Why the Supreme Court in the CLS Bank v. Alice Case Should Not Answer the Question on Computer-Implemented Invention

By Martin Goetz
January 21, 2014

An open letter to the Supreme Court…..

In the CLS Bank v. Alice Corp upcoming Supreme Court case, Alice poses the question… “Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter…”

That’s absolutely the wrong way to phrase a question about inventions. Equally wrong is the same boiled down twin sister question “Is software patentable” which has now been debated around the world for almost 50 years.

As the recipient of the first software patent in 1968 and a founder of Applied Data Research (ADR), the first company to market software products, I have intensely followed and written about the software patent controversy for almost 50 years.

Here’s why the Alice question should not be answered by the Supreme Court in its present form.

How an invention could be implemented is given in the patent application specification (the disclosure). This USPTO guideline states that the application “shall set forth the best mode contemplated by the inventor of carrying out his invention.” But the best mode requirement is only a suggestion and failure to use the best mode does not invalidate the patent (See II Impact of Failure to Disclose the Best Mode).

So when Alice starts the question to the Supreme Court with the words “Whether claims to ‘computer-implemented’ inventions….” they are referring to the mode of the invention, rather than the invention itself. What if the Alice Corp patent application showed the specification of the invention in hardware (a computer circuit) instead of software?

Hardware circuits and software programs are logically equivalent. It is a fact that software and hardware circuitry are interchangeable. As noted in the article Hardware/Software Tradeoffs: A General Design Principle? the decision to put certain features in hardware and others in software is based on such factors as cost, speed, reliability and frequency of change. The abstract of the article concludes with the statement “Today’s software is tomorrow’s hardware, and vice versa.”

The USPTO is in complete agreement when in 1996 it published its Examination Guidelines for Computer-Related Inventions and stated in its Introduction (3rd paragraph) the following: “The Guidelines alter the procedure office personnel will follow when examining applications drawn to computer-related inventions and are equally applicable to claimed inventions implemented in hardware or software.”

So if one accepts the fact that software (a computer program) and hardware (a digital circuit) are logically equivalent then a better question for the Supreme Court to answer would be

“Is an invention that is patentable when specified in hardware, equally patentable when specified in software?”

Over the years the term “software” has been terribly abused when a patent application has a computer in its specifications. We hear the terms abstract, ideas, laws of nature, mathematical algorithms when those against “software patents” argue their case. But true inventions — whether specified in hardware, software, solar power, gears, or what have you — must stand on their own two feet and meet the test of an invention as specified in the US Patent law. Additionally, the USPTO states that an invention is defined in its claims and not by its specification. (see Determine What is an Invention).

Unfortunately, many USPTO examiners have been issuing patents for very questionable inventions that only computerize (or automate) a manual process or computerize a new, but obvious, use of a computer.

This open letter also tries to distinguish “true inventions” from those very questionable inventions (like Amazon’s one-click patent) by giving four examples that could be classified as computer-implemented inventions. Let’s look at some of those examples.

Example 1 – An Artificial Retina Invention

In this example of the Argus II Retinal Visual Prosthesis  invention, the specification included a pair of glasses attached to a video camera unit and a computer and software   A miniature video camera housed in the patient’s glasses sends information to a small computer worn by the patient where it is processed and transformed into instructions transmitted wirelessly to a receiver that is surgically implanted in and around the eye. The signals are then sent to an electrode array, attached to the retina, which emits small pulses of electricity.  These electrical pulses are intended to bypass the damaged photoreceptors and stimulate the retina’s remaining cells to transmit the visual information along the optic nerve to the brain.  Photoreceptors are light-sensitive cells (neurons) in the retina that convert light energy to neural impulses. The photoreceptors are as far as light gets into the visual system. The invention was awarded a special patent #8,000,000 by the USPTO and Time Inc. named the Argus II artificial retina one of the best 25 inventions of 2013.

Is this patent one of those computer-implemented patents that is abstract and just an idea? And not being patentable subject matter? What if the inventor chose to disclose the entire invention using integrated circuit chips and not software? Would the Supreme Court ever want to deny patent protection for inventions like the artificial retina?  I doubt it. If such patents are ever challenged in the courts, the only questions should be in its claims, not whether a computer and software were in its application specifications.

Example 2 – A Potential Voice and Speech Recognition patent

Back in November 2012 Microsoft stated in a press release “Microsoft researchers have demonstrated software that translates spoken English into spoken Chinese almost instantly, while preserving the unique cadence of the speaker’s voice—a trick that could make conversation more effective and personal.”

Certainly the way Microsoft’s researchers accomplished this complex translation is not obvious. And I have little doubt that Microsoft will try to protect its research investment with a patent application. But its patent claims could not be that it invented “speech recognition” or “language translation”, or even “voice to voice translations”.

Patents for voice and speech Recognition patents go back well over 30 years with IBM having over 200 speech recognition patents. And there have also been language translation patents for many years.

But Microsoft could invent a new way to do voice recognition and language translations and at the same time retain the cadence of the speaker’s voice. And, let’s imagine, the patent application would indicate software and a computer in its specification and use standard headphones to hear the translation. This patent application might be an all software specification. But what if the invention needed a special set of headphones (a device) that was integral to the invention and that was part of the specification? And what if the same invention was specified as an integrated circuit (a chip) in a special modified headphone in the patent application specification section?

Is a speech recognition/translation/cadence and special headphone invention any more innovative than a “speech recognition/translation/cadence” software only invention? What’s important is whether there was an invention, not how the invention was specified in the patent application. And that the specification is sufficient as an adequate disclosure for someone skilled in the art to carry out the invention.

Example 3 – A Reading Machine for the Blind Patent

In 2000, a renowned inventor, Ray Kurzweil received a patent named Reading System which Reads Aloud From An Image Representation Of A Document. The patent specification shows a diagram of a monitor, scanner, speakers, and a PC computer composed of a processor, storage and a keyboard. The essence of the disclosure and the invention is a logic chart describing a machine system which interacts with a speech synchronizer and the various devices.

The first sentence of the abstract in the patent stated “a reading system includes a computer and a mass storage device including software comprising instructions for causing a computer to accept an image file generated from optically scanning an image of a document.”

At that time, Ray Kurzweil’s company, Kurzweil Educational Systems marketed a special purpose hardware/software system called the Kurzweil 3000 Reading Machine which was marketed to the blind and poor readers. Their 2000 year patent protected this product from imitators. Today the company sells a software only system called Kurzweil 3000 and continues to have the protection of the patent system thru his original 2000 patent and with additional patents e.g., Reducing processing latency in optical character recognition for portable reading machine (which is a software-only patent).

Few would argue that the Kurzweil 3000 Reading Machine was not an invention and not deserving of a patent.

Example 4 – A Sorting System

As noted earlier, I have been involved in this software patent controversy for many years. It began when I and my small software company, Applied Data Research, applied for a patent in 1965 for a Sorting System. Basically, my invention was a faster way for sorting data on a general-purpose computer using tape drives that could read data only in a forward direction, which were early IBM tape drives.

