USPTO handling of patent eligibility sparks substantive discussion at PPAC meeting

Wayne Sobon

Wayne Sobon

Last week the Patent Public Advisory Committee (PPAC) held its quarterly meeting at the United States Patent and Trademark Office (USPTO). These quarterly meetings give those on PPAC an opportunity to be brought up to speed about what is going on inside the USPTO, and to ask questions of various senior officials.

One particularly interesting back and forth took place between Wayne Sobon, an IP attorney and strategist who is also a former President of the American Intellectual Property Law Association (AIPLA), and Robert Bahr, the Deputy Commissioner for Patent Examination Policy. The exchange related to patent eligibility and 101.

Leading up to this exchange Bahr had explained a number of things, including the reason the USPTO has not updated patent eligibility guidance to address the pro-patent decision of the Federal Circuit in BASCOM v. AT&T. Many in the industry have been critical of the fact that the USPTO, which has been otherwise quick to provide guidance with respect to important precedential decisions, did not provide examiners with guidance in this case which found the software claims at issue patent eligible. Bahr explained that the USPTO did not think the case changed anything they had previously told patent examiners, which is why no further guidance had been issued.

With so few examples of patent eligible software in the wake of the Alice debacle this decision seems imprudent to me personal, and also troubled Sobon, who explained:

Obviously this area is still one that’s deeply of concerned. I think all the major intellectual property organizations are focusing on this and evaluating and have teams looking at how to address in a variety of ways these issues. I think it’s commendable what you have been working on doing and with the revised guidance. I would be one to say the more you can actually revise your guidance and include things like the BASCOM case and include those as further tonics to the fact that the cases that were decided especially by the Supreme Court were very focused on the facts of those cases. And like any legal opinion you can vastly take the general things they state out of context and then it becomes again an acid that eats through things.

Sobon then moved forward to address the many “anecdotes that seem credible of the examiner core not yet fully… following the spirit” of USPTO guidance. Recounting these credible anecdotes, Sobon continued:

In practice examiners are continuing in a sense, if I can sort short hand it, sort of short circuit the analysis, the two-step analysis and basically define the problem away by just saying the things that you’ve claimed in your claim steps, whatever those might be these are the most important parts of your claim, and those things taken together are the abstract idea. You are patenting an abstract idea. You, therefore lose.

Sobon is exactly correct, and pretty much any review of Alice rejections from Technology Center 3600 will demonstrate just this type of circular reasoning.


Sobon then pivoted to one of the several unforeseen problems created by Alice, which is that it is being applied outside of the business method and financial patent sector. Indeed, Alice is being used to reject revolutionary medical software that relate to the treatment of cancer, which seems to directly and inexplicably fly in the face of the President’s so-called Cancer Moon Shot initiative. Sobon explained:

Another that’s been brought to my attention, you probably saw it in Bob Sachs’ Bilski Blog … Director Lee was focusing on the patents for patient program as part of the overall administration’s Cancer Moon Shot. That’s all great except that [Sachs] notes that there is at least 50 or more applications for cancer treatments that have been completely abandoned by applicants because of final 101 rejections for their cancer treatments when there’s not actually final 102 or 103 rejections. So this is actually affecting even the potential for protectable medical treatments directly related to a current program of Administration.

Sobon also brought up the issue of whether a method of playing a game should be patent eligible, as was the issue in In re Smith. See Would Monopoly® be patent ineligible under Alice? Sobon said:

I think the solicitor for the Patent Office admitted in oral argument if there were new cards or there were new material or things being used for that method of card play then that might be protectable. And I think having those kinds of examples made public and made part of your instruction to examiners can help balance this system, which I think in certain areas has really gone out of whack. And again card playing sounds trivial but games is a huge, huge industry for America… [t]he Monopoly® game was patented in the Depression by this very Office… [W]hat happens is those things spread out and get analogized to things, other things that are extraordinarily important for various industries. So I think this still remains a very, it’s obviously a very, very concerning issue. And it’s an acid that continues to just sort of leach out and is harming a number of areas of innovation and the applicant community that is especially affected by this remains distraught.

Bahr, who waited patiently for Sobon to conclude his thoughts and for his opportunity to respond, began by acknowledging that he read Sachs’ blog about the Cancer Moon Shot and has concerns. “I certainly hope we tread carefully in that area,” Bahr said. “I’ve tried to take pains in our guidance to do that.” And to be perfectly fair to the Patent Office, and to Bahr, the guidance that he has offered is not the problem. What he has been instructing patent examiners seems perfectly fair and reasonable. Unfortunately, there are patent examiners who routinely announce to patent attorneys and applicants that they are not following the guidance, or that they are not allowed to follow the guidance by their direct supervisors. So while I have no doubt that Bahr and others in the Commissioner’s Office do want to tread carefully, that message is simply not filtering down in any meaningful or actionable way to Art Units and ultimately to examiners.

The one aspect of Bahr’s response to Sobon that I took issue with was respect to patent and patent applications relating to playing games. Bahr explained:

I think it was the court that said that if the cards were different that it might be a different result but that here we were just talking about how the game was played with conventional cards. But certainly I would appreciate that you can’t analogize that to wipe out everything. I don’t know about the Monopoly game. Obviously if you claimed different types of pieces you would have a different game. It’s not a conventional game anymore. And I don’t think there were games like that before Monopoly®.

Once again, my issue is not with Bahr, who I think is being perfectly reasonable in his interpretation of the binding precedent on the Office. My problem is with the Courts, particularly the Federal Circuit decision in In re Smith. To say that a method of playing a game would be patentable if there were something non-conventional physical attribute associated with the method of playing is simply NOT the law.

The Supreme Court expressly overruled the Machine-or-Transformation test in Bilski v. Kappos, and left open the possibility that a method could be patent eligible even if it were not somehow tethered to a unique physical, tangible device. Furthermore, methods are a patent eligible and specifically enumerated category of invention identified in 35 U.S.C. 101. A separate and distinct category of invention also identified in 101 is devices. To suggest that there must be a new device or tangible apparatus present in order to make a method patent eligible simply cannot be correct under any reasonable reading of 35 U.S.C. 101.

