Latest Eligibility Decision from Federal Circuit Highlights Importance of Crafting a Background in Light of Alice

By John M. Rogitz
October 26, 2020

“The Step 1 ‘directed to’ analysis called for by our cases depends on an accurate characterization of what the claims require and of what the patent asserts to be the claimed advance. The accuracy of those characterizations is crucial to the sound conduct of the inquiries into the problem being addressed and whether the line of specificity of solution has been crossed.” – Federal Circuit opinion

Thankfully, there has been a recent and noticeable drop in precedential abstract idea cases from the U.S. Court of Appeals for the Federal Circuit. But on October 23, 2020, the Federal Circuit provided further “guidance” with respect to Alice Step 1 and upheld a district court finding that a TecSec patent was eligible under Section 101. The case is TecSec v. Adobe, Appeal Nos. 2019-2192 and 2019-2258 (Fed. Cir. 2020). The Federal Circuit panel for the case consisted of Chief Judge Prost along with Judges Reyna and Taranto. Judge Taranto wrote the opinion for the court.

The Venerable Attempt to Define ‘Abstract’

Federal Circuit, eligibility - https://depositphotos.com/28667711/stock-photo-green-us-101-south-highway.htmlWhile there were some other interesting issues that the opinion raises, here we will focus on the Federal Circuit’s abstract idea analysis. According to the Federal Circuit, the asserted claims recite particular systems and methods for multi-level security of various kinds of files being transmitted in a data network. In particular, the claims describe a method in which a digital object is assigned a level of security that corresponds to a certain combination of access controls and encryption. The encrypted object can then be embedded or “nested” within a “container object,” which, if itself encrypted and access-controlled, provides a second layer of security.

         Representative Claim 1 reads as follows:

A method for providing multi-level multimedia security in a data network, comprising the steps of:

A) accessing an object-oriented key manager;

B) selecting an object to encrypt;

C) selecting a label for the object;

D) selecting an encryption algorithm;

E) encrypting the object according to the encryption algorithm;

F) labelling the encrypted object;

G) reading the object label;

H) determining access authorization based on the object label; and

I) decrypting the object if access authorization is granted.

The Federal Circuit began its abstract idea analysis by indicating that “[w]e have approached the Step 1 ‘directed to’ inquiry by asking ‘what the patent asserts to be the ‘focus of the claimed advance over the prior art’….In conducting that inquiry, we ‘must focus on the language of the Asserted Claims themselves,’…‘considered in light of the specification.’”

The Federal Circuit then made a familiar observation that, for software, the issue often centers around whether the invention improves the functioning of a computer or merely uses a computer as a tool. As is typical for any abstract idea analysis devoid of the benefit of a concrete definition of “abstract idea”, for comparison the Federal Circuit then discussed past cases in which patent eligibility was found in the software arts and then cases in which patent ineligibility was found in the software arts.

During its discussion, the Federal Circuit indicated that “we have made two inquiries of significance here: whether the focus of the claimed advance is on a solution to ‘a problem specifically arising in the realm of computer networks’ or computers…and whether the claim is properly characterized as identifying a ‘specific’ improvement in computer capabilities or network functionality, rather than only claiming a desirable result or function.”

Then in layering on additional “guidance” for the abstract idea inquiry and further demonstrating that we’re well past the critical mass needed for additional Supreme Court clarity on what has become an indecipherable body of law, the Federal Circuit indicated that “[t]he Step 1 ‘directed to’ analysis called for by our cases depends on an accurate characterization of what the claims require and of what the patent asserts to be the claimed advance. The accuracy of those characterizations is crucial to the sound conduct of the inquiries into the problem being addressed and whether the line of specificity of solution has been crossed [emphasis added].”

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Specification as Key

Of note was that Adobe argued to the district court that “the claims are directed to the impermissibly abstract idea of managing access to objects using multiple levels of encryption.” But the Federal Circuit indicated that this characterization “is materially inaccurate. To arrive at it, Adobe had to disregard elements of the claims at issue that the specification makes clear are important parts of the claimed advance in the combination of elements.”

The Federal Circuit then noted that Adobe’s characterization of what claim 1 as a whole is directed to does not go beyond what is required simply by the claim term “multi-level security.” But according to the Federal Circuit, the claim itself requires more: “It goes beyond managing access to objects using multiple levels of encryption, as required by ‘multi-level…security.’ Notably, it expressly requires, as well, accessing an ‘object-oriented key manager’ and specified uses of a ‘label’ as well as encryption for the access management…To disregard those express claim elements is to proceed at ‘a high level of abstraction’ that is ‘untethered from the claim language’ and that ‘overgeneraliz[es] the claim [citations omitted].’” If it seems like that analysis conflates the “significantly more” analysis of Alice Step 2 with the Alice Step 1 analysis of identifying the abstract idea itself, you’re not alone.

