Alice-Insanity (Part One), or Why the Alice-Mayo Test Violates Due Process of Law

Alice-Mayo, as is practiced by the USPTO and the Federal Circuit, is an exercise in capriciousness as well as a rote, near cliché babbling of meaningless words that falsely portend to be a cognizable standard of patent eligibility.”

Alice-Mayo - https://depositphotos.com/92519140/stock-photo-due-process-concept.htmlThe Fifth Amendment of the U.S. Constitution guarantees, inter alia, that no person shall be deprived of property (including intellectual property), without due process of law. For instance, it is settled law that a federal statute may be so arbitrary and capricious as to violate due process. Similarly, it is settled that an administrative agency, e.g., the U.S. Patent and Trademark Office (USPTO), cannot escape the due process of law requirement when processing patent applications. In theory (less in reality), due process of the law extends to judicial as well as political branches of government, and judgments that violate constitutional limitations and guarantees are void or voidable.

The term “in theory” is used because the Supreme Court has never held that federal appellate court decisions must comply with Fifth Amendment due process. The Federal Circuit has never held that it is decisions must comply with due process. As Judge Moore observed in her American Axle dissenting opinion, “I am troubled by the deprivation of property rights without due process.”

Adhering to due process is apparently beneath the dignity of most appellate judges. However, blame the Supreme Court, which turns a blind eye to the issue.

The important message every reader should take from this article is that there is a big difference between void and voidable, and every person disputing an Alice-Mayo assault on their clients’ constitutionally-protected intellectual property needs to expressly raise the due process issue. Alice-Mayo, as is practiced by the USPTO and the Federal Circuit, is an exercise in capriciousness as well as a rote, near cliché, babbling of meaningless words that falsely portend to be a cognizable standard of patent eligibility.

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The Supreme Court’s Alice Corp. Decision Has Rules

Assuming that the Alice Corp. decision actually passes constitutional muster under Henry Schein, Inc. v. Archer & White Sales, Inc., 586 U.S. ____ (2019) (it doesn’t), there are still rules to Alice Corp. that the Federal Circuit ignores at a whim.

Rule Number 1: “Abstract” is not just whatever a judge says it is. The underlying business method of a claim must be well-known, routine, and conventional. Not just individual parts of the business method dissected from the whole, but the business method as a whole, ordered combination.

Rule Number 2: There must be evidence that the underlying business method is well-known, routine, and conventional. In Alice Corp., the Supreme Court relied on textbooks published in 1896. The Supreme Court’s Bilski decision also relied on published textbooks. See, e.g., Alice Corp., 573 U.S. at 219. The Supreme Court never declared anything to be well-known/well-understood, routine, and conventional (i.e., “abstract) without evidence on the record. Furthermore, the Supreme Court’s Alice Corp. and Bilski decisions never dismissed a single claim limitation because said claim limitation could theoretically be performed by a human mind or because the claim limitations could be performed by a computer. The entire “mental steps” doctrine the Federal Circuit capriciously and inconsistently applies is an erroneous adaptation of pre-1952 judicial precedent that has no foundation in the current Patent Law, and that was expressly rejected in Bilski.

Rule Number 3: While the application of a computer to a business method is insufficient to make a claim patent eligible, the application of a computer to a business method does not cause an underlying process that is novel and non-obvious to be patent-ineligible. “The introduction of a computer into the claims does not alter the analysis.” (emphasis added) Alice Corp. at 508.

“Does not alter” means “does not alter.”

Rule Number 4: The underlying principle of Alice Corp. is to prevent preemption of an abstract idea, i.e., “not inhibit further discovery by improperly tying up the future use of” the fundamental building blocks of human ingenuity.

Rule Number 5: Only if: (1) there is evidence that the underlying algorithm / business method is well-known, routine, and conventional as a whole, ordered combination, and (2) the underlying algorithm / business method covers a previously-known building block of human ingenuity does one search for an “inventive concept.” Again, it is to be appreciated that, in neither Step 1 nor Step 2, the introduction of a computer into a claim does not alter the eligibility analysis. Id. at 508.

The Alice Corp. Test Has Gaps

First, there is no objective test as to what constitutes a “building block of human ingenuity.” What is certain, however, is that examiners and judges are not competent to make such a determination. Whether a thing is a “building block of human ingenuity” requires a fact-based inquiry and evidence. Examiners are not considered to be one of ordinary skill in the technology they examine, and judges are experts in nothing but the law. Evidence is needed.

Second, the Supreme Court inserted the term “inventive concept” into the Alice-Mayo test without clarifying what an inventive concept is. Without going into much deserving detail, the search for the elusive ‘inventive concept’ is garbage. Yes, it’s supposed to be “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself,’” but the Federal Circuit has proved itself completely incapable of defining (outside circular reasoning and capricious dictates) any of the terms “abstract idea,” “significantly more,” and “inventive concept.”

The Federal Circuit Has Made an Unholy Mess of Alice Corp.

Now, turning to the Federal Circuit’s adaptation of Alice Corp., instead of at least attempting to fill in the gaps, the Federal Circuit has made an unholy mess that further violates constitutional due process of law.

An “abstract idea” is whatever a panel of three black-robed, technologically-ignorant, liberal arts majors says it is. Further, the Federal Circuit has not once attempted to qualify or quantify the term “significantly more.” Still further, no one in over 170 years of patent jurisprudence has ever managed to define what “invention” means or what an “inventive concept” is. That includes every district court judge that ever lived, every Federal Circuit judge that ever lived, and every Supreme Court justice that ever lived.

“Inventive concept,” as used by U.S. courts and the USPTO, has no meaning – it is merely the means to a capricious veto of a patent claim.

Similarly, the term “significantly more,” as used by the USPTO and Federal Circuit, is another capricious standard. No court to date has provided a limiting principle as to what is “significantly more.” If this statement is in error, the author begs for clarification in the form of a non-circular definition consistent with Supreme Court precedent.

The only government employees who are, as a rule, honest about Alice-Mayo are patent examiners – not including examiners in TC3600. Ask the next patent examiner you talk with to define “inventive concept.” Examiners freely state they do not have the slightest idea what an “inventive concept” is. No USPTO training material defines the term “inventive concept.” There is no adult supervision, as USPTO leadership and the Patent Trial and Appeal Board (PTAB) are so confounded they refuse to even attempt a definition. No living judge or justice has ever attempted a definition in any published opinion that was not circular. The late, great Judge Giles Rich endlessly mocked the idea of “invention,” and co-wrote the 1952 Patent Act with the express purpose of ridding the United States of the tyranny of capriciousness that is “invention.”

“Invention,” “spark of invention,” “inventive concept” etc. are synonyms for capriciousness. The public has far too long been subjected to one capricious 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 an exercise in capriciousness and a violation of due process of law.

Every patent attorney and agent needs to demand that the USPTO and the courts define these Alice-Mayo terms they merely pretend to understand. Every patent attorney and agent needs to assert that, in the absence of objective standards, their clients’ constitutional rights are violated. Preserve the fifth amendment constitutional issue by expressly raising it because, unlike subject matter jurisdiction issues, a due process violation is not automatically void.


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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 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 84 Comments comments. Join the discussion.

  1. Model 101 October 26, 2021 5:14 pm

    True!!!!!!
    But…the crooks out number the honest.

    That’s why it is the way it is.

  2. Model 101 October 26, 2021 5:35 pm

    What gets me is that everybody knows this…and “consensus” is stopping the reform.

    Thus it needs to be said that there is a crooked element in the system.

    There is no other explanation.

  3. MaxDrei October 27, 2021 4:39 am

    Given that i) the courts are not capable of laying down a workable definition of “something more” or “abstract idea” or “inventive concept” and ii) 35 USC 101 as it stands is not fit for purpose, so that the legislative branch has to intervene, what do you suggest, going forwards, as a workable test of patent-eligibility that The Congress might deliver? Perhaps something aligned with the GATT-TRIPS definition: “all fields of technology”? After al, that would fit nicely with the Patents Clause, wouldn’t it?

  4. concerned October 27, 2021 5:03 am

    Further affiant sayeth naught. Oh, but wait! There is a Part 2 to this article.

    I am hoping and praying that Chief Circuit Judge Moore is assigned to my CAFC appeal. Judge Moore should find Mr. Mathis’ brief of my appeal entertaining and brilliant.

  5. Night Writer October 27, 2021 8:35 am

    What is so right about this is that the CAFC are the ones that have made a mess of this.

  6. Profesor Joshua Sarnoff October 27, 2021 10:12 am

    A few quick points. First, although the title is alluring, there is no due process problem with courts failing to follow precedent properly or to adhere to their own rules. Rather, there is a failure of legal processes. This applies as much to the CAFC failing to follow its own rule that the earliest in time precedent controls in the event of a conflict as the PTO’s guidance that (prior to its later clarification that “recite doesn’t mean recite”) was clearly in conflict with Alice and Bilski, as applying that requirement would have held the claims in those cases valid, when the Court held them invalid as “directed to” an abstract idea.
    Second, your Rule number 4 simply is not borne out by precedent. You may want that to be the role of Section 101, but as currently interpreted by the AUTHORITATIVE interpreter (SCOTUS), 101 prevents claims that add nothing of creative technological advance to mere application of an ineligible discovery (which is another way of saying that claims that add no inventive concept to mere application of such ineligible discoveries are not eligible subject matter). Whether SCOTUS has not actually specified what makes for an inventive concept, and has improvidently repeated Benson’s dicta while not applying it to reach decisions, is another matter.
    Third, your rule number 5 fails to address the point (repeated in dicta by SCOTUS and applied in practice by SCOTUS and many panels of the CAFC but not consistently – per one above) that the search for an inventive concept assumes that the ineligible discovery is treated “as if” prior art against the applicant. Hence, one can answer what an inventive concept is by asking what is the creative technological advance reflected by (not recited in) the claimed invention once one knows of the ineligible discovery and its properties. Absent such a creative advance, there is no eligible “invention” to be claimed.
    Finally, you may not like the law as so stated. But the right thing to do is then to seek legislation to overturn the AUTHORITATIVE interpretation of the current law, Or to pack the Supreme Court to get a decision that overturns that authoritative interpretation. But simply complaining about the state of the law without identifying what is actually wrong with it won’t lead to any change, and is of course deceptively descriptively wrong. That said, if you have any suggestions for getting the CAFC to follow their own precedents and for SCOTUS to acknowledge what are otherwise implied repeals (Flook by Diehr, Diehr by Bilski, Mayo, and Alice) that would actually be helpful.

  7. Pro Say October 27, 2021 10:48 am

    “Alice-Mayo, as is practiced by the USPTO and the Federal Circuit, is an exercise in capriciousness as well as a rote, near cliché babbling of meaningless words that falsely portend to be a cognizable standard of patent eligibility.”

    Bingo.

  8. Anon October 27, 2021 11:22 am

    what do you suggest, going forwards, as a workable test of patent-eligibility that The Congress might deliver?

