Categorical Rules and Why the Investpic Holding Should Worry Everyone

In Part 1 of this Article entitled There’s No Light at the End of the Tunnel – Not Even Close, I asserted that there are at least four problems caused by the Federal Circuit that led to the ongoing judicial carnage that patent professionals and inventors are subjected to under Alice/Mayo.  I maintain that nothing will get better until all four of the above-mentioned issues are corrected.

Obviously, the first problem is/was the lack of an objective evidentiary standard for the better part of a decade.  However, despite the recent Berkheimer, Aatrix and Exergen holdings, I don’t believe the issue is fully resolved in light of the recent SAP America v. Investpic decision as is discussed below.

The second problem, which is related to the first problem, is the (still ongoing) legally-erroneous idea of importing “facts” by comparing the fact-based holdings of cases, which came in vogue due to erroneous dicta in Enfish.  To wit, the Enfish court asserted “both this court and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases” (citing Alice Corp.).  This assertion is a mischaracterization of Alice Corp., which never held that the intermediated settlement claims at issue in Alice Corp. were abstract because of the risk hedging claims in Bilskiwere abstract.  Instead, the Supreme Court stated that there is no meaningful distinc­tion between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here” because “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.”  That is: the claims in Bilski and Alice Corp. were comparable only because the underlying business methods were undoubtedly long-prevalent in the business community.  To hold otherwise is to ignore the vast bulk of both the Bilski and Alice Corp. decisions.

The Federal Circuit’s misreading of Alice Corp. is naught by an improper application of collateral estoppel.  Why should my clients be held to a fact-based holding developed in another case they had nothing to do with?  In what other area of law is a fact-based holding of one case applied to a second case assuming the cases involve different parties?

The third problem (ongoing) is the abrogation of the preemption, which is the only doctrine recognized by the Supreme Court.  This is clear to any attorney who has ever asked the Federal Circuit or PTAB “where’s the preemption” only to hear Ariosa v. Sequenom (penned by Judge Reyna) cited back stating: hey we’ve done our deeming under the Mayo framework, now shut up because preemption is fully addressed and made moot.  Call me provincial, but it is my position that whenever reality and legal theory conflict, legal theory should be modified.


The fourth problem (ongoing) is related to all of the above issues, and consists of the various categorical rules (or “categorical exceptions”) developed by the Federal Circuit having nothing to do with preemption.  The categorical rules set forth in the Alstom and Investpic cases are perfect examples.  What exactly is preempted in these cases?  The Federal Circuit does not address the preemption issue in these cases, and if asked this question, the Federal Circuit would be sure to cite Ariosa.

By creating categorical rules, the Federal Circuit blessed the idea of ignoring substantive claim limitations, thus violating the you-must-consider-the-claims-as-a-whole-ordered-combination rule set forth by the Supreme Court.  Yes, we must consider each and every claim limitation as an ordered combination, but not really, except sometimes, because categorical rule.  However, the Supreme Court has a long history of shooting down the Federal Circuit’s constant stream of categorical rules.  “A categorical rule denying patent protection for ‘inventions in areas not contemplated by Congress . . . would frustrate the purposes of the patent law.’” Bilski, slip op. at pp. 8-9 (citing Chakrabarty).

The application of categorical rules under § 101 also gives the preemption doctrine a pass.  It does not matter is there are an infinite variety of alternate solutions, because Ariosa.

Returning to the Investpic case, Federal Circuit (slip op. at p. 9) cites the Supreme Court’s Parker v. Flook and Gottschalk v. Benson cases for the idea that “analyzing information . . . by mathematical algorithms, without more” must be abstract.  However, this is a mischaracterization of Flook, and denial as to how recent Supreme Court cases modified Benson.

For the non-EE, non-signal processing crowd, the Flook claims should not have been held patent ineligible because computer processing was involved.  To the contrary, Diamond v. Diehr undeniably overturned the holding of Flook.  However, I still believe that the Flook claims should have been held patent-ineligible because they preempted an adaptive signal processing technique known as “steepest descent” in the relevant industry.  The steepest descent algorithm, being first published in 1909 by Dutch physicist Peter Debye, was undoubtedly abstract in 1978.  See also, Alice Corp., slip op. at p. 12.

Turning to Benson, the Supreme Court’s rejection was based on the idea that converting binary-coded decimal numerals into pure binary code was not a “process” under § 101.  Bilski, slip op. at p. 13.  However, 35 U.S.C. 100(b) broadly defines the term “process” as meaning a “process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.”  The plain meaning of the word “process” is defined as “a particular method or system of doing something, producing something, or accomplishing a specific goal.” Webster’s Third New International Dictionary 1808 (1986).  Bilski’s rejection of the machine-or-transformation test further puts into serious question the validity of Benson.  “[T]he machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals.”  Bilski, slip op. at p. 9.  Data compression?  Manipulation of digital signals?  Clearly, the Supreme Court presently considers some mathematical algorithms patent eligible, and clearly courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’”  Bilski, slip op. at p. 2.

Despite the evolution of the Supreme Court’s view of processes under § 101, I believe there is an argument that the Benson case is correctly decided under the Alice/Mayo test as the Benson claims appear to preempt the abstract idea of converting BCD numbers to binary form.

For those patent professionals and inventors who are not yet convinced that the exceptions to § 101 under Alice/Mayo are not presently swallowing the rule, I invite you to read the district court decision of American Axle v. Neapco.  As a spoiler, I’ll tell you that the district court judge addressed the inevitable pesky preemption issue by citing Ariosa.  While the Federal Circuit has yet to decide the case, which involves an apparently novel and non-obvious way to dampen engine vibrations, I am not hopeful given the Federal Circuit’s love for Ariosa, and the fact that internal combustion engines are ubiquitous and really, really old things.

I also recommend that you doubting patent professionals review the last twenty PTAB decisions as of July 15, 2018.  Of the twenty decisions, seventeen were affirmed and three were reversed.  Of the three reversed decisions, one was reversed because the examiner failed to address all the claim limitations; the other two were reversed for lack of evidence citing Berkheimer.  Apparently, none of the APJs of the remaining seventeen cases actually read and/or understood the Berkheimer memo recently distributed throughout the USPTO, or any relevant case law on the issue of evidence and patent eligibility.

Some of the seventeen PTAB affirmations predictably bypass the Berkheimer evidentiary requirement by citing the above-mentioned dicta of Enfish.  See Ex Parte Rathburn, Appeal No. 2016-007034.  Preemption in Ex Parte Rathburn is also predictably addressed by a citation of Ariosa.

Many of the affirmations are absolutely bizarre.  Not bizarre in the amusing and “that’s really interesting” sense, but bizarre in the teeth-grinding and highly frustrating sense.  For example, in Ex Parte Metzger, Appeal No. 2017-003967, the examiner asserted in a February 9, 2016, final Office Action that the functions of the claims at issue “are well-understood, routine and conventional activities previously known to the pertinent industry” even though the examiner could not produce the evidence to sustain a § 102 or § 103 rejection.  In response to the final Office Action, the Appellant’s attorney vigorously argued on appeal that there was no evidence to support the Examiner’s factual conclusions.  Yes, I know, § 101 is not § 102 or § 103, but the evidentiary requirement to establish that a man-made thing is “well-understood, routine and conventional” is undoubtedly greater than the evidentiary requirement for anticipation or obviousness.  See, e.g., Exergen, slip op. at pp. 10-11.

In the Metzger decision dated July 3, 2018, the PTAB panel acknowledged that an abstract idea must involve “more than [the] performance of ‘well-understood, routine, [and] conventional activities previously known to the industry,’” and further acknowledged that “[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.”  Oddly enough, however, the same PTAB panel addressed the evidence issue (slip op. at p. 5) by stating “[e]vidence may be helpful in certain situations where, for instance, facts are in dispute. However, it is not always necessary. It is not necessary in this case.”

It’s as if the Metzger panel is wholly unaware of the nexus between evidence and findings of fact.

Oh, yes, to no one’s surprise, Ariosa is predictably cited to address preemption.

Despite my criticisms, Ex Parte Metzger isn’t the worst of these recent PTAB decisions.   I’ve personally seen this problematic pattern from the PTAB in my own practice, and doubtlessly many of you patent practitioners and inventors have seen this same (or similar) sequence of events play out to your dismay.

