Message from the USPTO: It’s Patent Prosecution, not Persecution

By Raina Haque
July 21, 2016

uspto-madison-mainThe USPTO piloted the Stakeholder Training on Examination Practice and Procedure (STEPP) course from July 12-14 in Alexandria, Virginia.  The training was given as a major milestone of the Enhance Patent Quality Initiative, with heavy emphasis on the value of transparency.  Participants were selected among patent attorneys and practitioners, who became registered to practice with the USPTO after the America Invents Act was signed into law in 2011.

STEPP training was a 1:1 ratio of workshop patent examiner training and a dialogue between patent attorneys /agents and leaders at the USPTO.  The STEPP training course utilized the training material delivered to new patent examiners during a year-long 2-phase entry level program.  The range of topics covered during the course and the candor of the USPTO was impressive. Attendees began by examining the rubric and formula for the internal evaluation of entry-level patent examiners.

The attendees spent the next three days learning about patent searches and actually examining modified patent applications with the Supervisory Patent Examiners (SPEs).  The SPEs came from Tech Centers 3700 (mechanical engineering & medical devices), 2600 (communications, graphic processing, hardware, & memory), 2800 (semiconductors/memory, circuits/measuring & testing, optics/photocopying, printing /measuring & testing), and, at the request of the attendees, 2900 (designs).  Topics and exercises included patent searching, mapping art to claims, writing an office action and responding to an applicant, double patenting and restriction, Patent Trial and Appeals, and Central Reexam Unit practices and procedures.  The trainers gave not only the rubrics the examiners use for all these activities, but also the actual templates that examiners use when deconstructing an application.  Absolutely every question we, the 30+ attendees, came up with was answered.  (What a nightmare for any entity to open itself to three days of questioning from a room of attorneys.)  The USPTO proved to be dauntless and earnest.  The agency receives an A++ in my book for this measure towards transparency.

Ironically, it was after training was to officially end on Day Three that the lightning bolt of understanding and wisdom struck.  A panel of three brave SPEs sat before us and took each and every question we chucked at them.  The inevitable questions about Alice, Enfish, and Ariosa were asked.  The examiners responded with the publicly available and relevant USPTO guidelines.

The discussion was began to get cryptic; we were dancing around something pretty significant, but weren’t quite honing in on a critical matter.  I decided to ask the question that might be the dumbest one of the three-day session, but I didn’t want to walk away without missing the opportunity to dig deeper for clarity.  The dialogue that follows is undoubtedly paraphrased, and given in this form to convey the purpose and meaning of the exchange.

“So what if Case X clearly concludes with A, yet for some reason, the USPTO memo interprets Case X as having a completely opposite conclusion and instructs as such.  Who do you follow?”  I asked the panelists.

The panelists responded with something to the extent of, “You (attorney for inventors) often write a bunch of legalese and cases to us.  That means nothing to us.  Sometimes we feel you’re trying to intimidate us with all those legal arguments.”

We were still circling around a truth, but had not hit the target yet.  “So what you’re saying is, you have no onus to track case law.  What is binding in your universe is what the USPTO distills to you in its memos.  The memos are binding upon you.  Not judicial opinions, per se, but the memo.”

“Yes, exactly!” a panelist responded.

“Ok,” I ventured, “this is big, because I think people are under the impression that the USPTO memos are just guidelines to you; highly persuasive of course, but not binding.  And we [patent practitioners] become frustrated that we make dazzling legal arguments that fall on deaf ears.”

“Yes!” the panelists acknowledged.

“So, if I am to go back to my colleagues, what document can I show them that says USPTO guidelines are the beginning and end of your universe?”

The USPTO officials looked at each other and admitted that there was no document that said per se that the USPTO memo was binding.  One of the panelists chuckled, “Three words: Claim.  Your.  Invention.”

We already knew that examiners were not attorneys.  It was clear, however, that we patent practitioners needed to take that knowledge and let the significance of it emanate.  Not only are examiners not attorneys, but it is not part of their job to think like attorneys.  Even if they happen to have a J.D. or legal training, they are not to apply that sort of reasoning.  They are meant to be technical specialists, who carry out USPTO memos and holdings found in the MPEP.

Examiners are not supposed to think about the nebulous areas of 101, 102, or 103, nor are they to interpret case law from judicial opinions.  Instead, the USPTO has already determined how they intend to interpret these sources, and has distilled these decisions into memos for their examiners to follow.  To the examiners, an attorney putting forth arguments on such grounds is arguing issues that have already been settled.  There are appropriate periods in the pursuit of patent protect for attorneys to argue the grey areas of law, but the exchange with the examiner is not the time to do that advocacy to any great extent.  Arguing those grey areas in prosecution wastes clients’ resources and everyone’s time.

As a result of this dialogue, the SPEs and USPTO officials had other insights to share.  As frustrating as it is for us that patent examiners do not think like attorneys, it is just as frustrating for examiners that attorneys often are not technical specialists.  The panelists asked that attorneys involve, in interviews, the inventor, whom the examiners view as a likely compatible technical specialist.  The USPTO administration reminded us that if we have a good experience with the examiner, to communicate that in writing to the examiner.  That written feedback becomes part of the official record.  Chances are, over the course of your career, you’re going to get the same examiner more than once.  Invest in that relationship for your career and your client’s business success.

The Author

Raina Haque

Raina Haque is the founder and lead patent attorney of Erdos Intellectual Property Law + Startup Legal. She is a former software engineer with a focus on parallel computing and artificial intelligence applications in fields ranging from bioinformatics to fintech. She advises authors, inventors, startups, and small to midsize businesses. She is among the first few attorneys to work with blockchain and crypto ventures. Her firm is leading the North Carolina Bar Association's efforts to guide attorneys through the crypto venture and blockchain space. Currently, she also teaches a course on legal innovation at Wake Forest School of Law.

For more information, or to contact Raina, please visit her Firm's Website.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 80 Comments comments.

  1. Adam Ellsworth July 21, 2016 10:38 am

    Thank you for reporting. It’s a useful insight. I’ve seen in some message boards or comments attorneys who argue that we shouldn’t bother citing USPTO guidance, or in some cases MPEP sections, in Responses because it’s the case law that is binding on the Examiners. It seems while that may be true as a legal matter, it’s not true as a practical matter.

  2. step back July 21, 2016 11:49 am

    This is quite disconcerting because the USPTO is a federal administrative agency established by law (35 USC 1) and ostensibly governed by law:

    “(a) ESTABLISHMENT.- The United States Patent and Trademark Office is established as an agency of the United States, within the Department of Commerce. In carrying out its functions, the United States Patent and Trademark Office shall be subject to the policy direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding … in accordance with this title and applicable provisions of law. “

  3. Gene Quinn July 21, 2016 11:58 am

    Step-

    I think this is just a realization of what most of us already knew. Examiners are not lawyers. Examiners are supposed to be technical experts. They do not know the law and they can’t even begin to understand the nuances of patent law. They have less understanding of patent law than a first year law student.

    As was noted in comments on an earlier article on the E-commerce Art Units (I forget by who), the problem with Alice and the new 101 is that it requires legal decision making. Examiners simply are not equipped to engage in legal decision making (although many rather arrogantly think they understand the law better than someone with a law degree and 20+ years of experience as a patent attorney).

    The fascinating thing about this moment of truth at the USPTO is that it gives us a glimpse behind the curtain. The USPTO is telling examiners they are supposed to follow the guidelines and implement the MPEP. So why then are so many examiners ignoring the guidance and the MPEP without any consequences? We see new searches being conducted after a complete reversal by the Board in violation of MPEP 1214.04. And examiners in some areas seem all too quick to tell applicants and attorneys the guidance isn’t the law and they are not bound to follow the guidance.

    If this is what the PTO is telling examiners (which is what I’ve always understood senior career management to tell examiners) there is nothing short of a civil war at play within the USPTO. Sadly, those in management that want examiners to follow the generally pro-patent guidance they hand down (or at least neutral guidance) must have no authority. So exactly who is running the USPTO?

    -Gene

  4. Ben Pezzner July 21, 2016 12:12 pm

    I am a patent examiner with a JD. Your insight about the importance of the USPTO guidance is spot on. I would like to add some additional thoughts though, from an actual examiner in the trenches.