    How about: “we really meant what we said in 1952, so Supreme Court, you are hereby banished from re-writing our laws, and we are using our Constitutional authority for jurisdiction stripping of the non-original jurisdiction of hearing patent cases.”

    (I am quite certain that you have seen this before)

    As to your penchant for GATT-TRIPS, let me remind you yet again, that our Sovereign has chosen differently.

    Do you know how rude it is for you to purposefully post with such disregard of our Sovereign’s choices?

  9. B October 27, 2021 11:42 am

    @ Professor Sarnoff “A few quick points. First, although the title is alluring, there is no due process problem with courts failing to follow precedent properly or to adhere to their own rules.”

    Respectfully, that’s an amazing theory, but I would counter by stating: (1) it’s not about the CAFC’s mere failure to follow Supreme Court precedent but the form of the CAFC’s Alice-Mayo test. Capricious is capricious. (2) The CAFC has no rules or limiting principles re Alice.

    Judge Giles Rich wrote extensively on the capricious veto the courts wrote in to the patent law from the bench pre-1952.

    “Second, your Rule number 4 simply is not borne out by precedent.”

    I directly quoted Alice Corp. We can respectfully disagree, but I humbly submit that Alice Corp. is precedent.

    “Finally, you may not like the law as so stated. But the right thing to do is then to seek legislation to overturn the AUTHORITATIVE interpretation of the current law”

    Interpretation? Have you read Alice Corp? They don’t assert any “interpretation,” but created an exception to the statutory language.

    That said, I would greatly appreciate your learned views on any interpretation of the term “inventive concept” that is both not capricious and that follows the statutory scheme of the Patent Law as written.

  10. B October 27, 2021 12:03 pm

    @ Profesor Joshua Sarnoff “That said, if you have any suggestions for getting the CAFC to follow their own precedents and for SCOTUS to acknowledge what are otherwise implied repeals (Flook by Diehr, Diehr by Bilski, Mayo, and Alice) that would actually be helpful.”

    I’ve often encouraged the CAFC to actually read Diehr, Bilski, and Alice, both in my writings and in oral argument. I’ve specifically pointed out how Benson and Flook don’t survive Diehr, Bilski, and Alice Corp. One Judge (who shall go nameless but who wrote the In re Villena decision) was shocked when I (correctly) stated that Bilski and Alice Corp. were evidence-based decisions.

    Think carefully on that

    Also, I was once asked by another CAFC Judge (who shall go unnamed but who wrote the Enfish decision) “Can you name a single case where the Federal Circuit has held a claim patent-eligible that did nothing more than receive data, process data, and display data?”

    Think carefully on that as well.

    Professor Sarnoff, there is no spoon

  11. Profesor Joshua Sarnoff October 27, 2021 12:10 pm

    Anon: Not just the Supreme Court. I would recommend reading Jeffrey Lefstin’s Inventive Application, which notes the ambiguous legislative history and the courts of appeals continuing to apply inventive application to eligibility after the 1950s Act (including Application of Ducci, where PJ Federico – who knew as much as Judge Rich but was more honest – argued that Section 100(b) did not authorize all new uses, but only non-analogous new uses and was intended to restore the Ansonia Brass standard). So what you are saying is we should credit your view of the legislative intent and history and subsequent interpretation, and reject all other views. Enough said.
    B, I agree that the CAFC has not been clear in its articulation of the standard, in large part because it doesn’t like what the Supreme Court has said (even those judges who follow SCT precedent have said in American Axle they wished it was different). And see above regarding interpretation, rather than legislative language. You are (like Anon) imposing a textualist not an intentionalist interpretation. The courts rejected that decades ago (including shortly after the 1952 Act). Yes we can argue which is the proper method of interpretation. But it remains interpretation, and textualist interpretation is contrary to the precedents. See, e.g., Flook – expressly rejecting that “process” means all processes understood the broadest sense of the term.

  12. B October 27, 2021 2:03 pm

    @ Prof. Sarnoff “So what you are saying is we should credit
    your view of the legislative intent and history and subsequent
    interpretation, and reject all other views.”

    Respectfully, you might ACTUALLY read what I ACTUALLY write, rather than put words in my mouth.

    Where exactly did I mention legislative intent?

    Oh, I didn’t.

    I do recommend interpreting statutory language based on statutory language. I’m also a big proponent of all things non-capricious.

    Speaking of capricious, I’m still waiting on that definition of “inventive concept.” Take your time.

    Finally, I suggest that you actually read Flook before commenting. Flook’s definition of “process” is derived from Benson, and the Benson holding was based on the USPTO’s inability to search emerging technologies – specifically computer-based technologies. Benson was also based on Le Roy v. Tatham, which is one of many pre-1952 holdings that Rich, Frederico, and others expressly wrote the 1952 patent act to dispel. Now I may be wrong, but I’m pretty sure the Tatham case (1852) did not have computers in mind.

    Also explain how Benson and Flook survive Diehr, Bilski, and Alice Corp.

    Still further, how are the claims of Enfish possibly patent-eligible if Benson and Flook are still good law?

  13. B October 27, 2021 2:32 pm

    @ Prof. Sarnoff

    I wish to retract part of what I immediately posed above. Obviously, you were implying I’m a textualist and not interested in legislative intent, and to the extent I misinterpret – I apologize.

    With that in mind, Bilski and Alice Corp do not rely on Flook or Benson or any narrow interpretation of the word “process.” Alice-Mayo is not about whether computer software is a process under s100. Alice and Bilski never say business methods do not qualify as processes under s100.

  14. concerned October 27, 2021 3:31 pm

    I had my fill of “intentionalist” views. My attorneys have destroyed the USPTO and PTAB’s on-going rejections, so a new rejection is simply inserted here, there and everywhere.

    The only “intentionalist” I see in my patent prosecution is reject the application at all costs, and do not not address or acknowledge evidence submitted into the official record under any circumstances, it destroys their rejection narrative.

    The PTAB even wrote my process met the everyday terms of the law, but not the legal interpretation of judges. What dictionary does Congress use?

    Regardless of what view a person wants to use, it is suspicious when rejections keep changing, evidence is not recognized or acknowledged, and words are added to law with no definition.

    To me, a lay person, that is not due process but a predetermined outcome. Rule of law deserves better.

  15. Anon October 27, 2021 3:51 pm

    Prof. Sarnoff,

    Just because you say “interpretation” does not make it so (under textualist OR intentionalist standards).

    Common Law law writing can be distinguished between ACTUAL law writing and interpretation. Patent law is one area of law explicitly reserved to a particular branch of government which makes the law writing version of Common law ultra vires.

  16. Anon October 27, 2021 4:02 pm

    B,

    Would a claim such as:

    1. A device for producing error checking based on original data provided in blocks with each block having plural bits in a particular ordered sequence, comprising:
    a generating device configured to generate check data; and
    a varying device configured to vary original data prior to supplying said original data to the generating device as varied data;
    wherein said varying device includes a permutating device configured to perform a permutation of bit position relative to said particular ordered sequence for at least some of the bits in each of said blocks making up said original data without reordering any blocks of original data.

    fit your ““Can you name a single case where the Federal Circuit has held a claim patent-eligible that did nothing more than receive data, process data, and display data?”

    (granted, the ‘just display’ aspect is not quite reached)

    Mind you – this comes from a CAFC precedential case.

  17. B October 27, 2021 5:31 pm

    @ Anon – I’m familiar with KPN – but that case had not then published.

    However, a more tech-savvy attorney might have argued that that claim preempts standard packet-based transmissions having CRC checksums while changing endian formatting – something I was doing 30+ year ago in another lifetime.

    I honestly believe someone should have consulted an engineer who owned a few Proakis books and was familiar with block ECC. https://www.goodreads.com/author/list/109191.John_G_Proakis

    KPN is a garbage decision even if the right outcome was reached

  18. jacek October 27, 2021 9:56 pm

    Is word lack of professionalism adequate
    or should we use Disregard to the law?

    It is politics and entitlement rather than a law-based attitude.

    Lawyers above the laws.

    Like the EU TSUE court issuing “decisions” in areas they have no legal jurisdictions like the Poland “rule of law.” The campaign was started by former communist/today opposition and their leftist EU alliance to force out the current Polish government since the opponent can not win elections.
    Similar to the Supreme Court Usurping powers they do not have.
    Would you agree with a foreign court instructing the US judiciary to disregard the US constitution or laws? The plan is to create havoc.
    Today they started a legal case against Germany over an alleged breach of “the principle of the primacy of EU law” by its constitutional court.
    They have eight EU governments to sue for the same “violations.”
    In the US is to force Big money agenda.
    Fifth Column is here and there.

  19. Anon October 28, 2021 9:46 am

    I hear you B, but the adage of Ends and Means comes into play with KPN, and the legal machinery of that decision (focus on 101) is what is to be leverage, as opposed to HOW that patent could have been attacked (through prior art).

    Your question (to which I offered the case) was explicitly about eligibility. The case provides one answer to your explicit question.

  20. Anon October 28, 2021 9:48 am

    Sorry jacek, I am having difficulty what exactly you are addressing.

  21. B October 28, 2021 12:45 pm

    @ Anon “I hear you B, but the adage of Ends and Means comes into p . . . ”

    You misunderstand. I fully agree with you. My point comes in that most litigators are as technically ignorant as the judges that make decisions over the technology.

    Think a bunch of blind men arguing the virtues (or lack thereof) of a Jackson Pollock while a another blind man determines whether it is art.

  22. MaxDrei October 28, 2021 4:45 pm

    anon, I too struggle to follow along with Jacek but I know in general what is upsetting him. The supreme court in Poland (an EU Member State) has in the last few days handed down a Decision that it, and not the Court of Justice of the European Union, as a matter of general principle, has the last word when it comes to the Rule of Law in Poland. All three branches of the EU (legislative, executive, judicial) deplore the Decision. It seems that Jacek is a supporter of Poland’s ruling PiS Party, which is busy clearing out from the ranks of judges any which are brave enough to decline to follow the PiS Party line.

    Jacek will no doubt rely on the recent Decision of Germany’s Constitutional Court, in which it found that the European Central Bank had instituted a specific financial measure beyond its competence. I don’t know about Jacek, or you, but for me a decision limited to a specific financial measure while accepting the principle of the CJEU having the last word is not exactly the same as a Decision that the supreme court in Poland, as a matter of constitutional fact, outranks the CJEU.

    Perhaps one can compare it with State and Federal courts in the USA?

    Poland gets more EU funds than any other EU Member State. Only a few head-bangers in Poland advocate leaving the EU. The UK over the last few years has been widely derided, during BREXIT, for wanting to have its cake and eat it too, but PiS in Poland take the biscuit as cake-ists operating at an even higher level of chutzpah.