Also despite my criticisms, I do not blame patent examiners for the ongoing carnage.  Patent examiners (with notable exceptions who know who they are) generally attempt to follow the law.  Further, examiners are encumbered with poor training on § 101, which in large part is due to the cacophony on § 101 decisions issued from the Federal Circuit.

While I am more critical of APJs given their law degrees and duties, I fully acknowledge that the PTAB is similarly encumbered by the mass of conflicting and misleading decisions issued by the Federal Circuit.  Why should APJs pay attention to the evidentiary requirement of § 706 of the Administrative Procedure Act given the past refusal of the Federal Circuit to address it?  (I’ll address this later)

That said, it’s still a long way until we’re out of the darkness.

The Author

Burman York (Bud) Mathis III

Burman York (Bud) Mathis III is a sole-practitioner in the Washington D.C. area with experience in patent drafting and prosecution, opinion writing, due diligence, litigation and appellate work. Mr. Mathis technical expertise and experience is far-ranging. For example, Mr. Mathis’ experience covers a wide variety of highly-technical subject matter that includes wired and wireless communications (including MIMO, 3G, 3GPP/LTE, D2D and 4G technology), analog and digital electronics, image processing, semiconductor devices and processes, solid-state physics, material science, printers and copiers, projectors, cameras, speech recognition and synthesis, xerography, cryptography, control systems, magnetic and optical disc technologies, fiber optics, MEMS technologies, nanosensors, GPS navigation systems, software, computer networking and business methods.

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 68 Comments comments. Join the discussion.

  1. EG August 7, 2018 8:17 am

    Investpic is another “poster child” of why SCOTUS’ Mayo/Alice framework is utterly nonsensical and completely broken. How, pray tell, can a Federal Circuit panel dare characterize something as being “innovative” yet “patent-ineligible”? It just makes my blood boil to see such oxymoronic logic. Again, I could do better predicting patent-eligibility with a Ouija board.

  2. Ternary August 7, 2018 10:07 am

    “Despite the evolution of the Supreme Court’s view of processes under § 101, I believe there is an argument that the Benson case is correctly decided under the Alice/Mayo test as the Benson claims appear to preempt the abstract idea of converting BCD numbers to binary form.”

    Absolutely not. Claim 8 of Benson, first limitation:
    “(1) storing the binary coded decimal signals in a reentrant shift register,”

    The claim is directed to a device and a device only. It requires a shift register and furthermore claims a novel, previously unknown operation of a shift register. Furthermore, the algorithm BCD-binary algorithm is novel. There is nothing conventional, well-known and routine in Benson. Benson is not merely an application of a known algorithm. Furthermore Benson improves the operation of a computer. Benson does not preempt a person to perform the algorithm with pencil and paper.

  3. B August 7, 2018 12:42 pm

    “Absolutely not. Claim 8 of Benson, first limitation:
    “(1) storing the binary coded decimal signals in a reentrant shift register,”

    I understand your point exactly, but a careful reading of Benson reveals that the SCOTUS believed that the claims were untetherd from machines. “Reentrant shift register” has a meaning in software and, I believe, evokes a computer.

    The SCOTUS was wrong on this issue in my opinion.

    That said, it’s still a process claim even if a machine is suggested.

    Respectfully yours,

    B

  4. Jianqing Wu August 7, 2018 12:43 pm

    This article reveals the root problem of the legal system. The root problem is the common law enforcement model developed more than a thousand year ago. A statutory definition is defined by a few binary values like 101, 102, 103. Then thousands of judges in the entire history attempt to draw precise lines for every situation on their own: all are arbitrary without any measurable scales. Such a legal system must be the most chaotic legal system one can ever found in the world. It must systematically destroy every field. Patent system is destroyed first due to complexity of technologies. Medicine will be next. Each patent presents two ways uncertainties falling in multiple dimensions. Moreover, patented scopes of any patent can overlap with the scopes of other patents. Any technologies can fall within the scope of any or several of millions of patents. When this judicial model is so bad with absolutely no theoretical possibility for achieving accuracy AND all measuring devices are worse than broken scales, “darkness” will never end. Yet, lawmakers and judges keep arguing that patent eligibility can be accurately determined….

  5. B August 7, 2018 12:52 pm

    “Benson is not merely an application of a known algorithm.”

    I never said it was, but I think that you’re missing the point.

    There are two legit theories of s101 to consider – both based on preemption, Unfortunately the courts often conflate the two theories, which I believe has lead to your confusion.

    One type is the Bikski/Alice type, where well-known business methods evoking a computer monopolized.

    The other is the “idea in of itself” type. It was justice Douglas’ opinion that Benson’s claims preempted BCD-to-binary conversion, including that which might be done in the human mind.

    Look, I think you’re 100% on the “reentrant shift register” issue, and this is a claim construction issue that the SCOTUS got wrong. I merely attempt to explain Benson’s s100 and s101 explanations.

    respectfully yours

  6. B August 7, 2018 1:18 pm

    @EG “It just makes my blood boil to see such oxymoronic logic. Again, I could do better predicting patent-eligibility with a Ouija board.”

    How do you know the CAFC doesn’t use a Ouiji board?

    Investpic is decided on an erroneous interpretation of Benson caused by Justice Stevens’ 1978 Flook decision, and a bastardization of McRO. Taranto does not consider s/w a “process” under 35 USC s100, and/or considers all s/w abstract per se.

    Taranto cant even fathom the words “concrete” or “physical” as they applied to In re Allapat. Heck, Taranto complains about the Investpic claims lacking specificity (they don’t imo), then states that no amount of specificity (or advantage) can cure the abstractness.

    As to “physical,” Allapat demonstrated an objective physical improvement to a display, which produced smoother lines. McRO at most produced a picture indistinguishable from if a person/artist performed the same act.

    Now here’s a kicker. Look at the McRO claims and the Investpic claims, and tell me which claims the processing might be performed in the human mind.

    Also, the only difference in the McRO claims and previous 3-D automation was weighting phonemes. Now isn’t weighting merely a multiply operation, and isn’t a multiply operation merely math? Compare RecogniCorp on this one – both written by Reyna.

  7. Ternary August 7, 2018 2:21 pm

    “The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that, if the judgment below is affirmed, the patent would wholly preempt the mathematical formula and, in practical effect, would be a patent of the algorithm itself.” (in Benson Decision)

    That reasoning is as nutty as the whole patent system has become. For instance Direct Sequence Spread Spectrum coding (signal sequences cancelling each other by being treated as noise) is a brilliant idea that is described by shifted sequences. The application of “this idea” has no “no substantial practical application except in connection with a digital computer” and thus would “in practical effect” preempt use of the idea.

    Furthermore, the Benson conversion substantially improves the actual working of a computer. A representation of a number up to and including 1000 in binary requires 10 bits and at least 1+3*4 bits=13 in BCD. 32 bits in binary require at least 38 bits in BCD. The processing of BCD in arithmetical circuits thus requires more binary components and is not as efficient in shortcuts such as carry predict operations.

    The issue in all of this is that SCOTUS and other courts believe and want us to believe that what a computer or a digital circuit does, is the same or comparable to what humans do.

    In cryptographic devices that perform public key exchange repeated modular multiplication of large (100 digit numbers and larger) is an important aspect. No human would do that as a practical matter. It was strictly designed and implemented to be performed by computers.

    A computer (or digital circuit) is not a device that does what a human can do, but only faster. It does things (including generating signals) that no human or even a large group of humans can reasonably do or would reasonably do with a desirable outcome.

    Benson was and is a nonsense decision that continues to haunt us and it should be overturned. I very much like your article, but please do not give credence to the Benson decision.

  8. B August 7, 2018 3:49 pm

    @ ternary

    “Benson was and is a nonsense decision that continues to haunt us and it should be overturned. I very much like your article, but please do not give credence to the Benson decision.”

    I have a pending article on Benson if Gene publishes. Take my word now that I have issues with the decision.

    That said, Benson’s holding was not based upon preemption, but whether software was a “process” as defined in s 100. Accordingly, the Benson holding isn’t about whether Benson’s claims qualified as an exception to s101, but rather whether Benson’s claims qualified as patentable subject matter under s101.

    Benson doesn’t say that all mathematical expressions are abstract, merely those that reflect a natural law.

    Benson never suggests that all software cannot be patented.

