising.
    A generic machine that is used to implement an abstract IS directed towards an abstract idea.

    So yes, a machine can be directed towards an abstract idea.

  4. Arby January 3, 2017 4:50 pm

    Wow. Just, wow. Question is, from where are we hoping for a fix? SCOTUS? Another Fed. Cir. decision? Act of Congress? What does the fix look like? This is such a huge mess right now. The last few Fed. Cir. decisions had me thinking we were headed in a more reasonable direction, but then the PTAB does this in light of those decisions…

  5. Gene Quinn January 3, 2017 5:19 pm

    Examiner-

    Obviously, you are wrong. And the arrogance of coming here to state that a machine is an abstract idea is astonishing.

    What is your name and Art Unit? I think we all deserve to know whether you really are an examiner and if you are an examiner to file the proper paperwork to have you immediately removed from cases you are on as being both incompetent, hopelessly uninformed and biased.

    -Gene

  6. Gene Quinn January 3, 2017 5:21 pm

    Arby-

    Yes, the last 6 or 7 months from the Federal Circuit gave hope that we were on the right path. Obviously, with the Patent Office finding a machine to be abstract, which is asinine, we are not on the right track. That the PTAB would issue such an idiotic decision is troubling. That an Examiner would race here to defend the decision and say a machine can be abstract shows that something needs to be done.

    An all out press for legislation overruling Alice and Mayo needs to happen.

    -Gene

  7. Examiner January 3, 2017 5:22 pm

    “Obviously, you are wrong. ”
    ” incompetent, hopelessly uninformed and biased.”

    Great arguments. Did you learn your argumentative technique in law school?
    If so, you should ask for a refund.

  8. IPdude January 3, 2017 5:27 pm

    It’s possible that absurd decisions like this can actually do us long term good by bringing to light how corrupt the PTO has gotten. Perhaps this is what we need to get the attention of the Trump administration to reform the bad policy set forth by the Obama admin. It may also be a last ditch effort by the current administration to get what they can before there is a change. Time will tell.

  9. Night Writer January 3, 2017 6:13 pm

    Examiner: The problem is that what is an abstract idea? What is not directed to an abstract idea? “Abstract idea” is a witch word. It is an abstraction in the head of the fact finder that has no meaning regarding 102, 103, or 112. So, what does it mean? There is an enabling disclosure that is non-obvious over the cited references, but it fails the witch test.

    What is going on here is:

    1) Abstract word in head of fact finder;
    2) An abstract test applied by the fact finder that relies on no factual recorder and gives the fact finder almost complete discretion in determining whether the claims are a witch (or abstract idea).

    Just ridiculous. I do think that this isn’t really much different than what I see all the time for a “generic computer”. The PTAB is merely extending “generic computer” to any machine.

    Just think, though, enabled. Takes space, time, and energy (and structure of the transistors) to operate. Non-obvious. But, abstract idea, ’cause, ’cause, we say so and there ain’t nothing you can do about it. “Cause, ’cause, the SCOTUS said we can do whatever we want and there is no law no more.

  10. Night Writer January 3, 2017 6:21 pm

    “Step two is “a search for an ‘inventive concept’—i.e., an element or
    combination of elements that is ‘sufficient to ensure that the patent in
    practice amounts to significantly more than a patent upon the [ineligible
    concept] itself.’””

    That part above is the core of the insanity. The reality is that if something is not enabled, then it could be an abstract idea. If it is enabled, then the statement above violates common sense. The “search” should occur with the prior art and the elements of the claims—not a psychotic fiat by judges. The SCOTUS has made us a lawless land. My prediction–this is going to get worse. Trump is result of decisions like Alice. Post fact. Post reality. Post law.

  11. Eric January 3, 2017 7:04 pm

    Let me preface this by saying that the Alice/Mayo framework is terrible and there needs to be an overhaul. However, based on the current state of the law, it’s not an egregious decision.

    The Board is clearly viewing the MRI as being analogous to a generic computing device comprising various functional “units” configured to perform image classification. That is, there’s nothing that appears to be special about the claimed MRI that contributes to the image classification. In other words, the MRI is performing tasks that any generic processing device could perform.

    Ruling the other way would allow us as practitioners to craft claims directed to using generic hardware components of specific types of computing devices (e.g., processor(s) of the MRI) to implement abstract concepts.

  12. Kelly Mackin January 3, 2017 7:22 pm

    I thought the Supreme Court Mayo Alice framework states “something more,” not “significantly more”.

    Also, the decision says “improve the functioning of the computer itself or effect an improvement in any other technology or technical field.”

    That is the broad language that has been narrowed into “significantly more” and restricted further into a “technical improvement to the computer itself.”

    Not cool!

  13. Patent Owner Counsel January 3, 2017 7:25 pm

    Gene – I agree that 101 law is a mess, that the Alice/Mayo framework provides no real guidance (“know it when you see it”) and this area of law is simply a tool to be used by anti-patent litigants and judges.

    But, I don’t see the outcome in this case as that much of a departure from Alice and recent applications of Alice to invalidate software patents. Many software claims are drafted as apparatus claims, and many of these “machines” have been invalidated as abstract – the reasoning being that the computer elements of the claim are conventional computer parts (memory, processor, etc.) that are being used for their intended and conventional purpose. These non-novel elements are often disregarded in assessing what the claim is “directed to” for purposes of the Alice analysis.

    That’s essentially what the PTAB did here. It found that the “MRI machine” elements of the claim are conventional MRI elements that are being used in the claims for their conventional purpose. So the ALJ’s ignore those elements and just look at the abstract idea of “classification” and say that doing classification in a conventional MRI machine doesn’t change the abstract nature of the claim. Just like all the computing / software invalidations recently.

    I think that all of this (for computing, software, MRI, whatever) should almost always be handled with 102/103 rejections rather then under 101/Alice, and that the Alice framework was wrong from the start and has been driven completely off the rails. Too many invalidations find that certain claim elements are “conventional” or “routine” or whatever with no EVIDENCE in support. But, the result in this MRI machine case doesn’t shock me at all, or even seem like that much of a departure from many other recent cases.

  14. Anon January 3, 2017 7:48 pm

    Gene,

    The argument used by Examiner is “directed to.”

    This is nothing more than a rephrasing of “Gist of the Invention.”

    Once upon a time there was another Supreme Court that used that term (and about twenty or so like terms).

    Then Congress acted in 1952, stripping away the Court’s limited grant of ability to use common law tactics to define “invention,” and in its place, explicitly used a different term (nonobviousness).

    All we are seeing is the Court ignoring what happened in 1952, and all that Examiner is doing is using the Court’s “directed to” “argument” to align his view with what the Court did.

  15. jn31 January 3, 2017 8:13 pm

    Well put, Night Writer. Abstract idea is indeed a witch word that gives complete discretion to the fact finder (thanks Scotus, real fine work you guys did there). In my practice, it’s usually an examiner that appears to have read the title of the patent application and come to a decision about 101. Something gross has been going on the last few years, the total conflation of 101 and 103. I’m tired of it. I’m tired of poorly trained new examiners, or “experienced” examiners that just don’t care any more. I’m tired of ambiguous guidelines from the PTO, that aren’t really followed anyways. Or conspicuously missing guidelines when cases like Enfish/Bascom come out. No one cares what’s in the claims anymore. And for some reason I find my self addressing arguments that have the logic of 103 but the title of the argument section is “Rejection under 101”.

    Hopefully this ridiculous MRI case helps expose the sadly laughable state of the US patent system.

  16. ZG January 3, 2017 8:13 pm

    Have to side with Examiner here.

    SCOTUS held in Bilski that MoT is not the answer but only a useful clue. So if a process tied to a particular machine can still be abstract, why can’t the machine by itself?

    Personally, I think Alice just made a mess. I’m pro patents, and particularly sw patents. But the absurdity is not that a machine could be abstract, but rather that the framework uses these undefined terms of “abstract idea”, “directed to” and “significantly more”, all of which just create an environment where you cannot foresee the outcone

  17. angry dude January 3, 2017 8:15 pm

    “On July 31, 1790 Samuel Hopkins was issued the FIRST patent for a PROCESS of making potash, an ingredient used in fertilizer. The patent was signed by President George Washington”

    PROCESS = METHOD

    ALL industrial chemical processes nowadays are controlled by computers
    – read SOFTWARE PROGRAMS

    They might as well just turn the lights off in the PTO building and go home…

  18. Jeffrey W. January 3, 2017 8:20 pm

    Gene, griping about the state of the law is different than mischaracterizing the law.

    Per Alice (and Mayo, and Bilski, and Fed. Cir. cases thereafter), machines can be ineligible for patenting. Is it dumb? In most cases, yes. But appending a generic computer to an abstract idea (yeah, no one knows what it is, but that’s not the point of this post I don’t think) doesn’t get you anywhere. Neither does arguing that the law doesn’t dictate this result.

  19. Jeffrey W. January 3, 2017 8:22 pm

    And no one is saying a machine is an abstract idea. The abstract idea exception is just that – an exception to the rule that machines are patentable.

  20. step back January 3, 2017 10:10 pm

    Anon @11
    What you said and also note the examiners are bypassing (violating?) that part of 35 USC 112 which says the inventors get to define the subject matter that they regard as their invention.

  21. Gene Quinn January 3, 2017 10:39 pm

    Jeffrey W @ 18

    I did not mischaracterize the holding at all. The claim is to an MRI machine. Please read the preamble.

    As for the substance of your comment, you are incorrect. Machines cannot be patent ineligible. The statute says machines are patent ineligible and the inquiry should end there. It is asinine to suggest that a machine can be an abstract idea as was done here by the Board.

    -Gene

  22. Gene Quinn January 3, 2017 10:43 pm

    Jeffrey W @19-

    You say: “And no one is saying a machine is an abstract idea.”

    Actually, that is exactly what the decision says. The Board acknowledged that the claim is to an MRI machine and found the claim patent ineligible as an abstract idea. So whether you like it or not the Board decided that this claimed machine is patent ineligible as an abstract idea. Absurd.

    -Gene

  23. Gene Quinn January 3, 2017 10:47 pm

    ZG-

    Sorry. It is impossible for a machine to be abstract.

    The definition of “abstract” is: “existing in thought or as an idea but not having a physical or concrete existence.” Machines do not exist only in thought and do have a physical and concrete existence. This MRI machine actually exists, therefore it is NOT abstract.

    Furthermore, the statute says that machines are patent eligible. Upon reading the preamble the Board should NEVER have issued a 101 rejection. A 101 rejection simply is not proper. If they actually understood patent law they might have resorted to 112 because the claimed features were too amorphous. The machine, however, is NOT abstract. If they tripped over it they would realize that.

    -Gene

  24. Night Writer January 3, 2017 10:57 pm

    @23 Gene: I think it is even stranger than that. I think the Scotus is saying that a machine can be ineligible if it is directed to an abstract idea. I think this is just bizarre. A physical machine with an enabling disclosure is somehow directed to an “abstract idea.”

    I have still not seen a single claim that 102/103/112 could not fairly handle.

  25. Gene Quinn January 3, 2017 11:20 pm

    Night Writer @23

    This is what you get when you leave the least qualified people to handle serious adult issues. You are left with a mess whereby relatively sane individuals can conclude something that has a tangible manifestation is abstract. It is Orwellian really.

    I agree with you on 102/103/112. On top of that, I don’t know how it is or should be possible that a claim is ineligible if it satisfies 102/103/112.

    It is utterly ridiculous that this panel of the PTAB could actually opinion that the claims are nonobvious yet abstract. How in the world could they evaluate the claim for purpose of obviousness if what is covered is abstract?

    Decision-makers ought to live by this motto: If an entirely fair characterization of a decision will sound like fake news you are about to make the WRONG decision!

    -Gene

  26. step back January 4, 2017 12:35 am

    We all thought 1984 would never happen.
    War is peace.
    The enemy is our friend.
    Real is abstract.

    But here we are.
    Happy 1984. Just a little later than predicted.

  27. Chuck Wagon January 4, 2017 2:41 am

    @montypython: “What makes you think she’s a witch?

    “If she floats, that means she is made of wood.”

    “If she sinks, it means she’s not a witch.”

    “But if she sinks, that means she drowns.”

  28. Burl Ives January 4, 2017 2:51 am

    Let us imagine Justice Thomas as the host of “In Search Of,”‘starring Leonard McCoy.

    “Today we are searching for an abstract idea. We hope to find one on Easter Island. They have these large statues, called Mori. They are unique, and they certainly are non obvious, but they are based on the idea of a human head, so they are directed to an abstract idea. Since they are generally humanoid, they are not significantly more.” Ok then! The patent system has just been blown up.

    Its time for clown makeup at the ptab. Pppft ppft.

  29. Ely Erlich January 4, 2017 5:31 am

    Gene – if this article wasn’t coming from you I wouldn’t believe the interpretation of the case you gave.

    Even though everyone outside of the US has expressed exasperation at the current situation, this is beyond understanding.

  30. Dan Feigelson January 4, 2017 5:42 am

    Holy bull$h!t, Batman!

