The Search for the ‘Inventive Concept’ and Other Snipe Hunts

“[T]he level of ‘invention’ as originally conceived by the Supreme Court in 1850 to obtain a patent is, by all appearances, an evidence-based nonobviousness inquiry under Section 103.”

https://depositphotos.com/40706095/stock-illustration-snake-oil.htmlEverybody in the patent world is talking about the latest atrocity from the Federal Circuit known as the American Axle decision, but few actually appreciate the true level of absurdity. Yes, 35 U.S.C. § 101 swallowed §§ 112(a), 112(f), 102, and 103 in a single decision (a new feat of judicial acrobatics), and Judges Taranto and Dyk displayed their technical ignorance. For example, in citing the Flook decision Judges Dyk and Taranto assert that Flook’s mathematical formula (known to a million-plus engineers as the steepest-descent algorithm) is a “natural law.” American Axle, slip op. at p. 19. Seriously? Are Federal Circuit judges so technically ignorant that the entirety of the country is doomed to believe such an idiotic fantasy that a particular adaptive mathematical algorithm associated with no natural law must be a natural law?

The Federal Circuit’s inability to understand basic science, while irritating, is not new. Certainly, American Axle is based on judicial fantasy, but the most important flaw of this highly-flawed decision is not that the Federal Circuit lacks a fundamental understanding of science, but that Federal Circuit judges are too intellectually lazy to research case law, or hire a clerk capable of researching case law. Specifically, for over the better part of a decade, Federal Circuit judges have proved themselves too intellectually lazy to understand (much less than define) a term they throw about liberally when rejecting patent claims.

I speak of the meaningless standard of “inventive concept.”

The public has for far too long been subjected to one mindless decision after another that claims are “abstract” because they lack an “inventive concept.” However, every court decision that invalidates a patent based on the “inventive concept” standard is garbage, and the judges and justices that believe they are constitutionally enabled to use such a standard (post 1952) are peddlers of snake oil.

Justice Stevens’ Statutory Illiteracy

Take for example, Parker v. Flook. There’s no reason to believe that Justice Stevens had actually heard of the 1952 Patent Act (which was passed to remove “invention” from the Patent Law), much less bothered to read the text of Section 101. It was Justice Stevens who asserted that “the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application” (emphasis added), while expressly rejecting the idea that “the considerations of ‘inventiveness’ . . . are the proper concerns of §§ 102 and 103.” Justice Stevens concluded, “Very simply, our holding today is that a claim for an improved method of calculation, even when tied to a specific end use, is unpatentable subject matter under § 101.”

Fortunately, it took a mere three years before the Flook nonsense was overturned in the Diamond v. Diehr decision, much to Justice Stevens’ dismay. It is notable that Justice Stevens refused to even acknowledge the 1952 Patent Act in his Diehr dissent or bother to address how his Flook and Diehr opinions were consistent with the statutory text of Section 101. For whatever unknown reason, Justice Stevens exhibited a curious illiteracy every time he was confronted with the statutory text of the Patent Law.

The Federal Circuit Clings to Fantasy

Unfortunately, the Federal Circuit clings to the meaningless idea of “inventive concept,” “inventiveness,” invention” etc. as a standard of patent eligibility, even though the Supreme Court’s Graham v. Deere, 383 U.S. 1 (1966), decision expressly acknowledged that the 1952 Patent Act removed “invention” as a requisite to patentability. “Yet, as this Court has observed, ‘[t]he truth is the word [`invention’] cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not.’” Id. at p. 12 (quoting McClain v. Ortmayer, 141 U.S. 419, 427 (1891)).

Setting aside the decades of judicial schizophrenia as to whether “invention” or “inventive concept” should be a standard of patentability, any judge or justice that ever held a patent ineligible post 1952 for lack of an “inventive concept” should know better as a sentient adult. Has anyone noticed that not a single Federal Circuit case has ever defined what an “inventive concept” in a way that survives the next Federal Circuit decision? American Axle? Chamberlain? Investpic? Villena? Guldenaar? They’re all nonsense. Quoting famed fictional inventor Jacobim Mugatu, “Doesn’t anyone notice this? I feel like I’m taking crazy pills!”

The “inventive concept” requirement was naught but ill-conceived dicta that Justice Stevens promoted in his short-lived Flook decision that is used by modern-day judges to promote the idea that the courts must save the world from objective patent standards. Stealing from Hans Christian Andersen, the Federal Circuit peddles the “inventive concept” requirement as a judicial equivalent to a certain royal invisible garment that all must acknowledge or are proved to be hopelessly stupid, incompetent, and unfit for their positions. However, THERE ARE NO CLOTHES! As the classic Andersen story (sort of) goes, the vain Emperor Palpatine paraded before the public unclad while no one dared to honestly comment for fear of humiliation.  Finally, one obnoxious child situated in the midst of the learned gentry cried out (translated from the original Danish), “But he’s Nekkid,” and everyone then concedes the truth of it. However, despite the emperor’s knowledge of the falsity of the situation, the classic story ends with the emperor continuing the farce in order to save face—forcing the chamberlains to carry a train that wasn’t there.

I have browbeat the USPTO, the Federal Circuit, and the Supreme Court with rather candid language harshly mocking this idiotic and meaningless standard of “inventive concept,” while demanding an answer as to what is an “inventive concept.” Unfortunately, the courts are determined to shamelessly maintain and promote this “inventive concept” fiction when they can’t simply issue a Rule 36 or deny certiorari. The Federal Circuit’s search for an inventive concept is a judicial snipe hunt; a fool’s errand. It is a quest for the elusive heffalump. Ten-thousand H.C. Andersens could never adequately parody this “inventive concept” nonsense.

Can we all admit that there is no meaningful “invention” or “inventive concept” standard, or will the Federal Circuit and Supreme Court continue to insist we all continue to swallow the crazy pills?

Rather than merely faking understanding, it might occur to the occasional Federal Circuit judge or Supreme Court justice to read some case law—or ask a clerk to do so—to understand the origin of “invention.”

Invention is Nonobviousness

The requirement of “invention” was never originally a distinct and separate requirement from nonobviousness. To the contrary, “invention” was a term the Supreme Court used to describe as that which was beyond one of ordinary skill in the art. “[F]or unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention.” Hotchkiss v. Greenwood, 52 U.S. 11 How. 248, 267 (1850). This ingenuity and skill possessed by an ordinary mechanic was thought to be an issue of fact. “It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.” Id. at 266.

That is, the level of “invention” as originally conceived by the Supreme Court in 1850 to obtain a patent is, by all appearances, an evidence-based nonobviousness inquiry under Section 103. The efforts of modern-day judges and justices to transmogrify invention to anything more than nonobviousness are not just exercises in arrogance and ignorance, but a refusal to obey the statutes in favor of a capricious judicial veto of patents. Judge Giles Rich, who co-wrote the 1952 Patent Act with Pat Federico, spent decades mocking both “invention” and jurists who couldn’t be bothered to read and follow the statutory Patent Law. However, despite the clear statutory language and a wealth of law review articles discussing the 1952 Patent Act, the courts remain unaware that they lack the constitutional authority to rewrite statutes from the bench, and that no one ever adequately defined “invention” or “inventive concept” in the last 169 years of trying after the Hotchkiss decision.

