It Is Time to Fix the Courts’ Section 101 Tests on ‘Directed to …’ and ‘Abstract Ideas’—Whether in Chamberlain or Beyond (Part I)

“The courts must review and repair the eligibility law and, in particular, the ‘directed to’ step of the Mayo-Alice test and the definition (or lack thereof) for the judicially made ‘abstract idea’ exception to Section 101. And if the Supreme Court doesn’t, the Federal Circuit should, and fast.”

https://depositphotos.com/357659784/stock-photo-traffic-cone-character-paragraph-symbol.htmlThe case of the “garage door opener,” The Chamberlain Group v. Techtronic Industries, Inc., has received its share of attention. Rightly so. The case, after all, spotlights not only the breadth of the Supreme Court’s Mayo-Alice test for assessing patent ineligibility under 35 U.S.C. §101; but also the Federal Circuit’s particular “directed to” definition for that test and the dissection of patent claims that has followed.

And it fairly asks, in a petition to the Supreme Court, that if a claim on a garage door opener is “directed to” an “abstract idea” and thus ineligible for patent protection—is any patent, or any technology, safe from the Mayo-Alice ineligibility test?

Chamberlain says no. From the outset, its petition declares that its case therefore presents a “patent emergency,” one that the Supreme Court must review to stop the Mayo-Alice test—and the Federal Circuit’s “directed-to” version of it—from expanding into, and negating, claims in every subject imaginable. “You name it,” they’ll get it, says the Petition before rattling off a number of product areas in which Section 101 has struck. But no matter who asks, the bottom line is this: If left undone, the test will continuously undermine the innovation and investment that the Patent Act is supposed to promote, not poison. U.S. Const., Art. I, § 8, cl. 8 (“Congress shall have power… to promote the progress of science … by securing for limited times to … inventors ….”).

We agree. The courts must review and repair the eligibility law and, in particular, the “directed to” step of the Mayo-Alice test and the definition (or lack thereof) for the judicially made “abstract idea” exception to Section 101. And if the Supreme Court doesn’t, the Federal Circuit should, and fast, assuming (of course) Article III standing and the rest. Litigators, we submit, should press the issue if the courts initially don’t.

This article first describes the Chamberlain garage-door patent, litigation, and history, as well as the Federal Circuit’s decision that held the garage-opener claims ineligible under the Mayo-Alice framework. More specifically, we focus on the Federal Circuit’s “focus-of-the-claimed-advance” definition in step one and how the courts have been applying it in Chamberlain and beyond. Thereafter we analyze the two erroneous aspects of the step-one “directed to” test: (1) the Federal Circuit’s erroneous definition of “directed to,” how it cannot stand in view of the Section 101 text and history and the Supreme Court’s Diehr precedent—and why the “directed essentially to …” standard, cited in Supreme Court precedent, should take its place; and (2) the Supreme Court’s need to finally define the judicially created exception for what constitutes an “abstract idea.”

Chamberlain’s Wireless Garage-Door Opener Invention and Trial Victories

The Chamberlain Group developed what it describes as a ground-breaking invention in the garage-door market. The case background has been widely reported. Chamberlain’s inventive garage opener purportedly changed the market for such products. While otherwise claiming a physical device with various physical features, the Chamberlain opener or “operator” device stood out because of its wireless-communication features and ability to conduct two-way communications with other devices. Based on the evidence, certain competitors such as Techtronics responded by copying Chamberlain’s patented opener and putting its own name (or housing) over it.

Chamberlain sued. A jury found that Techtronics was willfully infringing Chamberlain’s patented device, denied Techtronics’ anticipation and obviousness defenses; and awarded damages that the trial court later trebled. Techtronics also filed an inter partes review (IPR) petition with the PTO’s Patent Trial and Appeal Board. But the PTAB refused to consider Techtronics’ petition on its merits, finding it didn’t even meet the standard to trigger the PTAB’s invalidity review. Chamberlain’s case and technology looked strong.

Enter the Federal Circuit and the two-step framework that the Supreme Court’s Mayo and Alice precedents fashioned for determining patent eligibility under Section 101.