  23. Jacek October 28, 2021 6:03 pm

    Do you imagine in Germany today courts staffed today by Judges ruling in Nazi Germany?
    It is precisely what is going on in Poland with former members of the Communist Party still on the Benches.
    Because of widespread corruption and lack of accountability, some reforms are long past due.
    One of them is a judge presiding over a court trying to jail me at the time for running an independent publishing company. Hardly a crime. It is hard for me to be sympathetic for the plight of such judges.
    One of the reasons I have the luck to become a US-based inventor.
    Early retirement or accountability is not a punishment.
    When it comes to the EU TSUE court, they are involved in matters they have NO Jurisdiction.
    They have limited rights but only in matters allowed by the EU joining agreements.
    The whole thing is political.
    I do not care if the current Polish Government is Left or Right. They are elected.
    The most important is what they do in the name of their constituents. And this is something you never learn reading Guardian or other English publications.
    They are omitting and manipulating facts better than Russian “PRAVDA”
    Use your second language (or even Google translate) to have some access to other sources of information.

    What I am trying to say. Some individuals, when given some power, know No Limits. When we add the psychological aspect of dealing with people with money and influence and inclination to adore people better off, especially visible in the US mixed with the ability to make decisions about affairs of others, the outcome is not impressive. Adding to the picture skewed political beliefs, we have a continuous disaster, like the consistently anti-patent approach of the Supreme Court.

    It is hard to believe that supposedly intelligent people consistently rule against the best long-term interest of themselves/ Their country.

    For example:
    https://www.washingtontimes.com/news/2021/jul/27/supreme-court-gives-china-a-technology-innovation-/

    Whatever we say here, there will be little change in the US internal politics or US patent policy unless we eliminate Big money Influence. Supreme Court judges are not Idiots. They know what they DO.

  24. Profesor Joshua Sarnoff October 28, 2021 6:45 pm

    B: Two quick rebuttals to some of the points that you made (particularly since you suggested that I read the opinions – which of course I have done for years, and carefully).

    You stated “The underlying principle of Alice Corp. is to prevent preemption of an abstract idea, i.e., “not inhibit further discovery by improperly tying up the future use of” the fundamental building blocks of human ingenuity.” Yes, Alice did say that. But Alice also stated (drawing from Flook) that ‘we set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. Id., at ––––, 132 S.Ct., at 1296–1297. If so, we then ask, “[w]hat else is there in the claims before us?” Id., at ––––, 132 S.Ct., at 1297. To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. Id., at ––––, 132 S.Ct., at 1298, 1297. We have described step two of this analysis as a search for an “ ‘inventive concept’ ”—i.e., an element or combination of elements *218 that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” It is that purpose – preventing claiming of applications that amount to nothing “significanlty more” than a claim to the unapplied ineligible discovery that is (at least also) the “underlying principle” of Alice (interpreting Section 101). And that clearly is inconsistent with Diehr, which Alice then impliedly overturned (and not because the Court was not construing the “claim as a whole” – see Flook (“Our approach to respondent’s application is, however, not at all inconsistent with the view that a patent claim must be considered as a whole. Respondent’s process is unpatentable under § 101, not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains **2528 no patentable invention.”). You may wish to deny that that is what the Court held, or that that should be the role of Sections 102 or 103, but that is what the Court in fact held. (And note that ineligible NOVEL discoveries are not treated “as if” prior art under Section 102, hence considered as a whole, where the ineligible discovery itself provides all the creativity in the novel application, it would still contain no patentable invention but would pass Section 102 and 103 filters.)

    Second, as Flook stated, “The plain language of § 101 does not answer the question. It is true, as respondent argues, that his method is a “process” in the ordinary sense of the word.9 But that was also true of the algorithm, which described a method for converting binary-coded decimal numerals into pure binary numerals, *589 that was involved in Gottschalk v. Benson. The holding that the discovery of that method could not be patented as a “process” forecloses a purely literal reading of § 101.” So yes, in fact Flook interpreted Section 101’s “process” language as limited. That it relied upon Benson in deciding that a non-literal interpretation of the term “process” in Section 101 was the correct INTERPRETATION of that term in no way makes it any less a “holding” in Flook. Again, you may wish to argue that a textualist interpretaton should have been adopted. But your view was expressly rejected by the AUTHORITATIVE interpreter of hte law (unless and until it changes that interpretation).

  25. Anon October 29, 2021 9:57 am

    Prof. Sarnoff – you are confusing several different concepts and mis-portraying them as Court holdings.

    For example, the Court has been adamant that not only was Diehr NOT overruled (implicitly or otherwise), but that it was the case most on point in Mayo.

    The bottom line is that the Supreme Court has rendered a Gordian Knot and the case law has NOT retracted anything, but instead has insisted on keeping all the ‘rope’ in that big knotted ball.

    Further, you appear to be in the camp that places the Supreme Court ABOVE the Constitution – which is a foundational flaw that permeates your “since you suggested that I read the opinions – which of course I have done for years, and carefully” – reading in the view of reinforcing a fallacious view only results in your more pronounced confirmation bias.

  26. Model 101 October 29, 2021 10:25 am

    B –

    “You misunderstand. I fully agree with you. My point comes in that most litigators are as technically ignorant as the judges that make decisions over the technology.

    Think a bunch of blind men arguing the virtues (or lack thereof) of a Jackson Pollock while a another blind man determines whether it is art.”

    Tell it like it is!!!!!

    Both funny and not funny at the same time.

    I attended the Senate Hearings on patent eligibility in 2019 and Prof Sarnoff spewed his big tech payed for nonsense there too.

    Get over yourself Josh – the thing is unconstitutional, not in 282, and mere big tech bull. The meaning of 101 was changed by the exceptions.

  27. concerned October 29, 2021 11:07 am

    I would like to know the learned Professor Sarnoff’s opinion whether hard evidence within the official record that destroys the USPTO and PTAB’s rejection narrative can be completely ignored and never addressed. A simply yes or no would suffice.

    And still awaiting a potential definition of inventive concept as requested by Mr. Mathis.

    As an inventor who has been the subject of both of the above issues, I would like to know the professor’s thoughts especially since you seem to think there are no due process issues.

    Model 101’s response above gave me plenty of insight as how one could possibly defend or suggest such positions.

  28. Profesor Joshua Sarnoff October 29, 2021 11:41 am

    Concerned: The one-word answer to your question is “No.” More specifically and with a few more words, the PTO examiners have a legal obligation (imposed by the Administrative Procedure Act, APA, not by “due process”) to respond to evidence in the record that provides sufficient legal grounds to overcome a rejection. Failing to do so violates the APA, as arbitrary and capricious government action that can be overturned by a court under Section 706(2)(A). But again, the failure of government officials to properly consider and apply evidence is not technically a “due process” violation.
    More generally still, people (including others on this thread) need to distinguish betwen “lack of fairness” and lack of “due process,” and need to state the actual legal basis for a legal claim of lack of due process. Similarly, they need to state the actual basis for appealing an improper PTO rejection. Of course, it is expensive and time consuming to appeal. But if people don’t exercise their rights, they tend to go away…
    You asked for the definition of an “inventive concept”? What does “nonobvious mean”? No one knows and the statute does not define it. Nor did the Court define an inventive concept in a way that will avoid case-by-case determinations. But the Court could have at least said what the nature of an inventive concept is, so that case-by-case determinations are informed by the purpose of the inquiry (and therefore so that such determinations would not be so wildly inconsistent and unexplained). I would say that an “inventive concept” is the creative advance _reflected_ by the claim that the claim implies is what makes the invention both inventive and novel. (And it derives from an interpretation of both “invents or discovers” and of “new” in Seciton 101, as those terms were interpreted over two centuries.) If that creative idea is, e.g., aesthetic (see CJ Archer’s Alappat dissent), it is the wrong kind of “concept” – not an “inventive” one for utility patent purposes. If the creativity of that concept is not sufficient IN LIGHT OF ANY INELIGIBLE SUBJECT MATTER BEING APPLIED by the claim, it also is insufficient for eligiblity and the claim is not treated as an eligible “invention,” even if the claim falls into one of the statutory categories. That is why Section 102 and 103 can’t do the work of Section 101 (at least as currently enacted); Section 102 does not define newly discovered natural processes, natural products, and abstract ideas as prior art in order to determine whether the inventive concept of the applicant is (as Alice recites) “something more” than just the application of the novel but ineligible discovery. (Note that the Court should have said “something sufficiently more.”) And the reason that the sufficiency of the creativity OF the application of an ineligible discovery by the claimed invention must be evaluated in light of the ineligible discovery is precisely to prevent the claim from effectively (albeit not in the entirety of all possible applications) laying claim to that ineligible discovery itself. The statute does not define how much creativity is required. Nor does it define how much creativity is required for an invention to be “non-obvious”. So unless Congress or the Court actually provide a time, money, and effort threshold of sufficient creativity, we are left with judicial decisions applying that standard without adequate guidance.
    Hopefully you will find this responsive. I’ll stop posting to this thread, except to note in response to B that people can read the cases for themselves and decide who has the better of the description of what the cases say and hold, and whether the Court’s interpretations are good or bad interpretations – or not interpretations at all.

  29. B October 29, 2021 1:36 pm

    @ Prof Sarnoff “Yes, Alice did say that . . . First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts”

    Thanks – you just confirmed my Rule #4 assertion – then you appear to act as if the literal text of 101 has anything to do with the exceptions of 101 of Alice-Mayo.

    “You asked for the definition of an “inventive concept”? What does “nonobvious mean”? No one knows and the statute does not define it.”

    There a ton of law on the issue about non-obviousness – starting with Hotchkiss v Greenwood (1850), and well developed post 1952. Is 103 perfect – no – but don’t pretend that that 103 is without bounds – especially in a forum populated by patent attorneys.

    Where is the law defining the bounds of invention / inventive concept post 1952 outside Graham v. Deere?

    ” I would say that an “inventive concept” is the creative advance _reflected_ by the claim that the claim implies is what makes the invention both inventive and novel.”

    “Novel,” fine, but isn’t that handled in 35 U.S.C. s102? It’s been several days since I read s102, but I’m pretty sure s102 addresses novelty.

    As to “inventive,” could you be any more circular? It’s an “inventive concept” because its “inventive?” Seriously?

    Thank you, Prof. Sarnoff. I deeply respect your lofty position in the legal industry and education, but you reaffirm what I already knew – “inventive concept” is circular garbage with no real meaning.

    ” “something more” than just the application of the novel but ineligible discovery.”

    More circularity. It’s ineligible because it doesn’t meet the standard of “something more”

    Again, Prof. Sarnoff – I want to thank you. I don’t think you’re anything but a good person and a very smart person, but the reality is that you lack the practical knowledge of those in the USPTO trenches to realize just how capricious the Alice-Mayo test is.

    Also – you wouldn’t remember, but I met you briefly at the Patent Eligibility Senate hearings a few years ago. Good times!

  30. B October 29, 2021 1:51 pm

    @ Model 101 “Both funny and not funny at the same time.”