There were many sorting patents using special-purpose hardware before mine, but none that used a general-purpose computer. The following sorting patents were referenced in my patent application and were described through circuit diagrams, and as methods and apparatus for sorting data: Sorting Device, Fillebrown, 5/1961 #2,985,864; Sorting Apparatus, Guerber, 5/1960 #2,935,732; Apparatus for sorting of Recorded Digital data, Dirks 3/1966 #3,242,466.

My patent was issued on 23 April, 1968, and a computer publication heralded my patent in a page 1 headline, ‘First Patent is Issued for Software, Full Implications not Known Yet’. Fortune magazine called it an “unprecedented patent”. Had I specified my invention using circuitry, as had other sorting patents in the past, the controversy would have started later in time.

The Importance of the CLS Bank v. Alice Corp Supreme Court Decision. As Judge Kimberly Moore stated in her dissenting Appeals Court brief, an adverse decision by the Supreme Court  could decimate electronic and software industries and be the death of software and electronics patents. It could be even worse! It could impact every one of the 18 major industries in the United States.  These major industries actively file for patents and it is highly probable that many of their patents contain software as is part of their specification.

In conclusion, the question posed by Alice …

“Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter…”

should not be answered because computer-implemented inventions refer only to how an invention is described in the specification section of a patent application. An invention is defined only by its claims, and not by its specification.

The Supreme Court should simply affirm, as it has in the past, that including a computer and software as all, or part, of a specification in a patent application is perfectly permissible.

The Author

Martin Goetz

Martin Goetz is a pioneer in the development of the commercial software industry, and is known within the industry as “the Father of Third Party Software.” He is also widely regarded as the inventor on the first software patent ever granted by the United States Patent and Trademark Office, U.S. Patent No. 3,380,029.

PBS Digital Studios profiled Goetz and his pursuit of the first software patent in the YouTube video below.

In 2007, Goetz was the “Unsung Innovator” of the computer industry by ComputerWorld. Goetz is also a member of the Mainframe Hall of Fame.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 76 Comments comments.

  1. angry dude January 21, 2014 9:47 am

    you are absolutely correct about the disctinction between “software” and (silicon) “hardware” patents – there is none
    Making “software” unpatentable will just open a huge loophole for infringers where they can implement all important functionality in software on “general purpose” hardware (processor, DSP, FPGA etc) to escape infringement liability

    But as far as I can see, none of the presently issued “software” patents on products like “lip reading speech recognition” or “english to chinese translation on the fly” are valid in strict sense – they are not nearly suffucient to reproduce the invention by a team of skilled in the art people, at best only after many years of PhD level R&D efforts
    The sad reality is that companies actually use trade secrets (and copyrights on actual implementation) to protect really valuable stuff while still getting bs “software” patents for some generic flowchart desriptions (e.g. lip reading speech recognition) to prevent potential competitors from developing similar products
    I read many such applications on “future” products” by MS, IBM, HP – they are all invalid because of insufficient descriptions – e.g. no working prototype source code attached
    In this regard university patents are of much better quality cause they desribe some concrete novel and useful research results rather than some marketable “products” which usually don’t even exist at the time

  2. angry dude January 21, 2014 10:03 am

    The “Kurzweil” patent on reading device:
    “Claim 1. A computer program residing on a computer readable medium comprising instructions for causing a computer to:
    display an image representation of a document on a computer monitor;
    apply a converted text file corresponding to the image representation of the document to a speech synthesizer to cause the computer to output a synthesized speech representation of the document; and
    apply a highlighting indicia to the displayed image in synchronization with the synthesized, speech representation of the document.”

    Excuse me, but I can come up with stuff like this between morning shower and breakfast and then spend next 5 years implementing the actual working device.. if I have time and resources to do it
    You need a working OCR and decent speech sythesis engine to begin with…

  3. MaxDrei January 21, 2014 10:08 am

    Dude, my concern is more with those Inventors that do include in their patent application a detailed enabling disclosure of one very specific new and non-obvious way to put the inventive idea into practice. Getting to the Point of being able to write that disclosure took thousands of hours and the cracking of hundreds of problems. Does that then legitimise a claim that is expressed in conceptual terms (see above) like “A machine……… ” that translates spoken English into spoken Chinese almost instantly, while preserving the unique cadence of the speaker’s voice”.

    Isn’t that particular claimed subject matter, as such, already obvious? It certainly is NOT the solution to any particular problem. Rather, it is no more than an announcement of the (obvious) Problem To Be Solved. It isn’t valid, is it?

    How does one decide what scope of protection is commensurate with the disclosed Invention? Can anybody tell me?

  4. angry dude January 21, 2014 10:42 am

    To be valid a patent claim (independent or dependent) has to be novel over prior art AND unobvious to the skilled in the art. Period.

    The claim I cited above is clearly invalid , but some of the dependent claims of the same patent might be valid if they include more specific details.

    Announcing the obvious problem to be solved is not the same as describing novel and unobvious solution to the (maybe already existing) problem

  5. Anon January 21, 2014 10:49 am

    angry dude,

    I hear what you are saying and to a certain degree I wonder if you are so angry because you are looking at these legal documents and expecting to see engineering documents.

    To wit, it appears that you want a lot more detail. Please keep in mind that the notion of PHOSITA is a double edged sword. At the same time the one edge cuts against granting patents for anything that may be considered (legally – not necessarily technically) obvious, the second edge also allows a great deal to NOT be included in applications.

    Your aim for a working example/model/code set is simply not what is legally required.

  6. MaxDrei January 21, 2014 11:04 am

    Dude, I sense you are not a patent attorney. So you don’t realise that it is not the function of a patent claim to “describe” anything.

    The specification and the claim perform complementary roles. The specification describes, in enabling detail, at least one way to put “the invention” into effect. The claim uses peripheral langage to define (in terms of the location of the boundary fence) what is inside the protected area, the area of exclusive rights.

    So if you are first to build a machine for simultaneous translation of Chinese into English, and you give the USPTO an enabling disclosure of your machine, is that enough to qualify you for 20 years of exclusive rights over any and every machine that has that (obvious) capability? How much scope is commensurate with your contribution to the art of machine translation?

  7. angry dude January 21, 2014 11:09 am


    I am angry because I submitted my patent app and it was published for everyone in the world to read before EBay SCOTUS decision

    Should have known better…

    It does have valid independent claims and all other stuff – detailed flowcharts, pseudocode, even 10 pages of working matlab code attached to provisional (80 something pages double spaced in total)

  8. angry dude January 21, 2014 11:24 am

    despite not being patent attorney I understand well how patent system “works” in US, just not happy about it

    “if you are first to build a machine for simultaneous translation of Chinese into English, and you give the USPTO an enabling disclosure of your machine, is that enough to qualify you for 20 years of exclusive rights over any and every machine that has that (obvious) capability? ”

    Clearly not, cause this will prevent all alternative implementations (although claims like this used to be issued all the time by the USPTO, especially 15-20 years ago)

    Example: current speech recognition paradigm is statistical in nature – based on Hidden Markov Models
    If you build working HMM based speech recognition engine and get a patent claim allowed on ANY speech recognition device then you will prevent alternative (non statistical) speech recognition developments thus hindering the progress instead of promoting it

    Patent claim has to have enough specifics (with the actual terms clarified in the main specification) to be novel AND unobvious in itself. Period.