The Mayo-Alice Framework for Determining Ineligibility

Step one of this well-known framework examines whether a patent claim “is directed to” one of the three categories that the Court has long said are ineligible for patent protection under 35 U.S.C. §101; namely, an abstract idea; a law of nature (such as Newton’s law of gravity), or natural phenomenon (such as a new plant or new mineral discovered in the earth). Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1294 (2012). If so, step two assesses the elements of the patent claim to determine, whether considered individually or in combination thereof, those claim elements demonstrate an “inventive concept”–i.e., something “significantly more than … the ineligible concept itself” and different than what the prior art had already shown was “well-understood, routine,” or “conventional.” Mayo, 132 S. Ct. at 1294-98. In short, a claim that is directed to an abstract idea, without an inventive concept, is not eligible for a patent under Section 101.

The Federal Circuit’s Definition and Application of “Directed to …” Requires a “Focus” on the “Claimed Advance Over the Prior Art

Applying this framework, the Federal Circuit made quick work of Chamberlain’s patent judgment below, and of its garage-door opener claims.

On step one, the Federal Circuit applied its own definition of the Mayo-Alice “directed-to” phrase. As the Federal Circuit reads it, “directed to an ineligible concept” means the ineligible concept is the “focus of the claimed advance over the prior art.” E.g., Training Techs. Int’l v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019); Affinity Labs. of Texas, LLC v. DIRECTTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016). Based on its review of the Chamberlain patent’s claims and specification, the court determined that the “focus of the claimed advance” for the garage-door opener was on its “wireless” communications only—not its claimed physical features. The opinion didn’t address whether the claimed opener solved problems on two-way communications.

Instead, that “wireless” focus meant the garage-opener claim was directed to an impermissible abstract idea, said the Federal Circuit. Notably, though, under the Supreme Court’s and Federal Circuit’s Mayo-Alice cases, this was not because the Chamberlain patent claimed something that was “existing in thought or as an idea”—i.e., per a common dictionary definition of “abstract,” as opposed to something “physical or concrete [in] existence.” Rather, under the precedent, the claim on Chamberlain’s opener was abstract because the patent’s “wireless” concept resembled claim text in other judicial opinions and cases, which described it as abstract.

Moving to step two, the Federal Circuit determined that the “wireless” garage opener didn’t amount to an “inventive concept.” After all, said the court, the patent admitted it used conventional technology to implement its claimed “wireless” advance. Moreover, step two precludes consideration of the ineligible concept itself in determining whether the claim elements present an inventive concept. Thus, since the abstract or ineligible concept here from step one was the “wireless” aspect of the garage opener, that part of the claim couldn’t be considered for the “inventive-concept” test in step two. And since that abstract “wireless” was the only part of the claim cited as inventive or as a “claimed advance,” the rest of the claim was merely conventional and well-known, not inventive. The court also denied arguments that it was impermissibly assessing “novelty” or “obviousness” in this threshold Section 101 eligibility test. And it gave no consideration to the jury and trial court’s upholding of the patent claims over prior-art challenges based on novelty and obviousness, or to the PTAB’s denial of an IPR that sought invalidity review.

As noted above, Chamberlain’s petition urges that a “patent emergency” has arisen and that the Court must address it immediately to stop the wide-ranging harm of the ineligibility test. We agree, with the caveat that, if the Supreme Court doesn’t intervene, the Federal Circuit should and, in its en-banc capacity, it should fix both errors with the current step-one test.

Courts Still Must Read and Evaluate the Patent Claim “As a Whole

The Chamberlain petition highlights two fundamental failings with the Federal Circuit’s Section 101 eligibility rulings:

(1) the reductionist definition that the Federal Circuit applies to the step one “directed to” test, dissecting the claim under review into its old or conventional elements versus those elements that purportedly represent the “focus of the claimed advance over the prior art”; and

(2) the patent law’s assessment of what an ineligible “abstract idea” is and how that definition—or absence thereof—has similarly led courts to reduce a multi-element claim to a single concept.

As a result of each such error, explains Chamberlain, the Federal Circuit systematically fails to assess the eligibility of a patent claim “as a whole”—i.e., in view of all its elements.