    Benson merely asserts that the particular algorithms at bar preempted BCD-to-binary conversion. I’m not going to argue the issue – merely state that the preemption issue, right or wrong, was mere dicta and that a careful reading reveals that Benson does not need to be overturned under Alice/Mayo to properly address the claims in Investpic.

  9. Ternary August 7, 2018 4:55 pm

    “Benson merely asserts that the particular algorithms at bar preempted BCD-to-binary conversion.” But Benson doesn’t. According to claim 8, it only preempts conversions that apply an electronic device: a shift register. The Benson claim would still allow you to convert BCD to Binary to your heart’s content in your mind or with paper-and-pencil. I am curious how many people do that. My prediction is: zero. Perhaps only when they are involved with patents.

    Benson is widely applied in 101 rejections, even where it does not belong. Examiners have no idea what Benson relates to and cite Benson and Flook boilerplate to get a rejection out the door. It has to be overturned, so it does not appear anymore and does not have to be responded to. The Benson decision is nonsense and its reasoning is nutty and reflects a misunderstanding what a human does as opposed to a machine. A misunderstanding that propagates to current times and now seems to be accepted as factual truth.

  10. B August 7, 2018 5:44 pm

    “But Benson doesn’t. According to claim 8, it only preempts conversions that apply an electronic device: a shift register.“

    First, Benson claimed a “reentrant” shift register, which refers to software, not hardware. Look it up.

    Second, don’t expect a liberal arts judge to understand technical terms of art. Justice Douglas obviously didn’t.

    Third, even assuming h/w (which I deem reasonable), there’s still the argument that, given 1972 technology, it was the only commercially viable way to perform BCD to binary conversion on a computer. Computers incorporate shift registers. Benson’s claims read on computers incorporating such shift registers.

    Third,

    Third

  11. Night Writer August 7, 2018 11:07 pm

    Taranto writes of information having an ethereal state. In other words, the information lives in the spirit world.

  12. Ternary August 8, 2018 12:33 am

    Reentrant means that it can be interrupted and restarted. The term is applied for such a shift register device in for instance US 3573381. Bell Labs and others at the time (1960s 1970s) were greatly interested in shift registers, especially for digital line delay devices and as part of digital filters. A shift register different from a reentrant one, would be one that runs autonomously under a clock signal.

    Feedback shift registers are widely used in scramblers, sequence generators, cyclic redundancy codes (CRC), streaming ciphers and error correcting coding. A problem in obtaining a patent for those devices is that their performance is best described in terms of polynomial arithmetic, often triggering a Benson based 101 rejection.

    A software shift register does not exist. You are correct that “reentrant” is also used for interrupts in execution of software on a machine. However, the interrupt is in the execution/running of a machine not in the software.

  13. B August 8, 2018 2:45 am

    “Examiners have no idea what Benson relates to and cite Benson and Flook boilerplate to get a rejection out the door. It has to be overturned . . . ”

    Yes, you’re 10000% right re examiners, but getting the SCOTUS to “overturn” a past decision? Not going to happen.

    However, getting the lower courts to recognize that the holding of Benson is moot,and that the dicta is narrowly crafted – possible.

    “Reentrant means that it can be interrupted and restarted . . . ”

    Look, as a H/W engineer I don’t deny that, but the s/w crowd has a different definition to “reentrant,” and Benson does speak to s/w. At the assembly-code level there’s practically no distinction. Either way, a reentrant shift register was an integral part of every CPU in 1972.

    My respectful advice: choose the path that will most likely win, which always involves persuading the lower courts to see a past SCOTUS decision your way as a matter of logic and fine detail. The CAFC won’t overturn the SCOTUS, and the SCOTUS isn’t taking 101 cases.

    Think of the SCOTUS like a crazy spouse who is still in command and but certain you stole the strawberries despite the fact you were 3,000 miles away at the time. Said spouse will maintain his/her position no matter how bizarre the consequences if you force the issue. Instead, let spouse be correct on the issue, but show the issue is moot especially if said issue is over 50 years old and the details are fuzzy.

    or go file cert

    Your choice

  14. B August 8, 2018 3:10 am

    @Night Writer

    “Taranto writes of information having an ethereal state. In other words, the information lives in the spirit world.”

    Wait and see my Benson article.

    ——————————-

    @ Ternary

    “A software shift register does not exist.”

    Respectfully, a shift register than can be called by s/w does exist, and has existed the moment someone put one in a CPU. I coded multiply and divide operations using assembly in 1980 as a junior in college on both a Xerox Sigma-7 mainframe and on a Motorola 6800. Shift left – multiply. Shift tight – divide. I actually remember coding BCD-binary conversion routines on the 6800 in the middle of the night and watching the sun rise hours later jittery with too much caffeine.

    I was a nerd. Trapped in a beautiful body, but still a nerd.

    Look, you don’t need to convince me Justice Douglas got it wrong in Benson. His process analysis under s100 is hare-brained. His s101 analysis was arguably flawed technically, but his s101 analysis is very narrow.

  15. Jonathan Stroud August 8, 2018 9:23 am

    Nonsubstantive: *”naught but”

  16. Ternary August 8, 2018 10:30 am

    “Respectfully, a shift register that can be called by s/w does exist.” I agree of course. You and I know that. (I would not call it a s/w shift register, but I know what you mean). It goes without saying for us that “called by s/w” means something like “control signals that activate hardware in a predetermined manner.” Software, when implemented and activated on a computer establishes a hardware configuration of a device. No abstract idea involved here.

  17. B August 8, 2018 11:18 am

    @ Ternary “Software, when implemented and activated on a computer establishes a hardware configuration of a device. No abstract idea involved here.”

    I think that you’re conflating intangible/tangible with abstract, and given the flaws in Alice/Mayo I don’t know exactly where to start. However, there comes a point where a given piece of hardware becomes generic, and recitation of such hardware becomes equivalent to “apply it.” That’s Alice in a nutshell.

    Further, that’s also how I see Diamond v. Diehr. Using a computer? Getting a temperature measurement and opening a rubber mold? How much more well-known, routine and conventional could you get than those steps – even in 1982. Why even give those steps an iota of weight in a 101 analysis? I could kill the Diehr patent at the CAFC easily under Alice/Mayo given what I know, and in the same day possibly save Flook. Granted, I’d want to massage the Flook claims just a bit.

  18. Anon August 8, 2018 12:24 pm

    Don’t know where to start? Start with the basics: what the Supreme Court has done is create a hopeless Gordian Knot and stop trying to imply that “careful reading” of their decisions in any way can save those decisions from being rightfully called a mess in and of themselves.

    Such is a bit like Mr. Paul Cole – and such is simply unhelpful in any meaningful discussion of the state of law that is 35 USC 101.

  19. B August 8, 2018 12:47 pm

    @ Anon ‘Start with the basics: what the Supreme Court has done is create a hopeless Gordian Knot and stop trying to imply that “careful reading” of their decisions in any way can save those decisions from being rightfully called a mess in and of themselves’

    First, have you actually read Benson? Seriously? Can you cite – right now – the reasons why Justice Douglas declared that all computer software is not a process as defined under s100?

    Also, can you cite a single 101 case where the SCOTUS announced that it reversed itself? The absolute most you will ever get is a “clarification.”

    Hey, go file cert like the last 100 people dissatisfied with a CAFC holding in the last two years

    Good luck

  20. Ternary August 8, 2018 1:02 pm

    An addition over a finite field GF(256) (as in AES encryption) is an abstract idea. A circuit performing a bitwise XORing of two words of 8 bits is a tangible device. A device performing a switching operation characterized by an addition over a finite field GF(256) includes the above circuit and is not an abstract idea.

    Blaauw and Brooks (co-architects with Amdahl of the IBM System/360) use the distinction between realization (hardware), implementation (logical description of the hardware) and the architecture (functional description) of computers. (see https://www.amazon.com/Computer-Architecture-Evolution-Gerritt-Blaauw/dp/0201105578 for a description of their approach). Description of the implementation applies necessarily abstract ideas. Digital circuits do not apply 0s and 1s, for instance. However, the underlying realization is tangible and non-abstract and are CMOS devices for instance. The fact that you use a XOR circuit once, a thousand times, or a billion times does not make it abstract or more abstract with increased use. Don’t give in to the misunderstanding of technology by English majors.

