Iancu: People have a right to know what is patent eligible

By Gene Quinn
June 11, 2018

“What is it that we want to exclude from patenting, people should know up front,” Iancu said forcefully.

Andrei Iancu

Director Andrei Iancu. Source: IPWatchdog.

This morning Director Iancu spoke at the IAM sponsored IPBC Global meeting in San Francisco at the Palace Hotel. As has become common for Iancu speeches, his speech focused on the confusing nature of patent eligibility under the current test endorsed by the Supreme Court – the Alice-Mayoframework. During his speech Iancu asked “is it that we don’t understand 101, or is it that the law is just too complicated?” His speech would clearly answer that Director Iancu believes the law has become too complicated and decision makers are reading too much into Supreme Court decisions.

To prove his point, Director Iancu discussed whether the phonograph, invented by Thomas Edison, would be patent eligible today. When he reached the end and concluded that it probably would not be patent eligible today because it is an abstract idea that really added nothing significantly more, he explained that he was playing devil’s advocate. Still, his message was clear. Iancu referred to the current eligibility test as a “tortured exercise” that doesn’t allow examiners to even get to the question about whether the claimed invention is novel or nonobvious.

While the subject matter of the speech was similar, this speech by Director Iancu was different. It was much more direct and forceful than any of his previous speeches. Iancu asked how inventors are supposed to know where to focus energy and effort without knowing what is patent eligible. That is an excellent question. One that Congress and the Courts should take to heart and thoroughly consider. Very real damage has been done to the U.S. patent system as the result of unnecessary uncertainty and an overly restrictive view of what is patent eligible in the U.S.

Director Iancu would go through the list of things we collectively understand are not patent eligible, such as isolated DNA, gravity and the like.

“Let’s be transparent,” Iancu said. “Let’s make a list.”

“What is it that we want to exclude from patenting, people should know up front,” Iancu said forcefully.

“We must be careful to not overread the Supreme Court’s exclusions,” Iancu said before quoting the Supreme Court recognizing that their tests could if applied expansively swallow all of patent law. “Why not simplify,” Iancu asked.

During the question period with Richard Lloyd of IAM, the issue of legislatively reforming 101 came up. Director Iancu explained that if the courts and PTO closely followed the Supreme Court’s decisions and did not read too much into the decisions and exclusions, reform of 101 might not be necessary.

EDITORIAL NOTE: This article will be updated once the transcript of Director Iancu’s speech is made public by the USPTO later this morning. 

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 43 Comments comments. Join the discussion.

  1. Appearance of ... June 11, 2018 1:11 pm

    I like the idea of “closely reading” the Supreme Court 101 decisions. Perhaps so “close” that the decisions only refer to those specific invalidated patent claims and nothing more.

    The rule can then be: 35 USC 101 as written, but if someone drags your patent in front of the Supreme Court, you are screwed.

  2. Gene Quinn June 11, 2018 3:37 pm

    Appearance of…

    That is exactly what the Federal Circuit used to do. It is the proper thing for an appellate court to do frankly. The Supreme Court has taken cases with bad claims and at times bad specifications and questionable innovations. Rather than limiting the language of those ruling to the bad facts in front of the Supreme Court the Federal Circuit has done the exact opposite. It has led to terrible mischief that has destroyed patent values.

  3. JTS June 11, 2018 4:07 pm

    How encouraging to have a Director who views his job as furthering the public good, without any pro or anti bias. Director Iancu is identifying the main problem with 101 jurisprudence, which is uncertainty, not scope of eligibility. Would like to see him also focus on what gave rise to IPRs: examination that is too often incompetent.

  4. Ternary June 11, 2018 4:21 pm

    “…and did not read too much into the decisions and exclusions, reform of 101 might not be necessary.”

    We are already way beyond this point. The genie is out of the bottle and efficient infringers are making sure we cannot put it back in. Unless we get to a clear and irreversible indication that anything done by a machine cannot be an “abstract idea” and cannot be “directed” to an abstract idea, we need reform of 101.

