Abstractness is not the malleable concept the Supreme Court thinks

By Peter Kramer
October 8, 2018

https://depositphotos.com/38212399/stock-illustration-light-bulb-consisting-of-screws.html“If the claim is directed to a patent-ineligible concept then the inquiry continues to a second step, in which we ‘consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566 ….)”

There is an obvious error in this statement. In Mayo the United States Supreme Court stated that abstract ideas (and some other things) are not patentable subject matter: “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts” of “laws of nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank Int’!, 134 S. Ct. 2347, 2355 (2014) [emphasis added].

First, if the claim is directed to an abstract idea, then abstractness is an essential property of the claimed subject matter as a whole. As such, a claim directed to an abstract idea cannot be transformed to possess non-abstractness by whether or not it embodies an inventive concept, since whether the inventive concept is inventive or not depends upon when the concept was conceived, which is an accidental property rather than an essential property of the claimed subject matter.

Second, a claim that claims an abstract idea, when considered as a whole, is understood to be “directed to” an abstract idea. However, if the claim includes concreta of statutory categories it ipso facto does not claim the abstract idea itself considering the claim as a whole and therefore is not directed to an abstract idea. Whether the concreta is “inventive” is irrelevant and the claim needs not to be magically “transformed” from abstract to concrete by an inventive concept. If the concreta is obvious then so is the claim and the question of patentability should be a 103 matter rather than a 101 matter.

On the one hand the United States Supreme Court says claims that claim abstract ideas are not patentable. So, let us recognize the obvious: A claim that, as a whole, claims an abstract idea is “directed to” an abstract idea and a claim that, as a whole, does not claim an abstract idea is not “directed to” an abstract idea.

A claim for an invention within a statutory class, e.g., a process, wherein the process is carried out in a physical machine, is categorically not a claim directed to an abstract idea when considered as a whole. Conflation of an abstract idea with a law of nature can confound the eligibility determination despite the nature of a natural law wherein it possesses some degree of abstractness.

Natural laws are rooted in and derive from the physical world. The abstract concepts such as contradiction, goodness or evil are not. The question of whether a claim is directed to a law of nature is a wholly separate and very different question than whether it is directed to an abstract idea, and they should not be conflated.

Of course, computing energy from a certain quantity of matter on a computer according to a process that yields the result of e = mc2 as a quantitative result would monopolize a law of nature and should therefore be ineligible on that basis. But the process itself implemented on a machine is still not an abstract idea.

A broadly claimed process of calculating, using a computing machine, e = mc2 for a physical substance transformed into energy is simply not “directed to” an abstract idea. Courts would do well to observe the distinct nature between abstract ideas and natural laws and carefully refine the Alice-Mayo Framework.

Mayo may make sense for natural laws and physical phenomena but given the very different nature of abstract ideas the test logically falls apart when one thinks they can turn something that is by its fundamental nature abstract into something that is not abstract. Abstractness is not a malleable concept that the Supreme Court has made it out to be.

 

Image Source: Deposit Photos

The Author

Peter Kramer

Peter Kramer is a former research scientist and university professor who founded Ingenium Patents LLC which specializes in providing services to inventors and companies developing new products. In addition to patent drafting and prosecution they conduct critical research into patent and non-patent literature required by R&D managers and technical personnel. Peter is admitted to practice before the United States Patent and Trademark Office. Dr. Kramer has been awarded the National Research Service Award, National Institutes of Health, USA. (1985) and National Science Foundation instrumentation grant, Principal Investigator (1992). He is coauthor of Human Physiology, Biochemistry and Basic Medicine and has published numerous peer reviewed research papers in the field of enzymology. He is also a member of the American Chemical Society, AAAS, and Mensa, and is a pretty good C#/.NET/Windows Forms programmer.

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

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  1. step back October 8, 2018 12:08 pm

    Language itself is a malleable nose of wax. Read Alice and her Banking friends of the Court in Wonderland. A word means what I want it to mean and when I want it to mean that, otherwise it means the other –Humpty Dumpy sitting on the High Bench.

  2. anonymous October 8, 2018 1:02 pm

    Part of the problem is that courts ignore the language of 100 and 101 altogether. That is where the patent eligibility inquiry must always focus FIRST. It is folly to think you look for a judicial exception first, before looking at the statute itself.

    How about using the language of the statute itself for the “test” of eligibility?
    Is there claimed a “process” under 35 USC 100?
    Is there claimed a “process”?
    Is there claimed “art”?
    Is there claimed a “method”?
    Is there claimed a new use of a known process?
    Is there claimed a new use of a known machine?
    Is there claimed a new use of a known manufacture?
    Is there claimed a new use of a known machine?
    Is there claimed a new use of a composition of matter?
    Is there claimed a new use of a material?
    If yes to any of the above, then under 101 there is a “process”, therefore patent eligible.
    If no, consider other parts of the language of 101.
    Is there a new and useful machine?
    Is there a new and useful manufacture?
    Is there a new and useful composition of matter?
    Is there a new and useful improvement to a machine?
    Is there a new and useful improvement to a manufacture?
    Is there a new and useful improvement to a composition of matter?
    If yes to any, then patent eligible.

