Note to the Federal Circuit: Spewing Illogical Nonsense Does Not Make It True

By Gene Quinn
August 25, 2019

“It is impossible for a claim that is novel and non-obvious under 35 U.S.C. 102 and 35 U.S.C. 103 to lack an inventive concept under Step 2B of the Alice/Mayo framework. There is no way to sugar-coat this inconvenient reality.”

https://depositphotos.com/8597236/stock-photo-abstract-background.htmlThe Federal Circuit recently reversed the District of Minnesota’s denial of summary judgment in Solutran, Inc. v. Elavon, Inc., Nos. 2019 U.S. App. LEXIS 22516 (Fed. Cir. July 30, 2019) (Before Chen, Hughes, and Stoll, Circuit Judges) (Opinion for the Court, Chen, Circuit Judge), holding that the claims at issue, which related to processing paper checks, were invalid under 35 U.S.C. § 101. The physicality of the limitations of the claims did not save the claims. See Physicality of Processing Paper Checks Does Not Save Solutran’s Claims.

“[W]e have previously explained that merely reciting an abstract idea by itself in a claim—even if the idea is novel and non-obvious—is not enough to save it from ineligibility,” Judge Raymond Chen of the Federal Circuit explained for the majority.

The Federal Circuit can state that proposition until every single judge is blue in the face and there will be one exhausting, inescapable truth—it is wrong! Indeed, this logical impossibility is written into so many Federal Circuit decisions one must wonder how it is possible any of the judges who believe this nonsense were ever able to achieve an acceptable score on the LSAT in order to gain admission to law school in the first place.

One of the primary components of the Law School Admissions Test is how well adept the taker is with respect to logic. Obviously, anyone who believes this garbage dished by the Federal Circuit is wanting with respect to either intellectual honesty or logical reasoning abilities. Allow me to explain.

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Patent Eligibility 101

35 U.S.C. §101 says that if you are claiming a machine, process, article of manufacture, or a composition of matter (i.e., compound) then the invention is patent eligible. This question is a threshold one and historically in the United States—at least until 2010—virtually everything had been viewed as being patent eligible subject matter. In 2010, the U.S. Supreme Court embarked upon a quartet of patent eligibility cases, which from an innovators perspective have not only redefined what is patent eligible, but have wreaked havoc on America’s primary technological fields: software, biotechnology, medical diagnostics (and by necessary implication medical devices since you cannot treat what you cannot diagnose).

The two most concerning of the four cases are Alice Corp. v. CLS Bank, 134 S.Ct. 2347 (2014) and Mayo Collaborative v Prometheus Laboratories, 132 S.Ct. 1289 (2012), which together created what we know as the Alice/Mayo framework. This framework requires the decision maker to ask and answer a series of questions that go beyond the statutory inquiry before determining whether any patent claim question covers patent eligible subject matter.

Step 2A: Losing Sight of the Obvious

The first question of the Alice/Mayo framework (commonly referred to as Step 2A, or Step 1 of the Alice/Mayo framework), requires the decision maker to ask whether the patent claim seeks to cover one of the three specifically identified judicial exceptions to patent eligibility. At the moment there are only three identified judicial exceptions, which are: (1) laws of nature; (2) natural phenomena; and (3) abstract ideas. If the claim does NOT implicate one of those judicial exceptions, then the claim is patent eligible.

The judicial exception to patent eligibility implicated whenever software patent claims are at issue is the abstract idea exception. Thus, the decision-maker must ask whether the patent claim is directed to an abstract idea. In true Monty Python Players form, neither the Supreme Court nor the Federal Circuit have ever defined what it means to be an abstract idea, despite that term being absolutely critical to making an informed determination. The first definition on Google for the term “abstract”, which comes from the Oxford free English dictionary, defines the term to mean “existing in thought or as an idea but not having a physical or concrete existence.”

Therefore, Judge Chen and the other judges of the Federal Circuit that actually believe it is possible for a claim to cover an abstract idea while still reciting tangible, physical, concrete elements that actually exist are simply wrong. There is no other way to say it, and no sense sugar-coating it. It is impossible for something that has a physical or concrete existence to be abstract. I suspect most elementary students know that. How and why learned jurists have lost sight of the obvious is a mystery.

Step 2B: Conflating Inquiries

In the case where the patent claim seeks to cover a judicial exception to patent eligibility, such as covering an abstract idea, the final question (commonly referred to as Step 2B, or Step 2 of the Alice/Mayo framework) asks whether there is an inventive concept covered in the claimed invention that adds “significantly more” than the judicial exception, or whether the limitations in the claim fail to add “significantly more” and, thereby seek to merely cover the judicial exception. In the case of software, the question asks whether there is an inventive concept present that adds significantly more such that the claim does not merely claim the abstract idea.

Putting aside the logical and practical impossibility that something physical or concrete cannot be abstract, assuming arguendo that a jurist were to reach Step 2B and inquire whether there is a sufficient inventive concept, it is yet again a logical impossibility for the claim at issue to detail a novel and non-obvious innovation and at the same time still lack an inventive concept sufficient to add “sufficiently more.”

In other words, it is impossible for a claim that is novel and non-obvious under 35 U.S.C. 102 and 35 U.S.C. 103 to lack an inventive concept under Step 2B of the Alice/Mayo framework. Again, there is no way to sugar-coat this inconvenient reality. If there is no prior art that can be brought to bear to reject the claims in the first instance or invalidate the claims once issued, that means the patent claims describe an innovation that does not directly overlap with the prior art (i.e., there is no literal identity under 102) and no combination of references can be found that add up to the sum total of the claimed invention (i.e., the invention is not a trivial rearrangement of the prior art under 103).

This is precisely why the Supreme Court ruled in Diamond v. Diehr that it is inappropriate to consider novelty and non-obviousness when making a patent eligibility determination. And according to this Supreme Court, which has given us the Alice/Mayo framework, Diehr remains good law. That must mean it has not been overruled, and that necessarily means that the so-called hunt for an inventive concept must mean something different than what the Federal Circuit is turning it into.