    The implication of Director’s Iancu’s speech is that SCOTUS did not really mean this to happen. But, yes, they did. Any weakening of Alice in the courts and USPTO will result in a new and even stronger SCOTUS decision that will undermine the patent system. Congress has to do its job in this.

  5. Mark Nowotarski June 11, 2018 5:26 pm

    The director has a serious problem. The USPTO could certainly narrowly read SCOTUS decisions in a self consistent way. The Courts, however have issued very contradictory decisions. Hence the no matter what the USPTO does, there is no certainty that any given Court will hold claims statutory.

  6. Shamin G June 11, 2018 6:03 pm

    Small patent holders do not have a chance. PTAB gives an infringer unlimited appeals, the law as it stands now you must file a claim where the infringers company is based. None of these rules help a cash strapped start up company in being able to protect their IPs against a company like Cisco or Google. Talk is cheap, I do not think this Mr. Iancu can rock the boat against Google and Apple, they are much to powerful and will not allow changes to take place in the laws they helped to create. The Big get bigger while the small inventors get weeded out. Sad reality.

  7. Gene Quinn June 11, 2018 6:23 pm

    Shamin G-

    I certainly understand you being skeptical. From what I see, things are changing. While it is certainly reasonable to continue to want Director Iancu to have his actions match his words, I continue to appeal to everyone to support Director Iancu and not allow the darkness of the past to keep you on the sideline. The climate is different, but people need to get off the bench and support Director Iancu, both what he says and the actions he is rolling out (i.e., BRI to PTAB and Berkheimer memo… both of which are just the beginning with more to come).

  8. Night Writer June 11, 2018 6:47 pm

    KSR and Alice are the same. What is non-obvious and what is eligible is entirely up to the fact finder. There is no law. We are back to kings/queens deciding as they wish.

    Just reality.

  9. Paul Morinville June 11, 2018 7:38 pm

    I’ve been a skeptic of the PTO. Skeptical to the point of burning my patents on the steps of the PTO.

    Iancu is the first hope I’ve seen in 5 years. I am not only hopeful, I am becoming a fan. With no question in my mind, he is doing everything he can as fast as he can do it to correct serious issues including the PTAB and 101.

    He cannot fix everything. There are limits to the scope of his power. But his changes will no doubt influence the courts and Congress.

    I agree with Gene. We need to support him.

  10. fredman June 11, 2018 7:53 pm

    The “people” who would like to know what is eligible under 101 includes examiners and PTAB judges. Sure, we all like to focus on the terrible work we see come out of the Office at times, but I know a few examiners and judges, and they all are genuinely trying to do their best, but often can’t figure out what they’re even supposed to be doing! Garbage in, garbage out. If the law is garbage, it doesn’t matter what it is applied to.

  11. Benny June 12, 2018 5:27 am

    “Let’s be transparent,” Iancu said. “Let’s make a list”
    EPO article 52 (c). The Europeans did that a long time ago.

  12. Mike June 12, 2018 9:44 am

    Just as Berkheimer states that determining whether something is routine, conventional, etc is a factual determination and therefore requires evidence of such conventionality when an examiner provides a 101 rejection, why not do the same for motivation in 103 obviousness determinations?

    That is, determining whether someone would be motivated to combine two or more prior art references is also a factual determination and requires evidential proof of the motivation. That too would go a long way in ridding of the subjective nature of patent uncertainty.

    Anything can be obvious if someone believes it so. Just like the spaghetti monster can be real to the one who believes it to be real. Let’s get some proof in 103 as well.

    Must we wait for a court decision like Berkheimer for this? Can we convince Congress that this uncertainty is also a problem and patent law needs to rid of this uncertainty? Let’s make some noise patent community!

  13. Night Writer June 12, 2018 9:58 am

    Get Trump to sign an executive order for the USPTO to follow supreme court precedent for 101 only when the facts very closely match.