The Federal Circuit went on to note that a claim element Adobe left out of its proposed abstract idea – the key manager requirement – was already indicated as “important during prosecution” by the Federal Circuit in a related appeal. And yet again highlighting the importance of crafting a self-serving and facially technical background no matter the invention, the Federal Circuit then discussed TecSec’s own background where it indicated:

As to the combination of labeling with the required encryption, the specification makes clear that this is part of the focus of the claimed advance. The [background] expressly identifies a deficiency of using only multilevel security through encryption requiring keys at more than one level: that approach, the [background] says, ‘is quite unwieldy, inflexible, and difficult to manage by a security officer or key administrator’…The [background] then explains that it proposes a solution in which ‘[a] secure method of labelling files or messages that are sent from a sending user to a receiving user over a network’ is used ‘in addition to cryptographic protection’ [emphasis by the Federal Circuit].

Based on this, the Federal Circuit reasoned that “Adobe has not shown how it could properly disregard these claim requirements in determining ‘what the patent asserts to be the focus of the claimed advance over the prior art.’” Thus, the Federal Circuit indicated that “[t]he focus of the claimed advance cannot ignore all but the multilevel encryption.”

In continuing to discuss the patent’s background in combination with another part of the detailed description, the Federal Circuit then indicated that the specification “elaborates in a way that simultaneously shows that the claims at issue are directed at solving a problem specific to computer data networks. The patent focuses on allowing for the simultaneous transmission of secure information to a large group of recipients connected to a decentralized network—an important feature of data networks—but without uniform access to all data by all recipients.”

Thus, the Federal Circuit concluded that the proposed improvement involves labeling together with encryption. Accordingly, “the claims are directed to improving a basic function of a computer data-distribution network, namely, network security.” According to the Federal Circuit, this conclusion was based on the fact that the background “makes clear that the focus of the claimed advance is on improving such a data network used for broadcasting a file to a large audience, with the improvement assertedly being an efficient way for the sender to permit different parts of the audience to see different parts of the file.”

Useful Language

In some of the most useful language practitioners can take out of the case, the Federal Circuit then noted that:

While non-computer settings may have security issues addressed by multilevel security, it does not follow that all patents relating to multilevel security are necessarily ineligible for patenting. Here, although the patent involves multilevel security, that does not negate the conclusion that the patent is aimed at solving a particular problem of multicasting computer networks…By way of comparison, in [another case] we held the claims at issue to be directed to solving a problem of reducing communication time by using otherwise-unused space in a particular protocol-based system…even though reducing communication time by using such available blank space (or, generally, reducing resource use by using otherwise-unused available resources) is a goal in many settings. Similarly, in [yet another case], we held the claims at issue to be directed to solving a problem presented by particularly easy unauthorized use of software by placing the software in an especially secure computer location…even though placing items in especially secure locations to prevent unauthorized access is a goal in many settings. [emphasis added].

Interestingly, the Federal Circuit indicated later that even if Adobe had properly argued the abstract idea of managing access to objects using multiple layers of encryption and labels, that still “does not meaningfully address the combination” recited in the claim.

“Rather, it asserts the ‘commonplace’ character of the individual component techniques generally…or speaks at an even higher level of generality of ‘encoding, converting, encrypting, and controlling access to data.’” Yet again highlighting the importance of a self-serving background, the Federal Circuit noted that, “But that approach is insufficient where, as is true here for the reasons we have explained, it is the combination of techniques that is ‘what the patent asserts to be the focus of the claimed advance over the prior art.’”

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The Author

John M. Rogitz

John M. Rogitz is a registered patent attorney with his own practice in San Diego, CA. His background includes preparation and prosecution of a large number of patent applications for high-tech Fortune 500 companies in a wide range of technologies. John has also been active on behalf of his clients in the acquisition of patent portfolios. He writes frequently for various publications on developments in patent law and also lectures on intellectual property for DeVry University. Previously, John was engaged in civil litigation at the Watkins Firm, a San Diego-based law firm. Prior to that, he worked as a web developer for Loyola Marymount University. John received his J.D. in 2009 from California Western School of Law.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 49 Comments comments. Join the discussion.

  1. Michael Carey October 26, 2020 4:50 pm

    Great article! thanks, John.

  2. Brad Smith October 27, 2020 9:31 am

    Agree very good article. Clear, concise, well-written. I nominate you for the next vacancy on the Fed. Circ.

  3. TFCFM October 27, 2020 10:02 am

    Quick note: In the listing of claim 1, the numerals 2-10 appear to be an artifact of the web site’s formatting. The numerals 2-10 do not appear in the claim.

  4. TFCFM October 27, 2020 10:26 am

    With no offense intended toward Mr. Rogitz’s well-written article, I think that it kind of misses an important point:

    This decision appears to be simply saying “more of the same” as to abstract/functional claiming, this patented technology coming out on the “eligible” side of that analysis. To me, the most salient part of the opinion appears to be this:

    Slip Opinion at 22-23: “We have found claims directed to such eligible matter in a number of cases where we have made two inquiries of significance here: … and whether the claim is properly characterized as identifying a “specific” improvement in computer capabilities or network functionality, rather than only claiming a desirable result or function. (emphasis added).