Isolating the Bar

It is time for the Federal Circuit to wise-up. Spewing illogical nonsense and practically chastising the bar by saying “we’ve previously explained” is unbecoming. Yes, you have previously explained that it is possible for something that is not abstract to still be abstract and for something that is inventive to not be inventive. Such ridiculous rulings should hardly be celebrated, or even tolerated. They are ruining innovators in America and causing many stakeholders to seriously question whether we even need a Federal Circuit at all.

 

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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 56 Comments comments. Join the discussion.

  1. Ken Hayneswoth August 25, 2019 3:17 pm

    It’s taken 17 years since they brought in the AIA Act and the PTAB plus Alice,Mayo,EBay, TC Hearling and the Oils case which all helped kill off any kinds of Patent protection for a inventor like my self. Silicon Valley is to powerful to stop it America. I am now looking into how to file for patent protection in Germany and China where patent protect is alive and thriving, I no longer see a purpose to file for a patent in the US. America has shot them selves in the face in serving Silicon Valley companies and forgetting the whole reason why those companies achieved their success was because of a strong patent system for new inventors. The next big thing will come from foreign seas with strong patent rights. Self inflicted dustruction has been the downfall of all great empires and America is reminding us hows it’s done.

  2. concerned August 25, 2019 4:48 pm

    My application has no 102 or 103 rejections, yet has that pesky 101 rejection.

    My PTO examiner was a little more Monty Python that the Federal Circuit. Instead of emphasizing abstract as much, he was more creative using routine, well understood and conventional on claims that have never been used by anyone in the universe.

    Well, alright, at least no one on Earth has used my claims. A spaceship may appear one day and prove me wrong.

  3. Good by America August 25, 2019 8:56 pm

    This side show nonsense will accomplish nothing. Apple has $240Billion sitting in it’s offshore accounts and has about the same amount in cash in its U.S. account. Apple owns over $50Billion in U.S. tresury. Apple and companies like Google and Amazon have bought up all the appropriate senitors to make sure their theft of patents continues. Corporatocracy run America inventors are looking over seas to get the protection they once had pre AIA Act-PTAB 101. There is no politican in America that can stand up against FAANG.

  4. Bob August 25, 2019 9:35 pm

    @concerned: What is your application number? I’m curious to see the prosecution history for your case.

  5. MaxDrei August 26, 2019 4:57 am

    Clarification please. What Chen actually wrote about obviousness is, for me, different from what you say he wrote. I have in mind that patentable non-obviousness is a small sub-set of obviousness in general.

    Consider filling out a lottery ticket. What number shall I write on the ticket? Do I have any idea, because, in reality, the winning number is not “obvious” at all. Nevertheless, the definitively non-obvious winning number is not patentable. Same with an idea for a TV game show, a plot for a work of fiction, or a crafty new way to pay less tax. Not everything that is non-obvious is patentable.

    Now, Chen tells us that there is a class of idea that can be non-obvious, in anybody’s book, but nevertheless not non-obvious in a way that renders it eligible for a patent. What is controversial about that? All he is saying is that some ideas that are not obvious nevertheless cannot rise to the level of an “inventive concept” within the purview of the eligibility Section 101.

    Or am I seeing it wrong?

  6. concerned August 26, 2019 7:50 am

    MaxDrei @2:

    As you wait Mr. Quinn’s response, I will share more information on mine.

    My application has concrete steps as to how to perform the invention using a physical network that cannot be performed in one’s mind. In your examples, there are no concrete steps as to how to pick the winning lottery ticket, no concrete steps as to how to create the next Jeopardy or no concrete steps to lower your taxes legally in a method never performed. Just thoughts.

    Frankly, I think Mr. Quinn could have written one sentence to summarize the whole situation at large: “The Federal Circuit and anti-patent crowd work hard to find reasons to deny patents regardless how non-factual, ill-logical or untruthful the explanation may seem.”

    Going one step further: My application was reduced to collecting and analyzing data, another one of those popular abstract rejections. Yet the Administering Agency has the best collection of data possible to mankind and could not solve the problem or six decades. Clearly the solution is beyond looking at data. My solution was the “how to” in the tracking of the triggering event and do it economically for decades.

    There is no consistency, the examiner in mine situation even admitted in writing that he was not using court cases in my field, only similar. And those “so called” similar cases have nothing to do with the claimed inventive steps.

    However, keeping with the theme of reject, reject, reject, it does not have to be logical, truthful or factual, the same as on the playground during recess as a kindergartner playing tag. The rules/decisions change to fit the need. First it must be just one hand that constitutes the tag. Then it must be two hands. Then two hands below the waist, then two hands below the ankles on the third Wednesday of the month.

    It is easier to understand, not appreciate, the whole patent world when understanding a hidden agenda is in play, like the sub-prime mortgage scam. Did we really think people without any financial means qualified for a 360 month note? No. They were straw men to con the buyer of the mortgage paper while securing origination fees.

    And as the nation was winding down that cute little mortgage scam in 2008/2009, we get new patent norm starting in 2010. Apparently it is easier to invent new tricks than real, time tested, ways of promoting commence. The mortgage scam did not end well, neither will the patent situation if not resolved.

  7. Concerned August 26, 2019 9:51 am

    Bob@3:

    14450042

  8. ghostndragon August 26, 2019 10:03 am

    MaxDrei–I think you’re right. A non-obvious idea is still just an idea. I think that the court is wrong on THIS case, but not wrong in the abstract (which is ironic, I know). Gene, unfortunately, is making the same mistake as SCOTUS–trying to make logic fit a case he doesn’t like. Instead of arguing the merits (or lack thereof) of this case, he wants to die on the hill of reason. He just got his directions wrong as to which hill that was.

  9. Paul Morinville August 26, 2019 10:05 am

    Congress will NOT fix this without passing the problem to another section. The corruption is too deep, too pervasive and too systemic.