    First, we very much are bound by the case law in addition to the guidance. In fact, the guidance even cites us to relevant cases, and those citations are continuously updated. The problem lies more with how those cases are presented to us from the practitioners. In the course of examining hundreds of applications over the past three years, not once have I been quoted case law that has been analyzed using specific facts from the instant application. If you can remember back to law school, think about the A in IRAC. It’s nonexistent in patent prosecution, at least in my personal experience. Holdings are not one-size-fits-all, and are meant to be compared and contrasted on a case by case basis. Without this level of analysis, quoting cases is not very effective, especially if that very same case is dealt with differently in the USPTO guidance.

    Next, when it comes to perceived conflicts between the guidance and the case law, it should be noted that all of our guidance is full of disclaimers, urging us to apply each case to the specific facts of our application, and that since every application is different, not to blindly apply teachings from the guidance without some level of analysis. During every training session, these disclaimers are noted multiple times. So the takeaway here is if an examiner appears to incorrectly apply a case to your set of claims, it’s more likely due to the individual examiner’s analysis than it is due to the guidance per se, and this could be the basis of your next telephone discussion.

    To conclude, I think it’s important to point out that while the guidance may be paramount in certain situations, it is not meant to be blindly applied. Practitioners have plenty of opportunities to point out any deficiencies in examiner analyses, but when doing so, remember not to cut any corners in your analysis! Apply the law to your claims versus just citing it.

    Please note, this comment represents my views and experiences in an individual capacity, and do not necessarily reflect the views of the USPTO.

  5. Jane Doe July 21, 2016 12:30 pm

    You are stuck in the (old) world of professional titles. Patent Prosecutors are not necessarily attorneys. Nor do they need to think like an attorney any more than a Patent Examiner. Just ask a Patent Agent!

  6. Curious July 21, 2016 1:07 pm

    What is binding in your universe is what the USPTO distills to you in its memos. The memos are binding upon you. Not judicial opinions, per se, but the memo.”

    “Yes, exactly!” a panelist responded.
    I used a term a couple days ago — “extrajudicial” to explain what lengths the USPTO will go to reject an application.

    I wonder if any of the USPTO’s lawyers cringed if they heard the answer above. Would it surprise anybody if nobody cringed?

    Scary.

  7. Curious July 21, 2016 1:11 pm

    The USPTO is telling examiners they are supposed to follow the guidelines and implement the MPEP. So why then are so many examiners ignoring the guidance and the MPEP without any consequences?
    I made this observation before. An examiner will blindly follow the MPEP (even it the statement contained therein isn’t a statement of law) if it allows the examiner to make a rejection, and many of them will ignore the MPEP if it prevents them from making a rejection.

  8. Curious July 21, 2016 1:24 pm

    In the course of examining hundreds of applications over the past three years, not once have I been quoted case law that has been analyzed using specific facts from the instant application.
    You haven’t crossed paths we me yet. In the course of prosecuting thousand(s?) of applications, the percentage of instances in which the Examiner actually compares the facts of the case law being cited to the facts of the application is probably less than 5%.

    Granted, sometimes the facts aren’t that important, but sometimes, the facts of a case are important. For example, In re Lowry, In re Merck, and In re Keller are frequently used at the Board in a manner inconsistent with the facts of those cases.

    while the guidance may be paramount in certain situations, it is not meant to be blindly applied
    One problem is that many examiners do not have the training to do anything other than blindly apply the guidance.

    Another problem is that the guidance (particularly in the 101 arena) grossly overstates the holdings of the cases discussed therein. As a result, I frequently have examiners cited several Federal Circuit 101 cases against a single invention. Because the guidance is written so broadly, the examiner are emboldened to use a shotgun approach in citing the case law.

    If you read the guidance, then almost nothing (in the software realm) is patent eligible under 35 USC 101. However, if you read the actual case law, a different story emerges.

  9. step back July 21, 2016 2:36 pm

    @4 Ben Pezzner

    Thank for chiming in.
    Just remember -no good deed goes unpunished.

    You will no doubt catch flak now from your superiors at the PTO because they don’t want any transparency as to the dirty little “extra-judicial” things that go on behind the magic ‘trust us, we’re government’ curtain.

    All that the lawyers on this side of the negotiating table can do with respect to examiners who don’t want to follow the law is to argue that the examiners are, by law, supposed to follow the law. It gets old and tiring. Sigh.

    http://patentu.blogspot.com/2016/07/or-merely-with-paper-and-pencil.html

  10. Raina July 21, 2016 3:57 pm

    Curious, I would say the Enfish guidance is a bit helpful. Or at least it can be colored to be helpful! Ben, thanks for your insight. Clearly we have got to get some official guidance (in writing) about the letter of the law is to be for the examiners.

  11. Edward Heller July 21, 2016 6:33 pm

    This is an amazingly useful article to any new patent attorney trying to practice before the office. You simply cannot write an amendment/response like you write a brief to a court. The primary reason is simply that examiners are not attorneys.

    Examiners respond to technical arguments. That is all they respond to.

  12. step back July 21, 2016 8:30 pm

    @11 Misled Ned

    If examiners truly adhered only to technical arguments (and evidence) there would be no Alice/Mayo 101 rejections issued by any examiner whatsoever.

    There is nothing “technical” in the Alice/Mayo opinions. It’s all voodoo witch hunt gobbledygook stuff. Maybe it’s alright for some curmudgeon email-avoiding Justices to believe in the Ghost in the Machine and in the Myth of How I found BRCA1 While Plucking Bananas Off the DNA Fruit Tree, but no “technically” sane person would fall for any of that.

    No Edina (rhymes with Virginia?), “technical” is not welcome in the witch hunting halls of the PTO.

    http://patentu.blogspot.com/2016/06/spirit-town.html

  13. KenF July 22, 2016 7:37 am

    Here’s a/the fundamental problem. At the end of the day, it doesn’t matter whether arguments are technical or legal in nature. The problem is, prosecution is fundamentally about logic and advocacy, and many, many examiners just don’t know how to process things that way. Although there is some overlap between the intellectual skills required to function in the technical realm and in the advocacy/debate/logic realm in that connections/relationships have to be seen and understood in order to be able to “converse” in the given realm, in my view, the PTO ignores the fundamental need for competence in the logic/debate skills “department” when it hires examiners. So even if I cite a case and explain the facts of a case and how those facts are similar to my case (as I’ve done many times), all too often I get the Office Action version of “blank stare” in response. If PTO wants improve its examination capabilities, it needs to start putting in some requirements for examiners to be able to think critically.

  14. Anon July 22, 2016 8:21 am

    KenF

    I agree and would only slightly modify your last sentence:

    …requirements for examiners to be able to think critically in the two different worlds of law and the particular art field.

    All too often, discussions (even on legal blogs) exhibit “opinions” simply not grounded in actual law.

    I would point out that the “propaganda battle” makes full use of this discrepancy by often sound-byting [sic] and appealing to the public’s lack of nuanced legal understanding. This deliberate action leads to a “lemming” effect wherein an actual dialogue is often met with the “blank stare” when legal context is clearly not understood by those wanting a particular viewpoint to prevail – a viewpoint that has no business being advanced in the first place.

    It is difficult (but necessary) to keep on establishing the proper context for any dialogue and it is certainly not helped by those with an anti-patent (either in toto or in regard to any particular art field) belief system.

    The plain matter of fact is that the patent system is agnostic to any such selective attempts to separate out advances in such broad areas as software and business methods, and those advocating otherwise must necessarily “attack” outside of this proper understanding. Such people are vested with taking things out of the proper legal contexts and avoiding the (admittedly difficult) two-different world views that have to be maintained simultaneously.

  15. Prizzi's Glory July 22, 2016 9:39 am

    One must be careful not to confuse spin with substance. I have certainly seen lots of irrelevant case citations in copious legalese (often misused) in documents generated by an examiner.

    Just go to PAIR and read the Examiner’s documents in the image file wrapper of the 07/773,161 Application.

    I have certainly wanted to believe that my own failings caused problems during prosecution and that if I were just a little more careful to explain in technological terms, the Examiner would suddenly achieve enlightenment, and the claims would be allowed.

    Careful analysis of the prosecution history of the ‘161 Application shows that miscommunication with the Examiner is not the real issue.