    The cases cited by the court for this proposition, for folks who continue to stubbornly NOT believe that the Federal Circuit means what it keeps on saying: Uniloc, 957 F.3d at 1306, 1308–09; see Enfish, 822 F.3d at 1135–36; see also, e.g., Packet Intelligence LLC v. NetScout Systems, Inc., 965 F.3d 1299, 1309–10 (Fed. Cir. 2020); Ericsson Inc. v. TCL Communication Tech. Holdings Ltd., 955 F.3d 1317, 1328 (Fed. Cir. 2020); Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1150 (Fed. Cir. 2019); SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1303– 04 (Fed. Cir. 2019); Ancora Techs., Inc. v. HTC America, Inc., 908 F.3d 1343, 1347–49 (Fed. Cir. 2018); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1258–59 (Fed. Cir. 2017); Intellectual Ventures I, LLC v. Capital One Financial Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017); McRO, 837 F.3d at 1313–16.

    To my ears, the pertinent lesson appears to CONTINUE to be that claims that recite discrete subject matter that a patent applicant actually invented and described throughout the full scope of what-is-claimed remain eligible, while claims directed to “anything and everything that achieves or results-in outcome X” remain ineligible.

    It seems to me that all of the “specifically describing and defining the problem to be solved” in the world will not render eligible a claim directed to merely-functionally-described structures, compositions, or methods.

    (As a side-lesson, this case also appears to further discredit the allegation that reciting some tangible item is necessary to render a claim eligible. No element of the claim at issue in this case is or need be a tangible item, and yet the court had little trouble finding it eligible, either at the district court level or at the Federal Circuit.)

  5. Eileen McDermott October 27, 2020 11:39 am

    Yes, that was a formatting error, thanks.

  6. JNG October 27, 2020 1:10 pm

    Years ago I had this discussion with some young, well-meaning newbie patent attorneys who assured me that (after practicing 30 years) I had to get rid of the Summary and the Background of the invention in my filings, because the current caselaw was such that it was a liability. I told them it was a huge mistake to start revamping your entire strategy based on errant, misconstrued jurisprudence burps from the CAFC. Since then I’ve been vindicated over and over that the traditional thinking is still accurate: put in the details, they almost always help, and the times they don’t are too few and far inbetween to sweat it.

  7. Pro Say October 27, 2020 3:23 pm

    Similar to JNG, while a number of “legal experts” (including some with decades of experience) were recommending some years back (and some still do) that one should say as little as possible in the specs, I — thankfully — ignored them and continued to put in just as much as possible in the specs.

    As a result (and while 101 sometimes remains a problem post-Mayo / Alice), traversing any 102, 103, and 112 rejections are a breeze.

  8. Anon October 27, 2020 4:17 pm

    JNG,

    I would most definitely pause and take issue with yours AND the newbie’s advice, as both appear too extreme.

    Patent profanity is very much real.

    This is NOT to say that omit details, as it is to say that selection of details — to both put in AND leave out — is where the skill be at.

  9. B October 28, 2020 11:42 am

    This is a well-written piece, but I know from first-hand experience it’s total b.s. How do I know? I’ve been before Judges Prost, Reyna and Taranto on the issue.

    A Fed Cir 101 analysis is just an exercise in chaos to get to a predetermined yet random outcome, especially with all three of the above-named judges.

    Finally, take a look at p. 30 of the slip op. Is evidence in vogue again, Judge Reyna? I’ve presented evidence that was 100% one-sided on s101 and the PTO and CAFC ignored it completely.

    This opinion by these judges is just the latest in b.s.

    Prove me wrong

  10. B October 28, 2020 11:43 am

    @JNG and pro say – I’ve honestly never heard anyone tell me to scrimp on the spec (and I never do), but I’ve never found a “robust” background section helpful with ONE exception where a Japanese-originated application explained the difference b/t the claims and a particular piece of art the inventors knew would be cited. Even then, it merely saved me about 2-3 hours of time.

  11. Curious October 28, 2020 11:44 am

    To my ears, the pertinent lesson appears to CONTINUE to be that claims that recite discrete subject matter that a patent applicant actually invented and described throughout the full scope of what-is-claimed remain eligible, while claims directed to “anything and everything that achieves or results-in outcome X” remain ineligible.
    Again, you evidence a certain level of ignorance as to how claim language works in the non-biotech arts. Consider the following claim terms: radiator, light, switch, engine, propeller, coupling, processor, conductor, generator, rotor. Objects are frequently described by their function — that doesn’t make them abstract.

    If I claim some combination that includes a switch, a light, a conductor, and a generator, have I claimed an “abstract idea” because there are literally hundreds/thousands of alternatives that can be used for each of those elements? Does my specification have to describe the “full scope” of what is encompassed by those elements? Absolute not. The mechanical/electrical/computer arts are chockfull of terminology that can be used to described hundreds of different elements.

    You (and frankly the Federal Circuit) confuse the difference between enablement and claiming an abstract idea. Morse’s claim 8 (the poster child for “abstract idea” jurisprudence) is far more an enablement issue than it is about claiming an abstract idea. Personally, I have no problem with a claim such as Morse’s claim 8 being deemed unpatentable — however you don’t see those kinds of claims anymore.