    This would put pressure on the CAFC and Congress. We can only hope that 4 of the justices need to be replaced so we have some hope of sanity.

  14. Night Writer June 12, 2018 9:59 am

    @10 EPO 101 is a march. Bascially, it is like all of Europe. The laws are created to make work and favor the industries that they want.

    EPO law is not something that fits the American model of empowering people.

  15. Paul Cole June 12, 2018 11:11 am

    “Director Iancu explained that if the courts and PTO closely followed the Supreme Court’s decisions and did not read too much into the decisions and exclusions, reform of 101 might not be necessary.” I have been making this point in postings, articles and amicus briefs for the last 5 years, and am glad to hear that Director Iancu is of the same opinion.

    Isolated DNA is an interesting and important example. If a claim covers a single strand of DNA that has been isolated from a natural source and there is neither discernible further invention by the hand of man nor discernible new functionality then the exclusion may apply. But in Sequenom, the DNA which was said to be a natural product was an amplified sequence whose abundance on the very conservative figures given by Judge Reyna in his opinion was 1000 to 1,000,000 times that in nature. The purpose of the amplification, as any skilled reader of the patent would have understood, was to enable the sequence to be detected e.g. by fluorescence or radiologically. DNA of that abundance does NOT occur in nature but is created by the hand of man. In rejecting the outcome of the second step as a natural product, Judge Reyna was flying in the face both of the facts that he had already discerned and of a line of authority going back to the adrenalin case, that line being of the utmost importance to the pharmaceutical industry even nowadays. There is NO EVIDENCE that the Supreme Court ever intended to overrule this legally and industrially important line of authority, and to say that the Court did so by a side wind offends canons of judicial interpretation common to the UK and the US and going back centuries.

    The USPTO has full time legal people and is in a good position to consider carefully and objectively what the real eligibility position is following the spate of recent Supreme Court decisions. Careful analysis would identify which Federal Circuit and District Court decisions were legally and factually correct and establish precedent that should be followed, and which should be treated as incorrect and should be placed on the garbage pile. The decisions in Sequenom and Recognicorp, in my opinion should be placed on the second pile, see https://cdn.patentlyo.com/media/2015/08/Ariosa.COLE_.pdf where it is argued that the amplified DNA was a non-natural element qualifying as a “manufacture” and also https://www.supremecourt.gov/DocketPDF/17/17-645/22427/20171204145518298_17-645.amicus.final.pdf arguing that more attention should be given to positive eligibility and that the words “directed to” permit judicial interpretations inappropriately untethered from the claim language.

    Not only, in my submission, should Director Iancu initiate such a study, but he would be well advised to publish preliminary results and then open it up to comments from the profession and hopefully hearings which the profession and the public could attend. Where there is a danger of error or reconsideration of an appellate decision is needed, the filing of an amicus brief on behalf of the USPTO could be both helpful and authoritative. That would elevate the USPTO from the status of a follower to a leader by example, and could help to remove many of the problems with which Director Iancu is rightly concerned.

  16. Curious June 12, 2018 12:17 pm

    A lot of good comments. Ultimately, the problem stems from the Supreme Court and their creating, from whole cloth, the list of exceptions to statutory subject matter. By picking and choosing what tests to apply and how the tests are to be applied, the Courts are making policy decisions as to what inventions should be patentable subject matter and what inventions should not be patentable matter.

    These policy decisions BELONG to Congress. As Anon has pointed out many times, the power to create patent law was given to Congress by the Constitution.

    There are only two ways this problem is going to be fixed:
    Option 1 is two parts:
    1) The Supreme Court recognizes that 35 USC 101 is not a condition for patentability under 35 USC 282(b)(2) (thereby eliminating post-grant challenges under 35 USC 101); AND
    2) The USPTO limits application of any prior judicial precedent to the facts of the cases.

    There are problems with this option (mostly dealing with the prior judicial precedent, which is the fly in the ointment.)