    The history below shows that the USPTO is acting to implement ultra vires a policy that certain organizations may successfully obtain patents while others are too disruptive to be allowed to have patents.

    In short, the USPTO is making innovation solely a prerogative of big corporations and of big capital. Over a long time period nothing could be more corrosive of the US political, economic, and social system.

    https://drive.google.com/open?id=0B73ewaPLaegFQkNacTV3UnpxUXM

  16. Raina Haque July 22, 2016 10:41 am

    It is a little odd that we have this dance between attorneys and technical specialists (scientists). Where else in the legal field do we see such a contrast (to put it lightly) in training? I have a hard time imagining someone without legal training to be able to recognize and dive into grey areas of law. I suppose the memos are out there in attempt to make the gray black-and-white for the examiner.

    What maybe makes more sense is either (1) like practitioners, examiners be required to have not only the technical background, but legal training at least as rigorous as a JD or (2) prosecution perhaps is better left as a dialogue between patent agent and examiner?

    Also, the point made in training that examiners are frustrated that the stakeholder isn’t a technical specialist–that’s odd, because often times stakeholder have extensive technical backgrounds. Some examiners are straight out of undergrad! Perhaps that frustration arises when an attorney/agent is representing a invention that is not within the subject area of the attorney’s training.

  17. Paulanne Chelf July 22, 2016 11:31 am

    Given this post and discussion thread, does anyone else wonder why two years as an Examiner qualifies one to be a patent agent without taking the patent bar?

  18. step back July 22, 2016 1:24 pm

    @16 Raina:

    Not sure what you mean by “dance”.

    It is not always the case that you have an incompetent examiner or an incompetent attorney/agent negotiating with one another.

    There is a large sub-population of highly competent examiners who know what they are doing both technically and legally. And believe it or not, there is a significant sub-population of attorneys/agents who used to work in the technical fields and then hopped over the fence to work in the dark art of patent law.

    The problem arises when one or both of examiner and attorney/agent is incompetent in at least one of law and science.

    The problem explodes exponentially when Supreme Court Justices who are incompetent in both of patent law and science legislate utter nonsense from their ivory tower bench.

  19. Edward Heller July 22, 2016 3:01 pm

    step back, on Alice, I think the only response to an Alice rejection that is going to prevail is a technical response.

  20. Edward Heller July 22, 2016 4:17 pm

    Step Back, Gene, in his most recent post, linked ex parte Jacob. The PTAB found the claims passed Alice Step 2 because,

    “[W]e find that the claims are directed to a computer system and methods of using same, and not an abstract idea. We find that the claims are inextricable tied to very specific system articles of manufacture/devices recited in the claims, for example: a Java-enabled machine that is configured to communicate with multiple different systems; at least five independent, managed data channels, and, a managed, control central database module comprising (i) central application programmatic interfaces, (ii) a central server, (iii) a central database, and (iv) a redundant backup database.
    We further disagree with the Examiner’s finding (FF. 2), and instead find that the computer network system elements are so inextricably tied together by the claim language to perform the given task of efficiently handling requests from multiple end users across multiple industries, that an improvement to another technology or technical field, is clearly manifest. Here, an improvement to computer system technology is manifest, and not an abstract idea.”

    A very good example indeed of technical arguments to overcome Alice rejections.

  21. Prizzi's Glory July 22, 2016 5:39 pm

    @16, I used to be a medical physicist and have done a lot of work in assisting lawyers in IP litigation. I have found those with rigorous legal training and thorough grasp of logic are often quite capable of grasping scientific and engineering concepts — at least such has been my experience at McDermott and Proskauer.

    On the other hand, legal thinking can sometimes be difficult for members of the tech communities, but this issue is not fundamental to the problem of § 101 eligibility.

    35 U.S.C. § 101 eligibility issues are difficult because they belong neither to tech nor to legal reasoning. Defining permissible sorts of knowledge that can be claimed in the context of patents is an epistemological effort.

    As long as one is willing (1) to pose the eligibility question in terms of prior versus posterior and analytic versus synthetic knowledge and (2) to use the Church-Turing Thesis and Computability Theory when they are applicable, questions of § 101 eligibility are generally answered with little difficulty.*

    It probably takes less effort to understand the subset of epistemology that relates to § 101 eligibility than it takes to pass the patent bar examination.

    * Why do we need to think about Computability Theory? “Computable functions are the formalized analogue of the intuitive notion of algorithm, in the sense that a function is computable if there exists an algorithm that can do the job of the function, i.e. given an input of the function domain it can return the corresponding output.”

    While pure algorithms like mathematical theorems generally cannot be claimed, protocols based in algorithms and machines that use algorithms generally are eligible to claiming.

  22. Edward Heller July 22, 2016 6:21 pm

    Prizzi@21: machines that use algorithms generally are eligible

    The eligible problem as I understand it is the converse, an algorithm is not made eligible for reciting an old machine and it has not been since Benson.

    Of course, new and improved machines are eligible. That is the primary search for Step 2 for most 101 cases — the new or improved machine. But the machine is not new simply because it is used.

  23. Prizzi's Glory July 23, 2016 7:08 am

    @22, I think we are just using different idiomatic formulations. I was thinking of Diamond v Diehr. The vulcanizing system operated on the basis of an algorithm for curing rubber. This algorithm was derived from the Arrhenius equation.

    In this situation, the claim is directed to synthetic and posterior knowledge and should be eligible epistemologically. The inventor probably developed some analytic knowledge derived from the Arrhenius equation.

    Because the vulcanizing system did significant I/O, the procedure used really could not be represented in the lambda calculus, and input could not be equated formally to simple variable binding. Thus the program used on the computer was not implementing an effectively computable procedure.

    In Gottschalk v Benson, the claim seems directed purely to a logic program meant to be used in a PLD. This logic program could easily be expressed in the lambda calculus and was certainly effectively computable.

  24. Edward Heller July 23, 2016 7:29 am

    Prizzy, a computer receiving real world inputs and controlling real world outputs is doing work different in kind than mere calculation. Such a computer may improve a process (Diehr) or machine (Alappat). But a computer that only calculates the different algorithm is doing the same kind of work as before, albeit, the algorithm varies.

    However, if the computer software is defined in a manner that it improves efficiency of the use of computer resources, then I think we move into the realm of eligibility. The computer itself is improved as a machine.

    But I think we do agree.

  25. Anon July 23, 2016 7:58 am

    Mr. Heller,

    It is the “converse” argument that is the problem. Benson was written in a judicial activist manner and is truly not logically consistent. Benson is one of the very worst Supreme Court cases ever, as it set into motion the mashing of the nose of wax of 101 that has not abated.

    Take three points (among many that I am well aware that you are well aware of:

    1) You slip into a “just use” and neglect the fact that a machine must first be changed by configuring the machine with the software that is to be “just used.”

    2) The proper patent doctrine that you are looking for with your “just used” (which is itself “just used” to make the subtle point that the machine itself is unchanged) is the patent doctrine of inherency. Yet, you do not use that doctrine. It is easy to see why. The machine so newly configured with software is in fact a machine with a new capability that was not there pre-configuration with software. The patent doctrine of inherency leads you to the opposite conclusion of that which you wish to reach.

    3) you play a subtle game of switching emphasis from a manufacture of software to a process of executing software. But even that subtle move neglects to take into account the change in law set forth by Congress in the Act of 1952 vis a vis 35 USC 100(b).

    In other words, your argument of “simply because it is used” is a legal fallacy and does not withstand critical review – in several avenues of critical review.

  26. Anon July 23, 2016 8:02 am

    Prizzi’s Glory,

    The Diehr case has long been problematic for Mr. Heller. One of Mr. Heller’s other legal arguments is the canard of the point of novelty. It has been noted that Mr. Heller becomes simply inconsistent in his arguments because the point of novelty with the Diehr case is the machine component and manufacture in its own right of software. ALL other components were old, known in the art and used in the art.

  27. Anon July 23, 2016 8:12 am

    Mr. Heller states “The computer itself is improved as a machine” and neglects that fact that improving a machine occurs when new software is loaded on a machine and that machine is configured to be able to “just use”

    The critical first step that is always absent from his “just use” argument is the point of changing the machine.