    It’s a frickin’ MACHINE. It has big frickin’ magnets that are too heavy to lift without pulleys. If you’ve got a pacemaker and you approach one of these machines, you’re screwed, b/c the magnets will mess up the pacemaker.

    But this is “abstract”. Maybe because it works on the basis of magnetism, which can’t actually be seen, I guess.

    Way to promote the progress, PTO.

    If you think what’s claimed is obvious, kill the claim on that ground. But don’t insult our intelligence by asserting that something we can touch is “abstract”.

    The CAFC has slowly started to realize that unless it reins in these kinds of idiotic decisions, the US patent system really is screwed, so maybe – thousands of wasted dollars later – this one will turn out ok. It would be fun to read an opinion of Judge Newman in a case like this.

  31. Benny January 4, 2017 5:43 am

    The inventor doesn’t claim to have invented an MRI machine. Actually, the inventor tells us that “it is possible to improve the operability of the MRI apparatus by providing the function capable of classifying…images obtained…and simplifying the process to be operated by an operator upon…comparing the obtained images”. (quoted from the application itself). While it is a reasonable argument that a computer algorithm which replaces the manual decision making process of the operator is patent eligible, the tone of article, suggesting that the PTAB is referring to the machine itself rather than the actual inventive process of sorting the images according to their position, is misleading.

  32. Edward Heller January 4, 2017 7:16 am

    Gene, in order to avoid a 101 rejection, the invention itself must be directed to a new or improved machine. The idea that one can recite the use of generic machines in a claim to satisfy 101 sailed with Alice.

    The claim in the present case is borderline, as it does seem to be directed to an improved MRI machine. What may have gotten the PTAB riled is the functional language in the claim. But such is not a 101 problem. Such is a problem of definiteness in some cases where the structure being claimed is not reasonably certain.

  33. Night Writer January 4, 2017 7:34 am

    @12 Kelly: really great comments. I glossed over that and didn’t even notice that.

  34. Night Writer January 4, 2017 7:46 am

    @30 Edward: here we have the anti-patent Edward (there are mirror Edwards.)

    “Directed to” is not patent law. Directed to is witch law. Patent law is 102/103/112 with an objective rational fact-based analysis.

    Anytime you get outside the realm of looks at the elements and matching them up to the prior art and making obvious arguments, or saying there are definiteness or enabling problems, you have entered witch law.

  35. Night Writer January 4, 2017 7:55 am

    “The multi-station MRI as claimed does not operate in an unconventional manner to achieve an improvement in its functionality. See Amdocs (Israel) Limited v. Openet Telecom, Inc, No. 2015-1180, 2016 WL 6440387, *10 (Fed. Cir. Nov. 1, 2016). It merely recites the performance of some long-known practice of classifying images with the requirement to perform said classification to images from a typical generic multi-station MRI. Classifying images is not
    transformed into an inventive concept by simply applying it to the images a
    typical multi-station MRI necessarily produces.”

    If this is true, then a 103 argument should be able to be put together. What they have done is a 103 by equity. We say so, so shall it be. No prior art references. No combination arguments.

    “unconventional manner” to achieve an improvement in its functionality?

    I would investigate these patent judges. Maybe we are seeing the fruit of Lee’s fingers in the board. I know it sounds like hyperbole, but I think we have entered the land of the judges as kings and queens. It is very destabilizing to our country. This is a serious question: who would stand up for the justices if Trump decided to purge them? What if Trump said, let’s impeach the whole lot. And Congress said, yes let’s. We aren’t too far from this. You see so many people are so disgusted with the people in power that they don’t care. That is what has given us Trump. This, of course, is but a very small piece of straw on the camel’s back. But, there is a strong connection between Trump and Alice.

  36. Night Writer January 4, 2017 7:58 am

    Also, “unconventional manner”? Wow. So, the combination of known elements (like a fiber optic cable) would be ineligible as direct to the abstract idea of internal reflection with the use of conventional components all acting in a conventional fashion.

  37. GS January 4, 2017 8:26 am

    I am surprised how disrespectful a public blog can get…wow!

    Anyhow, from a foreigner’s perspective it seems that the question at stake is not so stupid. At first glance, I guess the PTAB wants to make the point that the contribution to the art i.e. the classification-based display method is not patentable and therefore the machine implementing it cannot be patented.

    A similar approach was taken in Europe under the so-called “contribution approach”. It was discarded in 1999 in a landmark IBM decision T1113/97.

  38. Curious January 4, 2017 9:19 am

    What may have gotten the PTAB riled is the functional language in the claim. But such is not a 101 problem. Such is a problem of definiteness in some cases where the structure being claimed is not reasonably certain.
    All words — functional and structural — have some ambiguity. What is a fastener? a processor? a light? a bracket? I could go on and on and on and on, but all of those cover structures so incredibly different from one another that one could barely find any commonality between them all (i.e., “the structure being claimed is not reasonably certain”).

    BTW — I’ve looked at some of the claims that have your name on them. It is readily apparent that you do NOT practice what you preach — a good thing IMHO as what you preach would result in some lousy claim language.

  39. Curious January 4, 2017 9:35 am

    Getting back to the PTAB decision. I see that the Board committed the #1 error I see in all PTO actions — that of over-generalizing the invention and failing to consider the claimed invention “as a whole”. See Diamond V. Diehr. The Board writes “the claimed subject matter is directed to classification.” That is HARDLY what the invention is directed to.

    However, as Anon pointed to earlier, this is the Board/Courts/SCOTUS just resurrecting the “gist of the invention” type of analysis that the Patent Act of 1952 intended to get rid of.

    I’ve seen this type of analysis at least a hundred times before. The Examiner, the Board, the District Court, the Federal Circuit keeps stripping away elements of the claim until they are left with a supposed “abstract idea.” Once found, they declare all the stripped-away elements to be not substantially more.

    It is an incredibly easy process and can be performed on most inventions. All it takes is the (im)proper anti-patent bent, and any invention can be declared invalid under 35 USC 101.

  40. Curious January 4, 2017 9:40 am

    Maybe we are seeing the fruit of Lee’s fingers in the board. I know it sounds like hyperbole, but I think we have entered the land of the judges as kings and queens.
    For once, your comments are not hyperbole. Some may think that the PTAB are impartial judges. However, they are not an independent part of the judiciary. The are administrative judges that report to Lee. If Lee is setting the course at the USPTO against certain technologies, then the PTAB is bound to follow that course.

  41. Night Writer January 4, 2017 9:47 am

    @37 Curious: “For once,…”. Gee, thanks.

    Also, Edward just keeps it up. You note that he will not debate these issues, but then slips them in whenever he can. Edward: functional language has been used for hundreds of years. Functional language is expressly talked about in advanced engineering textbooks. Etc. You are so unethical Edward.

  42. Old Examiner January 4, 2017 9:48 am

    This is what happens when mechanical/electrical cases are decided by PTAB members with chemical engineering backgrounds.

  43. Todd January 4, 2017 9:57 am

    “An image classification method …” or “an image acquisition unit configured to …” this all abstract functional language and completely devoid of any structure of a machine. The patent claims are all functional claims with a preamble trying to confuse or blur the line to get over the abstract idea of an image classification method, see Claims 11-15. I think the PTAB is correct on this one. I don’t agree with all of the Alice/Mayo analysis, but this is an example of how NOT to claim a machine, and the claims are completely devoid of a structure and how the relationship of the components of the MRI machine work to classify the images. The claims are vague functional units with a machine preamble, and really nothing more than an abstract idea of image classification, with the wrong preamble.

  44. Gene Quinn January 4, 2017 10:12 am

    Edward @32

    You say: “in order to avoid a 101 rejection, the invention itself must be directed to a new or improved machine.”

    The invention in this case IS “directed to” an MRI machine. You can verify this by reading the preamble. Had the Board actually read the claim they would have noticed this too.

    You say: “The idea that one can recite the use of generic machines in a claim to satisfy 101 sailed with Alice.”

    That isn’t true. Where in Alice does it say this? You can’t find that statement or any support for it in Alice. Certainly this statement is in direct conflict with what the Federal Circuit ruled in Enfish v. Microsoft, where the court said that a process that runs on a generic computer could be patent eligible.

    Furthermore, the claim here does NOT relate to the use of a machine. The claim here covers a machine. BIG difference.

    Machines are patent eligible. The Board tried to pull a piece of the claim out and pretend that the claim covers only the classification component. The problem is that is not how the claim is written. To achieve this result the Board had to ignore the language actually used and redraft a claim that they admit is not obvious. Pathetic.

    -Gene

  45. Richard Catalina, Jr. January 4, 2017 10:18 am

    I have been practicing law for almost 28 years and have been a patent attorney since 1999. Just when you think you’ve seen it all. I don’t know what more to say (and that is never a problem with me!).

  46. gene January 4, 2017 10:19 am

    An [art classification] apparatus comprising:

    an image acquisition unit configured to divide an imaging region of an [art] object to be examined into a plurality of stations of respective station positions, and acquire a plurality of stations of respective station positions, and acquire a plurality of images [of the art object] having different image types for each station, while moving a table on which the [art] object is mounted, station by station;

    a display unit configured to display the plurality of images in a predetermined display format; and

    a classification processing unit configured to classify the plurality of images by [beautiful or not beautiful] image types and station position, based on imaging condition including [beauty] imaging parameters,

    wherein the display control unit displays the plurality of images by [beautiful or not beautiful] image types in spatial order of station positions, based on the classification result by the classification processing unit.

    the above abstract claim is as much crap as the patent claim at issue. there is NO patentable difference. as my expert mentor advised me twenty years ago “first you must learn to write proper claims, then you must learn to write proper claims, and lastly, you must learn to write proper claims.”

  47. Ternary January 4, 2017 10:20 am

    The PTAB decision appears to be actually worse after reading the application. It shows in FIG. 3 a listing of actual MRI sequences with the imaging plane and position identified. Imaging parameters as required in claim 1, include: inversion time, slice plane, imaging method, echo time and repetition time which are all “machine parameters,” not abstract human ideas, like “is Aunt Alice in the picture?”

    The application also explains the burden that exists on an MRI operator to select images. The independent claim clearly states: “the display control unit displays the plurality of images in a predetermined display format by image types based on the classification result by the classification processing unit.”

    A human cannot display images, it is a machine (display) that does that and does it in the application based on “imaging parameters” which are “machine parameters.” Basically, the invention is directed to an automatic control system in a machine, which is all patent eligible (I hope. Who knows nowadays).

  48. Adrian January 4, 2017 10:21 am

    Insane, the Govt of the people by the people is acting to destroy the future for the people.
    How long can we sit and suffer as our nation commits intellectual suicide?
    This decision has to be a tipping point.
    This is a national security issue as well as economic priority.
    Our right as inventors must be protected for future generations.
    Repeal A.I.A and Alice before we lose all new innovations to other countries without such ridiculous and dis-incentivizing patent laws.
    This ruling will stymie science and innovation and stop investments in such here in the USA.
    Look where this is going… Stop A.I.A and Alice from taking us off the road to prosperity. Save American Innovators, save the future.

  49. Ternary January 4, 2017 10:29 am

    In@45 The human abstract idea should be “is Aunt Alice ‘beautiful’ in the picture?” The fact that Aunt Alice is in a picture can be determined empirically and is not an abstract idea.

  50. Prizzi's Glory January 4, 2017 10:30 am

    Edward@32 seems on point.

    The grammar of the claim is hideous, and “configured to” is one of the triggers for means+function indefiniteness issues.

    The PTAB did in fact cite Cybersource 654 F.3d 1366 (2011). The reasoning might have been clearer if the PTAB had openly stated that Claim 1 was a method claim drafted as an apparatus claim.

    Here is a proposed equivalent method claim.

    A method comprising the steps of:

    a) collecting MRI data,

    b) running a classification program to sort the MRI data on the basis of a set of parameters,

    c) selecting sorted MRI data to display on the basis of a subset of said parameters,

    d) displaying said selected sorted MRI data on a display.

    The two questions are the following:

    1. Is the apparatus claim just a clever drafting of the method claim above?

    2. If so, is the method claim patent ineligible as an abstract idea?

  51. KenF January 4, 2017 10:39 am

    Prosecuting applications directed to gaming machines, I get 101 b.s. all the time. Their rationale is that games are nothing but abstract rules, and all the rest of the hardware is conventional. So it’s not patent eligible. Q.E.D. So even though it will hurt like hell in a non-abstract way if I drop it on my foot, it’s an abstract concept. Go figure!

    In my view, all of this jurisprudence — if you want to call it that and at least in the electromechanical realm — stems from misapplication of 112/1 principles. Did Morse enable all that his claims would have covered….. But the Supremes need to act like they’re so fricking erudite and, well, here we are.

  52. Jeffrey W. January 4, 2017 10:43 am

    Gene, really? Have you even read Alice?

    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 areformally 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 byreciting a computer system configured to implement the relevant concept. Such a result would make the determination of patent eligibility “depend simply on the draftsman’s art,” Flook, supra, at 593, thereby eviscerating the rule that “‘[l]aws of nature, natural phenomena, and abstract ideas are not patentable,’” Myriad, 569 U. S., at ___ (slip op., at 11).