    Is the word “abstract idea” in any statute? If no, then you don’t examine for its presence or absence. It is that simple.

    Is there any articulable test, anywhere, for “abstract idea” or “significantly more”, that you can meet with substantial evidence under the APA? If no, you don’t, and can’t, examine for it. See Plager in Interval Licensing.

    Next, are you a judge? If no, you do not get to formulate any judicial exception. That’s why it is called a judicial exception, not an “Office exception” or an “Examiner’s exception”. Nothing in Alice says anything about a patent examiner being able to formulate a judicial exception. At worst, SCOTUS instructs courts to “tread carefully” when ignoring the statute and invalidating on an “implicit” extra-statutory power it thinks courts have.

    If you are a judge, under separation of powers, on what authority can you add any extra test beyond the language of 100 and 101? Surely if this “exception” has been “implicit” in 101 and its predecessors for “more than 150 years” there must be an articulable test, right? Right? Does the “directed to” inquiry of Alice trump simple statutory construction of 100 and 101?

    Even Alice said there must be preemption “in all fields” (Alice quoting Bilski), because the claim recites a “basic tool of scientific and technological work” or a “building block of human ingenuity”. If there is no preemption “in all fields”, there is no abstract idea under Alice.

  3. litig8or October 8, 2018 2:16 pm

    Anonymous does not get it. One can claim ANYTHING as a “process” and could still have a patent claim covering ineligible subject matter. Clever drafting is not sufficient. The Supreme Court’s two-step framework is clear. While it may be difficult to apply it to some patent claims, the framework itself is clear. Keep wasting your breath though. I’m sure that I will regret posting on this thread due to what I expect to be ad hominem attacks that don’t make sense.

  4. Ternary October 8, 2018 2:32 pm

    “A claim that, as a whole, claims an abstract idea is “directed to” an abstract idea and a claim that, as a whole, does not claim an abstract idea is not “directed to” an abstract idea.” Unfortunately that proposition is not true.

    What SCOTUS appears to be saying is that if an underlying problem is known and has been dealt with in the past, then a solution to such a problem is in essence directed to an abstract idea. The “directed to” idea was deliberately inserted to allow the courts and Examiners to reject claims.

    Clearly, there is a distaste in SCOTUS for declaring computer implemented inventions patent eligible. It all goes back to a (I would say reactionary) misunderstanding of what computers are and what computers do. Even at this day and age many people still believe that computers “do” what humans can do, albeit slower. Thus the courts are faced, every time that a computer implemented patent matter comes up, with the undeniable fact that computers in any shape or form are machines and not abstract ideas. Hence the brilliant and vague “directed to.” And the “directed to” allegation is extremely malleable language.

    Electronic and mechanical calculators are clearly machines. However, their only task is to do calculations, which humans can do and have been doing for ages. Hence, these machines are directed to the abstract idea of doing calculations.

    You really cannot overcome Alice by showing that the language is logically wrong. It is the underlying unscientific, reactionary and vague concept that is wrong and not of this time.

    It would have been better if SCOTUS had said outright that all computer implemented inventions are patent ineligible. That clearly would have been such a classical blunder that Congress would have overturned such a nonsensical judicial exceptions. Unfortunately, the deviously clever and malleable “directed to” was inserted.

  5. Paul Cole October 8, 2018 4:40 pm

    Putting my professorial hat on, I am of the opinion that any student who regularly and routinely considered the exceptions to a section of a statute without considering the substantive and effective positive provisions of that section would deserve a failing grade in any school where the Common Law is taught.

    Which judges in the Federal Circuit would pass this test?

  6. Night Writer October 8, 2018 4:45 pm

    @3 litig8or

    If the “framework” of Alice were clear, then you could tell us what an abstract idea is and what it means to have claims that are directed to an abstract idea.

    Please do so. We all get that the justices have told us that the Sun revolves around the Earth and that they are going to burn the patent system. We get it. It doesn’t mean we respect them or believe a word they have said.

    You are like the town crier of the Pope that tells us that the Sun revolves around the Earth. We get it. They have the power so they can make up whatever nonsense they want and disregard the Constitution.

    Please do as I asked and try to actually define abstract idea for us.

  7. Anon October 8, 2018 4:48 pm

    litig8tor,

    What you view as “ad hominem” is as questionable as your ability to recognize points previously put to you.

    That you consider these things to “don’t make sense” is clearly a “YOU” problem.

    Yes, before you post you should endeavor to understand why it is that those knowledgeable in patent law point out these things to you (and your abundant lack of understanding of the larger issues within patent law).

    You posting otherwise pretty much wastes eveyone’s time (including yours).

