Examining Confusion Between the Chamberlain and Berkheimer Decisions at the Federal Circuit

By Wen Xie
September 9, 2019

“Rather than look to the improvement as the possible ‘something more’ that overcomes the well-understood, routine and conventional standard, the Chamberlain panel took that standard and applied it right back to the improvement itself.”

https://depositphotos.com/23642325/stock-photo-signpost.htmlIf you’re reading this blog, then you likely are an avid follower of the Section 101 saga. The most recent episode in this saga, Chamberlain v. Techtronic at the Federal Circuit, is about so much more than a garage door operator being an abstract idea. It’s about the fact that we still have no clue what’s supposed to happen in the 2A and 2B steps of the judicially-created Alice/Mayo test.

From Mayo to Mess

In Mayo and Alice, the Supreme Court told us that an abstract idea needed “something more” than what is well-understood, routine and conventional (WRC) to be patentable.

Sure.

Then, Berkheimer v. HP came along a year and a half ago and said something very interesting: if you have an abstract idea under 2A, you can overcome the abstract idea finding by showing that the claim is directed to a purported improvement under 2B. (“[W]e must . . . ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.”  Berkheimer at 11.)  In other words, the improvement to the computer functioning is a showing of that “something more,” rendering an abstract idea (the computer functioning alone) to be more than WRC.

However, now, we have to question whether this standard established by Berkheimer will be sustained in light of the Federal Circuit’s more recent precedential Chamberlain decision.

I know what you’re thinking: Isn’t that what Chamberlain did?  The panel assessed the CGI’s improvement after all. (“The asserted claims here are not limited to a specific implementation of a technological improvement to communication systems. Rather, they simply recite a system that wirelessly communicates status information. Nor do the asserted claims ‘focus on a specific means or method that improves the relevant technology.’”  Chamberlain at 7.)

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Reading Berkheimer Backwards

No. The Chamberlain panel applied the Alice/Mayo test completely backwards compared to what the Berkheimer panel said. First, the question of improvement was assessed in Chamberlain’s “Step One” (or 2A). Not only that, the panel then immediately went on to find that “(t)he specification admits that the act of transmitting data wirelessly is ‘well understood in the art,’ and no other changes to the generically claimed movable barrier operator are recited in the asserted claims or described in the specification.”  Chamberlain at 7.

What is happening in Chamberlain?  Rather than look to the improvement as the possible “something more” that overcomes the WRC standard, the Chamberlain panel took the WRC standard and applied it right back to the improvement itself. The purported improvement here was to improve a garage door opening system by providing a wireless communication system to communicate status information for a garage door opener. The panel limited the improvement here to just wireless communication of status, ignoring the setting of its implementation, which was to a garage door, and then found the method of wirelessly communicating status to be well-understood in the art. In other words, the purported improvement is not an improvement to a garage door system by providing a wireless communication system, which I believe is what the appellant was arguing. Rather, the improvement is just limited to a wireless communication system, which greatly enhances the standard of what that improvement must be under a patentability analysis.

This means that the Chamberlain panel took the very obstacle the improvement was supposed to overcome and applied it right back to the improvement. That’s like putting the cart on the horse!

The table below outlines the main differences between Berkheimer and Chamberlain in terms of how they applied the Alice test:

Confusing the Search for Something More

Notice the key difference: in Berkheimer, the improvement is assessed in Step 2B, while the improvement is assessed in Step 2A in Chamberlain. And yes, it matters when you assess the improvement. Why? Because, as stated before, when the improvement is assessed in 2B, it becomes a showing of something more. But if the improvement is assessed in 2A, the claim now needs to have something more than the improvement in 2B. And if Chamberlain’s assessment of patentability is utilized, once the purported improvement is found to be an abstract idea under 2A, then there’s nothing to save the claim from unpatentability under 2B, practically speaking. The purported improvement is always a claim’s basis. So, if that’s an abstract idea, what is even the point of looking at the rest of the claim in 2B?

Another reason the disparity between these decisions is not a good thing is because it confuses us!  On the heels of Berkheimer, the USPTO promulgated the new Section 101 Guidelines in January. These are lovely, lovely guidelines that told the Examining Corp to look for an improvement as a separate step from the traditional 2A “is this an abstract idea?” step. (Prong Two considerations: “Limitations that are indicative of integration into a practical application: Improvements to the functioning of a computer or to any other technology or technical field – see MPEP 2106.05(a).”)

Could Have, Should Have

What if the Chamberlain panel had found that the main reason for a finding of unpatentability was that the claim failed to recite how the wireless communication was for specific implementation to a special purpose machine? That is, CGI’s wireless communication system could have been implemented generically to many types of machines and apparatuses, not just to a garage door. The Chamberlain panel actually suggested that they considered this issue into their finding of patentability. (“[T]he ’275’s claims, like Bascom’s, are patent-eligible because they ‘carve out’ a specific implementation (a specific type of operator with an integrated controller and wireless transmitter to transmit status information) that provide [sic] greater flexibility than the prior art physical interfaces approach.”  Chamberlain at 10.)

If that’s the case, then it’s not the most unreasonable grounds for a finding of unpatentability. The panel could have said that CGI’s improvement (the wireless communication system) failed to show something more than what is WRC because the claim failed to recite how the wireless communication was specifically to be implemented into a special machine or apparatus. But they could have done all of that in 2B and remained consistent with Berkheimer, without turning the WRC standard onto the purported improvement in 2A. The Patent Trial and Appeal Board actually does it all the time. (See Ex Parte Olson, Appeal 2017-006489 (PTAB Mar. 25, 2019); Ex Parte Kimizuka, Appeal 2018-001081 (PTAB May 15, 2019); Ex Parte Savescu, Appeal 2018-003174 (PTAB Apr. 1, 2019); Ex Parte Fautz, Appeal 2019-000106 (PTAB May 15, 2019)).