Chamberlain’s garage opener and petition surely warrant immediate review, and for many of the right and first principle reasons. Foremost, and as more fully addressed below, the broadly stated text of the Section 101 eligibility law says nothing about limiting eligible claims to those where the court’s already figured out or can adjudge the claim’s “patentable advance.” That’s a question for “later” on the merits—a question on patentability itself, as the Supreme Court held years ago. See Diamond v. Diehr, 450 U.S. 175, 189-91 (1981). At minimum, the Federal Circuit’s “claimed advance over prior art” definition has no place as the “step one” question on whether a claim is “directed to” or focused on an ineligible abstract idea. See, e.g., id. (considerations of prior art or what was conventional or known at time “have no relevance” to Section 101 eligibility). As to the “abstract idea” exception for Section 101 eligibility, the lack of a set standard or definition—a rule or principle—continues to hinder the analysis and the proper shaping of this exception. Indeed, the questions raised in Chamberlain highlight why. Accordingly, the Supreme Court should finally put a definition or standard to the Court’s own creation, rather than leaving it to each case to discern what is or is not an “abstract idea,” or what the “abstract” exception even relates to. There is an emergency, and of the kind that Chamberlain describes. One court must respond.

In Part II of this article, we will examine how the Federal Circuit’s approach conflicts with the Patent Act and Supreme Court precedent, and what the Courts must do to remedy it.

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The Author

Judge Paul Michel (Ret.)

Judge Paul Michel (Ret.) became a private citizen on June 1, 2010 for the first time since he graduated from law school at the University of Virginia in 1966. Upon graduating from law school he became an Assistant District Attorney in Philadelphia, thus embarking upon the career of a public servant from 1966 to his retirement from the United States Court of Appeals for the Federal Circuit in 2010. Michel served on the Federal Circuit, which is the main patent appeals court in the United States, from 1988 to 2010, serving as Chief Judge from 2004 to 2010.

Judge Paul Michel (Ret.)

John Battaglia s an accomplished first-chair trial lawyer, appellate lawyer, and former US Justice Department lawyer who has successfully tried to verdict a broad array of civil and criminal cases. While the subject matter of his cases over the past 22-plus years has ranged from immigration to intellectual property, from guns, drugs, and violence to advanced electrical engineering, pharmaceuticals, and ice-hockey equipment, Mr. Battaglia's area of particular interest and expertise is patent litigation. Mr. Battaglia has successfully argued cases before the U.S. Courts of Appeal for the Federal, Second, Sixth, Seventh, and Ninth Circuits. He argued and prevailed in In re Papst Licensing Digital Camera Patent Litig. (Fed. Cir. 2015), a case involving numerous adverse issues and the first Federal Circuit case to address the impact of the Supreme Court's decision in Teva v. Sandoz. For that victory, the legal press dubbed Mr. Battaglia and his team a "Legal Lion."

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 28 Comments comments. Join the discussion.

  1. Model 101 June 9, 2020 7:49 pm

    Judge Michel is right…please make it retroactive as many important patents were killed.

  2. Pro Say June 9, 2020 8:13 pm

    . . . and the thing is, had the CAFC merely kept Alice / Mayo cabined as SCOTUS had intended, innovation wouldn’t be in the predicament that it is.

  3. Curious June 9, 2020 11:53 pm

    “The courts must review and repair the eligibility law and, in particular, the ‘directed to’ step of the Mayo-Alice test and the definition (or lack thereof) for the judicially made ‘abstract idea’ exception to Section 101. And if the Supreme Court doesn’t, the Federal Circuit should, and fast.”
    What the Federal Circuit/SCOTUS should and will do are two entirely different things. There are too many judges at the Federal Circuit who are gleefully burning down the US patent system to expect anything different out of them. There are too few at SCOTUS who really understand the havoc created by the Federal Circuit’s misapplication of Alice/Mayo. Too many good cases have already been denied cert by SCOTUS — they have no interest in patent eligibility. There is only one real avenue for change and that is in Congress.

    SCOTUS will take up issues that impact a handful of people but they won’t clarify law that literally impacts thousands and thousands of companies and hundreds of thousands of patents.

  4. André Schumacher June 10, 2020 3:18 am

    Judge Paul Michel became a patent lobbyist on June 1, 2010 for the first time since his retirement from the United States Court of Appeals for the Federal Circuit.

  5. stepback June 10, 2020 3:25 am

    Alice-Mayo gives absolute subjective power to the courts to kill off any patent they so wish to behead.

    As they say, absolute power corrupts absolutely. And the power usurper never gives it up. (My precious, my precious –line from Lord of the Rings)

  6. Paul Cole June 10, 2020 6:15 am

    Positive compliance with any of the four categories of section 101 and the “all elements” rule have slipped from judicial consciousness. Furthermore, the three categories of subject-matter as originally stated are not exceptions because they clearly do not fall within any of the four eligible categories in the first place. If you have defined categories, subject matter that does not fit within them is not an exception: it is merely non-qualifying. And failure to check for positive qualification and merely looking at potential exclusions is a fundamental error of legal reasoning whose level of grossness raises issues of fitness to practice for those involved.