  8. The Doctor October 8, 2018 5:13 pm

    My reading is essentially that this means no need to go to step 2 of Alice if the claim as a combination is meeting step 1.

  9. litig8or October 8, 2018 5:30 pm

    A METHOD of hedging risk by yadda yadda yadda ON A COMPUTER.

    Ineligible.

    First, it doesn’t matter that the claim is a method claim.

    Second, on a computer adds no patentable weight because it’s a general purpose computer.

    Third, the people that don’t get this are wasting their clients’ money (assuming they get paid to file claims like this for money).

  10. step back October 8, 2018 7:40 pm

    OMG. I must be doing something horribly wrong. Every time I program my computer to perform a specific task it transforms into a specific computer, no longer a “general purpose” computer. Can some one please help me find the error of my ways?

    Signed, desperately confused.

  11. Night Writer October 8, 2018 7:45 pm

    @9 litig8or

    Again, you have said nothing. You made a proclamation about the claim. Again, we get it. We all understand Alice for what it is. You seem to think that repeating what the justices said somehow makes it clearer. It doesn’t. We get it. The justices are the supreme power in the universe and if they say the Sun revolves around the Earth then we better go along. We get it.

    Again, that doesn’t mean we respect the justice nor does it mean that we believe their nonsense. (And you nonsense about general purpose computer just illustrates that you don’t understand information processing.)

  12. Concerned October 9, 2018 2:08 am

    Night Writer:

    Litig8or’s law practice represents clients of commerce and real estate. Naturally he is going to think the Alice decision is well reasoned, it is a free pass. We invent, Litig8or’s clients benefit.

    For example, one of B’s clients is a real estate patent that was invalidated. Litig8or’s clients probably freely use that real estate technology without recourse.

    Of course, regardless of whose benefiting from the inventor, it is native to think inventors will just continue to spend their money, time and hard work to be ripped off and told Alice is wonderful in her wonderland.

    Alice cannot withstand the test of time. The new USPTO Director is already trying to find work arounds on Alice as he realizes the real score.

  13. Benny October 9, 2018 7:15 am

    Step @10,
    Let’s see if I can help you out of your confusion. When you program your computer, only the memory is physically transformed. The memory, if it is a hard disk or SD card may be external to the computer. The computer then performs a series of transitory operations, at the end of which it may well physically transform the external memory yet again by writing to it. Unless your real name is John Von Neumman, you didn’t invent the computer which performs the instructions in your program. You can claim to have invented a non-transitory computer readable medium configured to calculate your personality problems to 10 decimal places, for example. You any less confused now?

  14. litig8or October 9, 2018 7:17 am

    Please post the claims of the “real estate patent” !

    And not that it matters but I have represented plaintiffs more frequently in patent litigation than defendants. And have won damages affirmed on appeal. Big ones, in one case several hundred million dollars.

  15. Night Writer October 9, 2018 7:39 am

    @14 litig8or

    An argument that patent claims seem trivial is not an argument that they are abstract. We all get that Alice set up a test so that D Ct judges can invalidate claims at SJ. Guess what? I predicted the SCOTUS would do this years before Alice. And I predicted Alice as soon as the CAFC issued their en banc opinion in Bilski. Alice is basically Rader’s concurrence (I think that is what it was.)

    Alice is a test where a judge that doesn’t think the claims are worthy of patentability can invalidate the claims using their subjective judgment with little to no evidence and invalidate the claims with SJ. We know. We get it.

    We all get it. We know. That doesn’t mean we believe the Sun revolves around the Earth.

  16. Gene October 9, 2018 9:35 am

    litig8or October 8, 2018 5:30 pm

    A METHOD of hedging risk by yadda yadda yadda ON A COMPUTER.

    Ineligible.

    you think that’s dumb? there are people on here that are angry about an “MRI machine” being patent ineligible. they argue it should be patent eligible because the claim says “MRI machine” right in the preamble, QED.

  17. Gene October 9, 2018 9:48 am

    “Please do as I asked and try to actually define abstract idea for us.”

    in the realm of software inventions, writing a claim that DOES NOT RECITE WHAT THE INVENTOR ACTUALLY INSTRUCTED THE COMPUTER TO DO is abstract.

    to take a simple example, no programmer of ANY sorting algorithm EVER instructed the computer to “read this list and rearrange it from lowest to highest”. yet those are the kinds of ineligible claims written by computer illiterate patent attorneys.

  18. Ternary October 9, 2018 10:10 am

    “Unless your real name is John Von Neumman, you didn’t invent the computer which performs the instructions in your program.”

    That is not the issue, as you probably know (or should know). No computer programs itself to perform a specific task. Ultimately a human has to set the configuration or control of the instructions. How a computer is realized (as configurable instructions or as hardwired FPGA) is immaterial to the concept of creating a specific and customized state-machine. The state of a programmed machine during and at the end of preforming instructions is different from the state of a general computer before running a program and not only in memory or storage. That is the whole purpose of a program.