    Thank you. Occasionally I come up with a pertinent metaphor. I plan on using it in an upcoming Reply Brief.

    “I attended the Senate Hearings on patent eligibility in 2019 and Prof Sarnoff spewed his big tech payed for nonsense there too.”

    Then we likely met. Were you there all days or just some days?

    Personally, my fav testimony was by the lovely and well-spoken Shetty Knowles.

  31. concerned October 29, 2021 1:57 pm

    Professor Sarnoff:

    Actually I have good reason to believe your responses are appreciated. Please continue to posted as you feel necessary.

    Thank you for commenting.

  32. Profesor Joshua Sarnoff October 29, 2021 2:22 pm

    PS – since it was repeated that “”I attended the Senate Hearings on patent eligibility in 2019 and Prof Sarnoff spewed his big tech payed for nonsense there too.”” I will just state that I have been paid nothing (nada, zip, zero) by any tech company for testimony on or analysis of 101 issues at any point. I’d be wealthier if I had been.

  33. J. Doerre October 29, 2021 3:00 pm

    Quote: “And the reason that the sufficiency of the creativity OF the application of an ineligible discovery by the claimed invention must be evaluated in light of the ineligible discovery is precisely to prevent the claim from effectively (albeit not in the entirety of all possible applications) laying claim to that ineligible discovery itself. The statute does not define how much creativity is required. Nor does it define how much creativity is required for an invention to be ‘non-obvious’.”

    Well said!

    Would you agree that the Court in Flook confirmed that the levels of required creativity are equivalent when it indicated that “Respondent’s process is unpatentable under § 101, not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention”? Parker v. Flook, 437 U.S. 584, 594 (1978). The Court’s reference to an assumption that the algorithm is in the prior appears to be indicating that the more familiar analysis for invention, i.e. nonobviousness, is to be performed based on that assumption. See Dann v. Johnston, 425 U.S. 219, 225-226 (1976) (indicating with respect to “a judicial test[ of] ‘invention’ — i.e., ‘an exercise of the inventive faculty,’” that “Congress… articulated th[is] requirement in a statute, framing it as a requirement of ‘nonobviousness.’”)

    Indeed, the Court elaborated that “[e]ven though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented.” Flook, 437 U.S. at 594. It would be odd indeed if an application of a prior art phenomenon of nature could be deemed nonobvious under 103, but still fail to represent an “inventive application” for purposes of 101.

  34. Night Writer October 29, 2021 6:18 pm

    Frankly, @32 Prof. Sarnoff, anyone that thinks that Alice is remotely OK in any sense is way off base.
    >>If the creativity of that concept is not sufficient IN LIGHT OF ANY INELIGIBLE SUBJECT MATTER BEING APPLIED by the claim, it also is insufficient for eligiblity and the claim is not treated as an eligible “invention,” even if the claim falls into one of the statutory categories. That is why Section 102 and 103 can’t do the work of Section 101 …

    This is just sheer nonsense. You know the problem with responding to nonsense like this is that you have this symbol system set up where you control the meaning of the symbols and there is no connection with reality.

    I can tell you don’t understand information processing. I am a computer scientist and a patent attorney (and inventor before becoming an attorney.)

    1) Abstraction in patent law before the Scotus in Alice meant something like build a machine that operates faster and has fewer parts. That would be something abstract as there is no discussion on how to do this. No enablement. 112 took care of this word Abstraction and the Scotus took the word and assigned a different meaning.

    2) The claims in Alice do disclose a set of solutions—FACT–for a person skilled in the art.

    3) The Scotus language in Alice that inventions of these types may tend to not promote innovation is clearly not sufficient as the grounds for Alice for many reasons.

    Etc. I honestly don’t feel like making this argument here in the comments.

    I would challenge you Professor Sarnoff to give us a set of claims that have been rejected under 101 that couldn’t be rejected under 102/103.

    I would further challenge you to take several computer science classes in hardware, software, and theory.

    I suppose I should write another paper about this. You could map the symbols used by the Professor to illustrate how it is a self-referential system with no tie to reality.

  35. MaxDrei October 30, 2021 4:35 am

    I read Prof. Sarnoff at #28 with deep disappointment. B thinks that the way the courts in the USA think about an “inventive concept” is garbage and I wonder whether Prof.Sarnoff’s musings on the subject are constrained by the requirement to be consistent with what the courts have so far decreed.

    My regret is that the EPO approach to the issue “what is an inventive concept” is not understood within the USA. I suspect yet another instance of the “Not Invented Here” willful blindness.

    For me, what is patentable is set by international agreement, in GATT-TRIPS. It is available in “all fields of technology” but no wider than that.

    For me, obviousness is a TSM enquiry. An “inventive concept” is (or should be) a concept i) defined by a claim ii) in terms of technical features iii) that solves an objective technical problem (OTP) iv) for a notional person of ordinary skill in the art v) inventively (in that there was no hint or suggestion anywhere in the prior art to solve the OTP with the claimed feature combination.

    Fair, efficient and rational examination of eligibility/patentability follows.

  36. concerned October 30, 2021 5:29 am

    Professor Sarnoff:

    It does not take much to realize patent prosecutions are capricious. I have only one patent application and the capricious handling of it is obvious to me, a lay person.

    I had two USPTO examiners. The first one finally admits the application has patentability in the phone interview, but the higher ups are blocking it. Mysteriously I get a second examiner.

    The USPTO and PTAB have been changing rejection reasons left and right as their rejections based on undefined words engrafted on the statute just cannot hold up. And the USPTO and PTAB have never touched the evidence, a inconvenient problem when they try to reconcile their rejections.

    Berkheimer has been repeatedly raised and the PTAB states we do not understand the holding of Berkheimer, no explanation given.

    The USPTO examiner #2 admits the process solved a long standing business problem. The PTAB admits the process has benefits and it meets the everyday definition of the statute as stated, but not the legal interpretation by judges and the MPEP. Of course, no explanations or MPEP references were given.

    Pretty capricious: Added words, undefined words, changing rejections, evidence tossed, silent explanations, etc. I call all of this a lack of due process although you seem to have a different term.

    You may have realized that B is my CAFC attorney. B reminds me of myself in my career days when I administered an entire chapter of the revised code. I had attorneys across the state seeking counsel and acting on it, even though I had no law degree. It was my life and I accumulated a wealth of knowledge over the career. I would have been embarrassed if I conducted myself in a fashion I see my patent application prosecuted.

    In my career I had the largest cash settlement in my State’s history via the Attorney General ‘s Office, yet I was their client, not their attorney. It was in settlement discussions and forwarded to the AGO to be finalized officially. I used the same approach that B employs, keep hitting them with the law over and over, a time honored approach that should eventually wins out.

    B’s knowledge is unbelievable and I think his CAFC brief is outstanding. This article is based on the same. Part 2 of the article is forthcoming.

  37. Anon November 1, 2021 9:38 am

    Flook and the notion of a bit piece of a claim being in the prior art was superseded by Diehr.

    Yet again, pretending there is no Gordian Knot is PART of the problem.

  38. Anon November 1, 2021 9:43 am

    MaxDrei outdoes himself and should apply his own assertions to the very acts that he engages in.

    For me, what is patentable is set by international agreement, in GATT-TRIPS. It is available in “all fields of technology” but no wider than that.

    Absolutely not – and this has been explained to you in great detail many times. Treaties are simply not self-enacting in US law.

    The US Sovereign has chosen differently, and you continue to rudely ignore this point.

    The reason you do so? Try that very same “I suspect yet another instance of the “Not Invented Here” willful blindness.

    To correct your own assertion then, “My regret is that MaxDrei’s approach to the issue “what is an inventive concept within the USA” is not understood by MaxDrei.”

    No matter how many times his horses are lead to the well of wisdom.

  39. B November 1, 2021 11:43 am

    @ Jeremy Doerre “It would be odd indeed if an application of a prior art phenomenon of nature could be deemed nonobvious under 103, but still fail to represent an “inventive application” for purposes of 101.”

    Jer – as you know, I’ve argued that same thing at the CAFC and was completely ignored. Four separate limitations held unknown and non-obvious under 103 but . . .

    My latest go-round is to force the CAFC and SCOTUS to provide guidance. I need a single judge to expressly declare the “inventive concept” requirement as capricious.

    PS: Thank you for the Dann v. Johnston citation

    @ MaxDrei “B thinks that the way the courts in the USA think about an “inventive concept” is garbage and I wonder whether Prof.Sarnoff’s musings on the subject are constrained by the requirement to be consistent with what the courts have so far decreed.”

    Most respectfully, the courts have not been the least bit consistent. What the CAFC decrees one day they contradict the next. Name a case – I name another that contradicts it

    BTW, the term “inventive concept” doesn’t seem to be used at the EPO. “Invention” is, and in the framework of non–obviousness as you suggest. Canada does use the term “inventive concept” – also in the framework of non-obviousness.

    “Fair, efficient and rational examination of eligibility/patentability follows.”

    Alice-Mayo isn’t about fair or rational. That said, s101 as written works just fine for “fair, efficient and rational examination of eligibility”

  40. B November 1, 2021 12:02 pm

    @ Night Writer “I would further challenge you to take several computer science classes in hardware, software, and theory.”

    What surprises me are the black-robed boneheads that believe that a claim that accomplishes an algorithm using analog electronics or even discrete logic is patent eligible whereas if the solution uses a computer and s/w it is not.

    S/W and H/W started overlapping in the 1980s with programmable logic. Now one can write code in “C” (or some other language) where after it can be compiled and then fitted into a programmable logic chip. I did this using Altera (now Intel) and Xilinx in the 1990s.

  41. Greg DeLassus November 1, 2021 1:03 pm

    [W]hat is patentable is set by international agreement, in GATT-TRIPS. It is available in “all fields of technology” but no wider than that.

    TRIPS most certainly does not require “no wider than that.” By its own terms, TRIPS provides (Part I, Art. 1, §1) that “[m]embers may, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement… .”

  42. Night Writer November 2, 2021 6:04 am

    @40 B

    Yes that is part of it the equivalence of hardware/software and the Church/Turing Thesis. But I think my other points capture the entire problem. And not that people like Profe[s]sor Joshua Sarnoff never respond to these points because they can’t.

    They are like the new left where they just take these assumptions as “truths” that can’t be questioned. Real debate is gone and it is outrageous that people like Profes[s]or Joshua Sarnoff spout this nonsense.

  43. concerned November 2, 2021 7:32 am

    Night Writer @34:

    “I suppose I should write another paper about this. You could map the symbols used by the Professor to illustrate how it is a self-referential system with no tie to reality.”

    What may be helpful is a reference table of how many CAFC decisions directly contradict each other or contradict SCOTUS decisions. The table revealing side by side court case cites that are contradictory.

    Perhaps this website could keep a running list for contributing input and visual review. It would document Anon’s Gordian Knot and demonstrate that patent decisions are not set by a legal standard but by a personal bias of cherry picking the desired cases. Any predetermined decision can be reached.