    On specification drafting, the word “known” should perhaps be added to the list of patent profanities.

  7. Mark Nowotarski June 10, 2020 7:21 am

    Has anyone seen any impact of Chamberlain at the USPTO? If so, feel free to contact me if this isn’t the forum to discuss it.

  8. concerned June 10, 2020 7:53 am

    Pro Say: Right on! The lower courts expanded the expanded (of SCOTUS.)

    And the expansion continues. In Chamberlain, the lower court said wireless communication previously existed, therefore, abstract. In my application, which the USPTO rejected, nobody has ever used my inventive concept in any field of commerce with or without a computer and the examiner does not deny it. And the examiner admits it solved a problem that was documented as huge in my field.

    I am interested in what PTAB will have to say about my rejection. The claims actually improve the function of the computer network and report errors and omissions their experts could not detect, another point not in dispute by the examiner.

    It would be refreshing for the other side, the rejectionist, to pony up some evidence for a change instead of rambling on about case law that is not applicable to the fact pattern or actual field of commerce. I know Berkheimer and patent law require evidence, but try finding the application of evidence with a search warrant, or would said search warrant require “probable cause” that facts and truth are actually relevant with patents?

  9. Anon June 10, 2020 8:59 am

    André Schumacher,

    What is your backing for the apparent smear of “Judge Paul Michel became a patent lobbyist…?”

    Are you aware of the difference between an advocate and a lobbyist?

    This is not the first time that you have ‘busted out’ your view without too much thinking (and reflective of an anti-patentist based on the gobbledygook spoon fed at such places as Slashdot and Techdirt).

    Paul,

    Thank You for amending your view with my suggestion of “If you have defined categories, subject matter that does not fit within them is not an exception: it is merely non-qualifying.

  10. Henry Dieu June 10, 2020 9:43 am

    It’s a mere computer program on a microcontroller.

    Yet another software patent.

  11. AAA JJ June 10, 2020 11:13 am

    Windmills, ho!!!!!!!

  12. Robert Greenspoon June 10, 2020 1:15 pm

    A SCOTUS Justice (or clerk) is interested:

    May 19 2020 Waiver of right of respondent Techtronic Industries, Co. Ltd., et al. to respond filed.
    Main Document
    May 26 2020 DISTRIBUTED for Conference of 6/11/2020.
    Jun 08 2020 Response Requested. (Due July 8, 2020)

  13. J. Doerre June 10, 2020 1:40 pm

    I laughed. Does it make it better or worse if I know it is a windmill that I’m tilting at?

  14. anonymous June 10, 2020 1:59 pm

    SCOTUS and the Federal Circuit have their knee on the neck of American innovation. We’re left debating whether the level of pressure on our necks is livable or whether it will kill us, rather than saying the stranglehold is wrong and must stop.

    Meanwhile, Congress knows of the problem and looks the other way. They’re complicit in the stranglehold and have the power to stop it.

    The Emperor Has No Clothes. Judge Plager said most clearly, “there is no need, and indeed no place in today’s patent law, for this abstract (and indefinable) doctrine.”

    Congress, please fix this mess and quit pretending kneeling on the neck of American innovation is acceptable. It is not.

  15. Ternary June 10, 2020 2:00 pm

    “If left undone, the test will continuously undermine the innovation and investment that the Patent Act is supposed to promote, not poison. U.S. Const., Art. I, § 8, cl. 8” I agree, especially as it applies to start-ups and independent inventors. (I am not so sure that Chamberlain would itself not argue before the CAFC that a patent they infringe is directed to an abstract idea.)

    Here is why:
    One of my inventions is on configurable locks. A device sends wirelessly a key to the lock and the lock configures itself to the key. The key method and lock method are changed after each key use. One may compare it to a locksmith changing your lock and giving you a new key every time you open your front-door. (this is not a rolling code system wherein the key is changed).

    Of course, you can also apply it to uniquely authenticate and validate any transaction, including financial ones. I thought to be clever to start out with a lock, which includes a mechanism that operates a bolt. I hoped it would appeal to the steam-age, hard materialistic views of certain Examiners and Courts.

    Abstract idea! Abstract idea! opined the Examiner To be fair, after a sometimes pointy and touchy discussion, the SPE was extremely helpful to get an allowance.