    No element of the claim at issue in this case is or need be a tangible item, and yet the court had little trouble finding it eligible, either at the district court level or at the Federal Circuit
    Stated by one unskilled in the art. To those skilled in the art, this is necessarily performed on a computer.

    One of the problems with the Federal Circuit is that many judges don’t have at least some basic understanding of the technology involved. If you cannot understand the facts, it is hard to make good law. This goes all the way back (in somewhat modern times) to Benson, in which the Supreme Court wrote things that are plainly incorrect — as a factual matter.

  12. B October 28, 2020 11:51 am

    @ TFCFM

    “No element of the claim at issue in this case is or need be a tangible item, and yet the court had little trouble finding it eligible, either at the district court level or at the Federal Circuit”

    Yes and no. Depends on the time and day, and what nonsense the CAFC wants to spin on a given day. Judge Reyna would say this is correct in McRO, but incorrect in RecogniCorp. Judge Hughes would say you’re correct in Enfish, and Judge Taranto would say you’re wrong in EPG.

    The entire issue in nonsense so long as the literal language of 101 is satisfied

    Glad to see you’ve had a change of heart on the issue

  13. concerned October 29, 2020 7:15 am

    B @9:

    “This is a well-written piece, but I know from first-hand experience it’s total b.s. How do I know? I’ve been before Judges Prost, Reyna and Taranto on the issue.

    A Fed Cir 101 analysis is just an exercise in chaos to get to a predetermined yet random outcome, especially with all three of the above-named judges.”

    Nice to see your post. The above is alive and well at the USPTO as you are aware. At least my first examiner admitted I should have a patent before the second examiner mysteriously showed up. My hope is the first examiner asked to be taken off my application as a matter of personal decency.

    The second examiner admits that the process solves a long standing problem, but apparently not the right kind of problem with the right kind of solution. If a computer is used, the computer has to be improved allegedly, forget what problem is being solved.

    The computer network is improved with my solution, however, that is conveniently not addressed to get the desired continued rejections. Just the fact that my process solved a decades old problem beyond experts should justify a patent.

    TFCFM: Just wondering: If I put a generic computer on a shoebox and somehow it cures cancer, is this process patentable?

  14. TFCFM October 29, 2020 11:05 am

    Curious@#11: “Objects are frequently described by their function — that doesn’t make them abstract.

    This is surely true, but misses the point. When assessing the patent-eligibility of a claim, it is the claimed invention that must be assessed, not merely individual elements that are recited in the claim.

    For the example you suggest (switch/light/conductor/generator combination), it may well be that, in the context of your specification (here, presumably electrical circuits) each of these function-like-nouns is well-understood in the electrical arts and includes numerous common embodiments. Even so, patent eligibility of your claimed “combination” will depend on what the claimed combination is, not on whether these individual elements are individually understandable (although ineligibility may also result if any element is not understandable or is abstract).

    Continuing with your example, your claimed “combination” requires no interrelation between the four elements you recite (and therefore includes all possible combinations/interrelations). Even assuming you recited some function for your combination (e.g., “an actuatable/de-actuatable illumination device comprising [your four elements]”), your claim remains abstract because it covers any and every combination/relationship of the four elements that achieves that recited function. Absent any additional claim wording (and corresponding sufficient-description) to save your claim from abstractness, your claim is properly rejected under section 101 as “abstract” because in includes all combinations/interrelations that you have not invented (or described) – i.e., “any/every combination that works, even though I haven’t described all of them, don’t know what all of them might be, and don’t have the foggiest idea how to make at least some of them or to make them work.”

    Similarly, with concerned‘s otherwise-curious suggested example (@#13), a claim directed to (formalizing a bit) “A device for curing cancer comprising a (generic) computer on a shoebox.” Let’s even assume that concerned’s applicant actually made a computer/shoebox combination that cured some type of cancer (i.e., actually invented a device works for this intended purpose). The formalized claim remains abstract because it is not limited to what the applicant ACTUALLY invented, but instead recites innumerable combinations of two elements that skilled artisans in the field of cancer therapy will not understand/believe to be effective for curing all types of cancer (even ignoring what the metes and bounds of “cure” might be).

    Even if the claim were limited to treatment of a particular type of cancer, skilled artisans would not understand/believe the generic combination of a computer/shoebox to be effective for that type.

    Even further, if the claim were both limited to a particular cancer type X and claimed a computer/shoebox combination “that is effective to treat type X cancer,” the claim remains abstract unless the applicant has invented and disclosed precisely the “computers” (or even types of computers) and “shoeboxes” (or even types of shoeboxes) which will, when combined (in a way sufficiently-specifically described and recited in the claim) will be effective to achieve the desired purpose.