  21. B August 8, 2018 1:07 pm

    @ Ternary ‘“Respectfully, a shift register that can be called by s/w does exist.” I agree of course. You and I know that. (I would not call it a s/w shift register, but I know what you mean’

    I absolutely do know what you mean. Your knowledge of H/W is damned good, and I assume that you have an EE degree with a boatload of experience.

    I think now, however, you see my position as to why claim 8 reads on a generic computer given every single ALU employs a shift register that a s/w engineer can handle reentrantly while also masking bits and performing add operations. 100% generic computer.

    With this in mind, remember Justice Douglas was apparently unaware of the meaning of terms of art in the computer field. However, you think the SCOTUS will ever say “ooops” on that one? Read the discussion of Benson in Bilski. They’re closer than you think to the right decision without having to overturn Benson.

  22. Anon August 8, 2018 3:24 pm

    B,

    Your retort (badly) misses the point.

    And yes, I have read Benson and most likely know it far better than you. I have read – and know – ALL of the Supreme Court 101 cases to an intimately detailed level (and had you paid attention to my numerous posts on such over the years, you would not have had to ask that question).

  23. Ternary August 8, 2018 3:42 pm

    An addition over a finite field GF(256) (as in AES encryption) is an abstract idea. A circuit performing a bitwise XORing of two words of 8 bits is a tangible device. A device performing a switching operation characterized by an addition over a finite field GF(256) includes the above circuit and is not an abstract idea.

    Blaauw and Brooks (co-architects with Amdahl of the legendary IBM System/360) use the distinction between realization (hardware), implementation (logical description of the hardware) and the architecture (functional description) of computers. (see https://www.amazon.com/Computer-Architecture-Evolution-Gerritt-Blaauw/dp/0201105578 for a description of their approach).

    Description of the implementation applies necessarily abstract ideas. Digital circuits do not apply 0s and 1s, for instance. Those are abstract concepts. However, the underlying realization is tangible and non-abstract and are CMOS devices for instance.

    The fact that you use a XOR circuit once, a thousand times, or a billion times does not make it abstract or more abstract with increased use. Don’t give in to the misunderstanding of technology by English majors. I agree with Anon: No amount of careful reading of Court Decisions will allow you to address let alone to remedy their fundamental misunderstanding. Your patents remain at risk forever to be invalidated under this misunderstanding. Alice, Benson and other decisions reflect a mechanical and outdated view of modern technology and should be overturned by Congress to better position our patent system to the demands of a computer dominated economy.

    What is a computer dominated economy? That is an economy wherein, if you can articulate it, you can design it, store it, transport it, activate it, build it and use it at any time and any place.

  24. Anon August 8, 2018 3:45 pm

    Ternary – you nailed it.

    Another way that I have seen what you speak of phrased may be reflected in a number of maxims:

    Software is not the thought of software.
    Software is not the execution of software**.
    Software is patent equivalent to hardware and to firmware. Each are “wares” to those having proper understanding (in relation to the Person Having Ordinary Skill In The Art understanding).

    Further, understanding the differences between math, applied math, and philosophical notion of Math(S) may provide a very helpful basis for dealing with those who would purposefully obfuscate when it comes to patent protection for software.

    **With all due respect to Gene Quinn, given our past discussions on “software as a method.” I really do “get” that OFTEN it is easier to conceptualize, think about, and explain software as a set of actions (which naturally lends itself to “method” thinking), but my past warnings should be heeded because of the plain fact that there are those who WILL purposefully obfuscate from what should be a helpful tool into trying to apply the law wrong (in their efforts to deny patent protection to software innovation).

    While those of us who appreciate innovation and will not get “tripped up” by the “ease of use” of language sounding in action (for example, understanding how the Act of 1952 modified the ability to use terms sounding in function – including BUT NOT LIMITED TO 112(f) – may “talk loosely” (and understand the context of such talk), the plain fact of the matter is that there really are those with an agenda to block patent protection for certain types of innovation. Thus, it is not per se “bad” that Gene Quinn wants to talk of software in terms of “software as a method,” it is that THAT context will be mishandled deliberately by others.

  25. Anon August 8, 2018 3:49 pm

    B,

    There is NO SUCH THING as an actual “generic computer.”

    Further more, YOU are conflating things (much as the Court has conflated things – which DOES NOT MAKE IT RIGHT to do so).

    The actual (proper) legal argument that you should be referencing if you want to make something not patentable (note: this is different than not patent eligible) is the Inherency Doctrine. If a standard (and this too is different than “generic” as the term “generic” is attempted to be used) computer contains the physical item being claimed and as claimed – then 35 USC 101 is not the correct section of law to apply.

  26. B August 8, 2018 3:54 pm

    @ Anon “I have read – and know – ALL of the Supreme Court 101 cases to an intimately detailed level (and had you paid attention to my numerous posts on such over the years, you would not have had to ask that question).”

    I asked a simple question in response to a hostile assertion. You respond with more hostility.

    If you can show the holding (not dicta) of a single case from the Supreme Court that today precludes the idea that a pure S/W claim cannot be patented, please identify with supporting discussion. Then we can have a rational discussion without histrionics.

    It is my position that Electric Power Group and Investpic may be set aside without disturbing a single SCOTUS holding noting that Diehr already set aside Flook to Justice Steven’s dismay – but go ahead and argue Flook if you need

  27. B August 8, 2018 4:08 pm

    ‘There is NO SUCH THING as an actual “generic computer.”’

    Tell the courts your position. I’m sure they’ll tell you that, had you specifically cited an ARM processor or TMS320C31 in your claims, they’d have held for patent eligibility

    “Further more, YOU are conflating things . . . . The actual (proper) legal argument that you should be referencing if you want to make something not patentable . . . is the Inherency Doctrine.”

    I challenge you to name a single processor or computer in the last 50 years that did not have a reentrant shift register as an integral part of it ALU.

    Take your time.

  28. B August 8, 2018 4:16 pm

    @ Ternary “An addition over a finite field GF(256) (as in AES encryption) is an abstract idea. A circuit performing a bitwise XORing of two words of 8 bits is a tangible device. A device performing a switching operation characterized by an addition over a finite field GF(256) includes the above circuit and is not an abstract idea.”

    You’re mistaking tangible/intangible for abstract. Ironically, this is the same mistake made by Taranto.

    Contrast McRO v. Bandai, where Judge Reyna correctly posits that the issue re 101 exceptions is preemption, not tangibility.

    Contrast Taranto in EPG, who expressly wrote the opposite, i.e., intangible = abstract.

    Now realize that Taranto signed onto McRo.

    It’s as if there are two Tarantos roaming the CAFC unaware of one another

  29. Anon August 8, 2018 5:01 pm

    B,

    No histrionics – your “If you can show the holding (not dicta) of a single case from the Supreme Court that today precludes the idea that a pure S/W claim cannot be patented, please identify with supporting discussion.” misses the point of my post.

    Let me unwind your multi-negative statement just to be sure I am clear as to what your (non-on-point) question is.

    You want some definitive statement/quote from a Supreme Court case (and that to a holding rather than dicta) that the notion that pure software is not patent eligible.

    Is that correct?

    (secondly, please do not read more into “hositility” – the hostility is LARGELY geared to the Supreme Court rather than to you).

    Further – and you should not be shocked if you understand my larger position on the issue: Flook was cabined by Diehr (per at least Bilski). I may have been the very first in the blogosphere to point that out.

    What we have seen since then (Mayo/Alice) is a direct contradiction of what the earlier cases meant on this point – a “revitalization” of Flook OUTSIDE of what Diehr did. Many of my earlier posts on the Mayo debacle explicitly point out the nonsense of a case contradicting Diehr (on point) while exclaiming BOTH that the case was not changing Diehr AND that Diehr was the case most ‘on point.’

    as to your reply at 27 – again, you quite miss the point. It matters NOT AT ALL whether or not I can name a single computer with or without a particular element – the legal argument – the PROPER legal argument – is inherency and not 101.

    I KNOW that the scoreboard is broken.

    The larger point here is THAT the scoreboard is broken.

    Not to (overly) but into your point with Ternary, but twice now you have posted to the effect of “You’re mistaking tangible/intangible for abstract.

    Maybe you would be better off by starting with something that even the Supreme Court has neglected to do: define Abstract.