Another interesting exchange between Sobon and Bahr occurred relative to compact prosecution. “If it’s truly just conventional cards or conventional software or conventional things and nothing new has happened then kill it under 102 and 103 and leave 101 till the last,” Sobon explained. “It finally clicked to me that compact prosecution plus 101 is really potentially problematic and it maybe where things have gone the rails.”

“I agree with you that … many times your 102, 103 will take care of your 101, but I would not really want examiners to hold off on 101 till the end and, in fact, I think in Mayo the government argued that this really isn’t a 101 issue, it’s a 102, 103 issue and that got rejected pretty hard by the Supreme Court.”

Again, I don’t like Bahr’s answer, Sobon is correct, but so too is Bahr. The Supreme Court the is to blame for being wrong in Mayo. The conflating of 101 with 102, 103 and 112 is the root of all the problems facing the software and biotechnology industries. While what the Supreme Court did was objectively incorrect under any statutory construction, they are the Supreme Court. Unless and until Congress overrules Mayo the Patent Office is largely stuck, at least to some degree.

Could the Patent Office address this differently? Yes. Is the way Patent Office senior officials are addressing 101 in the guidance incorrect or outside of the envelope of reasonableness? No. Is the way examiners are applying 101 in keeping with the guidance? Absolutely not. Is this one big mess? You bet!


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Join the Discussion

60 comments so far.

  • [Avatar for Anon]
    September 2, 2016 07:36 pm

    Still waiting, Mr. Heller.

    Or is this one of those (many, many, many) times that your silence screams volumes as you disappear from valid counter points to your views yet again?

    Don’t you find that pattern the least bit embarrassing?

  • [Avatar for Anon]
    September 2, 2016 10:27 am

    Perhaps on this blog the moderator will actually hold Mr. Heller accountable for his gamesmanship. Gently, of course, but accountable nonetheless.

    This gamesmanship only leads to the effect of “drive-by monologuing and the Internet-style of “shouting down” when valid counter points are simply ignored as if they were never raised in the first place. Dialogue – true dialogue – demands more.

    Let’s see if Mr. Heller is up to the task of being inte11ectually honest on these counterpoints in this better moderated forum.

  • [Avatar for Night Writer]
    Night Writer
    September 2, 2016 10:05 am

    This is pretty typical of Edward not to address the substance. Anon made very good points that you are simply trying to side-step and not very elegantly.

  • [Avatar for Anon]
    September 1, 2016 06:34 pm

    Federal preemption and its relation to the allocation of authority to the legislative branch is NOT the discussion point here, Mr. Heller.

    For at least the third time, I ask that you be inte11ectually honest and stop trying to derail the conversation with a moving target.

    Please address the two questions that I have put to you.

  • [Avatar for Edward Heller]
    Edward Heller
    September 1, 2016 05:37 pm

    anon, you say that the Federal Patent System preempts state patents. Well, that was not what was understood by the founders regardless of what the Supreme Court said in Sears. States continued to issue patent for decades after United States was formed. Federalist 43 only said that state protection was inadequate, not that inventions be protected only on the Federal Level.

  • [Avatar for Anon]
    September 1, 2016 04:42 pm

    Once again, Mr. Heller, your reply is non-responsive.

    Clearly the Federal patent system preempts any State system.

    And just as clearly, this diversion STILL leaves my previous two questions unanswered by you.

    I asked you quite politely to be inte11ectually honest here – and that includes answering the questions put to you directly, and not playing these type of “move the target” games.

    I STILL await your on-point answers.

  • [Avatar for Edward Heller]
    Edward Heller
    September 1, 2016 02:51 pm

    anon, you do realize the power is to Congress to provide exclusive rights. They can do so directly by granting patents to inventors without creating other laws or bureaus. This form of protection was exercised through private legislation both at the Federal and State levels. The State practice has fallen into disuse, and is probably preempted. See, the Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S. Ct. 779, 11 L. Ed. 2d 669 (1964); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S. Ct. 784, 11 L. Ed. 2d 661 (1964); Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 109 S. Ct. 971, 103 L. Ed. 2d 118 (1989).

  • [Avatar for Anon]
    September 1, 2016 11:47 am

    Further, Mr. Heller, the option open to the judicial branch is NOT to rewrite the law in their image, but IF (and it is an amazingly large if) the Congress has attempted to violate the Constitution by allowing patents on discoveries (which flies in the face of the plain text, by the way); then the path for the Court is to declare what Congress has done to be unconstitutional. There is NO effective “line item veto” that the judicial branch gets to wield here.

  • [Avatar for Anon]
    September 1, 2016 08:24 am

    Except one small – but critical – detail: the Patent Clause is strictly an allocation of power to write the actual statutory law. There is no allocation to the Judicial Branch, so their “scrivining” is ultra vires.

    You still have not answered either of my previous questions.

  • [Avatar for Edward Heller]
    Edward Heller
    August 31, 2016 11:23 pm

    no, anon, Camelot had the idea that the king could order the weather and it would obey.

    Congress has the idea that it, like the good Kind, can legislate that discovery is invention, but that does not make it so, except as a legal fiction.

    The Supreme Court can say that the most detailed, practical business method is abstract, but that does not make it so, except as a legal fiction.

    Today both Congress and the Supreme Court are making the meaning of words, of the Constitution and of the historical case law into legal fictions, where white means black, and the weather obeys.

  • [Avatar for Anon]
    August 31, 2016 08:17 pm

    Your post Mr. Heller, is again non-responsive.

    Quite in fact, you appear to be arguing my point for me.

    Camelot had witches (and wizards), did it not? I am not sure your choice of metaphors is the one that best presents your views.

  • [Avatar for Edward Heller]
    Edward Heller
    August 31, 2016 12:30 pm

    Anon, just like in Camelot, where the King declares the weather and the Supreme Court where they decide that black means white.

  • [Avatar for Anon]
    August 31, 2016 07:02 am

    Mr. Heller, you busy yourself with a single pedantic answer, that neither answers my first question related to what Congress actually wrote nor my second question (for which, you just might realize that “how the discovery was made” is entirely possible to be written).