  9. Anon January 21, 2014 12:36 pm

    angry dude,

    I am sorry for your bad experience. I am also sorry that you seem to be allowing that experience to color your views, and notwithstanding what your reply to MaxDrei says, you do not appear to understand how the patent system works, as your statements and laments continue to sound in misunderstanding the difference between legal requirements and engineering requirements.

    I can only say plainly: the patent system is a legal system and not an engineering system.

  10. Brave Captain of Industry January 21, 2014 1:45 pm

    Software is written expression, and so long as the results of a software program are merely processed information, those results meet the meaning of ‘abstract’. Congress placed the word ‘abstract’ in the statue for a reason- does anyone care to speculate on that reason?

    Is it merely a coincidence that the patent system is in total disrepute? That estimates of our self-inflicted absurdity are costing United States companies BILLIONS in wasteful legal spending on thousands of invalid patents? That our foreign competitors can sell whatever they wish here with impunity?

    There are no software labs where basic research is done on the properties of software. Funding a software investment is like making a motion picture; if there is a market, the market should operate as markets do, which cannot happen with rent-seeking monopoly of virtually every programming technique.

    Martin can enjoy his overweening pride at being the point of infection that has already caused massive economic injustice. I hope the court sees past the sophistry that “hardware can be implemented as software” and takes this opportunity to fix a huge problem. If that statement is true, implement in hardware and get a patent, or software and enjoy a copyright, but this neither fish nor fowl serves only the patent bar, now grossly engorged….

  11. EG January 21, 2014 1:56 pm

    Another reason why SCOTUS should not answer the question posed: they are technologically-challenged and therefore incompetent to do so..

  12. Gene Quinn January 21, 2014 2:03 pm

    Brave Captain-

    You seem to have all the answers, so why not enlighten us as to the meaning of the word “abstract”?

    As far as your other comments, hardly worth taking the time if you are so ignorant that you don’t know that hardware can be implemented to act as software, which is a factually correct statement.


  13. step back January 21, 2014 2:23 pm

    With due respect to Mr. Goetz, the above ia a poorly written article that fails to grasp and deal with the actual Question Presented to SCOTUS in the CLS v. Alice case.

    There is no point to arguing over hypothetical other questions that “might” have been presented because they were not presented and cert. was not granted for such hypothetical other questions.

    The true danger of CLS v. Alice is that SCOTUS may elect to override the legislative prerogative of the US Congress and to declare that “any” new and useful process, machine, manufacture or composition of matter (35 USC 101) does not mean what it says –all of course under the guise of statutory “literalism”.

  14. American Cowboy January 21, 2014 2:24 pm

    I’m in agreement with EG.

    Scotus addressing this question will call on their anti-patent attitude (jeez, it’s a monopoly, so its gotta be bad!), screwed-up precedents (like Gottshalk v Benson) and technical incompetence, so no doubt they will again come up with a cluster-“expletive deleted.”

  15. Anon January 21, 2014 3:25 pm


    You are too generous to the Brave Captain, as he seems to be mistaking a Judicial Exception with some (uncited) statutory law.

    If it were me, I would have simply expunged the post as it is so wrong that it is difficult to attribute it to any reasonable attempt at discussion.

  16. Gene Quinn January 21, 2014 3:49 pm


    If such an egregious and factually incorrect comment had been made on an article aimed at inventors and other newbies the comment would have been deleted and the person offering the comment banned. I really don’t like removing comments even when they are clearly wrong, as is Brave Captain’s.

    I do recognize my generosity to this clearly erroneous statements. I guess I really wanted him to define the term “abstract.” We all know he couldn’t do that, which is no doubt why he hasn’t responded and won’t respond. As for the remainder of his comment, it speaks for itself. He at best has a first level understanding of issues from an extraordinarily biased point of view. He has no knowledge about software, hardware or any of the issues. He is a patent and attorney hater who thinks using big words make him sound smart even though what he says is provably false.

    For those who care to inform themselves about how and why Brave Captain is wrong you can start by reading this:



  17. Gene Quinn January 21, 2014 3:54 pm


    Come on man, take it easy on Mr. Goetz. I don’t agree that his article is poorly written, although you may not agree with 100% of the article. I think his voice is an important one in the debate.

    I think he is right on the money when he says that the real question is not about how the invention manifests. The fact that a computer is present and the invention is described as software shouldn’t influence patent eligibility.

    If the Supreme Court were to take this feedback into consideration in a meaningful way the outcome would be something we could live with. It makes no logical sense to say that an invention described as hardware is patent eligible and the same invention described as software is patent ineligible.


  18. step back January 21, 2014 3:56 pm

    … as it is so wrong that it is difficult to attribute it to any reasonable attempt at discussion
    is what Anon writes at #15

    And yet, this is the way your average person thinks.
    More specifically, by separating the notion of “invention” from the notion of methods for “implementing” the invention, the ordinary person gives to the word “invention” a form of abstractness by implying that the “implementation” is concrete and yet the “invention” itself can be purely an exercise in mental abstraction. Heaven help us if the SCOTUS takes that tack as well. In that case, no invention will be patentable.

  19. MaxDrei January 21, 2014 5:15 pm

    What is “abstract”? In Europe, Rule 44 of the Implementing Regulations of the European Patent Convention deals with unity of Invention. As you see:


    Rule 44 supposes that the independent claims of a patent will routinely be directed to an inventive “concept”.

    Are concepts “abstract”? Are claims in Europe routinely directed then to subject matter that is “abstract”?

  20. Gene Quinn January 21, 2014 7:29 pm


    Are concepts abstract? Are claims in Europe abstract? Who knows!?!? As far as I know not a single court in the U.S. has ever defined, or really attempted to define, the meaning of the word “abstract.” And that is the problem. SCOTUS, half the Federal Circuit, some patent examiners and many district court judges try and do with 101 what they can and should only properly do under 112.


  21. step back January 21, 2014 9:25 pm

    Good question.
    I was going to reply that the meaning of the term “abstract” within the English language is itself abstract and ambiguous.

    We have “abstracts” as parts of our patent applications. We abstract (in verb form) generalized principles from specific examples of various phenomenon. We write summarizing abstracts of lengthy periodicals. We assert that abstract is the opposite of concrete (although some here may not even know how concrete is made –heh heh). So what is “abstract”? Good question. No concrete answer.

  22. Steve January 21, 2014 9:27 pm

    101 should be congressionally (or otherwise) eliminated.

    Our wise and prescient founders intended every invention to be patent eligible.

    102, 103, and 112 do a fine job of weeding out the unqualified.

  23. NWPA January 22, 2014 7:25 am

    I think it is pretty clear from Benson that the SCOTUS will say reciting a computer doesn’t change anything and reciting a database doesn’t change anything. The real problem here is that the SCOTUS created a category “abstract” that a judge can apply to anything. The real question in Alice is whether or not the SCOTUS will try to define Abstract. I think Haliburton is the best case to understand abstract. In that case, the SCOTUS says pretty much flat out that they are rejecting the claims to encourage others to build machines that can carry out the method. So, the question is –or should be–what is the underling public policy for this abstract category?