    Wrap this around back to the proper patent doctrine of inherency.

    Wrap this around to the basic fact that software is just a design choice of wares and that the patent equivalents of firmware and hardware can be effectuated for the same invention (See Alappat).

    It is well known that Mr. Heller is on a crusade against software patents. I think that he realizes that his crusade is ill-founded for some of the more blatant examples of software patent eligibility and thus seeks to twist and misshape patent law in a variety of ways. Not present here, but “just used” as parts of his arguments have been the canard of point of novelty (for the 101 sense), an ultra vires notion of “permanence of attachment” and other constructs created solely to achieve his philosophical and non-legally based desired end state.

    Chase him down on one of these points and he will disappear from the conversation, and like a whack-a-mole reappear soon with either the same argument (not addressing any counter points presented) or with another argument (that also has not addressed counter points presented).

    This has been going on for quite some time – literally years.

  28. Night Writer July 24, 2016 9:50 am

    I don’t have it handy but there is an executive order that says examiners have to follow the MPEP. I pull it out when they don’t and have never had them not collapse at the sight of it.

    I can be obnoxious and go to the TC if the don’t. And, it won’t stop there.

  29. Night Writer July 24, 2016 9:54 am

    Heller is polluting this blog with his endless misrepresentations of science and law. I think that he is getting business from Stern (the author of the root of all evil of patent law–Benson) and this is part of showing fidelity. Ned has turned into a toxic person for patent law. And no one should doubt that it is people like Ned that are at the core of the problems. (The analogy with finance is strong. Without the pseudo-intellectuals from the Chicago school, the financial crisis never would have happened). Here, we have pseudo-intellectuals led by R. Stern and Lemley the unethical. No one should underestimate the damage to patent law and common decency these people are doing. Without these heinous people the legislators and judges would not have the courage to spout the nonsense that they do.

  30. step back July 24, 2016 3:39 pm

    @24 Ed, LOL LOL

    If indeed all mere computer processings are the same, suggest that you enter following “mere” processing command into all your generic computers: REFORMAT *.* (or equivalent for reformatting all your data storage devices) –relax it’s just “mere” data processing without any useful output in the “real” world. So no worries mate. Just go for it. King Tut’s abacus man would do it. Breyer J. would do it. Birds do it. Bees do it. You should just go do it too.

  31. Night Writer July 24, 2016 6:34 pm

    @30 step back: The problem is that it doesn’t matter how smart the come back to people like Ned. They are doing this for money. It will keep coming until we get them disciplined. There has to be serious consequences. I looked into filing a complaint with Stanford Law School. I found out that the top law schools ignore complaints against law professors.

  32. Prizzi's Glory July 25, 2016 5:21 am

    I thought Ned was saying on Diehr and Alappat made total sense. I think there may be an issue related to functional claiming and software that is being addressed improperly.

    The final decision in Richard A. Williamson v. Citrix Online, LLC (Fed. Cir. 2015) makes sense because “distributed learning control module” is “a means plus-function claim term despite the absence of the word ‘means.'”

    I think we lack proper terminology to distinguish code and data objects, whose structure is highly specified in the art, from code and data objects, which are being functionally claimed.

    For example if the limitation specified “a module that defines a MAC bridge” or “a module that defines a Triple-X PAD”, that module is at least as specified structurally in the art of software for network communications as “a pin toothed ratchet used in combination with a forked pawl” is specified structurally in the mechanical arts because if the IEEE or ITU-CCITT standards did not specify the structure of the code and the data objects for “defining a MAC bridge” or defining a Triple-X PAD” in the goriest details, MAC bridges would never interoperate with each other and Triple-X PADs would never intercommunicate with each other.

    I am not so sure “improvement in the computer” is the best way of describing what happens in Diehr or Alappat.

    When software is run on the general purpose computer in Diehr in conjunction with specialized I/O devices, it becomes a component of the Vucanizing system.

    When software is run on the general purpose computer in Alappat in conjunction with specialized I/O devices, it becomes a component of the display system.

    When MAC bridge or Triple-X PAD software is run on the general purpose computer in conjunction with specialized I/O devices, it becomes a component in the communications infrastructure of the computer network system.

    As for Gene’s discussion, I am also surprised that no one seems to care that APJs would just lie in a government document that is an input in a 35 USC 141 hearing in which the CAFC judges are supposed to defer to the USPTO.

    Is everyone okay with lying from APJs? Is 18 U.S.C. § 1001 not applied to government employees and officials?

  33. Night Writer July 25, 2016 7:51 am

    @32>>>I think we lack proper terminology to distinguish code and data objects, whose structure is highly specified in the art, from code and data objects, which are being functionally claimed.

    Functional claiming is used and has been used for a long, long time to capture the known solutions. Technical books even say functional language is meant to capture all known solutions.

    Of course it is an improvement to the computer in patent law sense.

    Williamson does not make sense. They were claiming the known ways of performing the function which is structure —read a technical book which will tell you that.

    Plus, really? Module has no structure? Then a word with no structure that is a technical term is used to specify computer programs? Just look at elance. Or do a search of the Internet. That makes no sense.

    You need to think in terms of structure. What is being claimed. Scope of enablement is the key to think about what structure is being covered by the claim.

    Ned has no point, but to try and obfuscate witch talk.

  34. Night Writer July 25, 2016 7:55 am

    And @32 Prizzi

    Look—there are elements in a claim that specify structure and they are combined. That is it.

    You are trying to play this game of having some abstraction in your brain and saying that abstraction is not OK and then saying that the claims are like that abstraction. That is witch law.

    Deal with the elements of a claim. The problem with Williamson is they didn’t do that. There are elements in Williams that convey meaning to one skilled in the art—STRUCTURE. The Fed. Cir. practiced witch law in Williamson from deviating from claim construction.

    And go read elance and then tell me that a module does not convey structure to one skilled in the art? It does. I am one skilled in the art of computer science. It conveys meaning to me.

    Don’t go down the witch path.

  35. Night Writer July 25, 2016 7:56 am

    And @32 do not respond to me unless you address the substance of what I said like I addressed the substance of what you said.

  36. Edward Heller July 25, 2016 11:33 am

    Step@30, I said, “But a computer that only calculates the different algorithm is doing the same kind of work as before, albeit, the algorithm varies.”

    You commented, “If indeed all mere computer processings are the same…”

    There is a difference, step, between “same” and “same kind.”

  37. step back July 25, 2016 1:09 pm

    @36 Ed

    OK
    Now I understand.
    “Same” is different from “same”.

    But have you done what I asked?
    Instructed your generic computer to REFORMAT \\C:\*.* ?
    No worries. It’s just an “abstract” data processing operation.
    Nothing will change in the “real” world because rubber is not being cured in a mold.

    So go ahead and do it.

    And if any of you Supreme Court Justices are listening, because after all, rubber curing in a mold is a different kind of “same”, you too should try this on all your “generic” computers:

    REFORMAT \\C:\*.*

    Trust me.
    It will help to make your already “generic” computers even more generic thus “obviously” improving them in a “technical” sense and constituting eligible subject matter. 😉

  38. Anon July 25, 2016 1:53 pm

    Mr. Heller @36,

    Until you own up to your own (mis)treatment required as you “just use” something that needs to be changed first (the computer configured with the new software), your playing semantics between “same” and “same kind” falls more than just a little flat.

    You come to this discussion with unclean hands.

  39. Night Writer July 25, 2016 3:14 pm

    @36 Ned (“the anti-patent judicial activist’) says: There is a difference, step, between “same” and “same kind.”

    So, by this logic all metals are the same. All the actions to make a metal and a chemical are the “same kind” of actions. They aren’t new. Oh wait, reality.

    We can’t actually talk about reality. Sorry, please go on with your witch discourse Ned.

  40. Night Writer July 25, 2016 3:26 pm

    And again if you want to understand why people like Ned are wrong, it is simple.

    They talk about abstractions in their head and try to map your claims (and the invention) to their abstractions.

    They do not discuss the action invention and claims in a specific sense and how the claims are disclosed or rendered obvious. All their arguments are my abstraction X in my head is like your claims Y, so your claims Y are invalid.

    Witch logic.

