Could Have, Should Have, Would Have

By David Wanetick
September 17, 2018

Charles H. Duell was the Commissioner of U.S. patent office in 1889. Commissioner Duell is widely quoted as having stated that the patent office would soon shrink in size, and eventually close, because…“Everything that can be invented has been invented.”

If anyone anywhere on our planet espoused the view that there is nothing left to invent today, he would be unceremoniously laughed out of the room. The notion that innovation continues to change the world is nearly universally accepted. Even Karl Marx said, “The only constant is change.” However, such troglodytian sentiments are fodder for endless reflection at the United States Patent and Trademark Office.

Patent examiners deem inventions to be “abstract” if they are too revolutionary or “obvious” if the invention is less than revolutionary. Those patent applications that survive such prosecutorial rejections are likely to be clipped if they become subject to inter partes review challenges. For example, in Ex parte Hiroyuki Itagaki, the Patent Trial and Appeal Board ruled that a magnetic resonance imaging (MRI) machine is an abstract idea and thus patent ineligible.

I can largely understand the merits of rendering laws of nature and natural/physical phenomena ineligible for patent protection. (There is, however, tremendous room for clarity as to what exactly is patent eligible.) But I cannot understand the logic of rejecting patent applications because a series of people skilled in the art could have (should have or would have) sequenced their knowledge in a manner similar to the applicant but never did so.

Suppose Mrs. Johnson from San Diego, California assigned all of her third-graders with the task of writing an eight-page term-paper. Little Johnny worked diligently preparing his term paper on autonomous automobiles, the driver of his imagination. Reading and writing were never easy for this dyslexic child. Nevertheless, he preserved. When the other little San Diegans were immersed in playing Fortnite and grazing on Doritos, little Johnny spent hours researching, composing, editing and proofreading his eight-page report.

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His labors bore fruit: Little Johnny received an “A” on his report. The teacher was so impressed with little Johnny’s term paper that she praised him in front of his classmates. Mrs. Johnson seized the moment to motivate the thirty eight-year olds under her care. She told the students, “With enough hard-work and focus high hurdles can be overcome. To achieve goals, sacrifices are often required. Research leads to learning. While learning is a reward in itself, learning acts like compound interest; the more you know, the further you can go.” While all of the eight-year olds understood Mrs. Johnson and committed to work harder in school, a cabal of their parents unsheathed their swords.

Just a few days before Johnny’s teacher issued her report cards the father of one of little Johnny’s classmates—who believes that issuing different grades to different students is inherently unfair and classist (or in his mind, even smacks of racism)—protested Johnny receiving an “A” on his paper to San Diego’s School Board. This academic redistributionist made his case for depriving little Johnny of his “A” by arguing that little Johnny’s paper was obvious in view of:

Page 1 sharing similarities in terms of brakes with a report prepared in 1972 in Spanish by little Carlos in Chile;

Page 2 sharing similarities in terms of gas pedals with a report prepared in 1931 in Arabic by little Fatima in Jordan;

Page 3 sharing similarities in terms of seats with a report prepared in 1868 in Russian by little Svetlana in Russia;

Page 4 sharing similarities in terms of doors with a report prepared in 1903 in Japanese by little Hinata in Japan;

Page 5 sharing similarities in terms of mirrors with a report prepared in 1982 in Greek by little Konstantinos in Greece;

Page 6 sharing similarities in terms of a boomerang with a report prepared in 1957 in Swahili by little Barongo in Kenya;

Page 7 sharing similarities in terms of motion detection sensors with a report prepared in 1961 in Korean by little Seo-hyeon in South Korea; and,

Page 8 sharing similarities in terms of an antennae with a report prepared in 1995 in Hebrew by little Nimrod in Israel.

Perhaps because a posse of parents primed to pounce to revoke little Johnny’s “A” by waging multiple attacks on that child’s work product, the San Diego School Board accepted the father’s petition. The Board overlooked the fact that none of the children cited above produced a term-paper even faintly resembling little Johnny’s in its entirety. They also skirted the issue that even if all of the other children wrote their papers in English, those papers still couldn’t possibly flow together as seamlessly as little Johnny’s paper. The narrative just wouldn’t work. Nevertheless, the School Board agreed with the initial petitioner and rescinded little Johnny’s “A”. Mrs. Johnson was threatened with removal from her position should she ever again dare praise a sham creator. Little Johnny’s parents were forced to pay the costs of the hearing.

This litany of events sapped little Johnny’s creativity and motivation. The librarian become less helpful to little Johnny and his friends no longer agreed to review his writing. Little Johnny’s writing abilities showed so much promise but were extinguished before his work saw the light of day.

It is irresponsible for adults to give children who fail to complete their work credit based on the excuse that the children could have, should have, would have completed their assignments. It is much more inequitable for the U.S Patent Office to deprive inventors of the credit they deserve (in the form of patent allowances) because some conjured up combination of disconnected individuals—who have little, if any, temporal or linguistic ability to communicate with one another—could have, should have, would have eventually produced the claimed invention.