    Please engage in an inte11ectually honest manner here.

  • [Avatar for Edward Heller]
    Edward Heller
    August 31, 2016 06:46 am

    Night, good observation there @45. Discovery and invention actually are mutually exclusive in point of fact. One can discover gold, but one makes an invention and statutes require one to describe how to make the invention.

    Thus the law of nature: one can describe what it is but not how to make it.

  • [Avatar for Anon]
    August 31, 2016 05:54 am

    Mr. Heller,

    How you make the object, or how you make the discovery?

    Now, since I asked first, can you address my point of 35 USC 100(a), or will you (yet again) duck and dodge?

  • [Avatar for Night Writer]
    Night Writer
    August 30, 2016 11:20 pm

    @44 Edward: well, at least the discovery part goes to negating the holding by the justices that the invention is law of nature.

    Obviously, there is a lot more depth to this.

  • [Avatar for Edward Heller]
    Edward Heller
    August 30, 2016 08:53 pm

    Night, you discover gold. Now describe how to make gold.

  • [Avatar for Night Writer]
    Night Writer
    August 30, 2016 07:43 pm

    @39: what was the point of your post? It didn’t address my point at all. It merely said “new” was tied to inventorship long ago.

    Science tells us what is new in the invention. Science tells us what the structure is. The justices are playing witch law by trying to come up with a non-science definition for inventions of new. You don’t really think you are fooling anyone do you?

    @41 Anon. I agree.

  • [Avatar for Edward Heller]
    Edward Heller
    August 30, 2016 07:08 pm

    Anon, can you describe how one “makes” a discovery as required by section 112?

  • [Avatar for Anon]
    August 30, 2016 06:44 pm

    Night Writer,

    Call me old fashioned, but just because a Justice says something, does not mean that that something actually has the force of law.

    @35: Anon, the “discovery” part is something the justices have managed to legislate out of the patent act.

    So I ask, with what authority? And if no true authority can be found, than such is ultra vires and without force of law.

    Our system does NOT have the Supreme Court above the Constitution, nor above the other two branches.

    Separation of powers and checks and balances (and other protections such as “current case or controversy” and NOT some possible conjectural future harm), are in place to protect us from what the Founding Fathers feared of a Judiciary without constraints.

  • [Avatar for Anon]
    August 30, 2016 06:38 pm

    Mr. Heller,

    Are you really quoting from a dissent?

    And from one who would twist the nose of wax from the face of the law?

    Not persuasive.

    At all.

  • [Avatar for Edward Heller]
    Edward Heller
    August 30, 2016 03:44 pm

    anon, Night, et. al., the issue of absolute newness was important in the early stages of the United states for another reason: England had long granted patents to people who brought inventions to England, but who themselves were not inventors, in order to bring new skills to that land. The first congress decided that granting patents to such technology importers who were not inventors would be unconstitutional. Eldred v. Ashcroft, 537 U.S. 186, 229, 123 S. Ct. 769, 154 L. Ed. 2d 683 (2003). (Steven, dissenting.)

    Thus, the requirement for being an inventor in the Constitution informed the requirement that the subject matter of the patent be “new” even if it was not previously known or used in the United states.

    In all cases, an inventor must be a creator. The founders were convinced of this.

  • [Avatar for Night Writer]
    Night Writer
    August 30, 2016 10:17 am

    Also, this point of novelty (new) etc. is very important. Why? Because information theory and science tell us what is really new. The SCOTUS is saying we are going to make up this new definition of new and these things aren’t new (that science and information theory tell us are really new.)

    Just another witch law game. And notice the way the judicial activists like Edward try to emphasis (NEW) and try to tell us what is new. Science tells us what is new. The justices tell us what witch law nonsense they have made up.

  • [Avatar for Night Writer]
    Night Writer
    August 30, 2016 06:50 am

    @35: Anon, the “discovery” part is something the justices have managed to legislate out of the patent act.

    “That is why I think the requirement is of constitutional dimension in that the requirement for invention at least requires the creation of something new.”

    Edward….the whole game is what counts as “something new.” It is ridiculous to say that an information processing method is not new because it includes relations that always existed.

    The fact is that all you and the justices are doing is —-again—taking some abstract thing in your head and saying that your inventions is or is not the abstract thing in my head.

    The way it should work: look at the invention and the structure of the invention including the combination. If you can’t build it from known prior art and obvious combinations then it should be patentable.

    You practice witch law with the justices.

  • [Avatar for Night Writer]
    Night Writer
    August 30, 2016 06:46 am

    @34 Edward….

    Edward, your comments are kind of silly really. We know that something must be new for a patent. Something. The game the SCOTUS is playing is what counts as new.

    Your game is to focus on new and try to put up some curtains so people don’t notice that you are trying to define what counts as new structure.

  • [Avatar for Anon]
    August 29, 2016 09:22 pm

    Mr. Heller,

    Once again you lean towards the wrong branch in your efforts to write the statutory law that is patent law.

    Please take note of 35 USC 100(a):The term “invention” means invention or discovery.

  • [Avatar for Edward Heller]
    Edward Heller
    August 29, 2016 06:12 pm

    Gene, I too thought Myriad had patented something not found in nature – isolated DNA. But, because the claim was functional — DNA that codes for … — the court found that it actually read (a construction of the claim) on the product of nature, as opposed to something created by man. But I do believe the court was very clear on why products of nature are not patentable in the first place — they are not “new” compositions:

    From Myriad:

    “This would be at odds with the very point of patents, which exist to promote creation. Diamond v. Chakrabarty, 447 U.S. 303, 309, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980) (Products of nature are not created …”

    “We must apply this well-established standard to determine whether Myriad’s patents claim any “new and useful … composition of matter,” § 101, or instead claim naturally occurring phenomena.”

    “The Chakrabarty bacterium was new “with markedly different characteristics from any found in nature,” 447 U.S., at 310, 100 S.Ct. 2204, due to the additional plasmids and resultant “capacity for degrading oil.” Id., at 305, n. 1, 100 S.Ct. 2204. In this case, by contrast, Myriad did not create anything.”

