At Age 46, it’s Time to Retire Benson

There Are Two Types of § 101 Rejections

The first type of analysis is whether a man-made something is patent-eligible under § 101 by virtue of the definitions recited in 35 U. S. C. § 100.  An example of such an analysis is found in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) (holding that an electromagnetic carrier per se is not a process, machine, manufacture or composition of matter a defined by § 100).  In re Nuijten reflects an example of a man-made invention that, as a categorical rule (not categorical exception), falls outside § 101.  See also, Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) (holding that data in its ethereal, non-physical form is information that does not fall under any category of eligible subject matter).  Preemption is not a factor in this type of analysis.

The second type of analysis, which was addressed in Alice Corp. v. CLS Bank, 134 S. Ct. 2347 (2014) is a determination of whether a claim constitutes an exception to § 101 by preempting a law of nature, natural phenomena or an “abstract idea.”  The Alice Corp. decision commands courts to construe the abstract idea narrowly noting that the non-abstract “[poses] no comparable risk of pre-emption[.]” Alice Corp., 573 S. Ct. at 2355.

This article is directed to the first type of analysis.

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Congress, Not the Supreme Court, Determines the Scope of Patent Eligibility

Article I, Section 8, of the United States Constitution states “Congress shall have power . . . to promote the progress of science and useful arts” (emphasis added).

To this end, Congress enacted several different acts over time including the 1952 Patent Act.

Arguably, the two most significant changes of the 1952 Patent Act were: (1) to codify the holding of Hotchkiss v. Greenwood, 11 How. 250 (1850), so as to define the word “invention” in terms of nonobviousness under 35 U. S. C. § 103; and (2) to replace the word “act” under then 35 U. S. C. § 31 to “process” under § 101 while defining the word “process” in § 100.

Section 101 states: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor . . . ” (emphasis added).  Relevant to the word “process,” Congress defined the word in § 100 (b) as follows: “The term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material” (emphasis added).

While it is fully within the courts’ powers to identify exceptions under § 101, it is not within the courts’ powers to de facto rewrite or ignore a single word of the statutory patent laws, or to replace congressional intent with biases that the courts feel better suited to patent law.  That is, it is not within the constitutional powers of the courts to place a single additional burden on patentability that Congress did not sanction in its statutes.

While courts may interpret particular words in view of congressional intent, the Supreme Court has repeatedly declared that “[u]nless otherwise defined, ‘words will be interpreted as taking their ordinary, contemporary, common meaning.’” Bilski v. Kappos, 561 U.S. 593, 603 (2010).  There is no known meaning “of the definitional terms ‘process, art or method’ that would require these terms to be tied to a machine or to transform an article.” Id.   “Our task . . . is the narrow one of determining what Congress meant by the words it used in the statute; once that is done, our powers are exhausted.” Diamond v. Chakrabaty, 447 U. S. 303, 318 (1980).

Turning to the idea of the ordinary, contemporary and common meaning of the word “process,” Black’s Law Dictionary (6th Ed. 1990) at p. 1205 defines “process” generally as “a series of actions, motions or occurrences . . . whereby result or effect is produced.”  As related to patent law, Black’s Law Dictionary defines “process” to mean: (1) an “art or method by which any particular result is produced;” (2) a “means or method employed to produce a certain result or effect;” and (3) “a definite combination of new or old elements, ingredients, operations, ways, or means to produce a new, improved or old result[.]”  Compare the McGraw-Hill Dictionary of Electrical and Computer Engineering (2004) (ISBN0-17-144210-3) at p. 448, which defines the term as “a program that is running on a computer.”

Clearly, all applicable definitions are broad enough to include software operating in a computer, and a categorical rule differentiating software from other forms of processes is improper.  Such “categorical rule[s] denying patent protection for ‘inventions in areas not contemplated by Congress . . . would frustrate the purposes of the patent law.’” Bilski, 561 U.S. at. 605 (citing Chakrabarty).