This is article is an excerpt from The Plight of the Patentee.

 

Images Source: Deposit Photos

The Author

David Wanetick

David Wanetick is the Managing Director of IncreMental Advantage, LLC. He is a world-renowned authority on the issue of intellectual property valuation. His clients include law firms; emerging, mid- and large-sized companies; national laboratories; technology transfer offices; inventors; venture capitalists and private equity firms. The valuations David performs are primarily conducted in the context of negotiating licensing agreements, mergers and acquisitions, patent sales, capital raises and litigation support. He developed and runs the Certified Patent Valuation Analyst designation.

David is the author of The Strategic Negotiator: A Manual for Negotiating at the Elite Level. For more than 20 years, David has negotiated licensing transactions, spin-offs, capital raises, joint-ventures, and exits alongside and against Fortune 500 companies, government entities, universities, commercial bankers, private equity firms and venture capitalists. David is the Chief Executive Officer of The Institute for Strategic Negotiations, which maintains the world’s largest library of negotiating courses.

For more information or to contact David, please visit his Company Profile Page.

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 35 Comments comments.

  1. Concerned September 17, 2018 12:53 pm

    My patent examiner told me 3 times in phone interview that my application had patentability. Also told me to argue BASCOM.. And so I did. Then came another final rejection.

    Does the USPTO ever grant software patents? Or must the application be remanded from the courts to get the approval?

    Want a story for your book? Can I hold on long enough until the madness stops… an article on this forum dated September 13, 2018.

  2. Pro Say September 17, 2018 2:40 pm

    Thanks David.

    Your excellent analogy would be humorous … were it not so painfully true.

  3. Josh Malone September 17, 2018 3:28 pm

    Thank you David. This is exactly the plight of the modern American inventor.

  4. in-house counsel September 17, 2018 3:49 pm

    “[I]n Ex parte Hiroyuki Itagaki, the Patent Trial and Appeal Board ruled that a magnetic resonance imaging (MRI) machine is an abstract idea and thus patent ineligible.”

    This is wrong and either (1) reflects a fundamental misunderstanding of the law re: 101 or (2) is an attempt to mislead others. Neither is a good look.

    The PTAB didn’t decide that an MRI machine is an abstract idea. It decided that the claim was directed to an abstract idea and that the claimed generic MRI hardware wasn’t “enough” to move the needle back to eligibility. The PTAB decided that this claim to an MRI machine is ineligible, not that an MRI machine is abstract. There’s a clear distinction between the two that isn’t difficult to understand. Alice itself says that the fact that something exists in the real world isn’t dispositive of eligibility. This PTAB decision follows directly from that.

    Now, is this a good thing? No, it’s a mess of a test that should be abolished. But misstating the facts won’t get you very far, it will make you look bad.

  5. Mike September 17, 2018 4:18 pm

    Someone share this awesome analogy with Gorsuch. Perhaps he can enlighten the other justices on the bench who spit law. The pendulum needs to be adjusted for all inventors.

  6. Gene Quinn September 17, 2018 7:51 pm

    in-house counsel-

    Whether you like it or not, the PTAB decided in Itagaki that the claimed MRI machine was an abstract idea. Finesse it any way you like, but quote you don’t like is a perfectly reasonable characterization of the ruling.

  7. Anonymous September 18, 2018 5:23 am

    Well said, that man! I am constantly astonished at how the USPTO can piece together four, five or even six citations, take bits from each of them and then say that this assembly renders the invention obvious – and say this with a completely straight face. It appears that Alexandria is a hothouse for developing inventive geniuses – perhaps they should move some of them on to Industry to benefit the country as a whole, rather than greedily hog them all

  8. Joachim Martillo September 18, 2018 8:35 am

    Gene@6 September 17, 2018 7:51 pm

    The Itagaki decision is nonsense (How can a recited MRI machine not be significantly more than a judicial exception?), but SCOTUS decisions in Alice and Mayo are logically inconsistent. If SCOTUS decides that p is true and then holds that ~p is true, the PTAB and the CAFC can make any judgment and still follow SCOTUS guidance. I discuss in Did SCOTUS Botch Its Own Test in Mayo v. Prometheus and Break the US Patent System?.

    Nevertheless, the Itagaki MRI camera was completely obvious, and those claims should have been found unpatentable and not patent-ineligible. The CAFC should have remanded and made the PTAB write a better decision, but unfortunately SCOTUS is generating rulings from the Twilight Zone.

    All the Justices but Gorsuch should acknowledge their incompetence and resign in shame.

  9. Glen Duff September 18, 2018 10:13 am

    Thanks David for a glimpse into your book. I am looking forward to reading it and learning that your efforts (et al) have moved the pendulum back to the side of American Innovation being respected again!