    “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry…”

    “So do Myriad’s. Myriad found the location of the BRCA1 and BRCA2 genes, but that discovery, by itself, does not render the BRCA genes “new … composition[s] of matter,” § 101….”

    “[T]he the lab technician unquestionably creates something new when cDNA is made. cDNA retains the naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived. As a result, cDNA is not a “product of nature” and is patent eligible under § 101….”

    From Flook, at fn. 15:

    “The underlying notion is that a scientific principle, such as that expressed in respondent’s algorithm, reveals a relationship that has always existed.

    “An example of such a discovery [of a scientific principle] was Newton’s formulation of the law of universal gravitation, relating the force of attraction between two bodies, F, to their masses, m and m?, and the square of the distance, d, between their centers, according to the equation F=mm?/d[2]. But this relationship always existed—even before Newton announced his celebrated law. Such `mere’ recognition of a theretofore existing phenomenon or relationship carries with it no rights to exclude others from its enjoyment. . . . Patentable subject matter must be new (novel); not merely heretofore unknown….”

    Note this last bit from Flook declares a requirement for absolute novelty, as opposed to not simply being a matter of prior knowledge (prior art). That is why I think the requirement is of constitutional dimension in that the requirement for invention at least requires the creation of something new.

  • [Avatar for Gene Quinn]
    Gene Quinn
    August 29, 2016 03:47 pm

    Edward Heller-

    You say: “the Supreme Court is denying patents on discoveries an/or laws of nature primarily because they are not inventions – which they repeatedly say involves the “creation” of something new.”

    If that is what the Supreme Court had said it would be easier to understand. But they have clearly said that even if you create something new you still may not be able to get a patent. In Myriad they said that cDNA is patent eligible as long as it is different from DNA. But cDNA is always man made. So if you create man made cDNA that is identical DNA no patent for you despite the fact that it is a new creation.

    You say: “the requirement for invention does seem to be of constitutional dimensions”

    Then why isn’t all cDNA patent eligible? Obviously, invention doesn’t matter to the Supreme Court in all cases. This is the problem. There is no way to reconcile the Supreme Court’s patent eligibility cases without ignoring or violating one or more of the principles or teaching of cases that the Court itself has said all remain good law.

    As for products of nature, the way around this has always been not to patent the product of nature as it were to be dug out of the ground (in the case of the antibiotic resistant bacteria killing substance) but to patent the purified or commercial formulation. The problem here is Mayo, which says something is not patent eligible even if it is not the same as what occurs in nature if there is not much additional. Of course, they provided no definition of what it means to be “significantly more” and because they purposefully and intentionally conflate 101 with 102/103 there are none of the procedural and legal safeties in place.

    Whether we like it or not, the Supreme Court’s interpretation is what is standing in the way of the promotion of the useful arts, not patents.


  • [Avatar for Edward Heller]
    Edward Heller
    August 29, 2016 03:17 pm

    Gene and Paul, the Supreme Court is denying patents on discoveries an/or laws of nature primarily because they are not inventions – which they repeatedly say involves the “creation” of something new.

    The Court denies patenting “principles in the abstract” because they are too broad — undermining progress in the useful arts.

    The bases are distinct.

    But, Gene, you need to consider that the requirement for invention does seem to be of constitutional dimensions, while promotion of the useful Arts might be within the discretion of Congress. Thus Congress could, I think, authorize the patenting of business methods, but not of products or laws of nature.

  • [Avatar for Gene Quinn]
    Gene Quinn
    August 29, 2016 02:18 pm


    You are entitled to your opinion, as wrong as you are.

    In our private e-mail exchanges I’ve tried over and over to explain this to you but for some reason it just isn’t getting through. In our communications you fixate on patenting discoveries and proclaim in an article I refuse to publish here on IPWatchdog that the patenting of discoveries would be unconstitutional because it does not promote the progress of science or the useful arts. You are wrong and so is anyone else (including SCOTUS) who believes such nonsense.

    The example I’ve given you is one that is well known. There has been a discovery of a naturally occurring substance that can kill antibiotic resistant strains of bacteria. The USPTO has denied patents, which means that will NEVER make it to market because no company is ever going to spend the $1 to $12 billion required to get through the FDA process only to have it be available to generics the minute it is approved by the FDA. So there is an example of a situation where the refusal to patent a discovery based on the natural law judicial exception is affirmatively and undeniably standing in the way of great benefit to society, as well as preventing the progress of science and useful arts.

    You can say all you want that other great minds disagree with me, but that doesn’t change the fact that they (and you) are wrong. It also doesn’t change the fact that I won’t publish your article, which also contained egregiously misleading citations to trusted sources that you wrongly claimed supported your theories.


  • [Avatar for Daniel Cole]
    Daniel Cole
    August 29, 2016 02:08 pm

    Gene – your response in 6 is where I completely disagree with you and what my earlier postings were trying to point out. The subtext is that abstract ideas and natural product patenting do not promote the progress of science – something many other people have said, especially those with many years studying Supreme Court cases and an understanding of how the Supreme Court works that patent lawyers seem to lack (read constitutional lawyers). They are wrong – but that is the underlying theme.

    We do ourselves no favors by ignoring that fact.

  • [Avatar for Anon]
    August 27, 2016 07:42 am

    Mr. Cole,

    And what happened to your eloquent pleas?

    Mind you, I am not criticizing your effort in that case, but instead of attempting to duplicate even a well stated position along a path that did not achieve success, we (the royal We) need to expend efforts along a continuum of paths (including “fights” of the less “polite” nature when “sound-byting” and “the other side” engage in propaganda tactics of a less than inte11ectually honest nature. NOT that we are to be inte11ecctually dishonest ourselves, but we must not – and cannot – shirk from calling out when the emperor has no clothes (even if “parents” want to shush our child like protests)..

  • [Avatar for Night Writer]
    Night Writer
    August 26, 2016 12:40 pm

    Paul @26: “In reality what was claimed was a series of black boxes with little or no disclosure of what was in each box and how the boxes were meant to work together. ”

    Except one skilled in the art. I am person skilled in the art of State Street Bank and a patent attorney. It was enabled. The metes and bounds of the claims were easy to understand. Just ridiculous the way people keep trying to play off the ignorance of people with this functional language nonsense.