The ‘Process’ Analysis in Gottshalk v. Benson Is Erroneous and Moot

The 1952 Patent Act was enacted in response to the anti-patent sentiment of the Supreme Court starting in the 1930s.  This anti-patent sentiment was reported by Karl Lutz (Journal of the Patent Office Society, Vol. XXXV, No. 3 at pp. 156-7 (March 1953)), who stated the 1952 Patent Act was enacted to remove “the recent apostasy” of the Supreme Court “from the benevolent policy of the Constitution.”  Indeed, the “apostasy” pre-1952 was so harsh that Justice Jackson criticized the Supreme Court’s “strong passion” for striking patents down “so that the only patent that is valid is one which this Court has not been able to get its hands on.” Jungersen v. Ostby & Barton Co., 335 U. S. 560, 572 (1949).

Unfortunately, anti-patent sentiment re-established itself in the 1970s as is evidenced by Gottschalk v. Benson, 409 U. S. 63 (1972).

There were two separate theories of patent ineligibility in Benson.  The first theory is whether or not software was a “process” under § 101.  The second theory is whether or not Benson’s claims preempted the abstract idea of Binary Coded Decimal (BCD) to binary conversion.

Unfortunately, Benson’s “process” analysis had no nexus to the plain, contemporary and ordinary meaning of the word “process,” but was instead determined using erroneous criteria, such as the USPTO’s inability to address a new technology.  “The Patent Office now cannot examine applications for programs because of a lack of a classification technique and the requisite search files.” Benson, 409 U.S. at 72.  “Even if these were available, reliable searches would not be feasible or economic because of the tremendous volume of prior art being generated.” Id.  “Without this search, the patenting of programs would be tantamount to mere registration and the presumption of validity would be all but nonexistent.”  Id.  “If these programs are to be patentable,  considerable problems are raised . . . .”  Id. at 73.

In sum, the 1972 Supreme Court mistook the USPTO’s incompetency to address an emergent technology for the ordinary, contemporary and plain meaning of the term “process.”

Turning to the present day, in answer to Benson’s laments, the existence of Technology Centers 2100 (Computer Architecture Software and Information Security) and 2400 (Computer Networks, Multiplex, Cable and Cryptography/Security) provide strong evidence that the USPTO recognizes that computer programs are processes.  Further, the modern patent classification system, which includes: (1) Class 341 (Coded Data Generation or Conversion); (2) Class 700 (Data Processing: Generic control or specific applications); and (3) Class 705 (Data Processing: Financial, business Practice, Management, or Cost/Price Determinations), provides further verification that the USPTO recognizes that computer programs are processes.

Of particular and relevant interested as to whether the USPTO would today consider Benson’s claims a “process” based on the exact same criteria the Supreme Court used in 1972, one merely needs to look at class 341 / subclass 50 (digital code to digital code converters) and especially class 341 / subclass 85 (BCD (binary-coded-decimal) to binary).

There’s a bit of irony in that, by applying Benson’s criteria to Benson, Benson isn’t Benson at age 46.

Thus, whether or not the preemption issue in Benson was correctly decided, the criteria used by the 1972 Supreme Court to determine whether software is a process under § 101 shows that the Benson holding is moot.  Regardless, it is past time to retire the Luddite view that software processes are any less patent-worthy than other processes because the USPTO was incapable of examining software in 1972.

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The Modern Courts Consider Software a Process under § 101

Given that the Supreme Court’s anti-software theory of patent-eligibility of Parker v. Flook, 437 U. S. 584 (1978) was certainly overturned by Diamond v. Diehr 450 U.S. 175 (1981), all that is left of the anti-software sentiment of the 1970s is Justice Steven’s dissent in Diehr.  It is of particular interest that the thrust of Justice Steven’s dissent was an attempted expansion of the “mental steps” doctrine citing three cases including In re Heritage, 150 F.2d 554 (1945); In re Shao Wen Yuan, 188 F.2d 377 (1951) and In re Bolongaro, 62 F.2d 1059 (1933).  It is debatable that these three pre-1952 decisions would survive the 1952 Patent Act given these cases were decided during the period Karl Lutz described as “the recent apostasy.”