Slightly off topic: The Supreme Court got the Hotchkiss decision wrong at the end of the day. Indeed, in nearly the same breath the Supreme Court demanded an evidence-based inquiry as to what is beyond the ordinary skill of a mechanic, the Supreme Court inserted their own evidence-free judgment as to whether substituting porcelain for wood was beyond the skill of an ordinary mechanic in place of an actual evidence-based decision. On this issue Justice Woodbury’s dissent got it right.

An Invitation

I invite any and all judges and justices to explain what an “inventive concept” is. Man-up already. A string of 169 years of total failure is enough, isn’t it?

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The Author

Burman York (Bud) Mathis III

Burman York (Bud) Mathis III is a sole-practitioner in the Washington D.C. area with experience in patent drafting and prosecution, opinion writing, due diligence, litigation and appellate work. Mr. Mathis technical expertise and experience is far-ranging. For example, Mr. Mathis’ experience covers a wide variety of highly-technical subject matter that includes wired and wireless communications (including MIMO, 3G, 3GPP/LTE, D2D and 4G technology), analog and digital electronics, image processing, semiconductor devices and processes, solid-state physics, material science, printers and copiers, projectors, cameras, speech recognition and synthesis, xerography, cryptography, control systems, magnetic and optical disc technologies, fiber optics, MEMS technologies, nanosensors, GPS navigation systems, software, computer networking and business methods.

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 66 Comments comments. Join the discussion.

  1. concerned November 7, 2019 1:46 pm

    Sorry B, I cannot tell you the definition of an invention.

    What I can tell you accordingly to my examiner is the following: An invention is NOT a process that solved a 63 year problem beyond the grasp of hundreds of thousands of working professionals and experts to include every disability attorney in the country since 1956, which was conceded by the examiner in writing twice.

    Perhaps an invention could be defined as a solution to a 163 year problem beyond the grasp of tens of millions of working professionals and experts?

    Other than that possibility, I have nothing.

  2. Anon November 7, 2019 5:23 pm

    Stevens also LOST his majority writing position in his last (supposed to have been “Bookend”) case of Bilski — in which his “concurrence” reads more like a dissent.

    It is instructive to chart the Supreme Court cases by the “Legislators on the Bench” and their various positions. Justice Stevens would have NO qualms with rendering a decision that flat out violated the words of Congress (which is WHY he lost his majority position on Bilski).

  3. Anon November 7, 2019 5:41 pm

    https://arstechnica.com/tech-policy/2019/07/the-supreme-court-loses-its-cryptographer/

    Even for Ars Technica and Timothy B. Lee, this article is beyond preposterous, and I would have presumed it to be parody, were I not aware of the level of bias and plain inanity of both the publication and the author.

  4. Ternary November 7, 2019 6:16 pm

    Nice job. I love the picture, very appropriate.

    Some people think that the Courts have some deeper, perhaps more philosophical or better methodological idea about “inventive concept” than we mere mortals. That is of course horse manure. There is absolutely no uncertainty here.

    An “inventive concept” is simply what is new/novel over the prior art. Most likely, the whole “inventive concept” in a patent application is described in the Abstract of a patent application. And with some effort, after reading the spec, one can derive it from the claims. It is there to be read and tested. Even simpler. I would say: an “inventive concept” is what the inventor says is novel.

    In American Axl the inventive concept is a way to suppress vibration modes, in Chamberlain it is a novel way to open a garage door, in Alice it is a novel way to automate financial settlements, in Benson it is a novel way to generate a full binary representation in a machine, in Concerned’s invention it is a way to solve a difficult administrative problem. It is really very simple. No”abstract ideas” or other scientific fantasies required. And you can simply test it by checking the prior art.

    The Courts pretend that the “inventive concept” in a patent application is somehow deeply hidden, only to be found by legal experts. That is also horse manure. It is there, usually highlighted in the text and summarized in the Abstract and Claims. No secrets there. What the Courts actually want to say is “I don’t find the inventive concept patent worthy. I don’t know why, but I just don’t.” If they only had the guts.

    Anyway, no explanation about “inventive concept” will be given by any Court because it will run almost automatically into trouble. The Courts may not be smart in science, but they are smart enough to avoid “obvious” problems and contradictions.

  5. Pro Say November 7, 2019 9:01 pm

    What’s an inventive concept?

    It’s whatever I say it is — or is not.

    Definitions and evidence?

    Ha! Weez don’t need no stinkin’ definitions or evidence.

    Definitions and evidence are for losers.

  6. B November 7, 2019 10:38 pm

    @ Anon “Even for Ars Technica and Timothy B. Lee, this article is beyond preposterous . . . ”

    From the ARS article: “We’re fortunate that in an institution dominated by septuagenarian lawyers, there was at least one member who took more than a passing interest in new technologies.”

    Taking interest in new technologies . . . and killing them.

    Apparently no one at ARS ever read Bilski. Part of the sheer stupidity of Stevens’ concurrence is that Stevens insisted on construing the Patent Act based on how terms “traditionally have been understood” but ignores that the 1952 Patent Act was written for the purpose of erasing the stupid parts of how the courts “traditionally” understood the Patent Law. Restoring the law pre-1952 erases s101.

    Stevens did have one gem in his concurrence. He states that the majority decision “never provides a satisfying account of what constitutes an unpatentable abstract idea.” Then again, Stevens also insisted on analyzing software in view of pre-1790 English case law. According to Stevens, the term “process,” which was added in the 1952 Patent Act, must be construed based on 1790 technologies and statutory language that did not exist in 1790. Stevens’ conclusion is Bilski is basically “business methods are not processes under s101 b/s business methods are not covered by the statute.”

    Circular logic, anyone?

  7. concerned November 8, 2019 3:46 am

    Judge Stevens in Bilski called the process trivial post solution activity. Suppose the examiners in a prosecution never allege trivial post solution activity? Should those claims be incorporated into the same type of Bilski decision?

    However not to be outdone by a Judge Stevens, my examiners insert their version of my inventive step as being the generic computer to get around the above post solution problem. Not once in this extensive and on-going prosecution have the examiners addressed or acknowledged that claims #1 and #7 are clearly directed to the tracking of a parent of an adult to provide the business solution of overlooked eligibility missed by professionals, which the examiner concedes a business solution was solved. An off the shelf computer does not track a parent of an adult.

    Judge Steven could be proud of my examiner’s circular reasoning also. No practical application of the claims which use a computer because the process solved a business problem that existed since using computers.

    S101 language does not specifically state tracking of a parent of an adult either. I guess there is a Chief Justice moment in every torched patent prosecution.

  8. MaxDrei November 8, 2019 3:52 am

    When they wrote the European Patent Convention, back in 1973, they considered “inventive” to be the antonym of “obvious”. Thus (Article 56):

    “An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.”

    Why make things more complicated than that?

  9. concerned November 8, 2019 4:39 am

    A lot of people are saying to patent in Europe. In retrospect, I should have filed in Europe.

    The system in the United States seems to be an all out assault to reject any process that uses software regardless of the post solution outcome.

  10. B November 8, 2019 4:50 am

    @ MaxDrei “An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.”

    Thank you for this INCREDIBLY GREAT piece of information.

    I’ll need to research this in depth. This ties in to some international agreements that I may eventually brief on

    Best regards,

    Your humble author

  11. B November 8, 2019 4:57 am

    @ MaxDrei

    Sind sie Deutcher?

  12. Anon November 8, 2019 7:27 am

    Minor nit: synonym v antonym …?

  13. Paul Johnson November 8, 2019 8:30 am

    I’m waiting for MM to weigh in on this conversation.