    Furthermore, John von Neumann did not invent the “general-purpose computer.” Johnny “borrowed” the concept from Eckert and Mauchly, who were well aware that reconfiguring the ENIAC with cables and switch settings for a program was not the way of the future. Von Neumann grabbed the limelight by publishing the idea of a “stored program computer” in a memo under his own an Goldstine’s name without crediting the real inventors. And so it goes in the world of inventions.

  19. litig8or October 9, 2018 10:44 am

    A claim is not automatically eligible just because it has the words “MRI machine.” I looked up this case and those claims are ridiculous. On remand the applicant abandoned them (wisely!). The claim in Benson recited “a reeentrant shift register” but it went down in flames for claiming an abstract process.

  20. step back October 9, 2018 10:55 am

    My dearest Benny @13,

    Thank you for reliving me of my utter and desperate confusion.

    Apparently I had misunderstood all along.
    So a “general purpose computer” according to you people (and I do mean you people) is an electronic device devoid of memory.

    In other words, if I want to restore that corrupted thing next to my desk into a truly “general purpose computer” I need to rip out from it all things that constitute memory. And Von Neuman, he invented a contraption that had no memory? Thanks for clearing that up.

    Just a slight bit of extra confusion here if you don’t mind. After I rip out the hard disk or SSD with its boot sectors and all, should I also rip out all ROMs, all registers given that those too might be deemed “memory” and thus not part of a truly pure “general purpose computer“?

    Thanks ever so much for keeping me educated and clear on all things technical and scientific. Your humble devotee, Steppy.

  21. Benny October 9, 2018 11:11 am

    Step, my confused pal,
    This isn’t a computer blog and it is not the place to remind some commentators that an FPGA, by definition, is not hardwired.
    So let’s start by differentiating which parts of the computer which you bought at Radio Shack you invented, and which parts you didn’t.
    You didn’t invent the computer. (I stand corrected, neither did Von Neumann). You did transform a part of the computer memory into something new and novel when you programmed it. Subsequently, that newly modified component affected the operation of the old computer in a way that brought you pleasure and, hopefully, income. I don’t infer from this that you invented an entirely new type of computer. The computer,when running your program, goes through a series of transitory states none of which is new or unique – only the order in which they occur is novel. Writing a program is not the same as inventing a new computer. You may believe otherwise, but good luck getting your opinion past a USPTO examiner (virtually hopeless in the EU), and at the end of the day, that’s what is important to you, isn’t it?

  22. Anon October 9, 2018 11:25 am

    Gene (not Quinn), Benny and litiga8r are purposefully missing the point of the thread.

    As such, they well should be considered to be merely Tr011ing here.

    It is not that they should be “shut-up” (per se), but more that they should be chided to actually post on point. The discussion does not advance if every time the same old canards are put up for discussion (absent the fact that counter points to those canards have long been offered).

  23. Watcher October 9, 2018 11:50 am

    Alice was created as a sop to the Transatlantic partnership that being put in place. A key piece necessary to that agreement was to align the patent systems of the EU and the US. The EU has an alice analog. With that, the banksters can get the industrial combines to go along with it.

  24. litig8or October 9, 2018 11:59 am

    One man’s “canard” is another man’s accurate examination of binding law. How would you explain this to a client ? Would you tell them candidly what the law IS? Or would you tell them how you think it should be, while wasting their money in an effort to overturn settled “canards”?

    Advocacy is about persuasion. If you meet a “stupid” person in the morning, you met a stupid person. If you meet stupid people all day, every day, YOU are the stupid one

  25. Anon October 9, 2018 2:26 pm

    One man’s “canard” is another man’s accurate examination of binding law.

    Blindly, litig8tor CONTINUES to ignore the larger issue that the scoreboard is broken.

    Tell me, litig8tor, which state are you barred in? What does your state attorney oath say in regards to placing the judicial branch above the Constitution?

    You want to strut about how you have been a successful plaintiff litig8or (of course, this “litigation success — even if we presume such to be true — does not mean that you understand one whit about patent prosecution), but you seem intentionally dense about the actual issues here.

    You ask “How would you explain this to a client?” as if that question somehow makes your case for you. It does not. As to clients, I explain that the current law as written by the Supreme Court is NOT in accord with the law as written by Congress, and thus their rights fall upon unsettled ground. I explain WHY the views of the Supreme Court conflict with what they should expect, and I explain that only be fighting (and continuing to fight) can change be effected. I seek to obtain informed consent. I do inform them that such a battle may be costly, and may be unsuccessful at any number of steps along the way. Some clients choose not to fight. Some have chosen TO fight. But ALL have made choices being informed.

    How do YOU explain this to your clients? Do you — as you are ethically required to do — restrain from placing the judicial branch above the Constitution and glibly tell your clients merely what you think is “settled?” I wil bet that YOU do not obtain the same degree of informed consent from your clients.