    Textbooks say they write functionally to represent all the known solutions.

  • [Avatar for A Rational Person]
    A Rational Person
    August 26, 2016 12:27 pm

    Paul Cole@26

    The moral is that thanks to how the Supreme Court has interpreted 35 USC 101, Examiners and the PTAB never have to reject anything based on 35 USC 112, much less 35 USC 112(6). A rejection of a claim as being “abstract” is ALWAYS an easier and more powerful rejection.

    To make a 35 USC 101 “abstract” rejection, an Examiner just needs to summarize what the Examiner thinks the claim is directed to and then assert that whatever the claim is directed to is “abstract” and therefore is no patent eligible under 35 USC 101. There is no need for an Examiner to read the specification much less determine if various terms in the claims are supported in the specification.

  • [Avatar for Paul Cole]
    Paul Cole
    August 26, 2016 11:45 am

    Incidentally, in the patent in issue in State Street Bank, all the claimed elements were specified in means + function form. Who thinks that every claimed element was supported by sufficient structure in the description and the drawings?

    In reality what was claimed was a series of black boxes with little or no disclosure of what was in each box and how the boxes were meant to work together. The more straightforward objection would have been under 35 USC 112(6) as it then was, and would have been difficult to answer.

    MORAL: for patentability the disclosure needs to be more than a hand-waving exercise.

  • [Avatar for Paul Cole]
    Paul Cole
    August 26, 2016 11:33 am

    As the lead editor of the CIPA Guide to the Patents Acts which covers UK and European patent law, I have much sympathy with the views expressed in this posting.

    In particular, in compiling Section 1 of the Guide which covers eligibility I view with much more favour examples of eligibility than non-eligibility. The reason is that as attorneys we need to emulate the cases which have been found eligible, and an endless parade of cases found non-eligible is of decreasing help the more cases are added to the parade.

    May I draw attention to the brief that I lead wrote for the Supreme Court in the Sequenom case, downloadable from

    The summary contained the following passage

    “The panel opinion erred in not determining whether the claimed subject-matter fell as a matter of substance within the “process” category of §101, see Diamond v. Chakrabarty, 447 U.S. 303, 307 (1980). Instead, it focused unduly on the eligibility of cffDNA as isolated or amplified materials when these were only recited as elements of the claimed process. It gave insufficient weight to the series of acts recited in the claims and to the transformations that they produce: Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676, (1972), quoting Cochrane v. Deener, 94 U.S. 780, 788, 24 L. Ed. 139, (1877). It insufficiently considered the recited acts as an ordered combination and the benefits flowing from that combination. In applying the Mayo/Alice framework, the panel opinion applied the words “directed to” over-expansively, thereby bringing an unintendedly broad range of inventions within the scope of the exclusion framework. In the second step of analysis, the panel opinion applied the word “art” with undue generality and treated activity as “well known, routine and conventional” whereas in reality the steps were novel when applied to serum or plasma from a maternal blood sample, that provenance setting the claimed process apart from all other processes, see United States v. Adams, 383 U.S. 39 (1966).”

    The brief went on to consider with reference to the relevant case law item by item and step by step why the claimed subject matter fitted as a matter of substance and not mere outward appearance into section 101 as a patent-eligible process.

    What lessons can be drawn from the Sequenom train-wreck and subsequent case law and developments?

    Firstly that inadequate attention is being given both by our profession and by the Office to the positive requirements for eligibility under Section 101.

    In the oral argument before the Supreme Court in the Myriad case there was much discussion about bits of wood cut from a tree branch, the decision where to begin the cut section and where to end it, and forming the cut section into a baseball bat. Uninformed opinion treats this discussion with ridicule. But the cut piece DNA in Myriad is no more a composition of matter than the cut piece of tree branch, see the definition approved in Chakrabarty of which our profession appears to have little awareness. If the cut piece of DNA or the cut tree branch is to qualify at all it has to fall within the “manufacture” category, i.e. it has to be transformed into a new thing with a new name and new functionality as when the tree branch is shaped into a baseball bat. Did the Myriad claim do that? In the opinion of Justice Thomas the answer was negative and as all that was claimed was a single isolated strand of DNA which had not been subject to any transformation e.g. amplification to impart new utility and was of doubtful utility in its mere isolated form. There was much in the established case law to support his opinion.

    Secondly, those drafting cases in both the life sciences and the software/business method arts need to think carefully which category the subject matter that they wish to claim falls, and write claims that as a matter of substance and not mere outward appearance do so. If the subject matter creates a real world transformation as is required for eligibility, that needs to be explained, and all the necessary elements need to be in the claim. For example, in Sequenom, the amplification step had to be carried out to a level where the DNA could be examined by fluorescence. If you put that in the claim and specify fluorescent detection in the next step, you do much to separate what is being claimed from the realm of isolated generality and into the realm of real world physical operations. The definition of process in MPEP 2106 is “a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.” The definition of a machine is “a combination of mechanical powers and devices to perform some function and produce a certain effect or result.” If we want favourable outcomes from our applications we have to be ensure that our applications, and in particular our claimed subject matter, positively complies with these requirements. If we do not do that we have only ourselves to blame.

  • [Avatar for Night Writer]
    Night Writer
    August 26, 2016 07:47 am

    The founders of Google said in a documentary in–I think 2011–that their biggest fear was a new technology that was better than theirs.

    It isn’t hard to understand why Google doesn’t want to have to worry about patents. They are a giant monopoly with a tenuous hold on the market. They could be wiped out as fast as Blackberry was.

    Also, the criminality if there is any would come from the lobbying for the new laws. And, the key to understanding people like Lemley is that he is unethical. He misrepresents the law and the facts in his papers. It is a joke that an unethical person like him is quoted by the SCOTUS. A national disgrace. I think Lemley believes that patents are bad and that any means used to rid the country of them is fine. That is pretty typical of the mentality of academics and judicial activists. He is just a garden variety unethical academic protected by Stanford who just happens to be a great used car salesman.

