Ex parte Itagaki: Has the PTAB gone too far in invalidating patents under 35 USC 101

The recent decision in Ex parte Hiroyuki Itagaki, which has been greatly criticized, might also be read as simply reaffirming the current view of the Supreme Court established in the CLS Bank v. Alice Corp. With the Alice decision in June 2014, the Supreme Court incorporated the framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, which was initially used to examine applications involving the laws of nature, and thus began an era of more rigorous scrutiny under 35 U.S.C 101 for software patent claims. From this point onwards, after determining that a claim is drawn to statutory subject matter, any invention involving an abstract idea will be examined in two additional steps: (1) whether a claim is directed to an abstract idea; and (2) whether a claim amounts to be “significantly more” than just implementing an abstract idea. It was held as a triumph for the inventors and organizations who thought that the software patents, which utilize the existing hardware platforms should never have been issued patents at the first place.

The application at issue in Itagaki is the U.S. Patent Application No. 20100119136, titled “Magnetic resonance imaging apparatus and image classification method”, which relates to an improvement over existing MRI apparatuses and will be referred as “Itagaki’s apparatus” in this article. The key aspect of the invention, as described by inventors, is the classifying and rearranging the plurality of images acquired by multi-station imaging in a MRI apparatus. The cited patents and published literatures revealed that previous MRI apparatuses could perform multi-station imagining but were not equipped with a classification processing unit. The Patent Trial and Appeal Board (PTAB) overturned the patent examiner’s 103(a) rejection and introduced a new ground of rejection under 35 U.S.C. 101 instead. The panel held that the invention was directed to an abstract idea of classifying the images. And in view of CLS Bank v. Alice Corp decision, augmenting a generic MRI apparatus with such a classification processing unit did not alter the operation of the apparatus in any unconventional way and did no more than implementing an abstract idea.

The decision of the PTAB in Itagaki is confusing given that in the post-Alice era we have seen two decisions in favor of software patents that involved an abstract idea – McRO v. Bandai Namco Games America and the Enfish LLC v. Microsoft. Notwithstanding, the PTAB decided the invention in Itagaki was more similar to the invention at issue in the Supreme Court’s Alice’s decision.

In the the McRO’s case, the Federal Circuit overruled the decision of district court which considered lip-synchronizing software ineligible under section 101. And while deciding this matter, the Federal Circuit said “the claimed improvement here is allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters,’ which could previously only have been produced by human animators.” Furthermore, the stance of the panel with respect to McRo’s invention is interesting because the invention did not change the nature of computer’s operability in terms of tangible aspects such as speed and memory, but only made it simpler for human animators to animate 3D characters, which could have been done by using pencils, pens and other manual artistic tools. Similarly, in Enfish LLC v. Microsoft, the installed software improved the way computers operate. However, both of these inventions were held patent eligible despite involving an “abstract idea”.

In essence, these two decisions recognized the problems with two-step framework of Mayo/Alice. Firstly, almost all inventions can be reduced to an ineligible abstract idea because every invention has a basic underlying scientific principle or theory on which it operates. Secondly, the framework does not define what is an abstract idea.

Now, in context of Itagaki’s MRI apparatus, the classification processing unit performs a function of classifying the images acquired by instrument during its regular course of operation. The PTAB held that the algorithm which performs the task of classifying the images can also be done manually or mentally and therefore “the multi-station MRI as claimed does not operate in an unconventional manner to achieve an improvement in its functionality”. Further, the panel held that “the multi-station MRI as claimed does not operate in an unconventional manner to achieve an improvement in its functionality”. This situation is similar to the cases where upon programing, a “general purpose computer” becomes “special purpose computer” or as stated in Ultramercial v.Hulu,a programmed computer contains circuitry unique to that computer”. Thus the true questions in Itagaki are whether such an algorithm creates a special purpose MRI apparatus and whether the new apparatus is described with “particularity” and “improved functionality”? These issues, however, are best handled when determining the sufficiency of the disclosure (i.e., 35 U.S.C. 112), particularly where the claim here specifically is drafted to cover a machine.

Itagaki’s claim-1 reads as follows:

A magnetic resonance imaging apparatus comprising:

an image acquisition unit configured to divide an imaging region of an object to be examined into a plurality of stations of respective station positions, and acquire a plurality of images having different image types for each station, while moving a table on which the object is mounted, station by station;

a display control unit configured to display the plurality of images in a predetermined display format; and

a classification processing unit configured to classify the plurality of images by image types and station position, based on imaging condition including imaging parameters, wherein the display control unit displays the plurality of images by image types in spatial order of station positions, based on the classification result by the classification processing unit.

To address these queries, first we have to look back at the decision of Federal Circuit in In re Alappat (1994). Kuriappan Alappat, an employee of Tektronix had devised an anti-aliasing algorithm that improved the appearance of the display. The PTO held that the computer instructions to carryout mathematical algorithm were not eligible for patents under section 101 despite involving tangible machinery such as an oscilloscope. However, the Federal Circuit held differently, stating that “a machine for converting discrete waveform data samples into anti–aliased pixel illumination intensity data to be displayed on a display means”. The court went further by referring to In re Bernhart, explaining that “we have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software

Applying the Alappat rule in the light of recent McRo, Enfish, and Ultramerical decisions, the Itagaki MRI apparatus, which used an algorithm, should have been been properly treated as a “special purpose apparatus” weighing towards patent-eligibility under section 101 despite involving an abstract idea.