    Why would you view an ethical duty as a wasting of client’s money? And why would you presuppose that any effort that I engage in is NOT with the client’s informed consent? You apparently do not obtain your client’s informed consent as YOU blithely follow a broken scoreboard. Your actions are far more shameful. In multiple ways.

    Your last quip is bizarre. While you state that advocacy is about persuasion, you have done ZERO persuading here – and quite in fact, you evidence the “YOU are the stupid one” in how you continue to approach commenting here. YOU are the one that has your head stuck in the sand and refuse to even acknowledge the larger issues afoot.

  26. Ternary October 9, 2018 3:21 pm

    Benny, In the US if you improve the working of a computer, you did an invention that is patent eligible. In the EPO also. Just look at EPO patents issued to SAP. Computer implemented inventions are explicitly patent eligible in Europe. You are even allowed to use math.

    “… only the order in which they occur is novel.” While this is not a computer blog, you clearly need a lesson in digital design as you rely on technical arguments. NAND gates allow for functional completeness of any logic circuit. NAND gates can be arranged to realize any Karnaugh diagram. No student would (hopefully) say that every Karnaugh diagram based circuit is the same because it “goes through a series of transitory states none of which is new or unique – only the order in which they occur is novel.”

    One can program a computer to run a Discrete Fourier Transform (DFT) in its full form. One can also program the same computer to run an equivalent program in Fast Fourier Transform (FFT) which runs faster. The configured hardware that runs the DFT is a system different from the same hardware that runs the FFT. Measurably so. I say that the persons who developed an FFT machine (Cooley and Tukey) did a patent eligible invention. Just to know where you stand: do you believe that an FFT machine is patent eligible? You may substitute FFT machine for other technical implementations such as adaptive echo cancelers or a programmed general computer that segments an organ in MRI image data from its background.

  27. Benny October 9, 2018 3:39 pm

    Ternary,
    By your own admission, an FFT machine is no longer patent eligible because it is not novel. You even named the inventors. No one is suggesting that a computer is not a patent eligible device. My say is that buying a (previously patented?) computer and then running a program on it doesn’t create an entirely new computer, and if an examiner considers that your program is an abstract idea, such as a D&D game, the examiner is NOT telling you that your computer is an abstract idea.

  28. step back October 9, 2018 4:23 pm

    Benny @21
    I suggest you have me confused with Ternary @18.
    I did not propose that an FPGA per se can be the proverbial general purpose (generic?) “computer”.

    However, under your definition of machine stripped of all its memory components one has to assume that what the wise Justice Anthony Kennedy (now replaced by I-Like-Beers KavNaughty) meant to say when talking about those 2nd year engineering students going home for the weekend to program up a replica of the Alice system is that they start with a blank slate memory and then bake their own operating system (OS), all the drivers, boot up programs, flash memory configurators and so on before getting to the other conventional and routine part of creating a working escrow system. It all sounds very plausible to me given that I know next to nothing about these high tooten tech machines.

    Peace be with you Brother.

  29. step back October 9, 2018 4:44 pm

    Writing a program is not the same as inventing a new computer. You may believe otherwise, but good luck getting your opinion past a USPTO examiner

    Benny @21

    The other day I caught myself writing something called a microcode routine.
    Then I reminded myself of your gospel about writing a program not being the same as inventing a new computer. So I slapped myself silly and hard until I could no longer complete the task of writing that microcode routine. Just imagine what would have happened had I not recognized the errors of my path. All form of horrid daemons might have been unleashed from the medieval depths.

    Thanks again for keeping on the straight and narrow minded road. 🙂

  30. Anon October 9, 2018 6:55 pm

    Benny,

    You’ve been around long enough to be able to distinguish between patent eligibility and patent-ability.

    You do yourself NO favors for your credibility when you make such mistakes as you do in uiur reply at 27.

  31. Ternary October 9, 2018 11:38 pm

    Benny, What does buying a previously patented computer have to do with this? My argument is: a computer running a first program is a different computer compared to the computer running a different program. A computer running a DFT routine is different from the same computer running an FFT and different from the same computer determining a multiplicative inverse of a modulo-n multiplication in an RSA key exchange and different from running a financial hedging scheme.

  32. step back October 10, 2018 10:11 am

    Anon, Ternary,

    Like it or not we have our answer.

    In Benny’s mind, a “computer” is no different than a vinyl disc record player.
    The record player remains unchanged no matter what disc you next drop on its turntable.

    As far as Benny is concerned, every “software” program you bring to the table is no different than a removable vinyl disc that you plop down on his 1960 model Radio Shack stereo record player. You may have a new song, a new beat; but the record player remains unchanged.

    Perhaps many a Federal judge sees it the same way; its all abstract music rather than a truly improved record player.

    That is NOT the way I understand things. It’s the way Benny apparently sees it. I’m just saying.