  • [Avatar for Eric Berend]
    Eric Berend
    August 26, 2016 12:25 am

    Note regarding the above comment: I did not sufficiently describe the argument for regarding some of these conspirators’ actions as being criminal, so to complete the assertion and correct that omission: it is a criminal act to extort property from a person.

    The infringer cabal led by Alphabet/Google, Inc. is responsible for the power to threaten the value of property known as a U.S. Patent in the procedures called “Inter Partes Review” (“IPR”) and “Post Grant Review” (PGR”) newly instituted at their behest in the U.S. “America Invents Act” enacted in 2011.

    These entities which comprise said cabal, then initiated numerous said IPR and PGR proceedings at the USPTO, far in excess of what had been misrepresented to the U.S. Congress, in a successful effort to intimidate inventors by threats to degrade the value of their property (their patents), and then gave public notice through advertising and IT industry articles and “blogs” that an organization controlled by the said cabal offered to buy inventors’ patents at a greatly reduced value.

    The above description is without a doubt, clearly extortion. Extortion is a crime.

    If I influenced a local legislature to alter laws regarding pollution and then threatened local real estate parcel owners that I would contaminate their property (within the newly legal strictures of said laws) unless they sold said properties to me or my organization at a greatly reduced price far below the normal market; then this would, without question, constitute a criminal racket to swindle property owners out of their property.

    Is not the actions, activities and conduct of the infringer cabal, directly analogous to the above description, merely being in a different area of property law?

    To the extent that there is loss of value suffered by such properties in the first place, strictly for the purpose of unjustly enriching these illicit actors, is liability of a civil nature.

    But when the elements of fraud for the purpose of said unjust enrichment include performance of criminal conduct, the ‘fact pattern’ legally expands to the extent of being criminal infraction(s).

  • [Avatar for Eric Berend]
    Eric Berend
    August 25, 2016 10:28 pm

    It’s a racket. A giant racket against small entity inventors on the behalf of the ‘efficient infringers’. This is undeniably and without a doubt, a vast criminal conspiracy.

    As an inventor, the implications of the above PPAC discussion are breathtaking and indubitably treacherous. These criminals are determined to completely ruin the Constitutional bargain set forth by the Founding Fathers and upheld in various guises through at least the Patent Act of 1952 and the resulting jurisprudence, and only recently upended as part of the criminal conspiracy encompassing the AIA legislative influences (Google owns Sens. Goodlatte and Schumer and so forth), the academic chicanery (e.g., Lemley, et al), the illicit CAFC and Supreme Court distortions (it is NOT the statutory law – thank you, Gene) and the canards deliberately promulgated in deception of public opinion (a fictional creation of Intel, Inc’s legal department) so as to advocate against their own best economic interests.

    And I do, here and now, call these mendacious persons and organizations as criminal in fact: as, there is clearly a coordinated conspiracy to defraud the U.S. public interest; the U.S. Congress; academic authorities on which legislators and Courts rely to make and dispense law; and various Judges of the U.S. Judiciary, for the purpose of unjust enrichment of the beneficiaries of the conspiracy.

    Ironically, as much of a ‘unicorn’ as has been described of the difficulty of getting a Judge to allow a so-called “Civil RICO” case to proceed forth; the above fact pattern does fit the statutory requirements of 18 U.S.C. §§ 1961-1968.

    Reading between the lines here, as it were, it is evident that there is an internal bureaucratic level of direction concerning these matters within the division or department with control over the USPTO Examiner corps, that is NOT VISIBLE to the practitioner community, including inventors.

    This is why SAWS was instituted in secret and continues to be vigorously defended by the USPTO, even though it has actually been alleged that the program was supposedly terminated.

    This is why top level officials such as the said Mr. Bahr with visible, public-facing positions and titles within the USPTO can allege compliance with controlling judicial precedence and yet profess apparent puzzlement at the refusal to implement their directives by the “Examiner corps” within that organization.

    Is he lying through his teeth? Or, is there not an additional control personnel layer unknown to Mr. Bahr? IS he a part of the criminal conspiracy, or merely an unwitting tool in its obfuscation of the truth in this matter?

    It is this “invisible hand” that is the power which is truly ‘in the driver’s seat’, here.

    This is why the process is presented as opaque to practitioners of patent prosecution, yet a broad swath of rejections affecting whole classes of patent applications can issue forth at the behest of “well-connected” outside powers. I would wager good money that these layers of internal anti-patent control and direction are well-known to Director Lee and her ‘Alphabet-Google, Inc.’/etc.-owned ilk.

    So far, the criminals have succeeded handsomely. That is why, drunk with their ill-gotten power here, went ‘back to the well’ again so soon in further legislative, even before the dust settled on new jurisprudence and practices (IPR, PGR, etc.) arising from the abominable AIA.

    It’s known in sports as “running up the score”. Gene, I appreciate your civility and honorable intentions, but I feel that sometimes you are too nice to these guys. The whole lot deserves to be hauled out in handcuffs for what the have perpetrated.

  • [Avatar for Anon]
    August 25, 2016 06:12 pm

    Mr. Heller,

    Once again, your attempt at reducing the statutory catogory of process to be only a handmaiden of obtaining one of the items in the other hard goods statutory categories is simply not in accord with the law as written by Congress in 1952.

    Once again, please see 35 USC 100(b), and the purposeful expansion of process to mean more than the old “arts,” and to include mere use.

    Why do you make it necessary to remind you of this fact?

  • [Avatar for Observer]
    August 25, 2016 02:06 pm

    Again, a big thank you to Gene on highlighting issues in this post and today’s post. The USPTO, as an organization, has sown dragon’s teeth. The corrupted examiners (Spartoi) are a discontented lot surely to turn on each other as the disaster compounds.

  • [Avatar for Gene Quinn]
    Gene Quinn
    August 25, 2016 11:11 am


    Interesting that you say it this way. Take a look at my latest article, which published this morning:

    I had already written that article and touch on this issue a little. The USPTO is doing real damage to the patent system by allowing this to go on. If it goes on for much longer it will be extraordinarily difficult to stop. Some (perhaps many) of the examiners that are being taught these anti-patent ways will understandably come to believe this world view and as they rise through the ranks of the Office it will be a disaster. Worse, those that do not hold anti-patent views in these Art Units will sometimes make the decision to leave the Office altogether.