  14. MaxDrei November 8, 2019 11:25 am

    Well, I’m pleased that my comment #8 got attention. But, hey, don’t get too excited about filing in Europe. Why, because much of what the USA filters out under Section 101 the EPO sifts out using its obviousness section, Article 56.

    In particular, non-obviousness does not help patentability one bit, unless the non-obviousness occurs within what we call in Europe the “technical” space.

    Below is a Link to a patent law blog in Europe that puts out each day a new EPO Decision. The Link is to the one for November 1st this year. It will give you the flavour of patent eligibility/patentability in Europe for what we call CII (computer-implemented inventions).

    http://justpatentlaw.blogspot.com/2019/11/t-204912-functional-data-is-not-always.html

  15. Jam November 8, 2019 12:36 pm

    @ MaxDrei “An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.”

    This sounds like evidence of non-obviousness under 103, which a US court looking to kill a patent would throw out by saying it has no bearing on eligibility under 101. This may be why the courts invented the phrase “well-understood, routine, and conventional”, i.e., an attempt to fabricate a distinction between evidence that something is “well-understood, routine, and conventional” under 101 in contrast to whether something is “nonobvious” under 103 or novel under 102. Practically speaking, its all the same thing. Thus, when applicants and patentees started pointing out the logical impossibility of something being both “well-understood, routine, and conventional” under 101 while at the same time being non-obvious and novel under 103 and 102, the courts and examiners simply stopped analyzing whether a claim is “well-understood, routine, and conventional” for eligibility under 101. Now courts and examiners simply label the “inventive concept” as an “abstract idea” or “natural law” and reject the claim. There’s nothing a patentee or applicant can do as the courts and examiners have unlimited power over saying what is or is not an “abstract idea” or “natural law” and whether the claims are directed to such. It’s devolved to nothing more than a Chewbacca test.

  16. Pro Say November 8, 2019 1:37 pm

    Paul @ 13: Gene banned Moonbeam (MM) for all his baloney years ago.

    Rightfully and correctly so.

    Unfortunate that Dennis (PatentlyO) hasn’t done the same.

  17. concerned November 8, 2019 1:59 pm

    Jam @15:

    “Thus, when applicants and patentees started pointing out the logical impossibility of something being both “well-understood, routine, and conventional” under 101 while at the same time being non-obvious and novel under 103 and 102, the courts and examiners simply stopped analyzing whether a claim is “well-understood, routine, and conventional” for eligibility under 101.”

    Yes.

    “Now courts and examiners simply label the “inventive concept” as an “abstract idea” or “natural law” and reject the claim.”

    Yes again. Or the examiner tells/implies to the applicant what his “inventive step” magically represents regardless of what the claims actually say.

    Trade tricks….start the claim sentence in the middle and analyze the same after the meaningful limitation in the beginning of the claim sentence so it is not addressed and/or remove key words and insert “routine” and/or state no practical application after admitting it solved a long standing problem for as many experts (or more) than Diehl did for the rubber curing experts.

    I played this game in Kindergarten when the game “tag” had its rules changed constantly so the “right” person was never “tagged” under any circumstances.

  18. Night Writer November 8, 2019 3:07 pm

    Actually, you have to read the EPO file history to understand American Axle. Pretty much everything (except the 101 analysis) is said in the EPO file history that the majority opinion says.

    The claims stand rejected in an active prosecution at the EPO. So, I’d guess that is why the majority was so bold. The same 102 and 112 arguments are made at the EPO that are made by the majority.

  19. B November 8, 2019 4:10 pm

    @ MaxDrei “In particular, non-obviousness does not help patentability one bit, unless the non-obviousness occurs within what we call in Europe the “technical” space”

    I noticed that. However, it doesn’t seem difficult to get into a “technical space.” For example, the EP rules indicate that software is not patentable, but incorporate it into a computer and you’re apparently fine. Correct???

    It seems you have statutory exceptions to patent eligibility, but there are a lot of judicially-acepted workarounds to those statutory exceptions.

    @ Night Writer “Actually, you have to read the EPO file history to understand American Axle. Pretty much everything (except the 101 analysis) is said in the EPO file history that the majority opinion says”

    I’ll have to look now. Trouble is that our 112 and 103 sections have evidentiary requirements, but why should the CAFC waste time with evidence when Dyk and Taranto already decided the case based on lack of inventive concept.

    The CAFC spent 5 months after oral argument in apparent desperation to kill AA. One-two months after oral argument is common, three months is rare, but five months is an indicator that some portion of the CAFC is struggling to kill a patent and can’t figure out how. Now it appears that the CAFC can’t even do their own work and needs to plagiarize from the Euros, but I’ll need to read all this for myself. I’ve characterized a lot of judges in very unflattering ways — accused them of a lot of mischief.

    In my first-grade class the teacher had a “peek room,” which is where students were sent if caught cheating. I spent a lot of hours there, but not for cheating. I had a crush on Laurie Jean Smith, who was always caught cheating and getting sent to comparative isolation seemed the right idea at the time.

    I wonder if the CAFC has a crush on the EPO.

    @ Jam “This may be why the courts invented the phrase “well-understood, routine, and conventional”, i.e., an attempt to fabricate a distinction between evidence that something is “well-understood, routine, and conventional” under 101 in contrast to whether something is “nonobvious” under 103 or novel under 102.”

    Read Bilski, Alice and Mayo. All three decisions were based on evidence on the record. Unfortunately, the clown car of clueless judges at Madison Place decided to get rid of the whole evidence-based “well-understood, routine, and conventional” test in favor of “inventive concept.”

  20. Night Writer November 8, 2019 5:03 pm

    @19 B

    The lack of inventive concept argument is right from the EPO. The majority used a different reference (they used on cited in the patent), but the argument is exactly the same used at the EPO.

  21. MaxDrei November 9, 2019 1:56 pm

    Coming back to the thread, to read comments #15 to #20, there are a few things that puzzle me.

    The family member at the EPO seems to be EP-A-1994291, not yet allowed. But I see no obviousness objections. Rather, lack of novelty. So what is the basis of NW’s comment #20, please.

    Further, why does B think it is easy to comply with the “technical effect” test part of the obviousness enquiry at the EPO. Perhaps he is supposing that once you have got through the EPO’s eligibility test (technical character) you are home and dry. Far from it, my friend, far from it. The substantive filter standing in the way of allowance is the “technical effect” test under Art 56 EPC. To get past that one, mere scrivening is of no avail.

    The Federal Circuit has no “crush” on the EPO. But the USPTO might well have.

  22. BP November 9, 2019 6:02 pm

    From EPO F-IV 4.10 citing T68/85: “Functional features defining a technical result are permissible in a claim, if from an objective viewpoint, such features cannot otherwise be defined more precisely without restricting the scope of the invention, and if these features provide instructions which are sufficiently clear for the expert to reduce them to practice without undue burden, if necessary with reasonable experiments.”

    EPO technical effect appears to be a single insert that is lightweight and cost effective for attenuating multiple (different) modes.

    Even with EPO history, there remains a gross underlying mystery (lack of transparency) that brings into question the credibility of Dyk and Taranto. Their decision is facially, scientifically erroneous. Why was it written? Why write such crap? What is the end game? Just come out and say it: “we are anti-patent”.

  23. B November 9, 2019 8:58 pm

    @ MaxDrei “Further, why does B think it is easy to comply with the “technical effect” test part of the obviousness enquiry at the EPO.”

    I read through about 20 or so decisions. For example, it seems that, upon first impression, that appending a computer to some software overcame the software exception.