    YOU want “abstract” to be disassociated with tangibility/intangibility. On what legal basis do you advance that view? Remember – a “legal basis” of a broken scoreboard is not an acceptable legal basis.

    Take YOUR time (but not too much, as you taking ALL the time remaining in the universe will likely not yield a cogent, legally acceptable answer).

  30. Anon August 8, 2018 10:54 pm

    And as for “pre-emption” – be careful – ALL claims pre-empt. That is what claims do.

  31. B August 9, 2018 12:00 am

    @ Anon

    “YOU want “abstract” to be disassociated with tangibility/intangibility. On what legal basis do you advance that view? Remember – a “legal basis” of a broken scoreboard is not an acceptable legal basis.”

    Oddly enough, Judge Reyna got it right in McRO. Tangibility and preemption are different issues.

    That said, the claimed machine of Alice Corp. is tangible, yet abstract. The claimed machine of Diehr is tangible, but not abstract. One of the Benson claims arguably recited a machine (tho I think the SCOTUS didn’t recognize this), but was held abstract.

    McRO recited no machine, yet was considered non-abstract. Recognicorp recited a machine, but was held abstract.

    What exactly is Enfish’s self-referential table? It’s not even data, but a way of organizing data. The claim drafter did a good job at avoiding pitfalls, but in the end it’s non-tangible software attached to a machine.

    Look, just think about it

  32. Ternary August 9, 2018 8:36 am

    B, “Look, just think about it” “the claimed machine of Alice Corp. is tangible, yet abstract.”

    The common and well established meaning of the words “tangible” and “abstract” precludes rational people of having this discussion. A machine cannot be abstract. A machine cannot be tangible and yet abstract. It is just impossible. That is why SCOTUS cleverly introduced “directed to an abstract idea” so we are now all utterly confused.

    Let me say this again: by definition a machine is not abstract. I am truly interested in any explanation why you possibly believe that not to be the case.

  33. Anon August 9, 2018 8:36 am

    B,

    You danced a lot there but failed to provide any definition.

    Try again.

  34. B August 9, 2018 10:21 am

    @ Anon “You danced a lot there but failed to provide any definition.”

    I sincerely apologize. I thought it particular sentence was a rhetorical question given the context.

    Here’s my perspective on “abstract.”

    Obviously, natural laws and mathematical expressions of such, or obvious solutions to using such. That’s Mayo. Newly discovered natural law. Contrast Cleveland Clinic (wrongly decided imo) where new natural law but solution was far from obvious and counter-intuitive. New discoveries of natural phenomena need a second invention to use – something not well-understood, routine and conventional. Something that, assuming the natural law were known for 1,000 years, exploitation of such would not be considered obvious.

    Any form of processing going on in the human mind.

    Things well-known/well-understood, routine and convention as an ordered combination, which has a high burden of proof – much harder than 102/103. Alice/Bilski should have been rejected under 103 imo.

    Here’s the hard one quantify: Claims so broad they preempt an idea unto itself. Easy example: Morse claim 8. As another example, suppose you had a claim for a cell phone that received a video signal suitable for your iPhone screen, converted the received video signal to a high-def signal format and provided the high-def signal to a high-def television. No details. Assume idea is novel and unobvious. Too broad, as you’ve preempted the idea of converting low-def to high-def once your phone’s computer is discounted. Some detail is needed. Technical advantage, special chip architecture . . . “something more,” and yes we are both certain to agree that term is problematic.

    Bottom line: “abstract” – except for the human mind angle – is related to preemption and how much preemption the fine folks in black robes think you deserve given the merits of an invention they likely don’t understand.

    If I’ve missed anything or got anything wrong in your opinion, I’m always open for reasoned debate on the issues. Best way to learn next to watching the mistakes of others.

  35. B August 9, 2018 10:30 am

    @ Ternary ‘That is why SCOTUS cleverly introduced “directed to an abstract idea” so we are now all utterly confused.’

    Respectfully, that has been the gist of “abstract” for a long time. For example, the invention of Funk Brothers v Kelo was tangible, but considered a natural phenomena that preexisted the patentee’s discovery. I’d go into Flook, but the Flook decision was more about what constituted statutory subject matter (in the opinion of six justices in 1978) than what was an exception to statutory subject matter.

  36. Night Writer August 9, 2018 11:49 am

    @31 B

    >>but in the end it’s non-tangible software attached to a machine.

    How can something non-tangible (presumably you mean intangible) be attached to a machine?

    Information cannot be represented without time, space, and energy. Software is tangible.

    Information cannot be transformed without time, space, and energy. The conservation of information is the most fundamental law of physics.

  37. Anon August 9, 2018 12:21 pm

    B @ 35,

    You are now conflating different realms of the Supreme Court scrivening (natural phenomena and abstract).

    I recommend that you put down the shovel of attempting to defend the indefensible.

    B @ 34,

    Do you see in your own words how BADLY you are conflating obviousness?

    Your further “examples” merely conflate breadth with enablement – that’s also NOT properly 101.

    THINK MAN – there is a reason why Congress acted in 1952 to strip out the power of common law evolution writing for the judicial branch vis a vis “invention,” “gist of the invention,” or dozens of like terms and opted INSTEAD to carve out of the prior single paragraph the new section of law 35 USC 103.

    And yet again – you dance with “pre-emption,” yet you fail to actually support this “line of reasoning” – especially in light of my simple comment at 30. I “get” that you want to differentiate with “pre-emption,” but not only have you NOT actually done so, THAT is a dead-end for 101, given that 101 provides ZERO legal basis to differentiate from the pre-emption that ALL claims do and the pre-emption that the Court attempts to say is “not allowed.”

    Your admonition to others of “just think” is sorely lacking in the defense of your own choosing.

  38. B August 9, 2018 3:16 pm

    @Anon

    “You are now conflating different realms of the Supreme Court scrivening (natural phenomena and abstract)”

    *sigh* You’re correct, I conflated natural phenomena and abstract.

    I hereby retract the natural phenomena aspect of my answer.

    “Maybe you would be better off by starting with something that even the Supreme Court has neglected to do: define Abstract.

    Would it help if I responded with the actual wording of Alice Corp? an idea in of itself? fundamental truth? original cause? a motive? basic tool of scientific and technological work? see slip op. at pp. 6-8. well-understood, routine and conventional activities in the relevant industry? slip op. at p. 15.

    Respectfully, should you decide to read Alice Corp., I believe that you’ll find a basic definition.

    That said, Alice does leave a few gaping holes as to weather a s/w program or mathematical algorithm must always fall within said definition.

    And yet again – you dance with “pre-emption,” yet you fail to actually support this “line of reasoning” – especially in light of my simple comment at 30.

    The comment about all claims preempting something? At the risk of sounding harsh, I didn’t respond b/c while 100% correct, your comment so off the mark that its sophomoric. Every claim preempts, but the underlying issue is if such preemption extends to risk of preemption a law of nature, natural phenomena or abstract idea in a given technological field. That was a built-in assumption of the article above, and I merely assumed you’d know.

  39. B August 9, 2018 3:46 pm

    @Night Writer

    “How can something non-tangible (presumably you mean intangible) be attached to a machine?”

    Let’s say I want to patent a mathematical algorithm of A = B + C

    Claim 1: I claim a process of A = B + C
    Claim 2: I claim a process using a machine, the process being A = B + C

    Claim 1: intangible and abstract
    Claim 2: Tangible and still abstract

    The idea of A = B + C exists separately from the media/machine. The machine cures the tangibility issue but not the abstract issue. That’s half of Benson in a nutshell really.

  40. Anon August 9, 2018 5:11 pm

    Would it help if I responded with the actual wording of Alice Corp?

    If you think the actual words help, then your problem is that you have not yet begun to realize that the scoreboard is broken – there is a larger picture here that you seem completely unable to grasp.

    As to the more direct point of defining “Abstract,” I do hope that you are aware that the direct words of the Court for defining “Abstract” were: “We are not bothering to define Abstract.”

  41. Anon August 9, 2018 5:31 pm

    B @ 38 – you’ve become tautological, distinguishing the type of pre-emption by saying that you are talking about a difference in pre-emption, but not explaining what that difference is or where in the law as written by Congress that difference can be determined.

    All that you have done is reconfirmed that the scoreboard is broken without even bothering to say “I know it when I see it.”