    Confronted by such an overwhelming list of documented contradictions, perhaps SCOTUS or Congress would be forced to address the mess.

  44. Profesor Joshua Sarnoff November 2, 2021 9:17 am

    @B “@ Jeremy Doerre [hi Jeremy] “It would be odd indeed if an application of a prior art phenomenon of nature could be deemed nonobvious under 103, but still fail to represent an “inventive application” for purposes of 101.”
    But because any novel but ineligible discovery as such is not prior art under 102, there are any number of things that will pass 103 but not be an inventive application under 101 (viewed in light of that discovery, which is treated “as if” prior art but only under 101, not 102). You don’t seem to want to engage that point, but that is in fact the law as currently interpreted by SCOTUS and explains the results in Bilski, Mayo, and Alice (and most, but not all CAFC decisions post-Bilski; I agree that the CAFC acts inconsistently, even though their own case law requires them to apply the first-in-time precedent that is not overturned en banc in case of a conflict, which by their rule should not occur but obviously does routinely).

    @Anon, I quoted the language of Flook that said its decision was not based on dissecting and ignoring claim elements. You seem to want to ignore that fact. Diehr impliedly overruled Flook, but Bilski, Mayo, Alice impliedly overruled Diehr. Note that the “abstract idea” described by SCOTUS in Bilski and Alice was nowhere recited in the claim, so these decisions do not depend on a “bit piece” being ignored. Hence, to the extent that Diehr overrurled Flook, B&A overruled Diehr (and Diehr also reiterated the same point as Flook that the failure of the claim as a whole to do more in its application than merely apply an ineligible discovery to a particular field of use was not sufficient, so Diehr did not overrule Flook on that particular issue).

    @NightWriter (and @B), rather than engage in ad hominem attacks, I would suggest that you actually understand what I am saying. Nothing I have said is inconsistent with Church/Turing. The same abstract idea can be applied by software or hardware and be just as non-inventive IN LIGHT OF THE UNDERLYING, INELIGIBLE CONCEPT BEING APPLIED. Like the others, you don’t like that result so instead you either try to mischaracterize what I said or to argue (wrongly) that what I said is inconsistent with something when it is not, or just to attack me as ignorant or stupid. Perhaps you could just say that you prefer a different approach, which is likely true and certainly more polite. And you might also then try to get that view enacted into legislation or to convince SCOTUS to change to that view (but you will likely be unsuccessful in your efforts because too many others prefer the law as it is).

    @Greg DeLassus I would also note that TRIPS does not define “invention” and clearly does not prohibit exclusions such as excluding business method claims – else the US was not in compliance when it negotiated and adopted the TRIPS Agreement as that treaty preceded both Alappat and State Street Bank. There is tremendous divergence among countries on this issue, and even if somehow the US were to be out-of-compliance with TRIPS that would just subject the US to a potential trade dispute but would not alter US law. So let’s not make arguments that are unjustifiable (not that you were doing so here). The current law is fully TRIPS compliant. And that is one reason (but only one) why there has not been any WTO challenge to the US law of eligibility – just as there has not been any WTO challenge to any other country’s law of eligibility.

    @all Absent something more than ad hominem attacks, I’m done responding (again, but I thought these particular mischaracterizations and ad hominem attacks warranted a response).

  45. Jonathan R Stroud November 2, 2021 11:39 am

    I’m not wading into this (and my views on 101 are public, long, and clear), but “blame the Supreme Court” isn’t exactly a helpful position to take.

  46. Night Writer November 2, 2021 12:52 pm

    @44 Profesor Joshua Sarnoff
    >”The same abstract idea can be applied by software or hardware and be just as non-inventive IN LIGHT OF THE UNDERLYING, INELIGIBLE CONCEPT BEING APPLIED”

    Professor, I directly challenged what you said.

    2) The claims in Alice do disclose a set of solutions—FACT–for a person skilled in the art.

    OK? Get it Professor? You deflected and claimed all sorts of things. But I directly challenged what you said and you did not respond. I also pointed out what the meaning of abstract was before Alice.

    Again, get it? To a person of ordinary skill in the art, the claims in Alice define a set of solutions. This is how people skilled in the art work. I can cite books used at MIT that say exactly this.

    Please try to address my challenge to your statement.

  47. B November 2, 2021 1:48 pm

    @ Mssr Stroud” I’m not wading . . . but “blame the Supreme Court” isn’t exactly a helpful position to take.”

    You correct. The Supreme Court had nothing to do with Alice-Mayo

  48. Anon November 2, 2021 1:58 pm

    but “blame the Supreme Court” isn’t exactly a helpful position to take.

    I could not disagree more.

    Take another look at your state attorney oath, Mr. Stroud. If you want to divulge which state you have sworn into, I can help you.

    NOT taking to task a Supreme Court that acts in violation of the separation of powers (among several Constitutional issues with the current eligibility jurisprudence — which I have in the past laid out in extensive detail), is something that we are just not free (ethically) to ignore.

    Prof. Sarnoff – you have yet again missed the point, and I have already rebutted your assertion of “impliedly overruled,” given that the Justices were EXPLICIT that they were not doing so.

    Think: Gordian Knot.

  49. B November 2, 2021 3:12 pm

    @ Prof Sarnoff “Diehr impliedly overruled Flook, but Bilski, Mayo,
    Alice impliedly overruled Diehr.”

    Please – what point(s) of law in Diehr is/are overruled by the holding of Bilski, Mayo, and/or Alice?

    Be specific.

    Are we allowed to ignore the claims as a whole ordered combination thing? Software and computers don’t make a patent claim ineligible?

    Let us patent plebes know

  50. Night Writer November 2, 2021 4:03 pm

    >> IN LIGHT OF THE UNDERLYING, INELIGIBLE CONCEPT BEING APPLIED”

    This is just strangeness too. The claims define a set of solutions and there is a claim that this is really to an “ineligible concept being applied.” What in the world does that mean?

    One skilled in the art can define the solutions and build a machine and understands exactly the boundaries of the claims. But there is a contention that there is this “ineligible concept being applied” with no definition of what that is and the ability of the judge to just pull an “ineligible concept being applied” out of thin air.

    Etc.

  51. B November 2, 2021 4:35 pm

    @ Night Writer “Real debate is gone and it is outrageous that people like Profes[s]or Joshua Sarnoff spout this nonsense.”

    Night – the whole purpose of this article – and of this series of articles – is to challenge my blind spots just as much as the blind spots of others. Granted, in my opinion, the good Profesor Sarnoff appears to have a number of blind spots, but he’s not alone. There are a lot of people who agree with him.

    I want to understand his perspective because it’s the same perspective of the majority of CAFC judges. I mock judges. It’s a thing I do. However, the primary purpose of my years of mockery was to get these same judges to up their game.

    It failed, obviously. Instead, the slippery slope of patent eligibility nonsense has evolved into a capricious judicial veto with no limiting principles. Judge Rich saw this same thing happen in the 1940s with “invention” as the capricious benchmark. Now with the new and improved benchmark of “inventive concept” the same thing happened again.

    We may see Profesor Sarnoff’s “inventive concept” is something that is “novel and inventive” standard as circular and non-informative, but you know who doesn’t? Most of the CAFC judges. We need to understand this phenomenon. Hence, I would ask that we address our online opponents with careful questions and humor.

    Good and intelligent people make mistakes. Let’s turn them into our allies with careful persuasion rather than inflame their prejudices.

  52. Night Writer November 2, 2021 5:45 pm

    @51 B

    The other thing is —quite frankly — that just as J. Rich said it did not appear that people were trying to have a fair argument regarding this subject, I no longer believe people like the good Professor believe they are right.

    What they have is a position that they defend by making absurd statements, committing logic fallacies, and deflecting.

    I’ve spent almost 20 years arguing these issues and I have found that most of the people on the other side of this issue have no interest in applying the law but in reducing the patent right.

  53. Lab Jedor November 2, 2021 5:48 pm

    @44 “The same abstract idea can be applied by software or hardware.”

    What does that mean? Software or hardware “applying an abstract idea?” I read the text. I understand the individual words. But in combination these words are empirically unverifiable and, according to scientific sceptics (like myself), should be branded as scientific nonsense.

    As a computer programmer and hardware designer I know that a computer only executes physical instructions, never an abstract idea. Yes, you have to look into the circuits perhaps to make sense of it, but that is what science and technology is all about. The abstract idea is in the human mind, not in the computer.

    But that doesn’t mean that when I make a machine do what was an idea in my mind is now applying an abstract idea? Is it? It is like saying that a projectile that follows a trajectory described by a differential equation is an abstract idea.

    The above has been stated (in different forms) many times before. It won’t change anyone’s opinion. However seeing a sentence like “The same abstract idea can be applied by software or hardware.” requires at least some response in a setting that supposedly is science and technology oriented.

  54. B November 2, 2021 6:22 pm

    @ Night “What they have is a position that they defend by making absurd statements, committing logic fallacies, and deflecting.”

    Yes, and it is frustrating. I for one am 100% for pointing out the fallacies of the pro-Alice crowd, but when possible the gentle hand of logic backed by fact is preferable.

    That said, logic and facts are failed tactics at the CAFC re Alice. Why? Appellate judges can’t be compelled to comply with due process.

    @ Lab Jedor “As a computer programmer and hardware designer I know that a computer only executes physical instructions, never an abstract idea.”

    Clap . . . Clap . . . Clap (golf clap)

    A portion of the CAFC believes computers are not part of the “physical realm.”

    “It is like saying that a projectile that follows a trajectory described by a differential equation is an abstract idea.”

    You are closer to the truth than you realize.

    I am not joking

  55. B November 2, 2021 6:46 pm

    @ Prof Sarnoff “IN LIGHT OF THE UNDERLYING, INELIGIBLE CONCEPT BEING APPLIED”

    I think what Night respectfully conveyed – and I agree – is that there are no apparent limiting principles defining “ineligible concept.”

    Most respectfully, could you please explain how, in the absence of evidence, one determines whether a man-made thing that is novel, non-obvious, and complies with s101 embodies an “ineligible concept”

  56. concerned November 3, 2021 8:33 am

    My patent application would be approved by SCOTUS standards even though that court conflated the statutory text ( SCOTUS made evidenced based decisions and abstract ideas are patentable if result is new and useful.)

    Then CAFC conflates the SCOTUS decisions, and USPTO conflates even further.

    It is amazing that anyone would come on this website and defend the current patent prosecutions as having a legal standard.

    The only standard I see is take an opinion and defend it at all costs, even if that same opinion would not be applied in other aspects of their life.

  57. Anon November 3, 2021 10:25 am

    B,

    Under other circumstances, I may well agree with your statement of, “Good and intelligent people make mistakes. Let’s turn them into our allies with careful persuasion rather than inflame their prejudices.

    Blog exchanges (especially given the typical respondents) OFTEN do not fall into that category.