There was no need to parse out the purported improvement in 2A and apply the WRC test to the improvement in 2A. The Chamberlain decision cites a lot of precedent that appears to have done something similar, namely Core Wireless v. LG. But if the Federal Circuit was telling us that they were willing to change course in Berkheimer, what is the point of Chamberlain?  Really, what is “something more” anyway?

 

 

The Author

Wen Xie

Wen Xie is a patent prosecution attorney at Global IP Counselors, a full-service intellectual property firm in Washington DC. Wen specializes in prosecuting patents in the mechanical and software arts, including drafting original US applications and overseeing PCT national stage filings.

For more information or to contact Wen, please visit her Firm Profile Page..

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 38 Comments comments. Join the discussion.

  1. Appearance of ... September 9, 2019 5:58 pm

    “Something more” is undefined.
    “Abstract” is undefined

    How to find a patent to be “abstract”:

    1) Be in a position of authority over the patent
    2) Start ignoring claim limitations
    3) Continue step 2 until you (as the authority figure) decide it is now abstract

  2. Pro Say September 9, 2019 6:08 pm

    Only Congress can end this scourge of American innovation.

    Only Congress.

  3. Carl Whitaker September 9, 2019 7:53 pm

    I love these side shows, FACT IS THERE WILL BE NO REFORM AND FAANG IS WORKING ON A NEW BACK DOOR TO AVOID PAYING PATENT HOLDERS. AMERICA’S PATENT SYSTEM IS FINISHED. MS. LEE AND THE AIA ACTs PTAB ALICE/MAYO/EBAY/TC-HEARTLAND/OIL CASE HAVE SEALED THE DEATH OF PATENTS IN AMERICA. ASIA AND EUROPE ARE THE NEW LANDS OF MILK AND HONEY FOR NEW INVENTORS. AMERICA HAS KILLED THEM SELVES BY PROTECTING FAANG THEFT OF IPs THAT DO NOT PROTECTION AND ARE OVERLY OBESE WITH WEALTH, THAT NEED TO BE SLIMMED DOWN.

  4. Concerned September 9, 2019 9:38 pm

    Received today the examiner’s response to our PTAB appeal. Every argument advanced by the examiner is prefaced by the term “abstract idea.”

    The examiner has provided no evidence or court case where the tracking of the parent of an adult is a long standing practice in commence in my field or any field. The tracking of a parent of an adult cannot be said to be “abstract” as a matter of law, there is no proof that it has ever occurred in my field or any other field. It is not routine, well understood or conventional anywhere on Earth.

    The examiner seems to intentionally leave out of his argument the basis why the inventive concept is abstract, only assumes as much, and then advances all his abstract “type” arguments.

    Nor is there any explanation of how inferior data using a generic computer could solve a problem beyond the reach of working professionals and experts using superior data and a dedicated network since 1956. Of course an inventive step is present, it is self evident from the significant post process activity that renders a solution.

  5. Lost In Norway September 10, 2019 3:52 am

    Thank you for the article. It is terrifying to me that they moved the question of patentability from 2B to 2A.

  6. Curious September 10, 2019 9:01 am

    This article fails to appreciate how Berkheimer and Chamberlain got to the Federal Circuit. Berkheimer got to the Federal Circuit on a motion to dismiss. Chamberlain was after a jury trial. As stated by the Federal Circuit in Berkheimer, “[w]hether claims 4-7 perform well-understood, routine, and conventional activities to a skilled artisan is a genuine issue of material fact making summary judgment inappropriate with respect to these claims.” The Federal Circuit never passed on whether the invention is patent eligible (i.e., “We do not decide today that claims 4-7 are patent eligible under § 101. We only decide that on this record summary judgment was improper, given the fact questions created by the specification’s disclosure.”)

    In Chamberlain, the Federal Circuit’s error involved something different than that addressed in Berkheimer. First, the Federal Circuit states that “the broad concept of communicating information wirelessly, without more, is an abstract idea.” As I have written elsewhere here, this is total BS. Actually, this depends upon the claim construction — if by “wirelessly” the Federal Circuit includes voice transmission of information, then I can see their point. However, the term “wirelessly,” as interpreted by those skilled in the art, refers to a particular technological regime used to send information over airwaves (e.g., TV, radio, bluetooth, whatever …). This is in no way, shape, or form an abstract idea. This is technology, and anybody saying otherwise, if they have an engineering degree, should have their engineering degree revoked.

    The Federal Circuit also employed their prior jurisprudence, in step 2B, that looks beyond the alleged abstract idea, to see if the additional elements provide an inventive concept. In this instance, since the supposed inventive concept was the wireless communicating status information, there was nothing left to find an inventive concept because everything else was supposedly conventional. However, we are taking the Federal Circuit on their word that the inventive concept was merely wireless communicating status information. With a priority date of May 29, 2003, I find it hard to believe that such an invention would not be considered obvious. As such, there is probably something more to the invention that the Federal Circuit is glossing over. That being said, the Federal Circuit’s main error is finding that wireless transmitting information is directed to an abstract idea.

    If there is a case that would be a decent candidate to take to the Supreme Court, the Chamberlain case would be one. It is one thing to say that the financial services inventions within Bilski and Alice are directed, but it is another thing altogether to argue that a garage door is directed to an abstract idea.

  7. TFCFM September 10, 2019 9:33 am

    Rather than look to the improvement as the possible “something more” that overcomes the WRC standard, the Chamberlain panel took the WRC standard and applied it right back to the improvement itself.

    I trust the author will find no disagreement that Alice/Mayo is an unworkable test. There seems to be no dispute on that score.

    In the bigger picture, though, it seems clear to me that — however poorly the test might presently be stated — the right outcome is issuing.

