Revised Patent Eligibility Guidance Effectively Defines What is an Abstract Idea

By Gene Quinn
January 4, 2019

“In essence, by narrowly identifying certain subject matter groups as being those that properly qualify for characterization as abstract ideas the USPTO is effectively defining what is and what is not an abstract idea…”

Abstract Ideas: Patent Eligibility Guidance Effectively Defines What is an Abstract IdeaThe United States Patent and Trademark Office (USPTO) today announced revised guidance for subject matter eligibility under 35 U.S.C. § 101. The USPTO also announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions. The documents take effect Monday, January 7, 2019.

“These guidance documents aim to improve the clarity, consistency, and predictability of actions across the USPTO,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu. “The USPTO will provide training to examiners and administrative patent judges on both documents to ensure that guidance is being properly administered.”

The guidance explains that courts have been comparing patent claims considered to those previously determined to be directed to abstract ideas, as the Federal Circuit explicitly explained in Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016). “While that approach was effective soon after Alice was decided, it has since become impractical,” the Federal Register Notice reads. “The Federal Circuit has now issued numerous decisions identifying subject matter as abstract or non-abstract in the context of specific cases, and that number is continuously growing. In addition, similar subject matter has been described both as abstract and not abstract in different cases. The growing body of precedent has become increasingly more difficult for examiners to apply in a predictable manner, and concern have been raised that different examiners within and between technology centers may reach inconsistent results.”

The “2019 Revised Patent Subject Matter Eligibility Guidance” makes two primary changes to how patent examiners apply the first step of the U.S. Supreme Court’s Alice/Mayo test, which determines whether a claim is “directed to” a judicial exception.

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First, in accordance with judicial precedent and in an effort to improve certainty and reliability, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes. Claims that do not fall within one of these enumerated groupings cannot be characterized as reciting an abstract idea unless approved by the Technology Center Director, with approval indicated on the record in the file, and with a provided “justification for why such claim limitation is being treated as reciting an abstract idea.”

In essence, by narrowly identifying certain subject matter groups as being those that properly qualify for characterization as abstract ideas the USPTO is effectively defining what is and what is not an abstract idea, thereby filling a void intentionally left ambiguous by both the Supreme Court and the Federal Circuit. It has been frustrating — to say the least — that courts have refused to define the term abstract idea despite that being the critical term in the Supreme Court’s extra-statutory patent eligibility test. Without a definition for the term abstract idea rulings have been nothing short of subjective; some would even say arbitrary and capricious.

The revised guidance also includes a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application. If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is “directed to” a judicial exception. In such a case, further analysis pursuant to the second step of the Alice/Mayo test is required.

The Federal Register Notice provides an interesting, and patentee friendly, example:

For example, when evaluating a claim reciting an abstract idea such as a mathematical equation and a series of data gathering steps that collect a necessary input for the equation, an examiner might consider the data gathering steps to be insignificant extra-solution activity in revised Step 2A, and therefore find that the judicial exception is not integrated into a practical application. However, when the examiner reconsiders the data gathering steps in Step 2B, the examiner could determine that the combination of steps gather data in an unconventional way and therefore include an “inventive concept,” rendering the claim eligible at Step 2B.

Whether the Federal Circuit will agree with this analysis remains to be seen. Perhaps the analysis is different with respect to data gathering steps, but the Federal Circuit has ruled that no matter how innovative, no matter how much of an advance a technique for analyzing, displaying and disseminating financial information using resampled statistical methods may be, such claims are simply ineligible for patenting.  See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Circ. 2018). Thus, there are apparently still many innovations that are unique at their core that the Federal Circuit is not prepared to find patent eligible even if the Patent Office will issue those patents.

The “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112” guidance emphasizes various issues with regard to § 112 analysis, specifically as it relates to computer-implemented inventions. The guidance describes proper application of means-plus-function principles under § 112(f), definiteness under § 112(b), and written description and enablement under § 112(a).