  53. Benny January 4, 2017 10:52 am

    KenF@47,
    For example, try US9039506. Some people are just luckier, I suppose (the term “consistency” doesn’t seem to appear in the MPEP)

  54. EG January 4, 2017 10:53 am

    “However, based on the current state of the law, it’s not an egregious decision”

    One Eric to Another,

    I beg to differ: Of course it’s an “egregious decision,” even in view of the nonsensical and broken Mayo/Alice framework. That PTAB believes this tripe that an MRI “machine” is “abstract” just makes that nonsensical and broken framework all that much more of a plague.

  55. EG January 4, 2017 10:57 am

    “This is what happens when mechanical/electrical cases are decided by PTAB members with chemical engineering backgrounds.”

    Hey Old Examiner,

    I beg to differ. I’ve got an undergraduate degree in chemistry, and I perfectly understand that an MRI is a “machine.” That PTAB suggests otherwise has nothing to do with some of them having chem engineering degrees, and everything to do with misapplying the broken and nonsensical Mayo/Alice framework.

  56. KenF January 4, 2017 10:57 am

    @Benny,

    Don’t get me wrong. I eventually get a lot of them allowed. That said, I’m amazed by that one! Checking the IFW, I see who the SPE is; he and his minions tend to be more willing to allow in spite of Alice. Other SPEs and their minions, on other hand, seemingly REFUSE to.

  57. KenF January 4, 2017 10:59 am

    And re the inconsistency within a given art unit……. arb and capricious, anyone? Success comes down to the luck of the draw (pun in re gaming machines duly noted).

  58. Just Lurking January 4, 2017 11:18 am

    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. Such a result would make the determination of patent eligibility “depend simply on the draftsman’s art,” Flook, supra, at 593, thereby eviscerating the rule that “‘[l]aws of nature, natural phenomena, and abstract ideas are not patentable,’” Myriad, 569 U. S., at ___ (slip op., at 11).

  59. step back January 4, 2017 11:27 am

    EG @50

    What about when non-chemists make decisions about how obvious it is to pick and choose chemicals with aid of hindsight?

    See Newman’s dissent in yesterday’s CAFC case: In re Ethicon:
    http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1696.Opinion.12-29-2016.1.PDF

  60. Gene Quinn January 4, 2017 11:53 am

    Todd @43-

    You are incorrect. This is absolutely an example of a claim to a machine. PLEASE read the preamble. The claim is to a machine very clearly by the explicit language of the claim.

    What you raise about functional language is NOT properly considered under 101. Functional language is a 112 issue.

    Whether this claim should be patentable is not the question. The question is whether the claim exhibits patent eligible subject matter and the answer is that it clearly does. The claim is to a machine, nothing abstract about an MRI machine.

    -Gene

  61. Night Writer January 4, 2017 11:57 am

    @50 Prizzi’s Glory–Just strange that people like this think they can just rearrange a claim and judge and fabricate whatever they want. How about this—check for 112, look for the elements in the claim and make 103 arguments. That is the way patent law is supposed to work. You know, evidence based. Not some arrogant dxpe yapping their mouth off.

  62. John Cleese January 4, 2017 12:02 pm

    @27 Chuckwagon: I think you meant the following:
    CROWD: A witch! A witch! A witch! We’ve got a witch! A witch!
    VILLAGER #1: We have found a witch, might we burn her?
    CROWD: Burn her! Burn!
    BEDEMIR: How do you know she is a witch?
    VILLAGER #2: She looks like one.
    BEDEMIR: Bring her forward.
    WITCH: I’m not a witch. I’m not a witch.
    BEDEMIR: But you are dressed as one.
    WITCH: They dressed me up like this.
    CROWD: No, we didn’t… no.
    WITCH: And this isn’t my nose, it’s a false one.
    BEDEMIR: Well?
    VILLAGER #1: Well, we did do the nose.
    BEDEMIR: The nose?
    VILLAGER #1: And the hat — but she is a witch!
    CROWD: Burn her! Witch! Witch! Burn her!
    BEDEMIR: Did you dress her up like this?
    CROWD: No, no… no … yes. Yes, yes, a bit, a bit.
    VILLAGER #1: She has got a wart.
    BEDEMIR: What makes you think she is a witch?
    VILLAGER #3: Well, she turned me into a newt.
    BEDEMIR: A newt?
    VILLAGER #3: I got better.
    VILLAGER #2: Burn her anyway!
    CROWD: Burn! Burn her!
    BEDEMIR: Quiet, quiet. Quiet! There are ways of telling whether
    she is a witch.
    CROWD: Are there? What are they?
    BEDEMIR: Tell me, what do you do with witches?
    VILLAGER #2: Burn!
    CROWD: Burn, burn them up!
    BEDEMIR: And what do you burn apart from witches?
    VILLAGER #1: More witches!
    VILLAGER #2: Wood!
    BEDEMIR: So, why do witches burn?
    [pause]
    VILLAGER #3: B–… ’cause they’re made of wood…?
    BEDEMIR: Good!
    CROWD: Oh yeah, yeah…
    BEDEMIR: So, how do we tell whether she is made of wood?
    VILLAGER #1: Build a bridge out of her.
    BEDEMIR: Aah, but can you not also build bridges out of stone?
    VILLAGER #2: Oh, yeah.
    BEDEMIR: Does wood sink in water?
    VILLAGER #1: No, no.
    VILLAGER #2: It floats! It floats!
    VILLAGER #1: Throw her into the pond!
    CROWD: The pond!
    BEDEMIR: What also floats in water?
    VILLAGER #1: Bread!
    VILLAGER #2: Apples!
    VILLAGER #3: Very small rocks!
    VILLAGER #1: Cider!
    VILLAGER #2: Great gravy!
    VILLAGER #1: Cherries!
    VILLAGER #2: Mud!
    VILLAGER #3: Churches — churches!
    VILLAGER #2: Lead — lead!
    ARTHUR: A duck.
    CROWD: Oooh.
    BEDEMIR: Exactly! So, logically…,
    VILLAGER #1: If… she.. weighs the same as a duck, she’s made of wood.
    BEDEMIR: And therefore–?
    VILLAGER #1: A witch!
    CROWD: A witch!
    BEDEMIR: We shall use my larger scales!

  63. EG January 4, 2017 12:16 pm

    “What about when non-chemists make decisions about how obvious it is to pick and choose chemicals with aid of hindsight?”

    Hey sb,

    I agree with your statement as well. I’m just pointing out that us “chemfolk” are not always as clueless about “machines” as some might think. I’ve done plenty of patent applications on “machine” subject matter, and feel perfectly compotent doing so.

  64. EG January 4, 2017 12:17 pm

    Hey sb,

    LOL, I meant “competent” not “compotent”!

  65. Paul F. Morgan January 4, 2017 12:20 pm

    This is not another comment on the merits of this ex parte application Board rejection. But note that it was a new ground of rejection raised sua sponte by this Board panel [not by the examiner below] after the Board reversed the examiner’s 103 rejections. So the application should return to the examiner, where the applicant must be provided with an opportunity to respond on the record to this new rejection.

  66. Jeffrey W. January 4, 2017 12:25 pm

    Night Writer, assume that Pythagoras never existed and I discovered his theorum.

    Reject this claim under any other part of the patent statute:

    1. A computer comprising:
    a processor configured to, given a first length of a first side of a right triangle and a second length of a second side of the right triangle, the first side being perpendicular to the second side: determine a length of a hypotenuse of the right triangle by taking the square root of the sum of the squares of the first length and the second length.

  67. Prizzi's Glory January 4, 2017 12:33 pm

    Night@61 — I’m no fan of PTAB judges. I have identified a good number that I believe to have criminally violated 18 USC 1001 & 18 USC 371, but to be fair, Judge Lourie tells them in CLS Bank to look beyond the form of the claim to the nature of the claim.

    That is what we face when we have a series of claims to abstract methods and computers fitted to carry out those methods. We are not here faced with a computer per se. Such are surely patent-eligible machines. We are faced with abstract methods coupled with computers adapted to perform those methods. And that is the fallacy of relying on Alappat, as the concurrence in part does. Not only has the world of technology changed, but the legal world has changed. The Supreme Court has spoken since Alappat on the question of patent eligibility, and we must take note of that change. Abstract methods do not become patent-eligible machines by being clothed in computer language.

    It may not be obvious to those that have not worked on MRI systems, but an MRI apparatus is a computer connected:

    1. to electronics, which create time varying spatially inhomogeneous electromagnetic fields, and

    2. to probes which measure and collect resonance signals that are generated in response to said EM fields.

    The claim in question really only refers to the programmable computer part of the MRI apparatus and not to any of the complex electronics that manipulate and measure the time-varying spatially inhomogeneous EM fields.

  68. EG January 4, 2017 12:37 pm

    “But note that it was a new ground of rejection raised sua sponte by this Board panel”

    Hey Paul,

    While that is true, the fact that PTAB even considered (and requiring more than just a passing thought) that a claim to a MRI created a “new ground of rejection” under 35 USC 101 is bizarre, in and of itself. It also speaks volumes to the how application of the nonsensical and broken Mayo/Alice framework is completely subjective.

  69. Edward Heller January 4, 2017 1:03 pm

    Gene,@44, you and I are in substantial agreement and our only potential disagreement comes because the brevity of my post. Of course this claim is directed to an improved MRI machine and therefor should not have failed 101. Also, with process claims, apparatus can be generically stated and an invention can be found in specific process steps that improve the functionality of a machine or machine system.

    That said, I thought about this quite a bit more since I made my post and I believe that this case represents the singular failure of the use of the word “abstract” in the 101 context. The claim is being declared unpatentable under 101 when it is real problem is the potential indefiniteness of the following element:

    “a classification processing unit configured to classify the plurality of images by image types and station position, based on imaging condition including imaging parameters.”

    One cannot tell from this claim exactly what infringes and what does not infringe unless we know what image types, and imaging conditions or imaging parameters are. (If the claim is construed under §112(f), this difficulty might and probably would be overcome. Certainly in court, defendants would want to construe image types, and imaging conditions and imaging parameters to those disclosed in the specification effectively arriving at the same result without using means plus function.)

    So rather than attack indefiniteness head on, they simply declare the claims abstract and unpatentable or invalid under 101, when, as you say, that is patently absurd.

  70. Prizzi's Glory January 4, 2017 1:14 pm

    While I believe the decision could have been written more clearly, I do believe the board gave this decision a good deal of thought and instructed that examination be reopened on the new ground for rejection.

    We will probably see more of this sort of PTAB reversal and rejection until examiners become more accustomed to the idea that a device or apparatus like a car has a computer (or IoT) as a major component.

  71. Edward Heller January 4, 2017 1:15 pm

    Curious@38, of course I started off using functional claiming to describe novel structure like everybody else because it is easy to do and it is apparently broad. But years ago I trained myself to stop defining novel structure functionally. The effort was like trying to stop drinking or smoking.

    No doubt, well known structure can be named or described functionally. The problem comes when the structure being claimed functionally is unknown. This kind of claim requires construction to read into the claim the corresponding structure being claimed, and this type of construction of functional claim elements is today almost always mandated by the Federal Circuit’s interpretation of 112(f), even if the claim does not employ “means for.”

  72. step back January 4, 2017 1:41 pm

    Jeff W @65

    Your claimed machine does not inherently follow Pythagoras.
    Suppose I input a=1 and b=2 into your machine.
    What size registers do you use in your machine to give me back the Pythagorean answer for c?
    What enabled computer algorithm do you provide for computing square roots?

    Computers are real machines with specific register sizes and specific algorithms. They are not the fantasy “generic” stuff that the SCROTUS conjures up in their geriatric “minds”.

    Note that in the MRI apparatus decision, the PTAB conjured up a “generic” MRI. The claims require a specific MRI, one with “stations”.

    (p.s. SCROTUS= Supreme Crotchety Retrogrades of the US)

  73. Old Examiner January 4, 2017 1:46 pm

    EG,

    In making the statement re PTAB members, what I was inferring wasn’t the competency of chemical Board members, but the fact that it has become standard practice in the Office to transfer cases to Board members as well as examiners who are not skilled in the particular art for the purpose of reducing pendency backlogs. Chemical Board members should only decide chemical cases.

  74. Prizzi's Glory January 4, 2017 1:53 pm

    step@71, The comment is hopelessly retro. The computer could have been a JVM, a VMware virtual machine, or perhaps a virtual Linux box spun up under AWS. It’s possible actually something less than a full virtual machine was meant — perhaps a Docker container or something similar.

  75. Prizzi's Glory January 4, 2017 2:00 pm

    BTW, one may consider the whole Internet a single vast metacomputer.

  76. step back January 4, 2017 2:01 pm

    EG @62

    Yes ditto here. Although I have an EE degree sometimes I dabble in the alchemy arts.

    Example one: Two chemist walk into a restaurant. One dies. Why?
    Answer: The first one asked the waiter for a glass of H two Oh. The second one said. “I’ll have H two Oh too.”