    The real corruption is embedded in lawmaker staff. Their entire career is inside the beltway and they feather their next for their next job. Once the narrative is embedded, everyone knows what they must do to get that next job. I’ve had to walk out of offices because staff will NOT listen to opposing views.

    Despite Tillis’ claim that US Inventor would have a seat at the table (see the transcript of the Senate hearings – he said it loud and clear during my testimony), they have completely excluded us from the secret drafting of the new 101 legislation and the review of that draft going on this week. That privilege is reserved for big tech lobbyists and other big corporations. It is reserved for the companies that give staff high paying jobs for the favors they do when passing laws.

    They do this not because because they are trying to help small inventors… they do this because overcoming our arguments requires team work, planning, and speaking from the same tongue.

    There is no reason for any small entity to file for a US patent. That is a historic in this country. In fact, filing in the US is foolish and frankly stupid. You invention will be stolen by the big corporations invited to this week’s secret meetings and you will NOT be able to defend it.

    File in China. They view their patent system as key to their 2025 initiative to surpass America in critical tech. To achieve this larger effort, they must treat patents like property rights to attract investment there, which will ensure your patent rights are protected there.

    These staffers in Washington are too deep to find their way out. Any one defects, you single yourself out and kill your career. It is really a sad state which threatens our freedom and our rights, but you can’t change it. The whole thing needs to collapse to get fixed.

    But you need to do what you need to do to protect your self and your company. File in China.

  10. TFCFM August 26, 2019 10:08 am

    One might reasonably question the efficacy of name-calling and misdirection for inducing highly-educated individuals to reinterpret a statutory scheme the way one wishes.

    More is surely required to convince folks that the meaning of a statute is satisfied merely by generating a collection of words that happens to recite a item facially within categories eligible for patenting.

    For instance, I doubt anyone would seriously contend that the following abstract idea ought to be eligible for patenting, despite the word-smithing to include three of the four statutory categories listed above:

    A process for calculating the energy content for a composition of matter, the process comprising using a computing machine to multiply the mass of the composition by the square of the speed of light.

  11. Curious August 26, 2019 10:23 am

    In other words, it is impossible for a claim that is novel and non-obvious under 35 U.S.C. 102 and 35 U.S.C. 103 to lack an inventive concept under Step 2B of the Alice/Mayo framework.
    Not that I agree with this, but the Federal Circuit has found a way. This is a quote from Bridge and Post, Inc. v. Verizon Communications, Inc. and cites BSG Tech:
    At Alice step two we assess “whether the claim limitations other than the invention’s use of the ineligible concept to which it was directed were well-understood, routine, and conventional.” BSG Tech, 899 F.3d at 1290 (emphasis added).
    In other words, only those limitations that weren’t involved in the abstract idea are evaluated under Step Two of the Alice test. As such, if the novelty/nonobviousness rests in the so-called abstract idea, then you can find lack of an inventive concept.

    The problems with this analysis are the following:
    (1) the claimed invention, as a whole, is supposed to be evaluated — not piecemeal.
    (2) the characterization of the abstract idea, by the courts, is oftentimes so abstract that it is difficult to determine what limitations are part of the abstract idea and what limitations are not
    (3) what constitutes an “inventive concept” is still ill-defined.

    This brings me to something I’ve been thinking about for awhile (and touched upon somewhat in some of my writings), which directly addresses the problems with the whole 35 USC 101 jurisprudence. The Supreme Court’s desire to institute broad and flexible tests for patent law (see also KSR as well as Octane Fitness) have been terrible for patent law and those companies that rely upon the patent system.

    Flexible tests are those tests that rely upon many different factors. They also employ terminology (e.g., “abstract idea,” “substantially more,” “inventive concept”) that are ill-defined. I understand why Courts want flexible tests. Judges want to hear the facts and follow their gut decision as to how a case should turn out. Rigid tests, however, don’t allow that kind of “follow my gut” decision making process.

    The problem with flexible tests is they are not repeatable. When I say not repeatable, I mean that different decision makers can look at the same set of facts and come out with different results. This is a huge problem. In this instance, it becomes quite evidence that the end result (i.e., the decision) is less about the facts than the decision makers, which causes the public to question the integrity of the decision makers.

    Another problem with these flexible tests are that it causes uncertainty on part of both the patent owner (as well as investors and potential patent licensees) as to the validity of the patent. For example, even if the patent is issued based upon the USPTO examining a set of facts in favor of the patentee, the patentee may not know whether a district court (or Federal Circuit or PTAB in a post-issuance proceeding) may evaluate the same (or similar) facts differently. This acts as a cloud on the title of the patent. As a result, competitors do not respect the validity of the patent (which is why “efficient infringement’ is so popular these days) and investors are becoming more unwilling to invest in companies with new technologies that require patent protection to be successful. When patents are devalued in this way, the progress of science and the useful arts are not promoted.

    What the courts should be looking to create are repeatable tests — not flexible tests. Repeatable tests are tests in which the same/similar set of facts provide the same results time and time again. While not necessarily perfect, the teaching, suggestion, or motivation (TSM) test for obviousness was more repeatable than post-KSR. Again, while not perfect, the machine or transformation test (MoT) for 35 USC 101 was also far more repeatable. Repeatable tests also mean less litigation. Parties tend to litigate more when they believe they have a shot at winning, and flexible tests increase the belief of both sides that they can win.

    A patent, once issued by the USPTO, should only be invalidated based upon substantially new facts that were not considered during examination. The USPTO should be experts in what constitutes a valid patent. Today, however, it is rare that a challenged patent actually gets upheld as being valid.

  12. Night Writer August 26, 2019 10:36 am

    @2 Max

    Why do you insist on muddling the issues?

    The problem with what you are saying is that you are categorizing structure that performs useful functions that are part of a machine as equivalent to being the same as a random number being select in a lottery. Ridiculous. The problem is that this classifying as parts of a claim has nothing to do with the reality of the invention. You violate (1), (2), and (3).