  10. Ternary September 18, 2018 10:13 am

    “Nevertheless, the Itagaki MRI camera was completely obvious.” Where did you get that from? Not from the file wrapper. In fact the Examiner was reversed on the aspect of obviousness of “multi-station MRI.”

    A key aspect was the classifying of different machine parameter based images from different stations in an MRI machine and combining these images to a display as a single-body image.
    The parameters as claimed are machine parameters, not image parameters.

    Like a broken record, the Board kept repeating that “classifying is an abstract idea” like: Instead of showing an improvement to a multi-station MRI, the
    evidence reinforces our view that the focus of claim 1 is on classifying images in a particular orientation.

    The Board wanted to reject (perhaps, like you, they found the invention undeserving) so they applied the Alice magic to let it disappear.

  11. Marj September 18, 2018 11:06 am

    The PTO promotes the infinite monkey theorem – a monkey hitting keys at random on a typewriter keyboard for an infinite amount of time will eventually type out the complete works of William Shakespeare. Therefore, William Shakespeare’s work is without merit.

  12. Jianqing Wu September 18, 2018 11:10 am

    Good article. Most 103 analyses are absurd. Examiners work like super lnventors by using the disclosures as maps.

  13. Joachim Martillo September 18, 2018 12:45 pm

    I am an expert in medical imaging technology. I helped develop the PET scanning system at MGH. In the old days the Itagaki device (pre-1952) would have been found ineligible under the patent law Doctrine of Aggregation. I discuss Reckendorfer v. Faber, 92 U.S. 347 (1875) in SCOTUS Made Rubber-Tip Pencil into Hemlock for US Patent System.

    The same logic applies under post-1952 non-obviousness and KSM. Unfortunately Rubber-Tip Pencil overshadows the much better written Reckendorfer because Rubber-Tip Pencil refers to an idea of itself, which SCOTUS and many judges pounced on as support for abstract idea findings.

  14. Joachim Martillo September 18, 2018 12:50 pm

    BTW, if the PTAB and the Examiner can’t justify the rejection, the Applicant is entitled to an issued patent. That’s the law. If later someone objects, he can hire me as an expert in DC or in a PTAB Review proceeding. The USPTO must follow the law. The USPTO does not have policy-making or legislative authority.

  15. Anon September 18, 2018 1:31 pm

    in-house counsel @4,

    This is wrong and either (1) reflects a fundamental misunderstanding of the law re: 101 or (2) is an attempt to mislead others. Neither is a good look.

    Do you know what is an even worse “look?

    Pretending as you do that the state of law vis a vis 101 is clear, or NOT mired in serious misunderstandings and overplays of judicial muckery.

    It is NOT as you put it EITHER of a fundamental misunderstanding (understanding the law as written by Congress as NOT being the law put in play by the Court takes critical thinking and is the opposite of what you imply) OR an attempt to mislead (the misleading is going on in the opposite direction).

    Compare and contrast these four sentences of yours:

    1) “The PTAB didn’t decide that an MRI machine is an abstract idea.

    2) “It decided that the claim was directed to an abstract idea and that the claimed generic MRI hardware wasn’t “enough” to move the needle back to eligibility.

    3) “Alice itself says that the fact that something exists in the real world isn’t dispositive of eligibility.” and

    4) “This PTAB decision follows directly from that.

    Finally consider these two sentences of yours:

    The PTAB decided that this claim to an MRI machine is ineligible, not that an MRI machine is abstract. There’s a clear distinction between the two that isn’t difficult to understand.

    You yourself “claim” a clear distinction, yet fail to make any such distinction, and your statement above at 3) and 4) have the opposite meaning of what you think those statements mean. You appear to want to eliminate the thing as not being the thing claimed.

    You appear to have stopped your own critical thinking and have failed to understand the bigger picture (and exactly why there is NO such “clear distinction”).

    Even if we put aside for the moment the fact that you glibly accept a plethora of undefined terms (and how “clear” can you really be given the fact that key terms ARE undefined?), you “miss” on the logic of your own sentences.
    From 1), the PTAB very much DID decide that an MRI machine was an abstract idea. Yes, the “reasoning” offered was that the claim (which was TO A MACHINE) was “directed to” something, and that something else was not enough (this being your “2),” and the court’s rather undefined view – to be another undefined “state” of “enough.”).

    But make NO mistake – the claim was STILL to a machine, and it is the claim (as TO that machine) WAS deemed “abstract.” Your statement of 3) is something that you appear to not really grasp the import.

    You appear to have fallen for the fallacy of “directed to” BEING the claim. What this amounts to is the very “attempt to mislead” that the Court has engaged in (and which, by proxy and your support, YOU are engaging in). Any sense of BLINDLY following a “directly flow from” without engaging in an attorney’s ethical duty to NOT place the Supreme Court above the Constitution is WHAT should be criticized.