    Option 2 is to have Congress rewrite 35 USC 101 and expressly overrule ALL of the Court’s prior precedent. They would have to rewrite 35 USC 101 to make clear that the Court has no power to create “judicial exceptions” and that Congress meant what they said that patentable subject matter includes “anything under the sun that is made by man.”

    Ultimately, unless Congress steps in, the problem is only going to get worse. The number of (competing) court-created tests will only grow. Moreover, these tests are becoming inconsistent with one another such that the selection of one test over the other determines whether a claim passes muster under 35 USC 101. Don’t like a graphical user interface, cite Electric Power Corp. Like them, then cite Core Wireless Licensing. Preemption is important — except when it isn’t. An improvement to prior technology is important — except when it isn’t. Evaluating the claimed invention, as a whole, is important — except when it isn’t.

    I could reject just about anything, computer technology, biotechnology, even basic electrical and mechanical inventions by jisting the invention down to some ‘abstract principle’ and waving away the rest of the limitations. It isn’t that hard to do. Almost all inventions start with an “idea” that ultimately gets fleshed out by the inventor. Choose to ignore the “flesh” and focus on the “idea,” and you’ve got the makings of a rejection under 35 USC 101.

    The long and short of it is that there is little the USPTO can do. They are constrained by both the statute and the case law. Moreover, allowing applications that will surely get shot down by the Courts won’t help things either. The Supreme Court (and the Federal Circuit) aren’t likely to conquer their addiction to making policy. As such, it is up to Congress. However, Congress is addicted to campaign dollars and the biggest providers of campaign dollars are efficient infringers (i.e., the large corporations like Facebook and Google).

    I don’t want to say there is no path forward. However, absent extraordinary circumstances, it could be decades before things significantly change for the better.

  17. anony June 12, 2018 2:08 pm

    @12 an executive order may not be necessary if Iancu is willing to force the Office to issue guidance with the same effect. Another question is when will the examiners be trained and rewarded for “finding eligible subject matter” instead of being trained and rewarded for “finding a rejection”.

  18. Night Writer June 12, 2018 2:14 pm

    @14 Curious >>I don’t want to say there is no path forward. However, absent extraordinary circumstances, it could be decades before things significantly change for the better.

    I concur. My guess is that innovation will continue to decrease in the US over the next decade and that patents will continue to be weak if not weaker. Again, I am predicting a huge decrease in the number of original patent applications from US companies in the next downturn. The big companies are going to cut prosecution budgets to make the Wall Street numbers. Not sure how bad it is going to be, but my guess is that it could go as high as 60-80 percent in some companies. Probably 10-20 percent in many companies. Do not chose patent prosecution as a career.

    This is like anti-trust law. To go backwards is to fight the large multinational corporations that the SCOTUS, Congress, the lower courts, and the President all favor.

  19. John Wu June 12, 2018 2:25 pm

    The mental steps doctrine has distorted modern medicine.

    The mind-body model is supported by huge number of medical miracles in the entire human history. The medical “incurable concept” was legally created by the mental steps doctrine and FDA double blinds controlled trial methodology.

    Subjective signs and personal feeling are the SOUL of personal health. The mental steps doctrine precludes every invention and commercial effort for finding true cure; and the FDA regulations preclude all research activities involving subjective mind/feeling in finding treatment methods , diagnostic methods, and health evaluation methods. This creates common phenomenon that most diseases would not be found before patients have hit the about 20% of functional thresholds of vital organs for survival.

    The mind-body concept was originated from China, India, etc. However, China copied U.S. patent law including the mental steps/abstract concept bar.

    Modern discoveries have established that mind controls or influences organ-organ interactions, the immune system and stem cell repairing behaviors.

    Chronic diseases cannot be cured without the role of mind. However, training mind is a extremely complex task. Whatever in mind-body was old products of ancient people. No meaningful researches are done in mind-body model. The political system treats it as junk science.