    With these types, I will allow myself a bit more fun and employ the John Maynard Keynes treatment.

    Conversing with you, I tend to use that treatment far less often (even raising to the level that the unthinking have accused me and you of being the same person).

    With that in mind then, I do try to point out what I see as blind spots, but you really have been through the meat grinder (personally) here, so you are aware of many more things than those who might disagree with you can even begin to fathom.

    You may simply need to consider that the embrace of Efficient Infringer viewpoints IS purposeful.

    And good luck on getting people to engage once you reach a point at which their ‘prize views’ are placed in the cross-hairs. I could not get the late Ned Heller to even go there.

  58. Profesor Joshua Sarnoff November 3, 2021 10:29 am

    @B “Most respectfully, could you please explain how, in the absence of evidence, one determines whether a man-made thing that is novel, non-obvious, and complies with s101 embodies an “ineligible concept””

    Let me explain using a simple example, which you may then understand. Before Galileo, people threw sticks. Galileo through careful experimentation found out about parabolic arcs and motion through them. If Galileo had claimed intentionally (not unintentionally) throwing a stick in a parabolic arc, which activity was new and non-obvious prior to his discovery of such arcs, then it would pass 102 and 103, and of course throwing sticks is a physical and man-made activity. But the only novelty reflected in the claim is the parabolic arc discovery, which is a natural principle and thus is not patent eligible. So there is no inventive concept beyond merely applying that discovery to a particular field of use or adding “insignificant post-solution activity” to quote Diehr (not just Flook). Of course, we can argue about whether adding stick throwing to the parabolic arc discovery is sufficiently creative that it should count as an “inventive concept,” just like we can argue about whether any claim where all of the elements and the concept being applied are in the prior art and the question is whether the combination is obvious. The difference, I repeat since the point seems not to have been understood by you before, is that parabolic arcs were not in the prior art prior to Galileo’s (here the hypothetical applicant’s) discovery. So here such stick throwing will appear both novel and nonobvious as a combination, and even the combination _with_ the ineligible subject matter expressly recited in (not just reflected by) the claim would be a novel combination if the discovery of parabolic arcs had been in the prior art. But the claim to intentionally throwing a stick in a parabolic arc just does not reflect any inventive concept (significant creativity) beyond the mere application of the ineligible subject matter discovery of parabolic arcs; once you know that things travel in such arcs when thrown, what else would you do with it? Now consider discovery of cell free fetal DNA. Once you know it exists, it is not creative to look at it to determine birth defects. A great but ineligible discovery; the claim to using it to determine birth defects adds no (or at least insufficient to be treated as an eligible invention) creativity.

    Again, I’m done. But it would be much better if you did not accuse people of not understanding what you said or of illogic, when what is accurate is that they simply disagree with your analysis. Obviously, you seem to think that by “yelling” insults at others on line you will somehow convince them or yet others that you are correct. Or perhaps you just like yelling. I’ve said enough to fully explain what you apparently just don’t like to acknowledge (or perhaps just don’t understand). If you can be polite, I may even respond again the future. Absent that, I’m done.

  59. concerned November 3, 2021 12:46 pm

    Anon @57: You are another one I would have loved to handle my CAFC appeal. As you know, I am very fortunate to have “B”, he is brilliant like you.

    Professor @58: Suppose the claimed process identified birth defects and reversed the birth defect to produce a health baby, patentable? It seems like an obvious “yes” however, not at the USPTO and PTAB. My process identifies and corrects errors of professionals, a process never achieved before. Prior art allows the error to continue, possibly never corrected, at great financial loss to numerous parties.

    Your thoughts please?

  60. Profesor Joshua Sarnoff November 3, 2021 1:24 pm

    @Concerned #59 (and thank you for being polite). Let’s assume that that process of identification was based on the difficult and creative discovery of a novel methylation group in a particular part of the chromosomes and that the process of reversal is to remove the methyl group. The discovery of the methyl group should not be patentable because it is just a discovery of a natural phenomenon (or “science”), which should be free for all to use. (Yes, many people believe that we should have patents on discoveries of nature or science, but that is not the law and never has been; it also was rejected – for good reason – in the 1930s.) Let’s further assume that demethylation is routine for chromosomes, but it just hadn’t been applied to this particular methyl group. The process claimed as the invention is then an uncreative application of that difficult to make and creative scentific discovery – of course anyone knowing of that discovery would then use it to prevent birth defects by doing routine demethylation (just like using the cffDNA to detect birth defects, once cffDNA was discovered – and why would adding “then choose either to abort the fetus or treat the defect” make any difference to the eligibility?). A patent on that obvious, uncreative (in light of the discovery) application then is effectively a patent on the scientific discovery itself, just limited to one particular application (field of use or “insignificant post-solution activity”; and there are probably few or no other fields of use of that discovery of chromosomal methylation that anyone would care about). In contrast, if demethylation (once one knew of the methylation) required sufficient creativity in how to achieve it, then the claim to the process of “identify and remedy” (or “detect and treat”) might be an eligible process in light of the ineligible discovery. Hopefully that makes clear to you what is at issue, and why “reasonable” (and logical) people will disagree over what is the right approach to eligibility.

    The real question is whether to reward the scientific discovery by a patent claiming an uncreative application in light of that ineligible discovery. That is what we are really arguing about. And of course, there are many other ways to incentivize and to reward scientific discoveries than by granting patents on those types of uncreative (but highly useful) applications of those discoveries. Or we could just grant patents on novel scientific discoveries themselves (which then requires a license of any and all applications thereof), and avoid any of this line drawing (but then have more difficult questions of novelty given that the scientific discoveries may already exist in the form claimed). Let’s at least focus on what the dispute is really about – whether to incentivize and reward scientific discovery by tax dollars or by market payments from businesses and (largely passed on to) consumers. So really the dispute is about cross-subsidization of different kinds, and about views of the proper role of government and scientists in scientific discovery.

  61. Night Writer November 3, 2021 2:10 pm

    @58

    1) The throwing stick example does not work because there is no new structure. A stick throw would already be throw in a “parabolic arc”, which is merely a description of the path a stick takes when it is thrown. So your example 1 is a 102. And there is lots of case law on this.

    2) You second example of the fetal blood is a good example. The fact is that every invention has some new underlying principle behind it. Sometimes it can be articulated and sometimes it can’t. The structure is test a mother’s blood for fetal blood and so forth. That is novel and non-obvious structure if the person did not know that fetal blood was in the mother’s blood. So what you are doing is separating the invention out into steps and saying, gee, you knew that fetal blood was in the mother’s blood–you discovered this–and then your invention is nothing more than an obvious application of your invention. Again, the problem with this is that this is true of all inventions but often it is just difficult to articulate what the new principle discovered is. Even the design of a novel non-obvious chair is based on a new principle as is a new carburetor, battery, molecule, and so forth.

  62. B November 3, 2021 2:47 pm

    @ Prof Sarnoff “Let me explain using a simple example, which you may then understand. Before Galileo, people threw sticks. . . . .”

    You’re doing a law of nature, Prof. I’m not arguing the law of nature thing for a reason. Also, because people threw sticks before Galileo, your fictitious patent claim would have been anticipated whether or not anyone knew what a parabola was.

    I specifically stated, “could you please explain how, in the absence of evidence, one determines whether a man-made thing that is novel, non-obvious, and complies with s101 embodies an ‘ineligible concept’”

    That said, if Galileo had claimed an improved aiming device and method for aiming a cross-bolt based on his discovery of parabolic arcs, would that be patent eligible under Alice Corp.?

    How about a vibration-dampening device in an automobile shaft based on Hooke’s Law?

  63. B November 3, 2021 2:55 pm

    @ Anon “And good luck on getting people to engage once you reach a point at which their ‘prize views’ are placed in the cross-hairs.”

    I’ve not been able to get a single judge or justice to define the term “inventive concept” for years now, and I’ve gone from polite question to outrageous mocking.

    There’s a point that our new friend, Lab Jedor, raises – there’s a reason that the most cringe-worthy decisions in patent law come from minds having no technical training or the foggiest idea how toasters work.

  64. Profesor Joshua Sarnoff November 3, 2021 3:31 pm

    @61 and 62. Fine to amend my example of throwing stick. Assume brass candlelabras are relatively novel (but not invented by Gallileo) so no one has thrown them before. Galileo now claims the method of throwing a brass candleabra in a parabolic arc. Novel because no one has done so before and no one knew that throwing a candlelabra would in a parabolic arc. Same issue of lack of inventive creativity in applying parabolic discovery to throwing the candleabra, but novel and unobvious (relative to the pre-discovery of parabolic arcs). But you did make my case for why claiming a natural phenomenon as such would run into novelty problems.
    And no, I’m not “separating out” the invention, but only explaining what the creative novelty of that claimed invention is based on (precisely what Flook, Bilski, Mayo, and Alice require). If it were based on a musical discovery, as in claiming a piano roll configured to play a particular musical tune, that would not make it an eligible invention even though man-made and even though it had to be converted into physically readable form. But as CJ Archer’s Alappat dissent made clear, that kind of discovery should not make the claimed structure (a “manufacture”) an eligible invention.
    And in response to B, if the discovery of the parabolic arc made it uncreative to apply that discovery to aiming devices on cross-bolts or methods of aiming them (neither of which occur in nature, nor does “throwing” a stick if the thrower is a human not another animal), then no the claim would not be eligible under Alice. Again, you may disagree whether we should reward the discovery of the parabolic arc by permitting patents on such uncreative applications of otherwise ineligible discoveries, but that has been the law since O’Reilly (which departed from Le Roy v. Tatham one year earlier, and O’Reilly likely misunderstood Nielson v. Harford, which in any event was British law — see Leftsin’s Inventive Application article again — but that is how the patent law has operated for 170 years in this country; SCOTUS decides what the legislation means). So now you have a definition of inventive concept (explained earlier, albeit a vague one as I have not defined “sufficiently creative” any more than Congress or the Courts have defined “non-obvious”). Again, you may not like the definition, but it is perfectly coherent and logical. I too would have hoped that the courts would articulate a clearer understanding; and I have tried to get them to do so by filing amicus briefs explaining these things to them, but apparently to no avail either.

  65. B November 3, 2021 3:54 pm

    @ Prof Sarnoff “Again, I’m done. But it would be much better if you did not accuse people of not understanding what you said or of illogic, when what is accurate is that they simply disagree with your analysis.”

    Prof – you just addressed a question that I never asked

    “Obviously, you seem to think that by “yelling” insults at others on line you will somehow convince them or yet others that you are correct. Or perhaps you just like yelling. . . . .”

    What insults do you refer to. Be specific?

    As to “yelling,” was I pounding on the keyboard too hard? Abusive CAPS LOCK issue?

    “I’ve said enough to fully explain what you apparently just don’t like to acknowledge . . . ”

    Respectfully, while your explanation was detailed – it didn’t touch on what i actually asked.