    The bottom line – and the actual point of clarity – is that 3) IS saying that a claim to an actual physical item may be “considered to be” (or even “considered to be directed to”) a NON-PHYSICAL item based SOLELY on the whims of a judge (or Justice). THIS is a fundamental misunderstanding of reality AND an elevation of the Justice’s OWN desires over the words of Congress.

    Claims must be one of four statutory THINGS. To engage in the type of “well, we know what is ‘really’ being claimed” writes out of the statute those four THINGS. See 35 USC 101, See 35 USC 100(j), See 35 USC 112(b).

    Let’s be abundantly clear: the minute ANY “gisting” and “abstract” “directed to” is going on is the minute that the Court has gone rogue and violates the clear direction from Congress as to exactly whom has the authority (and responsibility) for defining exactly what the invention is. For ALL of the Court’s “protests” against “scriviners,” it is the Court itself that has engaged in scrivining (of statutory law, whose SOLE Constitutional allocation of power to write that law is not to the judicial branch).

  16. Joachim Martillo September 18, 2018 3:12 pm

    Here’s Itagaki Claim 1.

    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 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 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.

    According to Wikipedia:

    The first digitally filmed and post produced feature film was Windhorse, shot in Tibet and Nepal in 1996 on a prototype of the digital-beta Sony DVW-700WS and the prosumer Sony DCE-VX1000. The offline editing (avid) and the online post and color work (Roland House / da Vinci) were also all digital. The film, transferred to 35mm negative for theatrical release, won Best U.S. Feature at the Santa Barbara Film Festival in 1998.

  17. in-house counsel September 18, 2018 3:41 pm

    Anon, you’re being incoherent. The court didn’t hold an MRI machine to be abstract. If you disagree provide a pincite.

    There’s a difference between being directed to an abstract idea and being ineligible. The former is part 1 of the Alice test and the latter is the result of the Alice test. (And the former does not necessarily lead to the latter.)

    The Federal Circuit has upheld claims against 101 challenges that it found were directed to abstract ideas yet nevertheless included “significantly more” and were therefore eligible. But I’m not seeing anyone whining about the court holding those machines to be abstract. (Oh yeah, because the claims were found eligible.)

    It’s a simple distinction and a simple test when viewed from 10,000 feet. What’s difficult is that SCOTUS left the lynchpins of the test – “abstract idea” and “significantly more” – undefined. That’s what makes it “a mess of a test that should be abolished,” as I wrote above.

    I’m on the anti-Alice side, but am so sick and tired of what seems to be people’s fundamental inability to understand the mechanics of the test. If I hear one more person blather on about how something should satisfy the Alice test because it’s a machine they can sit on I may just lose it. Certainly don’t say that cr*p to your clients, because they’ll fire you. I have.

  18. Gene Quinn September 18, 2018 4:09 pm

    in-house counsel:

    You say: “The court didn’t hold an MRI machine to be abstract.”

    You also say: “so sick and tired of what seems to be people’s fundamental inability to understand the mechanics of the test.”

    What is disturbing is you claiming superior intellectual high ground and indignation. Fact, the PTAB said the claimed MRI machine covered an abstract idea. Fact, an MRI machine is not an abstract idea. Fact, there are two parts to the Alice/Mayo framework. Fact, if you or the judges on the PTAB went into a pitch-black room with an MRI machine and walked around you’d soon discover that the claimed MRI machine at a minimum added significantly more than anything that could have possibly been abstract because the MRI machine itself is NOT abstract.

    And if you want to lose it go right ahead. Tangibility is not enough because the Supreme Court doesn’t understand anything about what they are doing, which is exactly why you can have a PTAB full of chemically trained APJs who know nothing about computers decided that a claim to an MRI machine is directed to an abstract idea, which is asinine — just like your ridiculous protestations.

    What’s next? The self driving automobile claims are directed to abstract ideas? Oh, of course not! Google is inventing in that area and a car is tangible. Very different than an MRI machine I’m sure.

  19. Joachim Martillo September 18, 2018 5:01 pm

    I am having some difficulty in posting the rest.

  20. Joachim Martillo September 18, 2018 5:02 pm

    Cinematography uses multiple stations. Post-production means selecting and categorizing by machine parameters.

  21. Joachim Martillo September 18, 2018 5:03 pm

    The Joint Photography Experts Group standard (JPEG) is the most common file format for storing image data. Other file types include Tagged Image File Format (TIFF) and various Raw image formats.

    Many cameras, especially high-end ones, support a raw image format. A raw image is the unprocessed set of pixel data directly from the camera’s sensor, often saved in a proprietary format. Adobe Systems has released the DNG format, a royalty-free raw image format used by at least 10 camera manufacturers.

    Raw files initially had to be processed in specialized image editing programs, but over time many mainstream editing programs, such as Google’s Picasa, have added support for raw images. Rendering to standard images from raw sensor data allows more flexibility in making major adjustments without losing image quality or retaking the picture.