  33. Kelly Mackin October 10, 2018 10:17 am

    I’m not a patent attorney like most of you. But I have always rejected the notion of the so-called “general purpose computer.“ A general purpose computer is a paperweight. Every single computer is a special purpose computer when it’s running a particular task. It is those special purpose tasks that give the computer value, it’s utility. I say this not as a patent bar attorney, I say this as a person with at least ordinary skill in the art.

  34. litig8or October 10, 2018 10:20 am

    The problem with many of the patents that went down under Alice is not that they claim software. Those patents normally don’t have much in the way of detail in the claims as to HOW to perform a method “on a computer.” I think many here are losing the forest for the trees. What matters is what is claimed. Someone should post the text of an actual claim that they say was improperly invalidated and tell us why. All of this back and forth about how computers work really misses the mark.

  35. step back October 10, 2018 10:30 am

    Benny’s mindset is perhaps well replicated in yesterday’s Fed. Cir. 101 decision, ROCHE MOLECULAR SYSTEMS, INC. v. CEPHEID (Appeal 2017-1690 Presidential).

    The Fed. Cir. judges in the latter (O’MALLEY, REYNA,and HUGHES) are basically saying: Hey we didn’t study no biochemistry in college but we know what we know. You didn’t “create” anything new. You merely discovered certain naturally occurring DNA signatures and then used a conventional technique (PCR) to amplify those naturally occurring signatures. No patent for you at this soup kitchen! Next.

  36. Benny October 10, 2018 10:31 am

    Step,
    I own a Sherwood CD player. Back in the day, I used a Thorens 160 turntable. None of that Radio Shack rubbish for me. I too write code for microcontrollers, and I don’t consider myself the inventor of a microcontroller everytime I release a version. The changes to the state of the microcontroller are transitory. So, our patent attorney writes a claim for “a non transitory computer readable medium” and not for “a microcontroller”. That way I have a better chance facing a Federal judge who doesn’t see things your way, but can decide the fate of my patent. Idealism is fine for lawyers, but patent owners have to be pragmatic.

  37. Night Writer October 10, 2018 11:29 am

    @17 Gene >>>to take a simple example, no programmer of ANY sorting algorithm EVER instructed the computer to “read this list and rearrange it from lowest to highest”. yet those are the kinds of ineligible claims written by computer illiterate patent attorneys.

    I just don’t believe people that write things like this are anything but anti-patent judicial activists that are being paid to burn down the patent system.

    The way it works is enablement for one skilled in the art. Claiming sorting numbers is enabled and would then cover all known ways of sorting numbers.

    The way it is supposed to work is that you can lose your claims if you claim something too general and invention occurs inside your claim scope. See LazardTech.

    The way to think of claims is scope of enablement.

    This abstract stuff is nothing more than: sniff, I don’t like it or sniff I think it is OK.
    Just the worst kind of person would use Alice to invalidate claims. A person that doesn’t care about the Constitution or our legal system.

    People are already talking about the possibility in the near future of people refusing to follow the SCOTUS. Alice is one of the reasons. No one that cares about our legal system can respect Alice.

    And I notice that what the “abstract” believers do is simply repeat over and over the same nonsense. No definition of abstract. No response to our 112 arguments. Etc.

  38. Night Writer October 10, 2018 11:34 am

    And—please–stop this nonsense of the general purpose computer. I suppose there is a general purpose test tube, right? You get it? The GPC is implying that somehow all these solutions are inherent to the GPC.

    Arguing with these people is a waste. Just the worst kind of people. No interest in an intellectually honest conversation. Nope. We are the anti-patent judicial activists that are being paid huge Google bucks. We will lie. We will cheat. We will fabricate nonsense. We are the immorals. We are ignorant and proud.

    And try to answer with just one substantive response. I haven’t seen anything but misrepresentations and proclamations that the Sun revolves around the Earth.

    You know–boys–real patent attorneys like me know how it works. It is very simple. We see right through your bizarre abstractions that you generate at a rate of about three per year that stick.

  39. step back October 10, 2018 11:36 am

    our patent attorney writes a claim for “a non transitory computer readable medium

    Benny @36

    That game is not going to save you from those judges who believe in the parable of the devious scrivener attorney and his draftsmanship tricks.

    Those judges know better than anyone as to what the applicant truly “invented”, namely, an abstract idea to which is added the trickery of tacking it on to a general purpose/generic computer and saying the magic words, “apply it”.

    Not my point of view. I’m just expressing my understanding of how “they” think and see the world.

    BTW, has you attorney ever heard of a “method” claim. Don’t claim the off the shelf microcontroller; claim what the system that includes that u-controller does. Isn’t the method real, novel, useful and nonobvious?

  40. step back October 10, 2018 11:45 am

    I’m not a patent attorney like most of you. But I have always rejected the notion of the so-called “general purpose computer.

    Kelly Mackin @33

    Right you are.