According to the USPTO, these guidance documents have been issued concurrently to ensure consistent, predictable, and correct application of these principles across the agency.

The USPTO is seeking public comment on all the issues addressed by the two guidance documents. Additionally, the USPTO invites the public to submit suggestions to address future guidance supplements as part of their comments. Please submit written comments on these issues to Eligibility2019@uspto.gov on or before March 8, 2019.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 30 Comments comments.

  1. Pro Say January 4, 2019 3:16 pm

    Bravo!

    Thank you Director and your colleagues.

    It is indeed a new day for the Patent Office, inventors, Companies, law firms, and all stakeholders.

    And most importantly: For American innovation.

    Cautionary note: Please don’t let 112 become the new 101.

  2. Anon January 4, 2019 4:06 pm

    Before diving into either of these pre-release items, I do have to wonder about a comment that Dave Boundy made recently:

    These items are being put forth for the notice and comment period (at least the Office is following that protocol).

    But regardless of following that protocol (and again, I have not yet dove into these, so this is a question that I do not have the answer to), are either (or both) of these an attempt by the Office at writing substantive rules?

    Given that the particular executive branch agency of the Patent Office does not (generally) have the power/authority to write substantive rule changes, and given how critical these two areas are — specifically in a substantive manner — is this a possible “Tafas” redux?

    Even IF these changes may be desired changes – quite contrasted with what had occurred in the Tafas debacle — whether or not proper authority is in place to enact these items is a question that MUST be asked (and answered in the affirmative).

  3. Baffled and Confused January 4, 2019 4:22 pm

    Gene/Everyone:

    Maybe I’m missing something, but I’m having a hard time reconciling:

    “If the recited exception is integrated into a practical application of the exception, then the claim is eligible at Prong Two of revised Step 2A. This concludes the eligibility analysis.”

    from the new Guidance and

    “Neither stating an abstract idea “while adding the words ‘apply it,’ ” Mayo, supra, at ___, nor limiting the use of an abstract idea “ ‘to a particular technological environment,’ ” Bilski, supra, at 610–611, is enough for patent eligibility. ”

    from Alice. Thoughts? What am I not understanding?

  4. Gene Quinn January 4, 2019 4:37 pm

    Baffled and Confused:

    I think the difference is in the phrase “integrated into” rather than “adding”. I think there is a recognition that you can’t have extra solution activity as being enough, but many times it isn’t extra solution activity, it is really integral.

  5. Pro Say January 4, 2019 4:50 pm

    Oh, oh. The devil may indeed be in the details.

    The guidance (p.7) states:

    “Rejections will continue to be based upon the substantive law, and it is those rejections that are appealable to the Patent Trial and Appeal Board (PTAB) and the courts. All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance. Failure of USPTO personnel to follow the guidance, however, is not, in itself, a proper basis for either an appeal or a petition.”

    Which raises these critically important questions:

    1. Does “All USPTO personnel” include the APJs? Or just everyone (including the Examiners and their SPEs) BUT the APJs?

    2. If the new guidance DOES include the APJs (as it should), how can the failure of such (other) personnel (e.g. Examiners, SPEs) to follow the guidance NOT be a proper basis for an appeal or petition? (And relatedly, does “appeal” as used here refer to only Board appeals?)

    3. If the failure of “non-APJs” to follow the new guidance cannot be the basis of a Board appeal, doesn’t this also mean that an intransigent Examiner who refuses to follow the guidance can continue to 101-reject claims KNOWING that the patent applicant CANNOT appeal to the Board based on such failure to follow the guidance? (Or that if s/he does appeal, that the Board WILL NOT reverse the rejection/s based on such failure by the Examiner to follow the guidance)?

    4. If, “All USPTO personnel” DOES NOT include APJs, what good do appeals to the Board provide for all those inventors, companies, and their counsel who have been waiting anxiously to file their briefs until this new guidance came out since — seemingly from the above verbiage — this new guidance cannot be relied upon in current — or future — appeals?