    Formats for movies are AVI, DV, MPEG, MOV (often containing motion JPEG), WMV, and ASF (basically the same as WMV). Recent formats include MP4, which is based on the QuickTime format and uses newer compression algorithms to allow longer recording times in the same space.

    Other formats that are used in cameras (but not for pictures) are the Design Rule for Camera Format (DCF), an ISO specification, used in almost all camera since 1998, which defines an internal file structure and naming. Also used is the Digital Print Order Format (DPOF), which dictates what order images are to be printed in and how many copies. The DCF 1998 defines a logical file system with 8.3 filenames and makes the usage of either FAT12, FAT16, FAT32 or exFAT mandatory for its physical layer in order to maximize platform interoperability.[43]

    Most cameras include Exif data that provides metadata about the picture. Exif data may include aperture, exposure time, focal length, date and time taken, and location.

    Note that the DCF specification was defined in 1998 ten years before the patent application in question was first filed.

    As far as I can tell, the multistation MRI scanner improvement, which is being claimed, consists solely of functionality that had existed for years in cinematography and consumer digital cameras and that was certainly obvious to a PHOSITA to combine into an MRI scanner digital imaging system.

    Digital imaging is a single art whether medical imaging, cinematography, consumer digital photography, or scanners. Engineers working in this art keep track of all digital imaging developments.

    What was the motivation to combine? We used to have carry tapes from scanner lab to the computer room — something that was totally irritating. We combined data to create slices at various angles and thickness because the doctors demanded it. That math is not hard (really “pencil and paper” calculations).

    Was device implementation obvious without undue experimentation? Yes. It just required moving the data from the MRI camera to a computer to create the desired images in the desired file structure. There were numerous ways to do so already in the 1980s.

    A 103 (a) rejection of the claims of the patent application in question is certainly appropriate. The Examiner did not use the appropriate prior art to create his obviousness rejection.

  22. Night Writer September 18, 2018 5:04 pm

    @4 in-house

    Actually in-house it is interesting that what you are doing is using the twisted logic of Alice to form your own ideas. The MRI machine as a whole was found to be an abstract idea. It was just done with a two part process that you mimic in your argument to argue that it wasn’t found to be an abstract idea.

    Look at the big picture. There is a claim to an MRI machine. Now tell us how it wasn’t found to be an abstract idea again without the twisted logic.

  23. Anon September 18, 2018 7:33 pm

    Gene and Night Writer,

    In-house counsel clearly does not even recognize the problem with how the Supreme Court has so seriously mashed up the law concerning 35 USC 101.

    So much so that he thinks my explanation is incoherent while BLINDLY accepting the undefined use of terms to somehow BE coherent.

    Tell me, in-house, what is the definition of “significantly more” that turns a “directed to” “GIST” into some THING that the statutory category requirement MANDATES that a claim satisfy?

    Do you even understand what the statutory categories mean, or why they are significant, or even what it means to claim a machine?

    As to “It’s a simple distinction and a simple test when viewed from 10,000 feet. What’s difficult is that SCOTUS left the lynchpins of the test – “abstract idea” and “significantly more” – undefined.

    This is the second time that you have made a broad – and unsubstantiated – claim as to “simple distinction” without actually saying anything meaningful, let alone something meaningful in view of the law as written by Congress (as opposed to the scrivening of the Court).

    Leaving critical terms undefined is NOT just “difficult,” it makes a LIE of your claim of “simple.” “seems to be people’s fundamental inability to understand the mechanics of the test.” – you cannot have a “mechanics of the test” given the undefined terms; unless of course, you are perfectly fine with a “mechanics” that is entirely meaningless.

    Your problem is that you appear to not understand what 101 is about at all, and you have merely accepted at face value the lack of understanding from the Court as the Court has mashed the wax nose of 101.

    You need not be concerned about firing me, as if you were my client and showed such improvident thinking, I would likely be firing you.

    For those that may merely feed back your rhetoric (and lack of understanding thereof), how are you ever going to manage them when they tell you “so sorry,” you cannot have a patent because you do not meet the undefined terms that make up that oh so simple distinction in the mechanics of the Supreme Court scrivined test.” Will you pat them on the head, pay their bill, and try again? Will you try again in the SAME undefined (and thus unknowable), but to you, oh so simple mechanized test? Will you expect some different result with the same technique?

    Or maybe – just maybe – you will try to understand just why those who seek to protect innovation are so upset with the muckery from the Court? Will you try to understand “beyond” that “oh so simple mechanized Two Step” when it comes to why your own particular patent attempts are rejected?

  24. Anon September 18, 2018 7:47 pm

    Gene,

    To your point of “tangibility is not enough” exemplifies how the Court has eviscerated the actual words of the Statute. At least in part.