    As long as Patent medal steps doctrine and FDA double-blind controlled trials methods are not abolished, the world will continue to exist without cure.

    It is in everyone’s interest to completely abolish the mental steps doctrine. That will let people experience chronic-disease free world.

  20. Paul G Cole June 12, 2018 3:08 pm

    “Director Iancu explained that if the courts and PTO closely followed the Supreme Court’s decisions and did not read too much into the decisions and exclusions, reform of 101 might not be necessary.” I have been making this point in postings, articles and amicus briefs for the last 5 years, and am glad to hear that Director Iancu is of the same opinion.

    Isolated DNA is an interesting and important example. If a claim covers a single strand of DNA that has been isolated from a natural source and there is neither discernible further invention by the hand of man nor discernible new functionality then the exclusion may apply. But in Sequenom, the DNA which was said to be a natural product was an amplified sequence whose abundance on the very conservative figures given by Judge Reyna in his opinion was 1000 to 1,000,000 times that in nature. The purpose of the amplification, as any skilled reader of the patent would have understood, was to enable the sequence to be detected e.g. by fluorescence or radiologically. DNA of that abundance does NOT occur in nature but is created by the hand of man. In rejecting the outcome of the second step as a natural product, Judge Reyna was flying in the face both of the facts that he had already discerned and of a line of authority going back to the adrenalin case, that line being of the utmost importance to the pharmaceutical industry even nowadays. There is NO EVIDENCE that the Supreme Court ever intended to overrule this legally and industrially important line of authority, and to say that the Court did so by a side wind offends canons of judicial interpretation common to the UK and the US and going back centuries.

    The USPTO has full time legal people and is in a good position to consider carefully and objectively what the real eligibility position is following the spate of recent Supreme Court decisions. Careful analysis would identify which Federal Circuit and District Court decisions were legally and factually correct and establish precedent that should be followed, and which should be treated as incorrect and should be placed on the garbage pile. The decisions in Sequenom and Recognicorp, in my opinion should be placed on the second pile, see https://cdn.patentlyo.com/media/2015/08/Ariosa.COLE_.pdf where it is argued that the amplified DNA was a non-natural element qualifying as a “manufacture” and also https://www.supremecourt.gov/DocketPDF/17/17-645/22427/20171204145518298_17-645.amicus.final.pdf arguing that more attention should be given to positive eligibility and that the words “directed to” permit judicial interpretations inappropriately untethered from the claim language.

    Not only, in my submission, should Director Iancu initiate such a study, but he would be well advised to publish preliminary results and then open it up to comments from the profession and hopefully hearings which the profession and the public could attend. Where there is a danger of error or reconsideration of an appellate decision is needed, the filing of an amicus brief on behalf of the USPTO could be both helpful and authoritative. That would elevate the USPTO from the status of a follower to a leader by example, and could help to remove many of the problems with which Director Iancu is rightly concerned.

  21. Ternary June 12, 2018 4:02 pm

    Curious @14, Excellent Post. “anything under the sun that is made by man.” Nothing less. Especially now we are close to approaching a stage where: “if you can articulate it, you are probably able to make it.”

  22. Night Writer June 12, 2018 4:37 pm

    @17 John Wu

    That is a good point. I took patent law from J Rader and he said that pretty much every area of innovation that was not covered by patents had very little innovation. He wondered aloud about business methods and forms.

  23. Jonathan Stroud June 12, 2018 6:33 pm

    I like this post and the gist of Director Iancu’s speech, though if you know me that’s no secret.

  24. Tiburon June 12, 2018 7:47 pm

    Detecting the copying of software implementations have been around for decades (comp sci schools use them to catch cheaters). No such thing exists for patent Claims.

    It is virtually impossible to implement anything without UNKNOWINGLY infringing some patent somewhere despite the implementer having never having seen the patent.

    The software industry will continue siding with the Google’s and EFF’s to invalidate software patents.

  25. Mike June 12, 2018 10:10 pm

    Tiburon @ 24.