    5. If the APJs aren’t subject to the same guidance as the, e.g., Examiners are, how can this material applicability divergence be squared with the Director’s recent confirmation:

    “Let me just state the obvious. We are one agency.”

    Andrei Iancu, Director
    U.S. Patent and Trademark Office
    Quarterly meeting of the Patent Public Advisory
    Committee (PPAC) on August 2nd, 2018.

    So; still, “Bravo”; but not quite as loud.

  6. KenF January 4, 2019 5:09 pm

    In re “Please don’t let 112 become the new 101,” THAT we can work to avoid ab initio. The 101 morass, on the other hand, well, that was out of our hands and we were completely subject to the whims and caprice of the PTO and the Fed. Cir.

  7. Ternary January 4, 2019 11:02 pm

    Here is at least one issue that makes me hesitant to be too optimistic and that is the Benson decision. Benson may be considered to be “directed to an abstract idea” if one considers conversion of BCD to pure binary representation an abstract idea. There are actually many different ways to process signals to achieve such conversion. Benson did it in a very clever way. But let’s ignore the argument that what Benson did was inventing a device right form the start. So in Prong One an Examiner may decide that Benson is directed to an abstract idea. Benson requires in claim 8 a “reentrant shift register.” The content of the register is modified and is shifted.

    Accordingly, step 2B shows an integration of the “mathematics” into a practical application through circuitry, including a shift register. Computer calculating circuits (such as adders and multipliers) operate on full binary representation, not generally on a BCD format. Data that were presented to a computer in BCD format could not be processed in that form and required a conversion into full binary.

    Those are for me, as an engineer, technical facts around a computer issue that had to be resolved. Benson did that in a particular way (though other ways are possible). Perhaps Benson’s mistake was to claim a method and not a device. However, it seems to me that Benson at least integrated “BCD to pure binary” conversion into a practical application that in fact improved the working of a computer to allow processing data, provided to the computer in BCD format in full binary format.

    Under the new guidelines an Examiners will have to declare Benson patent eligible, because Benson integrates the alleged “abstract idea” into a practical application. But they cannot, because Benson is established precedent.

    Luckily, there are few patents or patent/applications that claim Benson-like conversions, even though many Examiners allege that rejected claims are “like Benson.” So, as part of the new Guideline, the USPTO should instruct Examiners and especially SPEs to better assess if pending claims are really like Benson (or Flook). And if they are not (especially when adequately shown in a rebuttal by Applicant) then the Examiners should drop the Benson argument.

    The new Guidelines should instruct Examiners and SPEs to better consider arguments in Applicant responses (in the context of the Guidelines) if a proper rejection is made by applying Benson and/or Flook.

  8. patent leather January 4, 2019 11:45 pm

    Overall, I think this is pretty positive and Iancu appears to be the opposite of Michelle Lee. It seems Iancu is doing the best he can to minimize 101 rejections given the junk that he has to work with from the judiciary.

    Page 24: “Any rejection in which a claim limitation, which does not fall within the enumerated abstract ideas (tentative abstract idea), is nonetheless treated as reciting an abstract idea must be approved by the Technology Center Director (which approval will be indicated in the file record of the application), and must provide a justification for why such claim limitation is being treated as reciting an abstract idea” — This in my opinion is very positive as examiners are no longer given a free hand to “wing it” and ad-lib why they think something is an “abstract idea.”

  9. Mike January 5, 2019 3:23 am

    “Given that the particular executive branch agency of the Patent Office does not (generally) have the power/authority to write substantive rule changes…”

    True, but did/do the judiciary have the power/authority to write substantive rule changes in Alice etc. with their judicial exceptions to what our elected Congress expressed as law? Yet in said “Alice etc.”, the judiciary not only introduced said judicial exceptions, they could not even properly define “abstract idea”.

    Funny, given that it has been said that
    “With each decision of ours that takes from the People a question properly left to them — with each decision that is unabashedly based not on law, but on the ‘reasoned judgment’ of a bare majority of this Court — we move one step closer to being reminded of our impotence.” — J. Scalia.