Next, the issue whether the apparatus operates in an unconventional manner or not can be addressed in terms of its function. For instance, in McRo’s decision, the unconventionality was measured in terms of the ease with which human animators can animate 3D characters. In the current scenario, the primary function of MRI apparatus is to produce images, and thus the unconventional manner of working should be measured in terms of the variations in the images produced by the improvised MRI apparatus. Now, while overruling the examiner’s 103(a) rejection, the PTAB stated that the “Because the evidence relied upon does not disclose or lead one of ordinary skill in the art to a multi-station MRI to which all the claims are limited to, a prima facie case of obviousness has not been made out in the first instance by a preponderance of the evidence…Accordingly, the rejection is not sustained.”  This suggests that the MRI apparatus of the claims was not only novel, but it was also non-obvious such that the person of ordinary skill in art could not have envisioned it. In other words, the court acknowledges that at least a certain degree of unconventionality (i.e., enough to overcome an obviousness rejection) was imparted to the Itagaki improved MRI apparatus through an algorithm. As a result, MRI apparatus must be significantly more than the platform on which the algorithm operates and should have passed patent-eligibility test under section 101. Moreover, if the claim does overcome the examiner’s obviousness rejection it is difficult to understand the PTAB panel’s statements regarding conventionality.

When addressing the issue of generality vs. particularity, we come across a situation where the inventors described the most crucial aspect of the invention, the classification unit, in general terms in the claim. Consequently, in the PTAB’s assessment, the representative claim did not rise above the threshold test of patentability under section 101. But much of what the PTAB seems concerned about relates to disclosure and there is nothing in the PTAB panel decision in Itagaki to suggest that the PTAB reviewed the specification to determine whether the somewhat generally described terms were given particularized meaning by the applicant. It also raises questions about how the PTAB could have properly conducted an obviousness review if the classification unit was so abstract as to be infirm from a patent eligibility point of view.

In conclusion, on one hand, the claims appear to pass the Alappat test and are consistent with McRo, Enfish, and Ultramerical decisions. On the other hand, they describe the key component of the invention, the Classification Processing Unit, in general terms. The PTAB seems to focus on the general description of this key component and appears to hold the view that an abstract idea such as an algorithm can be patented only if it integrates a machine or apparatus that is described in particularity to impose meaningful limitations on the claims. It will be interesting to see what the Federal Circuit decides, especially when McRo and Enfish decisions were declared so closely to the current decision.

The Author

Dr. Dinesh Vidhani

Dr. Dinesh Vidhani is a Research Faculty member at the Florida State University. He earned his doctorate degree in Synthetic Organic Chemistry at the Florida State University, where he carried out research on gold(I)-catalyzed cascade cyclizations, gold(I)-catalyzed [3, 3] rearrangements and tin-mediated selective reduction of aromatic enones. He has published his research in several peer-reviewed international quality journals and is also the recipient of MDS (Molecular Design and Synthesis) Award. He has also patented a transition metal-catalyzed method in the USPTO. Currently, he works on multidisciplinary research projects that involve synthetic-organic, physical-organic, organometallic and computational chemistry. Besides research, Dinesh takes keen interest in the US Patent laws and Rules that are concerned with determining patentability of an invention [35 U.S.C 101, 102, 103 and 112]. He is also proficient with most sections of the MPEP and the landmark judgements of the PTAB, the Federal Circuit and the US Supreme Court.

Dr. Dinesh Vidhani

Dr. Yonghao Jin is a Research Faculty member at the Florida A & M University. He has earned his doctorate degree in Medicinal Chemistry. He is the author of numerous peer-reviewed international quality journals and patented novel MMP inhibitors in the USPTO. Presently, he works on multidisciplinary research projects involving synthetic organic chemistry, design and synthesis of novel drugs, biochemical and biological studies. Besides his research, he takes special interest in the patentability sections [35 U.S.C 101, 102, 103 and 112] of the US Patent laws and Rules.

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 45 Comments comments.

  1. Anon January 22, 2017 9:40 am

    might also be read as simply reaffirming the current view of the Supreme Court established in the CLS Bank v. Alice Corp.

    As pointed out in an exchange on different threads, the “might” here has an evident foundation in that the Supreme Court herself – in providing the weapon of “Gist/Abstract” in the Alice case, – set the blueprint of making claims to things that meet the actual words of Congress (there, both sides of the court case had without doubt stipulated to meeting the Machine prong of the subject matter eligibility portion of 35 USC 101), into an abstraction.

    This is nothing more than what the Supreme Court has already done.

    No matter how careful one tries to read what the Supreme Court has written.

  2. Gene Quinn January 22, 2017 12:13 pm

    Whether we like it or not, given the carelessly worded and myopic opinion in Alice it was only a matter of time before some Judge determined a machine to be abstract.

    The Federal Circuit needs to grow a backbone and define “abstract.” Dictionaries define the term and it clearly does not mean a tangible machine. Until the Federal Circuit grows a backbone and starts to perform their intended function we can expect more decisions like Itagaki I’m afraid, particularly given that it seems maybe that Michelle Lee may be staying at the USPTO possibly.

  3. step back January 22, 2017 12:42 pm

    Gene,

    Not a good idea to paraphrase Alice.
    How does an improved MRI monopolize the “basic” fundamental building blocks?