    >> The software industry will continue siding with the Google’s and EFF’s to invalidate software patents.

    I’m a developer in the software industry, I have patents that improve upon certain components within the software industry, and therefore I do NOT side with Google and EFF.

    Without software patents to protect my inventions, why innovate? I might as well just not code and/or innovate at all. Because if I did without the protection of a patent, I’d be coding for free to my competition because Google would just copy with no recourse.

  26. Eric Berend June 12, 2018 11:53 pm

    @ 19., ‘John Wu’:

    That is a very cogent observation:

    Doctor: “please tell me where it hurts”
    Patient: some version of ‘…subjective mind/feeling in finding treatment…’

    Amid the legal parsing of relevant detail invoked here, there are actual practices of affected industries, to consider.

    And, when an ‘affected industry’ is as ubiquitously important as medicine and health, the ‘parsed’ details’ can be essential to millions of people – personally.

    Although it can be readily overlooked by this very ubiquity, these concerns are far from trivial. Thank you for pointing this out.

  27. Eric Berend June 13, 2018 12:26 am

    Gene, please note that is some inconsistency in the acceptance of comments posted. In several of the site’s articles over the past two weeks, a comment I made appeared to vanish into a spam-catcher or other handling process. However, just now on another article, my comment appeared immediately. Perhaps some fine tuning is in order?

  28. Paul Cole June 13, 2018 5:45 am

    Director Iancu’s remarks as prepared for delivery are now online @

    https://www.uspto.gov/about-us/news-updates/remarks-director-andrei-iancu-ipbc-global-conference

    They are truly inspirational and should be read by all interested in Section 101 issues.

  29. Paul Cole June 13, 2018 7:20 am

    Eric is right, and I have had he same experience

  30. Anon June 13, 2018 9:59 am

    Mike @ 25,

    Sad to say my friend, but there is a rather sizable contingent of Lemmings that parrot (with no critical thinking) that software innovation does not deserve to be protected by patents.

    Just take a look at the Slashdots and Techdirts and the massive propaganda that exists there day in and day out.

  31. Mike June 13, 2018 7:53 pm

    Anon @ 30,

    Massive propaganda or not, argumentum ad populum shall not prevail.

    Software, by nature, is showered by innovation and mental effort. It is my hope that the US shall not submit itself to the mental likeness of EU, and shifts closer to “anything under the sun made by man.” I enjoy seeing Iancu help bring some clarity to 101, especially with the Berkheimer memo.

    The takeaway I get from the Berkheimer memo? It’s impossible to argue someone’s mere OPINION properly, so when said opinion is that some element X (or combo) is conventional, the question becomes: OK, but says who? To avoid being subjective, show the facts in support of such conventionality.

    If Iancu truely desires to rid of patent uncertainty created by the courts, is is my hope that he will take it a step further and address the subjective nature of 103’s “motivation to combine”. Because when an examiner states “A skilled artisan would be motivated to combine X and Y for the purpose of Z”, WHERE’S THE PROOF? How does the examiner know this? Where’s the evidence and facts? Just like 101’s “conventionality”, is this not merely subjective unless supported by facts?

    So just as Berkheimer states that determining whether something is routine, conventional, etc is a factual determination and therefore requires evidence of such conventionality when an examiner provides a 101 rejection, Iancu should do the same for motivation in 103 obviousness determinations: proof should be required to show evidential support of the motivation.

  32. Anon June 13, 2018 9:36 pm

    The takeaway I get from the Berkheimer memo? It’s impossible to argue someone’s mere OPINION properly, so when said opinion is that some element X (or combo) is conventional

    Which is precisely why in the past few weeks (and in direct relation to the Berkheimer case), I have also pointed out that there is existing Office memorandum _ binding on examiners that THAT type of “my opinion” (in other words – and often without being so explicitly named – examiner’s taking of Official Notice) – is not even allowed to happen when the item to which Official Notice (even if not by name) is going to any type of “state of the art.”