    Working example number 2: Why is Santa Claus all wet?
    Answer: He keeps shouting for HOH HOH HOH.

    Sorry, no grunt jokes here about Eddie Current taking Millie Amp for a drive over the Wheatstone Bridge. That’s circuitous logic. 😉

  77. Ternary January 4, 2017 2:05 pm

    On the meaning of claim terms, read the spec:
    Image types are: a T1 weighted image, T2 weighted image and proton intensity image
    Imaging parameters: inversion time (TI), slice plane and imaging method ((Spin Echo) method or EPI (Echo Planar Imaging) )

    The spec is light on imaging conditions, but one of ordinary skill would most likely know to find those in the DICOM tag. Spec actually says: “All of the imaging parameters of this classification and later is referred to the value of DICOM tag.”

    If “experts” start examining or evaluating a highly technical inventions like this one using the terminology of an English literature class and their own experience of arranging pictures in a scrapbook, problems are bound to arise.

    This whole “abstract idea” process is getting a medieval flavor wherein judges have no clue what the underlying technology is, how the claimed inventions actually work, what the terminology means (which can be checked by reading the spec.) and where the ultimate decision appear to be based on “I know abstract ideas when I see them.” This does not reflect well on our patent system.

  78. Prizzi's Glory January 4, 2017 2:25 pm

    Ternary@76. This technology is not new, and the terminology is more or less the same as it was over 40 years ago when Lauterbur coined the term zeugmatography.

  79. EG January 4, 2017 2:25 pm

    Hey sb,

    LOL, “alchemy arts” say you? Yes, it’s sometimes “magical” how chemistry, but not as much (at least to me) as EE (my patent attorney brother Mark and I have two, normal, brothers with degrees in EE). I often refer to you folks as dabbling in field infested with “electronic gremlins,” my term for what happens when the Internet, my printer, etc., acts strangely or inexplicably.

    I do know that many find organic chemistry (my strength) terrifying to deal with. But I feel somewhat the same way about EE.

  80. Night Writer January 4, 2017 3:18 pm

    Jeff W @65

    Step back had some interesting things to say. But, also, this is not medieval Europe. We should realize that heuristic methods and equations that we have generated by our human brains are not part of nature. For example, Newton’s equations have been found to be approximations. You want to take this all the way to pure mathematics since the human brain invented Euclidean geometry and the Pythagorean theorem. I would not exclude your claim. How many of these equations are there? Very few. How often are they discovered/invented ? Very seldom. I think the policy of excluding them has probably caused fewer of them to have been invented and hurt progress more than allowing patents on them.

    Moreover, the extension of pure mathematics equations to human biology is absurd. As is the extension to applied mathematics, etc. I think modern thinkers realize that all this is generated by the human brain so that there is no inherent reason to exclude any of it other than if there is some special case where it would tend to not promote.

  81. Night Writer January 4, 2017 3:21 pm

    Gene et al. — what scares me about this is the following. I have had examiners tell me that the 101 routine in the business method art units is going to go mainstream. I just had an examiner tell me from a 2900 AU tell me he is being forced to reject every application under 101 (or almost all).

    So, we should be afraid that Lee is going to try to slam us all with 101 as your going away present.

  82. Edward Heller January 4, 2017 3:31 pm

    Ternary@72, your explanation is quite helpful, and I would expect in court that the claim will be construed to cover these type, conditions, etc.

    But, let me ask you this, assume the test for “reasonable certainty” is whether one was reasonably certain of whether one infringed or not “before” claim construction — that the claims have to be reasonably clear to one of ordinary skill in the art as is?

    Think if it this way: assume the claims (and a figure) were all that were published in your language as they are in Europe and that the test of definiteness is whether one could know with reasonable certainty what was claimed without having to go get a translation of the specification, or to get a copy of the prosecution history.

    What I see is that the PTO is cracking down on claims that are way too vague and become specific, reasonably certain, only upon reading into the claims a lot of material from the specification. They are doing this using 101. The comments from the supporters of the PTAB’s new grounds rejection all but prove this.

  83. Night Writer January 4, 2017 3:34 pm

    Jeff W @65 Also, remember that there is a difference between Congress passing a law and the Scotus creating laws by making ridiculous statements about inventions.

    I do not fault anyone for trying to get Congress to pass laws to agree with their beliefs of what the patent system should be. I do criticize people that make up bizarre things in court opinions, e.g. J. Stevens.

  84. step back January 4, 2017 3:48 pm

    NW @77

    e.g. Justice Kennedy and his mystical magical less-than-one man/month 2nd year engineering student in the Alice oral hearings.

    e.g. Justice Breyer and his all powerful and omniscient “abacus man” in the Alice oral hearings.

    e.g. The whole gang of Justices plucking leaves off the DNA tree in the Myriad oral hearings.

  85. dcypher January 4, 2017 4:07 pm

    Here is an example of what should be considered an “abstract idea”. See US 20070035812 (Godly Powers).
    But a claim directed to an improved MRI machine should never be considered an “abstract idea” even if it may be potentially indefinite under 112(b).

  86. Paul Cole January 4, 2017 4:21 pm

    Very sadly, I read claim 1 and was distinctly unexcited.

    Paraphrasing Groucho Marx” “I’ve seen a claim to a really patentable invention. But this was not it.”

    Those who know me will appreciate that I am no friend of unthinking Mayo/Alice rejections. But What was the invention here?

  87. Ternary January 4, 2017 4:50 pm

    Paul Cole @79, read the spec man and be enlightened.

  88. Ternary January 4, 2017 4:57 pm

    Edward Heller @76 The red flag here is “classification”, which is a term of art in library sciences and in patent prosecution. But it is also a step in automatic control. That is: a machine has to determine (classify) a condition before an action (which may be corrective) can be taken.

    As discussed in a previous post: the machine does not “know” what it is doing. It merely acts upon signals. The MRI image, prior to display, does not even exist as such, but is merely a set of signals. Classification in this application is a processing of signals of which the meaning would escape most of us, including the PTAB judges, unless a label is provided for clarification. In a strict sense a machine does not “classify”, it merely processes signals that appear to represent data that are classified.

    Clearly, we have to use words to draft a claim. The only way to interpret those words is to use the specification. So, we have come full circle: in order to draft the claims we use “common words” but with a specific meaning. However, the evaluation of these words takes place outside the context of the specification, and in the context of common language where it is related to “human” and thus abstract interpretation. And on that basis the claims are then rejected as being an abstract idea. Thus the requirement to use common language almost automatically leads to rejection as being an “abstract idea” as it relates to computers.

    Fundamentally it comes down to a lack of understanding what computers are by SCOTUS, with an Alice decision that is flawed in its scientific basis and fails to make a distinction between human reasoning and computer processing and a PTO and courts who apply this decision in a thoughtless way. You probably have to go back to the early 1920s and 1930s to find such utter confusion about what science is and what is not. There is a need again for Logical Positivists to explain what is scientific language and what is not.

    Computer language is now considered by the PTO and courts to be metaphysical if not magical in nature. That is: if you can say it in computer language and you can implement it on a machine that perform the computer language then it must be magic, like some Harry Potter phenomenon. And if it is magic then it is of course an abstract idea. Like I said before: medieval thinking. We are operating under a patent system that is disconnected from current science and technology and that applies Steam Punk rules.

    Perhaps that is how we should claim it: a boiler heated by burning coal, powering an machines with gears enabled to rotate based on signals generated by a magnet surrounding a human body, etc.

  89. Edward Heller January 4, 2017 5:44 pm

    Ternary, I am well aware of computers and computer programming having spent my entire career in the field. However, you must note that Bilski and Alice were not about computer programs, but about business methods — risk reduction and an accounting method. There was no real improvement to computer data processing being claimed.

    The high water mark of error, in my view, is Versata, where a vastly improved data processing method was held invalid merely because it was calculating price. The error was committed by the PTO, the PTAB to be precise, and affirmed by the Federal Circuit. Now, if we cannot find experts in computer programming in the PTO, where are we going to find them?

    I note that the District Court in Versata did understand the invention. That is where we are going to find justice in America — in the district courts, and perhaps in the circuit courts other than the Federal Circuit who now seem to be in thrall of the efficient infringer lobby.

  90. step back January 4, 2017 6:06 pm

    then it must be magic, like some Harry Potter phenomenon. And if it is magic then it is of course an abstract idea. Like I said before: medieval thinking.

    Ternary @81

    Amen to that.
    I’ve been trying to argue here for months that we are dealing with judges right out of the Medieval ages.

    Is there any movie that instructs us how to argue to them who have Medieval mind sets? Connecticut Yankee In a Medieval King’s Court?

    http://www.feedbooks.com/book/4195/a-connecticut-yankee-in-king-arthur-s-court

  91. Mike Archbold January 4, 2017 7:28 pm

    Apologies that I have not read all the replies (late to the party) and I’m not a lawyer… but Gene’s claim: “It is impossible for a machine to be abstract.”

    That is true if you are considering the machine strictly in terms of a physical object concretion. That says nothing, though, of what *caused* the creation of the machine. This can be thought of in terms of Aristotle’s legendary 4 causes. Gene’s argument is focused seemingly exclusively on the material cause: the materials used to create the machine.

    The other side of this is that virtually all software can be implemented eventually on a Turing machine, which as you know was just a logical machine. But the issue is that any program can still be made into a physical concretion with some variation of a Turing machine. There is a video on youtube of somebody who created a real, material Turing machine with electronics.

    So my argument here, poorly presented no doubt (it needs more work), is that whether a patent is implemented on some kind of physical medium or is run as software should not be a primary consideration.

  92. step back January 4, 2017 8:17 pm

    The Turing machine is a mathematical fantasy divorced from physical realities.

    One cannot have an infinitely long tape that moves at speeds greater than that of light and read/write cycles of zero duration. If you want to say all real world computers are Turing machines then, sure, they are all abstract. But you would be living in a universe vastly different than the one I inhabit.

    https://patentu.blogspot.com/2016/07/reciting-reality-is-dirty-trick.html

  93. Ternary January 4, 2017 9:01 pm

    One demarcation question in the “abstract idea” debate is: do you believe that calculating machines calculate?

    A calculator is a machine and is a device, not an abstract idea. The “abstract idea” is projected on machines by people who do not understand how a processor works. As Gene says: It is impossible for a machine to be abstract.

    Now what is true is that a calculating machine is directed to the concept of calculation. Not unlike the cotton gin was directed to the separation of cotton fibers from seeds, a known human activity, and thus an abstract idea, everyone knows that.

    Steam Punk science rules! It feels like “intelligent design” has invaded the patent world. “Anything goes” in the words of science methodologist Feyerabend, though he probably didn’t mean it like this.

  94. Prizzi's Glory January 4, 2017 9:31 pm

    The image acquisition unit is the PC/AT that we used at MGH circa 1988 as the computer that controlled MRI/Zeugmatograph. It sent commands to the motors that controlled the position of the table and sensors, and it controlled the EM field generators. Once everything was in place, it started dumping the data into one or more files on the disk.

    Now let’s add PC/NFS a program that was available around that time frame.

    The data files are no longer created on the local disk but on a file system of a Linux server.

    The Linux server is the categorizer. It runs a program that gives the image data files meaningful names that describe the contents of the files.

    Skip to 2009.

    The undergraduate lab assistant learned about node.js from one of his friends at MIT-LCS. He implemented a 60 line node.js server that included some library files created by the guys at MIT-LCS and that would list the categorized files in a user-friendly web page which could be delivered to a browser running on the lab assistant’s laptop (the display control unit). Now one of the MGH doctors could click on the human-friendly categorized file name, and the image appears in the browser. The MGH doctor calls the principal investigator over. The PI is impressed and says to himself. I have to patent this apparatus. He calls a Harvard IP lawyer, and two weeks later the IP lawyer sends a patent application to the USPTO.

    What do you think? Is there anything patent-eligible in this combination of components?

  95. Peter Kramer January 5, 2017 1:06 am

    Examiner:
    “A generic machine that is used to implement an abstract IS directed towards an abstract idea.”

    Sorry, a machine that is used to do ANYTHING is a machine.
    The machine was already found to be novel and not obvious, therefore even if one were to insist the absurd notion that a machine can be an abstract idea, the novelty and nonobviousness is incompatible with the notion that the claim lacks the requisite “something more”.
    Thus, even if Mr. Examiner used proper English grammar and concluded that the claim (as opposed to the machine itself) is indirectly directed via a machine to an abstract idea, does not overcome the “something more” requirement.
    What is really sick about Alice is how it assumes that a claim that invokes generic apparatus to accomplish something new is “abstract” based upon WHEN the invention was invented. If a claim is actually claiming an abstract idea it should not matter when the claim is examined. Obviousness depends upon when an invention is invented (in light of prior art). Abstractness is something completely different and the USSC has managed to muddy the waters with idiotic doublespeak that somehow concludes an apple is not an apple but rather a peanut.

  96. Judith_IP January 5, 2017 4:40 am

    I’m not surprised. I currently have a 101 rejection on circuit, which recites specifically wires, capacitors, and a sensor. Apparently that’s abstract.