    I was still wondering if I would have been better off to get this before the PTAB to get a decision on Appeal and strengthen against the CAFC.

    Anyway, the article above demonstrates that all these worries are probably moot. The patent still has a chance of dying a painful and not abstract Alice death before it can do its commercial work.

    How it affects my innovation efforts I will tell in the second part of my comment.

  16. Ternary June 10, 2020 2:52 pm

    I did not really mind the initial 101 rejection of my application as a later allowance that overcame the rejection would presumably make the patent stronger.

    My application was examined in a Business Method unit. They were unimpressed with the machine aspect of the claims. The claims, it was alleged, were not directed to a machine, but to a pure mathematical operation. The alleged mathematical operation being a modified addition over a binary finite field GF(2^p). Additions over GF(2^p) being a workhorse mathematical operation in cryptography.

    I told the SPE that an addition over GF(2^p) in my case is not a pure mathematical operation but a description of a machine operation being bitwise XORing of p words of bits. XOR devices do not perform mathematics. After I showed where this was disclosed in the spec, the SPE became convinced that my claims were clearly directed to machine operations, improved the working of a computer by applying an inventive concept and were patent eligible.

    I have loaded my specifications as extras with what I would consider well known and trivial aspects of switching and computer technology, just to be able to counter any allegation of being “abstract” or being “directed to an abstract idea” as in this case.

    But every time a new decision is made by the Federal Circuit, it turns out that a new twist is given to what “abstract” and “directed to an abstract idea” are assumed to be. One cannot be sure what will be alleged. It has become so unpredictable as basically being unpreventable.

    An inventor may carefully draft claims to make them as “concrete” as possible and avoid traps of “abstractness” as identified in earlier cases. However, the lack of technological/scientific knowledge and an unexplained level of capriciousness of the Federal Circuit makes the whole patent eligibility issue an unpredictable crapshoot.

    There is also the issue of Judges not understanding an invention or not liking an invention. Based on that, they appear just to “make up” what “directed to an abstract idea” means as being convenient to dispose of the case. And in a next case “abstract” may be something that is different in what it was before. In my case they may decide that opening a lock of a door is by itself directed to an abstract idea.

    The Chamberlain case demonstrates (again) that there is little certainty for an inventor to get a valuable patent on an invention. Even after serious discussions with highly critical and skeptical Examiners, an issued patent means really nothing. Another caution to independent inventors being that an established company like Chamberlain has to spend millions of dollars to even attempt to get some justice. I cannot afford that.

    While I am an optimistic guy, and I keep hoping that Congress will step in to end this nonsense and to promote individuals like myself to invent and start a business from it, it looks like that is not going to happen. Even optimistic inventors like myself will finally get the message and stop applying for patents, if not stop inventing entirely. And then we will just be another Europe, rendering U.S. Const., Art. I, § 8, cl. 8 as an embroidered sentimental reminder on the mantle piece, where it already should be.

  17. AAA JJ June 10, 2020 3:50 pm

    It’s probably apocryphal, but some SCOTUS justice said, “We’re not final because we’re infallible, we’re infallible because we are final.”

  18. Ternary June 10, 2020 4:38 pm

    Sorry for error in above. An addition over GF(2^p) describes a bitwise XORing of 2 words of p bits with as result another word of p bits. Just in case you want to use such an argument. To be sure, I added in my spec that a bit may be a signal having a discrete value L(ow) or H(igh) and not necessarily a value 0 or 1. You can expand this argument to any computer calculation, which, by design, is always a discrete switching operation.

  19. Model 101 June 10, 2020 4:55 pm

    Today, big tech stocks hit an all time high,

    Evidence that they control the patent system…and use politicians and judges for their own success.

  20. Anon June 10, 2020 6:13 pm

    AAA JJ,

    Definitely NOT apocryphal, another SCOTUS Justice christened the Bench with the phrase: “The only valid patent is one that has not yet appeared before us.”

  21. Night Writer June 11, 2020 7:29 am

    @10 Henry Dieu June 10, 2020 9:43 am
    >>It’s a mere computer program on a microcontroller.

    You have to love the arrogance and absurdity of the anti-patent anti-information process crowd.

    It is a “mere” thingy. Let’s see. Probably the most complex thing that is being built by people now is information processing machines that can now rival human intelligence in many areas. But somehow this feat of building a machine that can rival human intelligence is “mere” “software”. The anti-patent judicial activists never see a need to address reality. You just yap out a “mere” and the SV judges that Obama appointed will have your back.