    To the extent that you think this need not be addressed, you are part of the problem. Your “built in assumption” cannot be assumed. And even if you want to assume it, you need to first explain (define) just what exactly is being assumed. I do hope that you realize that the Court has not bothered to do so in any meaningful way, which is part and parcel of the problem in the Court turning around and pushing the “development” off to the lower courts (and de facto, out of the court system entirely and into the executive branch).

  42. Ternary August 9, 2018 5:38 pm

    B: “As another example, suppose you had a claim for a cell phone that received a video signal suitable for your iPhone screen, converted the received video signal to a high-def signal format and provided the high-def signal to a high-def television. No details.”

    This is just childish nonsense, sorry B. Any client with such a claim would, presumably, be requested by an attorney to provide enablement description before an an application is filed. Assuming that your client would provide enablement (like an interpolation algorithm), and provides sufficient technical details, and the invention is novel and nonobvious then a patent should be issued. Being abstract or not should not play any role in this B.

    I know what the courts say, and I know what the Examiners say about abstract ideas related to machines. And it is mainly nonsense and it violates the basic interpretation of what “abstract” means. Being well understood, routine and conventional has nothing to do with being abstract or not. Again: abstract exists only in the mind of humans and not in machines. What currently takes place is exegesis of Court texts that are fundamentally flawed. Attorneys have to do that to best help their clients: but fundamentally flawed these texts are.

    Right now I have a case wherein the Examiner maintains that a claimed device is not physical but actually an abstract idea. (not directed to an abstract idea, no, actually an abstract idea). Such an allegation should not leave the USPTO premises without some careful consideration, I would suggest. It is medieval. Does anyone actually care what goes out the door at the PTO? The system has gone completely nuts.

    While science and technology speed ahead, our patent system regresses to an outdated and fictional idea about technology to clear the way for “deserving” companies. Large companies have proven again and again that they are not better than independent inventors to predict and lead the direction of technology. As in the past: we will find out again the hard way. We should not assist in this process by suggesting that “the courts” may be on to something with this “abstract” thing. They are not. It is all scientific nonsense and in a decade people in Congress and the Courts who have supported this will be recognized for what they are: scientific and technological illiterates and Alice is the crowning achievement of technological illiteracy.

  43. B August 9, 2018 5:44 pm

    @Anon ”If you think the actual words help, then your problem is that you have not yet begun to realize that the scoreboard is broken – there is a larger picture here that you seem completely unable to grasp.“

    Yadda, yadda, yadda. You said the SCOTUS didn’t define “abstract,” and now you’re complaining about the actual definition the SCOTUS used and running off into the woods crying “broken scoreboard.”

    I’m done with this nonsense.

    Keep complaining, or take your best shots at overturning a moronic PTAB decision or two at the CAFC. Deal with a few indignant judges screaming at you for insisting on something like demanding evidence and that the PTO address your client’s claims as a whole when trying to overturn a S101 rejection.

    Seriously, go do it. You may not win the first time or two just because the system isn’t fair. Everyone gets that. However, if you’re not willing to spend a few late nights briefing the issues and running to Office Depot to print a half-dozen copies of your briefs while trying to correct the system, then at least stop with the whining.

    DONE WITH IT

  44. B August 9, 2018 6:01 pm

    @ Ternary “This is just childish nonsense, sorry B.”

    FYI, the fact pattern is real and taken from a case argued last April.

    The spec was well-written and sufficiently detailed, but the claims didn’t include the detail. The attorney gave a great speech, but the case was lost long before he ever walked into the courtroom. He was hit with a Rule 36 probably before he made it home to open a bottle of scotch.

    Childish, maybe, but 100% real.

  45. Ternary August 9, 2018 11:59 pm

    B. Unless you have additional undisclosed surprise details about this case, it seems to me (as presented by you) that including the details in the claims would do the trick. The subject matter of resolution enhancement in image processing is well known. (for instance by upsampling and interpolation). The idea by itself is certainly not novel. A fair amount of patents are still issued in this field. While it wouldn’t surprise me that some Examiners will apply an Alice 101 rejection (undeservedly, mostly because claims rely on math), most applications in this field are rejected over prior art. In fact case 15/115,655 has in a Non-Final Rejection a statement that the subject matter of resolution improvement was patent eligible. I am still not impressed with your example and it is unclear what you want to prove.

    Geez Louise, A=B+C no less. You of course realize that there is a whole field of “computer arithmetic” that deals strictly with these types of issues. Again, it would not surprise me if a new implementation of an adder would be rejected over Alice. Mainly again because design issues are expressed in math or logical expressions. A new design of a machine adder should of course be patent eligible. But, referring back to your “details are not claimed” approach, merely claiming A=B+C seems not good claiming practice. Is this a modulo-p addition? A floating point addition? A signed number addition, a complex number addition? An addition over an extension finite field? A vector addition perhaps. Or even a big number addition (numbers of over 100 digits). I disagree with summarily rejecting claims because the subject matter is considered “abstract”. But some details still should be provided.

    I disagree that you explained half of Benson. Benson did not claim at all a formula like A=B+C.

    I find myself in the strange situation that I want to agree with you. But when I read your arguments I actually mostly disagree or I don’t understand you. Anyway, I am curious about your upcoming Benson article and I will certainly read it.

  46. Anon August 10, 2018 6:50 am

    B is out of his element here.

    I too want to agree with his general view, but he simply has not composed his thoughts well enough for me to do so.

    As to his last rant regarding the Supreme Court defining Abstract; he calls my calling his deficient position whining – when all that he is doing is whining that I have pointed out his deficiency. He may yell “done,” but there remains NO actual definition used by SCOTUS.

  47. B August 10, 2018 11:34 am

    “B. Unless you have additional undisclosed surprise details about this case, it seems to me (as presented by you) that including the details in the claims would do the trick.”

    That’s exactly the point. Including details might do the trick if the details were sufficient to address preempting the idea of converting data from low-res to high-res with preference to showing an advantage.

    “Geez Louise, A=B+C no less. You of course realize that there is a whole field of “computer arithmetic” that deals strictly with these types of issues.”

    I understand completely. My example brings to issue both preempting the abstract idea of adding two numbers and preempting something well-known, routine and conventional in the relevant technical arts. I merely tried to keep the example one of undeniable abstractness based upon the idea in of itself approach.

    “Benson did not claim at all a formula like A=B+C.”

    The Benson formula was absolutely more complex, but the SCOTUS believed it preempted the idea of BCD to binary conversion.

    “I find myself in the strange situation that I want to agree with you.”

    Hahahaha. Keep mulling the idea for yourself. The ongoing problem is that not all abstract ideas are things that are well-known/well-understood, routine and conventional. Some are deemed “new abstract ideas” Two different theories of abstractness.

    The new abstract idea approach to denying patent eligibility can be an issue of law with no need for evidence, and the detail needed to address the issue unclear. That’s the hard part of s101 facing the courts in my opinion, and an interesting point when appealing from the USPTO under s706 of the APA.

    Can an examiner merely baldly declare something a new abstract idea and have it survive on appeal under the APA. I think some form of argument is necessary, but what sort of argument/analysis is necessary? Lack of detail is one clue.

  48. Night Writer August 10, 2018 1:40 pm

    @39 B The idea of A = B + C exists separately from the media/machine. The machine cures the tangibility issue but not the abstract issue. That’s half of Benson in a nutshell really.

    B this is sheer nonsense. Total rubbish. The idea of “A = B + C.” Tell me what that means?

    The game that is being played by Benson is to say that because something can be represented in something that looks like math, then it is an idea. Rubbish.

    A = B + C requires structure to perform the method to add B and C together and place the results in A. Any invention—make sure you think about this real hard—can be represent abstractly and called an idea. Really think about that.

    And you are talking to someone that has spent endless hours arguing with the author of Benson with me on the side of saying it is nonsense.

    Plus, the whole notion that people like Taranto push that A = B + C exists in the ether or spirit world is total nonsense. An “idea” as you say means that “A = B + C” is represented by neurons of a biological computer. It takes space, time, and energy to represent “A = B + C.”

    Try to go the very core or basic elements of the invention and you’ll get that Benson is total rubbish. And tell me an invention that isn’t an idea? (And get that an idea is a structure that takes time, energy, and space to represent in the human brain. Yes dirt bags like Lemley and Taranto claim there is a spirit version of information, but those that aren’t medieval know that is absurd.)