Regardless, while different jurists within the Federal Circuit presently view the mental steps doctrine differently, the term “mental steps doctrine” intuitively implies the idea that a patent claim should never read on a human mind performing an act.  See CyberSource v. Retail Decisions, 654 F.3d 1366 (Fed. Cir. 2011) (holding that a claimed method not tied to any machine and that could be performed entirely by the human mind was patent ineligible).  As a fundamental issue of human dignity, the human mind should be free of government-sanctioned monopolies.

However, even when a particular software claim fails to recite a computer, a machine may still be inferred depending on the specification.  “A construction that excludes all disclosed embodiments . . . is especially disfavored” (emphasis in original).  Kaneka Corp. v. Xiamen Kingdomway, 790 F.3d 1298, 1304 (2015).

Further, when a machine is found to infringe a software claim that recites no operation on a computer, there is no risk of a human mind being hindered by said claim when a complaint appropriately alleges an infringing machine.

Fortunately, Justice Steven’s attempt to interpret the “mental steps” doctrine to read on what a machine performed was rejected by the Supreme Court majority.

Unfortunately, the “mental steps” folly re-emerged in various recent cases, such as Electric Power Group v. Alstom, 830 F.3d. 1350 (Fed. Cir. 2016), which asserted that presumably novel and non-obvious machines were patent ineligible because they were somehow “mental processes.”  More specifically, Electric Power Group stated “we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.”  Id. at 1354.

However, as shown in Electric Power Group Doc. 24 (Appellant’s opening brief), pages 27-28, a computer system (claim 1) performing specific steps was asserted against Alstom.  A machine is no human mind.  Machines don’t perform “mental steps.”  Further, the method of claim 12 is far beyond the capacity for a human mind due to the sub-second processing requirement.

Undoubtedly, any math-based algorithm can be implemented using computers.  So what?  As stated above, the exact text of § 100 (b) states that the term process “includes a new use of a known . . . machine.”  Assuming that an algorithm is novel and nonobvious, such algorithm constitutes a new use for a known machine and is therefore patent eligible based on the laws that Congress enacted.  Any other position de facto writes out statutory language of § 100 that the courts are obligated to follow.

Further, this issue was settled en banc on May 31, 2018, in Aatrix v. Green Shades, Appeal No. 2017-1452 (Fed. Cir. 2018), where steps performed by software programs that provided no improvement to any machine were considered within the realm of patent-eligible claims by Judges Prost, Newman, Lourie, Dyk, Moore, O’Malley, Wallach, Taranto, Chen, Hughes and Stoll.

Whether or not software per se is intangible, software processes are still “processes” under § 101 – especially when such software directs the actions of physical machines.  A computer is no less a machine than the wheel.  However, what jurists would assert that a new and nonobvious use for a wheel is not patent eligible?

Categorically Denying Software Claims Produces Bizarre Outcomes

To illustrate the absurdity of Benson’s anti-software position, the following examples of patented machines are provided.

First, contrary to popular notion, U.S. Patent No. 4,344,142 to James Diehr was not the first attempt to patent the idea of performing a real-time simulation of the Arrhenius equation using periodic temperature measurements of a rubber mold in order to cure rubber.  In fact, nearly two years prior to Diehr’s filing, Thomas Smith filed for a device that performed the very same algorithm using dedicated logic, which was granted as U.S. Patent No. 3,819,915. Smith was also granted U.S. Patent No. 4,022,555 for another rubber-curing device based on discrete logic.