  41. Edward Heller July 25, 2016 3:38 pm

    Night Writer@39, I do not know how one gets that “all metals are the same” when I say that when a computer calculates one algorithm it does the same kind of thing when it calculates a different algorithm.

    Now I must acknowledge here that the argument about “kind” is really an argument that historically was made with regard to obviousness. The difference over the prior art had to be a difference in “kind” rather than degree. Thus in order to be patentable point of view of 103, the use of the computer has to be different in kind or else it is obvious. It is obvious to use the computer to calculate algorithms regardless of the algorithm.

    Now, in the case of the computer connected to a larger process or machine, the changed algorithm can be critical to improvement of the larger process or the machine.

    Distinctions. They are critical.

  42. Anon July 25, 2016 5:03 pm

    Mr Heller @41,

    Your post is, pardon the French, asinine.

    The statutory categories are not read as to some “larger process or machine.”

    This “extra” of yours upon which you want to rest your “distinction” is critically absent from the actual law.

    I have seen you run away repeatedly from discussions that point out that your attempted spin is bogus. From your refusal to properly use the patent doctrine of inherency, to your utter silence on the thought experiment of what has been called the Grand Hall experiment (and which is reflected in your plainly inte11wctually dishonest treatment that you first must change a machine by configuring a machine with software before you can “just use it”), the shallowness of your position screams out louder than any of the arguments you attempt to make.

  43. step back July 26, 2016 1:10 am

    @41 Ed Heller:

    While it is not actually true that the “only” thing that happens when a computer executes one algorithm versus another, let’s assume for argument sake that the only thing that is changed at the end of execution is that one computer (executed algorithm A) has a different pattern of electrons stored in its electronic memory bank than that of the other computer (executed algorithm B).

    (But like I said, try REFORMAT \\C:\*.* I cannot guarantee that “only” your pattern of electrons will change. Some magnetic domains might be rescrambled too.)

    Anyway, that end result of having a reorganized pattern of electrons is not much different (in kind or in whatever) from when one carries out a chemical reaction, say Na2 + Cl2 –> 2 NaCl. The only thing that has changed is the pattern of electrons. They are now in paired covalent bond states. The number protons is the same. The number of neutrons is the same. The number electrons is the same. Hence, under your logic, no chemical reaction and reaction product is patentable (as process, or as composition of matter) because there is no difference in kind, Nothing to look at here folks. Just the same number of protons, neutrons and electrons as before. It’s all just pure abstraction (as well as simple natural phenomenon) 😉

    When are you going to step back and smell the Fe-E? (pronounced Iron E).

  44. Edward Heller July 26, 2016 10:40 am

    Step, assuming the computer is not connected for doing any particular work and is only calculating numbers, the output of different algorithms are different numbers, not different work. So the analogy to chemistry is not quite apt.

  45. Night Writer July 26, 2016 11:24 am

    Edward Heller is like MM on patentlyo. He is obviously just yapping his gums for bucks. I think Edward is doing this to show R. Stern he is one of them so that he can get work.

    Either that or his mind is stuck in medieval mode and he thinks that witch hunting is an imperative from G#d.

  46. step back July 26, 2016 3:56 pm

    @44

    There are no “numbers” in the electronic computational machine, just electron patterns.

    That you choose to see them all as mere “numbers”, well that is all inside your head.

    Chemical compounds ARE all about their electron patterns.

    What numbers do you see in the above message?

  47. Anon July 26, 2016 7:42 pm

    One can make the analogy even simpler:

    Take two sets of the exact same three resistors.

    With the first set, put them in parallel, and with the second set, put them in series.

    There is NO need for ANY larger “machine or process” to see that the sets simply are not the same thing (Mr. Heller neglects to remember that manufactures – or machine components – are a patent eligible category in and of themselves).

  48. Prizzi's Glory July 27, 2016 1:54 am

    Using a “program” to control the performance of a task by a device does not start with electronic, mechanical, or electro-mechanical computers.

    Should a specific program for a Jacquard loom be patent-eligible?

    Should a specific music roll for a player piano be patent-eligible?

    Should a specific sequence of signals corresponding to an audio program for a radio be patent-eligible?

    Now to tell the truth I don’t really care one way or the other. All of the above are eligible for much longer copyrights, and the output of the Jacquard loom might be eligible for a design patent.

    I don’t really care much whether newly discovered physical laws or natural phenomena are patent eligible. Does it really make much difference whether Maxwell’s equations could have been patented (and subject to a 17-20 year commercial monopoly) — as long as there were a research exception? In a just world Maxwell probably should have become wealthy from commercial royalties if there were any commercialization within a 17-20 year period of publication.

    I have similar feelings about the Schrödinger equation (or Heisenberg’s matrix mechanics or Feynman’s path integrals) or the Gravitational Lens Effect.

    In chemistry, the patent system does permit claims to new compounds, which are clearly natural phenomena.

    The issue of mathematical theorems is a little more complex. Some theorems are relatively simple (e.g. angle sum theorem of Euclidean geometry), others slightly more difficult (e.g. Pythagorean Theorem of Euclidean geometry), and others ungodly hard (e.g., Fermat’s Last Theorem of number theory).

    The current problem of 101 eligibility comes mostly from the lack of a reasonable language and formalism for lawyers, patent practitioners, and tech people to discuss 101-eligibility in any way that does not appear arbitrary and unjust to at least one of group of patent stake-holders. (The lack of an agreed formalism and language also seems to make it possible for PTO officials and staff to commit outrageous abuses.)

    It should be possible to create such a language from epistemology and mathematical logic — quelle horreur! patent practitioners, examiners, and judges in patent cases might need to have some acquaintance with material other than the law and the technological art!

    There may be other adequate ways to discuss eligibility systematically. I don’t really care. Yet until there is a reasonable language and formalism for discussing eligibility (a meta-topic) discussions of eligibility are guaranteed to devolve into ranting.

  49. step back July 27, 2016 3:32 am

    @47

    It all comes down to the Justices and the examiners staring the inventor in the eye and saying, “Despite your tricky words lawyer, I know what you truly invented. It wasn’t that generic computer but rather the abstract idea applied to the generic computer.”

    The Justices, well, they are above the law.
    The examiners however, are beholden to the law including to 35 USC 112.
    The latter says that it is the inventor and not the examiner who gets to say what is to be regarded as the invention.

    So when an examiner says otherwise (i.e. what the claim is “directed to”) the examiner is violating the law.

    The Supremes never said examiners can decide what a claim is directed to. Only the “we” (the denizens of Mount Olympus) can say what a claim is “directed to”. Everyone else is violating 112. They are criminals in that sense. Shame.

  50. Anon July 27, 2016 8:48 am

    Prizzi’s Glory,

    Full stop.

    You are engaging in a canard of trying to use examples from outside of the Useful Arts.

    You don’t even get through the gate with such examples because those examples do not meet the utility aspect of 101.

    To try to equate items that DO get through the gate based on utility to such other things – even (especially) if they have a shallow similarity is a deceptive rhetorical trick.

    The law is NOT an exercise in linguistics and epistemology as you are attempting to make it.

    That path is only dust-kicking.

    The law – as written by Congress is much much more straightforward:

    Two aspects to 101:
    1) do you have the right type of utility?
    2) can you fit into one or more of four (very broad) categories.

    ALL else is muckraking and attempted hijacks by those with philosophical aims.

  51. Gene Quinn July 27, 2016 9:15 am

    Prizzi-

    There really is a formalistic way to discuss patent eligibility. It is based on the statute. It isn’t patent attorneys that are the problem, but rather it is the Supreme Court.

    With respect to patent eligibility all 101 asks is whether you have a new invention or discovery that falls into one of four broadly enumerated categories — machine, process, article of manufacture or composition of matter. There is nothing anywhere in the statute that allows for judicial exceptions, but the Supreme Court has created them and Congress seems to have acquiesced, so we are stuck with them. But it is those judicial exceptions without any foundation in the statute thrust upon us by the Supreme Court that are the problem. In recent years there has been tremendous creep relative to those judicial exceptions, and an arrogant refusal by the Court to define any of the key terms they use. That is where all the ranting comes from.