    In Chamberlain, for example, there was no dispute that the garage-door-opening system was identical to prior ones, except that a piece of information previously transmitted “wirefully” was proposed to be (in no particular way) transmitted wirelessly. Even ignoring the specification’s unnecessary admission, it was plainly routine to send a signal from point A to nearby point B either through a wire or wirelessly.

    The only “improvement” even remotely claimed here was that the inventors claimed to be the first to harness the immense power of “duh” to transmit a signal wirelessly in devices that had previously used a wire. Moreover, no particular mechanism or method for performing that transmission was recited — meaning that the claim encompassed ALL mechanisms and methods. Plainly, then, the “inventors” were claiming the mere idea of transmitting a signal wirelessly, applied to broad field of garage door openers of known type. There isn’t so much as a hint of an invention here, obvious or not.

    The Alice/Mayo test may well not fit this fact pattern well (but does it really suit ANY fact pattern well?) The outcome is nonetheless correct.

    It’s up to clever folks like us to work out a workable test that Congress can direct the courts to apply to defining the kinds of “stuff” that can be patented. Cases like this one demonstrate the sense of designing that test to exclude patentability for “ways of achieving goal X, regardless of how that goal is achieved.”

    (I’m not being coy. If I knew the perfect test, I’d spit it out.)

  8. Ternary September 10, 2019 10:28 am

    “… it’s not the most unreasonable grounds for a finding of unpatentability.” But it is still a nonsense reason for patent ineligibility. We should not buy in to an assumed, undefined and constantly changing notion of what ‘abstract idea’ or ‘directed to an abstract idea’ means, should mean, could mean, maybe means, etc.

    Equating a physical device or a physical method to an abstract idea is nonsense. It is not rational, it is unscientific and it is unworkable. There is no rational way to come to a predictable conclusion in applying such an interpretation. Alice again proves what engineers have long known to be true: garbage in-garbage out.

  9. Benny September 10, 2019 11:17 am

    Concerned @4, I took a look at the file wrapper of your application (you gave us the number a couple of weeks ago), my personal opinion is that the examiner has presented a valid rejection.

  10. B September 10, 2019 11:46 am

    Hey Wen,

    “Chamberlain v. Techtronic at the Federal Circuit, is about so much more than a garage door operator being an abstract idea. It’s about the fact that we still have no clue what’s supposed to happen in the 2A and 2B steps of the judicially-created Alice/Mayo test.”

    Many of us know. Just darn few at the CAFC. According to the CAFC, because the improvement is in the abstract, the improvement doesn’t count and therefor not of help. This stupidity started with Taranto in EPG then later Investpic.

    I first argued the evidence issue a la Berkheimer a year before Berkheimer. I believe you were there. Taranto thought I was an idiot for pushing an issue he later signed onto in Berkheimer. Regardless, I think the point is that Alice/Mayo is a capricious veto used by judges too stupid to put together even a bad s103. Just announce no “incentive concept” or declare the inventive concept is abstract or just lie about the fact pattern. Also feel free to ignore any troublesome limitation you want. That is the CAFC’s Alice/Mayo doctrine.

    It’s not about a coherent standard. It’s about avoiding one at all costs. Wonder why the CAFC will not agree to an en banc decision?

    Wait for the American Axle decision and be amazed. It’s months overdue. The CAFC is itching to kill the patent but can’t figure out how to do it without looking totally incompetent. That and Judge Moore is wrestling with her co-panelists for sanity.

    Great article

  11. Curious September 10, 2019 12:38 pm

    Plainly, then, the “inventors” were claiming the mere idea of transmitting a signal wirelessly, applied to broad field of garage door openers of known type. There isn’t so much as a hint of an invention here, obvious or not.
    No. They were not claiming the mere idea of transmitting a signal wirelessly. They were claiming a garage door — you know, the whole “invention as a whole” concept that applies to all of the patentability standards.

    There isn’t so much as a hint of an invention here, obvious or not
    If there isn’t an invention here, then that is what 35 USC 103 is for.

    The phrase “slippery slope” is often described as a logical fallacy. However, the Federal Circuit has shown that this characterization is accurate. We have gone from “the basic tools of scientific and technological work” (Benson) to “a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.” Bilski/Alice. However, the Federal Circuit did not stop there. They’ve invalidated a transit payment system that required specialized technology (Smart Systems) as well as a vehicle charging station (ChargePoint) and routing message packets over a communication network (Two-Way Media). All of these inventions are intrinsically tied to technology but have been declared “abstract ideas” by the Federal Circuit. If the Federal Circuit can find a way to declare an invention to a garage door directed to any abstract idea, what technology is safe from the reaches of 35 USC 101?

    With the Federal Circuit’s use of analogous cases to further along the ever-widening scope of what doesn’t fall within 35 USC 101, all it takes is a single panel at the Federal Circuit to agree with an argument that some technology is, in fact, actually “abstract” to continue the widen the scope — i.e., we continue to go down the slippery slope. Outside of the Supreme Court fixing the mess they started (while the Federal Circuit made the mess, the Supreme Court stated the mess), the only way this gets fixed is if the legislature steps in.

  12. Concerned September 10, 2019 12:57 pm

    Benny: Thank you for the review.

    In your opinion, do you think the examiner ever addresses the inventive step of tracking the parent of an adult? Is this inventive step ever used in commence in any field to your knowledge. If you cannot think of one situation anywhere, can this inventive step truly be routine, conventional and well understood? (BTW: The examiner cold not)

    Alice never mandated that the computer be improved, only that it can save the claims if the computer is improved when using an inventive step on matters long prevalent in commerce. Can something be long prevalent in commerce if never used?