  49. B August 10, 2018 4:33 pm

    “B this is sheer nonsense. Total rubbish. The idea of “A = B + C.” Tell me what that means?”

    That two numbers can be added to produce a sum.

    “The game that is being played by Benson is to say that because something can be represented in something that looks like math, then it is an idea. Rubbish”

    That’s not what Benson holds.

    “ Any invention—make sure you think about this real hard—can be represent abstractly and called an idea. Really think about that”

    That’s not my argument

    “And you are talking to someone that has spent endless hours arguing with the author of Benson with me on the side of saying it is nonsense”

    I said half the Benson holding was nonsense. I’ve defended the other half as plausible.

    “Plus, the whole notion that people like Taranto push that A = B + C exists in the ether or spirit world is total nonsense..”

    Oh now you’ve done it. You’re making me defend Taranto. Shame on you. Mental steps are not spirit steps, and Taranto says no such thing. However, all mental processes are considered outside the realm of patentable subject matter. What Taranto gets wrong is declaring steps in a computer being “mental steps”

    “And tell me an invention that isn’t an idea?”

    None, but you’re missing the point. Not all inventions are ideas unto themselves, a motivation, etc.

    It’s one thing to claim making something better, but it’s another thing to specifically claim a particular improvement.

  50. Night Writer August 10, 2018 5:14 pm

    @49 B

    You have fallen into the trap of using witch words and thinking like a medieval person. Back and stop using their words.

    Inventions are all about structure. A computer cannot perform “A = B + C” without structure that is in addition to the structure of a general purpose processor. Abstract, idea, etc., all witch words that have definition.

    Taranto does declare that information has an ethereal form and thus by extension that methods are performed in the spirit world. That is the same thing that Stevens believed.

    B >>>”It’s one thing to claim making something better, but it’s another thing to specifically claim a particular improvement.”

    This is gibberish.

    Again, you need to go to the basics of structure. If you think in terms of structure and reality, then all the Alice nonsense evaporates. The game that Taranto and his ilk try to play is to remove a person skilled in the art. If I claim a computer that performs the method of adding B plus C and puts the result in A, then a person skilled in the art knows all the hundreds of solutions. There is structure there.

    Think in terms of inventions have structure. If they meet 112 requirements, then they have a definite structure. Anyway, I can see you are a long way from understanding 101.

  51. B August 10, 2018 6:28 pm

    “You have fallen into the trap of using witch words and thinking like a medieval person. Back and stop using their words.”

    Respectfully, who’s words? The words used by the courts? Yeah, but you need to stop limiting your words to those of an engineer and stretch your thinking to that of a philosophy major. Don’t just criticize the judges, grok the judges first, because most of them are incapable of understanding basic physics. Just fyi the theory of mind-body duality goes back to Rene Descartes and was hotly debated by great minds for centuries.

    Gene, are you reading this?

    “Inventions are all about structure. A computer cannot perform “A = B + C” without structure that is in addition to the structure of a general purpose processor . . . .”

    Yes, but claims can be recited with zero structure. That’s part of the point.

    “Taranto does declare that information has an ethereal form and thus by extension that methods are performed in the spirit world. That is the same thing that Stevens believed.”

    You need to read Descartes and a guy named Gilbert Ryle. https://en.wikipedia.org/wiki/The_Concept_of_Mind

    You’re wording is philosophically Cartesian wording, but at the end of the day the mind versus spirit wording is a meaningless distinction in the judges’ minds.
    Specifically, you and I are arguing the very same thing as me although I word it differently based on the exact “witch” words judges use. Taranto and Stevens both appear to consider steps performed in a computer as equivalent to steps performed in a human mind because of the ethereal nature of math.

    Oddly enough, one title I considered to an article I’m working on was “Benson and the Ghost in the Machine.”

    Are you reading this Gene?

  52. Anon August 10, 2018 7:21 pm

    B,

    You are way over your head – even as you implore taking a “philosophy” approach.

    You are still attempting out to defend the indefensible.

    See specifically my post above (repeated here for convenience:)

    Ternary – you nailed it.

    Another way that I have seen what you speak of phrased may be reflected in a number of maxims:

    Software is not the thought of software.
    Software is not the execution of software**.
    Software is patent equivalent to hardware and to firmware. Each are “wares” to those having proper understanding (in relation to the Person Having Ordinary Skill In The Art understanding).

    Further, understanding the differences between math, applied math, and philosophical notion of Math(S) may provide a very helpful basis for dealing with those who would purposefully obfuscate when it comes to patent protection for software.

  53. B August 10, 2018 7:31 pm

    “You are way over your head – even as you implore taking a “philosophy” approach . . . ”

    You are the description of “life” in Scene V of MacBeth, anon.

  54. Night Writer August 10, 2018 10:22 pm

    @51 B

    It is all about structure. That is not my engineering self, but the lawyer in me. The other words about mind-body, ideas, and abstract are words that have no place in patent law. These words have no meaning. I know that the judges are using those words.

    Plus, think about a word like abstract as used in Alice. It is very much like the word “witch.” Witch has no meaning. There were tests if you were a witch that were subjective and that could not be defended against. A ruling of being a witch meant you were invalidated.

    The way to think of this is that what the anti-patent science illiterate people have done is found a way to divide your claims and attached a word to portions of your claims. “Math” or “abstract.” They then say that you cannot have a claim that include the magic word portion.

    There is really no sense to it other than as a way to limit patents. I know all about the mind-body duality, etc. etc. etc. The only thing it has to do with patent law is that there are judges that are so ignorant of science that they use philosophy to try to describe physical descriptions of machines.

    Again, a machine that takes space, time, and energy and performs useful functions that people are willing to pay for, but are not eligible because of the “witch” inside the machine. Medieval.

  55. B August 11, 2018 12:25 am

    “It is all about structure. That is not my engineering self, but the lawyer in me. The other words about mind-body, ideas, and abstract are words that have no place in patent law. These words have no meaning. I know that the judges are using those words.”

    Face it – you were an engineer first, and law school was a painful transition due to lack of objectivity. Now you feel the need to slam your head against your desk repeatedly in frustration about certain “legal standards,” noting that “standards” is a laughable word to use given the courts’ total lack of cognizable consistency. Come on, did you read my criticism on Taranto and Reyna?

    That said, the words at issue do have meaning, although a squishy malleable meaning that is maddening to a mind used to science. I fully understand your problem with the words used. What exactly is an idea in of itself is to an excessive degree subjective. Hell, everything can be called an idea in or itself, and not too long ago the PTAB called a 900 word claim abstract because . . . who knows. Hell, Judge Reyna could have said that the McRO claims were directed to the abstract idea of performing 3D animation using weighted phonemes, and the SCOTUS would deny cert b/c they’re too busy with more important cases, such as who in Alaska should be licensed to perform teeth cleaning.

    In this sense I get what Anon is preaching – he just doesn’t need to be a horse’s behind in his rhetoric. Hear that, Anon? I’m on your side. Respectful disagreement is acceptable.

    That said, I’ll tell you what I told Anon – spend a lot of late-nights writing briefs. Also, read a lot on amicii. There’s a ton of briefs ranging from the pathetic to the brilliant in Bilski for example, which can be found online. The Software Alliance guys briefs are always brilliant. The EFF briefs are always beyond retarded.

    Now, take your knowledge and opinions to the CAFC, and don’t get frustrated if you lose. I lost in October 2016 on the exact same evidence issue Attorney James Hanrath won in Berkheimer. I called him up and called him my hero. Different panel, different outcome and the CAFC evolves over time if subjected to the same concept being explained over and over in different ways.

    Do this. Cecil Key is the attorney in Investpic – great guy. He has the right to file rehearing again at the CAFC and is contemplating the idea. If he does, enlist one of your clients as a party with an interest in the subject matter, and write an amicus brief. If he goes to the SCOTUS, do the same. Getting barred in both courts isn’t that difficult.

    Complaining alone gets you no where. Be an active voice in the courts for what you strongly believe.

    You have a strong problem with how the courts define an idea in of itself. So does Anon. I haven’t missed this little detail. Pick a defensible legal standard designed to inch the ball in the right direction. I want 100 attorneys reading this to do the same.

    In investpic, I think the best approach is to make clear that s/w is a process under 101 and should not be treated differently than, for example, a chemical process that creates a new molecule. Taranto thinks all s/w is abstract and an idea in of itself. He’s wrong. Write a brief and tell him why.