    So screwed up is the Supreme Court understanding of patent eligibility that in AMP v. Myriad the Court said that discoveries are not patent eligible. Of course, the statute (which is only 1 sentence long) expressly says otherwise. Myriad also fundamentally overrules Chakrabarty, which stood for the proposition that human activity is the touchstone of patent eligibility. In Myriad the Court ruled that cDNA, which can only be man made, is not patent eligible if it is identical to DNA. So there are things that can only possibly be man made that are not patent eligible in the eyes of this Supreme Court. Eventually that ruling will be ridiculed as utterly ridiculous, but for now we have to live with it. There is no reason man made cDNA which is identical to DNA should be patent ineligible except SCOTUS said. And those who think that would give the owner of a man made cDNA patent the ability to sue anyone who has DNA (i.e., everyone)… grow up! Patent claims can easily be limited to man made activities without covering the natural DNA you were born with.

    -Gene

  52. Prizzi's Glory July 27, 2016 10:36 am

    I am working on a project and can only reply briefly.

    @anon#50. Because I am a crotchety old man, I have to comment that I think anon means I set up a straw man argument and not that I am spreading canards.

    Why aren’t improvements to looms, pianos, and radios part of the useful arts? Maxwell’s and quantum mechanical equations are not only science but also part of the useful arts as I learned in the Harvard Division of Engineering and Applied Physics.

    @Gene Quinn#51 While certainly patent eligibility and patentability should be almost entirely statutory, doesn’t 35 U.S. Code § 112 force the lawyer or the judge to step into the realm of each useful arts for enablement, possession, and definition of metes and bounds?

    Asking what the meaning of a phrase is to a PHOSITA belongs to the realm of semantics and sometimes linguistics or epistemic jargon.

    Judicial exceptions like the Doctrine of Equivalents will be applied by judges until legislation tells judges not to do so.

    Ariad v Eli Lilly seems exemplary in describing intersection of statute and useful arts (see page 21, the passage that starts [4][5]).

    I think the judges are trying to do the same for the § 101 judicial exceptions, but they themselves may not have sufficient background in epistemology or mathematical logic to explain coherently.

    § 101 judicial exceptions are viable as long as it is a matter of “I know one when I see it.”

    If Congress wants to place restrictions and conditions on § 101, it should probably legislate them or enable a OST to propose restrictions and conditions that can then be given force of law.

  53. Prizzi's Glory July 27, 2016 10:38 am

    I meant the following.

    § 101 judicial exceptions are hardly viable as long as it is a matter of “I know one when I see it.”

  54. step back July 27, 2016 10:52 am

    @51 Gene,

    Gotta congratulate you for finally saying what you were afraid to say at the time Bilski/Alice/Mayo came down.

    Yes the Supreme residents of the Mount Olympus Nursing Home are totally incompetent in matters of science and judicial restraint.

    As an appellate court, they have no business engaging in fact finding (e.g. re “innovation” and what is “likely” to stifle it or not).

    As an appellate court, they have no business engaging in legislating stuff out of thin air (e.g. the whole Alice/Mayo two step dance).

    In fact it is worse than that because they don’t have original thoughts of their own and instead plagiarize from the unsworn briefs of them who they choose to call “friends” (amici) of the Court. I’ve already pointed out a dozen times which amicus brief the “plucking from the tree” concept comes from in the Myriad decision.

    And who knows what other kinds of nonsense are put into their heads when they go play golf or hunt penned-in-quails with their “friends”?

  55. Gene Quinn July 27, 2016 12:00 pm

    Prizzi @52

    You say: “Judicial exceptions like the Doctrine of Equivalents will be applied by judges until legislation tells judges not to do so.”

    As far as one skilled in the art, yes, that comes up throughout patent law. I don’t know how you get away from that given these questions are by their very nature mixed fact and law. The question under 103 is whether there is a non-trivial invention and under 112 whether it is described so it can be understood (essentially). That requires reference to the proper audience, not a bunch of History and English majors sitting on the federal bench.

    -Gene

    The fear is they will still keep applying judicial exceptions even if Congress acts. David Kappos has advocated eliminating 101 altogether, which is useful to discuss but runs the real risk of the Court just keeping their judicial exceptions.

  56. Gene Quinn July 27, 2016 12:03 pm

    Step @ 54

    Thanks, but I think you have me confused with someone else. I wrote that Alice, Mayo and Myriad were atrocious right after they were decided. I was laughed at by many in the patent bar and thought of as a Chicken Little; ridiculed really for my view. Of course, I was right, which I knew I would be sadly. As for Bilski, initially I thought it was bad, but not as bad as it could have been. With Kappos’ interpretation of Bilski and instructions to examiners and how it was being implemented in many Art Units (certainly not all) I long for the days when we only had to deal with Bilski.

  57. Edward Heller July 27, 2016 12:25 pm

    Step, regarding the issue of a computer calculating a different algorithm and producing numbers, these numbers exist so long as computer remains powered. They do not actually change the world in any way except if a human, perchance, observes the number and acts upon it.

    In contrast, connect a computer to the real world and have it permanently change the real world depending upon an algorithm, then computer is doing real work.

    But this is viewing the generic computer and how it is used. Now if, in contrast one defines a specific set of acts that the computer must perform so that it may efficiently calculate a specific problem more efficiently, and claims not just a generic computer calculating an algorithm, but, just for example, specific way of organizing data that is stored more efficiently or more securely, then we are describing more than a simple mathematical algorithm calculated by the generic computer, but an improved computer or computer system as the case may be.

  58. Edward Heller July 27, 2016 12:37 pm

    Gene, to the extent that the claimed subject matter is not directed to a machine, manufacture or composition, or a traditional process that effectively is the MOT, then clearly the claimed subject matter is not within the four classes of 101. We do not even have to get into exceptions.

    But if the claim subject matter otherwise within the four classes, but is claimed at the level of an idea – the so-called “principal in the abstract,” the problem really is one of section 112. The claim is either too broad in terms of its not being described or enabled for its full scope, or it does not particular point out the invention. But as others have said, when the courts and Congress attempted to allow broad functional claiming, and further all but ignored the statute’s requirement that the claims particular point out the invention, the courts have reacted by moving the requirements of 112 into 101.

    What we must, I think, agree that the requirements specified by 112 exists regardless of whether they are enforced by 112 or by a court construct of 101.

    Now regarding products of nature, although one can discover them, they are not to creations of man. As the Supreme Court has said, the purpose of the patent laws is to protect things created by men. Thus even though discovery is in the statute, it has long been interpreted to require something more than just the discovery of the principal or the phenomena of nature. It requires some practical use as well.

  59. Gene Quinn July 27, 2016 12:57 pm

    Edward Heller-

    You say: “to the extent that the claimed subject matter is not directed to a machine, manufacture or composition, or a traditional process that effectively is the MOT, then clearly the claimed subject matter is not within the four classes of 101.”

    You must be reading from a different version of 101 than I have available to me. I do no see the word “traditional” in front of the word “process” in 35 U.S.C. 101. What you say here is also 100% completely incorrect. While there is very little that we can say with certainty that everyone must agree to with respect to patent eligibility, we all have to agree that the Supreme Court said in Bilski that it is still possible for a claim to be patent eligible even if it does not satisfy Machine or Transformation.

    You said: “when the courts and Congress attempted to allow broad functional claiming, and further all but ignored the statute’s requirement that the claims particular point out the invention, the courts have reacted by moving the requirements of 112 into 101.”

    Not sure where you get that. You need to go back and re-read In re Donaldson and the numerous cases that explain the law as it relates to functional claiming. What is covered in the claim is decided by the specification. The courts have done a nice job dealing with functional claiming without mucking up 101.

    Further, the sole purpose for mucking up 101 is to make it possible for district courts to kill patents on motions to dismiss without giving the patent a presumption of validity. No discovery, no claim interpretation, just a subjective opinion that this fits some undefined judicial exception and the case goes away and the court’s docket is saved for important matters. That it has allowed patent examiners in some Art Units to not issue patents in years is just a bonus.

    You say: “What we must, I think, agree that the requirements specified by 112 exists regardless of whether they are enforced by 112 or by a court construct of 101.”

    Sure, 112 has requirements. But those requirements should be enforced under 112, not 101. That is what the Supreme Court said in Diehr, let the sections of the statute due the work for which they were intended. The only reason not to do it under 112 is (1) convenience; (2) no presumption of validity; (3) no safeguards associated with volumes of case law carefully delineating topics related to 112 inquiries; and (4) concern over the patent troll that has never been in the room at the Supreme Court.