    And why could not / did not the Court define “abstract idea”? Simple. They cannot write law, nor do they possess the foresight to anticipate and/or solve complex issues they themselves create in their binary decisions.

    Funny, given that it has been said that
    “[T]his Court is not a legislature. …
    Under the Constitution, judges have power to say what the law is, not what it should be. The people who ratified the Constitution authorized courts to exercise ‘neither force nor will but merely judgment.’ The Federalist No. 78, p. 465 (C. Rossiter ed. 1961) (A. Hamilton (capitalization altered).)

    Federal courts are blunt instruments when it comes to creating [laws]. They have constitutional power only to resolve concrete cases or controversies; they do not have the flexibility of legislatures to address concerns of parties not before the court or to anticipate problems that may arise from the exercise of a. new [law].” — J. Roberts.

    I took the liberty above in replacing “right” with “law”, which makes a point — The judicial exceptions in Alice etc. are exactly that — new law not expressed by any
    congressperson. And yet the Court does not have the capacity to anticipate problems that may arise from the creation of, or the modification to, or the judicial exceptions placed upon, law actually expressed by Congress. Accordingly, how could the Court even anticipate that the absence of a definition for “abstract idea” would create such a problem within patent law? Hence, the lack of a definition. It’s not their fault for not defining the term. It is their fault for assuming authority they do ot possess.

    The courts indeed have stepped beyond their bounds, and I find it discouraging that the two quotes from the justices above were copied from minority opinions, indicative of the boundary already being crossed by a super-legislative judiciary — a government of unelected men and not one of law or of the people.

    I see this guidance by the USPTO not as an attempt to write substantive law, but a necessary response to clean up the mess created by the judiciary that is affecting eligibility decisions the Office makes. That said decisions often contradict each other, that Congress hasn’t yet resolved the problem, and that the Office cannot stop its daily duty to make said decisions, all provide ample justification for such guidance.

    Given that the Office has a duty to defend and support the Constitution (and NOT a duty to kowtow to the judiciary, and especially any “law” they “write”), and given that the Office has the power to execute, I see no problem with this necessary guidance to Office officials.

    If one finds a problem with such a necessary response to the problem caused by the judiciary’s attempt to create substantive law by their “judicial exceptions”, or if one finds a problem with the creation of the judicial exceptions themselves, then perhaps one should call his/her representative and have them write or cosponsor new law that solves the problem once and for all. (Stripping power from the judiciary should be part of that once and for all solution.)

    Rather than just talk about it here on a blog, that’s what I’m doing. Meeting with my representative has much more influence, and if inventors truly want to see change, this is the only way it is going to happen. Besides, 80% of success is showing up. So, if you are in support of inventors rights, make an effort to show up where it actually matters.

    If you want to contact your representative but first need help with a plan, comment here with your contact info and someone will reach out to you.

  10. Concerned January 5, 2019 6:40 am

    Thank you Director for your efforts!

    I see intregated into a practical application the same as the courts saying concrete steps to solve a real problem= patent issued.

    If you can only get people under your authority to act accordingly, and not be so determined to reject under all circumstances, I would be pleased.

    I hope this guidance is not just other discarded “official” position.

  11. Anon January 5, 2019 9:14 am

    As Ternary points out:

    The mess remains (the score board remains broken).

    Pro Say’s “devil in the details” is beyond troubling, as it appears to make the guidance not only “non-binding,” but also to remove the right to redress a government decision – it’s one thing for a legislature to carve out areas beyond appeal, it is another thing altogether for an executive branch agency to attempt to do so (and directly impugns a substantive right).

    Back to the drawing board…

    (Bigger hint: Congress, wake the F up).

  12. Pro Say January 5, 2019 12:22 pm

    . . . and I’ll add these devil details questions to my #5 above:

    6. If the APJs ARE NOT subject to the new guidance, doesn’t this also mean that the Board had free reign to issue their own new — and/or different –101 rejections . . . which may or may not follow this new guidance . . . with the applicant / patent owner having no recourse to traverse such rejections?