    If I’m wrong, I’m wrong. I claim NO expertise on EPO patent law.

    “The Federal Circuit has no “crush” on the EPO. But the USPTO might well have.”

    I don’t think the USPTO is cohesive enough to have a position on the EPO. However, it appears that some CAFC judges may be deferring to EPO positions rather than doing their own work. I really need to spend the time reviewing the EPO record — look for strings of like words, etc. Plagiarizing without attribution would look really bad.

  24. MaxDrei November 10, 2019 5:35 am

    B, you have your finger on the point of difference between the USA and the EPO, namely that, at the EPO, overcoming the eligibility hurdle is easy. At the EPO, inventions that exhibit “technical character” are eligible. So a claim to “doing it on a computer” has technical character and is eligible.

    And now, as Monty Python would say, to something completely different, namely the obviousness enquiry. The EPO does not shrink from executing its obviousness filter. It performs its obviousness analysis after having looked at eligibility, clarity, novelty and enablement. What Applicants from the USA have trouble grasping is that, at the EPO, their claims falls only at the very last hurdle, the obviousness enquiry. At the EPO, the ONLY sort of non-obviousness that can be prayed in aid of patentability is an inventive step within the purview of the useful arts ie technology. None of the other ways in which humans can be creative, non-obvious, are relevant to patentability at the EPO.

    As usual with filters, there are fine judgements to be made, whether the claim-specific non-obviousness is or is not “technical”. That is the “front line” of the case law developing at the EPO. At the EPO, eligibility is not the “front line” as it is in the USA.

  25. Anon November 10, 2019 8:52 am

    Not so minor nit:

    is an inventive step within the purview of the useful arts ie technology.

    MaxDrei, it is inte11ectually dishonest to continue to try to make the same the two different legal notions of “technology” and “Useful Arts.”

    I do wish that you would realize that every time that you attempt to do so, you lower your credibility on what you are trying to say.

    You may have some knowledge of working within the EPO, but you reveal that you do not understand the comparative concepts with your attempts at portraying the US Sovereign’s different choice of Useful Arts.

    This is not a new observation. And the fact that yet again it has to be pointed out to you indicates an unwillingness in your part to come to this discussion with a mind willing to understand.

  26. Night Writer November 10, 2019 9:38 am

    Max >>> The family member at the EPO seems to be EP-A-1994291, not yet allowed. But I see no obviousness objections. Rather, lack of novelty. So what is the basis of NW’s comment #20, please.

    You are right there is a novelty rejection. It is the same argument used in the 101 analysis in step (2).

    The arguments the majority use related to 112 (although they don’t say 112) also mirror exactly those at the EPO.

    And, yes, the EPO is still pending.

  27. MaxDrei November 10, 2019 10:15 am

    Thanks NW, for Comment #26. It is nothing new, that various jurisdictions are I broad agreement, what subject matter is fit for patenting, and which is unfit. But their respective patent statutes dictate the use of different legal tools to get to the “right” result. Accordingly, inventors needing a patent specification that will survive scrutiny in the courts over the course of the following 20 years would be well-advised to i) select a drafter with experience of all the ways that courts use to settle which claims are condemned, and which are allowed to remain in force and then ii) let that drafter protect the precious invention as the drafter thinks best.

    For example, world-wide, anybody drafting in the software space over the last 20 years, in the way the EPO jurisprudence has been encouraging consistently over the last 40 years would not have fallen foul of the way eligibility is being filtered today, in the USA. Or anywhere else in the world.

    Is this perhaps why some in the USA have a “crush” on the EPO?

  28. Anon November 10, 2019 11:45 am

    would not have fallen foul of the way eligibility is being filtered today, in the USA

    A brash — and completely wrong — statement on its face.

    You continue to show just how little you grasp the situation in the US (or why so many of us are upset with the legislating from the bench).

    This merely smacks of your usual (eyes clenched right) “here, use my EPO glasses, they work for me” advice. That you think “using the EPO way” is any type of ‘answer’ for operating in the US Sovereign is plainly asinine and an unworthy capitulation of the US innovation system.

  29. Anon November 10, 2019 11:59 am

    (eyes clenched right) ==>
    (eyes clenched tight)

  30. Atraz November 11, 2019 8:36 am

    First time poster here, have been reading up on these forums quite a lot lately. My thanks to all of you who comment here, especially B, Night Writer, anon (at least when you refrain from ad hominems), Ternary and Curious, whose discussions I almost always love reading. You have helped my understanding of the US system greatly.

    I’m a patent attorney myself, practicing within the EP area, and quite familiar with prosecuting US patents as well. Been working for about 7 years now, so I’m still relatively new in the field, or at least that’s how it feels.

    @MaxDrei – Could you please expand on or exemplify why you believe that drafting patents EP-style would avoid US 101 rejections? I’m not implying I don’t believe you may have a case, but I don’t see the connection myself… especially when considering the recent cases of e.g. Axle and Chamberlain (which aren’t even directed to software patents, but are still useful as indications for what the US 101 hurdle has become if I understand it correctly).

    @B – as Max already commented, you are completely right in regards to overcoming the hurdle, but that’s mostly semantics as Max said. You may already be fully aware of this, but if not, to exemplify (which is also an opportunity to see if I can phrase it in an understandable way myself):

    Consider the following claim:

    “A computer-implemented method for performing business, comprising:
    obtaining business information;
    doing something new and smart with the business information;
    drawing a conclusion and using the output for business purposes”

    The EPO would conclude that the claim is technical, by virtue of using a computer. However, all of the actual steps are directed to an area which is exempt from patentability (according to Art. 52(2) EPC), namely methods of doing business, and is therefore not considered when judging inventive step. Thus, what you have is “a computer”. A computer is known – therefore, no inventive step. So, even though “merely using a computer” does get over the first hurdle, it’s not really much use when all of the actual invention is discounted when determining inventive step. Determining what is a “method of doing business” or what constitutes “performing mental acts”, AS SUCH, within the meaning of Art. 52 EPC, is at it’s worst similar to the US 101 hurdle, in the sense that it’s a fairly subjective determination. However, even so, I don’t think the worst examples here come close to the worst ones in US.

    My personal view, at least now, is that the US still allows for more inventions within the field of “computer-implemented inventions” to be patentable than the EPO, in theory, BUT given the developments since Alice and onward, the uncertainty is so high that I’m not sure if that’s actually the case. I also have to admit that I have a difficult time following the “logic” in the USPTO Guidelines for Examination, both the newly updated 2019 version and the previous one…

  31. Anon November 11, 2019 9:41 am

    Atraz,

    Thanks for not only following along, but for joining the conversation.

    There are two aspects that I would stress in reply to your example (for the EPO side) for “methods of doing business:”

    1) Sovereign choice for subject matter.

    As I stressed at post 25, the US Sovereign has chosen differently than the EPO in regards to a subject matter filter. Notwithstanding the (extensive) rhetoric otherwise, the US does NOT have a pure ban on business methods.

    This is revealed by the Bilski case, in which Justice Stevens, slated to write the majority position as his farewell “bookend” case on the Court, lost the majority positions, and instead his opinion dropped to a non-binding concurrence (which actually reads as a dissent).

    He lost his majority position on the very notion that he did think that the US Sovereign should have a strict “no business methods” law.

    Fortunately, enough Justices realized that such an opinion would have expressly re-written statutory law (in such an egregious manner as to cause a Constitutional crises).

    As it is, our Sovereign choice of Useful Arts is just NOT the same as the description (as undefined as it tends to be) of “Technical Arts.”