    You say: “As the Supreme Court has said, the purpose of the patent laws is to protect things created by men.”

    Not true. Justice Thomas wrote, and all of the Justice agreed, that cDNA (which they correctly acknowledged can only exist in man made form) is NOT patent eligible if it is identical to DNA. Your statement would have been correct when Chakrabarty was the law, but Chakrabarty has been overruled by AMP v. Myriad. Now even when man creates something it cannot be identical to what occurs in nature. Hence clones are no longer patent eligible (see the Dolly the sheep case).

    You say: “it has long been interpreted to require something more than just the discovery of the principal or the phenomena of nature. It requires some practical use as well.”

    Such as the application of a discover to create a non-invasive, risk free test? Oh wait, that enormously important medical innovation was not patent eligible despite the practical use.

    The problem with 101 is creep. It is no longer logically tethered and limited, which is how you get examiners on another thread actually arguing that a computer that functions in a certain way is abstract.

  60. Anon July 27, 2016 4:20 pm

    Mr. Heller not only has a different version of 101, he continues to post I defiance of what Congress wrote in the Act of 1952 at 35 USC 100(b).

    There can be no doubt that he does this with purposeful intent.

    He should be held accountable for his deliberate misrepresentation of the law.

  61. Anon July 27, 2016 9:19 pm

    Prizzi’s Glory @ 52,

    Because I am a crotchety old man, I have to comment that I think anon means I set up a straw man argument and not that I am spreading canards.

    While you may be crotchety, I do not mean setting up a straw man argument. I very much meant a canard. The attempt to use non-Useful Art items out of context in the legal domain of the Useful Arts is an unfounded attempt. Your examples simply do not apply to the legal concepts involved.

    Why aren’t improvements to looms, pianos, and radios part of the useful arts?

    Here, you misspeak – no one is saying improvements to looms or pianos or radios are not of the useful arts. Decorations and songs though, belong to the Fine Arts. As such, your attempt to convert them into examples within the Useful Arts simply does not apply.

    The key concept – and one that I have already shared – has to do with utility.

    Maxwell’s and quantum mechanical equations are not only science but also part of the useful arts as I learned in the Harvard Division of Engineering and Applied Physics.

    That’s quite a different argument. There are other discussions for that – dealing with the differences between math, applied math and the philosophy of math (colloquially called MathS) – that would take more time to get into than either of us have at the moment.

  62. Edward Heller July 28, 2016 3:31 pm

    Gene@59, I know that the MOT was declared not to be an exclusive test in Bilksi. Still, the reason that the Supreme Court held the claims in Diehr eligible was because they passed the MOT. So, let me amend my remarks to say that if a claim as a whole passes the MOT (and not just the data gathering aspects per Mayo) then it is presumptively eligible. If it fails the MOT, it still may be eligible, but why?

    Think about Versata for a second. It claimed an improved software procedure, requiring specific acts as opposed to specific calculations, in order to make the process more efficient, dramatically reducing the time to process the data and provide an answer. Now what was claimed was more than just “do it on a computer.” What was claimed was specific, and as a whole amounted to an improved machine or machine process. To some extent, such claims should pass the MOT because they are directed to “specific machines.”

    I think the Alice claims may have been patentable subject matter the way they were claimed because they claimed a specific process that was more efficient. Those claims did not only say “do it on the computer.” However, the Supreme Court did not view the Alice claims as directed to an improved data processing method, but to a a fundamental economic practice long known to history. Thus, I think the claims must emphasize novel and unobvious data processing methods in order to pass 101.

  63. Anon July 29, 2016 7:06 pm

    Mr. Heller,

    Even as the words pour out of your mouth – conflating themselves – you still refuse to see that the problem is with the Court itself.

    I find that deeply sad.

  64. Anon July 30, 2016 11:59 am

    Mr. Heller,

    May I also remind you that one cannot “just do it on a computer” until one has first CHANGED the computer.

    If one could already “just do it on a computer,” then the proper patent argument is in the doctrine of inherency.

    I have seen this explained to you many times now. Instead of treating this properly, you continue to abide by what is colloquially called the House/Morse fallacy. That fallacy is along the lines of the television show “House,” in which Dr. House quips that the first computer was the only true “computer” invention.

    This is clearly wrong from a patent law perspective that allows “any improvement to the machine” as an eligible invention. The “Morse” side of the fallacy comes in when one considers that to allow the House fallacy to play out, then ALL future improvements to the first computer are absorbed into the invention of the first computer – violating the holding of the Morse case.

    If you are going to argue “just use” then you MUST be able to show that what you want to “just use” was “already in there” – already “in” the prior art “generic computer” and the way to do that is with the Inherency Doctrine.

    We need to stop letting the courts get away with sloppy legal thinking.
    We need to stop letting attorneys get away with sloppy legal thinking. Especially attorneys pursuing philosophical ends with an “Ends justify the Means” mindset.

  65. Anon July 30, 2016 12:03 pm

    I will also add that your “arguments” also necessarily discount the patent equivalency of “wares.” and strike out against the very nature of what software is.

    The reason why software is so prevalent is that its ability to change the computer is so very much easier than other “ware” options. But make no mistake – we are still talking about changing the machine with the “ware” option.

    Your deliberate arguments to the contrary need to stop. They simply are not ethical.

  66. ExExaminer August 1, 2016 3:15 pm

    There are 8000+ examiners at the USPTO. Most are both technically knowledgeable and well trained in patent law. Many comments here are extremely insulting when they argue that examiner’s don’t know patent law as if that was something that was difficult to grasp. Simply ask yourself this, If examiners are so obtuse to patent law then why aren’t examiners reversed by the PTAB and Courts at a greater rate? Unlike the hired gun that you all are, examiners are advocates for the public and the inventor and they take that requirement seriously. The law, unlike science which is factually based, is based on a consensus of opinion. While you can have your own opinion you cannot have your own facts. Examiners are taught to follow OPLA’s reading on patent case law so that the office as a whole follows one policy. The most difficult role that the examiner must learn is to put his or her scientific factual analysis aside and follow policy. I do not agree with the Supremes and the Courts all the time but I will always follow the guidance and policy that the office provides. Attorneys would be well advised not argue that the office is wrong but to urge Congress amend patent law to recognize true inventions. If you read some of attorney arguments that I’ve seen you’d wonder how they did in law school.

  67. TireOfTheBS August 1, 2016 5:58 pm

    And if you read some of the OA drivel, you’d wonder how the examiner who wrote it did in high school……

  68. Anon August 1, 2016 7:20 pm

    ExExaminer,

    Your own statement is more damning than any reply that I could make.

  69. Gene Quinn August 1, 2016 7:28 pm

    ExExaminer-

    You say that you always followed Office guidance. You also say: “Attorneys would be well advised not argue that the office is wrong but to urge Congress amend patent law to recognize true inventions.”

    The problem is there are many examiners in certain Art Units that do NOT follow Office guidance. So attorneys should argue even more than they do that examiners are wrong. Those examiners that refuse to follow Office guidance and Office policy are acting without authority and it is our duty in representing clients to point that out. I think the patent bar has for far too long tried to play nice with recalcitrant examiners. It is fine to work in a civilized way with the vast majority of well meaning examiners, but those examiners who ignore Office guidance, Office policy and openly say they refuse to acknowledge certain Federal Circuit cases (for which there is Office guidance) are wrong and should be fired.

    -Gene

  70. Gene Quinn August 1, 2016 7:30 pm

    TireOfTheBS-

    And we haven’t even said anything about examiners who struggle with English. On top of all the games the Office plays how they can hire examiners who are not fluent in written and spoken English is one of the biggest mysteries of the Office, at least to me. How could any sane person think someone who struggles with the English language and is not fluent could ever be a good examiner?

    -Gene

  71. Anon August 2, 2016 9:11 am

    Gene,

    The “who cares about English” goes hand in hand with the admonitions not to be concerned about legal arguments – a damning point about this very thread and one of the messages that the author relates from the experience with Office personnel.

    While applications do need to properly support with technical information, applications are first, last, and primarily legal documents.