    I assumed it was a thrown together rejection, but no, the Examiner doubled down that it’s merely an abstract idea of measuring capacitance and voltage.

    I have no idea how to respond.

  97. Inventor Woes January 5, 2017 5:08 am

    It seems counterproductive to use 101 here when it seems obvious (pun intended) to use 103 as a rejection instead. It seems from the opinion of the PTAB that they had taken a typical 103 argument and transformed it into a 101 argument. Interesting, but why would they do that when 103 seemed good enough?

  98. Prizzi's Glory January 5, 2017 6:32 am

    Inventor@103, 103 and 112 certainly work as rejections, but Rubber-Tip Pencil Co. v. Howard certainly provides a precedent for rejection even if SCOTUS cites it more than the Board does.

    The Applicant should probably be prepared for new 103 and 112 rejections from the Examiner.

  99. Edward Heller January 5, 2017 7:43 am

    Peter Kramer@87, I fully agree that calling a claim that includes machines, albeit generically described, abstract is a perversion. The Supreme Court in Bilski really jumped the shark.

    The problem of the claims in both Bilski and Alice was that the novel subject matter, the invention, was directed to something nonstatutory, what we know as business methods. I know that the Supreme Court did not hold them ineligible because they were business methods, and that is exactly the problem. By using the word abstract to describe the eligibility problem with business methods, we are now dancing a dance in Wonderland.

    Whether something is statutory or nonstatutory is independent of novelty. However, when a claim includes both statutory subject matter and nonstatutory subject matter, the invention must be in the statutory. That is why the investigation of whether the statutory subject matter in the claim is novel or not is important.

    So properly construed, Alice step one first identifies whether the claim is claiming nonstatutory subject matter; and Alice step two next identifies whether the claim also includes an inventive application: where the invention is in the means. Take Versata for example. The overall claim was directed to a method for calculating price, and price clearly is nonstatutory. However, the claim also was directed to a novel data processing method that vastly sped up the calculation. That was an inventive application – in computer technology to be specific.

  100. Night Writer January 5, 2017 8:01 am

    >The problem of the claims in both Bilski and Alice was that the novel subject matter, the invention, was directed to something nonstatutory,

    Ned, the anti-patent judicial activist has arisen again. The problem is that they are using this witch construct, “directed to” some abstract concept in their heads that has no meaning, and the test for whether it is the abstract concept is completely subjective, e.g., is it a witch.

    But that is just reality. I know we live in a post-reality world.

  101. Night Writer January 5, 2017 8:06 am

    And, Ned (Edward), please. Anyone that knows anything about innovation knows that “business methods” are a vast, vast, innovative area that are going to transform human existence over the next 100 years. And, not only is there no way to say what a business method is, but there is no reason to exclude them.

    Again, it is some ridiculous abstract concept in the head of a Ned (Edward) with no fixed definition. A know I don’t like the claim when I see it test.

    Try 102/103/112. Never seen a claim that this three didn’t handle just fine. Thrown in scope of enablement and all the functional claiming nonsense disappears.

    So, what we see is that the anti-patent judicial activist have created all these abstract words to try to burn the system down. Focus on scope of enablement, 102/103/112 (and TSM), and the system works just fine.

  102. step back January 5, 2017 9:13 am

    Night Writer @91

    The fault lies not in Ned the Ed or in his stars but in the SCROTUS
    (Supreme Crotchety Retrogrades of the US).

    These throwbacks from the Medieval Ages maintain that inventors are subhuman witchcraft workers who do not deserve legal counsel or due process of law.

    The legal assistance that the subhumans seek is referred to as mere draftsmen in the deceptive arts, trying to fool the SCROTeti with those cleverly worded patent claims.

    But no. The SCROTeti can see past the deceptive verbiage of crafty scriveners. The SCROTeti own a magic witch detecting instrument, namely their famous claim direction detecting crystal on a string.

    Hang the crystal over a claim and the crystal magically twirls until it points along the direction that the claim is “directed to”.

    Amazingly, it always points to the Abstract North.
    Or is it the “Natural” Phenomenon South?

    Oh who cares.
    Dunk the claim in SCROTUS holy water to see if it floats or if it is heavy enough to be something “significantly more.”

    Those witchcraft weaving inventors always figure out ways to float instead of just giving up and drowning, That of itself proves they are witches. Hang them all (and their Toto like tail wagging draftsmen). Nee Ha Ha. Nee Ha Ha.

    https://patentu.blogspot.com/2016/10/from-salem-to-sequenom-following-whacko.html

  103. step back January 5, 2017 9:29 am

    There is a witch hanging party every day.
    We live in enlightened (not) times.

    Consider this recent PTAB opinion:
    https://drive.google.com/file/d/0B_-CgBgH3bSkTzRsZU8wbWFnUmc/view (Ex parte Shakkarwar 1/5/2017)

    A Near Field Communication (NFC) device having 1st and 2nd internal storages for use in paying for a financial products is inherently a “generic” computer.

    “Merely combining several abstract ideas does not render the combination any less abstract.”

  104. step back January 5, 2017 9:39 am

    Yes cut off the heads of the lawyers that aid the “purely evil” witchcraft weavers:

    Gust vs. Alphacap Ventures
    http://www.computerworld.com/article/3153924/technology-law-regulation/a-potentially-fatal-blow-against-patent-trolls.html

  105. Night Writer January 5, 2017 10:19 am

    step back: I agree. You note too that the Ed’s and Ned’s and the unethical Lemley turn and run and never address these issues.

    They just repeat their abstract ideas and say that a machine or invention is a witch (abstract idea or natural law) and use their tests with no evidence to prove they are right. Ridiculous. Look and find the elements in the prior art and make combinations arguments or 112 arguments–stop your witch arguments.

  106. Ternary January 5, 2017 10:42 am

    Step, thanks for pointing out this case. It follows the same formulistic approach as the MRI case. No, the prior art did not teach the invention (so no 103 rejection), but yes every step is known according to the Board (“All of the claim limitations are well-understood, routine, conventional activities previously known to the industry.”) They really do not worry about little things like logical inconsistencies.

    The term abstract relates to human activities. The claim (look it up, it is really interesting) requires an NFC (near field) apparatus with two storage devices. Data is moved from the first storage device to the second one and removed from the second one after transmission.

    Currently, we are not aware of a human having two storage devices (brains?) and having the ability to remove data from one of them. There is absolutely no human equivalent to what is claimed. So, whatever the invention is, an abstract idea it is not. The structure determined by the invention actually improves the operation (security) of the device. Surprisingly, no prior art was found to render this as obvious.

    When I read decisions like this I am wondering what the authors feel: Are they ashamed because of the complete lack of scientific reasoning and sloppy logic? Are they having a ball because they are getting away with utterly ridiculous arguments? Do they feel revulsion because they have to apply a rule that makes no scientific sense? Or do they merely follow the Book of Dictates to get the result the leadership requires? Whatever the reason, their legacy is there to be read by anyone in 15 years and to wonder how it is possible that presumably well educated people in the most advanced nation in the world could have penned down this nonsense in the 21st century.

  107. step back January 5, 2017 11:01 am

    Ternary @96

    Let’s walk backwards through your post.

    Are we indeed “the most advanced nation in the world … in the 21st century”?
    Do we have “well educated people”?

    The evidence demonstrates that the answers are no and no.

    What do the authors of these ridicule-worthy papers feel?
    Ashamed? No.
    Remorse? No.

    Sheer pleasure.
    In high school science class they felt belittled by the science geeks.
    But now they have their witch hunter’s moment in the spotlight.
    They are giving all those science smarty pants a royal smack down.
    All fully sanctioned by the SCROTUS, the highest witch whacking court in the land.

  108. Ternary January 5, 2017 11:58 am

    Step. What I find most disconcerting is that the scientific community is largely silent about this and leaves it to patent types like you, Gene, me and others on this blog to argue the idiocy of all of this.

    This nonsense of Alice, as seemingly silently accepted and not publicly opposed by scientific/technical organizations like AAAS, IEEE is an embarrassment for the whole US scientific community. We all know (or should know) what the distinction is between a machine and an “abstract idea.” And whatever the purpose behind this, it should not be allowed to use “abstract idea” to label physical devices.

    Many have a predilection for metaphysical beliefs and empirically unsupported opinions. That does not mean we should have those as legal standards. It is an absolute embarrassment.

  109. step back January 5, 2017 2:03 pm

    Ternary @108

    It’s more than an “embarrassment”.
    It is an outright attack on the legal rights of inventors.
    It labels inventors as sub-humans not deserving of legal counsel or due process of law.

    I still have not finished reading through one of the court orders (dated 12/8/2106) in the above cited Gustaf v. Alphacap Ventures. (See my comment #104). However it is astounding what the NY District Court judge says there about inventors not being entitled to access to contingency fee lawyers.

    I am just connecting the dots to a whole series of anti-inventor vitriol that robs inventors of even the right to counsel let alone to due process that other property holders enjoy. The hate, discrimination against and summary dismissal of inventors and their patents is unabashedly there in black and white print.

  110. Night Writer January 5, 2017 3:31 pm

    @109: step back: pretty clear that this is directly traceable to Google as well as the likes of Lemley the unethical purveyor of medieval theology.

  111. Edward Heller January 5, 2017 5:17 pm

    Prizzy@98, but when claims actually claim a solution, albeit functionally, the problem is definiteness, not scope and not 101. In 1898, in the case of Westinghouse v. Boyden Power Brake, the Supreme Court began construing functionally claimed elements to cover the corresponding structure described in the specification and equivalents. This practice continued until Halliburton declared the practice unlawful because of the apparent breath of the claim. This by itself was deemed objectionable even if such claims could be construed narrowly to cover the corresponding structure, etc. But, as we know, Congress modified Halliburton by specifically allowing for functional claiming in the form of means-plus-function. Today, the Federal Circuit applies 112(f) broadly even if one does not use the magic word “means.”

    So, if a claim is so broad as to basically claim a result without specifying any of the means or methods necessary in order to achieve that result, the problem is not 101, because 112(f) effectively requires the claimed to be construed to cover the corresponding structures described the specification and equivalents.

    There remains tension between 112(b) and 112(f), because, prior to Donaldson, an en banc decision in the mid-90s, the CCPA had ruled that Congress did not intend for 112(f) to overrule the requirements 112(b). In other words, means-plus-function could be used to claim old and well-known elements, but could not be used to claim the novel structure. That had to be set forth in the claim.

    But the Supreme Court has not approved of Donaldson, and it is clear that Donaldson flies in the face not only of the prior CCPA cases, but of both Halliburton and Nautilus that require the claims themselves to provide reasonably certain notice to those of ordinary skill in the art.

    All the above is only to demonstrate that if an invention is in fact claimed, albeit functionally, the problem cannot be 101. Extending Bilski and Alice to cover functional claiming, I think, is wrong or at least wrongheaded. Nonstatutory subject matter, such as mathematics, laws of nature or the like, can be applied in useful applications to produce improved machines, manufactures, compositions and processes. This has been well understood since at least Diehr.

  112. Peter Kramer January 5, 2017 9:49 pm

    Edward Heller, your comments are well taken, however, I am more concerned with the novel and nonobvious apparatus that was claimed. The machine was claimed with a novel configuration of hardware, that was also found not to be obvious: ” “Giger does not explicitly teach that the object to be examined into a plurality of stations of respective station positions.” With this hardware configuration the machine could perform functional actions disclosed in the claim — functional action which may also describe a method. But the structure disclosed in the claim enabled the function, and I don’t think anyone can reasonably call the claimed invention in this particular case as an abstract idea.

  113. Peter Kramer January 5, 2017 9:58 pm

    I should add that”The claimed subject matter involves a multi-station magnetic resonance imaging apparatus (MRI).” Looking again, I’m not sure (not being POSITA in MRI) if the apparatus actually has a novel configuration, but rather a novel use. I’m not sure that the Board had a clear understanding of the technology either.

  114. Ternary January 5, 2017 11:04 pm

    Peter Kramer @113. Please read the specification in combination with the drawings. The publication number is 20100119136 and you can quickly download the images from http://www.pat2pdf.org. The multi-station configuration relates to: “the multi-station imaging method which performs imaging by dividing an object into a plurality of regions.” The MRI machine can be operated in different “modes” (if that is the correct term) and use other machine properties. In many cases one wants to “reconstructs images of a wide region of the object.” Read paragraph [0005] and [0010] of the spec what the problems are in multi-station MRI.

    Back to your question. The multi-station MRI is admittedly known and the use is also known. The fight is truly about automatic classification and if it is an “abstract idea.”

    It seems the use of the term “classification” set off the Board. The term “automatic control” to display an image might have created fewer problems. Declaring an MRI machine an “abstract idea” because it performs automatic control of image display is of course idiotic. Most certainly because the Board declared that this automatic control (termed “classification”) is not obvious over the cited prior art. It is a shameful and embarrassing decision.