    More to the point, if one takes as a given that the utility aspect of belonging in the Useful Arts has been satisfied, then the “tangibility” factor somehow NOT being dispositive of meeting a statutory category element of 35 USC 101 shows the mashing of the wax nose of 101.

    Congress includes two – and only two – low-hurdle elements to 35 USC 101:
    1) have a utility within the Useful Arts; and
    2) have your innovation take form in at least one of the statutory categories.

    All else is ultra vires and evidences the Court violating the separation of powers.

    That the Court does this in a Void for Vagueness manner (undefined terms) should really scream out.

    That the Court “banks” its reach into a “Constitutional” foundation for its scrivening by taking a subjective, conjectural, FUTURE-based “May” (which necessarily includes the notion of “May NOT,” as in, “this undefined something more is what removes the preemption concern about what MAY be blocked in the future” merely evidences the infirmity of the Court violating its Constitutional authority of PRESENT case or controversy.

    Maybe (but doubtful) in-house counsel recognizes some of these concerns. He seems to think that the mechanics are simple, and does not see any issues in the larger picture or context for which the Court has provided those “simple mechanics.”

    It must be wonderful to be so simple minded as to not see issues.

  25. in-house counsel September 19, 2018 8:13 am

    Dear mother of God I’ve written twice now that it’s a bad test that needs fixing. What you don’t seem to comprehend is that lambasting anyone below SCOTUS for actually following what they wrote does nothing to help your cause.

    SCOTUS wrote that tangibility is not enough to confer eligibility. That is the law as it stands. Blaming the PTAB, the courts, and Examiners from following this law is the worst kind of useless. (And here especially, because we’re talking about a point that SCOTUS went out of its way to make: the fact that a machine exists in the physical world does not mean the claim to the machine is eligible. Of all things, that’s the clearest one to come out of Alice.)

    The solution doesn’t come from calling the PTAB names and whining about witches and such. The solution is either (1) get SCOTUS to reverse itself (not happening) or (2) lobbying your representatives to overrule SCOTUS via legislation. Writing hit pieces about ‘idiot’ PTAB judges and posting myriad comments about “Google witch hunts’ isn’t going to help anything and furthers the narrative on the other blog that anti-Alice attorneys are biased money grubbing bottom feeders.

    The persuasive argument is that the test is on its face impossible for anyone to apply in a repeatable manner and needs to be clarified or abolished.

  26. Ternary September 19, 2018 8:35 am

    Joachim. An MRI machine is not a digital camera, even though one can find analogies. Also, the image processing on MRI image data is in many respects different from digital camera image processing.

    Furthermore, the issue is not that the claimed invention resembles known manual operations by a human (the inventors admit to that) but that it is done by a machine. The fact that humans can or do perform functional aspects of a machine invention, has created this mess of “directed to an abstract idea.” The underlying simple thought being in Courts “if a human can do it then a machine can do it and certainly a computer can do it, nothing special required.”

    For example an electronic calculator would be directed to an abstract idea according to Alice . The fact that “underlying math is simple” or of “paper and pencil calculations”-quality is and should be irrelevant to the patent eligibility and patentability of a machine that performs those calculations. (a moving average filter comes to mind).

  27. Joachim Martillo September 19, 2018 10:12 am

    Ternary@September 19, 2018 8:35 am

    You are trying to make a distinction, which is pilpul or quodlibet. I have to reiterate.

    Digital imaging is a single art whether digital medical imaging, digital cinematography, consumer digital photography, or digital scanners. Engineers working in this art keep track of all digital imaging developments.

    Digital medical imaging comprises MRI, CAT, PET, and other technologies. And yes the probes for MRI, CAT, and PET are different but they are basically collecting some form of signals that are digitized and then processed. The math differs somewhat, but it’s all computable functions and algorithms that have been around at least as far back as the 50s.

    I’ve worked primarily on PET and a little on MRI. When I was at MGH, CAT was considered a mature technology. From the standpoint of the electronics and algorithms, the medical imaging differed little from the consumer and cinematographic digital imaging. The digital scanner technology is probably the simplest, but it is also a digital imaging technology.

    I have to note that everyone at MGH routinely referred to MRI, PET, and CAT cameras.

    The digital imaging art is crowded. The USPTO is supposed to cut some slack for minor improvements in a crowded art, but the Itagaki improvement in 1999 was an obvious combination of existing pieces; doctors were demanding this improvement; and the improvement was a straightforwardly implemented combination of communications tech, digital circuits, mechanicals, a programmable computer, imaging algorithms, and graphics algorithms.

    I was a manager back in the 1990s. If a marketer developed a product spec in 1999 for the Itagaki device, I would have scheduled a project for it without a second thought even though no similar device existed in the world.

    It would not have occurred to me that my team was creating a patent-eligible invention.

    In 1979 I probably would have thought I was creating a patent-eligible invention while I could probably argued both sides of the question in 1989.