    Also, SCOTUS in Benson (1972) maintained that concepts that are a new and useful end are patentable. What is your opinion of a concept that solved a problem never achieved by 100s of thousands of working professionals and experts since day one or 63 years to be exact= Is this a concept that is new and useful? If not, then what is new and useful= a process that solves a problem not achieved by 1 million working professionals and experts for 100 years? Are we swallowing all of patent law?

    In your opinion, assuming that there is no inventive step, do you have any reasonable explanation how my inferior data using a generic computer could ever solve a problem that experts could not using better tools and a dedicated network? What is the logical explanation?

    Fyi: The claims never process routine SSDI application, never ever. The examiner reduces our claims to such. We are not claiming such, only the tracking of a parent for an adult over decades and cost efficiently (under $6,000.00)

    Thank you for your upcoming thoughts!

  13. Ternary September 10, 2019 4:20 pm

    I assume that your claims address a real and costly problem in a large administrative computer system and solves the technical problem of the inability to correctly establish eligibility for SSDI. Your solution improves the technical environment of an administrative computer system. An improved program is a technical solution. The claimed system can now resolve issues it could not before.

    The Examiner’s Answer on page 14 as to the practical application is how I recognize what I would call “unserious answers.” Clearly there is a practical application. But the Examiner merely uses the opportunity to say again that the idea is ‘abstract.’ That of course defies the purpose of the ‘practical application’ test, which basically says ‘the claims may be directed to an abstract idea, but is there a practical application?’ The Examiner in his Answer says: it is an abstract idea, it uses the elements that I (Alice) find abstract, for that reason the claims are not integrated in a practical application, but are an abstract idea.’ That is of course nuts. If you get to that test it has already been established that the Examiner finds it an abstract idea. We do not need a regurgitation of his arguments why. We now want arguments why this is not a practical application, which are not provided. Unserious!

  14. Anon September 10, 2019 4:57 pm

    One day the courts and the USPTO will just go back to calling these analyses what they are, a poor mans’ obviousness determination.

  15. Concerned September 10, 2019 4:58 pm

    Ternary:

    Yes, a huge problem with their network as you described. Thank you for your review and comments!

    The two examiners, as the USPTO switched them on me, have dodged many issues.

    Thank you again!

  16. Pro Say September 10, 2019 7:10 pm

    By a show of hands:

    Who’s the greatest eligibility death squad — the Board / PTAB or the CAFC?

  17. concerned September 11, 2019 6:24 am

    Pro Say:

    In my opinion, the USPTO. The examiners do not follow their own memos and dodge arguments in favor of the inventor. It appears the USPTO’s mission is to not grant patents.

    As Ternary pointed out, the examiner completely dodged the practical application question. I readily noticed that the examiner further dodged the tracking of the parent of an adult child (my inventive step), not one word on the matter. The examiner’s complete argument was regarding generic computer functions (I am not claiming a generic computer or its functions.)

    A computer is used to implement the first ever tracking of a parent of an adult, much the same as the Wright Bros used known parts to create the airplane to accomplish a first ever inventive concept of controlled flight. Good thing the Wright Bros did not have a computer and they would have received the Alice drilling.

    The USPTO had everything needed to grant my patent, the university studies documenting the problem, the solution never used in commerce, the Berkheimer ruling, their own USPTO memos, etc. I pay good money to get this kind of treatment.

    IMO: The USPTO, however, I get the feeling I will get drilled all the way up the line.

  18. Night Writer September 11, 2019 7:52 am

    @16

    CAFC. They could easily cancel out Alice.

  19. Anon September 11, 2019 9:56 am

    As I have posted (in detail) previously, there is plenty of “blame” to go around, but the clear party with the most to blame is the Supreme Court, as it is that entity that is at the ROOT CAUSE of the troubles with patent eligibility.

    Sure, some may postulate what other entities may do in a reactive mode, but let’s apply some fundamental problem solving techniques here and NOT treat symptoms when we need to identify the underlying problem.

  20. TFCFM September 11, 2019 10:32 am

    @#11 Curious: “They were not claiming the mere idea of transmitting a signal wirelessly. They were claiming a garage door — you know, the whole “invention as a whole” concept that applies to all of the patentability standards.

    What was claimed was an existing garage door, recited to differ solely in that a signal was transmitted wirelessly, with no disclosure (or claim recitation) of structure.

    At best, this claim recites an existing structure coupled with a mere idea.

  21. Anon September 11, 2019 4:39 pm

    TFCFM,

    You are (again) — and whether purposefully or otherwise — sounding like Malcolm Mooney in attempting to elevate the optional claim format of “structure” to be more than merely an option.

    IF you want to challenge the claim on the basis of the claim — as a whole — is the same as prior art structures, then the proper patent doctrine to use is inherency. It is NOT as you attempt to do here.

  22. Curious September 11, 2019 5:46 pm

    What was claimed was an existing garage door, recited to differ solely in that a signal was transmitted wirelessly, with no disclosure (or claim recitation) of structure.
    If so, why wasn’t this obvious? I’ve been practicing since before this patent was issued, and based upon my experience, at no time would I ever expect a patent to issue where the sole difference was information being transmitted over a wire versus being transmitted wirelessly — not even close.

    As such, what I STRONGLY suspect is that the Federal Circuit (as it is very apt to do) has characterized the “invention” with such broad strokes as to eliminate what has truly made this invention distinctive over the prior art. In other words, there is something more there than what the Federal Circuit is describing.

    What was claimed was an existing garage door
    An improved garage door — patentable subject matter under 35 USC 101 “Whoever invents or discovers any new and useful … machine … or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    At best, this claim recites an existing structure coupled with a mere idea.
    Stop parroting and start thinking. The wireless transmission of data (assuming, for sake of argument, is the only distinguishing feature) is not a “mere idea.” Ideas don’t transmit data — wirelessly or not. Rather, technology (i.e., a machine or a process tied to a machine) is used to transmit data. While the term “wirelessly” does not invoke specific structure, it does invoke some structure.