    7. And when the guidance states: “Failure of USPTO personnel to follow the guidance, however, is not, in itself, a proper basis for either an appeal or a petition.” does, “in itself” mean that an appeal can’t be taken if non-compliance by non-APJs (e.g. Examiners) is THE ONLY basis for the appeal . . . but can be taken if there is one or more OTHER basis’ for the appeal?

  13. Mark Martens January 5, 2019 3:15 pm

    So now it all hinges on what one interprets ‘integrated into’ to mean?

    Many opportunities for interpretive messiness remain, still I give Iancu credit for taking the initiative. Kudos.

  14. anonymous January 5, 2019 3:30 pm

    What happens to every outstanding office action currently containing a 101 rejection, based now on stale guidance? Every examiner having written such a rejection should be required to remove the rejection and issue a new office action using the revised guidance. The Director should immediately require this from all examiners, since the old guidance was explicitly superseded and “All USPTO personnel are . . . expected to follow the [2019 revised] guidance.”

  15. Ternary January 5, 2019 7:52 pm

    anonymous @14. Yes, this is really a first test how serious this is. “The 2019
    Revised Patent Subject Matter Eligibility Guidance applies to ALL applications, and to all patents resulting from applications, filed before, on, or after [INSERT DATE OF PUBLICATION IN THE FEDERAL REGISTER].” I am not sure how this applies to an issued patent, but I guess we will find out.

    I will definitely refer to the new Guidance in a pending non-final in which a response is due after presumed publication of the new Guidance in the Federal Register. I will also request an Interview with the Examiner to make sure there is a common understanding what this all means in real-life prosecution of pending cases. Furthermore, you should have the opportunity to argue the new Guidance in an after-final. Presumably, you have to be careful in considering any amendment to make sure you clearly “integrate”. Though, it still is unclear to me what this “integration” should be.

    It would be of great interest to fellow inventors and patent professionals to learn the practical effects of the new Guidance. Perhaps Gene has a way to collect/summarize relevant actions without revealing confidential information.

    No matter what, I agree with Mark Martens that Director Iancu deserves many kudos for this and for his courage to stick his neck out. Unusual and commendable. Very much so.

  16. concerned January 6, 2019 4:51 am

    Ternary @14: Furthermore, you should have the opportunity to argue the new Guidance in an after-final.

    My application is after final, we filed notice of a PTAB appeal and we were awaiting these new guidelines. We also had an interview with the examiner pre-final where 3 times the examiner said he saw patentability, then we were rejected again in writing. The brief is due no later than Feb 28, 2019 (to include the 5 month extension from the September 28, 2018 filing-my attorney is absorbing the extension fees).

    I already paid the $1,000 PTAB appeal filing fee. On one hand, I think another phone interview is a waste of time, the application always seemed dead on arrival with a rejection response that was clearly not truthful, not factual and illogical on the surface (the rejection made it into an international patent expert’s upcoming book- he reached out to me). On the other hand, is this new guidance really serious and should we make a phone call even though all other previous “official” USPTO communications were disregarded in my prosecution.

    Only have a 101 rejection. No 102,103 or 112 issues. What do you think?

  17. Pro Say January 6, 2019 10:27 am

    Concerned @16:

    Since you have until Feb 28th to file the brief, were it me, I’d wait for you / your attorney to review the various articles and comments concerning this new guidance on the various patent/IP blogs; including Gene’s and PatentlyO; and as well as the comments which should be showing up shortly at the PTO as the result of their invitation for such comments.

    Than is when I’d make that call to your Examiner; and — if a brief is still needed — include an argument based on this guidance in your brief. Even though, as I explain above, I don’t know that the Board has to follow the guidance (which would be a travesty of justice).

  18. Ternary January 6, 2019 11:23 am

    concerned@16. I cannot give you legal advice. But as a fellow inventor I am somewhat in a similar situation. That is: only 101 rejection. In prior appeals I used the opportunity of a Pre-appeal Brief Conference. However, you already filed your Notice of Appeal, it seems, so that opportunity may have gone.