    2) There is a tremendous amount of “wiggle room” in the terms “per se” and “as such,” and “clever scriveners” really do not have much difficulty phrasing the innovation into terms that escape a strict “application” of the “per se” and “as such” filters. This is why you may read on this blog many opinions that it is now easier to pursue patent protection in BOTH “software” and “business methods” in the EPO — even with your terms of “per se” and “as such.”

    .

    As to your last comment of “I also have to admit that I have a difficult time following the “logic” in the USPTO Guidelines for Examination, both the newly updated 2019 version and the previous one…

    What exactly are you having a difficult time with? Keep in mind that in the US, we have a separation of powers doctrine, and that expressly means that members of the Executive branch (and by this, I mean directly examiners), may NOT legislate and write law.

    Notwithstanding the (noted as a violation**) judicial branch writing law itself in the area of a strict Constitutionally designated area of patent law (to the Legislative branch), the use of Common Law law writing IS what the Supreme Court laid out as their “method” of evaluating innovations in their eligibility jurisprudence.

    The examiners (who by and large are not even trained as attorneys) simply were running into all types of difficulty with the massive amount of “Common Law” law writing that was going on with their attempts to employ the tactics of the Supreme Court.

    And this is due in no small part to the fact that the scrivining of the Supreme Court itself (its own Common Law law writing) cannot be squared with itself, and is self-conflicting.

    ** Note that Common Law law writing actually comes in a spectrum between true “interpretation” in order to fill in gaps, to re-writing the law in order to pursue the desired Ends of the judicial body (applying their view of “what should be” based on their policy/philosophy).

  32. Atraz November 11, 2019 10:18 am

    Anon,

    Thanks for the very thorough response, I feel very welcomed to the forum by it!

    Re: 1)
    I think I understand everything you are saying here, and I agree with and understand that the definitions of “useful arts” and “technical arts” are clearly different, perhaps my initial post wasn’t very well phrased in this regard. This is the reason for my last passage where I say that US does allow for a broader spectrum of inventions in theory, because USPTO’s “useful arts” is much broader than EPO’s “technical arts”. Do you agree with this, or is that taking it a step too far, i.e. is the best we can say that they are different standards?

    From how I’ve understood current US law, there are virtually no explicit bans when it comes to subject-matter, but in practice anything related to business methods (especially trading) and most software inventions have been a coin-toss at best since Alice. Would you agree?

    2) I agree with your statement as to that the phrasings do allow for a lot of wiggle room. However, I do find myself thinking that the EPO are really good at “seeing through” attempts to circumvent the exceptions, especially when it comes to business methods (perhaps too much so, at least according to how I would read interpret the EPC). If you have any examples of business method claims (undeservedly) going through at the EPO, I would be very interested to take part of this!

    I do see that my comments about the Guidelines wasn’t very well phrased either. My comment was mostly based on the “Examples: Abstract Ideas” which was released in conjunction with the 2014 Interim Eligibility Guidance (https://www.uspto.gov/sites/default/files/documents/abstract_idea_examples.pdf). I had a hard time understanding several of these examples, the most illustrative would probably be why Example 2 is considered to pass the “abstract idea” step, when e.g. Example 7 does not. However, this may be due to myself still being “EP-biased” and wanting to see the claims as non-technical, and trying to fit that into the US standard instead.

    Also, I do think I am aware of the relevance of the separation of powers doctrine in this discussion, much thanks to yourself and others who have tirelessly debated the issue here. A quick summary of my understanding so far, please feel free to correct me or comment what I’ve misunderstood:

    The law as written by Congress in the 1952 patent act, is phrased to not exclude any subject matter a priori. However, a the Supreme Court has in subsequent decisions started carving out exceptions to the patent act. This is a problem since it is virtually the same as rewriting the law, but avoids being explicitly wrong as it can be argued to be “interpreting the law” rather than rewriting it. Much of the current problems in US law stem from the fact that the SC have introduced the “abstract idea” exception (if someone could point me to where this was first introduced I’d be grateful, was it Benson?), which is an undefined an highly subjective criterion. This issue keeps escalating, which is shown by e.g. Axle and Chamberlain, and now it’s becoming evident that anything could be said to be directed to an abstract idea according to these examples.

    I also very much agree with your conclusion that the SC decisions are contradicting each other, and that it is therefore impossible for Examiners to “apply the (interpretation of the) law” as taught by the SC. Or actually, on second thought, are the decisions “contradictory” as much as they are “stretching the terms so far that they don’t mean anything anymore”?

  33. B November 11, 2019 10:43 am

    @ Atraz “My personal view, at least now, is that the US still allows for more inventions within the field of “computer-implemented inventions” to be patentable than the EPO, in theory, BUT given the developments since Alice and onward, the uncertainty is so high that I’m not sure if that’s actually the case”

    There’s no uncertainty at all. !00% of computer-implemented inventions are ineligible under Alice/Mayo. The only variable is whether or not some examiner or judge will make a vacuous allegation of “abstract.”

    We now exist in a fiction. A very bizarre fiction where the courts demand we swallow the crazy pills.

  34. Atraz November 11, 2019 10:53 am

    @B – Isn’t the fact that the invalidation rate isn’t 100% show that it’s at least some degree of uncertainty here? (as shown in e.g. https://www.ipwatchdog.com/2019/08/29/alice-benevolent-despot-or-tyrant-analyzing-five-years-of-case-law-since-alice-v-cls-bank-part-i/id=112722/). Or am I misunderstanding something?

    I do believe I agree that anything CAN be invalidated according to Alice/Mayo, but based on my understanding this is not actually the case. Then again, this may be mostly semantics at this point…

  35. BP November 11, 2019 11:27 am

    @26 NW “The arguments the majority use related to 112 (although they don’t say 112) also mirror exactly those at the EPO.” But, the EPO has a way out; whereas, in the US, we see a continual erosion of an ability to claim “features [that] cannot otherwise be defined more precisely without restricting the scope of the invention”. Amgen v. Sanofi has eroded the ability to claim a new antibody. Sure a new antibody may be claimed by its structure rather than that of a newly characterized antigen, but such precision destroys scope/value. The USPTO/Fed Cir/SCt know that. I expect the judicial 112 to 101 virus to spread, it will hit the USPTO in the form of some memo and we will say goodby to the 2019 PEG. The EPO appears to have reasonable backstops (some level of immunity to that virus).

  36. MaxDrei November 11, 2019 2:13 pm

    Atraz, what I had in mind is the discipline that those drafting under the EPC have, to define an invention in terms of a combination of technical features that solves a technical problem. They draft in this way by now instinctively, because for 40 years it has been the ONLY way to get the claims to issue.

    On the edge, European drafters can get through to issue with much (but not all) subject matter that relates to software and methods of doing business.

    Meanwhile, those patent attorneys in jurisdictions where business methods are patentable will tend to define the invention as a business method, neglect to direct, describe and define it in terms of a technical feature combination that solves a technical problem, and so come to grief, these days, also at the USPTO.

  37. B November 11, 2019 5:56 pm

    Atraz “@B – Isn’t the fact that the invalidation rate isn’t 100% show that it’s at least some degree of uncertainty here?”

    Notice I was speaking to pure software claim cases. Berkheimer is already dead letter law. I had a case I couldn’t possibly lose to an HONEST panel last year affirmed under “inventive concept,” and the CAFC lied outlandishly in that case as well as with the Chamberlain case to kill those patents https://www.ipwatchdog.com/2019/10/08/time-federal-circuit-judges-good-conscience-call-colleagues/id=114340/

    Just FYI, the CAFC has affirmed 100% of Alice/Mayo rejections from the USPTO.