Similarly, William Claxton filed for patent protection in 1974 for an Arrhenius-based rubber-curing device using analog components, which issued as U.S. Patent No. 4,044,600.

The point is simple.

On the day Diehr was argued before the Supreme Court, there were no less than four machines of various designs that performed the exact same rubber-curing processes based on a real-time operation of the Arrhenius equation.  However, only one design evoked the Bensonesque anti-software / “mental steps” nonsensical theory whereby software operating within a machine negated patent eligibility in the minds of a minority of jurists.

The Benson decision may only be 46, but it needs to be retired.  It’s a parasite to the patent community, and an embarrassment that the Supreme Court refuses to admit is an embarrassment.

As a last note – without doubt technological advances on mind-machine interfaces will one day require new tests to determine patent eligibility under the “mental steps” doctrine.  Those will be fun times.

 

Image Source: Deposit Photos.

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 29 Comments comments. Join the discussion.

  1. Concerned September 8, 2018 2:54 pm

    Even on EPG appeal, the judges stated in their decision that there were no concrete steps solving a known problem. Of course, this statement is conveniently disregarded in patent prosecution.

    So it took almost 20 years for Congress to reign in SCOTUS in 1952? Not good for me if the current mess takes 20 years to resolve.

    That would make for a obvious good news/bad news joke with a horrible punchline.

    But then again, the inventor is dead, but the SCOTUS is doing well, thank you very much.

  2. Ternary September 8, 2018 4:23 pm

    The court’s reasoning in Benson would actually fit well in medieval cases against science. In the Middle Ages scientists and alchemists preferred to write as little as possible about their inventions and discoveries. There was of course the preference to keep inventions (including mathematical ones) secret as to remain the sole beneficiary of such inventions. Another reason to limit publication was the tendency of authorities to punish inventors and scientists for publications that created doubt about the existence of God. That doubt was easily created if things were shown to happen by natural processes rather than divine intervention. (see Wootton’s excellent The Invention of Science).

    One of the most hilarious (if not miserable) explanations of the Court in Benson is that the conversion (of Binary Decimal to Binary) is performed by a machine. However, the process has, according to the Court, no use outside computers. Accordingly, the claimed conversion preempts all use of the conversion, because it is only used by machines and not as mental steps.

    “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 pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.” No medieval Inquisition could have improved on this type of reasoning.

  3. Anon September 8, 2018 6:22 pm

    B,

    Your heart is in the right place, but this piece is truly cringe-worthy for quite a few simple but nonetheless deep mistakes (of which I bam confident that you are aware of, having had them explained to you previously – and directly – by me.

  4. B September 8, 2018 7:17 pm

    @ concerned “Even on EPG appeal, the judges stated in their decision that there were no concrete steps solving a known problem.”

    Depends on what you mean by “concrete.” Some cases, such as “In re Allapat,” use the word to mean “physical.” Other cases use it to mean “detailed.”

    EPG was a brilliant invention. It solved a distinct problem in the industry. It preempted very little, and curiously enough the CAFC braintrust forgot to figure in the idea of preemption when making its analysis

  5. B September 8, 2018 9:20 pm

    @ Anon “Your heart is in the right place, but this piece is truly cringe-worthy for quite a few simple but nonetheless deep mistakes”

    Dude, that’s how I feel about 90% of your posts. Feel free to publish while providing precise citations. I look forward to seeing your official opinions in print open for criticism and debate.

  6. Anon September 9, 2018 12:24 am

    If you feel that way then you have your “please cite” already.

    Unless you were just being an ass and just want to “out” me.

    Otherwise, please feel free to pay actual attention to that “90%” and do more than “feel.” Maybe discuss and think instead of feel.

  7. Night Writer September 9, 2018 11:03 am

    People should understand the history of Benson in that basically the DOJ’s brief was adopted by the SCOTUS and it was fairly clear to everyone that the point was to exclude computer programs from eligibility. That it was intended as judicial activism. It is interesting too that one of the reasons was that the money was being made selling the hardware and not the software.