  24. NWPA January 22, 2014 7:26 am

    Gene, you may want to read the Bilski dissent from Newman and Haliburton. The two together give one a pretty good idea what the definition of abstract is to the SCOTUS. I would define it as too broad in our opinion and we think we are going to invalidate it to encourage others to do something else with it that we think is important.

  25. NWPA January 22, 2014 7:35 am

    Sorry for the three posts. Another very good case for understanding this is Deener from the 19th century regarding grain processing. It is directly on point regarding functional claims and method claims that are performed by a machine. And, I think broadness of the claim. The SCOTUS even says in a footnote that the claims should be applicable to any type of grain not just wheat.

  26. EG January 22, 2014 8:02 am


    Another case the current SCOTUS would do well to reflect on is EIBEL PROCESS CO. v. MINNESOTA & ONTARIO PAPER CO., 261 U.S. 45 (1923). While the Eibel is focused on what we now call obviousness issues under 35 USC 103, it’s relevant the patent-eligibility issue in Alice because of how the SCOTUS of the early 20th Century understood (far better than the current 21st Century SCOTUS does) that “laws of nature” were in play in many, many patented inventions, including the papermaking machine in Eibel, the heart of which relied upon gravity for providing the proper pitch (angle) for a Fourdrinier forming wire.

    Consider this passage from Eibel on what is clearly the issue of obviousness in this case::

    It is next objected that the alleged invention covers only a matter of degree in pitch, which cannot be the subject of a patent. The prior art showed the application [261 U.S. 45, 67] of gravity by use of the pitch of the wire to the improvement of the Fourdrinier machine, and Eibel, it is said, merely increased degree of pitch and gravity for the same general purpose. We think this attack upon the patent cannot prevail. Eibel’s high or substantial pitch was directed toward a wholly different object from that of the prior art. He was seeking thereby to remove the disturbance and ripples in the formation of the stock about 10 feet from the discharge, while the slight pitches of the prior art were planned to overcome the dryness in the formed web of the stock at double the distance from the discharge. It would seem that the greater speed of the stock produced by Eibel would make difficult the joint application of the principles of Eibel and Barrett and Horne, and that the function of adjusting the drainage for the dandy roll must be carried on by some of the other methods known to the art when Eibel’s pitch is used. But, however this may be, the object of the one was entirely different from that of the other. Livermore, an expert witness called by the defendant, when asked the question whether the purpose of the Barrett and Horne patent had anything in common with the theory of the Eibel patent answered:
    ‘I should say not. It looks to me as if Barrett and Horne referred to the adjustment of inclination with one effect in mind, and that Eibel referred to like adjustment with another effect in mind. … In this particular case, the two effects have, so far as I can see, no special correlation to one another, and an adjustment made with one effect in mind might or might not produce a desirable effect as to the other function or phenomenon.’
    In considering this phase of the controversy, we must not lose sight of the fact that one essential part of Eibel’s discovery was that the trouble causing the defective paper product under high machine speed was in the disturbance and ripples some 10 feet from the discharge, and that [261 U.S. 45, 68] they were due to the unequal speeds of stock and wire at that point and could be removed by equalizing the speeds. The invention was not the mere use of a high or substantial pitch to remedy a known source of trouble. It was the discovery of the source not before known, and the application of the remedy, for which Eibel was entitled to be rewarded in his patent. Had the trouble which Eibel sought to remedy been the well-known difficulty of too great wetness or dryness of the web at the dandy roll, and had he found that a higher rather than a lower pitch would do that work better, a patent for this improvement might well have been attacked on the ground that he was seeking monopoly for a mere matter of degree. But that is not this case. On the other hand, if all knew that the source of the trouble Eibel was seeking to remedy was where he found it to be, and also knew that increased speed of the stock would remedy it, doubtless it would not have been invention on his part to use the pitch of the wire to increase the speed of the stock, when such pitch had been used before to do the same thing, although for a different purpose and in less degree. We cannot agree with the Circuit Court of Appeals that the causal connection between the unequal speeds of the stock and the wire, and the disturbance and rippling of the stock, and between the latter and the defective quality of the paper in high speeds of the machine, was so obvious that perception of it did not involve discovery which will support a patent. The fact that in a decade of an eager quest for higher speeds this important chain of circumstances had escaped observation, the fact that no one had applied a remedy for the consequent trouble until Eibel, and the final fact that, when he made known his discovery, all adopted his remedy, leave no doubt in our minds that what he saw and did was not obvious, and involve discovery and invention.

    The Circuit Court of Appeals dwells on the fact that the use of the pitch of wire was not really the introduction [261 U.S. 45, 69] of a new factor in the solution of the problem, because the same result would have followed if the head of the flow box had been made greater, in order increase by gravity the speed of the stock. Doubtless this could have been done. There were difficulties, however, in such a method, when Eibel’s application was filed, because in the then machines the flow box as supported by an apron over the wire, and the necessary addition to the weight of the stock in the flow box, in increasing the head. Would have interfered with the free working of the wire. Since that time an improvement has been adopted, by which the flow box does not rest on the wire, and additional head can be imparted to the stock. The defendant invites attention to the fact that one or two paper makers are increasing this head and giving up the pitch, for the purpose of increasing the speed of the stock. We do not see that these circumstances in any way affect the validity of the Eibel patent. If defendant or others can do what Eibel accomplished in another way, and by means he did not include in his specifications and claims, i. e., by additional head and the abandonment of a substantial pitch, they are at liberty to do so and avoid infringement.

    As the Eibel case demonstrates, recognizing what the “problem” is can be more important to the patented invention as the “solution” to that “problem” may be obvious after the fact. Again, our 21st Century SCOTUS is embarrassing in its ignorance of fundamental scientific (as well as patent law) principles compared to its early 20th Century counterparts.

  27. MaxDrei January 22, 2014 8:05 am

    So much for “abstract”. It fails. OK: when all else fails, consult the Statute.

    “useful arts” What are they? Every art that is not “fine arts”? Or are there some arts (psychology, accountancy, devising new clever and useful new taxes) that are not fine arts and not useful arts? If so, at what point do we exit the ambit of the useful arts.

    GATT-TRIPS: “all fields of technology”. Same or different from “useful arts”? As far as I understand it, Congress and SCOTUS) both lack Constitutional freedom to create a system of patents that extends eligibility to new and useful contributions made by inventors in fields of endeavour that lie outside the useful arts. But I take it they CAN go beyond “all fields of technology”? So, in real life today, where computers are ubiquitous, what subject matter is eligible? SCOTUS speak, for you are overdue on this one

  28. EG January 22, 2014 9:09 am


    35 USC 101 says the following: “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.” Our current SCOTUS completely blips over the “discovers” portion, as they often do when it suits their “anti-paten” agenda. (Yes, I’m very cynical when comes to SCOTUS’ views on patent law.) That “discovers” portion is what was addressed (correctly) by an earlier SCOTUS in the Eibel case I cited up thread.