    Anyway, the uncertainty has nothing to do with the merits of the claims.

    Here’s a case holding for patent eligibility. Notice that the CAFC doesn’t define inventive concept or identify the “inventive concept” in the claims. https://www.bitlaw.com/source/cases/patent/Ancora.html

    Here’s a case holding for patent ineligibility. Notice the CAFC doesn’t define “inventive concept.” https://www.bitlaw.com/source/cases/patent/Data-Engine.html

  38. Anon November 11, 2019 7:39 pm

    MaxDrei,

    Do you even realize that you are still confusing “what is proper” based on what the EPO does – in total disregard for the different choices of the different sovereigns?

    That you seem so oblivious to what consternates US practitioners (and then want to proselytize on US patent blogs) is sometimes beyond credulousness.

    Our new friend chides me for my sharp tongue, but your behavior brings that out (as I am a firm believer that assaulting the unthinking is very much why words ought to be a little wild – in the John Maynard Keynes model).

  39. Anon November 11, 2019 7:40 pm

    BP,

    I am intrigued – can you tell me more of these 112-like backstops?

  40. B November 11, 2019 8:59 pm

    @ MaxDrei “It is nothing new, that various jurisdictions are I broad agreement, what subject matter is fit for patenting, and which is unfit.”

    On this issue I need to side with anon. We do have different sovereigns, and our Congress is the sole body entitled to make patent policy in the U.S.. In the U.S., Congress made its patent policy circa 1950 after watching our bone-headed courts screw everything up royally. Of course, said same courts have sometimes claimed that the 1952 Patent Act changed nothing and that the courts are merely interpreting the 1952 Patent Act in light of the state of law and technology circa 1790 (and I’m not kidding on this), i.e., “the way it should be even if our interpretation cannot be reconciled with the statutory text.”

    These lacking jurists have created chaos and are too stupid to see it or too dishonest to admit it. I’m going with dishonest as

    Are you reading this, Federal Circuit?

  41. Night Writer November 12, 2019 6:19 am

    B:

    The key to the use of the EPO use in the CAFC is the finding that the two types of vibration are damped by the prior art.

  42. MaxDrei November 12, 2019 7:39 am

    The Inventor did not invent the need to damp driveline vibration. The Inventor did not discover the three modes of vibration. They were well-known already. Driveline makers have long competed with each other to offer low-vibration driveline products. That means damping not just one but all three modes. They have always “tuned” their designs, as part of the design process, to lower vibration noise. Tuning is no more than making design compromises. It’s as old as the hills, if not older. The inventor didn’t invent “tuning”, nor the art of design compromises to balance the different modes of vibration noise.

    Conventionally, how did they reduce vibration noise? With a liner, dear Henry, dear Henry, with a liner. A helically-wrapped band, for example. The Inventor didn’t invent that either.

    Now to the current claim at the EPO (November 2018). It limits to helical, then witters on about “tuning” and “resilient” (as if “resilient” is capable of distinguishing one material from another). It continues by deleting the feature formerly relied upon for inventive step namely, damping by “about 2%” and replacing it with the feature “within 20% of a natural frequency”. That’s not an invention either. To pluck out of the air an arbitrary tolerance limit is not something that should qualify as the conception of a patentable Invention.

    Seeing through the lack of patentability is not the problem here. Rather, it is to find a convincing way to deny the Applicant a patent for this non-invention. Let us continue to watch the EPO to see how will do it.

  43. B November 12, 2019 2:14 pm

    @ MaxDrei “The Inventor did not invent the need to damp driveline vibration. The Inventor did not discover the three modes of vibration. . . . “

    I am not going to debate whether or not AA deserved a patent or not, merely assert that dampening liners and design methods for multi mode liners are properly within s101.

    As to what “invention” is, in the US it’s a meaningless phrase while in the EP it appears to mean nonobviousness. Whether or not we agree on the obviousness of the AA claims I think we agree that obviousness is an evidence-based test that requires a look at all the claim limitations as an ordered combination.

    I don’t think AA would have raised the slightest bit of interest had the courts killed the claims on a 112 and/or 103 analysis. The 101 analyses holding for ineligibility, however, were all garbage. The CAFC’s change of 101 theory without proving AA an appropriate opportunity to be heard, is a disgrace to the courts.

    I think that you will find nearly all of us Americans in agreement on this.

  44. MaxDrei November 12, 2019 2:26 pm

    B, I do not seek to disagree with you but would like to point out that in the EPO the debate has yet to reach obviousness. Applicant is still stuck trying to convince the Office that there is anything at all in the claims that is “new”.

    The position in the USA is not so different from that of the courts in England on eligibility under the EPC. There has to be an inventive concept, otherwise it’s a fail on eligibility. and 35 USC 101 does include the word “new”.

  45. Night Writer November 12, 2019 2:55 pm

    @44 Max

    That is right. The argument presented by the EPO as to why it was not novel is the same argument the CAFC used to say there was nothing more in step (2). Same argument exactly.

  46. Anon November 12, 2019 4:31 pm

    MaxDrei,

    There is NO “force” or legal effect as to the word “new” included in 35 USC 101. THAT legal effect is entirely handled within our jurisprudence of 35 USC 102 and 35 USC 103.

    You should be aware of this by now, given how long you have discussed the topic on US patent blogs.

  47. Ternary November 12, 2019 4:39 pm

    “The Inventor didn’t invent that either.” Of course he did, unless there is proof that the named inventor(s) should not be on the application.

    At least US patent law is silent about if something was invented or merely copied. 35 USC 102 and 103 recite the “claimed invention.” It is assumed that somebody who puts her/his name on a patent application did invent something. It may be assumed, until there is proof to the contrary, that the inventor(s) believed they were the first to invent (first to file nowadays) and believed that the invention was not obvious. But even that does not matter to the USPTO. If the invention was deemed known or obvious, you just don’t get a patent. The USPTO does not tell you that you “really didn’t invent it” or that the invention was “stupid.” Only commentators acting in hindsight seem to do that.

    How subtly different an invention is over prior art is a matter to be examined.

    It is increasingly popular nowadays to allege that certain inventions are stupid, simple, glaringly obvious or are not even an invention. This all in the ongoing discussion why certain inventions are non-deserving of a patent. This skews the discussion.

    It may be that the American Axle invention was known and obvious at the time of the invention, or maybe not. However, the specification leaves with me the impression that the inventors are at least persons of ordinary skill in the art. It is not unreasonable, in my opinion, to assume that procedures like tuning are known to persons of ordinary skill and need no express explanation as manuals and textbooks in the art will explain it. For that reason in my own patent applications I assume not to be required to explain what a XOR device is. Though I must admit that I nowadays recite at least one TTL and/or CMOS device to stave off allegations of 112 issues.

    The Axle invention is a technical invention and it should be patent eligible. Period. To bring up if the problem was known and solutions were known does not affect eligibility, or at least it should not. And it does not change the fact that an invention was made by the inventors.

  48. B November 12, 2019 5:05 pm

    @ MaxDrei “There has to be an inventive concept, otherwise it’s a fail on eligibility. and 35 USC 101 does include the word “new”.”