  28. Night Writer September 19, 2018 12:09 pm

    >>>in house “The solution doesn’t come from calling the PTAB names and whining about witches and such. …(1) get SCOTUS to reverse itself (2) lobbying your representatives …

    Some good points there. But two points: (1) what we are doing is discrediting the opinion, which is important to get it reversed or for legislation. (2) The CAFC has the power to render it toothless, which would be easy with interpretation, e.g., Berkheimer is a good start.

    Anyway, maybe I am not being productive. Curious certainly seems to think so.

  29. Ternary September 19, 2018 1:10 pm

    Joachim, a digital camera does not have T1 and T2 relaxation, it also does not have echo-time considerations, no MIP projection, no tomography, no signal sequences, no slice processing. There are no voxels in digital cameras and no volumes are generated. 3D image object segmentation is different from 2D. Location tracking of 3D objects in a volume is (for instance with Bayesian probability) different from 2D images. Rendering of 3D images is a special art by itself. To say that “image processing” is a single art is incorrect. It is an enormously diverse field, with many distinctive specialties and the majority is mathematics based processing.

    I believe you that you would have found Itagaki obvious. But in the sense as you describe: when confronted with the question of the Itagaki problem you most likely would have created something very similar. But the question was never asked and you (or your team) never did the invention. Luckily, determination of obviousness relies on prior art, not on if you “could have done it when asked.” We all know that asking the right question is the foundation of an invention. That is of course the misery with Alice, wherein a judge is being convinced that he/she could almost have done the invention and hence it is directed to an abstract idea.

    In saying “that my team was creating a patent-eligible invention,” I hope you mean a “patentable invention.” I see no reason pre-Alice why Itagaki should not be patent-eligible.

    Shouting really does not make you more convincing.

  30. Joachim Martillo September 19, 2018 1:31 pm

    We had a team at MGH that built PET cameras, MRI cameras, and CAT cameras. The team consisted of physicists, electronic engineers, software engineers, and mechanical engineers. The same team could have built a digital consumer camera, a digital cinematography system, a digital x-ray camera, a digital thermal camera, or a digital scanner.

    Digital imaging is a single technological art. It just is.

    Each guy, who built any one of the first of each of the devices above, genuinely invented something new under the sun.

    Improvements like the Itagaki device used to be called aggregations.

    If I am not mistaken the Doctrine of Aggregation comes from Reckendorfer v. Faber, 92 U.S. 347 (1875) even if I would assert that Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498 (1874) makes the exact same point.

    The combination, to be patentable, must produce a different force or effect or result in the combined forces or processes from that given by their separate parts. There must be a new result produced by their union; if not so, it is only an aggregation of separate elements. An instance and an illustration are found in the discovery that, by the use of sulphur mixed with india-rubber, the rubber could be vulcanized, and that without this agent the rubber could not be vulcanized. The combination of the two produced a result or an article entirely different from that before in use. Another illustration may be found in the frame in a saw mill which advances the log regularly to meet the saw, and the saw which saws the log; the two cooperate and are simultaneous in their joint action of sawing through the whole log; or in the sewing machine, where one part advances the cloth and another part forms the stitches, the action being simultaneous in carrying on a continuous sewing. A stemwinding watch key is another instance. The office of the stem is to hold the watch, or hang the chain to the watch; the office of the key is to wind it. When the stem is made the key, the joint duty of holding the chain and winding the watch is performed by the same instrument. A double effect is produced or a double duty performed by the combined result. In these and numerous like cases, the parts cooperate in producing the final effect, sometimes simultaneously, sometimes successively. The result comes from the combined effect of the several parts, not simply from the separate action of each, and is therefore patentable.

    In the case we are considering, the parts claimed to make a combination are distinct and disconnected. Not only is there no new result, but no joint operation. When the lead is used, it performs the same operation and in the same manner as it would do if there were no rubber at the other end of the pencil; when the rubber is used, it is in the same manner and performs the same duty as if the lead were not in the same pencil. A pencil is laid down and a rubber is taken up, the one to write, the other to erase; a pencil is turned over to erase with, or an eraser is turned over to write with. The principle is the same in both instances. It may be more convenient to have the two instruments on one rod than on two. There may be a security against the absence of the tools of an artist or mechanic from the fact that the greater the number, the greater the danger of loss. It may be more convenient to turn over the different ends of the same stick than to lay down one stick and take up another. This, however, is not invention within the patent law, as the authorities cited fully show. There is no relation between the instruments in the performance of their several functions, and no reciprocal action, no parts used in common.

    The Doctrine of Aggregation is narrower than 35 U.S. Code § 103, but § 103 fully encompasses this Doctrine. The Examiner and the PTAB should properly have argued unpatentability under § 103. It is disturbing that they all knew that Itagaki was not entitled to an issued patent but could not articulate the reason coherently. Instead they resorted to a § 101 argument, which was complete and utter nonsense.