    In fact, these so-called exceptions to patent-eligibility (“natural phenomena, laws of nature, and abstract ideas”) that SCOTUS keeps throwing at us NOWHERE APPEAR in 35 USC 101. SCOTUs simply refuses to accept that, when 35 USC 101 was originally enacted 1952, Congress deliberately left those so-called “exceptions” out of this patent-eligibility statute (along with SCOTUS’s nonsensical addition of “common sense” to the standard for patentability under 35 USC 103). In fact, SCOTUS has also completely blipped over whether patent-eligibility under 35 USC 101 can even be properly raised as an invalidity defense in a patent infringement action, as was pointed out quite correctly in the recent RMail case..

  29. NWPA January 22, 2014 9:34 am


    In my opinion the SCOTUS completely ignores the 1952 patent act. They continue to apply their common law. That is the key to understanding how they will rule in Alice. The ruling in Alice–my guess–is going to be prosaic. They will say that computer methods are not per se ineligible. That reciting a computer will not make an abstract idea not abstract and cite to Benson. Then they might remand to the Fed. Cir. Not sure. I haven’t decided whether they will hold it abstract or not.

  30. djw77 January 22, 2014 9:48 am

    Mr. Goetz states:
    “Unfortunately, many USPTO examiners have been issuing patents for very questionable inventions that only computerize (or automate) a manual process or computerize a new, but obvious, use of a computer.”

    The debate here appears to be mostly focused on software patents, yes or no. I think much of the larger debate would dissipate if “bad” software patents were not issued. At least the public perception would improve if every software patent passed the laugh test. There is a difference, at least in my mind, between first and non-obvious. Discriminating between the two seems to be the problem.

    I think Mr. Goetz and other here make very cogent and persuasive arguments for software patents. Then I read the linked article in Gene’s comment #16 about Google’s Tax Free Gifting patent. Simply put, that patent looks up the tax code for where the gift recipient is and the gift giver then pays the taxes for the gift. As Gene correctly points out, lots of databases and much hardware is used to do this, but it is still simply just looking up a tax rate someplace other than where you are. Is this really patent worthy? To me, it does not seem so.

    Yes, the examples given in this article should all be patentable. But, we still cannot seem to separate the wheat from the chaff.

  31. NWPA January 22, 2014 9:49 am

    Also, I used to have a cite for the word abstract. There is some early case where they talk about abstract and it refers to sayings and very abstract principles such as stitch in time saves nine. The modern use of abstract to mean too broad and public policy says you have too much so we are taking it back so others can use.

  32. American Cowboy January 22, 2014 10:02 am

    How about if we start writing claims as
    1. An apparatus that falls within the bounds of patentable subject matter as defined in 35 USC 101 (and hereby disclaim and forfeit any claim construction that would so broaden this claim to read on any subject matter that is not patent eligible under 35 USC 101) comprising….


    1. A method that falls within the bounds of patentable subject matter as defined in 35 USC 101 (and hereby disclaim and forfeit any claim construction that would so broaden this claim to read on any subject matter that is not patent eligible under 35 USC 101) comprising….

  33. MaxDrei January 22, 2014 10:19 am

    I like the mix of contributers to this thread. Comment 30 now refers us to:

    “….Google’s Tax Free Gifting patent. Simply put, that patent looks up the tax code for where the gift recipient is and the gift giver then pays the taxes for the gift…”

    Now my first thought is that this is a very clever new business idea. Hats off to Google. Gene points out that Fig 14 of the patent shows a lot of conventional “stuff” (wires, radio links, computers, servers) to implement that Invention. But are these two incidents enough to confer on that idea eligibility for a patent? The Invention is not a contribution to the field of computer hardware, that’s for sure.

    Meaning depends crucially on context, as we see above in the discussion as to the meaning of “abstract”. When those who wrote the Constitution talked about patents for contributions to the useful arts, was that supposed to include new ways of winning more online orders for the products you sell? Is non-obviousness in the marketing arts enough to satisfy the non-obviousness requirement of the Patent Statute. What if your Invention is a film, the plot being far from “obvious”. Is that sort of non-obviousness within the context and contemplation of 35 USC 103?

    Will SCOTUS tell us please.

  34. Anon January 22, 2014 10:33 am

    American Cowboy,

    The saddest comment that I can offer is that your suggestion fails the 112 defintieness test, as what is or is not included within the ambit of 101 is itself not definite. I invite all to read again Chief Judge Rader’s lament in the Alice decision.

    It is sad because the people who have brought this mess to our doorstop are the same people now looking at it: the United States Supreme Court. As can be seen in the en banc Alice, the very judicial body created by Congress explicitly in order to bring order to patent law is hopelessly fractured because of the Supreme inability of the Supreme Court to recognize the simple words used by Congress to determine what at the front gate is eligible for patent coverage.

  35. MaxDrei January 22, 2014 10:34 am

    EG you mention “discover” above at Comment 28. I recall the archaeic use of the word “discover” as in “the discovery process”. I think that back in 1790 the word “discover” meant something close to “uncover”, in the sense of “present an enabling disclosure of”.

    As to “invents or discovers” that is a conjunctive “or” isn’t it ie “invents and discovers”.

    In other words, you were to get exclusive rights in return for an enabling disclosure.

    And anyway, what does it matter. As everybody knows, in chemistry (at least up to now) and other unpredictable arts, solutions to technical problems have always been (since long before 1790) discovered rather than devised.

    But feel free to tell me I’m wrong.

  36. Anon January 22, 2014 10:43 am

    EG and MaxDrei,

    I will not be able to attend the Second Annual Naples Midwinter Patent Experts Conference ( https://www.uakron.edu/law/ip/naples-midwinter.dot ), but a recent email from Hal Wegner seems to provide an interesting intersection of the post above by Eric and the well-known beliefs of Max: the possible inherent problems of writing patent applications in a Problem-Solution Approach due to the patent-defeating effects of such an approach with an over-aggressive application of an obviousness bar under the dicta of KSR.

    Slideshow converted to a pdf at http://www.laipla.net/wp-content/uploads/2014/01/Naples2014_ObviousnessComparative.pdf

    Your respective thoughts?

  37. NWPA January 22, 2014 10:54 am

    EG, Eibel is a great case for obviousness. Seems like the secondary indicia of non-bviousness won the day. And, I agree with you that the justices are woefully inadequate in their understanding of science and technology.

  38. MaxDrei January 22, 2014 10:58 am

    Thanks for the Link. Hal poses the problem (how to draft for both the FtF USA and the FtF ROW, given KSR) but in the pdf offers no solution. I don’t have one for you either, anon, but I’m sure Paul Cole (on the Naples Panel, and a contributor to these columns) will have. Probably it boils down to “Make sure, before you start to draft, that you Know your Enemy ie the caselaw to beat”.

    I have been saying for some time now, that FtF changes the obviousness question fundamentally, in that for the first time the legal date for judging obviousness is LATER than the date on which the patent application is drafted. Remember that the PHOSITA (the obviousness litmus paper) is deemed to know everything in the art that is anterior to the date of the claim.