  115. Prizzi's Glory January 6, 2017 2:44 am

    Just FYI. The Chinese Patent Office granted the Chinese version of this patent.

    https://www.google.com/patents/CN101677782B

  116. Prizzi's Glory January 6, 2017 2:47 am

    Also as I pointed out in Prizzi@94, this technology is old, and there really is not anything being claimed that is deserving of a patent.

    https://books.google.com/books?id=g9klBAAAQBAJ&pg=PA33&lpg=PA33&dq=multistation+MRI&source=bl&ots=3S6Tsc6m8-&sig=uc5eVygw-d6_gx2YS40OTtLzUh0&hl=en&sa=X&ved=0ahUKEwir1NyJga3RAhUBbiYKHe9eAigQ6AEIQDAL#v=onepage&q=multistation%20MRI&f=false

  117. Eric Berend January 6, 2017 3:05 am

    Well, there it is. It is a bitter pill to contemplate, that I get to say “I told you so”, as a ‘mere’ inventor (“mere” in the sense of possessing legal expertise, that is):

    THIS WHOLE RACKET WAS DELIBERATELY PLANNED AND EXECUTED WITH THE SPECIFIC GOAL OF DESTROYING U.S. PATENT LAW FOR ACTUAL INVENTORS; SO THAT WEALTHY INFRINGERS CAN STEAL THEIR U.S. CONSTITUTIONALLY DEFINED PROPERTY. AS THIS PTAB DECISION ILLUSTRATES, THERE IS NO LONGER ANY BOUNDS UPON THE APPLICATION OF ‘OBSCENITY’ LAW (The Judge supposedly “knows it when he/she sees it”).

    This whole giant racket now perpetrates FRAUD UPON GENUINE INVENTORS AND ATTEMPTS TO INSTITUTE RADICAL CHANGES IN LONG-STANDING ATTORNEY PRACTICE OF COUNSEL (contingent agreements as to representation, as a matter of right, tort or property cases – see Judge Cote’s decision, reported at a reference, linked above).

    OKAY, “CLASS” (e.g., the readership of attorneys viewing this comment): for just HOW LONG HAS THIS PRACTICE BEEN ESTABLISHED? COULD IT BE, EVEN SINCE PRE-COLONIAL TIMES?

    Reading these news items and their implications, I am literally almost physically sick to my stomach and thoroughly disgusted. Just why did my father bring a prototyped and proven ‘Prius’ design to the New York International Auto Show – 1961?! Now appearing at a McLaren F1 near you!

    Why should I have bothered to use over six years of my life and countless hours of REAL-WORLD development, investigation and testing, thinking so hard at times to solve aspects of the apparatus that my head almost hurt from the effort? This, from a man who has been IQ tested as “Superior Gifted”?!!

    AND THE INFRINGERS WANT TO BE ABLE TO STEAL IT AND ALL REAL INVENTIONS, FOR FREE!!

    The unvarnished TRUTH!

    MUCH more SINISTER than the vast majority of attorneys and patent industry personnel could normally conceive.

    BUT, THERE IT IS.

    Sadly, the most likely outcome for me, is that I will likely, eventually, see another inventor claim my essential invention and tilt against the Quixotic windmill of either the U.S. or European patent systems – and be steered into an expensive route to fiat-mandated public disclosure; all while the specific disclosure rules of patent applications give advance notice to foreign and domestic infringers alike.

    And Computerworld DARES call so-called ‘patent trolls’ the worse sort of “EVIL”?!!!

    This – THIS, what we witness here; as demagogues burn the house down – THIS, IS TRUE EVIL.

  118. Night Writer January 6, 2017 8:59 am

    @111 Ned the Ed is up to his anti-patent judicial activist behavior again. Ned the Ed there is nothing wrong with functional language for the “novel” structure. It is how a person skilled in the art would talk about it and would describe it in a journal article. It is proper. It is well understood what is meant.

    @115: Ned the Ed is one of the people you are talking about, but he pretends to be a friend of patents while saying things like, as long as it has a ROM it is fine. He consistently tries to find some way to break the system so it is impossible to properly claim an invention. That is Ned the Ed’s game.

  119. Ternary January 6, 2017 11:25 am

    Prizzi @116. (Again) Read the claims in the context of the spec and be enlightened.

    I often see this argument: the invention is considered to be not worth a patent, based on some personal assessment or impression of the technology. It is an approach often used to diminish the value of an invention and/or to absolve Authorities of blame in grievous mistakes made. (“Ah, you know what, it is a lousy invention anyway.”)

    It seems you are missing the issue of declaring an MRI machine (and it is a really big, big machine, expensive too) an abstract idea. Btw, even the Board decided that the invention as such was not obvious over the cited prior art. Merely an abstract idea.

  120. Prizzi's Glory January 6, 2017 1:03 pm

    Ternary@119. I was not saying it was a lousy invention. I was only saying that it was hardly non-obvious. The examiner was correct in his desire to reject the claims under 103 (a), but he chose poor prior art to combine and did not make an effective case.

    The claims as presented to the Board would cover a system comprising:

    a multistation MRI scanner;

    a Linux server: that runs a jetty web server; to which said MRI scanner dumps image data over a serial connection; and that is connected to a computer network ; and

    a categorizing servlet that is invoked by said jetty web server on receiving a specific HTTP GET request from a web browser running on a host computer that is connected to said computer network,

    said jetty web server transmitting hypertext to said web browser, which renders said hypertext as a menu of image file names from which one said image file can be selected for display on said web browser.

    My reference in @116 finds that multistation MRI scanners existed in 1998.

    Linux servers have been available since 1991.

    Jetty first appeared in 1995.

    Programs that categorize on the basis of file content have been around since 1975 when I first used the Unix program named file.

    The first documented version of HTTP for web browsers and for web servers appeared in 1991.

    Was there motivation to combine under KSR? Simplifying file management and presentation is one of the standard applications that programmers of ordinary creativity have been creating and recreating since electronic computers first became common in the 1960s.

    One could argue that the PTAB judges were slackers. They could have reversed the Examiners 103 (a) and then written their own 103 (a) rejection.

    What can I say? Since this discussion began, I have asserted that the opinion could have been handled or presented better, but the Examiner and the Board were both to some extent correct in rejecting the claims even if the reasoning was not optimal. In truth, the result was generous to the Applicant, who can now amend the claims and try again to obtain allowance.

  121. You Know Who I Am January 6, 2017 1:06 pm

    “Currently, we are not aware of a human having two storage devices (brains?) and having the ability to remove data from one of them”.

    Actually, the hippocampus is a small organ located within the brain’s medial temporal lobe which removes short term memories from a set of structures and replaces them with differently coded long-term memories in another structure. You know, two storage devices….

    Look up “hippocampal implant” if you want to see some really neat, non-abstract inventions….

  122. Prizzi's Glory January 6, 2017 1:09 pm

    BTW, I should have added in @120 that the international filing date of the international application from which the US application claims priority was 22.04.2008 to wit April 22, 2008.

  123. step back January 6, 2017 3:11 pm

    Eric @117

    Since comments get interlaced here you should include a back track to the comment you are replying to.

    Do you mean your above to be re the Gust vs. Alphacap Ventures case?

    http://law.justia.com/cases/federal/district-courts/new-york/nysdce/1:2015cv06192/445859/89/

  124. Slapshot January 6, 2017 3:21 pm

    It’s pretty clear to me why PTAB considered this claim to be abstract. It’s consistent with the analysis examiners are supposed to follow when doing the Alice analysis. Determine if the claim is statutory, identify if there is an abstract idea, determine if the claim sets forth more than the abstract idea. Claim is statutory because it is directed to a machine, claim features an abstract idea as laid out by PTAB, claim does not have significantly more because a generic MRI machine is not considered to be significantly more.

    Whether or not one agrees with Alice, it’s not challenging to see why PTAB reached their decision, given Office guidance in peforming the analysis.

  125. Prizzi's Glory January 6, 2017 3:45 pm

    My 103 (a) rejection argument in @120 was far too complex.

    A multistation MRI scanner is a big very complex digital camera.

    Since 1996 digital cameras have been available that connect to Windows, MAC, and Linux PCS via USB.

    I purchased such a Canon dinitial camera in 1998. It had a classifier subsystem that put static image data in a local camera directory as .jpg files and moving image data in another local directory .mpg files. The camera came with a gallery display program that copied the classified image files from the PC via the USB connection. The gallery program put the classified static image files onto the PC in a Pictures directory and the moving image files in a Videos directory.

    The image files could then be displayed on the PC via the gallery or another display program.

    After 1998 it was certainly obvious to combine a multistation MRI scanner with the elements of the 1998 PC digital camera system to produce the invention claimed in the patent application in question.

  126. Prizzi's Glory January 6, 2017 6:02 pm

    Here is a review of digital cameras from 2000.

    https://books.google.com/books?id=titFZXd5lxMC&pg=PA179&dq=pc+magazine+camera+review+2000+179&hl=en&sa=X&ved=0ahUKEwjziLbcza7RAhUI5CYKHbYaC2oQ6AEIHDAA#v=onepage&q=pc%20magazine%20camera%20review%202000%20179&f=false

    The review discloses many digital camera features obvious to combine with a multistation MRI scanner, which is itself a very large expensive digital camera.

  127. EPA dude January 7, 2017 5:00 am

    The guys @86 and @13 are correct. The claim is directed to an MRI, which in itself is known and is therefore not patentable, so where’s the claimed invention? Someone help me, I can’t find it in the claim reproduced in the article…thus, dare I say it, this seems like a good decision.

    I like you Gene, but this article is the worst I’ve read in a long time…sorry, just saying

  128. Whewell January 7, 2017 10:16 am

    Approach it from the other angle, that is – If you wanted to intentionally draft a machine-type claim that is abstract, how would you draft the claim ? What features would need to be present in the description(s) of the several elements ? Alternatively, ask, what would be the sure-fire way to describe one or more elements of an apparatus claim in order to guarantee that the apparatus amounts to nothing more than an abstract idea ?

  129. Paul F. Morgan January 7, 2017 1:01 pm

    Th publicly published comments here noting specific alleged prior art re this specific still-pending application raise interesting questions. It seems likely that at least one of the attorneys for this application may be aware of this blog. Does that attorney thus acquire a Rule 56 and IC-avoidance obligation to investigate and/or cite such art unless it is clearly non-material? If the examiner reads such a blog do they have an obligation to ask the applicants about it?
    Die Fed. Cir. appeal by the Applicant waived any confidentiality left for the pending application?
    Would this potentially enhanced disclosure duty of the owner also apply to a still-pending IPR the Fed. Cir. remands to the PTAB for further proceedings?

  130. Edward Heller January 7, 2017 3:24 pm

    Whewell, consider Rubber-Tip Pencil;

    “Blair’s patent was for “a new manufacture,” being a new and useful rubber head for lead-pencils. It was not for the combination of the head with the pencil, but for a head to be attached to a pencil or something else of like character.

    An idea of itself is not patentable, but a new device by which it may be made practically useful is. The idea of this patentee was a good one, but his device to give it effect [the rubber head], though useful, was not new.”

    https://scholar.google.com/scholar_case?case=6436373015812414012&q=rubber+tip+pencil&hl=en&as_sdt=2006

  131. Ternary January 7, 2017 3:50 pm

    a) An MRI machine is NOT a camera, not even a large one. You can derive that from details that are actually explained in the specification. Read it!!!

    b) The specification (why don’t you guys read it? You start to sound like bad Examiners) explains what a multi-station MRI machine is and how one application is to synthesize images from the different stations. The specification admits that multi-station MRI machines are known. It also explains that there are so many modes of operation (T1 or T2 weighing, proton images, orientation, echo time, inversion time, etc.) that is becomes impossible for an operator to manually discriminate and/or select images to compare or to synthesize different images. The issue here is not to arrange or “classify” images based on content, like a personal scrapbook, but on measurable machine parameters.

    The specification explains that:

    [0042] … “The conventional method of classification and rearrangement had been carried out by repeatedly executing the above-mentioned procedure until image type which is necessary for diagnosis is displayed (step S4).

    [0043] Such manual method of classification and rearrangement of images becomes a heavy burden for the operator especially in the case of using the multi-station imaging method for imaging a wide region of an object or the case of juxtaposing and displaying the images of a plurality of image types, since great number of images need to be classified and rearranged. Therefore, it is desirable that the MRI apparatus executes the classification and rearrangement of images automatically for the purpose of reducing the workload of the operator. ” The specification even provides “buttons” to select the desired process. So even if known elsewhere, an abstract idea it is not.

    c) Probably a better way to claim this is to apply a term like “automatic display control” and not classification. But the specification makes it abundantly clear that all of this is a machine claim using machine data and actually improves the working of the MRI machine. The invention is not merely a better way of file management, as suggested above. It provides an improved image display. The Board seems to understand that very well, but got hung-up on the term classification. In that sense it should be possible to overcome the PTAB decision.

    d) The rejection is in no way “generous.” It is idiotic. To declare an MRI machine, no matter what the properties are, an “abstract idea” is not of this time, and then I am generous. If prior art exists then find it. This type of rejections probably does not affect the patent owner (Hitachi) at all. They can pay the cost of attorneys and of re-filing. For a start-up or an independent inventor, this sloppy and idiotic decision can be and is usually devastating. The Board should not be excused for delivering this type of bad decisions.