    Again,
    (1) Information processing is necessarily a physical process.
    (2) New functions cannot be provided by an old machine without new structure.
    (3) If a claim is enabled (by an anyone skilled in the art) in view of the specification, then a set of solutions is defined for the claims. Each element of the set of solutions is a machine that uses energy, time, and space to perform the functions.

    (1)-(3) is reality. Science (1) and (2), and patent law (3). Chen violates (1), (2), and (3), and is trying to tell us that the claims do not somehow map to a physical machine when they clearly do.

  13. Gene Quinn August 26, 2019 10:43 am

    Max @5

    First, you conflate patentable with patent eligible. What is patentable is the result of a five part analysis. Claimed inventions are patentable if and only if they: (1) qualify as patent eligible; (2) are useful; (3) are novel; (4) are not obvious; and (5) are adequately described within the meaning of 35 U.S.C. 112.

    You say that a plot for a TV game show is not patentable, but that is legally incorrect. Games are indeed patentable and are patented every week.

    What you and others, including a disturbingly large and growing number of Federal Circuit judges are doing is pushing the entirety of the inquiry into 101. That is wrong.

    Remember also that the so-called hunt for the inventive concept that is a part of Alice/Mayo Step 2B is really — and formally — a question about whether the claim in question adds “significantly more” (a still undefined term as is “abstract idea”) to the claim such that it does not merely claim the judicial exception. Thus, if the claim is novel and non-obvious it must add significantly more than the abstract idea because there is no prior art that renders the claim unpatentable.

    The logic is pretty simply if you actually follow the statute and don’t conflate “patentable” which is the ultimate conclusion with “patent eligibility” which is the first inquiry.

  14. Ternary August 26, 2019 11:05 am

    Excellent post Gene. It must be tiresome to have to expose the nonsense reasoning of the Courts over and over again. But please keep at it.

    One cannot say it any clearer than Gene did: “It is impossible for something that has a physical or concrete existence to be abstract.” No ifs and buts. It is unacceptable and bizarre to use a term in the exact opposite of what it actually means. This is what the Courts do in deference to a decision of SCOTUS that could be taken as a scene from the Theater of the Absurd. With great insight Gene compares the current decisions to a Monty Python sketch. Indeed, the US Patent system starts to look like the Cheese Shop sketch, wherein no concrete objects are available and all cheeses are fictitious or abstract. Only Monty Python is funnier.

    In hindsight we will talk with amazement about the sheer stupidity of the language being used and how some of the legal community eagerly follow the malicious pied piper to declare “transmission of data” as being an abstract idea.

  15. Clifton David Croan August 26, 2019 11:16 am

    It’s not 2019. It’s 1984, per SCOTUS. Black is white etc.

    In this time some pigs are more equal than others.

  16. ST August 26, 2019 12:08 pm

    A-men.
    For the first ten years of my patent practice, inventors abroad sought to create US Patents. For the last ten years, inventors in the USA ask “how can I file in more patent-logical jurisdictions.”
    The US can not afford to wait another 5 years for the Supreme Court to review and correct this mess they’ve created.*
    *in case you’re unaware, the SCt. reviews similar law about once every ten years.

  17. Jose Nunez August 26, 2019 12:54 pm

    Fantastic analysis. We patent prosecutors have been dealing with this conundrum for years, telling examiners that if there’s no prior-art rejection it must be inventive. But, like the Federal Circuit, examiner’s just shrug and say, “not really.”

  18. B August 26, 2019 1:37 pm

    @ Paul M “Despite Tillis’ claim that US Inventor would have a seat at the table (see the transcript of the Senate hearings – he said it loud and clear during my testimony), they have completely excluded us from the secret drafting of the new 101 legislation and the review of that draft going on this week. That privilege is reserved for big tech lobbyists and other big corporations. It is reserved for the companies that give staff high paying jobs for the favors they do when passing laws.”

    I asked to be included in that meeting as an attorney who has dealt with Alice/Mayo from examiner to Supreme Court. I didn’t even get a response.

    I’m thinking of submitting a FOIA

    @ TFCFM “One might reasonably question the efficacy of name-calling and misdirection for inducing highly-educated individuals to reinterpret a statutory scheme the way one wishes.”

    Your posts are idiotic and false on your best days. What names did Gene call anyone?

    Misdirection? That’s you.

    Anyway, according to the courts, a drive shaft modified to reduce sympathetic vibration is abstract. I’ll call every judge who agrees with this an “idiot.” If that offends your fake self, so be it.

    I have demanded the Federal Circuit and Supreme Court to explain what “abstract” means. I have demanded that they explain what an “inventive concept” is. “Oh, golly – these claims are clearly not anticipated and not obvious, but there’s no inventive concept.”

    Judge Giles Rich long ago explained that “invention” was merely a judicial veto when a claim couldn’t be invalidated under the Patent Law, and these black-robed charlatans profess to value the importance of the statutory patent law even as they violate it by declaring “no inventive concept.”

  19. angry dude August 26, 2019 1:45 pm

    Paul Morinville @9

    Paul,

    Have you ever been to China ?

    I was there once – it’s completely different culture

    Unless you marry into wealthy and influential Chinese family your chances of enforcing your patent in China are minimal (still probably higher that here in US where your chance is exact ZERO nowadays)

    Filing in China is not the answer for the majority of American inventors – most people born in this country never go outside except maybe for short vacation (I wasn’t born here – I traveled and lived all over the world in the 90’s before settling down here)

  20. angry dude August 26, 2019 2:10 pm

    TFCFM @10

    “A process for calculating the energy content for a composition of matter, the process comprising using a computing machine to multiply the mass of the composition by the square of the speed of light.”