    Many patent attorneys have the advantage of having seen the elephant from many angles, not just the tail (gee, it’s just like a snake) or the trunk (no, no it’s more like a tree) or the ear (you’re both wrong, it’s like a large leaf) –how the proverbial blind men would comprehend the creature.

    The modern computer is the work product of hundreds of thousands of inventors working over many years and involved in an astronomically large number of different fields of endeavor. No one person knows how the whole thing is put together.

    The judge or other lay person who believes you simply drop into your local big box store and pick up a “general purpose” computer is simply ignorant and full of arrogant hubris.

  41. step back October 10, 2018 11:54 am

    Night Write @37

    SCOTUS never instructed or authorized anyone to follow Alice/Mayo.

    Re-read the originalist text.

    It says “we” the royal denizens of Mount Olympus do it this way: Step 1: Hover your magic compass needle over the claim and detect its direction, Step 2: Dunk the witch in a pool of water … yah da yah da

    The Supremes never authorized any patent examiner or federal judge to follow in the footsteps of the royal 9.

  42. Eric Berend October 10, 2018 1:12 pm

    NOSE.
    OF.
    WAX.

    “Goodbye, individual U.S. inventors: don’t let the door hit you in the a$$ on the way out!”

    “Oh, and BTW – we’re so OBSESSED with destroying your respectability and property rights, that we even harmed some BigCorps’ properties also – just to MAKE SURE you get buried for good.”

  43. Anon October 10, 2018 1:40 pm

    Benny,

    Your views expressed her (those sounding in the Efficient Infringer mantra) may be considered (by you) to be “pragmatic,” but that is NOT feature, but is a defect.

    Sometimes “idealism” MUST be fought for.

    litiga0r,

    All of this back and forth about how computers work really misses the mark.

    No. It is YOU that is missing the mark. And badly so.

  44. Ternary October 10, 2018 5:47 pm

    Benny: “The changes to the state of the microcontroller are transitory.” Yes, the states in a microcontroller executing a program are transitory. If they were not, your controller would be stuck in a state and thus not enabled to execute the instructions.

    You are the only one who brings up and keeps repeating that if you program a controller or a processor that you invent a new controller or processor. A controller/processor programmed with instructions should constitute a patent eligible device. I am certainly not saying that you invented a new controller. But you may have invented a novel and nonobvious programmed controller.

    It seems unlikely that you are able to obtain a patent for “a non transitory computer readable medium” but not for a programmed microcontroller. In general claims of the nature that you promote recite: A non-transitory computer readable medium storing a program causing a computer to execute …. etc. But I will be pleased if I am wrong on that aspect.

  45. step back October 10, 2018 6:46 pm

    Anon @43,

    Another analogy that can be made for what Benny and his Jets are doing is taking a scalpel to a human being and cutting out his/her heart (or other vital organ) and then insisting it is still a generic human being.

    No. It’s not. Not even a sleeping parrot. It’s a corpse. Similar to the paperweight analogy correctly made by Kelly @33.

    (*Benny and the Jets, an Elton John song)

  46. concerned October 10, 2018 8:43 pm

    Litig8or at 34:

    Someone should post the text of an actual claim that they say was improperly invalidated and tell us why.
    —-
    Patent application 14450042

    Added words to 101, tossed truckload of evidence to include 2 university studies, and dismissed Bahr’s official memos. Also used court cases outside field of technology which contradicts Bahr’s memos and MPEP

    USPTO called claims routine, conventional and well-understood. Nobody in history of Earth performs the claims. The application was dead on arrival.

    Other the all of the above, what could be the problem with the rejection? Just another day at the Office.

  47. Anon October 10, 2018 9:21 pm

    Step back,

    Ouch.

    I prefer an analogy in the opposite direction, and one i first saw quite awhile back at that “other blog.”

    That analogy is called the Grand Hall experiment.

    One can start with two identical hardware only computing machines.

    Add software to only one of the machines.

    Do you have identical machines that have (immediate – as in, needing no further changes by the hand of man) capabilities?

    Note that this does not mean future capability that may arise with yet additional “wares.”

    Another on-point item (that I have often stressed) is that the “wares” are patent equivalent — hard”ware,” firm”ware,” and soft”ware.”

  48. step back October 11, 2018 1:12 am

    There is no such thing is a hardware-only computing device in the real world.

    Consider the power supply in a device you might deem as a computing device.

    Software in it? Yes, you bet your switched power transistor there is. The software automatically adjusts for load variations, temperature variations, etc. Rip the software out of this energy heart of the machine and you have a corpse, a paperweight.

    Same with your keyboard (or touch screen). Software is there too. There are instructions/programming for determining what happens in response to each key hit (or combo key hit. e.g. Alt Ctrl Del) or finger swipe. And what about the serial bus that connects your keyboard to the motherboard? How is the communication protocol managed? Yup. Software. Our machines ooze software/reconfigurable behavior from almost every pore. No such thing as a software-less “computer” in the real world.