    In Deener a process is claimed for grain processing. Interesting the process could be carried out by a human body but the SCOTUS discuss the various machines that would be used to perform the process.

    Here, what is happening is what goes on in the mind is being confused with a machine performing those steps.

  8. B September 9, 2018 11:49 am

    @ Night Writer “In Deener a process is claimed for grain processing. Interesting the process could be carried out by a human body but the SCOTUS discuss the various machines that would be used to perform the process.”

    Great point. Contrast this with Justice Stevens dissent in Diehr. Golly, a person can do this even though a computer is required, ergo patent ineligible.

    Note that Benson was narrowly applied to computers. Not to dedicated logic machines and not to analog computers (expressly). A human can do any computation an analog computer can do. A human can do anything a dedicated logic circuit can. Caveat: not as fast, of course, and so asserting that sub-second real-time processing can be performed by a human is retarded

  9. Ternary September 9, 2018 2:08 pm

    “Here, what is happening is what goes on in the mind is being confused with a machine performing those steps.” Exactly, Night. A final result delivered by a computer can sometimes be achieved by a human. In fact, a computer often achieves a result faster and better than one or more humans, a hallmark of a useful invention. This does NOT mean that the computer does what a human does.

    An electrical/electronic calculator performs an addition into a sum by processing signals that have been provided a meaning by humans. The electronic circuits that achieve this include generally XOR and AND circuits. The processing requires that for human understanding binary signals are ultimately converted into a signal that results in a display that can be interpreted as a decimal digit. Old Nixie tubes that activate a display of a numerical display based on a particular binary input are an example that computers work entirely different than the human brain. For those who don’t believe this, humans have no Nixie tubes or equivalents and do not need those to perform an addition. There are no XOR circuits in the human brain.

    This whole comparison in patent law of computers with the human brain is an unscientific and completely unproven anthropomorphism. We all know that computers and especially networked computers can achieve things that cannot reasonably be achieved by any number of humans. It reflects a (I believe deliberate and medieval-like) misunderstanding of computer technology.

    A front loader excavator can achieve a similar result as a multitude of human diggers with spades. No one in his right mind (but who knows in this atmosphere) would call the front loader to be directed to an abstract idea.

    “A human can do any computation an analog computer can do. A human can do anything a dedicated logic circuit can.” A human most certainly cannot do what an analog computer does. We do not have capacitors, coils, diodes and opamps in our brains. Furthermore, we are way beyond the point where humans (or any number of humans combined and organized) can do what a dedicated logic circuit can do. To use an often used example on this blog: RSA encryption is applied upon signals that represents modulo-n numbers of 100s of digits. There is no way that a human or even a group of humans can perform RSA. In another example, a human cannot recognize a content of a chip on a chipcard.

    Comparison of human capability with computers is a meaningless exercise and is generally applied by anti-computer/anti-software types and they often use terms like “logic” to make their point. A computer does not perform logic. Logic is a human activity. It may sound good to the general public, but scientifically it is pure and fairly bizarre nonsense.

  10. David Stein September 9, 2018 3:45 pm

    This part of Benson amuses me:

    > …the presumption of validity would be all but nonexistent.

    Uh huh. And 40+ years of radically altering the standard of 101 patent-eligibility, *and* grafting several new ex-post-facto review / invalidation / “death panels” mechanisms onto post-grant practice, have done *wonders* for the presumption of validity, haven’t they?

    This must be one of those “we had to destroy the village to save it” kinds of things.

    The reality is even worse: not only has this careless tinkering damaged the presumption of validity, it’s rendered examination a more subjective and volatile process. Whether your application gets allowed doesn’t just depend on the prior art: it now depends on your examiner’s personal opinions and understanding of 101.