    Dude, you are really ignorant and annoying

    Ever heard of “mass defect” ? – a term used in nuclear physics to calculate the energy output of nuclear reactions (as far as I can remember from Nuclear Physics courses I took 30 years ago)

    The equation E = m*c^2 is concrete, useful, practical and very much patentable (computers or not – does not matter) – the only problem it was known (1905) before nuclear technology was developed (1940’s)

    YOU contribute nothing here, just lies and more lies

  21. Paul Morinville August 26, 2019 2:59 pm

    Angry Dude @19. I spent most of the last 12 months in China setting up a patent enforcement campaign. https://www.einnews.com/pr_news/482953343/beijing-semicomm-sues-apple-for-patent-infringement-on-core-video-compression-technology

    China is by far less expensive, faster, and fairer. Little guys get a shot at defending patent rights. That is not the case here. The US system is bought by big corporations who can take out little guys due to the high cost, decades long process and unfair politically biased courts.

    Anyone who patents in the US is a fool.

  22. B August 26, 2019 4:02 pm

    @TFCFM “A process for calculating the energy content for a composition of matter, the process comprising using a computing machine to multiply the mass of the composition by the square of the speed of light.”

    Obvious and anticipated, but not abstract.

    How about: a method for processing a polymer, comprising processing a well-known mathematical formula including an integration step using a programmed digital computer.

    Abstract?

    How about: a method for conducting inventory control comprising assigning inventory numbers to each piece of inventory, affixing a respective bar code to each piece of inventory, and tracking said inventory using a digital computer.

    Abstract? The answer will surprise you.

  23. Paul Cole August 26, 2019 4:23 pm

    How about looking at the representative claim in issue:

    1. A method for processing paper checks, comprising:
    a) electronically receiving a data file containing data captured at a merchant’s point of purchase, said data including an amount of a transaction associated with MICR information for each paper check, and said data file not including images of said checks;
    b) after step a), crediting an account for the merchant;
    c) after step b), receiving said paper checks and scanning said checks with a digital image scanner thereby creating digital images of said checks and,
    for each said check, associating said digital image with said check’s MICR information; and
    d) comparing by a computer said digital images, with said data in the data file to find matches.

    If anyone can explain convincingly how this method falls as a matter of substance rather than outward appearance into the eligible “process” category of Section 101, and that individual will be attending AIPLA in October, I will be glad to buy the individual concerned a beverage of his or her choice.

    One useful approach might be to properly construe the claim. Given the generality of the claimed features, they are essentially step + function features and therefore fall within 35 USC 112(f). They are therefore limited to what is disclosed in the description and drawings + their obvious equivalents. As I recall the description of the patent is quite detailed, so if the claim were properly construed there might indeed be enough technical features to qualify. However the down-side of 35 USC 112(f) is that there has to be sufficient supporting detail, and mere black boxes do not suffice.

    And what is the effect of step (d)? Does it suffice if after the comparison the data generated is merely deleted without storing the data or communicating it to anyone? If that is not within the meaning of the claim, then why not?

    Again inspired by a Groucho Marx quote: I’ve read a perfectly wonderful patent claim. But this wasn’t it!

  24. Curious August 26, 2019 4:33 pm

    A process for calculating the energy content for a composition of matter, the process comprising using a computing machine to multiply the mass of the composition by the square of the speed of light.
    Let’s assume that this was patentable at the time of its discover. Who could it have been enforced against? It took several decades before the actual man-made and self-sustaining conversion of energy to matter took place. By that time, the patent would have already been long expired. Also, one does not need to use this equation to perform the conversion of matter to energy. Performing the equation is not the same as performing the conversion.

  25. BP August 26, 2019 4:44 pm

    B @18

    “I asked to be included in that meeting as an attorney who has dealt with Alice/Mayo from examiner to Supreme Court. I didn’t even get a response.”

    I appreciate your effort. Access is not what it used to be. 20 years ago, I remember meeting with independent inventors, a US congresswomen and a US senator on fairly regular basis. Today, push too hard for access and the politicians will have you arrested (like doctors that wanted input on the ACA).

  26. angry dude August 26, 2019 5:28 pm

    B @22

    “Obvious and anticipated, but not abstract.”

    “How about: a method for processing a polymer, comprising processing a well-known mathematical formula…”

    ????????

    Obvious ??? When and to whom ???? To you ???

    “…a well-known mathematical formula”

    What is “well-known mathematical formula” ?

    Someone has to think it up and publish it first, you know

    So the parasites can cry loud “oh, it’s well known formula”

    disgusting

    E = m*c^2 formula is 100% patentable (in 1905)

    From more recent history its would be RSA algorithm – 100% patentable

  27. angry dude August 26, 2019 5:34 pm

    Paul Morinville @21

    “Anyone who patents in the US is a fool.”

    I agree 100%

    Keep in mind though that patent is a public disclosure

    So no matter where you patent it gets disclosed to the entire world

  28. B August 26, 2019 5:41 pm

    @ BP FYI I just talked to Senator Tillis’ Main aide in charge of IP. I’m arranging a meeting at the Senate soon to discuss the nonsense of the courts and USPTO. Anyway, I came away with a warm fuzzy as these people hate what the courts have done, and they’re looking into getting me a list of the participants after I explained some of the things said about the closed meeting out of a sense of paranoia. I’m not cynical of the Senate on this yet. The courts are bats—t crazy and dishonest, but let’s see how Congress acts.

  29. Paul Morinville August 26, 2019 5:56 pm

    Angry Dude @27. If you can’t hide it as a trade secret, the only way to protect it is by patenting it. If you don’t patent in the US, you save a LOT of money and heartache. Not only does this avoid the years lost and cost of the PTAB as well as expensive court litigation in the US only to be invalidated by one or both, but an invalidation in the US will negatively affect the value of your patents in China and Germany, so that problem is avoided altogether.

  30. Paul Morinville August 26, 2019 6:01 pm

    B @28. Did they let you see the legislation they are letting big corps see tomorrow? Are they going to let you see it? Or are they just concerned with those who pay for the privilege so they can group their PR campaigns and saturate the airwaves long before small inventors have a chance to evaluate the legislation for problems and drown out any of the issues we bring up like they have done for the last two decades?