  15. concerned October 29, 2020 5:14 pm

    TFCFM@14:

    “Even further, if the claim were both limited to a particular cancer type X and claimed a computer/shoebox combination “that is effective to treat type X cancer,” the claim remains abstract unless the applicant has invented and disclosed precisely the “computers” (or even types of computers) and “shoeboxes” (or even types of shoeboxes) which will, when combined (in a way sufficiently-specifically described and recited in the claim) will be effective to achieve the desired purpose.”

    ============

    The examiner admits my combination solved the problem, that aspect has never been questioned in the official record.

    And I meet your criteria…. unless the applicant has invented and disclosed precisely the “computers” (or even types of computers) and “shoeboxes” (or even types of shoeboxes) which will, when combined (in a way sufficiently-specifically described and recited in the claim) will be effective to achieve the desired purpose.” My process reflects concrete steps to solve a specific problem, at a specific time, on a certain situation.

    TFCFM: Thank you for your response. Unfortunately, I think certain examiners at the USPTO, or their supervising staff, reject anything and everything with a computer notwithstanding this article or your criteria.

  16. Curious October 29, 2020 5:34 pm

    Continuing with your example, your claimed “combination” requires no interrelation between the four elements you recite (and therefore includes all possible combinations/interrelations)
    Nice straw man. I didn’t set forth a fully-formed claim — just elements. Maybe there are a handful of unicorns out there to be found in the wild, but over a couple of decades and tens of thousands of claims, I haven’t seen anything claimed in the manner you are suggesting.

    your claim remains abstract because it covers any and every combination/relationship of the four elements that achieves that recited function
    Assuming that I claimed something with those elements, I have claimed a device — not a function.

    The formalized claim remains abstract because it is not limited to what the applicant ACTUALLY invented, but instead recites innumerable combinations of two elements that skilled artisans in the field of cancer therapy will not understand/believe to be effective for curing all types of cancer (even ignoring what the metes and bounds of “cure” might be).
    Again, confusing a problem with the biotech arts with that of the other arts. We don’t claim a chemical compound made up of a number of constituent parts while the specification includes a laundry list of alternatives for each component in which only some of the alternatives in the group are effective in the claimed function (i.e., “a compound including a combination of XYZ that is effective to treat some particular carcinoma.”) WE DON’T CLAIM THINGS LIKE THAT.

    If we claim a particular function, it is because we know how to achieve the function. For example, the claim language of “the client device transmitting a request for content to the server” could be performed in likely dozens of different ways (if not a lot more depending upon how detailed you want to parse the differences). However, these ways are KNOWN. Perhaps there are unknown ways to do that, but that doesn’t take away that there are many known ways of doing it. The functional claim language is part of the invention as a whole — we aren’t claiming that as the invention itself. This is unlike claims commonly found in the biotech/chemical realm that are claiming chemical compounds by what they do. In that situation, there is an enablement problem.

  17. Anon October 29, 2020 8:06 pm

    Curious,

    As usual, TFCFM likes to speak of things that he is truly clueless about.

    He expounds with quite the number of words, but note how he conflates the different aspects of patent law (like that which is controlled under 35 USC 112).

    He really (I mean really) does not understand patent law at an organic level,

  18. TFCFM October 30, 2020 10:06 am

    concerned@#15: “The examiner admits my combination solved the problem, that aspect has never been questioned in the official record.

    No doubt, your situation is fact-specific (as are all others), and I don’t know you’re particular facts. Yours would hardly be the first situation in which an examiner misunderstands or misapplies application of section 101. (Heck, if even the US Supreme Court and the Federal Circuit can’t spit out a black-and-white test(s) for eligibility, we can hardly expect every examiner to.)

    I wish you luck and advise you to focus your examiner’s attention, your record for appeal, and (if necessary) your claim language on how the metes and bounds defined by the wording of your claim align with what you’ve taught and don’t include “anything and everything else that others may invent to compete with” whatever your invention might be.

  19. TFCFM October 30, 2020 10:14 am

    Curious@#16: “Assuming that I claimed something with those elements, I have claimed a device — not a function.

    Your reply gets right to the heart of what prevents us from discussing this more intelligently: You haven’t provided us a claim — only an allegation that if you had done so, the claim you “would have” provided would be eligible under section 101.

    Surely, even a novice patent practitioner could provide us with examples of BOTH 101-eligible claims and 101-ineligible claims, each of which include the list of elements you shared with us.

    This gets back to precisely what I said in my original response to your list:

    TFCFM@#14: “When assessing the patent-eligibility of a claim, it is the claimed invention that must be assessed, not merely individual elements that are recited in the claim.

    That you include the word “device” in your claim (presumably in the preamble) does not make any and every potential version of your claim eligible.

    (If you’d like to discuss further, it probably makes sense for you to actually propose a claim, rather than arguing about non-existent, hypothetical claims {ones, moreover, which lack the very specifics upon which eligibility would depend}. We can, of course, avoid anticipation and obviousness issues if you want to claim some sort of light-producing “device” including the elements you proposed.)

  20. Pro Say October 30, 2020 11:08 am

    B @ 10: Just to clarify, I was referring primarily to those who recommend(ed) minimizing what is said about the instant invention itself than minimizing the background. I agree that a robust background is normally of little value (though mine are always robust — just in case).