    In a well-functioning system, changes to the law are implementable as examination principles that result in patent decisions that more consistently satisfy the new legal principles. That is, after a change in the law, you’d expect a brief surge in cases that apply the new standard to pending matters, but the incidence of conflict should diminish over time as everybody gravitates toward a common understanding of the new standard. But Alice is four years old now, and IPRs are *six* years old, and neither one seems to be yielding a less litigious environment – quite the opposite, in fact, as unsettled questions remain unsettled. It’s a sad, inefficient, and frustrating state of affairs.

  11. B September 9, 2018 5:32 pm

    @ David Stein “But Alice is four years old now, and IPRs are *six* years old, and neither one seems to be yielding a less litigious environment – quite the opposite, in fact, as unsettled questions remain unsettled.”

    Pick a 101 decision. I can name another case that stands for the opposite. Berkheimer says evidence is necessary. Villena says evidence is not necessary. Every judge that ruled against Villena agreed with the Berkheimer and Aatrix en banc decisions.

  12. angry dude September 9, 2018 8:10 pm

    “anything under the sun that is made by man”

    That’s all it should be

  13. Paul Cole September 10, 2018 10:17 am

    Claim 8 in Benson read as follows:

    “The method of converting signals from binary coded decimal form into binary which comprises the steps of

    “(1) storing the binary coded decimal signals in a reentrant shift register,

    “(2) shifting the signals to the right by at least three places, until there is a binary `1′ in the second position of said register,

    “(3) masking out said binary `1′ in said second position of said register,

    “(4) adding a binary `1′ to the first position of said register,

    “(5) shifting the signals to the left by two positions, [409 U.S. 63, 74]

    “(6) adding a `1′ to said first position, and

    “(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary `1′ in the second position of said register.”

    No reader with the slightest knowledge of early computers could fail to recognise that what is claimed here is genuine physical steps being carried out on registers which are physical entities within an electronic computer, the various values being held electronically by semiconductor networks within the computer. What is claimed is a transformational series of steps to produce a useful result and therefore falls clearly and unambiguously within the PROCESS category of Section 101.

    In declaring this subject-matter to be ineligible, the Court was plainly over-stepping the boundary established by the doctrine of separation of powers since subject matter falling as a matter of substance as opposed to mere outward presentation within a category established by Congress cannot be removed by judicial fiat, this being not mere interpretation of the statute but judicial alteration of the statute. As a matter of substance, the Benson decision is legally and factually WRONG and should not form part of modern jurisprudence.

  14. Night Writer September 10, 2018 10:56 am

    @10 David Stein

    I think that KSR is the same as Alice in that it gives so much discretion to the fact finder that either result is possible. It is a roll of the dice depending on the personal biases of the examiner.

  15. B September 10, 2018 11:19 am

    @Paul Cole “No reader with the slightest knowledge of early computers could fail to recognise that what is claimed here is genuine physical steps being carried out on registers which are physical entities within an electronic computer.”

    I agree completely, but the SCOTUS has never been known for its technical proficiency. However, “reentrant” has a meaning is software as well as hardware (which becomes meaningless at the assembly level), and a reentrant shift register is part of every generic computer as are adders.

  16. anonymous September 10, 2018 2:26 pm

    “this issue was settled en banc on August 2, 2018, in Aatrix v. Green Shades, Appeal No. 2017-1452 (Fed. Cir. 2018)”

    Link? I don’t see anything with that date.

  17. David Stein September 10, 2018 2:41 pm

    Night Writer:

    I completely agree about KSR. I’ve ranted and raved about “ransom-note”-style rejections: if you snip sentence #6 out of Ref A, sentence #19 out of Ref B, and sentence #4 out of Ref C, and then glue them together… you get the claim. So what? Can you reject any chemical composition by citing the Periodic Table, which of course documents every single atom of every composition known to man?