    “WE hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer
    implementation
    fails to transform that abstract idea into a patent-eligible invention. We therefore affirm …”

    “WE have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski, supra, at 611-612 (upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”). Laws of nature,
    natural phenomena, and abstract ideas are ‘the basic tools of scientific and technological work.”” Myriad, supra, at (slip op., at 11). “Monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo, supra, at (slip op., at 2); see U. S. Const., Art. I, §8, cl. 8 (Congress “shall have Power . . . To promote the Progress of Science and useful Arts”). We have “repeatedly emphasized this . . . concern that patent law not inhibit further discovery by improperly tying up the future use of” these building blocks of human ingenuity. Mayo, supra, at (slip op., at 16) (citing Morse, supra, at 113).”

  4. DV January 23, 2017 6:36 am

    Step Back, “How does an improved MRI monopolize the “basic” fundamental building blocks?”

    Improved MRI is non-obvious from the perspective of an image classification algorithm.

    MPEP 2100: “This is because an idea that is tangibly applied to a structure is no longer abstract and a law of nature or physical phenomenon that is practically applied to a structure is limited to that particular application of the concept. For example, a cup is the tangible application of the abstract idea of containing a liquid and is one limited embodiment of that idea (which is no longer abstract). As another example, a magnetic door latch is the tangible application of the concept of magnetism and does not wholly embrace the concept of magnetism but, rather, is one limited application of the concept.”

    If the classification processing unit is a “particular” structure, then the algorithm tied to that structure is no longer abstract. However, if the cpu is defined in general terms then it is tied to an abstract concept of classification.

    So on one hand, an improved MRI apparatus should not have been held as an abstract concept but on the other hand, had the cpu been defined with particularity, this issue would not have aroused.

  5. gene January 23, 2017 9:34 am

    “Applying the Alappat rule in the light of recent McRo, Enfish, and Ultramerical decisions, the Itagaki MRI apparatus, which used an algorithm, should have been been properly treated as a “special purpose apparatus” weighing towards patent-eligibility under section 101 despite involving an abstract idea.”

    uhh . . . only if the claim recited the “special purpose apparatus”. general abstract language does not define a “special purpose”. remember that a court must read and construe CLAIMS, not the title or the spec. critics, on the other hand, read any part of the patent they choose to make hay and so garner readers and internet clicks.

    An MRI machine comprising:
    a first bunch of doohickeys configured to capture images; and
    a second bunch of doohickeys interacting with the first bunch of doohickeys and configured to classify the images.

    ooh ooh ooh, it’s 101 eligible because it’s an MRI machine! “classification control unit” and any other “unit” is no more definite than a doohickey.

  6. Eric Berend January 23, 2017 9:57 am

    Those of us who invent primarily in the ‘classic’ areas of physical apparatuses are now witnessing the fundamental breakdown of primary reasoning faculties of the judges of these Courts, with unmitigated horror. Not that this wasn’t abundantly and painfully apparent in other areas of invention, for some years now.

    Their own allegiance to ‘judicial economy’ is hypocritically, completely oblivious to the enormous resources blithely presumed of inventors; in their casual dispensation of such unprincipled reverses, in due process. Just another appeal necessary to try to clear up yet another completely wrongheaded “Decision and Order”? That’s merely another $800,000 to pony up – you’re an ‘inventor’, so your pockets must be bottomless, right – RIGHT?

    These foibles (‘judicial mistakes’) are normally supposed to be part of the overall check-and-balances operation of the judiciary and to occur in a random or uncorrelated manner. When the results of such prosecutions nearly always harm the inventors’ interests involved with such maladroit precision; then, it is clear that due process has been subverted in favor of deliberately installed legerdemain disguised to appear as such ‘foibles’.

    We inventors are not mere legal toys to be cruelly abused by incompetent or corrupt Judges dishonoring the oaths and requirements of their lofty positions of power. Their overweening pride and rapacious intellectual envy of inventors is the true evil here, far beyond any so-called ‘evil’ that the false canard of so-called “patent trolls” could ever impose upon U.S. society or its economy.

    A mere gate erected about a privileged community will not keep the economic effects of this legal madness out forever. Since the economic ‘house’ is being burned down thus, here in this country: exit plans and golden parachutes will inevitably be dependent on foreign resources, that these darling ‘One World’ sycophants presume will be held ready for their convenience in a future crisis. They seem oblivious to the possibility that ‘when push comes to shove’, these might not be so readily available to these internationally entranced darlings (“sorry, no room left at this Inn”).

    Regardless (viciously so), the legitimate, beneficial and Constitutional interests of inventors are being swept away in the bilgewater tide of their gigantic hubris, troth to the course of their immense, purple-robed insecurities.

  7. You Know Who I Am January 23, 2017 5:46 pm

    The Latin root of “abstract” means “to draw away from”. IMO, the problem with information inventions is a misplaced focus on tangibility or MoT: instead the focus should be on the nature of the result of the information being processed.

    Abstractions can only exist in the human mind. No mind; no abstraction. If the result of a method is new, useful content- that is, information that has meaning, and that information is consumed by a human being, it’s 100% abstract. If the information is consumed by a non-human actor, it can’t be abstract even if intangible, because no human mind means no abstraction.