  56. Anon August 11, 2018 10:14 am

    make clear that s/w is a process under 101

    Software is not a process.

    The execution of software may be involved in a process.

    You keep on going off the rails in your attempts to find some “meaning” in what the courts have done to you. I “get” your pain (I really do), but your current path is not the answer. At the same time that you provide solid advice (having attorneys provide briefs that point the way), you indulge yourself in these odd attempts to find some defense where plainly there is none to be had.

    For all your wanting to call me a horse’s behind, or to be flippant with a Shakespeare quote, your problem remains you and your attempts to defend the indefensible.

    As to the Shakespeare quote, I would choose being “Life” even if YOUR take on it is the negative view expressed – that’s a YOU problem (and much like the current exchange, it is YOU that needs to step up and realize that).

    It certainly is not that “Respectful disagreement is acceptable. when you simply do not want to deal with the counterpoints that I present. That’s capitulation, not respect. Respect would be you actually addressing my counterpoints.

    As I mentioned, my “hostility” is not with you per se (as it is much more with the lack of reason from the Court, coupled with some odd sense of pretending that “philosophy” provides an acceptable reasoning). This “alt-reality” version of attempting to justify (or even merely half-justify**) while ignoring parts of the discussion that you don’t want to address is what earns you “hostility.”

    ** I find your “defense” of getting Benson “half way there amusing in a disturbing manner. You are aware what half-truths are also known as, right?

  57. Night Writer August 12, 2018 4:50 am

    @55 B

    You have gone to a personal attack rather than addressing the substance of what has been said. Probably because there aren’t any ways to defend your framework for 101.

    In law we can say things about recklessness because one of the elements has to do with the mens rea of the accused. Importing our mental constructs on inventions is not only not necessary but wrong. There simply is no reason to go beyond the structure of the invention.

    Moreover, it is interesting with Taranto that he was trained in mathematics as often minds that were trained in mathematics simply do not understand patent law.

    The real issue is what is the point of using a human mental construct like idea or abstract?

  58. B August 12, 2018 12:22 pm

    “You have gone to a personal attack rather than addressing the substance of what has been said.”

    Dearest lord in Heaven, have you bothered to read your own posts?

    That said, what personal attacks? Be specific, because i can w.r.t. to the posts attacking me.

    So far the only harsh words I’ve used is to encourage you to stop whining and be active at the CAFC level.

    I’ll wait

  59. Anon August 12, 2018 3:06 pm

    Attacking your position is not the same as attacking you. Any (perceived) attack on you is due strictly to your actions in relation to whether or not YOU are answering the counter points put to you for your arguments.

    As I already mentioned, it’s great that you call for people to take action in the courts with amici briefs, but such is just a non-sequitur to the discussions HERE.

  60. B August 12, 2018 3:37 pm

    @Anon

    “Attacking your position is not the same as attacking you”

    No kidding. That’s exactly my point, Anon. Meanwhile, statements like “B is out of his element here” “This is just childish nonsense, sorry B.” “You have fallen into the trap of using witch words and thinking like a medieval person.” can be construed as an ad hominem attacks

    I’m a bit tired of these. I’ve grown tired of the nonsense attacks, which in my mind are based upon simplistic and uninformed viewpoints. Feel free to disagree, but ratchet down the rhetoric.

    FWIW, today I’m pulling the “mental steps” cases cited by Justice Stevens in Diehr. In my opinion, the whole mental steps doctrine created by the CCPA is not what Judge Taranto thinks it is. My preferred attack is not to argue metaphysics as to what constitutes an invention, but by understanding critical words and phrases, such as “inventive concept” and “mental steps” in their original context.

    My approach is simple: Who are you going to believe: Judge X’s words or what Judge Y says about Judge X’s words?

    ————————-

    @ NW

    “Moreover, it is interesting with Taranto that he was trained in mathematics as often minds that were trained in mathematics simply do not understand patent law.”

    We 10000% agree

    “The real issue is what is the point of using a human mental construct like idea or abstract?”

    Respectfully, I’m not quite sure what you mean by this. Could you re-phrase?

  61. Anon August 12, 2018 6:25 pm

    B,

    You need to finish reading that first paragraph of mine (and not have such ‘glass’ feelings). A comment like “you are out of your element” is NOT ad hominem when you continue to display BEING out of your element (and continue to not address the actual points out to you). You only want to dismiss things but – tellingly – do not (cannot) address the things that you want to dismiss!

    Separately, I would love to see a detailed explication on the mental steps doctrine, tracing back to its initial rise, subsequent fall, and the current attempts to “zombifie” the doctrine as an attack against software innovation. Perhaps you have seen a particular word over at “that other blog” that fits the attempts to recast “mental steps” (anthropomorphication); and then you might reflect on Ternary’s post contrasting ACTUAL mental steps and what (non-“Abstract”) computers actually do.

    Then (please) realize that the false-reality of any psycho-babble “philosophy” of any Supreme Court Justice is an affront to what the Court is supposed to do (and is instead an overeach and intrusion by legislating from the bench, violating Separation of Powers principles).

    Or maybe you are “ok” with such violations…

  62. B August 12, 2018 7:07 pm

    I’m done conversing with you, anon. You’re arguments are pathetic

  63. Anon August 13, 2018 8:11 am

    B,

    Another “I’m done” without addressing the points put to you.

    Your choice of label is on the wrong person’s tactics.

  64. Night Writer August 13, 2018 9:20 am

    @60 B

    The point is that what the judiciary has done is add words that are unnecessary and are used for judicial activism.

    Something cannot be abstract and pass 112 in a rational world. Abstract is supposed to be dealt with by enablement. Something cannot be enabled and abstract. Abstract is just a word that was used by the SCOTUS to attach additional requirements for patentability. They could have used any word as the test in Alice is not strongly related to the English word abstract. Abstract originally was meant to handle patent claims like “make a machine with fewer parts that works just as efficiently as the previous machine.” That is an example of an abstract claim as there is no enablement.

    This is why abstract is a witch word. The courts just take a word and make up a test to see if you fit that word. The test is impossible to pass if they want you to fail and gives complete power to the courts to do as they please. I think it is pretty clear that Alice is unconstitutional for those reasons.

    Anyway, idea is another word like abstract. Scope of enablement is the tool that should be used to police claims that are too broad. The claims in Alice should have been held to be obvious.

    Idea, abstract, etc., all these words are constructs in the human mind that have no clear relationship with inventions. They are always come with these tests to see if an invention is one of these words. (Are you a witch?) The tests are always terrible and nothing more than a king or queen getting to pick whatever result they want.

    Actually, if you know much about cognitive science and philosophy, then you should recognize that my opinions are in keeping with the latest beliefs of scientists.

  65. Night Writer August 16, 2018 5:14 am

    You probably won’t read this B, but if you ever want to discuss this more when I have time to collect my thoughts I will discuss it with you.

    Your objective vs. subjective comment is completely unfair. The Patent Act has its low level subjective components, e.g., obviousness and enablement. The fact is that “idea”, “abstract”, and other things that the judges have fabricated are judicial activism that are fabricated on top of the Patent Acts framework and use the framework in arbitrary ways. For example, “something more” is clearly a 103 test, but done without evidence so that a judge may privately decide the outcome.

    Note how similar this is to witch law where a new thing was created “a witch.” And then the existing laws were used for convictions where subjective judgments could be privately made by the judge.

  66. B August 16, 2018 10:02 am

    “Your objective vs. subjective comment is completely unfair. The Patent Act has its low level subjective components, e.g., obviousness and enablement.”

    I respectfully disagree, and my point is well-made by the various 101 rejections issued. I’m not saying its right. I’m saying that’s the way its been handled — especially in light that judges still think they know what constitutes “well-known, routine and conventional” in a vacuum of evidence and they feel entitled to ignore any limitation they want.

  67. Anon August 16, 2018 4:44 pm

    especially in light that judges still think they know what constitutes “well-known, routine and conventional” in a vacuum of evidence and they feel entitled to ignore any limitation they want.

    You state that you disagree, B, then state something that indicates that you agree completely.

  68. B August 16, 2018 5:00 pm

    @ NW “You state that you disagree, B, then state something that indicates that you agree completely.”

    You’re incapable of following a simple line of thought.

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