    What would be of interest is if the Office now considers the “alleged abstract idea” of your claims being sufficiently “integrated into a practical application” to overcome the 101 rejection. We are in uncharted territory here, as the new Guidance is just being implemented. Is the Examiner even able/willing to have an Interview or even talk to you at this stage?

    One consideration to give it a shot is that if you argue the new Guidance in your Appeal Brief, the Examiner may have to apply a new Ground of Rejection (based on “integrated” arguments for instance) in a Reply Brief that will re-open prosecution anyway. It is hard for me to imagine that the Examiner already has made an argument that your claimed invention is not a “practical application.”

    Whatever feedback and information you get over the phone from people in the Office and from others, please make sure that you continue making all your filing deadlines.

  19. Anon January 6, 2019 12:30 pm

    Mike @ 9,

    Your post and my last post crossed in the timing of posts showing up in the comments.

    Not to dissuade from the conversation that is going on between Ternary and concerned, but I would like to draw attention back up to the several points that you raise.

    We (the royal “We”), should take every opportunity to note the state of the score board being broken. Yes, those actually appearing before the Court may well be “constrained” with a higher degree of required decorum, but as Mike aptly puts things (and as I have noted as belonging to the ethical duty stemming from most all State attorney oaths), attorneys have a responsibility to play the role of the child along the parade route, and point out that the Emperor is not wearing any clothes.

  20. Ternary January 6, 2019 2:23 pm

    concerned: where I said Reply Brief in @18 should be of course an Examiner’s Answer. Sorry for the confusion.

  21. concerned January 6, 2019 5:42 pm

    Pro Say and Ternary:

    Thank you for your comments! We will probably argue the new guidelines. Will see if my attorney suggests a phone call.

  22. anony January 7, 2019 12:20 pm

    A non-optimistic view:
    While I like the direction the director is taking the Office, I am not optimistic about this guidance in particular. Any computer program can be viewed as an implementation of a formula or a method of organizing human behavior (i.e., organizing the behavior of humans performing the steps of the program) such that examiners and judges who are biased against patents can continue to hold that any subject matter that includes functionality implemented using a modern computer is an abstract idea under Step 2A, then hold that the modern computer implementing the functionality is not “significantly more” under Step 2B, and reject the application.

    The guidance merely requires that Step 2A include a first prong and a second prong with the first prong identifying the abstract idea and the second prong determining whether or not there is a “practical application” of the abstract idea. (Guidance pages 16-22). The guidance provides no help in determining what is or is not a practical application. Examiners and judges may continue to be unreasonable with regards to Step 2A.

    On the brighter side, the guidance provides a skeleton argument, which is similar to the reasoning from Berkheimer, where even if a claim does not pass under Step 2A, the claim can still pass under Step 2B when the claim limitations are not well understood, routine, and conventional. (Guidance pages 23-24). However, examiners and judges may still be unreasonable, ignore Berkheimer, and find additional creative ways to ignore the requirement of evidence for the facts that underlie rejections under 101.

    Thus, even if these guidelines are implemented, there is no real change to the substance of the 101 status quo (101 rejections will still be plentiful, unreasonable, and subjective). Rather, there will simply be a change to the style with which 101 rejections are presented by the Office.

  23. LazyCubicleMonkey January 7, 2019 10:17 pm

    “The judicial exceptions in Alice etc. are exactly that — new law not expressed by any congressperson. ”

    If common sense is not explicitly enumerated by Congress, can judges use it?

    What about laws of physics?

    If Congress declares that PI is 3, must the courts oblige?

    What if Congress doesn’t define PI at all? Are courts making new laws if they define as PI as an irrational number 3.141….

    (genuine questions as a non-lawyer – as I recall a Law & Order episode (obviously, not the best place to get my legal information) where they proposed two exclusive theories of a crime and argued both are true in different court rooms at the same time – stating that there’s nothing in the law preventing from arguing a physically impossible scenario).