    This kills stupid patents on stuff like “ladies night” at the pub and millions of tiny, impossible to examine variations on GUI design and business methods, yet allows for patents on stuff like .mpeg standards, self-driving and robotic algorithms, and a universe of useful machine components. If the invention processes information without regard to content or meaning (e.g. a genuine computer improvement) it would not be abstract, because no meaning is being “drawn away” from the information.

    Section 100(b) should be modified to read: The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. The term “process” excludes any process which results in information consumed by human beings, excepting processes that improve information processing without regard to the particular content or meaning of the newly processed information”.

    As to Alice/Mayo, there is a need to construe inventions before 102/103/112 can even be applied, because choosing the right PHOSITA means narrowing the location of the invention to some art or endeavor, or at least the best art or endeavor to match the claims. Do the claims really implicate computers, or do they more implicate the things being modeled, or are they aspirations or observations, or combinations that no particular PHOSITA in any of the implicated arts would find non-obvious?

    Markman should be expanded for this purpose because it provides an adversarial stage rather than the absurdly limited 12(b)6 and random-walk we see today, which satisfies virtually nobody.

  8. step back January 23, 2017 6:53 pm

    it’s 100% abstract

    Sorry.
    That’s one of the #$%^& conclusions I’ve ever seen.

    Suppose I create a “machine” that scans your body and tells with 100% accuracy whether you have cancerous cells in your body or not and if yes, pinpoints where those cells are located.

    All this is “information” for consumption by the human mind.

    Maybe its “abstract” for you. But for the patient who accepts the results as “real”, gets the tumor excised before it metastasizes and therefore lives; it’s far from “abstract”.

    https://patentu.blogspot.com/2016/04/methods-of-using-tools-not-naturally.html

  9. Anon January 23, 2017 7:42 pm

    Mr. Snyder is back, but merely peddling the same ill- (actually non-) founded dreams and feelings.

  10. You Know Who I Am January 23, 2017 8:01 pm

    Step Back, you can read, one assumes? Can you distinguish between a machine and a method?

    If you create a “machine” that scans your body and tells with 100% accuracy whether you have cancerous cells in your body or not and if yes, pinpoints where those cells are located, and that machine uses some novel structure or principle of operation, of course you should haz your patent.

    If your method of detection of cancerous cells uses nothing but prior art technology + the scientific discovery that you can find markers of the cells in fingernail clippings where they were previously not thought to be, you have made a contribution to science, but you have not made a patentable invention.

    If you don’t want to disclose, then don’t; that’s why we have publicly funded basic research. If you want to keep it a trade secret, but people notice you want their fingernail clippings…there is nothing fundamentally wrong with business competition.

    The value of that information varies from person to person, and is always abstract, because it’s a fact about the world apprehended within a human mind.

  11. step back January 23, 2017 8:48 pm

    Perhaps one haz “alternative facts” from an alternative reality “natural” world? 😉

    http://www.fortytwotimes.com/wp-content/uploads/2012/02/I-can-Haz-Money.jpg

  12. Night Writer January 24, 2017 3:23 am

    @10 You know who this is: Yes, MM, we can recognize your nonsense a million miles away.

    >>If your method of detection of cancerous cells uses nothing but prior art technology + the scientific discovery

    There is the witch law. The operation of any machine could be described as this.

    The problem is that “scientific discovery” is an abstraction in your head with no clear definition or boundaries.

  13. Anon January 24, 2017 6:24 am

    Night Writer,

    That is not MM.

    That is Mr. Snyder, who has been banned from directly appearing on these threads because he would not heed the admonition to not “make up law.”

    Mr. Snyder continues to push his whole cloth created “dream,” and openly admits to his agenda being a personal one.

    He simply lacks – and does not care that he lacks – the appreciation of how patent law works, how patent law has worked, and how patent law must work.

    Yes, he is like MM in that he pushes his agenda without regard for such, but his agenda does center around a different focal point.

  14. step back January 24, 2017 6:37 am

    NW @10

    But then again, the intelligentsia on the Supreme Court are eminently toopid and believe (thanks 2 u know who) that progress in science and the useful arts is achieved with Lego blocks. You click together one “fundamental” building block with another and keep building with “these” basic tools of engine-oo-ity (choo choo) until you reach the goal. Its just like putting together the pieces of a jig saw puzzle you see. Patents might tend to “thwart” the progress of our whittle engine-oo-ity’s who tink they can (yes “we” can, yes “we” can). 🙂

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

  15. step back January 24, 2017 6:40 am

    Anon what are you doing up so early in the morning?

    Me. I couldn’t sleep on account of living in Trumptopia and anticipating 4 more years with her royal Googleness. 😉

  16. You Know Who I Am January 24, 2017 8:59 am

    NW wrong, wrong, and wrong

    – I am not MM

    “The operation of any machine could be described as this”

    No, machines are described as operating by mechanical or chemical changes harnessed via particular physical structures.

    “The problem is that “scientific discovery” is an abstraction in your head with no clear definition or boundaries”

    No, that is the problem with patenting information and logic consumed by human beings. If new, non-obvious, and disclosed logic or information is consumed by non-human actors, it cannot be abstract.

    As a side answer to Gene’s query about where the judicial exceptions are rooted?

    Clearly in equity, because each is concerned about the relative contribution of the putative inventor to the putative invention. Some people may not like it, but equity is welded into the Western legal philosophy and will never be expunged.