    I think that your mistaking “patent eligibility” under s101 with “patentability” under 102/103. Remember, “inventive concept” at the EP is nonobviousness. The “new” in 101 is very narrowly construed, and the only 101 rejections at the USPTO based on “new” involve a child application that has an identical claim to the parent application. https://www.uspto.gov/web/offices/pac/mpep/s804.html Otherwise, anon is correct in that “new” is handled under 102/103.

    I think I’ve see 3-4 DP rejections at the USPTO in 20 years. I’ve never even heard of a court case where a patent claim was killed under “new” in 101.

    I’m not getting on your case about this. Just trying to clarify. I’m absolutely thrilled you and Atraz chose to share some of your knowledge on this forum.

  49. B November 12, 2019 5:08 pm

    “Remember, “inventive concept” at the EP is nonobviousness.”

    Make that “inventive step” at the EP is nonobviousness.

    “Inventive concept” is a US term having no meaning.

  50. Ternary November 12, 2019 6:43 pm

    Anon: you said it better and shorter in @46. I had not read your response before I posted mine.

    B. We have about gone full circle now. Being conventional, routine and well-understood are now arguments against patent eligibility. An “inventive step” is required. But the “inventive step” (if it is what I think it is) has to be determined during examination against the prior art. Because the assumption still is that an invention has been made if the conditions of 101 have been met.

    Even if one doesn’t like patents, it must be apparent that US patent law is now in a perpetual state of crisis because there is no internal logic and coherency anymore. The system has broken down in being almost completely arbitrary, both in the PTO and in the Courts. Director Iancu almost heroically tries to make some sense out of it, but is shot down (it seems with some regret) by the Federal Circuit. And SCOTUS, after creating this chaos, now carefully avoids getting involved and cleaning up their own mess.

    My boss used to tell me: read the plain and ordinary meaning of the Statute. That is no longer useful because the Courts have taken over as legislators, creating an unsolvable chaos. Congress should take over and put the Courts back in their place.

  51. B November 12, 2019 7:43 pm

    @ Ternary “ But the “inventive step” (if it is what I think it is) has to be determined during examination against the prior art. Because the assumption still is that an invention has been made if the conditions of 101 have been met.”

    It’s “inventive concept,” not inventive step. The EP is smart enough to know an “inventive step” is an evidence-based nonobviousness inquiry. The Federal Circuit is too stupid and dishonest to define what an inventive concept is.

    Are you reading this, Federal Circuit? Man up already.

    “My boss used to tell me: read the plain and ordinary meaning of the Statute.”

    Justice Stevens advised just the opposite in Bilski. His “concurrence” is absurd b/c Stevens thought he knew better than Congress.

  52. BP November 12, 2019 9:52 pm

    @39 Anon, sure, read the claims in the Amgen EP app. The EPO is more about what is claimed and what is stated in the spec rather than delving into the concepts of adequate “written description”. Art. 83’s sufficiency of disclosure is reasonable (see below). In a sense, the EPO believes what the applicant says and the EPO seems to know/accept the “skilled person”. The EPO allows for more functional claiming, albeit generally in a verbatim manner (as in the spec). That’s a trade-off the USPTO seldom takes when it is intent to destroy an applicant’s IP using 112. How many EPO Art 83 sufficiency objections do you see to every USPTO 112 rejection?

    From EPO:

    “With regard to Art. 83, an objection of lack of sufficient disclosure presupposes that there are serious doubts, substantiated by verifiable facts (see T 409/91 and T 694/92).”

    “For the requirements of Art. 83 and of Rule 42(1)(c) and Rule 42(1)(e) to be fully satisfied, it is necessary that the invention is described not only in terms of its structure but also in terms of its function, unless the functions of the various parts are immediately apparent. Indeed in some technical fields (e.g. computers), a clear description of function may be much more appropriate than an over-detailed description of structure.”

    Note how the EPO views “function” because it knows that certain subject matter cannot otherwise be properly claimed (i.e., for value).

  53. MaxDrei November 13, 2019 3:47 am

    A few quick reactions to the new comments:

    35 USC 112 counterparts in the EPC are clarity (Article 84), enablement/sufficiency (Art 83) and WD (Art 123(2)). Which one bites depends on the words of the claim. Thus, if you claim in terms of structure, an Art 84 objection could ensue whereas, if you claim by reference to function (I claim that which works) expect an Art 83 objection. And if you amend in prosecution, expect Art 123(2).

    It all seems to work quite well. Perhaps this is because the 1973 completely fresh start EPC was written on plain white sheets while standing “on the shoulders of giants” of jurisprudence, not least those in the USA.

    As to 101, while the EPO lets through everything with “technical character” the English courts (using the same statutory text) throw out anything that fails to deliver a “contribution” to a field of “technology”. In their own jurisdiction, it is their sovereign privilege.

    I suspect that SCOTUS and the Fed Ct are influenced by this legal thinking in England. Hence their vague and woolly “inventive concept” thinking.

  54. Night Writer November 13, 2019 4:05 am

    I actually I did a presentation about this case.

    The key is that majority and the EPO both said that “by being in contact with the interior wall liner used in D1 damps necessarily shell mode vibrations of the shaft.”

    There are a lot of other issues, but the key is that step (2) was overcome by this same argument at the CAFC.

    So even if there were no 112 issues, the argument by the CAFC is that there is nothing to the claims.

  55. Night Writer November 13, 2019 4:20 am

    So, just to follow up on that. In all these cases the CAFC takes down the claims piecemeal. The key above then relates to 112 as the claims recite “tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member”. But the key above then means that this has been done by the prior art. The 112 issue is how is this supposed to be done, which the patent application does not really discuss.

    The reason the CAFC did not like this claim is that it recites “positioning the at least one liner within the shaft member such that the at least one liner is configured to damp shell mode vibrations in the shaft member by an amount that is greater than or equal to about 2%, and the at least one liner is also configured to damp bending mode vibrations in the shaft member, the at least one liner being tuned to within about ± 20% of a bending mode natural frequency of the shaft assembly as installed in the driveline system.”

    So the tuning is stated in terms of goals and not how the tuning would be done.

    Also, note (very important) that one (2%) just says it will dampen by 2 percent and not that it is tuned to a “natural frequency”. So the 2% is purely a goal whereas the 20% actually has some structure as it is saying that the liner has to be tuned to a frequency.

    Anyway, I agree with the CAFC that these claims are messed up big time.

    The big take away is probably two things. One that now we have this horrible extension of 101 that no natural law has to be identified but only that the judge feels it is a natural law (all inventions use natural laws–which judges don’t even seem to realize). And the second take away is that the CAFC was so bold in their step (2) arguments because it was an active case at the EPO and the EPO examiners made the same argument used by the CAFC and —get this–the applicant had a chance to respond to those arguments and did not have a response. The EPO said they could find no substance in their response to the lack of novelty argument.

  56. Atraz November 13, 2019 6:49 am

    So many interesting threads to comment on here, but I’ll try to keep myself (somewhat) concise.

    @B – Point taken, but there’s still uncertainty at least in that it’s not clear that every examiner will always make the “no inventive concept” allegation, right? I am not trying to “be correct” in terms of my initial statement, merely understand if we mean the same thing or not.

    I believe a reasoning in decision G 3/08 EPO could be of interest to you, as I see this as somewhat analogous to what the US is doing with “inventive concept”. See 10.6 in https://www.epo.org/law-practice/case-law-appeals/pdf/g080003ex1.pdf, it would appear that the US has somehow arrived at something at least resembling EPO’s old “contribution approach”, which was abandoned for good reason.