  21. Curious October 30, 2020 11:27 am

    As usual, TFCFM likes to speak of things that he is truly clueless about.
    The frustrating part about dealing with TFCFM is that it is difficult to figure out whether he is trolling us or if he truly doesn’t understand the difference between how things are claimed in the mechanical/electrical/computer arts and how things are claimed in the biotech arts. I’ve tried to give him the benefit of the doubt by explaining the difference yet he completely ignores these explanations each time.

    You cannot have a reasonable debate when the two sides having different views (and different knowledge bases) of the underlying facts. TFCFM has admitted to being a biotech guy yet he continually opines on matters involving subject areas that he just doesn’t understand very well. He/she is emblematic of the problem we have in the Federal Circuit, where you have judges making decisions when they are clueless about the underlying facts and cannot discern when certain arguments being presented by counsel have as much factual basis as fairytales.

    One does not get to be a judge at the Federal Circuit without have a very high intelligence. That, in itself, should allow one to at least get a reasonable handle on most factual characterizations. However, engineering/technology/science are fields that require specialized knowledge to have even a rudimentary base level of understanding. It is tough enough for me, as an engineer (who also worked as one), to understand the wide variety of technology I deal with — and being able to understand new technology is probably one of my greatest strengths. I cannot imagine how someone without any kind of science training could even hope to understand some of the technologies being presented. Arthur C. Clarke famously wrote that “any sufficiently advanced technology is indistinguishable from magic.”

    With that in mind, it seems like many at the Federal Circuit are no better at understanding what is actually be claimed than what the average audience member in a sophisticated magic show understands about what is happening in front of them. The American Axle decisions is a great example of this. The nitty-gritty details of that technology are complicated and difficult to understand — even for myself who has had some experience dealing with similar technology. However, both the judge at the District Court and the judges at the Federal Circuit level got run over by that technology and made assertions (regarding the technology) that would make one having ordinary skill in the art cringe.

    Part of the problem, I imagine, is that many of these judges have so much ego that they cannot admit when they are out of their league when it comes to understanding the technology. Their egos do a disservice to both the parties looking for justice and to patent law jurisprudence, as a whole.

  22. Anon October 30, 2020 1:34 pm

    whether he is trolling us or if he truly doesn’t understand the difference

    Both – not ‘or.’

  23. concerned October 31, 2020 9:50 am

    TCCFM @18:

    No doubt, your situation is fact-specific (as are all others), and I don’t know you’re particular facts. Yours would hardly be the first situation in which an examiner misunderstands or misapplies application of section 101. (Heck, if even the US Supreme Court and the Federal Circuit can’t spit out a black-and-white test(s) for eligibility, we can hardly expect every examiner to.)

    ===

    The first examiner admitted patentability in a phone interview and implied the higher ups were the problem. Then magically a second examiner is assigned. The second examiner’s rejection arguments are really disappointing and sad, appearing to justify an end result regardless of means or facts on record.

    My application is my first and only experience with the patent process. I am lucky that I am not smart enough to invent other solutions. I still remember the excitement of knowing what the process could do for people, yet the joy quickly fades when dealing with the reality of the matter.

  24. Curious October 31, 2020 3:22 pm

    Surely, even a novice patent practitioner could provide us with examples of BOTH 101-eligible claims and 101-ineligible claims, each of which include the list of elements you shared with us.
    Go for it — let’s see your versions.

  25. TFCFM November 2, 2020 10:34 am

    Curious@#24: “Go for it — let’s see your versions.

    It WAS your example (absent an actual example) that you were making claims about. Nonetheless, here are examples drawn from what you wrote:

    A) Not eligible (at least because “abstract,” despite reciting “device”):

    1. An actuatable/de-actuatable illumination device comprising:
    i) a switch,
    ii) a light,
    iii) a conductor, and
    iv) a generator,
    operably arranged to generate light.

    B. Eligible (because not “abstract,” even though t):

    2. A light-generating electrical circuit comprising:
    i) a switch,
    ii) a light,
    iii) a conductor, and
    iv) a generator,
    serially electrically connected in a closed circuit.

    Ineligible claim 1 is abstract because it includes embodiments such as “a shoebox having i-iv within it, each not-electrically-connected to any of the others.” (If your specification discloses how to make this “device” generate light anyway, modifying the claim to recite the arrangement/type of elements that would achieve this would, at a minimum, be necessary to render the claim non-abstract.)

    Claim 2 is non-abstract, even though there are innumerable conductors, switches, lights, and generators which could be used (and even assuming that the specification describes fewer than all of each).

    As an aside / practice-tip, if you prosecute patents at all similarly to how you trade comments, you might consider the possibility that submitting attempted-insults and imaginary-shortcomings of the examiner of your application will be less effective than simply responding on the substance.

  26. TFCFM November 2, 2020 10:42 am

    concerned@#23: “I still remember the excitement of knowing what the process could do for people, yet the joy quickly fades when dealing with the reality of the matter.