    The problem with the 35 USC 101 jurisprudence (among others) is that is loaded with words that have undefined meanings and/or meanings untethered from their common meanings. These phrases include: “abstract idea,” “mere idea,” “substantially more,” “directed to,” “well, understood, routine, and conventional,” “inventive concept,” “general purpose computer,” “as a whole,” “improvement in computer functionality.” If you ask ten patent attorneys what these terms mean, you might get ten different answers for each. That is a serious problem.

  23. Anon September 12, 2019 7:11 am

    Curious,

    Not saying that you should not engage TFCFM (as I am a firm believer that schlock should not be ignored since ignored schlock does tend to gain adherence among the unthinking), but engaging with TFCFM is engaging with someone who has shown that he does not care about your counter points.

    TFCFM’s view of patent law has been shown to be — at best — a shallow and mere surface level grasp, indicative of a person that may litigate patent cases, but who has never prosecuted patent cases, let alone have real world experience either DOing or managing innovation efforts.

    He is a person who simply has not grasped that the Court has made a mess of 101.

    The scoreboard is broken. You are engaging with someone who does not understand what that means.

  24. Curious September 12, 2019 1:58 pm

    Anon,

    I’ll turn the tables on you, and ask you to replace “TFCFM” with “MM.” TFCFM (and his ilk) are useful foil for my opinions on particular subjects. I have no illusion of changing his mind, but my intent is to provide a contrasting opinion that is of use to other people who read this blog.

    On the other hand, your daily engagements with MM (on the other site) tend to (very quickly) devolve into personal attacks and are chock full of obscure references that only the most devoted of readers understand. My recommendation is that when he goes low (as he so often does — truly, that place is a cesspool) you take the high ground. Be the adult in the room. Strive to be the commentator, when somebody new stumbles onto that blog, that is looked upon as being the voice of reason in comparison to MM’s ravings.

  25. B September 12, 2019 3:48 pm

    @ TFCFM “In the bigger picture, though, it seems clear to me that — however poorly the test might presently be stated — the right outcome is issuing.”

    You are indeed dumb as a bag of rocks. I am astounded that you still keep pretending to have a law degree

  26. B September 12, 2019 4:02 pm

    @ Anon, Curious “. . . engaging with TFCFM is engaging with someone who has shown that he does not care about your counter points.”

    Or the law, or the facts, or logic. He argues as a child does. That said, his arguments look more and more like MM arguments every day.

    On the other hand, your daily engagements with MM (on the other site) tend to (very quickly) devolve into personal attacks and “

    That is a fair point, and I certainly am guilty of this. All that said, TFCFM had long been attacking me, anon, and others long before we responded with childish remarks so akin to MM’s past comments. Whatever hole this guy came from (and I think that hole is from MM’s head), he’s not an attorney and certainly not a patent attorney.

  27. B September 12, 2019 5:48 pm

    @ Night Writer “CAFC. They could easily cancel out Alice.”

    The CAFC is too incompetent to actually read Alice Corp. They’ve gone all special-ed and are charting new idiotic theories of patent law divorced from statute and case law.

    The actual holding of Alice Corp. is such that claims so rejected should be rare.

  28. concerned September 13, 2019 2:23 am

    B @27: The actual holding of Alice Corp. is such that claims so rejected should be rare.

    And then the USPTO reduces everything that uses a computer to abstract, therefore, it must improve the computer itself. Alice did not imply either of those two USPTO applications.

    And sure the Director says “practical application” publicly but his examiners do not follow. And neither do the courts follow “practical application” even though Benson said:

    Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. See Diamond v. Diehr, 450 U. S. 175, 187 (1981). “[A]pplication[s]” of such concepts “‘to a new and useful end,’” we have said, remain eligible for patent protection. Gottschalk v. Benson, 409 U. S. 63, 67 (1972).

    It really seems that Alice was “code” for eliminate software patents at all costs since SCOTUS will not correct their own insanity or any one else.

  29. Concerned September 13, 2019 8:24 am

    Benny @9: Did you have a chance to go back and look at the examiner’s response with the following:

    1). Did the examiner ever address why the tracking the parent of an adult is routine, conventional and well understood or did he just ramble about how a generic computer does not save an abstract idea? I’m not claiming a generic computer. I’m claiming the inventive step of tracking the parent to solve a technical problem and such tracking has been used in commence in any field. Who tracks the adult parent of an adult child anywhere on Earth?

    2). Did the examiner ever state why the inventive step is not a practical application? Or was it more rambling about his abstract views? Please see page 14 of his response.

    Thank you. Looking forward to your reply for consideration of my rebuttal.

    Ternary @13: Thank you again. I cut and pasted your reply, it will be incorporated in our rebuttal, then off to PTAB.

  30. Anon September 13, 2019 10:14 am

    Curious @ 24,

    You raise a fair point of using someone as a foil. By all means, TFCFM may have some “redeeming quality” in that regard.

    In a similar manner, I have made note that anyone may have an opinion, and surely express such, but that in forums such as this, there is a difference between having an opinion, having an informed opinion, and refusing to have an informed opinion. HERE, those of that last category are (appropriately) given VERY short leash.

    As for your comparison though, I do find fault. There is a world of difference between this forum and the cessp00l that Malcolm Mooney has infested. One driver is that on this forum, the propaganda machine is NOT permitted to run loose. Those who would be active in perverting facts, law, or both WILL find themselves rather quickly constrained, and you have a FAR less likely chance that a drumbeat of IR-reality will be made manifest.

    Also, here, sharp language IS allowed, with leeway as to HOW that sharp language is used (for example, when that sharp language is backed up with a basis in fact, law, or both. Such is a FAR cry from the pointless and mindless ad hominem that typifies Malcolm Mooney.