    Examiners simply are NOT ALLOWED to use Official Notice for such.

    Combine that with the increased evidentiary requirement for conventionality (which is MORE THAN mere identity/existence – 102, or even piece part existence + Graham Factors – 103, but must be evidence of widespread use and adoption) and you have the direct case that 101 is very often FAILED to have been properly made in a prima facie manner.

    Add then to that, that when the Office fails to make a prim facie case, ALL that is required by the applicant is to explicitly point out why the prima facie case is lacking, and the burden REMAINS on the Office.

    As to you r desire to see this employed in the “motivation to combine” arena, I am far less enthusiastic. Not because I may disagree with you, but the notion of motivation is often inherent in the individual reference itself. Why would you combine Y with X? Y has an inherent value, and THAT inherent value is the motivation.

    To pick a nit, this is nothing like conventionality.

  33. Mike June 14, 2018 1:15 am

    Anon:

    I follow your comments here with great respect. Can you be so kind as to elaborate on “the notion of motivation is often inherent in the individual reference itself”? Perhaps with an example?

    Further, who says that “Y has an inherent value”? Can that be a factual claim? Or does it become factual if the examiner merely opines it so. Again, an example might help me understand this, and also how that inherent value, whatever it is, can be the motivation.

    Finally, if one disagrees with the examiner’s categorization of reference Y of having said inherent value and therefore provides motivation, what does an applicant do then? Is it possible to argue against Y having said inherent value? Should the burden be on the applicant or the Office to show inherency? Or am I completely way off here.

    Fyi: I’m ProSe and learning. But what I’d REALLY like to know is, how can one show something is not obvious when challenged once an action is brought and claims cannot be changed. I’ve read once where Apple tried to argue commercial success and industry praise against Samsung, but its argument failed. I’d like to find working examples of where a showing of non-obvious was actually successful, but I don’t know where to look to find those examples.

  34. Mike June 14, 2018 7:48 am

    Anon:

    Please see my comment above. Additionally, I’m genuinely curious. I would be remiss if I did not ask you if you could point me/us to items pertinent to what you mention that could help in our endeavors:

    1) an Office Notice response that states the Office has failed to make such a prima facie case in a 101 rejection, and

    2) the “existing Office memorandum binding on examiners that THAT type of ‘my opinion’ is not even allowed to happen when the item to which Official Notice is going to any type of ‘state of the art'”?

    I would love to take a glance at references like these.

    Thanks

  35. Anon June 14, 2018 11:06 am

    Mike,

    Thank you – I appreciate the comments and I do enjoy discussing the law (even with pro se types). That being said, this is a blog and you should not be depending on the comments as any type of legal advice. I certainly do not engage in conversations on blogs with the view that what I say IS legal advice, and even as a pro se, I suggest that you do engage some counsel if you are over your head on a legal matter.

    As to the discussion points, I have more than once recently posted the link to the USPTO website that lists the Office ememorandum to its examiners and that list includes the memorandum on how to deal with taking Official Notice. The last time I presented the link, the Office had disabled the ability to show the document, and another contributor shared a “Lookback” type of cached copy.

  36. Anon June 14, 2018 1:58 pm

    Hmm,

    That post of mine appears to have become truncated (whether by the system or my doing, I am not sure).

    I had a few paragraphs talking about motivation to combine – basically (in a nutshell):

    1) The Supreme Court opened a Pandora’s Box of “common sense” – something that typically cannot be provided with evidentiary support.

    2) Patent references (patents and patent publications) require some utility (this is the “inherent” aspect). That utility is often in and of that reference only. The Office “gets away with” (see item 1) above) saying effectively anything that has value in and of itself would be worthwhile to add to any other base reference (for that “inherent” value). What this effectively does is short-circuit the prima facie requirement and switch the burden to the applicant to show why the particular value (in and of itself of the second – or more – reference) would NOT be combined by a PHOSITA. Sometimes this is easy (i.e., teaching away, destruction of the purpose of one or more references), often, it is not. Further, even though there is case law out there that plainly states that “could be combined” is not sufficient to show a prima facie case, the Office will (per the Supreme Court gift of the opened Pandora’s Box) rest on the “they could be” plus the benefit (value) of the second reference (of its own accord).