    I’ve worked with pro se / pro bono inventors for several years, and what I find myself commonly telling them initially is something like this:

    Inventing a neat technology and patenting it are IMMENSELY different kinds-of-things. Patenting is about securing from the government a license to limit other people’s freedom (i.e., to copy what you’ve done). Governments don’t hand out such licenses willy-nilly (nor should they, in a free and open society). Instead, they require that applicants for such a license jump through some hoops.

    Hoop-jumping (i.e., patenting) is just simply a very, very different process than inventing stuff. It’s all about jumping through the hoop, regardless of how good, bad, clever, or banal your technology is.

    Examiners’ job is to make sure that you jump through the government-mandated hoops in the way that the government demands you jump — NOT about how good/bad/clever/banal your technology is.

    Without knowing your particular details (not saying I want to learn them), it sounds to me like this is the issue you’re experiencing.

    Good luck (and maybe consider working with an experienced practitioner, at least in a pro bono-type program).

  27. concerned November 2, 2020 4:24 pm

    TFCFM:

    I feel my attorney is doing a great job.

    As a person who administered law in my career, I am disappointed that any government official can ignore evidence, make unsubstantiated statements not supported by the official record or fact, and disregard official USPTO memos. I would be ashamed if I conducted my administration of law in such a fashion. I hope to meet my first examiner just to ask if he intentionally got off my application out of respect to the job and himself.

    One practicing attorney and contributor of articles to this forum has been through my entire file wrapper and stated the only way I lose is 75% of my claims are tossed and the decision maker is untruthful.

    The author of the book who reached out for my story used more generous terms with his assessment of the examiner’s actions, but had distain for his handling of the application.

    My attorney simply calls the matter non-responsive.

    I call it regretful.

  28. B November 2, 2020 9:18 pm

    @TFCFM “ I’ve worked with pro se / pro bono inventors for several years, and what I find myself commonly telling them initially is something like this: . . . “

    Dude, go back to faking like you’re a firefighter. You can’t even lingo

  29. TFCFM November 3, 2020 10:46 am

    concerned@#27: “My attorney simply calls the matter non-responsive. I call it regretful.

    Could be. Poorly-performing examiners surely exist. The remedy, of course, is to appeal. Appellate courts aren’t necessarily infallible, either, but tend to do better than randomly-drawn examiners, IMO.

    Good luck to you, in any event.

  30. concerned November 3, 2020 1:17 pm

    Thank you for well wishes. At PTAB currently.

  31. Jam November 4, 2020 3:06 pm

    Looks like the patent was found eligible because of the inclusion of the term “object-oriented” for the term “object-oriented key manager”. This illustrates the ignorance of the CAFC about modern technology. Specifically, implementing the innovative method using either an object oriented programming language or a procedural programming language is not the innovation and does not divine between whether the key measure is an abstract idea or not an abstract idea. The choice of programming language should not determine whether a claim is patent eligible. I.e., a claim should not be patent eligible because it is implemented in C++ (an object oriented programming language) instead of being implemented in ANSI C (a procedural programming language that is not object oriented).

  32. B November 6, 2020 12:10 am

    @ Jam “The choice of programming language should not determine whether a claim is patent eligible. I.e., a claim should not be patent eligible because it is implemented in C++”

    Respectfully, whether a claim is written in C, C++, Python, or whatever, they’re all directed to a patent-eligible process under 35 USC 101.

  33. B November 6, 2020 12:23 am

    @ concerned “The second examiner admits that the process solves a long standing problem, but apparently not the right kind of problem with the right kind of solution.”

    There’s no “right kind of problem” exclusion in 101. That said, the Examiner is actually more right than you know, but for all the wrong reasons.

    “If a computer is used, the computer has to be improved allegedly, forget what problem is being solved.”

    Software doesn’t improve a computer ever. An improved process running on a computer is an improved process running on the same computer. Was a computer improved in Enfish? Heck, no. Just a different way to process data.

  34. B November 6, 2020 12:45 am

    @ TFCFM “Ineligible claim 1 is abstract because it includes embodiments such as “a shoebox having i-iv within it, each not-electrically-connected to any of the others.”

    That’s honestly the stupidest and most ignorant thing I’ll read all week from a legal perspective. “Operably,” my eye

    http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1169.Opinion.2-4-2020_1526242.pdf

  35. TFCFM November 6, 2020 10:39 am

    B@#34: “ ‘Operably,’ my eye

    Good “argument.” Wait. Bad argument – what’s the “argument” again. Is this how you respond to rejections?

    “Obvious, my eye. Reconsideration and withdrawal of the Examiner’s obviousness rejection are therefore respectfully requested.”

    (Citation of a random case for no apparent or explained reason is no more convincing. If there is any relevance whatsoever to the decision you cite, please tell us what it is. If you’ve got nothing, of course, stand by the naked citation and pretend you do.)

  36. concerned November 6, 2020 12:38 pm

    B @33.

    As always, thank you.

    And as you know, my inventive concept has to be on a computer since the problem being solved is rooted in the Administering Agency’s computer network.