  31. Joachim Martillo September 19, 2018 2:07 pm

    Typo advisory!

    It would not have occurred to me that my team was creating a patent-eligible invention.

    In 1979 I probably would have thought I was creating a patent-eligible invention while I could probably argued both sides of the question in 1989.

    should have been

    It would not have occurred to me that my team was creating a patentable invention.

    In 1979 I probably would have thought I was creating a patentable invention while I could probably argued both sides of the question in 1989.

  32. Joachim Martillo September 19, 2018 7:12 pm

    At MGH in 1978 we had PET, MRI, and CAT cameras that collected data from radiation that interacted in some way with the object to be imaged. We dumped the data onto tape and brought it to a Mod Comp computer that could render images in slices in any plane the doctors wanted. Multistation MRI cameras were available by the end of the 1990s and the beginning of the 2000s. Workstations that ran X Window System software that could do 2D rendering and implemented GKS were available in the middle 80s. I know because I worked on the X Window System at Project Athena at MIT during the middle 80s. Silicon Graphics publically released a 3D rendering system X/GLX in 2000. Hardware parameterization was already in imaging standards by 2000. Networking the digital medical cameras, consumer digital cameras, digital cinematography systems was was common by the late 90s.

    The Itagaki device sees almost to represent an archetypal invention that is nothing more than an aggregation.

  33. Ternary September 20, 2018 11:28 am

    Joachim, you are verifiably wrong. While Itagaki includes known elements, it also teaches new integrating elements: 1) a computer based method to classify imaging methods based on different machine parameters at different discrete locations ; and 2) a computer based method to generate and display a whole-body image, based on the classification.

    The PTAB correctly decided, based on the record before them, that the claimed invention was not obvious.

    The use of a computer to do the classification and image generation as claimed is meaningful and technical and has not been do prior. That we agree upon it seems.

    While your background compels you in hindsight to assert that “you could have done that if asked the question” you have not produced any easily accessible paper or other disclosure that supports your allegation of obviousness. In fact, your own words suggest that the claimed invention fulfilled a long felt need.

  34. Joachim Martillo September 21, 2018 1:44 am

    Where is the synthesis that makes the Itagaki device more than two devices: a multistation MRI & a graphics data processing computer put into a single enclosure? (I’m not even sure that it was so enclosed.) On May 9, 2007 all aspects of the multistation MRI have been around for years. Likewise all aspects of the graphics data processing computer workstation have been around for years. One could just dump the multistation MRI data to a tape and bring it over to the graphics workstation where the data could be read into the workstation, but by the 90s both a multistation MRI and a graphics workstation are commonly networked.

    10GBASE-T 10 Gbit/s Ethernet over copper twisted pair cable is already standardized in 2006 in 802.3an. A bus is a bus whether it’s a serial Ethernet bus or an advanced PCI parallel or serial bus.

    The image data format and image data file system formats are all internationally standardized by 2000.

    In the 1979 creating the Itagaki device would have required a lot of genuine craftsmanship (tekhne) and genuine practical technological wisdom (phronesis). The Itagaki device in 1979 would have represented a genuine invention that merited patent protection. (Remember multistation MRI cameras were first created sometime in the late 90s or early 2000s — multistation digital cinematography systems existed at least since 1996). Likewise in the Itagaki device would have represented a patentable invention in 1989 and possibly just barely patentable as a very incremental improvement in a very crowded field in 1999, but by 2007 putting the multistation MRI and the graphics workstation connected together by a network/advanced PCI interconnection bus into a single mechanical enclosure is just praxis (well-understood, routine, conventional activity/functionality).

    There was no invention in the Itagaki apparatus in 2007.

    I went through the File Wrapper. The Examiner was looking in the wrong place for published documents describing MRI apparatus while Japanese are parochial and miss a lot of international publications.

    I doubt there was any long felt need in 2007, for the data transfer problem had almost certainly already been solved at Loma Linda, Austin, the University of Pennsylvania, MGH or any of the new major imaging research facilities that I don’t know. The principal researchers at these research facilities don’t typically apply for patents. They are doctors, who usually are not the inventors at the facilities. The grants, under which they work, often don’t budget for patent applications. These doctor-researhers publish in specialized medical journals.

    The Itagaki apparatus/system is an aggregation like Blair’s device/system (Rubber-Tip Pencil) or the Reckendorfer device/system (another lead pencil/eraser system).

    There is no question the the Itagaki apparatus was patent-eligible. The PTAB (like SCOTUS) is out somewhere in the Twilight Zone with respect to eligibility.

    Yet the Itagaki apparatus was not patentable.

  35. Joachim Martillo September 21, 2018 6:44 pm

    Here is my summary. A patentable invention in 1979 became an aggregation of prior art and praxis in 2007 — something not surprising 30 years later. I discuss praxis, SCOTUS, and the CAFC in Praxis: The Fourth Judicial Exception.