    Gene and others on this blog are absolutely right: it is a bad decision, based on bad science and bad scientific methodology. It is medieval in its characterization of what an abstract idea is.

    e) The next step in this melodrama of abstract ideas, will be to declare an actual MRI machine an abstract idea. The current decision will be viewed as merely an exploratory effort. MRI machines, for all their magnets and hardware, are essentially calculating machines. The signals generated have to be processed into data that looks like an image. This takes place by algorithms that are merely mathematical expressions. Virtual reality devices and other computer based devices, including digital filters, digital modulators, sequence generators, learning machines, optimization devices, AI machines, digital cameras, CT scanners, error correcting coders, cryptographic devices, medical implants, etc are in that sense basically processors that execute algorithms with required hardware surrounding it.

    These computerized technologies are a very fertile ground for new inventions, where you need a technical education, some experience, inventor smarts and perhaps a computer to provide simple proof-of-concepts. In many cases you do not need a large research organization or a huge lab, but rather some “inventor” smarts. And that is an issue for many large companies that wish to dominate the field.

    Current trends in our patent system appear to be targeted to kill-off this type of inventions and to remove independent inventors from the patent scene.

    Excusing or absolving the PTAB for this decision because you don’t like the invention is not a good idea!

  132. Prizzi's Glory January 7, 2017 3:53 pm

    EPA@127 January 7, 2017 5:00 am
    Paul@129 January 7, 2017 1:01 pm

    I did not find Gene’s article so bad. In fact, by my standards there were real performance problems by both the Board and also the Examiner.

    Both the Examiner and also the Board realized that there were serious problems with the claims, but the Examiner generated an inadequate 103 (a) rejection. The Board dealt with this problem by reversing the Examiner and generating a new rejection that could have been formulated a good deal better.

    Gene had really good reason to complain.

    In this case it is quite easy to find prior art on the web. One need only realize that a multistation MRI scanner is a specialized digital camera.

    Here is a 2002 Sony Digital Video Camera Recorder Manual that can be quickly found on the web.

    https://docs.sony.com/release/DCRTRV950.pdf

  133. Prizzi's Glory January 7, 2017 3:58 pm

    To generate the prima facie case for obviousness by combining prior multistation MRI scanner technology with prior consumer digital camera technology, one might also need to consult the associated 2002 Network Function Operating Instructions.

    http://pdf.crse.com/manuals/3075396211.pdf

  134. Prizzi's Glory January 7, 2017 4:26 pm

    Ternary@131 January 7, 2017 3:50 pm

    If there is a problem with using a term like digital camera for a zeugmatographic device or a consumer digital photographic device, I can just say that there is a tremendous amount of technological overlap (both in hardware and also in software) among MRI scanners, PET scanners, CAT scanners, flatbed scanners, digital still cameras, and digital video camera recorders.

    Image control and manipulation problems were exactly the same in movie production as in managing MRI, PET, and CAT non-invasive medical images when Industrial Light & Magic began to experiment with blue-screening and CGI during the production of The Empire Strikes Back in the early 1980s.

  135. Edward Heller January 7, 2017 4:32 pm

    Slashdot: “…claim features an abstract idea as laid out by PTAB…”

    The central problem with the analysis of the PTAB is that they do not consider whether convention technology is being used to do something nonstatutory, or when the improvement is directed to an improved machine in the first instance.

    The whole tenor of this claim is directed to an improved MRI machine as opposed to an improved method of classification of data where the data is sourced from an MRI machine. The whole case depends upon this distinction.

  136. Prizzi's Glory January 7, 2017 4:34 pm

    I forgot the the punchline in Prizzi’s Glory@134 January 7, 2017 4:26 pm.

    MRI scanners, PET scanners, CAT scanners, flatbed scanners, digital still cameras, and digital video camera recorders are all technologically similar examples of digital imaging technology even if they are put to different applications.

  137. ZG January 7, 2017 5:38 pm

    @Gene – you keep referring to section 101 saying it’s a machine hence patent eligible subject matter. But the judicial exceptions are not statutory. They are.. judicial. Is there any authority limiting the judicial exception to only processes (which are also, on their face, patent eligible subject matter according to section 101) ?

    If not, then there is no problem with the framework of the argument (only the substance – this claim uses classification, but saying that it is directed towards classification is a gross mis-representation of the claimed subject matter), and a claimed machine can indeed be an abstract idea.

    I also note that a claimed machine is not a concrete machine that exists. It’s just a definition of a group of concrete machines in an (doesn’t say abstract, don’t say abstract) abstract (damn) way, which sets forth some of its components. Creating a machine with only the claimed components would likely not create anything useful (no electricity?).

  138. Eric Berend January 7, 2017 6:41 pm

    step back, @ 123:

    Thanks very much for the reference. There are a number of interesting areas of law touched upon in the dicta of the decision you cited there, to the benefit of an apt layperson (in the practice of law) who has not had a typical attorney’s experience of reading many thousands of briefs.

    As it happens, I don’t think that its the specific situation or article to which I referred; I will find that reference for you, if you do so prefer.

  139. Peter Kramer January 7, 2017 7:30 pm

    @136 Prizzi’s Glory

    MRI scanners, PET scanners, CAT scanners, flatbed scanners, digital still cameras, and digital video camera recorders all involve digital image generation so there must be some commonality between some aspects of these devices. On the other hand, the image capturing mechanism of a Pentax K1000 35 mm camera is not all that different than with a digital SLR: Lenses, shutter mechanism, flat surface upon which incident light is focused. A digital camera having a CCD receive incident light and transducing it to an electronic signal is somewhat analogous to operation of an eye in which the retina receives focused light and transduces to an electrical nervous signal. Digital and film cameras, and the human eye all optically form an image on a surface and the optical image is handled by some means of transduction: An optically formed image is formed then encoded. But with MRI, an image is created by mathematical manipulation of detected resonance frequencies, as opposed to capturing a transiently formed image with some means of signal transduction, the MRI creates an image de novo. That’s a significant difference despite the similarity that all of these devices (except the film camera) involve image processing. Once image data is formed, downstream processing for digital cameras, MRI, and various other image processing devices would be expected to share much in common. If the novel aspect of a particular MRI device is embodied in image processing methods similar to image processing methods used with other technologies, then that art may be analogous. When you say they are all “similar” I suspect you mean they are all similar insofar as digital image processing methods are concerned.

  140. Ternary January 7, 2017 7:39 pm

    Amen to that Peter Kramer @139. From the physical side there is almost no overlap at all between digital cameras and MRI machines, besides that both have a processor.

    Digital image processing is a separate field altogether, and it usually starts from image data. In the instant invention you cannot separate the image display from the sensor technology as MRI “sensor” parameters are used in selecting (classifying) images. This invention has nothing to do with “blue screening” or any other image segmentation technique.

    As Edward Heller correctly points out in @135 the issue here is the improved “MRI machine.” Not improved classification or even improved image processing or improved camera.

    I really don’t care if Hitachi invented something novel or obvious or non-obvious. This is such a well researched field that it would not surprise me if one of the other leading medical imaging companies has invented this. However, it could have been invented by a radiologist or other independent inventor. And they, as Hitachi, would have invented an improved MRI machine which is not an abstract idea.

  141. step back January 7, 2017 10:03 pm

    ZG @137

    Despite popular belief that SCOTUS is “Supreme” because their name says so, they are not.

    The US Constitution does not grant the SCOTeti legislative power.
    In many cases they are limited to “appellate” action.

    See Article III section 2:

    In all Cases affecting Ambassadors, other public Ministers and Consuls, and those in which a State shall be Party, the supreme Court shall have original Jurisdiction. In all the other Cases before mentioned, the supreme Court shall have appellate Jurisdiction, both as to Law and Fact, with such Exceptions, and under such Regulations as the Congress shall make.

    https://en.wikipedia.org/wiki/Article_Three_of_the_United_States_Constitution

  142. Prizzi's Glory January 8, 2017 6:35 am

    Peter Kramer@139 January 7, 2017 7:30 pm is correct if one considers the photochemical reaction associated with the film of the Pentax K1000 35 mm camera roughly analogous to the photoelectronics of the consumer digital static imaging camera.

    Even the relatively simple data collection of the digital static imaging camera requires a good amount of software to render the collected bit patterns created by the photoelectronics into an image file or into the image displayed on a high resolution raster graphic device that is typically a component of the consumer digital camera.

    Whether one is implementing the MRI, CAT, Xenon/CT, PET, flatbed scanners or the various types of digital cameras, one is basically swapping out the various rendering algorithms that convert the collected raw imaging data into image files or images on a display.

    I concede that MRI, CAT, and flatbed scanners create EM fields in order to generate the signals/photons that the electronic sensors collect, but sometimes digital and analog cameras do the same with an electronic flash or a flash bulb.

    The core elements of these digital imaging scanner devices consist of the sensor electronics subsystem and the subsystem that generates the usable imaging data.

    The MGH PET scanner,

    (1) on which I worked in the late 70s did not even have a display subsystem and

    (2) which we often called the PET camera,

    dumped the imaging data to a tape, which we manually transferred to a separate computer

    (1) that could display the slice images on raster graphics device or

    (2) that could generate photographs of the slice images.

    Later versions combined these subsystems into a single PET scanner system. In the case of MRI, CAT, and flatbed scanners, the combined system would also include the EM field generation subsystem.

    The web page whose URL is https://en.wikipedia.org/wiki/Digital_camera addresses a standard that “defines an internal file structure and naming”, to wit, classifying.

    The Joint Photography Experts Group standard (JPEG) is the most common file format for storing image data. Other file types include Tagged Image File Format (TIFF) and various Raw image formats.

    Many cameras, especially high-end ones, support a raw image format. A raw image is the unprocessed set of pixel data directly from the camera’s sensor, often saved in a proprietary format. Adobe Systems has released the DNG format, a royalty-free raw image format used by at least 10 camera manufacturers.

    Raw files initially had to be processed in specialized image editing programs, but over time many mainstream editing programs, such as Google’s Picasa, have added support for raw images. Rendering to standard images from raw sensor data allows more flexibility in making major adjustments without losing image quality or retaking the picture.

    Formats for movies are AVI, DV, MPEG, MOV (often containing motion JPEG), WMV, and ASF (basically the same as WMV). Recent formats include MP4, which is based on the QuickTime format and uses newer compression algorithms to allow longer recording times in the same space.

    Other formats that are used in cameras (but not for pictures) are the Design Rule for Camera Format (DCF), an ISO specification, used in almost all camera since 1998, which defines an internal file structure and naming. Also used is the Digital Print Order Format (DPOF), which dictates what order images are to be printed in and how many copies. The DCF 1998 defines a logical file system with 8.3 filenames and makes the usage of either FAT12, FAT16, FAT32 or exFAT mandatory for its physical layer in order to maximize platform interoperability.[43]

    Most cameras include Exif data that provides metadata about the picture. Exif data may include aperture, exposure time, focal length, date and time taken, and location.

    It is a form of classification to divide the file system between static image files and moving image files as the 2002 Sony Digital Video Camera Recorder did, whose manual is identified in Prizzi’s Glory@132 January 7, 2017 3:53 pm.

    Note that the DCF specification was defined in 1998 ten years before the patent application in question was first filed.

    As far as I can tell, the multistation MRI scanner improvement, which is being claimed, consists solely of functionality that had existed for years in consumer digital cameras and that was certainly obvious to a PHOSITA to combine into an MRI scanner digital imaging system.

    A 103 (a) rejection of the claims of the patent application in question is certainly appropriate. The Examiner merely used inappropriate prior art to make his rejection.

  143. Prizzi's Glory January 8, 2017 10:18 am

    The DCF 1998 specification can be found at: http://www.exif.org/dcf.PDF .

  144. Anon January 8, 2017 10:23 am

    step back at 141 – your point exactly.

    That is why the legislative power (as provided by the Constitution) of jurisdiction stripping would work against the Supreme Court. Patent Appeals are simply not a matter of original jurisdiction for the Supreme Court, and thus fall into the realm of items that can be stripped from them.

    Further, as long as a true Article III court exists to hear patent appeals, the “judicial review” power of the famous Marbury case is maintained.

    Congress could rather easily make the CAFC to be THAT court.

    However, the CAFC has been (possibly irretrievably) tainted by the rather forceful brow beating from the Supreme Court on patent matters, so I would rather have Congress create an entirely new Article III court with their act of jurisdiction stripping.

    Cogent (that is, non -emotional and grounded in an understanding of law) rebuttals to this proposition of mine are most welcome.

  145. Prizzi's Glory January 8, 2017 10:35 am

    And to tell the truth, we have several slightly different ways to cause signals to be generated that are captured by photosensor electronics and turned into digital data that is massaged into human viewable images of some sort.

    Consumer digital cameras capture signals that are reflected by an illuminated subject.

    CAT scanners capture signals of scattered radiation when X-rays are transmitted down the body-axis of a patient.