  17. step back January 24, 2017 2:50 pm

    YKWIA @16

    You are just plain wrong. Electronic apparatus has long been recognized as being within the class, machines. The electrons doth move. Electrons are physical matter just as are protons, neutrons, atoms and molecules.

    Just because you believe digital electronic computers operate by magic and abstraction doesn’t make it so.

  18. step back January 24, 2017 6:07 pm

    On a more technical level, one can have within a digital electronic computer (a “generic?” one) a hardwired circuit of logic gates that perform a Boolean logic function or; in its place, a hard burned ROM memory programmed with equivalent code or; in its place, a loadable RAM memory that gets loaded at boot time with the code of the ROM. The end results is substantially the same. The electrons coming out of the output terminals of the circuit don’t care how they were born. They do the same thing either which way.

    (Or … as the SCOTUS would (mis)understand it, either “witch” way.)

  19. You Know Who I Am January 24, 2017 7:24 pm

    Step Back, you can skip your Pavlovian response to “software patents”; I’m fine with them, so long as the information they process is not consumed by human beings. I don’t care to re-litigate In re: Nuijten because it’s meaningless to the question of abstraction, since Bilski established that tangibility is not a requirement for a patentable process.

    The point of a “generic” or general purpose computer designation is that the computer’s designers contemplated any combination of the designed instruction set running on the machine. I’m not going to re-litigate the whole “it’s a new machine” argument either, because on that score, the USSC and virtually all of the CAFC has moved past it. The matter is settled.

    Gene wants a workable, practical, equitable definition and meaning of “abstract” and I offered it.

    Ultimately this is a political power question, and as usual, vested interests will control the outcome. I’m offering a quality solution to the problem, and lots of smart people have already concluded that it ain’t so bad.

  20. step back January 25, 2017 2:25 am

    Yeah, “Pavlovian”. Ha ha. (Or should I say woof woof?) 😉

    If you truly believe in the teachings of the church of the holy generic, “general purpose” computer then you should reformat all your hard disks at the start of every day so they remain pure, generic and general purpose.

    As for me, I want my computer to remain “special purpose”, in other words, specifically customized to serve me and my specific and ever evolving needs. I do not own a generic and general purpose computer and I hope I never do.

    Also if I go seek out that proverbial 2nd year engineering student at a local Silicon Valley java hut to help me with my “abstract idea”, he or she also better not own a generic and general purpose computer. It better be programmed with latest customized software that allows that person to be as productive as possible, not a clean slate idiot.

    Only the SCOTeti dream of owning generic and general purpose computers. But then again, they don’t even know how to do email.

    You go ahead and garner your knowledge of how computers work from them. Me? I’m going elsewhere thank you very much. Woof woof (**)

    (** http://www.brilliantsocialmedia.co.uk/social-media/1440/ )

  21. Anon January 25, 2017 8:13 am

    Mr. Snyder,

    Your line of “ I’m fine with them, so long as the information they process is not consumed by human beings” remains tethered to the law as written by Congress, the history of that law or facts of the particular art fields impacted.

    All that you are doing (yet) is pursuing your personal agenda based on your emotional experience.

    Nothing more.

  22. Anon January 25, 2017 8:14 am

    The phrase “remains tethered” should read “remains untethered”

    mea culpa

  23. step back January 25, 2017 10:37 am

    The entire Supreme Court, large chunks of the CAFC and way too many of the liberal arts educated District Courts remain untethred from science and physical reality, preferring instead to believe in the magic of the mythical 2nd year engineering student and the fruitful DNA plucking tree.

    I suspect they (and YKWIA 19) all flunked Philosophy 101 because they never got the import of Plato’s Allegory of the Cave. The entire world/universe as we perceive it is made up only of the flickering shadow images in our heads. If you choose to believe in magic, mysticism and the shamans of Amicus Brief land, then yes there is abstraction, witchcraft, trolls and deceiving patent scriveners everywhere. YKWIA’s information-consuming “mind” is fine with that. Yes we do know who you are.

  24. You Know Who I Am January 25, 2017 11:34 am

    You keep saying “the law as written by Congress, the history of that law or facts of the particular art fields impacted” but nothing about which law, which facts, and which art fields.

    – as to the law, the judicial exceptions exist and are going nowhere. They are, without any doubt from virtually any observer, interpreted differently in different fora every single day.

    – which facts? something about electrons and new machines and software being equal to hardware? You ignore the most basic fact of the definition of software: defined by everyone in the field as instruction sets. Instructions are abstractions- that’s a fact Jack. I’m happy to compromise and recognize software as machine components- when the information the instructions direct the processing of is consumed by machines.

    – As to the art fields? That’s a real problem that information inventions present. Choosing the most appropriate art field is important. A physicist may or may not be the best PHOSITA for an online bingo game. That’s why inventions should be construed prior to statutory analysis, but not in a hacktackular 12(b)6 circus.

    – As to Plato’s cave? Every philosopher has to find a theory of mind, but even children recognize the gulf and the position of it between the universe within and the universe without. Seems like as fine a place to pin intellectual property or better than all of the arbitrary alternatives.

    As to untethered? I’m tethered to the hard work of spreading the word, which I will keep doing, and he who spreads it wider and better shall eventually reveal who moves the world and who indulges themselves.