  31. mike August 26, 2019 6:54 pm

    @B. Please do file a FOIA. I know of many inventors who asked to have a seat at the table a few months ago when the 45 witnesses were called, and they were denied. PaulM was practically the only voice for the Inventor. I find this strange, given that the Constitution lists “Inventors” as the ones who progress Science and the Useful Arts, not lobbyists or big corporations.

  32. Curious August 26, 2019 9:15 pm

    And what is the effect of step (d)? Does it suffice if after the comparison the data generated is merely deleted without storing the data or communicating it to anyone? If that is not within the meaning of the claim, then why not?
    How long have you been involved with US patent law? “The purpose of claims is not to explain the technology or how it works, but to state the legal boundaries of the patent grant.” S3 Inc. v. nVIDIA Corp., 259 F.3d 1364, 1369 (Fed. Cir. 2001). This is an important aspect of claims that many people (including both examiners and patent practitioners) don’t get.

    By asking the question “And what is the effect of step (d)?”, you are asking that the claim explain how the technology works. That is NOT required of the claims. There is NO NEED for the claims to enable the invention — that is what the specification is for. This is laid out in the differences difference between first and second paragraphs of 35 USC 112 (pre-AIA) or subsections (a) and (b) (post-AIA).

    Too often I run across overly verbose claims (oftentimes originating from foreign counterparts) that include trivial (obvious) limitations that do nothing to distinguish the claimed invention over the prior art. Oftentimes, I can hack away 50% of the verbiage and come away with a cleaner claim that more clearly presents the distinguishing features to the examiner.

    With this particular claim, I suspect that there are a number of things that could happen after comparing the digital images with the data in the data file to find matches. However, none of those number of things were necessary to distinguish the claims over the prior art so there was no need to include them in the independent claim.

    Given the generality of the claimed features, they are essentially step + function features and therefore fall within 35 USC 112(f).
    The generality? The claims appear to be pretty specific to me, and it appears that the patentee didn’t intend to invoke 35 USC 112(f) (or sixth paragraph). Personally, a patentee should only invoke 35 USC 112(f) as a last resort, and a court shouldn’t force 35 USC 112(f) on a patentee when 35 USC 112(f) was not intended to be invoked.

  33. B August 26, 2019 11:30 pm

    @ Angry Dude

    Practically any well-known formula. Here I was thinking the Arrhenius equation from Diamond v Diehr. Rubber is a polymer.

    My point is that the courts are nuts. Alice Corp is a bad joke. These judges are so out to lunch they don’t see the contradictions. Heck, the claims in McRO were directed to weighting phonemes then “apply it” sounds abstract to anyone who ever read Recognicorp

  34. angry dude August 27, 2019 12:40 am

    B @31

    “well-known formula”

    This is not how patent law works or should work and you know it

    I can program my computer to spit out any possible formula..

    But if you need to calculate energy output of some chemical reaction and you don’t know how to do it and someone finds the right formula – it’s 100% patentable

  35. Paul Cole August 27, 2019 6:34 am

    @ Curious

    In order to be valid, the combination of features in a claim should lead to a new function or result not logically derivable from the prior art and which is the inventor’s own discovery. Ideally the claim should be written so as to suggest that this is happening or even better to indicate the new result in the claim itself. That is as true for the US as it is for us in Europe. If the claim does not do this, then the judges (especially the less technically educated ones in the Federal Circuit) will be encouraged to treat it with suspicion. There are SO many of these 101 claims in the software/business method field that I read in the context of a non-eligibility decisions and think: “So what??”

    The very broad claiming approach may have worked in the days of State Street. But in the days of Alice/Mayo it no longer does as we have painfully seen at both ends of the subject-matter spectrum. It is essential to have sufficient technical features in the claims to avoid the problems that have become so familiar. Even with those features we may still run into difficulty, as with medical diagnostic methods, but with a specific and detailed claim our prospects are improved.

    On 112(f) the paragraph reads: “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” There is very little in the claim in terms of supporting structure or acts. To quote the MPEP at 2181 on the presumption that 112(f) is inapplicable: “The presumption is overcome when “the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.'” Williamson v. Citrix Online, LLC, 792F.3d 1339, 1348, 115 USPQ2d 1105, 1111 (Fed. Cir. 2015) (en banc) (quoting Watts v. XL Systems, Inc., 232 F.3d 877, 880 (Fed. Cir.2000); see also Personalized Media Communications, LLC v. International Trade Commission, 161 F. 3d 696, 704 (Fed. Cir. 1998).” Many of the steps in the claimed combination here recite substantially no structure or supporting acts and an astute litigator would seriously question whether 112(f) should be considered. For example, in step (b) where is the account and what is its nature. Who or what is doing the crediting? Are the terms of the claim satisfied by the use of a quill pen and parchment ledger? Definitely not a specific step.

  36. Curious August 27, 2019 8:29 am

    In order to be valid, the combination of features in a claim should lead to a new function or result not logically derivable from the prior art and which is the inventor’s own discovery. Ideally the claim should be written so as to suggest that this is happening or even better to indicate the new result in the claim itself. That is as true for the US as it is for us in Europe.
    Maybe for Europe, but there is no requirement in the US that “the claim should be written so as to suggest that this is happening or even better to indicate the new result in the claim itself.”

    If the claim does not do this, then the judges (especially the less technically educated ones in the Federal Circuit) will be encouraged to treat it with suspicion.
    That is what happens when you have patent counsel that doesn’t have a firm grasp of US patent law. What is required of the claims is spelled out in 35 USC 112(b). If anybody (including a judge) asks for something more out of the claims, then point them to that section of the law. The Supreme Court has long cautioned against reading into the patent laws limitations and conditions not expressed by Congress. That admonition is too frequently forgotten.