    I began my patent prep/pros career the same year as KSR, so I don’t have any basis of comparison with pre-KSR examination. I’ve accepted the futility of arguing about combining references except in the rare cases where the combination is, in fact, technical incompatible. Yes, this often seems unfair – but as I see it, it’s only one aspect in which all of patent examination has tilted toward examiner deference. 101 is a much more egregious affront in that regard.

  18. B September 10, 2018 3:08 pm

    “Link? I don’t see anything with that date.”

    My profound apologies. The correct date is May 31st. I’ve already asked the admin to correct the date.

    August 2, was the date that the CAFC re-issued its Investpic decision after realizing they analyzed the wrong claims

  19. Night Writer September 10, 2018 7:08 pm

    @17 David Stein

    I started before KSR. The standard before was TSM. The examiners would have to find some TSM in the prior art to join the references together and generally stayed within one area. The interviews were 100 percent different. You had power. The first thing I was taught was how to appeal and overturn a rejection at the PTAB.

    The examiners were respectful and worked hard to find a TSM and if they couldn’t find one they allowed the claim.

    Now I am a beggar. I almost never stand up to the examiner. They hold all the cards. I think Alice and KSR have taken farther from quality rather than closer.

  20. B September 10, 2018 9:44 pm

    @ Night Writer “Now I am a beggar. I almost never stand up to the examiner. They hold all the cards. I think Alice and KSR have taken farther from quality rather than closer.”

    There are a few wonderful cases that put power back in your hands. After KSR, examiners believed that they could just assert something was obvious without evidence calling it “common sense and common knowledge.” However, individual limitations still need evidence, and KSR only addresses motivation to modify/combine.

    http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-2073.Opinion.8-8-2016.1.PDF

    I’ve beaten examiners every time at the PTAB using K/S HIMPP v. Hear-Wear and Apple v. Arendi. Unfortunately, the previous administration populated the CAFC with judges who have been pathetically slow on the uptake on Alice Corp.

  21. concerned September 11, 2018 4:39 am

    B @20:

    Re: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-2073.Opinion.8-8-2016.1.PDF Reversed due to lack of evidence supporting the PTAB’s position.

    The patent examiner dropped his 103 rejection on my application when I submitted hard evidence from every possible end user that nobody is using any of my claims. However, the patent examiner still maintains that my claims are routine, conventional and well-understood. Obviously, the patent examiner’s position contradicts himself and the patent examiner DOES know this fact. The patent examiner told me 3 times in the interview my application had patentability, then still rejects in writing. I wish I had recorded the conversation, are these interviews recorded?

    The above observation supports the argument some advance that 102. 103 and 112 should be the patent test, exclude 101 completely.

    I realize the backdrop is the narrative to kill software patents regardless of what the law or “common sense” would dictate. I would bet the house I win my appeal in front of a jury of my peers. I would not bet 10 cents on the outcome via the process I am forced to journey.

    Off to get my rejection from the PTAB, my attorney is drafting the argument as if in front of the CAFC as you suggested. Thank you for all the insight!

  22. Night Writer September 11, 2018 6:32 am

    @20 B

    Good advice B. And, of course, I still fight to make sure they are finding the elements in the prior art. The number one argument winner at the PTAB is that element X is not shown by prior art reference Y as contended by the examiner.

    But they still can be wild with combinations and wild with what it means for something to be disclosed in the prior art.

  23. B September 11, 2018 9:47 am

    @ concerned “The patent examiner dropped his 103 rejection on my application when I submitted hard evidence from every possible end user that nobody is using any of my claims. However, the patent examiner still maintains that my claims are routine, conventional and well-understood.”

    You know, if it weren’t so pathetically idiotic and tragic, this would be funny. Like, no one does it, but its still routine and conventional.

    FYI, the official jargon to use from Alice Corp. is that your business method must be ‘a fundamental economic practice long prevalent in our system of commerce’ to be considered abstract.

    USE THOSE WORDS in your apeal

  24. Concerned September 11, 2018 12:31 pm

    B:

    Thank you. I will use that exact phrase!