  25. step back January 25, 2017 1:04 pm

    YKWIA @24:

    You ignore the most basic fact of the definition of software: defined by everyone in the field as instruction sets.

    Since when did you become “everyone“?

    You clearly do not know anything about resistors, capacitors, transistors; basic stuff like that. If you did, you wouldn’t spout the idiocracy that comes bumbling out from your abstract fingers hitting those abstract keys on the abstract keyboard of your abstract computer which then converts them into abstract electromagnetic signals that abstractly propagate through the abstract internet to reach and be read by your abstraction adoring audience.

  26. You Know Who I Am January 25, 2017 3:19 pm

    Listen if you don’t even want to use words that have a wide accepted meaning, what’s the point of any discourse?

    https://en.wikipedia.org/wiki/Software

    Computer software, or simply software, is that part of a computer system that consists of encoded information or computer instructions, in contrast to the physical hardware from which the system is built.

    http://www.webopedia.com/sgsearch/results?cx=partner-pub-8768004398756183%3A6766915980&cof=FORID%3A10&ie=UTF-8&q=software

    Computer Instructions or Data

    https://www.merriam-webster.com/dictionary/software?utm_campaign=sd&utm_medium=serp&utm_source=jsonld

    he entire set of programs, procedures, and related documentation associated with a system and especially a computer system; specifically : computer programs

  27. Gene Quinn January 25, 2017 3:34 pm

    YKWIA-

    Your myopic views are really entertaining.

    I find it interesting that you say that since software is just a set of instructions it is abstract. You go to great lengths to define software. Where is the attempt to define the one absolutely critical word here — abstract?

    If software is abstract can you please explain how you were able to leave a comment on this forum? I mean seriously, abstract means it doesn’t exist. So if your software doesn’t exist on your machine then how could you leave a comment or even visit this website?

    The problem here is you think you know everything and you don’t really know anything, and that is a fact jack.

    -Gene

  28. step back January 25, 2017 3:54 pm

    YKWIA is one of those people WDKHWRTWTPO

    (Who Don’t Know Heck With Respect To What They Pontificate On)

    Like most everything else in our world there is an aspect of software where we try to mathematically or otherwise “model” the reality of real software being executed by real world specific computers.

    Unsophisticated people often fail to discern the difference between the reality and the model. That is why repeatedly they have to be reminded:

    1. The map is not the terrain.
    2. This is not a pipe.
    3. In your dreams is not what is actually happening.
    4. Models by definition are not accurate and may mislead.

    http://rebloggy.com/post/representation-magritte-meta-simulation-the-treachery-of-images-scott-mccloud-th/84236432128

    If it weren’t for the reality of physically encoded symbols being executable by energy driven physical state machines, most of us wouldn’t bother to have the mathematical side of computational theory.

    The existence of mathematical computation theory does not make the real, tangible, physical, obeying-the-laws of thermodynamics, chemistry, etc. machines and the physical components that encode the “software” go away.

    He WDKHWRTWTPO merely dreams that he made it all go away.

  29. You Know Who I Am January 25, 2017 3:55 pm

    Gene, please identify the comment where I say that software is abstract, so therefore one should not be able to patent software.

    I said information is abstract, and all information is abstract. You really want to argue that point?

    If you want to patent information & logic, is there way way to determine which abstract information and logic is too abstract to patent?

    I say there is. “Abstract” as intangible, per Bilski, is not enough to preclude eligibility. But “abstract” as drawing meaning from information is as clear as a bell: human consumption is the obvious bright line, IMO.

    I’m pro-software patent, so long as the resulting information is not consumed by people, because then it’s content, and if you want intellectual property protection for content, copyright will do it.

    I like robots and self-driving cars and everything else modern tech can deliver, but there has to be a line because what we have now is effed beyond repair. I know we agree on that.

  30. You Know Who I Am January 25, 2017 3:58 pm

    PS, I’ve been in the software business for 25 years, thousands of customers, millions of lines of code sold. Y’all have never been in the business at all. Consider your words.

  31. step back January 25, 2017 6:17 pm

    YKWIA @30

    You live in an “alternative facts” world if you believe none of us have ever been in the business. I was building and programming computers before you were in the diapers stage of your career.

    BTW, I agree with you that inventiveness in the expressive arts (music, dance, novels) should not be patented because it is not part of the “useful” arts. We don’t need 101 to block that. It is “obvious” under 103 that a novel musical piece should be recorded digitally on a CD. The CD is an article of manufacture. It is novel. But it is also “obvious” and that is one reason why it does not get patented.

    A novel and nonobvious piece of functional software encoded on a CD does not change (“transform”) the CD into not being a “useful” new and nonobvious article of manufacture. Section 101 says the inventor of the latter may apply for a patent.

  32. You Know Who I Am January 26, 2017 9:06 am

    “inventiveness in the expressive arts (music, dance, novels) should not be patented because it is not part of the “useful” arts”

    Are video games useful? Training videos? Is not about utility, it’s about FUTILITY.

    You can’t examine the world’s literature when you set out to write a book or a movie. If you copy too closely, intentionally or not, you take your chances that a rights holder will come forward, and the situation is judged sui generis. It’s the same with software: the industry would grind to a halt if every line of code had to be checked against every in-force patent, and then patented itself to protect it once in the stream of commerce.