  66. concerned November 3, 2021 4:00 pm

    Professor @60:

    Thank you for your reply. Suppose scientists knew all those reasons for years but did not know how to separate out the bad stuff causing the birth defects..patentable if someone invents the winning approach?

    On my process, everyone has known since day one (1956) of the problem, no solution until I came up with a radical approach. And it was not an occurrence of nature, but a made made solution.

    Your thoughts once again on both scenarios please.

  67. B November 3, 2021 4:45 pm

    @ Prof Sarnoff “Now consider discovery of cell free fetal DNA. Once you know it exists, it is not creative to look at it to determine birth defects. A great but ineligible discovery; the claim to using it to determine birth defects adds no (or at least insufficient to be treated as an eligible invention) creativity.”

    This is practically Mayo, which could have been addressed under 103 and should have given the “wherein” statements weren’t steps.

    but your statement “the claim to using it to determine birth defects adds no . . . creativity” is based on what?

    Evidence maybe?

    Seems like one would need to know about DNA, that birth defects could be related to DNA, that blood cells were cells that carry DNA, that fetal blood cells could possibly be harvested in utero without killing the baby, and that DNA could be sequenced to determine if a defect from human norms was present.

    Personally, because I am not a doctor and I don’t know much about the life sciences, I don’t pretend to know what is creative in the life sciences.

    I’d rather first listen to a few life science experts than merely trust some hack with a BA in art history who happened to get a law degree and managed a political appointment. To some people this may seem radical, but I learned as a 1L that lawyers aren’t generally adept at math and other sciences.

  68. Anon November 3, 2021 6:27 pm

    but I learned as a 1L that lawyers aren’t generally adept at math and other sciences.

    It’s even worse than that.

    Most 1Ls that may continue on to be attorneys (let alone non-true-patent attorneys, by which I mean registered with the USPTO, trained, and practiced in the field, and NOT litigators who may litigate patent cases) come from a cloistered Liberal Arts background (aiming in undergraduate to have higher GPAs), and suffer tremendously from a lack of critical thinking ability, and instead (and I certainly blame Academia for this), have fallen to the lack of meritocracy in our higher education system, through which system advancement is predicated on how well one repeats back the mantra and dogma of the “established ruling class.”

    Some of the most ILLOGICAL people I know are attorneys.

    Smart as all-get (typically in a book sense), and often with more than a hint of Type-A psychopathic tendencies, but clear, objective, and analytic (in an engineering sense capability, and an ability to push back against dogma? No.

  69. B November 3, 2021 6:33 pm

    @ prof Sarnoff “Assume brass candlelabras are relatively novel (but not invented by Gallileo) so no one has thrown them before. Galileo now claims the method of throwing a brass candleabra in a parabolic arc. Novel because no one has done so before and no one knew that throwing a candlelabra would in a parabolic arc. Same issue of lack of inventive creativity in applying parabolic discovery to throwing the candleabra, but novel and unobvious (relative to the pre-discovery of parabolic arcs). But you did make my case for why claiming a natural phenomenon as such would run into novelty problems.”

    Congratulations – you made it past 102, but please remember that the hurdle was both 102 and 103 given both are part of the patent law with 103 being the standard of creativity.

    Are you seriously suggesting that throwing a candleabra would not be held obvious under s103 by any examiner in any art unit in the U.S., and if so – what is your rationale????

    Personally, I suspect that the first throwing of a candleabra occurred by the inventor’s wife at the inventor within days of manufacture.

    “And in response to B, if the discovery of the parabolic arc made it uncreative to apply that discovery to aiming devices on cross-bolts or methods of aiming them (neither of which occur in nature, nor does “throwing” a stick if the thrower is a human not another animal), then no the claim would not be eligible under Alice.”

    Respectfully, that is the most profound and useless statement you may make today, but it is incredibly revealing.

    How exactly does one determine “if the discovery of the parabolic arc made it uncreative . . . ?”

    What is the standard of “creativity.” Non-obviousness or inventive concept?

    Would evidence be necessary in a 16th century tribunal, or would an offended noble or priest just determine the issue and possibly hang Galileo based on said noble’s / priest’s innate knowledge of science?

    What evidence would be required today at the USPTO?

    Your entire scenario has issues, and your definitions remain circular.

    Also – O’Reilly is an issue addressed under 112(a) written description. The people who originally claimed it’s a 101 issue obviously never read the O’Reilly holding. Also, Le Roy v. Tatham was: (1) an evidence-based decision, and (2) overruled by the 1952 patent act – specifically, definitions set forth in s 100.

    The one thing you did say of great interest: “a definition of inventive concept (explained earlier, albeit a vague
    one as I have not defined “sufficiently creative” any more than
    Congress or the Courts have defined “non-obvious”). Again, you may not like the definition, but it is perfectly coherent and logical.”

    Respectfully, there is no meaningful definition of “invention” / “inventive concept.” How do I know? The Supreme Court said so multiple times, and the chickens in the CAFC refuse to even attempt a definition. Also, “invention” was originally defined in Hotchkiss as non-obviousness.

    More importantly, however, non-obviousness is defined as something from the perspective of one of ordinary skill, which we both know is very evidence intensive.

    My point is that, just as much as non-obviousness is an intense issue of fact, so must be “inventive concept.” I refuse to accept that a bunch of technically-ignorant monkeys can make a determination of what invention / inventive concept must be because they passed a bar exam.

    You’re going to hate Part 2, Profesor

  70. Profesor Joshua Sarnoff November 3, 2021 8:18 pm

    @66 Concerned:
    “Suppose scientists knew all those reasons for years but did not know how to separate out the bad stuff causing the birth defects..patentable if someone invents the winning approach?” Yes eligible IF the winning approach is a sufficiently creative method (in light of any underlying scientific discoveries).

    “On my process, everyone has known since day one (1956) of the problem, no solution until I came up with a radical approach. And it was not an occurrence of nature, but a made made solution.” Same answer. Note that if a natural discovery were made one day before your solution that then made the solution uncreative in ilight of that discovery, then not eligible even if it took a long time. Simultaneous invention in light of exogenous changes to knowledge often happens, so what was nonobvious at one time becomes obvious at a later time.

    @67 B “This is practically Mayo, which could have been addressed under 103 and should have given the “wherein” statements weren’t steps. but your statement “the claim to using it to determine birth defects adds no . . . creativity” is based on what? Evidence maybe?” What you seem to be missing is that once the ineligible discovery of the correlation in Mayo was made, then using it in a method of treatment claim (although the Court somehow called it a diagnosis claim) to treat the condition that the correlation related to was trivial and uncreative (even though highly useful – because knowing the correlation itself was highly useful). And note that that ineligible discovery (the correlation, or cffDNA in Ariosia) was not Section 102 prior art as to the applicant, because the applicant was the discoverer of the ineligible subject matter, and once the discovery is known how would anyone not think to use it to assess birth defects (hence my claim that application in light of the discovery was not sufficiently creative). The claim would have appeared nonobvious relative to the Section 102-defined prior art for Section 103 analysis, but was uncreative for Section 101 analysis. The evidence is the holdings in the case. If you have evidence that the claims in Mayo or Ariosa were sufficiently creative (in light of the discovery) to warrant being treated as an “invention” for Section 101, then please do provide that evidence.

  71. concerned November 4, 2021 6:10 am

    Professor @70.

    Thank you again. It seems you would give me the patent and you believe in evidence as part of the evaluation based on a prior statement. There is no natural discovery that would render my process as obvious, it escaped so many college educated people for years. Totally man made process.

    There is some funny business going on with my patent application. One former legislator suggested that it was possible that someone in a position of government authority called the USPTO behind the scene and said do not approve my application.

    In addition, and if true, there is enough inconsistencies and undefined words in the patent environment to give me the “business” for a long time hoping I just go away. The USPTO keeps changing the rejection reasons, maybe we will get through them all.

    With reference to patents or government sponsored efforts. No way I get my effort off the ground due to build out costs and the political arena without some legal protection.

  72. Night Writer November 4, 2021 8:45 am

    @70 Prof

    Looks like you gave up on your stick/other object example. B is right that you just moved it to a 103. You are right, though, that in evaluating the claims under 103 the court looks at what is known so, if a “parabolic arc” is already known then it is relevant to 103.

    And that brings us to Alice. The hedging technique was known so it was relevant to a 103 determination. But the claims in Alice were not abstract. The claims in Alice–and please tell me if you agree with this–defined a set of solutions to a person skilled in the art. This is a fact. I am a person skilled in the art in computer science and I have had finance classes at the graduate level. That is an actual operating computer that performed the information processing to perform the hedging. So how does one go from an actual machine to ineligibility for being “abstract”?

    You see the problem? The court is picking apart the claims and claiming there is an “ineligible concept” within the claims. In practice what the DCs, CAFC, and USPTO do is fabricate some abstract statement that repeats the claims and then claim this is an “ineligible concept” (when, in fact, it is a claim to a set of machines or set of methods).

    As a side note professor, I suggest you reread O’Reilly in view of scope of enablement (which is the only workable way to define a claims scope and it explains why the claims in O’Reilly were invalid).

    As another side note professor, if you want to understand patent attorneys like me and others on this blog, then understand how we do our work. I’ve written many hundreds of patents and done litigation. I’ve written hundreds of claim charts. I have attended two of the top 5 engineering schools in the USA and have a graduate degree in engineering.

    I know how to write claims and analyze an invention. What we do is claim the STRUCTURE of what the invention is. The structure. We all start by thinking about the structure of what is claimed. Your method of thinking is to take some concept and then try to think how someone advanced that concept, which is inherently faulty and has been identified for centuries as an impossible way to understand inventions. Why? It is called hindsight reasoning. And you could walk over the psychology department and ask a professor or two to help you understand the research on hindsight reasoning. There are lots and lots of experiments that prove that it is impossible for a human to learn a fact and then unlearn the fact. What you do is construct the invention based on knowing the invention.

    And guess what? I was an inventor too. And I worked as a product manager and built real consumer products that sold 10’s of millions of copies. I learned in competing with the top corporations in the world that improvements to the products seemed so obvious after their products had come out but that our research teams simply didn’t think of them. But in hindsight, oh boy, were they obvious.

    As an example, the top corporations in the world all thought that adding a camera to a phone was a dumb idea in the 1990s? That is true and I talked to the top people at those corporations and their researchers. Now in hindsight that seems ridiculous.

    Anyway….maybe some humble pie and try to understand what we are saying…

  73. Night Writer November 4, 2021 9:02 am

    One other comment about this and then I think I am done here.

    The technical problem/solution approach at the EPO is different than Alice. But Alice is really trying to use this approach but where rather than agree on a technical problem being solved, a judge manufactures an abstract idea (ineligible) and then whacks through the claims like a weed eater.

    I would also point out that people constantly point to the EPO as having better a better system than we do when nothing could be further from the truth. The EPO system is based on being second where they let the USA invent and then they define the categories that are eligible based on their policies, market size, and markets their companies are in. Their system is a complete mess that I have dealt with for 20 years.