  24. Mike January 8, 2019 1:57 am

    @LazyCubicleMonkey

    >> If common sense is not explicitly enumerated by Congress, can judges use it?

    Judges can and do use common law. Judges will (and should, in a democracy) even forego common sense in lieu of existing law. See the oral argument in TC Heartland. Dabney: “So if there is a — a problem with the way Congress wrote the law, that’s just too bad. That’s not for a court to come in and — and overrule precedent in order to achieve a goal like that.” And what happened? SCOTUS agreed with Dabney.

    >> What about laws of physics?

    Do you mean Newtonian physics that we now regard as not fully representative of reality and that has been replaced? I think you get my point.

    >> If Congress declares that PI is 3, must the courts oblige?

    Yes. PI will defined as 3, at least within the context of law. Math will say otherwise, within the context of mathematics.

    >> What if Congress doesn’t define PI at all?

    Then you’ll get differing opinions, and as long as those opinions don’t affect people’s rights, it will most likely not be of any popular concern. One popular example, has the Constitution (or has Congress) defined “person”? Not yet, hence the abortion debate regarding the 14th amendment and the term “any person”, particularly, whether or not said person can be deprived of life or property without due process. SCOTUS in Roe looked to the “experts” in the relevant fields for a concensus as to when a fetus is/becomes a person, and they couldn’t find agreement. Our understanding of fetal development has evolved over the years (e.g. sonograms were pretty rare prior to Roe) so the debate continues.

    >> Are courts making new laws if they define as PI as an irrational number 3.141….

    I don’t think a court would define PI without first looking to the experts in the field of mathematics in order to obtain a definition. If they did define PI as such, that might be just an interpretation of law. However, if they change an understanding of something already expressed by Congress, then yes, the would be making new law. And this is exactly what they did with Mayo and Alice. Congress had already laid out what was patent eligible, and the courts later decided to make “judicial exceptions” to what was already expressed as law. These weren’t mere interpretations of law (which is what the courts are limited to doing); it was a rewriting of law already expressed by our elected representatives.

  25. Anon January 8, 2019 7:50 am

    Mike,

    Thank you for your patient answers.

    From past interactions, I fear that LCM may play out a (polite) passive/aggressive stance to those answers as I note that the questions themselves (while posed as genuine and non-lawyerly) certainly were asked with a definite aim (the Court has done nothing wrong). One must wonder how genuine the questions when the aim is not genuine…

  26. ChrisW January 9, 2019 7:15 am

    The new guidance should result in more uniform examination.

    What I’d like to see in the final version of the guidance are definitions for what is “well-known” and “conventional”. Or, absent that, a statement that those words are understood to mean their dictionary definitions.

    Certainly, “well-known” means more than merely “known”. How well-known must something be, in order to be considered as being well-known, versus merely known ? Moreover, if something is conventional, does that mean its well-known ? It seems like it, but “conventional” implies some sort of convention being involved. Absent a convention, can something be considered as being “conventional” ? The guidance would do well to remove any ambiguity with reference to these two terms.

  27. Anon January 9, 2019 11:13 am

    To the point of ChrisW, I have had examiners attempt to use the same mechanisms with which they are familiar with to “show” conventionality. That is, they attempt to use their familiar tools of “prior art” alone. But prior art alone does not – and cannot – suffice to show the heightened state of something being conventional.

    It is sometimes difficult to explain the basic fact that, as Chris puts it: “Certainly, “well-known” means more than merely “known”.

    ALL that the prior art tools may show would be explicitly known (for the 102 sense) or implicitly possible to have been known (for the 103 sense).

    NEITHER of these meets the (scrivining) re-write of the law as provided by the Court in its Common Law version of 101 and their introduction of “conventional.”

    The fact of the matter is that something that shows a lack of novelty does NOT provide the APA required level of fact finding to establish conventionality – no matter how long ago an item of art that may show a lack of novelty may have been divulged.