    There are SO many of these 101 claims in the software/business method field that I read in the context of a non-eligibility decisions and think: “So what??”
    Then read the specification. It is there for a reason.

    But in the days of Alice/Mayo it no longer does as we have painfully seen at both ends of the subject-matter spectrum. It is essential to have sufficient technical features in the claims to avoid the problems that have become so familiar.
    Not sure by what you mean by “technical features,” but neither do most practitioners and the Federal Circuit itself. The days of Alice/Mayo involves making up case law on the fly — case law that is completely divorced from statutory law.

    There is very little in the claim in terms of supporting structure or acts.
    I disagree. All of these limitations are acts.

    in step (b) where is the account and what is its nature. Who or what is doing the crediting?
    Again, you are asking how the invention works — not required for a claim. Explaining how to make and use the invention is the job of the specification.

    Are the terms of the claim satisfied by the use of a quill pen and parchment ledger? Definitely not a specific step.
    Oh please. That is a lame argument. What if I said to use a quill pen — your response would be “what kind of feather?” What If I said a goose feather — your response would be “what breed of goose? or “was the nub hardened?” You can continually ask for more specificity — no matter how specific I got in the claim. The specificity you are asking for is not important to distinguish the claimed invention over the prior art.

    Anybody who feels the need to write claims with the kind of specificity you are advocating for are people who excel in writing claims that can be easily designed around. In other words — they are creating near worthless claims.

  37. Night Writer August 27, 2019 9:02 am

    Functional language is used by “anyone” or “ordinary skill” person in the art to express the known solutions and, in the case of patent claims, those solutions that are enabled by the specification.

    EVERY single inventor I have worked with knows this. It is an outrage that the CAFC does not acknowledge this known practice of inventors.

  38. Paul F. Morgan August 27, 2019 9:36 am

    The definition of what the Sup. Ct. meant by “abstract” and what broad claims to physical objects it was applied to is not going to get legally rebutted by citing a narrow definition of that word from a dictionary.

  39. Anon August 27, 2019 11:34 am

    In light of a recent case, I must say that Mr. Cole has lofty aspirations.

    😉

  40. Ternary August 27, 2019 11:56 am

    SCOTUS does not define “abstract,” thus creating the mess we are in. But we certainly can define “not abstract.” “Not abstract” is anything that exists with or without the presence or interpretation of humans. That is why a calculation is abstract but a calculating machine is not abstract.

    The lack of a legal definition of “abstract” and the divergence from its common use by the Courts renders any decision on this subject arbitrary, unpredictable and unscientific. It can never be rebutted effectively based on set rules. It makes the process of legal decisions in patent matters a sick joke, prejudiced by undefined interests and ideology. That is why Congress has to step in. Isn’t that what the discussion has been about?

  41. Anon August 27, 2019 1:49 pm

    But we certainly can define “not abstract.”

    Sadly, while “we” can, the Court pays no heed to such (as the rest of your post effectively notes).

  42. B August 27, 2019 2:13 pm

    @ Angry Dude “This is not how patent law works or should work and you know it.”

    It’s not the way patent law should work. Yes, I know it.

    As the way the law working now I think we can agree that a mathematical equation need not be known or obvious. It just has to sound “abstract”

    BTW, you should listen to the oral hearing on American Axle v Neapco. (July 7th). There’s a real chance the CAFC will hold that a drive shaft is abstact. Judge Moore, Dyk, and Taranto.

    I predict Judges Dyk (who hates patents) and Judge Taranto (who is still clueless about 112(f)) will vote thumbs down, and Judge Moore will dissent.

    It’s been nearly four months since oral argument. That means there’s a lot of bickering b/t judges.

    There is concern in the oral hearings that there’s not enough detail in the claims with the knuckleheads in black robes making 112(a) enablement arguments. These judges don’t seem to believe that those of ordinary skill in the art know more than judges.

    My prediction: American Axle goes down under 112(a) disguised as 101, and Morse will be cited.

    I hope I’m wrong

  43. B August 27, 2019 3:33 pm

    American Axle v NeapCo (May 5th) oral hearing: http://www.cafc.uscourts.gov/node/24720

    Typically the CAFC takes 2-3 months to come to a decision (max) after oral hearing.

    They generally take more time only when struggling to effectively lie.

  44. angry dude August 27, 2019 4:18 pm

    B @42

    “…there’s a real chance the CAFC will hold that a drive shaft is abstract”

    Well, one can say that draft shaft is abstract … until someone sticks it in your arse

  45. Ternary August 27, 2019 4:24 pm

    Oops. @40 of course should be “Not abstract” is anything that exists with AND without the presence or interpretation of humans. A programmed computer runs its course, despite what humans believe it does.

  46. B August 27, 2019 4:33 pm

    @ Ternary “A programmed computer runs its course, despite what humans believe it does”

    That may be the best test I’ve ever heard for “abstract.” Does it exist outside human thought.

  47. Night Writer August 28, 2019 7:04 am

    @47 B

    I listened to the oral arguments. Those are great oral arguments for understanding how people like Taranto think about 101. Moore was really trying to help there.

    (I think the problem with Taranto is that he doesn’t understand any of this technology and has formed these abstract ideas in his head about how technology works and has convinced himself that he knows more about technology than anyone else. I think Taranto doesn’t agree that a functional statement can be a set of specific solutions to one skilled in the art. And that the question is not whether a judge with no science training understand the structure or not is not the question but rather whether a person skilled in the art understands the question.)

    So again the problem is that Taranto is using his knowledge to determine whether structure is recited by function rather than one skilled in the art.

    There is a great cartoon that illustrates this point perfectly. A manager asks a programmer to write a program to identify the different types of documents in a directory and the programmer says no problem and has it done in an afternoon. The manager then ask the programmer to identify different birds from a photograph and the programmer says that is a multiple year research project.

    You get it? The tasks are both stated functionally but to one skilled in the art the first task immediately brings up structure and solutions whereas the second task also recites functions but brings up no structure. To people that are completely ignorant of science and technology like Taranto the functions appear the same like to the manager.