  49. Benny October 11, 2018 8:29 am

    Ternary (44),
    I’d like to hear your opinion on claim 20 of US10095475. Is that an abstract mathematical idea that could be performed with paper and a sharp pencil?

  50. Anon October 11, 2018 9:13 am

    Step back,

    While you are absolutely correct, the Grand Hall is a thought experiment to indicate that “wares” — and specifically the addition of “wares” are all patent equivalent (hard to firm to soft). Little need to be a kill-joy by showing just how inimical the “ware” of “soft” is in today’s computing arts. (which I will grant to you only makes it more implausible to either attempt to “bank” on some undefined “general purpose computer” or to want some universal ban on the “ware” that is “soft”)

    Night Writer, your comment of “The GPC is implying that somehow all these solutions are inherent to the GPC.” is exactly why I push for those seeking an anti-software position to frame their arguments in the proper patent doctrine of inherency (and to which, the Grand Hall experiment explicates!).

    I know that you are NOT surprised that NONE of the anti-software “contributors” (which include professed attorneys who should know better) EVER use that proper legal doctrine.

    We both know why. To use the proper legal doctrines would show the baseless ness of the desired Ends.

  51. Anon October 11, 2018 9:24 am

    Whoops – autocorrect nabbed the wrong word: please replace “inimical” with “intimate.”

    Although maybe AI was merely reflecting what the Supremes are doing…

  52. Ternary October 11, 2018 5:09 pm

    Benny@49. The claims of US 10,095,475 are directed to the engineering field of machine arithmetic, in this case to floating point machine arithmetic. Machine arithmetic is directed to machines processing signals in a manner that allows generated signals to be interpreted as mathematical symbols by humans. In essence it goes back to the similarity of the machine XOR and AND switching devices to the modulo-2 addition and multiplication. That is why a machine can process signals (usually indicated as HIGH and LOW) to generate bits that can be interpreted by humans as residue and carry symbols and are converted into images of symbols that humans understand. The inventors of 10,095,475 correctly assumed all of the above to be familiar to a PHOSITA and while explaining the use of gates in the spec do not claim them.

    Claim 20 of the issued patent recites “A computer program product comprising a non-transitory computer readable medium including a computer readable program, wherein the computer readable program when executed on a computer … ” So it refers back again to executions by a computer. (Reminder: You did not answer my question if you can obtain a patent for a “non-transitory medium” but not for the equivalent programmed computer).

    We had a brief discussion a while back about 0s and 1s not existing inside a computer. This discussion seems to revisit that issue.

    You cannot perform claim 20 with paper and pencil, because it has to be able to be executed on a computer. A human can emulate (model) the steps that capture the essence of the performance of the programmed computer with paper and pencil, but you cannot be and are not the computer as claimed and you cannot execute the instructions from the medium.

    Many people confuse modeling a device (for instance with help of paper and pencil) with the actual device. For instance Maxwell in 1868 (on your side of the pond I believe) mathematically modeled a governor of a steam engine. However, that model is not the governor itself of course. Furthermore, you cannot just run the Maxwell model on a computer and have a usable governor. You have to add technical devices and convert the formulas to time dependent instructions operated under a clock to get a control device that operates in accordance with the Maxwell model. To do that is not trivial and most certainly not abstract.

    So, claim 20, but also claim 1, are directed to an operation of a physical machine in the engineering field of machine arithmetic and not to an abstract mathematical idea. The fact that one can model a physical machine or a physical phenomenon by a mathematical formula is (scientifically and methodologically) irrelevant to the abstractness of the described device. People unschooled in science and engineering often make the mistake of finding a device/phenomenon abstract because math describes it and math is considered abstract. I do not believe you are unschooled. However, it seems to me that you may have been involved in digital design on the aggregate system-chip level or with software development but not on the individual circuit level, which teaches you rapidly that nothing physically happens by itself as a result of an abstract idea. (unless you don’t want thing to happen, because then they happen all the time in a non-repeatable way on your lab-bench of course).

  53. Night Writer October 11, 2018 8:08 pm

    Just read through the comments. The biggest thing to notice is that the anti-patent judicial activists simply do not respond to substantive arguments. They just repeat over and over the same propaganda.

  54. step back October 11, 2018 11:43 pm

    Night @53

    One of the questions circled about here is whether they get to create out of thin air the concept of a “general purpose computer” (GPC)?

    Another is whether they have the right to refuse to define what is a GPC and what is not.

    Of course the Supremes can pull out from under their robes whatever babble they choose. And they are under no obligation to provide definitions. Let the peons below squirm. (You want to know what “abstract idea” means? Figure it out for yourselves. We don’t have to belabor ourselves. You want to know what constitutes “something significantly more”? Ha ha, squirm you low lives, squirm.)

    As for the anti-patent judicial activist minions here, they have no such royal privileges. But they feel entitled nonetheless.

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