    Also, while EP does not have the “inventive concept/abstract idea” problems of the US, we do have similar issues, which take the form of what is considered technology, which is in my view much better defined than abstract idea, but still a bit of a “witch trial” in the end. See 16-19 in 1924/17 (https://www.epo.org/law-practice/case-law-appeals/recent/t171924eu1.html).

    @anon – I did somewhat chide you for your tongue, and that was not very helpful or specific of me. The present thread is a great example of what I actually meant – my impressions of MaxDrei’s posts so far is that he’s knowledgeable within his field and is contributing to the discussions. I do not know whatever baggage you may have, and I’m not saying you would be incorrect in using sharp language very quickly, but for me as a new reader it becomes confusing – someone who I deem as one of the most reasonable people on the forum (you) is berating another person who I deem as reasonable (Max), without explaining why. I’m not saying that you shouldn’t, just why it rubs me the wrong way. I did read your lengthy exchange (with Curious if I recall correctly) regarding how to respond to trolls (with respect to a certain MM on another forum), and while I do respect your approach (as alluded to above with the Keynes quote), I am on Curious side of the argument here, at least in the space of public forums. That’s “all” I meant with the comment.

    @Max – Thanks for clarifying! I am clearly more on anon’s side here though, the EP and US laws are too different to make such statements imo. The furthest I’d be willing to go here would probably be to state that “drafting software claims with EP style as basis has been a better approach if the goal is to get the same claim text granted in multiple jurisdictions”, and I’m not even sure if I’d be willing to bet money on that statement.

    @NW – thanks for the very insightful commentary on the connection between the CAFC decision and the EPO file history.

  57. Anon November 13, 2019 8:30 am

    Atraz,

    Point taken — to a limited extent.

    MaxDrei is not a new poster and his misrepresentations stretch back for several years now. That is one reason why I am quick to “Keynes” him. As you allude to, he does have solid knowledge for a limited working of certain aspects of EPO patent matters. If he were to actually stick to what he knows and NOT misrepresent US jurisprudence (in US patent law blogs), then you would not see either the level or quickness of sharpness in my rebukes. It is not merely a matter of MaxDrei being misguided, as it is a matter of MaxDrei purposefully being misguided. Why would he be such? Near as I can tell, he suffers from the “my eyeglasses work for me, so they should work for everyone” syndrome. For someone who likes to venture forth and heavily comment on patent law jurisprudence outside of his own Sovereign, he chooses to ignore Sovereign differences (with a mind unwilling to understand).

    As for “new people being confused@ — well, sorry but you will have to deal with that to the extent that part of the “game” from those who insist on long term misrepresentations is that they ARE perfect candidates for Keynesian treatment: they are the unthinking.

    Others may choose to coddle (as is their right). I choose not to.

  58. Ternary November 13, 2019 8:33 am

    We can probably analyze this to death. However, I don’t believe that anyone in their wildest dreams would have considered the American Axl invention patent ineligible when reviewing it outside the context of the CAFC decision. As an engineer one would have preferred probably more details. But that is completely outside the eligibility question.

    The inventive concept is to “attenuate shell mode vibrations” in a hollow shaft. The inventive step (or technology step) is to do this by inserting a liner.

    A shaft is part of a machine. Vibrations are a physical phenomenon that affect proper working of the machine (or its life-time).

    No natural law has been claimed, nor preempted. This decision is screwy like hell. It is nonsense and complete b.s. and utterly shameful.

  59. MaxDrei November 13, 2019 10:49 am

    Ternary, I agree with you, that we don’t want to “over-analyse” this case but I must nevertheless refer you to columns 1 and 2 of the patent in suit, where the prior art is admitted. It repays a close reading. The way I read it, for example (col 2, line 36 in particular), sleeve liners with a helical element were already known to attenuate shell mode vibrations in a thin-walled prop shaft. In view of that, do you stand by your assertion of what the patent teaches, what the PHOSITA did not already know, AA’s “inventive concept”?

    The patent goes on to assert that the known liners “do not appear to be suitable for attenuating bending mode or torsion mode vibration”. That statement in the Applicant’s own cause falls short of stating that the known liners have zero attenuating effect on bending mode and torsion mode vibrations. I wonder why? Clever drafting, perhaps?

    Further, it begs the question “How do I know when I’ve got a liner that works, as opposed to one that “do not appear to be suitable” for that job. Does the patent answer that question? I suspect not. This makes it impossible to construe the claim as being directed to an invention

    So there we have it. Construing the claim in the light of Applicant’s own admission, there is no invention disclosed in the patent, just an invitation to do some research on liner design optimization. Applicant brought upon itself the failure to get past the 101 eligibility filter.

  60. Anon November 13, 2019 11:10 am

    MaxDrei,

    NONE of your questions to Ternary bear on Ternary’s point that this being decided under 101 IS the travesty.

    Yet again, you miss the very point AT point.

  61. Night Writer November 13, 2019 11:35 am

    @60 Anon

    That is right. Saying it is directed to Hook’s law (or maybe more) is just ridiculous.

  62. MaxDrei November 13, 2019 11:38 am

    As you say, anon, doing the claim down under 35 USC 101 leaves quite a few people unhappy. Including me. I am among those who thinks the EPO “light touch” approach to eligibility is intellectually more satisfactory than the English court’s more searching “contribution” approach.

    But the international debate about the eligibility filter does generate high feelings. For example, the English judges deplore the EPO’s “light touch”, deeming it to be “intellectually dishonest”.

    Perhaps SCOTUS and the Fed Ct are afraid of being bracketed by the Supreme Court of the UK as no better than the EPO (only joking).

  63. B November 13, 2019 12:33 pm

    @ Altraz “I believe a reasoning in decision G 3/08 EPO could be of interest to you . . . .”

    We have a doctrine for that issue called the “printed matter doctrine.” The issue is whether there’s a functional relationship b/t some information/writing/design and a medium. Either way there’s patent eligibility – just that the information/writing/design may not get patentable weight if there’s no functional relationship with the medium or some other claimed limitation. See, e.g., https://www.ipwatchdog.com/2018/05/27/printed-matter-doctrine-information-mental-steps.

    Our idiot Federal Circuit reinvented the printed matter doctrine for use under 101 in In re Guldenaar while failing to recognize that there is a functional relationship b/w pips and a six-sided dice, which together act like a random-number generator.

    “Also, while EP does not have the “inventive concept/abstract idea” problems of the US, we do have similar issues, which take the form of what is considered technology. . . . ”

    Technology is a pointy stick, a napped piece of flint, dice, a tamed dog, and pretty much anything under the sun made by man. Our idiot courts, however, are pondering whether axle liners are technological under 101.

  64. B November 13, 2019 12:54 pm

    @ Ternary “We have about gone full circle now. Being conventional, routine and well-understood are now arguments against patent eligibility. An “inventive step” is required. But the “inventive step” (if it is what I think it is) has to be determined during examination against the prior art.”

    I have literally argued these issues at the USPTO, the CAFC and the SCOTUS. Preemption and “conventional, routine and well-understood” are no longer relevant under Alice/Mayo – all that remains is “inventive concept,” and the bone-heads in black robes refuse to tell us what that means.

  65. Anon Y. Mous November 19, 2019 10:40 am

    I like simplicity. If it overcomes 112, 102 and 103, then it presumptively overcomes 101. End of inquiry.

  66. ANM November 19, 2019 1:25 pm

    A Nony Mouse

    An electromagnetic wave might overcome 112, 102, and 103 and yet doesn’t satisfy 101

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