    The fact of the matter is that something(s) that show a lack of non-obviousness does NOT provide the APA required level of fact finding to establish conventionality – no matter how long ago the item(s) of art that may show a lack of non-obviousness may have been divulged.

    Further – and critically, as the Berkheimer memo plays a game with this: the official Office protocols for Taking Official Notice may not be used to establish timing of items under debate. The Berkheimer memo indicates that an examiner may attempt to use “official notice,” but if challenged, then must use the actual APA required level of fact finding. This little game is nothing but a trap for the unwary.

    Lastly, a distinction should again be emphasized that the item for which “conventionality” must be established is NOT limited to any particular claim element, but ALSO must be shown for the ordered combination of the claim.

    FAR too many examiners feel that a boilerplate statement of “the combination of the claim does nothing more than the items individually” — in some sense of wanting some “synergy” requirement — will suffice for the conventionality requirement. This is simply NOT so. Conventionality in and of itself is entirely divorced from the notion of “synergy” and stringing things together that EACH ALONE may (may, I say – even if only for argument’s sake) be “taken” as being conventional, does NOT satisfy the requirement to show the ordered combination of the claim to be conventional.

  28. LazyCubicleMonkey January 10, 2019 12:08 am

    Mike:

    >>Do you mean Newtonian physics that we now regard as not fully representative of reality and that has been replaced? I think you get my point.

    Unless we’re talking about some really tiny objects, the equations hold – but I get the overall point given the point below:

    >>Yes. PI will defined as 3, at least within the context of law. Math will say otherwise, within the context of mathematics.

    Interesting – I guess that Law & Order episode was more accurate than I thought. I’m assuming the above also implies that judges would have to use the integer 3 for PI when making their rulings?

    Thank you for the additional examples. They were enlightening.
    And I’m also genuinely interested in the answers to those questions in regards to the legal field. Mike answered them in a more clear & deep extent that I had hoped for – for which I’m grateful – I learned something!

    As far as the ulterior motive – given those answers, I’m not sure that the bridge I was hoping to make seems possible – the divide may be too far. Given the above answers, it seems like the legislative branch is able to (re)-define natural phenomena in ways that are inaccurate that would take precedence over the factually accurate – in particular – I was remembering something akin to: https://en.wikipedia.org/wiki/Indiana_Pi_Bill and how that would impact judge’s rulings had it been passed (yes, I know this is a state law & patents are federal law – but imagine it was the US Congress attempting something like this). Would that impact any patents that depended on PI being 3.141… that would break if it was something else? If not, wouldn’t one be able to argue that the patent isn’t on solid legal footing since it’s (the patent) in fact a legal instrument of sorts?

  29. Anon January 10, 2019 7:19 am

    LCM,

    Here is a case for you to nibble on in regards to an outcome that DOES defy the reality of the actual universe: In re Nuitjen.

    Your concerns have been aligned in only one direction, which is why I indicated that your claim to “genuine” cannot be taken at face value.

    While your politeness is admirable, I generally do not place higher regard on “correctness” of the political persuasion over correctness of the content persuasion. In other words, to me, “hiding” behind politeness is a form of political correctness, and I am much more willing to have words be sharp as they are meant to be an assault on the unthinking.

    You mention that you have learned something. I distrust the lesson that you think that you have learned based on our previous exchanges, since your aim appears to be learning only enough to buttress your pre-ordained views.

    While you remain polite, you also remain mired in confirmation bias.

  30. KenF January 10, 2019 9:57 am

    @ anony 22.

    “The guidance provides no help in determining what is or is not a practical application” Eggggggggggzactly!

    I prosecute applications directed to gaming machines. Rationale for rejecting under 101 has been that they simply implement rules and/or effect methods for organizing human/economic activity to the extent wagering is a human/economic activity. But if casino makes money and players enjoy themselves, why is that not a “practical application?” And is this bringing a utility consideration into the calculus? If so, utility has always been considered a low bar to jump over, so is this a good thing????