  • [Avatar for Night Writer]
    Night Writer
    August 25, 2016 10:37 am

    @15 curious. I don’t really agree with you. I think the method has structure. I think it is not an abstract idea. And because something occurs entirely within the human brain does not make it an abstract idea. Cancer occurs entirely within the human brain and is not an abstract idea.

    Completely disagree with you curious.

    Moreover, to win the 101 war the key is to fairly discredit people like Lemley. Clinton will not be able to burn down the patent system without the pseudo-intellectuals on her side. Exposing their unethical conduct is the key to winning.

  • [Avatar for Curious]
    August 25, 2016 10:33 am

    The reality is that if it actually had an affect that was measurable on people that it should be eligible for patentability.
    Happiness is a measurable effect. I read somewhere that they found out that some Buddhist monk was the happiest person the researchers measured.

    Regardless, my point is that there could be some method that is really just an abstract idea because the method occurs entirely within the human brain and the impact is solely upon the human brain.

  • [Avatar for Night Writer]
    Night Writer
    August 25, 2016 08:43 am

    And, @10 curious, how should this method be analyzed? Well, there is structure there, but does it actually do anything is the question?

    The reality is that if it actually had an affect that was measurable on people that it should be eligible for patentability. Structure that has some affect should come under the 102/103/112 analysis.

    And seriously any of you anti-patent folk should be specific in your criticism of my comments. I happy to debate any 101 issue in a rational forum.

    Consider if there was a similar method that if performed would actually tune up a car. Or a similar method if performed would make wheat grow faster.

    Just weird that we enter witch law when a human comes into the picture.

  • [Avatar for Anne Winchester]
    Anne Winchester
    August 25, 2016 05:22 am

    Someone should tell the US PTO that inventors are abandoning the patent system. I have six inventions right now, and given the dysfunction, and the Supreme Court that’s clueless about the patent system, i’m really wondering if it’s even worth the effort. It was hard enough before mayo for an entrepreneur to see their patents respected. Where do they find these clueless justices?

  • [Avatar for Night Writer]
    Night Writer
    August 25, 2016 02:17 am

    And, no 101 analysis is complete without understanding what the justices are doing is saying that an invention is like some abstract idea the justices have in their heads about something. Witch law. They are then comparing the invention to their abstract idea and saying that you can’t have a patent because it is really one of those abstractions in their head.

    So, look for structure and then the games being played or whether to actually count the structure or not and the witch games of comparing the invention to some abstraction in the head of a justice.

    That is reality. Ned consistently plays the witch game.

  • [Avatar for Night Writer]
    Night Writer
    August 25, 2016 01:38 am

    The key to understanding this —to my mind–is structure. Abstract should mean there is actually no structure that it is not enabled. And, the game the SCOTUS plays is to act as if methods are not structure, which obviously they are. Everyone should re-read Deener. The method of grain processing is very much like a method of information processing. And in the foot notes of Deener the justices actually figure out that grain is like information that it shouldn’t matter the type of grain, but the method to process a grain. Structure in this case is in the method.

    And, Edward has it wrong–“Create” is not the guide, but structure.

  • [Avatar for Night Writer]
    Night Writer
    August 25, 2016 01:29 am

    Deener is a method and used no new apparatuses to perform the method. The only new thing was the method.

  • [Avatar for Curious]
    August 25, 2016 12:26 am

    I can’t understand how something that is non-obvious could be abstract
    A method for inducing an increase in happiness, comprising:
    contemplating striped frogs flying over a castle with jet packs;
    contemplating said striped frogs dropping super tankers onto said castle; and
    contemplating said super tankers exploding 10 feet over said castle and releasing a cloud of 8-winged butterflies that fly up to dance with said striped frogs.

    I would bet good money that this method is novel. I would also wager that an examiner would be hard-pressed to find that this method was obvious in view of the prior art. However, I am pretty sure that this claim would never pass 35 USC 101 at any time in the last 60 years.

    While I think that the “abstract idea” jurisprudence has some place in patent law, it is not being used today as a finely-honed instrument that is only excising inventions directed to ideas that are abstractions. Instead, this jurisprudence is being used as a flamethrower to cut down wide swaths of patentable subject matter embodied in tangible products that are bought and sold. These are not ideas that are abstract.

  • [Avatar for Observer]
    August 24, 2016 09:48 pm

    Thank you Gene, you have highlighted significant issues that are a cancer at the USPTO; however, as you know, methods to treat that cancer remain unpalatable to those in charge. The USPTO has corrupted early career examiners beyond repair. Acrimonious, illogical 101 rejections are a cancer that has spread to handling of 102 and 103 rejections. Time wasted on 101 is time not spent on 102 and 103 training. The USPTO has screwed the system for years to come. And, screwed US industry, as claims not eligible in the US are being allowed elsewhere . . . where business, investment and jobs will follow.

  • [Avatar for Gene Quinn]
    Gene Quinn
    August 24, 2016 09:42 pm

    Appearance of…

    I don’t know whether they are intentionally ignoring BASCOM, but you are definitely on to something. For some time now I’ve been wondering, and writing, that I can’t understand how something that is non-obvious could be abstract. I continue to believe that if the invention is described well enough to evaluate for 102 and 103 then there is no way that you are dealing with something abstract within the meaning of 101.

    Ultimately, that is where the law will go. I have no doubt. Perhaps a new regime at the USPTO will be required. I think whoever wins this next election we will see a more pro-patent Patent Office.


  • [Avatar for Edward Heller]
    Edward Heller
    August 24, 2016 08:25 pm

    Appearance — excellent thought there. If they do not follow Bascom, they will eventually be able to address it directly in an appeal from the PTO where they are a party, and where, of course, they will ask the Federal Circuit to reconsider, etc.

    Do you really think that is is what they are doing/planning?

  • [Avatar for Appearance of ...]
    Appearance of …
    August 24, 2016 07:59 pm

    I think that the real reason why the USPTO is not issuing a guidance for Bascom is that Bascom comes “dangerously close” to turning step 2 of an Alice 35 USC 101 rejection into a standard 35 USC 103 rejection.