    Nice to see you posting more frequently. Look forward to your next possible IPWatchdog article!

  37. B November 7, 2020 3:36 pm

    @ TFCFM “Good “argument.” Wait. Bad argument – what’s the “argument” again. Is this how you respond to rejections?”

    Give it up, Fake Patent Attorney. Everything that comes from you is miserably stupid garbage. EVERYTHING.

  38. B November 7, 2020 3:40 pm

    @ concerned “And as you know, my inventive concept has to be on a computer since the problem being solved is rooted in the Administering Agency’s computer network.”

    Tell me when you want to go to the CAFC. I will be happy to help or quietly advise your current patent attorney, who appears to be quite competent.

    That said, don’t use nonsense words like “inventive concept” unless you know what an “inventive concept” is. Given that the SCOTUS and CAFC refuse to define the word, I posit that “inventive concept” is either a totally meaningless term or nonobviousness under s103

  39. Concerned November 8, 2020 8:32 am

    B:

    Thank you for your on going support!

    The patent environment is full of undefined terms, as you well know. Then when a patent applicant plays their word games and actually proves the “inventive concept” or (fill in the blank with any term) has not been used in his field, or any field for that matter, the examiner ignores and refuses to address the rebuttal argument.

    It sure seems with the word games or without the word games, a predestined desired end result is behind the final rejection from the onset.

  40. TFCFM November 9, 2020 11:03 am

    B@#34: “ ‘Operably,’ my eye

    TFCFM@#35: “Good “argument.” Wait. Bad argument – what’s the “argument” again[?]

    B@#37: “Give it up, Fake Patent Attorney. Everything that comes from you is miserably stupid garbage. EVERYTHING.

    Perhaps needless to say, childish attempted insult is also not “argument.” Would you care to try again, or should we simply conclude that you’ve got no counter-argument?

  41. Anon November 10, 2020 12:28 pm

    TFCFM,

    Heed your own advice, as what you clamor about here is all that you have done on a more current thread.

  42. B November 11, 2020 12:19 am

    @ TFCFM “Perhaps needless to say, childish attempted insult is also not “argument.” Would you care to try again, or should we simply conclude that you’ve got no counter-argument?”

    My argument is that everything that comes out of your mouth is an exercise in total cluelessness. I have yet to see a single post from you that isn’t laughably ignorant.

    “(Citation of a random case for no apparent or explained reason is no more convincing . . . ” This proves exactly what I said. You’re so ignorant you can’t be bothered to actually read a freaking case that makes your “operable arranged” claim scenario so much nonsense much less understand the idea of what does and does not belong in a claim.

    Go back to faking another profession

  43. TFCFM November 11, 2020 11:35 am

    B@#34: “‘Operably,’ my eye

    TFCFM: “… what’s the ‘argument’[?]”

    B@#37: “…Everything that comes from you is miserably stupid garbage.?

    TFCFM@#40: “…Would you care to try again, or should we simply conclude that you’ve got no counter-argument?

    B@#42: “My argument is that everything that comes out of your mouth is an exercise in total cluelessness.

    Res ipsa loquitur

  44. Anon November 11, 2020 5:41 pm

    Turn that Latin to describe your own hypocrisy, TFCFM.

  45. TFCFM November 12, 2020 12:15 pm

    I believe the phrase adequately describes the subject matter offered by each of you, me, and commenter “B.”

  46. B November 12, 2020 1:45 pm

    @TFCFM “Res ipsa loquitur”

    In your case, “Res loquitur fatue”

    Go back to faking another profession. Seriously, your ignorance about the most superficial aspects of patent law speaks for itself.

  47. Anon November 13, 2020 8:01 am

    TFCFM,

    You mean the lack of subject matter that you espouse?

    Sort of like when you claimed that you were more than willing to hold conversations, and then dismiss out of hand ANY point that does not fit your narrative?

    I can see why B has such a short leash for you, and so quickly calls you a fake.

    Sadly — and I mean this in the more global view of how people view lawyers in general — I think that you ARE an attorney (a litigator but not a registered patent attorney).

    You post as if you are impressed by your own rhetoric, and you may well be, especially if your ‘logic’ is what you use to ‘bedazzle’ your non-lawyer acquaintances.

    But here, your shift/blame/evasion/false proclamations are to an audience that by and large see right through your tactics.

    It would be refreshing – and as I have mentioned, color me impressed – if instead of your usual empty rhetoric and dismissals, you actually engaged on the points put to you.

    I simply don’t recall a time that you have ever done that.

  48. TFCFM November 17, 2020 10:48 am

    I shall not try to out-type you. If you had a point, you’d have made it by now.

  49. Anon November 17, 2020 7:16 pm

    TFCFM,

    That’s just it – I have already made the point, and your unwillingness (or inability) to engage ON the point does not change that fact.

    You remain a hypocrite, and I still do not recall a time that you have actually engaged on the merits put to you. This last post of yours as well, is nothing more than an attempt by you to dismiss the circumstances in an empty huff. It fools no one. You are not entertaining your non-lawyer friends here.

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