  39. Anon January 22, 2014 11:16 am

    I wonder if I am too easily amused to note that the mere identification of the problem may hold all of the ‘non-obviousness’ that ‘should’ (?) suffice for patent law…

  40. EG January 22, 2014 11:55 am


    You’re missing my main point about the language of 35 USC 101 which is that our Judicial Mount Olympus is reading into the patent-eligibility statute language that simply isn’t there. When writing the patent statutes in 1952, Congress knew about these so-called exceptions but did not include them in 35 USC 101. Why can’t our Judicial Mount Olympus not “get the memo” from Congress that are no such exceptions in 35 USC 101?

    At least I’ll give some (small) credit to Justice Scalia for recognizing when Congress has spoken on the subject of what 35 USC 101 includes (and especially what it does not exclude) in his odd concurrence/dissent in Bilski. It’s quite apparent that Scalia does not like patents on “business methods,” but he also does credit 35 USC 273 for recognizing the patent-eligibility of such subject matter. That’s more than can be said of Justice Stevens 40+ page diatribe in Bilski that disingenuously argues that what 35 USC 273 recognizes as patent-eligible subject matter is a “red herring.” And Justice Breyer’s opinion in Mayo is equally disingenuous in saying it is consistent with the earlier ruling in Diehr when there is absolutely no logical way to square these two decisions. As NWPA correctly points out, too many of these Justices rely upon their own version of “federal common patent law” when it suits their agenda, and not upon what the patent statutes actually say. That’s why we’ve now got this chaotic mess in the Alice Corp case that I’ve got absolutely no confidence our Judicial Mount Olympus will render any order out of, but simply hurl another, equally vague “thunderbolt” at the Federal Circuit that will simply make this chaotic mess worse. Sorry, the primary fault for this chaotic mess lies at the feet of our Judicial Mount Olympus, and them alone.

  41. Paul Cole January 22, 2014 12:44 pm

    It is not profitable to debate law at length when issues are primarily decided by the underlying facts.

    Myriad went the way it did because of the inconvenient truths firstly that the embodiment that was considered characteristic and of prime importance was the full length BRCA1 gene and not the cDNA and secondly that isolation of the full length gene had not been described. One of the Federal Circuit judges was influenced by ideas of chemically isolated molecules and the breakage of chemical bonds and the other two correctly realised that braking chemical bonds had nothing to do with the invetion in Myriad. The Supremes, as expected, followed the majority in the CAFC.

    So too in Alice. The opinnion of Judge Linn that novelty and inventive step are proper to sections 102 and 103 not 101 is hornbook law and cannot be faulted. Unfortunately invention requires unpredictable new result, and nothing like that is to be found in Alice, no matter how complex the accompanying flowcharts. The emperor has no clothes and unfortunately the Supremes are virtually certain to smell that out. All that is to be hoped is that they will not do too much colateral damage.

  42. MaxDrei January 22, 2014 12:52 pm

    anon #39. Yes indeed. At the EPO it has been well-understood these past 35 years that a patentable Invention is sometimes made when the Inventor perceives and states the technical problem to be solved. That is in the rare situation when the PHOSITA had not got around to discovering the problem.

    EG #40, I suspect I am not the audience you are trying to reach. And anyway, not being an American myself, I hesitate to criticise anything American.

  43. djw77 January 22, 2014 1:06 pm

    Mr. Cole states:
    “Unfortunately invention requires unpredictable new result, and nothing like that is to be found in Alice, no matter how complex the accompanying flowcharts.”

    Isn’t this an argument that no software can be patented (even if one argues that what can be done with software can be done with hardware)? Software ONLY does as instructed to do, hence, expected and predicted.

  44. EG January 22, 2014 1:12 pm


    Very likely true about the “audience.” My apologies also for “lashing out,” but SCOTUS’ almost maniacal refusal to deal with these fundamental patent statutes, as written, not a some members of SCOTUS would like them to read, frustrates me (and others) to no end. And when Breyer made that “back-handed” slap at us In Mayo about not letting the “draftsman’s art” control how patent-eligibility is determined, is it any wonder that us “mere mortals” who do this “draftsman’s art” for a living are highly offended by Our Judicial Mount Olympus.

  45. NWPA January 22, 2014 1:19 pm

    Paul Cole #41 >>Unfortunately invention requires unpredictable new result,

    Now, I am sure that is not the law.

  46. American Cowboy January 22, 2014 1:27 pm

    Paul Cole, NWPA is right in his post 45.

    Nonetheless, if we were to agree with your statement ” Unfortunately invention requires unpredictable new result, and nothing like that is to be found in Alice, no matter how complex the accompanying flowcharts” then the claim would be invalid under section 103. There is not need to futz up the clear language of section 101 by importing considerations of novelty or non-obviousness. Sections 102 and 103 lay in wait to pounce if the dastardly claim gets past 101!

  47. Anon January 22, 2014 1:43 pm

    I find it most odd, the expression offered by Paul Cole: “It is not profitable to debate law at length when issues are primarily decided by the underlying facts.

    Facts do not “decide” issues.


    Law decides issues. Facts are applied to the law. Facts may (or may not) make the application of law smooth and straightforward – or the facts may make the application tangled and troublesome.

    But the law reigns supreme.

    Further, the take on the Myriad case is also disturbing. No where – anywhere – has the deciding law taken to be “secondly that isolation of the full length gene had not been described.”


    Finally, “following Alice” is a complete misnomer. Alice is largely (now) a non-decision. If you lean towards Judge Linn’s view, you are not strictly “following Alice,” as you are taking a side that simply was not a side that deserves any precedent in that decision.

    Three strike Mr. Cole. Sorry, but you need to go back to the dugout.

  48. Paul Cole January 22, 2014 1:46 pm

    @ American Cowboy

    I am not going to climb into thr 101, 102, 103 business save that, as documented on this blog, I agree with Judge Linn.

    However, if the claimned subject matter does not do anything new and worthwhile the judges will throw the patent out on one pretext or another. If you have a non-expert court the reasoning can be very messy. The Alice patents, unfortunately, are boring and boring patents do not get upheld. If there was naything positive to say about them, it would have been done no later than the CAFC’s first opinioon and the withering dissent would never have been written.

    @ djw77: If you had told the late Steve Jobs that software cannot do new and exciting things, he would have laughed in your face. Just look at some of his presentations for the inspirational nature of the things he brought forward. If you can get 0.001% of that inspiration into a software patent it might have a chance of beiung upheld. Otherwise not.

  49. American Cowboy January 22, 2014 2:43 pm

    Paul, I’ll agree with your statement: ” If you have a non-expert court the reasoning can be very messy.”

    Unfortunately, under our hierarchy of courts and stare decisis, Scotus’s issuances of these messes, require the lower courts try to emulate them and the mess proliferates.

  50. step back January 22, 2014 3:32 pm

    EG @#44 writes:

    “… My apologies also for “lashing out,” but SCOTUS’ almost maniacal refusal to deal with these fundamental patent statutes, as written, not a some members of SCOTUS would like them to read, frustrates me (and others) to no end. And when [Justice] Breyer made that “back-handed” slap at us In Mayo about not letting the “draftsman’s art” control how patent-eligibility is determined, is it any wonder that us “mere mortals” who do this “draftsman’s art” for a living are highly offended by Our Judicial Mount Olympus.