    It is simply a mistake to lump all sharp language into one bucket and treat such the same. The words of John Maynard Keynes echo the view that the unthinking should NOT be treated with kid gloves.

    And mind you, the sharpest rebukes are NOT delivered to those who may be new or merely initially engaging the forums. The sharpest rebukes escalate to those that should know better and choose otherwise.

    Thus, I would also disagree with you as to how to treat the likes of Malcolm Mooney. The “kid gloves” and “be the adult’ DOES NOT WORK in blunting the propaganda effect. Unfortunately, that other site simply has NO real constraints to the postings of propaganda (witness as objective evidence was put forth that Malcolm Mooney has been posting his propaganda in the same manner of “swagger” for more than fourteen years.

    Lacking a meaningful moderator/editor to constrain the propaganda, THERE be a proper place for fighting fire with fire. Turning a blind eye is NOT helpful, and in fact is harmful.

    “Being the adult” in such situations is simply not enough. Witness the spawning on that other thread of the less-critically-minded that soak up that propaganda and then advance ill-informed (malformed) views “just because it must be true, since some attorney said it on Patently-O.”

    As to the “obscure references,” that is an unfortunate side effect, but is an item that merely reflects the games of Malcolm et al, in that prior items discussed in care and detail are simply ignored, and the propaganda mantra repeated blandly at the next opportunity as if counterpoints were never presented.

    It’s a Br’er Rabbit game of forcing the other side to repeatedly expend the effort of explication, hoping for some slip-up or inconsistency. Yes, “devoted readers” WILL recognize the references (as will both participants). Quite in fact, one of those “obscure references” was a period of time in which that other blog used a DISQUS posting system that provided the functionality of co-locating ALL of an individual’s posts at one location. When the use of this feature was noted — to show how propaganda was being relentlessly used without regard to counterpoints presented — a SMALL set of like-‘minded’ perpetrators EACH escalated their security settings so as to block that feature. Will newcomers have clue as to this series of events? No. Will long term readers? Yes. Will the participants? Yes. Will the editors? Yes. Will anyone willing to dive in and try to see “both sides?” Yes.

  31. Curious September 13, 2019 4:14 pm

    Thus, I would also disagree with you as to how to treat the likes of Malcolm Mooney. The “kid gloves” and “be the adult’ DOES NOT WORK in blunting the propaganda effect.
    We’ll have to agree to disagree on that point. At this point, almost every time I see a flame battle between you and MM, I just skip over it. It is the same stuff I’ve read for years and years and years. You two bicker like a couple (unhappily) married for 50 years constantly trading insults.

    We’ll never stop MM from constantly stooping to a level below that of a worm. That is up to Dennis (and for whatever reason), he has no interest in policing any sense of decorum on his site. However, MM baits you into going round and round the mulberry bush on the same old points over and over and over again. When I’m reading commentary on a blog, I want to read well-presented thoughts. For example, when I read “It’s not as if you have not been informed of limits to your blight, and simply should know better… THAT you want to spin this to be Dennis taking an action to protect anything is just so Trump of you. It’s actually Hilary-ous that you seem so intent on NOT getting this.” and “Yay! Malcolm’s Derp Dance” I’m not getting anything out of it beyond that you two don’t like each other. If I’m getting that feeling, I know other people are as well and are probably skipping over a substantial portion of what you write.

    You have LOTS of good things to say. However, you sully your reputation by mud wrestling with MM all the time. While mud wrestling may be fun (and entertaining to watch from time to time), it is hard to go from mud wrestling in the afternoon to talking about serious things in the evening. People (particularly new people) will say to themselves, “oh, he is just the mud-wrestler … he cannot have anything valuable to say.”

    Think of this way, if you write something intelligent in Post 9 and MM writes something childish in Post 9.1 and you leave it at that, anybody who reads that will think Anon is an adult and MM is a child. However, if you start going to MM’s path in 9.1.1 and then MM replies in 9.1.1.1 and so on and so forth, a reader is going to be turned off by everything written — including your intelligent Post 9.

    Contrary to one of MM’s favorite sarcasms, we are talking about “super serious stuff.” People who are looking for more information about serious stuff are usually turned off by the type of conversations you and MM frequently engage in. By taking the high road, you let the readers be turned off by MM’s antics but your credibility is preserved.

    hoping for some slip-up or inconsistency
    Even if you did find some slip-up or inconsistency, what it is going to prove? He’ll ignore it, and unless you constantly reproduce links (not assertions) that show that inconsistency, few will care because it will be buried among the mud-wrestling, which gets old pretty quickly.

    Let me put this a different way. You can counter MM’s propaganda. However, you can do so without the need to engage him. Engage him just brings you down closer to his level. There is no need to go there.

  32. Anon September 14, 2019 12:07 pm

    Your views as your views are fair enough Curious, for the most part, but there remains an aspect of propaganda effect that you are NOT addressing (and yes, intelligent people WILL stop reading the exchanges, but it is NOT the intelligent people that succumb to the propaganda effect. Also, intelligent people will NOT alter views on the initial exchange by the subsequent back and forths (such, by definition, would not be intelligent).

  33. Curious September 15, 2019 12:11 am

    Every time you engage with MM in the kind of manner I reproduced above, you diminish your credibility. You are engaging MM and not the issue. People who are interested in this kind of stuff usually don’t have lots of free time to separate the wheat from the chaff. The kind of people who you want to influence with your writing don’t care that MM is doing what he has accused others of doing (you have an acronym for it — one of your obscure references). They don’t care that MM admitted something (what, I don’t know) about the printed matter doctrine years ago. There is a whole host of stuff that MM does that you point out that people don’t care about.