    Information inventions are infinitely more malleable than physical inventions; applying the same concepts of obviousness and examination is a practical impossibility and an economic nightmare. That’s not a theory or prediction, it’s a lived experience of the last 20 years.

    That’s why your beloved patent system has been so violently twisted and turned and why that will continue until the cancer of information invention patents is brought under control. None of the stakeholders, big or small are immune and many are vastly influential and trying to feel their way offensively and defensively around this irrational no-win situation.

    My test IS rational, and it separates the fundamental subjectivity of human use of information from the fundamental objectivity of machine use.

    Forget the straw men of me suggesting software is abstract or that I’m against patenting information processing machines or all of the tired script that y’all use about maps and terrain and models.

    If you look with fresh eyes, you would see that what I am suggesting would restore patents, not eviscerate them, because we simply don’t need them for software that people use and can’t have them without going to a registration system at best, and the possibility of destroying the industry at worst.

    Copyright covers content and subjective expression, which is exactly what much of the software used by people is, quite well enough to go forward so producers are not naked to theft. The Oracle Java case shows exactly how powerful and applicable it can be.

    Meanwhile, software that machines use can hardly be thought of as anything but machine components regardsless of your philopsophy about abstraction.

    Y’all should see a good deal when one is offered and get with my program. I’m not going to stop until I stop.

  33. Gene Quinn January 26, 2017 10:43 am

    YKWIA-

    You ask: “Are video games useful?”

    ANSWER: Yes. Clearly they are within the meaning of 101.

    You say: “the industry would grind to a halt if every line of code had to be checked against every in-force patent, and then patented itself to protect it once in the stream of commerce.”

    RESPONSE: Oh yes, the typical refrain from one in the software industry who is completely unfamiliar with both business and patent law. You think software is special and that coders shouldn’t have to worry about patents. Of course, that is not the law. Software is not some special situation. All businesses engaged in creation must either take into account the possibility that their actions will infringe or suffer the consequences of that indifference. The fact that coders think they are special and should be exempt is nonsense. Furthermore, you do not have to patent anything to put it into the stream of commerce, and you do not have to patent anything to prevent others from obtaining a patent. So please take some time to inform yourself. If you do become better informed your views will have to change because it is clear your opinions are formed upon a foundation of ignorance with respect to the law.

    You say: “Forget the straw men of me suggesting software is abstract or that I’m against patenting information processing machines or all of the tired script that y’all use about maps and terrain and models.”

    RESPONSE: Interesting. You are proved wrong and now you want us to forget that your analysis was defective, first level and exposed you as not understanding what you were talking about. Convenient.

    You say: “Copyright covers content and subjective expression, which is exactly what much of the software used by people is…”

    RESPONSE: Extremely ignorant. Software is not subjective, which you would understand if you ever stopped for one second to think about any of the drivel you spew.

    You say: “Meanwhile, software that machines use can hardly be thought of as anything but machine components regardsless of your philopsophy about abstraction.”

    RESPONSE: You had previously said that software was abstract. Now you are saying that software is inextricably intertwined with a machine. Interesting. Now I’m convinced you don’t know what you are talking about, or that you are just trolling here.

    You say: “I’m not going to stop until I stop.”

    RESPONSE: Well, not exactly true. You are dangerously close to being seen as getting in the way of a thoughtful discussion of these matters.

  34. You Know Who I Am January 26, 2017 10:57 am

    Gene, you build strawmen so fast that I can’t type fast enough to take them down. You have a reputation as an ideologue, but I’m sure you take pride in that.

    “You are proved wrong” Comedy gold there my friend. This thread has run out of steam.

    I’ll see y’all around the playground another time.

  35. Gene Quinn January 26, 2017 11:36 am

    YKWIA-

    You say: “you build strawmen so fast that I can’t type fast enough to take them down.”

    RESPONSE: That is obviously incorrect and nonsense. What I write is fact based, corroborated and heavily cited. My track record on predictions is extraordinarily good, which you would know if you were paying attention.

    You say: ” You have a reputation as an ideologue, but I’m sure you take pride in that.”

    RESPONSE: The funny thing is you are called an ideologue by those who disagree with you. Interestingly, although people disagree with me they never consider themselves an ideologue, which is just hypocrisy in action. Unlike those who don’t admit they are biased ideologues, I admit my bias is a pro-patent bias.

    You say: “I’ll see y’all around the playground another time.”

    RESPONSE: Highly doubtful. Without being able to substantively contribute you just get in the way of thoughtful discussion.

  36. step back January 26, 2017 11:42 am

    playground“?

    You lost and now you’re grabbing your Nerf(TM) balls and limping back home in a huff?

    http://1.bp.blogspot.com/-Ncb4fFeUNRA/UzmqKMCMTgI/AAAAAAAAETA/Ur6kTpcGhds/s1600/CamoFacePaint.jpg

  37. step back January 26, 2017 12:07 pm

    YKWIA @32

    Information inventions … malleable … physical inventions

    Here lies you major misunderstanding about the “real” wold.
    There is no such thing as “information” per se (at least not in the real world that many of us occupy).

    All the “information” that we humans create, store and consume is encoded as patterns of real physical stuff, be it differently aligned magnetic domains in the case of magnetic hard disks or different levels of trapped charge in real transistors if you are talking about floating gate type solid state memory (SSD) or active optical devices if you are talking computer displays.