    Not only is there that (the back handed deprecation of those of us who practice the dark “draftsman’s art”), there is also the relegation of all inventors to being less-than-equal citizens of the United States.

    The biggest criminals in the USA are entitled to advice of counsel and to the sanctity of the attorney-client privilege. But for reasons unstated by Mount Olympus, the 3/5ths citizen known as the inventor is not entitled to that or to due process of law. Rather, the denizens of Mount Olympus will take it upon themselves to peer behind all the curtains and determine on their own, even without benefit of trial and right to cross-examine, what the 3/5ths inventor citizen “truly invented” and then to deprive him of a government-granted property right (issued patent) without due process of law or just compensation!

    No wonder we are all so steamed and angry.
    What’s wrong with those Mount Olympus people?
    Do they all come from Kansas?

  51. American Cowboy January 22, 2014 3:48 pm

    Guess what!
    Scotus struck again today: http://www.aipla.org/resources2/reports/2014/Documents/Medtronic-SCt.pdf

  52. djw77 January 22, 2014 3:51 pm

    @50: No reason to insult the fine people of Kansas. By virtue of the fact that all 9 are from one coast or the other, the hardworking and innovative inventors and practitioners from the Midwest have more right to sling a bit of mud. 😉

  53. Gene Quinn January 23, 2014 12:03 pm


    Yes. Now the plaintiff doesn’t carry the burden. Interesting. I suppose if there really is a case or controversy requirement it isn’t such a big deal, but it seems to me that it has gotten much easier over the years to institute a DJ action.

    One thing I know for sure is that the Supreme Court can’t begin to comprehend the ramifications of this decision. Frankly, I’m not sure anyone really can know what will happen, although I think it will lead to a more litigation if for no other reason than to force a more favorable license.


  54. Paul Cole January 23, 2014 6:05 pm

    What is binding in the opinion of any court, includiung the Supreme Court, is to apply the rule of law, based on the essential underlying facts, that leads to the outcome decided upon. Random dicta not tied to the essential facts are not binding, nor are they necessarily persuasive.

    The task of the lower courts is to tease out and follow those rules of law that are binding on them and to apply them appropriately and without either understatement or gold plating.

    The first person who can explain the workable rule of law in Prometheus v Mayo can claim a free drink from me at the next AIPLA Annual Meetng. I cannot discern any new and workable rule of law in that decision, at the end of the opinion the court said that it was not intending to make a new rule and practitioners should take the court at its word. Arguably that case is good on its own facts, nothing more and notwithstanding the seniority of the court that is how the opinion should be treated. Similarly the first person who can explain why in Myriad the Supreme Court needed to propound a rule extending to non-human organisms or whether the rule is valid in its full extent can also claim a free drink from me.

    The art of explaining and analysing the law and distinguishing precedents is an important part of advocacy and on both sides of the Pond in the IP field is often neglected in favor of blindly following dicta.

  55. Tom Gallagher January 23, 2014 6:45 pm

    We are 100% in agreement. As one inventor I know and respect once said: the only difference between hardware and software is bandwidth.

  56. Anon January 24, 2014 9:46 am


    Good morning. I am having difficulty understanding your post at 54, especially in relation to my rebuttal at 47.

    Have you recanted your earlier “It’s silly to discuss law” position?

    By the way, I agree completely with you concerning the Prometheus v. Mayo case, but disagree with you completely concerning the Myriad case. I believe that when a Court must so constrain a decision as to apply only to a single fact pattern, that alone is evidence that the law is being grossly misapplied.

    I will also strongly disagree with your view of the Myriad case (and I note you did not respond to my calling out your rather different treatment of that case above). You have the Myriad case backwards, as the Court did not extend the judicial exception (items in the warehouse of nature belong to all men freely), but merely applied that pre-existing notion to the facts of the case. The existing rule can be gleaned from Funk and Chakrabarty, and many in the legal community understand the decision quite readily. I understand the decision quite readily and it easily fits into the judicial exceptions. I also understand why those who would want to enjoy patent protection for mere discoveries would be upset with the ruling. I understand that our jurisprudence (that is, decisions by our courts) have created a legal play on words (driven by implicit readings of the actual words of Congress) that somehow ‘mere discoveries’ are not enough to enjoy patent protection. This line of legal thought did not start with Myriad, nor with Prometheus, but existed prior to both in that something more, something actually inventive was required by man to earn patent protection. Merely stumbling across something that existed in the warehouse of nature was never (according to the Court), never enough.

    Now if your argument is to be joined, you need to realize just how far that argument must extend. Your position must (logically) extend to the removal of ALL of the judicial exceptions.

    Are you willing to go that far?

    Why not? How do you distinguish one exception from another? On what basis in the law as actually explicitly written by Congress?

    I believe that I have asked these questions of you previously, but you never answered them. Are you willing to answer them now?

  57. Tom Gallagher January 25, 2014 11:36 am

    Here is a good example of how a simple §103 rejection gets twisted into a §101 rejection: CRS Advanced Techs., Inc. v. Frontline Techs., Inc., P.T.A.B., No. CBM2012-00005, 1/21/14)

    The logic should have been: the method is obvious and making a computer do it does not make it less obvious.

    The logic of the PTAB seems to be: the method is obvious and making a computer do it makes it a §101 rejection rather than a §103 rejection.

    This can only lead to more fear and loathing in Silicon Valley.

  58. step back January 25, 2014 2:41 pm


    What’s your take on Smartgene? (not to be confused with Quinn Gene 😉 )

  59. NWPA January 25, 2014 10:17 pm

    Wow, step back. That Smartgene case is scary. What a strange leap Lourie makes. His logic is: (1) doctors perform the steps in the claim. (2) therefore the claim is to a mental process. And then cites Benson and Prometheus to say it is abstract. That logic is ridiculous. That is like saying a person can lift objects. A forklift merely lifts objects, so it is ineligible under 101.

    I think being about as generous as I could be that the three judges are like Stevens that see no physical basis for their thinking. They are in the medieval ages.

    Just think of the ramifications of what they are saying too. A machine that does something better than people or like people is ineligible because people can do it. The opinion is also saying–in effect–that a computer that “merely” inputs functions and performs some function on the inputs that is specified in functional language and then outputs something is per se ineligible.

    I don’t think I have words to express the contempt I have for those three judges. Loure, Dyk, and Taran(idiot.)

  60. NWPA January 25, 2014 10:25 pm

    The real problem is we have people now on the fed. cir. that completely ignorant of science and have never had any interest in science. I note the again that they do not understand the Church-Turing Thesis nor that the methods are to instructions. Also, in the big picture category, how does their opinion make any sense in the follow context. Here is a claim that someone is trying to enforce. So, someone has built a system that reads on the claim. So, how does that square with their abstract ruling? How can / or why would someone build a computer system that is abstract and apparently from their holding be useless?

    I think that Lourie has gotten so far away from the public policy that abstract was meant to enforce to have become ridiculous. Abstract is meant to mean that something is too broad and we the judges think that we don’t want to give you a patent because we want to encourage others to use the principle. That does not square with Lourie’s chain of reasoning where he is trying to tell us that the claim is junk not that it is so useful that others should be allowed to use it (which is what abstract is supposed to mean.)