    MRI scanners capture signals of proton resonances that are generated when an object is subjected to a time-varying spatially inhomogeneous EM field.

    In all cases photons interact with a material which reflects, refracts, scatters, or absorbs then emits photons, which are then detected (by very similar sensors) to create raw image data. Because of slight differences in which the impinging photons are generated or interact with the material, slightly different algorithms are used to render the images, but this detail is practically irrelevant to the claims of the patent application in question.

  146. Prizzi's Glory January 8, 2017 10:47 am

    Paul F. Morgan@129 January 7, 2017 1:01 pm

    I have to ask what “IC-avoidance obligation” means.

  147. Prizzi's Glory January 8, 2017 1:31 pm

    I realized later IC is an abbreviation for Information Concealment.

  148. Dunno January 8, 2017 6:04 pm

    To me, the real problem is messing 101 up with 112 and 103. Machine is not an abstract idea. Period. Whether the machine is doing something significantly more is step 2 inquiry and has nothing to do with machine is abstract or not, which, however, i think should have been analyzed under 103. Now it seems all patentability questions are lumped to 101, which is plainly WRONG.

  149. Peter Kramer January 8, 2017 8:03 pm

    @142 Prizzi

    “Peter Kramer@139 January 7, 2017 7:30 pm is correct if one considers the photochemical reaction associated with the film of the Pentax K1000 35 mm camera roughly analogous to the photoelectronics of the consumer digital static imaging camera.”

    There is no need to falsely equate photochemistry and photoelectronics in order to point out the obvious similarities between a digital and film camera and the huge differences between MRI, in which image generation is based on an entirely different principle.

  150. Peter Kramer January 8, 2017 8:16 pm

    @142 Prizzi

    My comments concerned the differences in regard to MRI, not PET. MRI is in no way a device that can be described as a camera. The case concerned MRI, BTW.

  151. Charles Barton January 9, 2017 10:06 am

    Peter Kramer@148 January 8, 2017 8:03 pm

    I am using Charles Barton as a name in this posting because the apostrophe in Prizzi’s Honor may drive the blog filters insane.

    I like the Prizzi family series of Mafia novels. The movie Prizzi’s Honor was good even if Jack Nickolson was miscast. Nickolson played Charlie Partanna, who later became Charles Barton in Prizzi’s Glory.

    I tend to post under Prizzi’s Glory, when I see something that looks really suspicious and that is coming from the USPTO.

    I have not really gone into it, but Ex parte Hiroyuki Itagaki looks suspicious even though I believe that legitimate rejections could have been formulated by the Examiner and the Board if they had just done their jobs properly.

    (I suspect that the Board is once again being told to reject certain applications by any argument even if the argument is completely unreasonable — a procedure that seems to have been part of SAWS according to the FOIA documents. To me this behavior looks as if the USPTO breaks the implicit contract in fact to do a genuine examination when an applicant pays USPTO fees. I will discuss the issue more later.)

    I understand Peter Kramer’s position. Back when I was an undergrad, I took a 12 week course entitled Physics-112: The Physics of Waves. For 10 weeks we solved eigenvalue, eigenvector, and eigenfunction problems — something on which a mathematician might spend at most a week in a course covering linear algebra and differential equations. The other two weeks of the physics course covered unrelated problems. I was able to receive an acceptable grade with only 3 weeks of actual work in the course.

    Here is my comment Prizzi’s Glory@145 January 8, 2017 10:35 am

    And to tell the truth, we have several slightly different ways to cause signals to be generated that are captured by photosensor electronics and turned into digital data that is massaged into human viewable images of some sort.

    Consumer digital cameras capture signals that are reflected by an illuminated subject.

    CAT scanners capture signals of scattered radiation when X-rays are transmitted down the body-axis of a patient.

    MRI scanners capture signals of proton resonances that are generated when an object is subjected to a time-varying spatially inhomogeneous EM field.

    In all cases photons interact with a material which reflects, refracts, scatters, or absorbs then emits photons, which are then detected (by very similar sensors) to create raw image data. Because of slight differences in which the impinging photons are generated or interact with the material, slightly different algorithms are used to render the images, but this detail is practically irrelevant to the claims of the patent application in question.

    PET and Xenon/CT are a little different because the radiation source is put into the patient.

    Analog and digital photography reduce the amount of mathematical calculations needed to render an image by means of classical optic techniques — in the analog case mathematical calculations are generally reduced to none.

    Here is the first paragraph of the Wikipedia Nuclear Magnetic Resonance page. (I admit that I have tendencies to verbosity and pedantry.)

    Nuclear magnetic resonance (NMR) is a physical phenomenon in which nuclei in a magnetic field absorb and re-emit electromagnetic radiation. This energy is at a specific resonance frequency which depends on the strength of the magnetic field and the magnetic properties of the isotope of the atoms; in practical applications, the frequency is similar to VHF and UHF television broadcasts (60–1000 MHz). NMR allows the observation of specific quantum mechanical magnetic properties of the atomic nucleus. Many scientific techniques exploit NMR phenomena to study molecular physics, crystals, and non-crystalline materials through nuclear magnetic resonance spectroscopy. NMR is also routinely used in advanced medical imaging techniques, such as in magnetic resonance imaging (MRI).

    It is a general photographic technique to shine some EMR on something and to use the response to inscribe or to create on image on some sort of material or on some sort of display device.

    This idea has been around since around 1800 when Thomas Wedgewood conceived of the invention of photography. Nicéphore Niépce reduced the conception to practice around the 1820s in the case of the visible spectrum. Since then other inventors have been reducing the conception to practice for other types of radiation and have created a closely related family of variant inventions.

    I don’t see how one can disagree either

    (1) that zeugmatography and digital photography are at the very least analogous arts or

    (2) that the associated devices share many technological features.

    Analogous art is all that is required for a 103 (a) rejection, and the Sony imaging device, to whose manuals I linked, classified and named image files according various parameters. Some of the logic of classification and naming is described in DCF 1998, to which I also linked.

    So what is suspicious about the rejection of claims by the Examiner and the decision of the Board?

    Why did the Examiner and the Board do such a crappy job on this application, and why does this crap keep appearing in applications handled by TC3600?

    So far in association with TC3600, I have found APJs, who lie in Board Decisions in criminal violation of 18 USC 1001 and 18 USC 371; Gene has found an extraordinarily high number of prosecutions reopened after Board reversal of an examiner; and now this application that could have been rejected in a legitimate examination but instead was rejected reasonably by means of questionable prior art under a crap examination that was followed by a crap Board decision that reopened examination.

    I hypothesize that a decision is made to reject certain applications outside of the examination process in violation of the APA — such external decision was part of SAWS. I don’t know why such a decision is made. There may be pay-offs, or possibly the USPTO has been infected by some sort of gutter Schumpeterism, or possibly both the preceding are true.

    Once the higher-ups have decided to reject an application, why should the Examiner or the Board do real work on the Application? The rejection and the decision in this case may be symptomatic of such slacking. (In short, this case looks like a missing piece of the puzzle of USPTO corruption.)

    These anomalous cases will remain opaque until the public gets access to the documents of SAWS, Second Look, and other programs that look tremendously unlawful.

    I estimate that there are about 300 conspirators that work within the USPTO and that have varying levels of knowledge of the conspiratorial activities. It is not a large number relative to the number of employees of the USPTO, but they are doing a tremendous amount of damage to the US legal, technological development, and economic systems. On the hundred year scale this conspiracy is more dangerous to the USA than al-Qaeda.

    PS. The conspiracy is not specific to TC3600.

  152. Charles Barton January 9, 2017 10:21 am

    I must correct my previous post. While (133) Xe (radioactive xenon) is used in some non-invasive medical diagnostic systems, it is generally not used in Xenon-CT.

  153. Charles Barton January 9, 2017 11:21 am

    I have to direct readers to the following web page.

    https://www.cardiosmart.org/News-and-Events/2013/01/Video-Cardiac-MRI

  154. Charles Barton January 9, 2017 11:33 am

    For the purist here is a 2005 published reference to the “MRI camera”.

    https://books.google.com/books?id=f5ZPsReoG1IC&pg=PA5&dq=%22MRI+camera%22&hl=en&sa=X&ved=0ahUKEwjcwIGfvrXRAhVHSiYKHaIBArYQ6AEIIjAB#v=onepage&q=%22MRI%20camera%22&f=false

  155. Whewell January 9, 2017 2:19 pm

    Why are not these “abstract idea” rejections phrased as rejections under Sec. 112 ? If something is definite, doesn’t that mean that it is not abstract ? If something is abstract, does it not mean that it is not definite ? How can a Sec. 101 rejection be levied without there also being present a 112 ?? That which is particularly pointed out and distinctly claimed, by definition is not abstract.

  156. Whewell January 9, 2017 2:26 pm

    If 112 is satisfied, that should be enough. All this talk about “markedly different” or “significantly more than the exception..” are easily handled under the Graham analysis of 103. Why can one not reasonably argue, that all the hoopla surrounding these “new” rejections styled under Sec. 101, are superfluous to what we already had available under 112 & 103 and these new 101’s are mere hallucinations ?

  157. Whewell January 9, 2017 2:36 pm

    The issue was, the big banks and others on Wall St. didn’t like these patents popping up – American Innovation can be a pain in the ** . And the new financial-related inventions – for a lot of them a 103 was not possible based on lack of motivation in the prior art or known to the skilled artisan, to combine. So they had to invent an alleged new basis for rejection and lobbied Congress to pass AIA which even included a stipulation that most financial-related techs. would be off-limits – they put their signature right on the legislation with that clause so there’d be no doubt about it. Proverbs 22:7

  158. Charles Barton January 9, 2017 4:34 pm

    The Examiner seems to have interpreted the claims under 112 sixth paragraph. He did not identify any 112 first or second paragraph problems. The Applicant overcame the Examiner’s 102 rejections, and only the 103 (a) rejections remained.

    While it is possible that 112 issues might make it impossible to determine whether there is a 101 issue, I think those problems are usually treated as informality issues under MPEP 702.

    112 definiteness has specific statutory meaning and should not be confused with concrete, physical, materiality, or realness. It is a 19th century classical physics error to believe that a natural phenomenon that is not material cannot be real. Physicists looked for the Ether for decades before they realized their conceptual error.

  159. Anon January 12, 2017 6:16 pm

    What is old is new again (the aether has been [somewhat] replaced by quantum foam).

  160. KEN PATEL January 16, 2017 4:44 pm

    Respectfully,
    My understanding of the Patent Granting body has been, that they have a ‘mandate’ to ‘enable inventions’ and not ‘take them apart’. That would be beneficial for the Country’s industry and inventions – otherwise while we are taking apart ideas and inventions and not granting them, other ARE MAKING HAY – – ALL too obvious – what took USA to come up with Stealth Technology 50 YEARS – China accomplished it in 5 years ! Does that compute? To anyone? The same for every single patent-dis-allowance that is going on is sending the kernels of knowledge, published, flowing down the drain on the other side!

    The system should be grant the Patent with a little more ENABLEMENT – and THEN Examine it – because people and academicians are NATURALY as proven, good at taking them apart if not valid!

    I know this would be a huge ball of wax! Otherwise, some ‘logic’ has to prevail with view of ENABLEMENT.

  161. Alexander Alice April 6, 2017 2:32 pm

    Mayo v. Prometheus (2012) deals with why the court does not want to use 102, 103, and 112 to address abstract subject matter. Here are some select quotes.

    Regarding 102: “We recognize that, in evaluating the significance of additional steps, the §101 patent-eligibility inquiry and, say, the §102 novelty inquiry might sometimes overlap.But that need not always be so. And to shift the patent eligibility inquiry entirely to these later sections risks creating significantly greater legal uncertainty, while assuming that those sections can do work that they are not equipped to do.”

    Regarding 102/103: “Intuitively, one would suppose that a newly discovered law of nature is novel… But §§102 and 103 say nothing about treating laws of nature as if they were part of the prior art when applying those sections.”

    Regarding 112: “Section 112 requires only a ‘written description of the invention . . . in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same.’ It does not focus on the possibility that a law of nature (or its equivalent) that meets these conditions will nonetheless create the kind of risk that underlies the law of nature exception, namely the risk that a patent on the law would significantly impede future innovation.”

    While there could be some merit to the argument that the MRI machine is not just a collection of abstract ideas, or that the combination is significantly more than just a collection of abstract ideas, I don’t see where those arguments were made here. I also don’t see arguments in the comments that clearly state how claims like these should be handled exclusively by 102, 103, or 112 rejections.

  162. Herr Veevell April 8, 2017 6:14 pm

    Can an abstract idea ever be particularly pointed out and distinctly claimed ?? Or, is it always the case that a claim directed to an abstract idea necessarily lacks definiteness and could be rejected as being indefinite under 112 ? Is it possible to state an abstract idea with definiteness, or is an abstract idea always inherently indefinite, because by definition it is abstract ? It seems to me that all the cases invalidated on the concept of “abstract idea” under 101 could have just as easily been invalidated for being abstract.

  163. Herr Veevell April 8, 2017 6:15 pm

    ….. under section 112.

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