    3) It would be of huge benefit, but likely will not happen, that the Office proscribe a memorandum that properly outlines how a 103 rejection should be made, and provide the factual predicates (as you pine for). I say that this would be doubtful to happen because the difficult job of examining would become that much more difficult and I doubt that the Office has enough capable examiners who could handle the heightened rigor that the much more thorough and diligent 103 prima facie case would call for.

  37. step back June 15, 2018 12:04 pm

    Mike pro se @31

    I’ll echo Anon’s warning that you need to get a lawyer. A blog is not a place to seek legal advice.

    That said, the provision of proof for 103 rejections USED TO be the law of the land (the so-called TMS test).

    The US Supreme Court did away with that test in a famous case called KLS v. Teleflex. Welcome to third world America.

  38. Tiburon June 15, 2018 4:03 pm

    Mike @ 25:

    Sorry but reality is many software developers have found success WITHOUT patents.

    Very simply consider ipwatchdog.com – examine this very web page (typically “View Source” or press CONTROL-U and a window will popup showing the HTML source code). You will notice that ipwatchdog.com relies on the following open source libraries and the number of patents they have registered:

    WordPress: 0patents
    jquery: 0patents
    OpenTracker: 0patents
    FormSwift: 0patents
    Feedburner: 0patents

    The number of years these have been available plus bandwidth costs plus registered corporations backing all indicate profits. Notice how no-one can show similar examples in past 10 years from guys/gals in garages making money from patents.

  39. step back June 15, 2018 8:23 pm

    Tiburon @38,

    I don’t know if you ever studied the area of rhetoric and logical fallacies.

    The mere fact that “many” (5? 10? 2?) “software developers have found success WITHOUT patents” proves nothing.

    Certainly not everyone should go for a patent. They are expensive, time consuming, frustrating and risky. One needs to do a risk versus rewards analysis.

    Especially now a days, one never knows if a judge or ALJ will deem one’s claims “abstract” and thus trash the whole project. So every aspiring inventor should tread carefully rather than leaping into it without looking.

  40. Anon June 16, 2018 7:55 am

    Step back,

    Not the first time that the fallacies of Tiburon have been exposed as such.

    Everyone is entitled to their opinion. But when one purposefully ignores counterpoints in order to maintain an uninformed opinion, and then routinely trots out a known fallacy, one logical conclusion is that such a person is knowingly engaging in deception.

    That may fly on that “other blog” (heck, that even may be argued that such is encouraged on that “other blog”), but here, there is usually a tighter leash and such purposeful obfuscation is just not as tolerated.

    I suppose that Tiburon is largely being ignored as the point of his fallacy is a relatively easy to dismiss point, that when corrected, is something of relatively inconsequential note (to say “open source does have benefits and uses” is easily met with: “that’s nice. So what?”)

  41. Tiburon June 18, 2018 5:32 pm

    Step Back @ 39:

    You’re right – I’m not formally proving anything. However, I suggest the evidence of software folk having success withOUT patents outweighs the ones with patents.

  42. Tiburon June 18, 2018 5:34 pm

    Anon @ 40:

    What is ‘fallacy’ or ‘opinion’ about examining this very web page and seeing the following 5 open source libraries being used by ipwatchdog.com and the number of corresponding patents?

    WordPress: 0patents
    jquery: 0patents
    OpenTracker: 0patents
    FormSwift: 0patents
    Feedburner: 0patents

  43. Anon June 18, 2018 10:01 pm

    The fallacy is your mindset of “one or the other.”

    Patents are purely a matter of choice – as is not patenting. Somehow you seem to think that success in one means that the other should not be undertaken.

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