    When MM writes “Awww, Dennis has to protect the precious fee-fees of his patent huffing friends. Circle the wagons! So cute” and you respond to it, you elevate the profile of what was written. Short comments that don’t generate remarks are ones I usually skip over. If nobody thought the comment wasn’t worth a remark, why should I read it? MM is baiting you, and you are taking the bait.

    On the other hand, your 8.2.1 is an example of a good response. However, the last two sentences are unnecessary and detracts from your prior points. For example, you refer an “‘S’ sign” but what that means is even unknown to me who has read your stuff for many, many years.

    If this was a football blog, I wouldn’t even think of making these points to you. However, patent law is my livelihood and you are probably the most prolific pro-patent commentators on these blogs. If you are treating this as some debate among long-time colleagues in which every side implicitly acknowledges that no minds will be changed, then proceed as usual. However, if you treat these blogs as entryways to patent law for law clerks, congressional aides, and other influential parties who could help shape patent law, and thus, what you say could might have an impact on the law itself, then I urge you to have your writings spend more time engaging the issues rather than engaging the personalities on the opposite side of the debate. You are at your best when you are engaging the issues. You are at your worst when you are engaging the personalities.

    If one of your adversaries makes a point that you want to attack, then attack the point and ignore your adversary. Their (bad) points should be the foil you use to spread the good word.

    Finally, if you want to make your writings clearer, skip the obscure references/shortened phrases/acronyms/odd highlighting/odd capitalizing/unnecessary asides that pervade your writings. Again, if this was a blog about football or native american basket weaving, I couldn’t care less about your writing style.

  34. Anon September 15, 2019 8:09 am

    Sorry Curious, but we will have to agree to disagree as to the reduction in credibility. You seem to confuse desired response with veracity of positions taken — that you wish the response were different does NOT have the impact to veracity that you think (this is simply not an intelligent response from you, as you insert your own emotion and desire over reality).

    I think that you need to re-evaluate just who the aim is for such interactions. Those who will NOT be reached, won’t be reached no matter what. Those who may wish to employ some critical thinking will do so. Those that recognize the game afoot will NOT be negatively affected by the interchange, because (as you indicate) they will simply ignore the interchange. They will not read through the interchange and change a viewpoint after reading through the interchange.

    Lastly, I engage the issues AND the personalities. Feel free to point out where I actually engage the personalities instead of the issues.

    I DO engage with those seeking to engage on the merits, and repeatedly have developed conversations on such points. You seem to think otherwise, and this just reflects your own shortcomings when it comes to understanding the spectrum of involvement. Perhaps you have limited yourself to only discussing things with intelligent people, and miss the fact that intelligence occurs across a spectrum.

    My advice to you is to be more open to a variety of engagements. Be open to the fact that the “nice” path is NOT the only (and not the best) path forward for the variety of people out there in the blogosphere.

  35. Curious September 16, 2019 4:49 pm

    You seem to confuse desired response with veracity of positions taken
    What is the veracity of the positions of: “It’s not as if you have not been informed of limits to your blight, and simply should know better… THAT you want to spin this to be Dennis taking an action to protect anything is just so Trump of you. It’s actually Hilary-ous that you seem so intent on NOT getting this.” and “Yay! Malcolm’s Derp Dance”? Forget that question … do comments like those bolster or detract from your reputation?

    Those that recognize the game afoot will NOT be negatively affected by the interchange, because (as you indicate) they will simply ignore the interchange. They will not read through the interchange and change a viewpoint after reading through the interchange.
    Those that ignore the interchange are those that have read a similar interchange and are put off by it. After being put off by it, they’ll be more likely to ignore whatever Anon writes.

    Those who will NOT be reached, won’t be reached no matter what.
    Then why bother engaging the personalities who won’t be reached? I see no problem engaging the issues raised by these personalities. However, they bait you all the time, and you take the bait nearly all the time, which allows them to drag you down to their level.

    Lastly, I engage the issues AND the personalities. Feel free to point out where I actually engage the personalities instead of the issues.
    I already reproduced two such examples above. Also, you tend to address the issues with obscure/short form references that the typical reader won’t understand. You’ve written, in the past stuff like: “Are Protons, Neutrons, or Electrons inventive? How about configurations of these things?” There is an argument there. However, it needs to be fleshed out. Someone running across that phrase for the first time won’t understand the point you are trying to make.

    I DO engage with those seeking to engage on the merits, and repeatedly have developed conversations on such points. You seem to think otherwise
    Um no. At no point have I ever implied anything close to that.

    this just reflects your own shortcomings when it comes to understanding the spectrum of involvement
    Ah … one of your gratuitous insults. To be clear, I have engaged in message boards for nearly three decades (arguably longer, but that takes explaining) and I have spent considerable time on many that were far more ‘rough and tumble’ than this one. Trust me, I can engage at many different levels.

    Perhaps you have limited yourself to only discussing things with intelligent people
    LOL
    and miss the fact that intelligence occurs across a spectrum.
    I highly suspect that the people who I want to reach are those that are fairly intelligent and/or expect a serious topic to be talked about seriously. I have little interest in reach those that are attracted to mud wrestling. I can find better ways to entertain myself than mud wrestling. As I mentioned earlier, watching mud wrestling can be entertaining for awhile, but it gets old really quickly.

    Be open to the fact that the “nice” path is NOT the only (and not the best) path forward for the variety of people out there in the blogosphere.
    If you think mud wrestling is going to bring the undecided to your way of thinking, then that is your prerogative. Mud wrestling may work on certain blogs as to certain topics and with a certain level of readership. However, I doubt very much that it works with patent law.

    If you were at an AIPLA conference and someone like MM was heckling from the crowd, would you ignore him? I would. I would also ignore the person who was giving MM the same back. Sure, I might watch for awhile for the entertainment value, but I wouldn’t be there for the substance.