    They are (or should be) written with multiple audiences in mind and need to span the projected twenty plus years of legal life (term and prosecution).

    It is from the very same “just look at the technical” that drives having examiners whose main focus – even outside of the “natural” ability to understand thoroughly the English language – is just the technical.

    This is why I stridently took issue with the article, and it’s seemingly acceptance of what “is easy” for the Office.

  72. Gene Quinn August 2, 2016 10:40 am

    Anon-

    I agree with much of what you write, maybe even all of what you write. The truth is that the way the Office runs examiners are supposed to apply the guidelines the way they are instructed to apply the guidelines. That is why it is so crucially important that the USPTO career officials give accurate explanations of the cases with meaningful instructions on how to follow the law. By and large, in the software space I think the USPTO has been fair with the guidance. I don’t know the biotech area substantively, but will acknowledge there are many who are experts in that field that believe the USPTO has gone farther than the cases.

    The USPTO job is complicated by several things. (1) The Supreme Court in their abundant ignorance abhors bright line rules. (2) Examiners are by and large not attorneys. If you are going to have a non-attorney technical work force do examination you absolutely need bright line rules and you have to have all examiners apply the guidelines as they are told. The problems I see with the Office is that examiners ignore the guidelines and apply their own view of the cases, which is often wrong. I’ve also started hearing stories about examiners telling attorneys they simply ignore certain cases even though there are hypothetical examples and guidelines directed to explaining how examiners are supposed to handle those cases.

    I can’t imagine this is going to happen anytime soon, or perhaps anytime at all, but we really should start to have a conversation about whether patent examiners really need to be attorneys with a technical background. Having examiners without a law degree thinking they know more about the law than patent attorneys with a generation of experience is a huge problem for the Patent Office.

    -Gene

  73. Ax August 2, 2016 12:51 pm

    There are 8000+ examiners at the USPTO. Most are both technically knowledgeable and well trained in patent law. Many comments here are extremely insulting when they argue that examiner’s don’t know patent law as if that was something that was difficult to grasp. Simply ask yourself this, If examiners are so obtuse to patent law then why aren’t examiners reversed by the PTAB and Courts at a greater rate? Unlike the hired gun that you all are, examiners are advocates for the public and the inventor and they take that requirement seriously. The law, unlike science which is factually based, is based on a consensus of opinion. While you can have your own opinion you cannot have your own facts. Examiners are taught to follow OPLA’s reading on patent case law so that the office as a whole follows one policy. The most difficult role that the examiner must learn is to put his or her scientific factual analysis aside and follow policy. I do not agree with the Supremes and the Courts all the time but I will always follow the guidance and policy that the office provides. Attorneys would be well advised not argue that the office is wrong but to urge Congress amend patent law to recognize true inventions. If you read some of attorney arguments that I’ve seen you’d wonder how they did in law school.

  74. Gene Quinn August 2, 2016 9:27 pm

    Ax-

    You say: “examiner’s don’t know patent law as if that was something that was difficult to grasp.”

    Patent law is quite complex. I believe it was Chief Judge Markey who pointed out that a judge really needs to be on the Federal Circuit dealing with patent cases for approximately 5 years before he/she fully understands the intricacies of patent law. So if you think patent examiners who have no legal training are better able to grasp patent law concepts than experiences jurists who are lawyers and have been judges for years you really need to have your head examined. It is the height of arrogance to believe a patent examiner who has never gone to law school understand patent law as well as a patent attorney, period.

    You ask: “If examiners are so obtuse to patent law then why aren’t examiners reversed by the PTAB and Courts at a greater rate?”

    Actually, in TC 3600 examiners are reversed by the Board at an alarmingly high rate. Further, the Board is well known to kill many patent claims on issued patents, which obviously means examiners work product is not good.

    You say: “Examiners are taught to follow OPLA’s reading on patent case law so that the office as a whole follows one policy.”

    That is true, but examiners then ignore the USPTO teachings and guidance. If you were more familiar with patent law and practice you would be aware that patent examiners tell patent attorneys that they refuse to follow certain cases, such as DDR Holdings for example. There is USPTO guidance on DDR Holdings and examples relative to DDR Holdings. So any examiner who refuses to follow USPTO guidance is obviously not doing their job.

    You say: “If you read some of attorney arguments that I’ve seen you’d wonder how they did in law school.”

    What about the many examiners who cannot speak or write English? What about the examiners who send out Office Actions that contain “insert abstract idea here”? What about examiners that provide nothing more than bogus rejection after bogus rejection and get completely reversed by the Board? If you don’t know that these things are happening you really don’t understand anything about the realities of patent practice.

    -Gene

  75. Prizzi's Glory August 5, 2016 7:59 am

    Below is the June 13, 2014 Advisory Action (PTOL-303) from Application 07/773161, which can serve as Watergate for the corruption and criminality in Michelle Lee’s USPTO.

    https://drive.google.com/open?id=0B73ewaPLaegFOWQzZHVoRXlpMG8

    Applicants really should not have to puzzle out the meaning of such documents.

    While linguistically incompetent examiners were hired initially to fulfill a need for technically competent examiners however poor their English might be, the presence of such a group of examiners has proven useful for internal conspiracy.

    Examiners that like Nguyen have problems expressing themselves in English provide valuable service to USPTO criminality, for they provide a degree of plausible deniability, can be patsies when necessary, function as distractions from the pattern of USPTO malfeasance, and fill a pool of compulsory stable accomplices in unlawful actions because they would have difficulty functioning outside an environment that like the USPTO tolerates such linguistic problems.

    An English-challenged examiner is for all intents and purposes chained to his job and has no choice but to follow top management directives even if they are violations of the law.

  76. Prizzi's Glory August 5, 2016 8:32 am

    Here is my analysis of Examiner Nguyen’s text in the Advisory Action that I described in the previous comment. There are about 9 major English errors per page of his text. For Examiner Nguyen such an error rate is not bad. He was probably being careful.

    https://drive.google.com/open?id=0B73ewaPLaegFZXNmaDYtTzRoT1E

  77. Prizzi's Glory August 5, 2016 9:21 am

    I discuss USPTO criminality in more detail in the discussion on http://www.ipwatchdog.com/2016/07/28/culture-examiner-applicant-uspto.

    I don’t really do patent prosecution in the communications tech area any more. I have been more involved in fintech and algorithmic trading. Thus my concerns overlap with Gene’s.

    It is interesting that the Examiner’s 101 rejections on the ‘161 Application were mostly typical of rejections associated with CBM applications. While the USPTO top management decided to kill the ‘161 Application by any and all means including felonies on the part of the APJs, the framework of rejection does not seem to have existed for bogus rejection of a statutory networking device patent.

    Hence USPTO supervisory and top management personnel gave the Examiner both 101 rejections that are more frequently associated with CBM claims and also 101 and 112 rejections that are more frequently associated with pharma and biotech claims. These rejections were meant to bury the ‘161 Application as quickly as possible. Instead the patent prosecutors were stubborn.

    Then the criminals at the USPTO were suddenly presented with the demise of SAWS.

    The Appeal was sent to the PTAB at the last possible moment. Lacking time to cover their tracks. The APJs, Dixon, Frahm, and Hughes, committed obvious felonies. Yet they continue to decide Appeals as members of the PTAB.

    Until an independent special prosecutor is charged with investigating the USPTO and reviews all the documents that the USPTO has claimed privilege to withhold in the face of FOIA requests, we have to assume that other APJs are involved in felonies.

    Because the documents that that APJs create become inputs to the federal District Courts and to the CAFC, the corruption and criminality of the PTAB spreads into the US federal legal system — especially because these documents receive deference in patent proceedings.

    Nothing is more corrosive of the US legal, political, and economic system than current USPTO behavior.

  78. Me August 5, 2016 10:13 am

    Lighten up, Francis!

  79. Prizzi's Glory August 6, 2016 9:08 am

    @Prizzi’s Glory#77, bad link.

    http://www.ipwatchdog.com/2016/07/21/uspto-patent-prosecution-not-persecution/id=71148/

  80. Prizzi's Glory August 6, 2016 9:11 am

    @Prizzi’s Glory#79, this time wrong link. Sorry.

    http://www.ipwatchdog.com/2016/07/28/culture-examiner-applicant-uspto/id=71323/