    Just ridiculous that we have to deal with people of such low quality as Taranto at the CAFC.

  48. Concerned August 28, 2019 9:29 am

    NW@ 47: So again the problem is that Taranto is using his knowledge to determine whether structure is recited by function rather than one skilled in the art.

    I feel this pain. Once I demonstrated that working professionals and experts in my field could not solve the problem since 1956, a solution cannot be routine, conventional and well understood because an examiner believes it to be. An examiner who never worked day one in the field.

    The authors of the university studies had 25 years experience. the other author with 35 years experience.

    My way of thinking: I met the burden of proof, grant the patent, and make the potential infringers prove otherwise with hard evidence, not opinions.

    Why is the inventor held to such an extreme standard not expressed by law? In fact, the MPEP volleys the burden back to the USPTO. yet I am the only one who has to fight like mad.

  49. B August 28, 2019 10:29 am

    @ Night Writer “I listened to the oral arguments. Those are great oral arguments for understanding how people like Taranto think about 101. Moore was really trying to help there.”

    The trouble is you have Moore against Taranto and Dyk. Taranto is clueless about the law as well as the technology. He’s a throwback to 1946 and too intellectually lazy to read the statutes or Alice Corp.

    You should hear the oral on Villena. The USPTO solicitor’s only argument was “COMPUTERS!!!!!!!!!!” Hughes didn’t even know his own opinions, and none of the CAFC panel knew that the Alice Corp. decision was based on extrinsic evidence and the Mayo decision was based on intrinsic evidence. My statement re Mayo made its way into the Berkheimer en banc denial decision. Ten years since the Mayo decision and none of the CAFC bothered to read it beyond the Cliff notes.

    “Just ridiculous that we have to deal with people of such low quality as Taranto at the CAFC.”

    Taranto has a lot of company. It’s one thing to be anti-patent. It’s another to perform acts outside the law and make things up out of thin air to kill patents. Did you observe the 112(a) controversy in the American Axle oral? Taranto: “Golly darn no one on Earth can figure out how to tune a dampening device on an axle!!!” Forget 112(a) enablement has underlying issues of fact that must be satisfied (typically by expert testimony), the 112 enablement issue is now under s101 where Taranto’s opinion, not evidence, is what matters. Almost 4 months since oral argument on American Axle. To my knowledge Villena holds the record at exactly 5 months.

    The trouble in American Axle: it has a LOT of amici opining in and is a LOT harder to lie about without bringing in too much attention nationwide.

    Also, now that Trading Technologies has both won and lost on the same exact issue (Newman versus Hughes), one would think that the CAFC would take up the case en banc. They won’t. The majority of the CAFC is content to play its stupid games.

  50. Night Writer August 28, 2019 11:38 am

    @49 B

    Those are all good points. I think the key to this is that claims are supposed to construed in terms of a person skilled in the art (or an anyone) in view of the specification and not based on what a judge thinks about the claims.

  51. Peter Kramer August 29, 2019 8:17 am

    One may think that thoughts are not concrete with physical manifestation but a neurophysiologist would disagree. Whether “mental processes” are carried out in silico or in vivo, they’re not disconnected from the physical realm.

  52. Paul Cole August 29, 2019 12:24 pm

    Coming from outside the US, it seems to me that the time for oral argument is ridiculously short and insufficient for the judges to be made to understand a complex case. The superiority of telephone or face-to-face discussion over written argument needs no elaboration – misunderstandings can be identified rapidly and the correct facts can be immediately pointed out. I do not think, especially given the complexity of both fact and underlying case law, that this can or should be the work of just a few minutes.

  53. Paul Cole August 29, 2019 12:28 pm

    The headline statement here is in my view wholly correct and is consistent with briefs that I have filed or helped to file in the Federal Circuit and the Supreme Court both under my own name and as a contributing author for the Chartered Institute of Patent Attorneys in the UK.

  54. Jam August 29, 2019 6:17 pm

    SCOTUS and CAFC’s Alice two step:

    1. You see that novel piece of the claim right there? Yeah, instead of calling that an improvement to technology or calling it the inventive concept, which we easily could do, because it, you know, actually is the improvement to the technology and is novel and inventive, no, we’re going to take that piece completely out of context, give it the broadest possible interpretation, and call that the abstract idea.

    2. After throwing away the inventive concept, let’s see what’s left … hmmm, why there’s nothing left that can be the inventive concept. Shocking … when you throw out the inventive concept from the claim, there’s nothing left that can be the inventive concept. Consider the claim as a whole or as an ordered combination you say? But that’s what we did, we considered the claim as a whole … by dissecting the whole claim into little pieces that we then threw out, one at a time.

  55. B August 30, 2019 6:38 pm

    @ Jam “no, we’re going to take that piece completely out of context, give it the broadest possible interpretation, and call that the abstract idea. “

    Not at all. Sometimes they just completely ignore the limitation or call it “conventional.” Other times they outright lie.

    GQ calls what the CAFC does “illogical,” but in reality its just dishonest behavior.

    “After throwing away the inventive concept,”

    Trust me – no judge/justice on the CAFC or SCOTUS has the most remote idea what an “inventive concept” is, and no judge or justice knows how to discern “abstract idea.”

    Good luck on drawing one of the 3-4 CAFC judges that know this to write the s101 opinion.

    I’m still on the balls of my feet in anticipation of the American Axle v Neapco decision. It’s way overdue, and I want to see how Taranto and Dyk will rationalize that an automotive drive shaft having reduced vibration is “abstract.”

    I suspect that Taranto will say that the improvement is within the abstract idea (applying Hook’s law) citing his own garbage nonsense from Investpic.

  56. Anon August 31, 2019 9:27 am

    B,

    They may well just shock you and produce a “reasonable” opinion — notwithstanding the fact that doing so may add yet more rope to the Gordian Knot of 101 “jurisprudence.”

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