    If I’m trying to get information about a serious topic, I want to listen to somebody who is talking seriously. I’ll trust that person more than a person who might be talking seriously one minute and but is talking smack for the next ten minutes.

  36. Anon September 17, 2019 9:49 am

    Curious,

    You keep on conflating things that have been separated.

    Your own attempts here prove my point.

    To wit: according to your logic, you would have lost all credibility with everyone by engaging in this exchange. On the other hand, a truly intelligent person recognizes that one may learn from most anyone at most anytime, and would NOT so cavalierly dismiss views from a source when that source does BOTH engage in meaningful contributions AND takes the asinine to task.

    That you want to use as an example an AIPLA conference only shows that you have not grasped the spectrum of involvement, NOT have you recognized that the FORUM of the blogosphere is different — and runs by different rules, reaching different people through different levels of engagement. You are perfectly able to choose your own reactions and to engage as YOU want to engage. You are NOT perfectly fine with the mere wanting of your feelings to reflect the actuality of that in which we live in.

    That you would CHOOSE to trust anything on a forum such as the blogosphere without taking into primary consideration the substance of the item (and instead CHOOSE to ‘flavor’ your understanding by your feelings as to someone “talking smack” is — of course — your choice.

    But any critically minded person would immediately recognize that such a choice is a sub-optimal one. What drives YOUR interest is NOT what drives the universe.

  37. Curious September 17, 2019 7:57 pm

    To wit: according to your logic, you would have lost all credibility with everyone by engaging in this exchange.
    No. You are confusing a civil exchange between the mud-wrestling (mud slinging??) with which you engage MM, 6, Max Drei et al. (to name a few).

    On the other hand, a truly intelligent person recognizes that one may learn from most anyone at most anytime, and would NOT so cavalierly dismiss views from a source when that source does BOTH engage in meaningful contributions AND takes the asinine to task.
    Are you familiar with this quote?

    Great Minds Discuss Ideas;
    Average Minds Discuss Events;
    Small Minds Discuss People.

    Taking the asinine to task does not further the issues. It is a waste of my time reading it. It certainly doesn’t change the opinion of the people you take to task. Nothing is gained by it except proving to people that you can go as low as MM.

    That you want to use as an example an AIPLA conference only shows that you have not grasped the spectrum of involvement, NOT have you recognized that the FORUM of the blogosphere is different — and runs by different rules, reaching different people through different levels of engagement.
    Perhaps you have not grasped that many blogospheres (particularly the one run by Dennis) are cesspools. There is a reason why very few people engage there — because it is a cesspool. While I’m sure many would be interested in engaging in the comments section, they are put off by the commentary and the lack of decorum that Dennis tolerates.

    That you would CHOOSE to trust anything on a forum such as the blogosphere without taking into primary consideration the substance of the item (and instead CHOOSE to ‘flavor’ your understanding by your feelings as to someone “talking smack” is — of course — your choice.
    I choose to listen to (or read) people who talk (or write) like an adult. If they talk like an adult, that is a decent indication that they think like an adult. Conversely, if they behave like children, I expect less of their thinking (and choose to ignore most of it). I suspect that I’m not alone in this regard.

    But any critically minded person would immediately recognize that such a choice is a sub-optimal one.
    Perhaps your fail to appreciate that not everybody has years of experience commenting on patent law blogs and knows who can be trusted and who cannot be. For those people that have little time, they go on rules of thumb to decide who to ignore and who to read. For example, those that write like an adult are worth a read. Those that engage in mud slinging are probably not worth the read. Maybe in your ideal world everybody will be judged for their real worth, but in the real world, people are judged on for far less.

    What drives YOUR interest is NOT what drives the universe.
    My interest is to have you and your writings respected. Otherwise, I wouldn’t be engaging you.

  38. Anon September 18, 2019 9:42 am

    Curious,

    First and foremost let me be clear that I do not make an overall judgement based on “name” and that I take the content of ANY post first, aiming to learn regardless of the name (and this goes both ways, as I do not give “free passes” just because a comment is coming from a respected source).

    To that end, your proffering of the adage only proves my point (a second time you have inadvertently done so).

    To wit: “Are you familiar with this quote?

    Great Minds Discuss Ideas;
    Average Minds Discuss Events;
    Small Minds Discuss People.

    What you neglect (again) is that the audience is WIDER than you and your better mind. Even your “operate on rules of thumb” view fails to reflect the full spectrum of readers.

    To that end, I (still) completely disagree with your position of:

    Taking the asinine to task does not further the issues. It is a waste of my time reading it. It certainly doesn’t change the opinion of the people you take to task. Nothing is gained by it except proving to people that you can go as low as MM.

    This misses for several reasons.

    Sure, such engagement will not change the ‘mind’ of Malcolm, who has repeatedly engaged in items that have even been expunged.

    But you neglect the spectrum, and that along that spectrum there will be readers who will be dissuaded from blindly following Malcolm’s propaganda.

    Your “do nothing” falls to the ‘sin’ of silence. Your “do nothing” is one reason why Malcolm continues in his blight, because when nothing is done, others are emboldened.

    Also, you err in lumping the Sharp Words with “the same” as Malcolm’s tripe.

    This is an error of OVER politeness. To this, I have often provided the words of John Maynard Keynes. It is not a matter of “stooping to the same level,” as the import of providing both content AND sharp words comes to play.

    The “ideological war” is NOT fought only between the polite, and your avoidance of engagement (and sharp words) is fully — and only — your choice. You can certainly choose how you feel, but you may not choose to change the reality of the spectrum of minds and the fact that ‘fighting dirty’ is BOTH effective against the spread of the propaganda (to at least some of the spectrum) AND that the Keynes view of sharp words is – in fact – a good assault on the unthinking.

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