  22. Mark Nowotarski June 11, 2020 9:09 am

    Ternary@15 “One of my inventions is on configurable locks.”
    Ternary@16 “My application was examined in a Business Method unit. “

    It seems to me that your application should have been classified in an art unit that deals with locks or perhaps cryptography instead of business methods. Either classification would have dramatically reduced your 101 problems as well as put your invention in front of an examiner with more experience with the technology of the invention.

    There is a LexisNexis webinar at noon ET today on how classification works at the USPTO. See the link at the top of this page. I sat in on an earlier session and gained a number of great insights on how to best draft a patent application so that it gets classified in the most appropriate art unit.

  23. Kirk Hartung June 11, 2020 9:56 am

    The Supreme Court held last year in Henry Schein, Inc. v. Archer & White, that there cannot be judicially created exceptions to the statutory text of the Federal Arbitration Act. Why doesn’t the same rationale apply to the patent statutes, i.e., no judicial exceptions, such as abstract ideas?

  24. Ternary June 11, 2020 10:37 am

    Mark @ 22

    It does not really matter for 101 rejections in what art unit the application is being examined. Others of my co-pending cases were classified into other (hardware) units and received similar 101 rejections. Many cryptographic applications receive an Alice rejection. Take a look in PAIR at US 9,485,087 which claims a specific and very clever circuit and still gets rejected multiple times as being ineligible over Alice. This patent is notable because of its inventors, who are clearly no newcomers in this field.

    The conclusion has to be that it does not matter if the USPTO issues a patent. The unpredictability and capriciousness of the Courts in applying the laws has wiped out the value of patents in technologies that are driving innovation. These technologies were identified in a report reviewed in an IPWatchdog post this week.

    My issue is not to get a patent. I tell that to an Examiner if I have an interview. Please, give it your best shot. My issue is to get a patent that is not invalidated later on ridiculous and unpredictable grounds. That is an issue that can only be solved by changing the system. It has nothing to do with the inventions or the quality thereof or the Art Unit wherein it is being examined.

  25. Curious June 11, 2020 10:49 am

    I sat in on an earlier session and gained a number of great insights on how to best draft a patent application so that it gets classified in the most appropriate art unit.
    I have been telling people that the best way to overcome a 101 rejection is to avoid being classified into Tech Center 3600 to begin with. That means scrubbing your claims and specification of certain language. For example, I would avoid using the word “business” in any portion of my specification and bend over backwards to prevent it from ever being used in the claims. Off the top of my head, I would also avoid terms like: contract, sales, advertising, marketing, financial.

    If you have an invention that is software-implemented but with a business flair, write it and claim it as software and keep the business jargon to a minimum — particularly in the claims.

    If you have what I call a “pure” business method (i.e., an invention that doesn’t necessarily involve any type of software/hardware), then good luck with that. Perhaps some people are getting issued patents on that, but would counsel my clients to have very low expectations should they desire a patent on something like that.

    BTW — Mark, I’m not sure if it was you who once mentioned to my of my posts (perhaps a year ago?) about how you knew a way to get a different examiner and/or an application reclassified into another art unit. However, if it was you, I would like to know more.

  26. Mark Nowotarski June 11, 2020 1:13 pm

    Curious@25. Yes, that was me. Feel free to contact me at my marketsandpatents website or my gmail based on firstname.lastname

    Ternary @24. I agree that the current state of affairs makes enforcement largely a capricious decision and seriously devalues patents.

  27. Anon June 11, 2020 1:40 pm

    Kirk @ 23 – you alight upon but one shear in the pair of shears that make up my Supreme Court device for cutting through the mess that they have created in the Gordian Knot of eligibility jurisprudence. Search under “Kavanaugh Scissors.”

  28. JT June 12, 2020 12:41 pm

    Kirk @ 23––

    That rationale does apply. But the Supreme Court does not like to give up that power of arbitrary evaluation of whether a patent is “inventive” enough. The 1952 Patent Act was passed specifically to take that power away from the Supreme Court, replacing the arbitrary “inventive” standard with the fairly straightforward 101-102-103 process: Statutory subject matter + Novel + Non-Obvious = sufficiently inventive to be patented. But, the Supreme Court promptly dragged the pre-1952 inventiveness jurisprudence back in with the judicial exceptions, and we find ourselves in that same mire.

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