    When you read this message on your computer screen, you are not consuming raw “information”. Your eyeballs are receiving light rays (photons) from little light emitting dots (e.g. LEDs) on the screen, your brain is very quickly creating an internal model of what it thinks it’s looking at and then, ultimately you get a false feeling that you have consumed “information”.

    http://bigthink.com/think-tank/beauty-is-in-the-brain-of-the-beholder

  38. step back January 26, 2017 12:32 pm

    Gene @35,

    I don’t think YKWIA @32 “got in the way” of thoughtful discussion.

    He merely provided a classic example of one who is trained only in the mathematical side of computation theory and has no training in the hard physical sciences including physics, chemistry and biology. Hence he is convinced that something referred to as pure/abstract “information” actually exists in the real physical world. It does not.

    https://online.ist.psu.edu/law101/topic1a

  39. Gene Quinn January 26, 2017 1:26 pm

    I see your point Step. I guess why I said that was for several reasons. First, what he wrote on the threat increasingly said nothing of substance. Second, rather than answer the questions raised he chose to ignore them and asked us to ignore his statement in the first place. Admittedly, he would have been unable to substantively address the points I raised because what I wrote was correct and what he wrote was incorrect, but the level of arrogance in the face of being so utterly wrong gets very annoying very quickly.

  40. step back January 26, 2017 3:28 pm

    It’s not arrogance.

    It’s just irrational and unscientific feelings coupled with ignorance.
    We all have such irrational feelings.

    For example the SCOTUS feel they have “minds” and that computers and minds (with our without pencil and paper) are the same thing!

    Hat tip to Gregg Ahronian for recently pointing out that the organic human brain and transistor driven computers are not same things:

    https://aeon.co/essays/your-brain-does-not-process-information-and-it-is-not-a-computer

  41. You Know Who I Am January 27, 2017 3:36 pm

    I thought y’all might like to read more in depth thinking about this topic from a variety of viewpoints (although you naturally and aggressively recoil from anything that does not conform with your own). My thoughts are more detailed there as well, but make the same basic points.

    Nobody has “proven” anything because smart people are all over the map on this clearly political question.

    While I’m here to drop this link, Step Back; if you want to argue that information is not abstract because neurons are involved with hosting thoughts and therefore thoughts are tangible, you are just being churlish. That position has no support anywhere that I can see.

    The USPTO Comments on Roundtable 2 on Subject Matter Eligibility:

    https://www.uspto.gov/patent/initiatives/patent-subject-matter-eligibility-roundtable-2

  42. step back January 27, 2017 11:51 pm

    Nobody has “proven” anything ……… smart people are all over the map on this clearly political question.

    YKWIA @41

    You appear to believe that everyone can have their own “alternative facts” in their privately owned “alternative universes”.

    FACT: This is a patent law blog.

    FACT: US patent law is encoded in Article 1, section 8, clause 8 of the US Constitution and in Title 35 of the US Code (e.g. 35 USC 100, 101, 102, 103 and 112 being the most important sections with respect to definitions and examination of patent applications in the USPTO)

    FACT: 35 USC 101 is a statute passed by the US Congress. It states, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title [meaning 35 USC].”

    FACT: The US Constitution provides for separation of powers and vests the legislative power in the hands of Congress, not in the Supreme Court.

    What we have been discussing here is the grabbing of illegitimate power by the Supreme Court, by the lower federal courts and by the US Patent Office to write their own laws, the so-called Alice/Mayo framework laws that transform a solid MRI “machine” into an abstraction.

    What we have been discussing here is that they (SCOTUS and minions thereof) have also taken over the fundamentals of science by conjuring up these so-called “fundamental building blocks.”

    Yes in one sense this is politics because it involves the grabbing of power. But it is also law in that it raises the question of the Constitutionality of this power grab. And it is also a question of how “smart” these people are because they are destroying the American patent system, tearing down the fabric of America itself (obliterating separation of powers) and they are too full of themselves to understand that this is what they are doing. Forgive them (not) for they know not what they do.

    If you are happy with this dismal state of affairs, then good for you. Others here are not.

    https://patentu.blogspot.com/2016/12/the-fake-law-fake-science-and-fake.html

  43. step back January 28, 2017 10:34 am

    Your bottom line:

    I HAZ ALTERNATIVE FACTS

    https://patentu.blogspot.com/2017/01/you-have-proven-nothing-because-i-have.html

  44. Anon January 28, 2017 5:28 pm

    Mr. Snyder,

    Your line of “(although you naturally and aggressively recoil from anything that does not conform with your own)” is equally applicable to you when someone reminds you of the law, the history of the law, or pertinent facts surrounding this aspect of statutory law.

    I do hope that you take note of that.

  45. Anon January 28, 2017 5:43 pm

    Mr. Snyder,

    Your statement of “I am not a lawyer, but I have personal experience with full-blown patent litigation, settlement negotiations with multiple patentees, and the pursuit/underwriting of IP insurance. As sometimes happens with persons who develop dangerous medical conditions, they become vigilant learners about their particular disease, from time-to-time even rivaling doctors and other trained experts in their knowledge and dedication to improving treatment and finding cures. Such has been my journey toward insight on how to best manage the problems that information inventions present to our patent system.

    is pure self-serving hogwash.

    You have done nothing more than glom onto your preconceived notions and ignored the actual workings and intent of those workings of patent law.