    Put alternatively, a 35 USC 103 defense could then be used to overcome an Alice step 2 rejection, and suddently many formerly rejected patents could now pass “Alice”.

    If you are a high level USPTO administrator, and your politics are such that you dislike this outcome, then it follows that Bascom must be ignored.

  • [Avatar for Gene Quinn]
    Gene Quinn
    August 24, 2016 07:11 pm

    Edward Heller-

    You say: “You must agree that whether the Supreme Court is right or wrong, it is following some subtext, some basic rule that guides its jurisprudence, and that think that this is it.”

    Sorry. I do not agree. The Supreme Court is following absolutely no subtext or basic rules. They do as they please. They overrule their own cases but because they have the thinnest skin of any group of people on the planet they refuse to acknowledge what we all know — that a ruling that is directly contradictory to a previous ruling means the previous ruling has been overruled.

    In an interview several years ago Judge Linn told me that he has great difficulty reconciling all of the Supreme Court’s 101 patent eligibility case law. Judge Linn is 100% correct. The Supreme Court jurisprudence on 101 simply cannot be reconciled, yet like an emperor without any clothes they cling to the notion that they are good law and work together in harmony. The Supreme Court is delusional and if they weren’t the most powerful judges in the country much of what they say with a straight face would get them placed into assisted living facilities because they have obviously lost their marbles.

  • [Avatar for Edward Heller]
    Edward Heller
    August 24, 2016 06:15 pm

    Curious, I used the term “business method” to describe the type of claims in Bilski and Alice, not the rule of law. There seemed at the time and even today that the claims in Bilski and Alice were considered by all to be business methods. But they were not held ineligible for that reason, I agree, but because they were abstract. But what did the Supreme Court mean when it said that?

    All of us have been trying to figure that out. I offer here some thoughts on that topic for your consideration.

  • [Avatar for Edward Heller]
    Edward Heller
    August 24, 2016 06:10 pm

    Gene, in your mind, sweep away the statute just for a moment and consider what the Federico and Congress said in ’52 — anything new made by man is eligible. What I am saying about “creating” things or results is simply this, but I also include “improved.” You must agree that whether the Supreme Court is right or wrong, it is following some subtext, some basic rule that guides its jurisprudence, and that think that this is it.

    I offer this observation in an effort to help all of us to understand the Supreme Court jurisprudence in this area, and what it might do if we sweep away 101 by legislation.

    I close with a quote from Myriad,

    “This would be at odds with the very point of patents, which exist to promote creation. Diamond v. Chakrabarty, 447 U.S. 303, 309, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980) (Products of nature are not created, and “`manifestations… of nature [are] free to all men and reserved exclusively to none'”).

    Ass’n for Molecular Pathology v. Myriad, 133 S. Ct. 2107, 2116 (2013)

  • [Avatar for Curious]
    August 24, 2016 06:08 pm

    To me, the computer process itself was improved, not the “business method.”
    You always forget that the Supreme Court has been urged, in at least two instances by multiple amici, to deem all business methods unpatentable subject matter. However, they declined to do so in both Bilski and Alice. You have an extremely selective memory when it comes to cases.

  • [Avatar for Gene Quinn]
    Gene Quinn
    August 24, 2016 05:47 pm

    Edward Heller-

    You say: “the Supreme Court has never ruled that any method is patentable subject matter. Simply being a method or process is not enough.”

    That is true. It is also true that the Supreme Court is wrong. The fact that a method is claims is absolutely enough to make the claim patent eligible under the Patent Act. The Supreme Court has absolutely no authority whatsoever to say otherwise. There is no authority for them to create judicial exceptions to statutes they do not like, and certainly no specific or implied authority under the Patent Act. Like with respect to so many things, Congress has abdicated their Constitutional responsibility to the Supreme Court (much as they have for years to the Executive Branch). So, while it is true to say that it is not enough that a method is being claims that is because the Patent Office and Federal Circuit choose to follow the Supreme Court view of the world rather than following the law clearly and unambiguously enacted in the Patent Act.

    You say: “when a game is involve, new rules with old cards is not enough because the rules themselves are not enough — the rules having nothing to do with “creating” machines, manufactures or compositions or producing (“creating”) new physical results as in Diehr.”

    Here you are just wrong. There is nothing in the statute that says that a method must be tied to machines, articles of manufacture or compositions. Furthermore, there is nothing in any Supreme Court case that says or even suggests that either. Quite to the contrary. In Bilski the Supreme Court said that a method does not need to be tied to a machine in order to be patent eligible. That is why they overruled the Machine or Transformation test.

    You say: “Patents, they have said, are reserved for the creation of new or improved things and/or new or improved results.”

    Again, I disagree with you, although I don’t think our disagreement matters really. Clearly, the Supreme Court has not focused on results, which is one of the reasons why they overruled State Street, which did focus on results (in part). Furthermore, an unknown method of playing a game (which is the uncontroverted facts of In re Smith) clearly qualifies as being a new creation the same way any other new method would.

    You say: “I think Versata was wrongly decided.”

    We certainly agree there, although I suspect our reasoning would be different.

  • [Avatar for Edward Heller]
    Edward Heller
    August 24, 2016 05:24 pm

    Gene, the Supreme Court has never ruled that any method is patentable subject matter. Simply being a method or process is not enough. If that were the case, both Bilski and Alice would have been decided differently. Ditto, Benson and Flook.

    Thus, when a game is involve, new rules with old cards is not enough because the rules themselves are not enough — the rules having nothing to do with “creating” machines, manufactures or compositions or producing (“creating”) new physical results as in Diehr. The use of novel means in connection with a method is enough even though the method itself is not enough.

    Now, I have used the word “creating” here purposefully. The Supreme Court has all but said that this is the fundamental law of eligibility. Patents, they have said, are reserved for the creation of new or improved things and/or new or improved results.

    This is why I think Versata was wrongly decided. Admittedly, the overall process calculated price, but the means specified was a vastly improved computer process that cut the time to calculate price significantly. To me, the computer process itself was improved, not the “business method.”