    I would also point out again just like in Alice we have someone telling us that something extremely complex like an expert system is simple and adds no structure and again we have someone telling us that something is so well known that it is abstract, but we can’t find any art for a 102 or 103 rejection.

    To my mind that opinion was written by medieval minds that are not fit to sit on the federal circuit.

  61. NWPA January 25, 2014 10:28 pm

    And, as a quick final note: Where I would like to know does Lourie think these types of expert systems are leading? Clearly in 20 years they are going to replace people. In fact, the labor department estimated (no link to report but I promise you there is one) that 20 – 40 million people are going to be replaced by expert system/ AI systems in the next 20 years. But, according to these people the machines that are replacing all these people are not eligible for a patent?

    How could that be? In what universe does that make sense?

  62. step back January 25, 2014 11:46 pm


    For those who did not bother to link to the “Smart”Gene case, let’s reproduce some of the facts:

    1. A method for guiding the selection of a therapeutic treatment regimen for a patient with a
    known disease or medical condition, said method comprising:

    (a) providing patient information to a computing device [where the device is one] comprising:

    a first knowledge base [of the type used in AI expert systems and] comprising a plurality of different therapeutic treatment regimens for said disease or medical condition;

    a second knowledge base [of the type used in AI expert systems and] comprising a plurality of expert rules [of the type used in AI expert systems and configured] for evaluating and selecting a therapeutic treatment regimen for said disease or medical condition;

    a third knowledge base [of the type used in AI expert systems and] comprising advisory information useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens; and

    (b) generating in said computing device a ranked listing of available therapeutic treatment regimens for said patient; and

    (c) generating in said computing device advisory information for one or more therapeutic treatment regimens in said ranked listing based on said patient information and said expert rules.

  63. step back January 25, 2014 11:51 pm

    Now the thing I was complaining about in my above-whored-to blog is the fact that SmartGene is a “Summary Judgment” case and the patent owner was not even given a chance to argue claim construction, let alone inherent findings of fact. What is an expert system? What are these knowledge base rules? How does the brain of a human doctor work?

    Nope. No due process for you evil software inventor.
    You get summary justice via the Lourie and company hatchet job.

  64. NWPA January 25, 2014 11:59 pm

    I agree step back that the summary judgement part makes it even worse.

  65. NWPA January 26, 2014 12:09 am

    And, that they are in effect saying we don’t care if you found better rules or an improvement over other diagnostic systems. Doesn’t matter. So presumably you could invent a system that writes better opinion than J. Lourie and it would be ineligible under 101.

  66. step back January 26, 2014 6:47 am

    Well I hope our smart Quinn type Gene opens up a separate post on the SmartGene decision. Why is Judge Lourie so anti-computer technology? How can he and his cohorts justify a summary judgment take down of a patent without conducting a detailed claim construction and without providing hard scientific evidence that Doctor Marcus Wellbe’s brain operates just like a computerized expert system; never making a mistake, memorizing thousands of expert rules and running through all of them correctly within reasonable time? Critical thinking practitioners want to know.

  67. NWPA January 26, 2014 7:25 am

    Step back, if you listen to the oral arguments for CLS Bank (which are available on the fed. cir. website) you will be shocked at how openingly anti-computer technology Lourie is. And, how ignorant he is of the technology. And, how he apparently doesn’t get that his mind is based on his brain.

  68. Tom Gallagher January 26, 2014 8:09 am

    So was SmartGene invented before or after the TV show “House MD”?

  69. step back January 26, 2014 10:58 pm

    IIRC, House uses a human committee of underlings rather than an expert system 🙂
    …and they are usually wrong …

  70. Tom Gallagher January 26, 2014 11:36 pm

    Yes House and his team are wrong for at least 30 of the 42 minutes of each episode:) But the claims you reproduced would read on House and his team other than the use of a computer. I think that the point the author is making and the point missed repeatedly by courts and the PTO (but which was captured once by SCOTUS in Diehr) is that using a computer to perform an obvious method does not make a patentable invention. The computer implemented method that is obvious (other than the use of a computer) should be a 103 rejection, not a 101 rejection.

  71. step back January 26, 2014 11:51 pm

    I’m not sure that 103 obviousness is as much of an issue in this particular case as is 112 over-breadth.

    The claims recite a result “based on” the knowledge base.
    However that is very broad. Did the inventors invent and disclose every which way for the result to be “based on”?

    That aside, storing 1000 expert rules inside a doctor’s head is not obvious because I don’t think the doctor can remember all those rules and use them all in a timely fashion.

    Let’s face it. The 3 appellate judges on this panel couldn’t even remember one rule: The appellate level isn’t the place where findings of fact are supposed to be made.

  72. NWPA January 27, 2014 7:38 am

    >> 1000 expert rules inside a doctor’s head

    I guarantee you that Lourie has no idea how an expert system works and that he would get an F on an exam in an expert system class. I have taught an AI class at the college level where we spent a lot of time going over expert systems. They are incredible complex and difficult to understand. And, the inventiveness of the people that have come up with ways around some of the problems is frankly amazing. Most of the students I taught could not understand the expert system. Laurie has some word form understanding that lacks any credibility. And, Laurie does not understand the Church-Turing Thesis which arguably is most important theory in the information age, and it renders Laurie’s dopey paper and pencil test ridiculous.

  73. Anon January 27, 2014 7:49 am

    I see a fallacy being perpetuated with the “and do it on a computer” language.

    Merely saying “and do it on a computer” and an application that passes muster for “doing it on a computer” are two very different things. Sometimes this difference is subtle. Sometimes this difference is merely understanding what is required versus what is optimal.

    I do not doubt that many people, even patent professionals make this mistake. That said, I also think that many people still make the mistake of misunderstanding what a patent application is and what it is not. Too many see “broken” when they expect something that is just not required.

  74. American Cowboy January 27, 2014 10:14 am

    One hopes that the FedCir is merely taking Scotus precedent and applying it literally to eviscerate patents right and left (not only bogus 101 analysis, but also hindsight-enabled 103 analysis) in hopes that Congress will step in and make some changes to the statute to overcome that mindlessness.

  75. step back January 27, 2014 2:27 pm

    I have taught an AI class at the college level where we spent a lot of time going over expert systems.

    @NWPA #72
    OK that explains why you “get it”.

    p.s. fyi and I took an AI (Artificial Intelligence) class at the college level –which partly explains my extreme exasperation over this “SmartGene” decision.

    p.p.s. Talk of coincidence, when I turned on the local NPR radio station this AM, I caught the tail end of a segment they were doing on recent developments in AI. Apparently they have something called “deep learning” which, if I understand correctly, is Big Data meets massively parallel adaptive learning networks. Wow and also scary.

  76. step back January 27, 2014 2:31 pm

    “and I took an AI (Artificial Intelligence) class at the college level”

    which is part of it.
    Additionally, I have in the past and still do today work from time to time on software patents involving inferencing engines and expert system rules.

    So of course, for NWPA and myself, the terms of AI art like “knowledge base” and “expert rules” instantly trigger recognition while one totally unskilled in the computer science arts such as judge Lourie sees –nothing.