  25. Anon September 11, 2018 2:05 pm

    FYI, the official jargon to use from Alice Corp. is that your business method must be ‘a fundamental economic practice long prevalent in our system of commerce’ to be considered abstract.

    USE THOSE WORDS in your appeal

    Slight – but obviously important – correction:

    “FYI, the official jargon to use from Alice Corp. is that THE GIST OF your business method must be ‘a fundamental economic practice long prevalent in our system of commerce’ to be considered abstract.”

    IF the court respected the words of Congress and gave full and considered weight to the actual claims, and reflected exactly who Congress granted the authority/responsibility to for defining the invention, then the meddling of the Court would be severely constrained.

    “Gist” coupled with the undefined “Abstract” (not to mention the undefined “something more”) is law scrivining at some of its worst.

  26. B September 11, 2018 2:14 pm

    @ Anon “FYI, the official jargon to use from Alice Corp. is that THE GIST OF your business method must be ‘a fundamental economic practice long prevalent in our system of commerce’ to be considered abstract.”

    Hahaha, there is the right way, the wrong way and the Supreme Court way.

    At least one problem is that the Supreme Court didn’t give guidance as to what “something more” is.

    Personally, I believe it should be a de minimis test of at least one functional limitation.

    For example: Traditional hedging = abstract. Traditional hedging for a particular industry. Narrower claim, but no difference in functionality. Traditional hedging but using a new type of criteria = something more, even if new criteria is obvious as there is no preemption over traditional hedging.

  27. concerned September 11, 2018 4:46 pm

    B and Anon: Thank you both for your insights!

    B: I received the briefs and forwarded them to my attorney, thank you!

    I am thankful to Mr. Quinn for providing this forum!

  28. Night Writer September 13, 2018 6:44 pm

    By the way, on the other blog is the R. Stern who wrote the DOJ brief for Benson that was largely adopted by the SCOTUS.

    He blogs on here and the other blog once in a while.

  29. Jianqing Wu September 13, 2018 8:47 pm

    Courts are not designed to address complex matters like inventions. They do not have research arms, most judges lack relevant experiences in patents, inventions, and technologies. Law makers need to take a deep look at the system model. Congress cannot throw every problem to the courts, hoping they can fix all problems. As long as the courts can keep doing what they have done, they will keep doing things to ruin the patent system. I will provide following reasons:

    (1) At least one third of Supreme court opinions are decided on flaws (this can be seen from the opinion face without studying the evidence and case facts; (2) judges make decisions without any mechanism to achieving minimum global harmony (ten judges will make ten different rulings), (3) court procedures reflect a large number of practices that violate scientific principles or laws of nature (but, they are precluded from questioning), (4) a large number of opinions reflect judge’s lack of understanding the differences between un-approvable theories and practical needs for resolving disputes (thus this kind of precedents encourage perjures, false evidence, and dishonest opinions, and turn adjudication into games), (5) justice is placed on a wrong notion of “even application of laws to all parties” (while this rule appears to be fair, it is based upon a one-single factor like the deadline for filing a paper, but fails to take into account of all relevant factors (a person may stay in jail for being unable to pay dollars, but another person can run red lights all years around by setting up an automatic fine payment account), (6) judges rely excessively upon technicalities to avoid tough questions, (7) the judicial system lacks real claws to enforce precedents (in addition to the bias, incompleteness, and mistakes in precedents, there is no selection rules and thus judges can freely choose precedents they like without any consequences), and (8) the judicial lacks enforceable mechanism to control personal bias (judge election system has made the problem much worse).

    Each of those problems can be and will be repeated perpetually. It only takes tens of judges to completely ruin the patent system.

    After the Alice, a vast number of recent patent claims were drafted in absurd claim languages (every act is performed by a processor, while it is absolutely false, if the Alice is done, then most of claims are inaccurate or even false).

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