    And I’d point out that people are so proud of the EPO system but they have a software industry that is 10% of the USA’s. Think about that.

    There is lots of evidence of the destruction of Alice as has been posted on this blog.

  74. Dozens November 4, 2021 10:25 am

    The EPO system is based on being second where they let the USA invent and then they define the categories that are eligible based on their policies, market size, and markets their companies are in.

    This is not kind, but it is probably more true than most of our EP colleagues would care to admit. There are several industries that would—in all likelihood—not change one iota if European countries repealed their patent laws. I doubt that there are any industries of any meaningful size where one could say the same of the U.S.

  75. Profesor Joshua Sarnoff November 4, 2021 11:03 am

    @70 Night Writer
    I have been a patent attorney (with a registration number) for three decades. I redesigned AIPLA’s patent prosecution training. I have written extensively about all sorts of patent doctrines and the introduction for judges on claim construction in the IPLAC annual Federal Circuit book (along with another litigator). I have been an expert witness on claiming and infringement issues. I have many close friends who are prosecutors with whom I discuss all sorts of issues about how they work. I have a BS degree in biochemistry from MIT and am a published author in PNAS. So when you say the following, you should understand just how ad hominem and insulting such a comment is (like similar comments made by B): “if you want to understand patent attorneys like me and others on this blog, then understand how we do our work. I’ve written many hundreds of patents and done litigation. I’ve written hundreds of claim charts. I have attended two of the top 5 engineering schools in the USA and have a graduate degree in engineering.” An apology would be in order.

    And no, I did not abandon my stick example, as my hypothetical assumed “intentionally” throwing the stick, which is not really different from B’s example of an improved aiming device (which also calculates based on parabolic arc distance). But since that would have resulted in arguing about whether a mental state requirement should be given patentable weight, although there is no doubt it would have been novel until the discvoery of the parabolic arc, I decided to change the hypothetical to throwing a novel candelabra to avoid that dispute. When I did, B then argued that throwing in the arc would be held obvious under 103 even without regard to the discovery of the parabolic arc being treated as prior art. At that point, there was no value to arguing the hypothetical to demonstrate why it would be considered not eligible with regard to the discovery but nonobvious without regard to the discovery. So I focused on the cffDNA example, which B seemed to understand the point of. So when you say “maybe some humble pie and try to understand what we are saying,” you might consider that I actually understand precisely what you are saying, but simply disagree with it and am not persuaded at all by your comments – much less by your hostility and insults (yes, saying that someone lacks the proper education and experience when they actually have it and saying they don’t understand when in fact they do but disagree is an insult). I’m now done regardless of what anyone says on this thread. Thankfully, I know many patent prosecutors and litigators and inventors who are polite and who actually understand the arguments that they may disagree with, so I will not attribute such contrary characteristics to all persons in these professions.

  76. B November 4, 2021 12:58 pm

    @ Prof Sarnoff “What you seem to be missing is that once the ineligible discovery of the correlation in Mayo was made, then using it in a method of treatment claim (although the Court somehow called it a diagnosis claim) to treat the condition that the correlation related to was trivial and uncreative (even though highly useful – because knowing the correlation itself was highly useful).

    Respectfully, Professor – you JUST MADE MY POINT. Outside judges at the CAFC, people just don’t “know” things. Evidence is necessary to come to a conclusion of a lack of creativity no matter what that standard of creativity is.

    Also, no one knows what “inventive concept” means in the courts. They only think they do b/c ignorance is bliss.

    You’re going to hate part 2

    @ Anon “. . . Liberal Arts background (aiming in undergraduate to have higher GPAs), and suffer tremendously from a lack of critical thinking ability.”

    A very well-known patent attorney (who shall remain nameless) said this same thing to me during a J Giles moot court in front of another well-known patent attorney.

    You’re going to like part 2

  77. B November 4, 2021 1:04 pm

    @ Prof Sarnoff “When I did, B then argued that throwing in the arc would be held obvious under 103 even without regard to the discovery of the parabolic arc being treated as prior art.”

    What I actually argued is that throwing a candelabra is obvious. See KSR v. Teleflex and the doctrine of angry wives.

    As to the arc – that’s inherent

  78. Night Writer November 4, 2021 3:46 pm

    @75 Professor

    You seem to get offended easily and yet you talk down to us in your posts. You didn’t answer any of the questions asked of you regarding the ineligible “inventive concept”. In the blogsphere, being nonresponsive is not an option where you maintain respect.

    And, you think that a degree at MIT in some type of biochemistry qualifies you to understand information processing? No. Not even close.

    Anyway, I’ve spent many hours arguing these issues with many highly qualified people and I don’t see that you offer anything but the party line where you just become repetitive or non-responsive. And, then, finally, condescending along with bristling that you are offended.

  79. B November 4, 2021 5:22 pm

    @ Night Writer “You [Prof Sarnoff] didn’t answer any of the questions asked of you regarding the ineligible “inventive concept”.”

    Night, I actually think Prof. Sarnoff did answer, but his answer is the sort that is useless from a practical perspective. An “Inventive concept” is something “novel” and “inventive” – plus you don’t need a definition given “obviousness” isn’t defined.

    Prof. Sarnoff isn’t alone. We all know this. You need to read concerned’s PTAB rejection where that panel acknowledged that concerned’s use of the terms were those commonly used among the great unwashed, but then asserted that the terms at issue are defined differently in patent law – oddly without providing a definition or a citation to a definition.

    Now if you possessed the requisite sophistication and enlightenment (you don’t) and if you would just look long enough at a given claim, you’d reach an epiphany every single time and for any technology just as if Jesus Christ himself came down from Heaven and belt-slapped the shiznit out of you.

  80. Lab Jedor November 4, 2021 7:15 pm

    This is the way I see this discussion.

    1) F: Some inventions are abstract and are patent ineligible 2) R: Well most of these inventions are embodied in a physical apparatus and not abstract. 3) F: We do not mean really abstract, we mean “directed” to an abstract idea; 4) R: inventions always originate from an idea, which is abstract; 5) F: we mean there is lack of an “inventive concept”; 6) R: but you don’t define “inventive concept” 7) F: what we actually mean is lack of “creative novelty”; 8) R: but you don’t define “creative novelty”

    It becomes like a discussion of how many angels can dance on the point of a needle. Only experts in angels need apply.

    I understand that many people do not like computer implemented inventions. (and diagnostic inventions are scooped up in this antipathy). I am not sure why. But it is a fact of life. Unfortunately, people with no training in computer science and in the legal profession in decision or influence positions seem to be against patents for computer implemented inventions. Fine with me again. But I would like to know on what objective grounds these inventions are patent ineligible!

    You have to provide some verifiable reason why! Saying that it is like a pianola playing merely a different tune is not evidence based. Certainly, I would expect someone with an academic background and involved in IP matters to be able to know the difference between a programmable computer in the current economy and a pianola.

    So, in lieu of an explanation what directed to an abstract idea means and what makes certain type of inventions “more abstract” than others there is methodologically really no other way than to verifiably define what “inventive concept” is and why certain patent and patent applications lack this “inventive concept.” B has requested this verifiably, constantly, coherently, insistently, with arguments and throughout this discussion.

    The power to deny an inventor a valuable patent is an awesome power. It would reasonably require an explanation by those deniers with verifiable and contestable arguments.

    Not some reasoning that in mathematics is known as “handwaving.” Handwaving is fun, because you can prove almost anything by requesting an opponent to just accept this “little unproven assumption.”

    I understand that “directed to an abstract idea” comes from SCOTUS, not from commenters. But I would expect that exegesis of SCOTUS text would help us understand Alice and apply in a predictable manner. So far that has not happened.

  81. concerned November 5, 2021 6:51 am

    As much as the Professor defended the theory, he did not defend what is actually going on in the trenches.

    He acknowledged that areas needed better guidance, he stated evidence matters and the Professor indicated my process would be granted a patent @70.

    The purpose of this article seemed to occur. Flush out opinions and see if anyone can defend what is really going on in the patent world regardless of what theory is being embraced. I call it no due process, the Professor has a different term, however, the legal standard in practice is severely lacking. I was offended when the PTAB told me I.met the law as stated, but not their standard as judges. And there was no standard stated in the PTAB reply or MPEP reference, a prosecution process operating in darkness.

    Great article. Looking forward to Part #2.

  82. Bud Mathis November 5, 2021 1:06 pm

    @ Lab Jedor “I understand that many people do not like computer implemented inventions. (and diagnostic inventions are scooped up in this antipathy). I am not sure why”

    Some of it goes back to the 1960s in a case called Benson where the Supreme Court issue one of the most pathetically bad patent-related holdings ever.

    Modern times – it’s a big tech thing. Courts used to be the equalizer in the IP world. Now, they’re servants of Google et al. to keep the little guys in their place.

    “The power to deny an inventor a valuable patent is an awesome power. It would reasonably require an explanation by those deniers with verifiable and contestable arguments.”

    One would think so, and before Alice-Mayo that was the standard.

  83. Lab Jedor November 5, 2021 7:20 pm

    There is an interesting discussion between Justice White and attorney Stone in the oral arguments in Benson.

    Justice White asks: When a computer is programmed to give this answer (he refers to the claimed conversion) it isn’t the same machine as it is when it isn’t programmed.

    Attorney Stone’s response: It’s precisely the same machine Mr. Justice White.

    Justice White then cleverly asks: Why put in the instructions then?

    Stone then uses the rather idiotic comparison, with the pianola or player piano: “which is truly the same machine as it always executes the same instructions.” (yes, he really says that and gets away with it)

    In essence the argument against Benson is that a computer is for data-processing and data processing is basically for solving mathematical problems.

    That is how much Justices knew about computers then. It should be a warning for any Court. Do refrain from opining about matters you have no clue about! Stick to the evidence.

    The evidence was: The invention was (as admitted by all parties) novel and non-obvious and claim 8 in Benson (at least) requires a piece of equipment, a shift register (as admitted by all parties). It also allowed a computer to do what it never did before (as admitted by all parties).

    The claimed invention improved the functionality of the computer. There was really nothing else to consider. Btw, everyone agreed that the invention was based on a brilliant piece of thinking. So more than enough: “inventive concept” and/or “creative novelty”.

    It is fascinating reading and listening at:
    https://www.oyez.org/cases/1972/71-485

  84. Night Writer November 6, 2021 10:25 am

    @79 B

    He didn’t answer questions such as do you agree that the claims in Alice to a person skilled in the art define a set of solutions.

    I get how they think about these things. I’ve spent many hours with the person that wrote Benson that was adopted by the Scotus.

    I will say that people have as much admitted to me that they do not believe that Benson or Alice is anything but a means to eliminate patents they don’t think should have been issued. They admit that neither Benson nor Alice/Mayo are consistent with patent law or the Constitution.

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