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January 25, 2009

Intellectually Amish

Patent examiners are embracing §101 rejection for process claims, reinvigorated by Bilski. Oddly, the rejections often skirt citing Bilski directly, instead relying upon earlier precedent, such as Benson. The Bilski ruling favorably cited 1982 Abele for discrimination between overreaching claims and more "narrowly-claimed process patent-eligible." Abele provides an escape route from rejection, by analogy: data that represents "physical and tangible objects."

In its Bilski opinion, what the CAFC had to say about In re Abele, 684 F.2d 902 (CCPA 1982) -

The raw materials of many information-age processes, however, are electronic signals and electronically-manipulated data. And some so-called business methods, such as that claimed in the present case, involve the manipulation of even more abstract constructs such as legal obligations, organizational relationships, and business risks. Which, if any, of these processes qualify as a transformation or reduction of an article into a different state or thing constituting patent-eligible subject matter?

Our case law has taken a measured approach to this question, and we see no reason here to expand the boundaries of what constitutes patent-eligible transformations of articles.

Our predecessor court's mixed result in Abele illustrates this point. There, we held unpatentable a broad independent claim reciting a process of graphically displaying variances of data from average values. Abele, 684 F.2d at 909. That claim did not specify any particular type or nature of data; nor did it specify how or from where the data was obtained or what the data represented. Id.; see also In re Meyer, 688 F.2d 789, 792-93 (CCPA 1982) (process claim involving undefined "complex system" and indeterminate "factors" drawn from unspecified "testing" not patent-eligible). In contrast, we held one of Abele's dependent claims to be drawn to patent-eligible subject matter where it specified that "said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner." Abele, 684 F.2d at 908-09. This data clearly represented physical and tangible objects, namely the structure of bones, organs, and other body tissues. Thus, the transformation of that raw data into a particular visual depiction of a physical object on a display was sufficient to render that more narrowly-claimed process patent-eligible.

We further note for clarity that the electronic transformation of the data itself into a visual depiction in Abele was sufficient; the claim was not required to involve any transformation of the underlying physical object that the data represented. We believe this is faithful to the concern the Supreme Court articulated as the basis for the machine-or-transformation test, namely the prevention of pre-emption of fundamental principles. So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle.

Computer documents represent, and in fact produce, paper. The computer as electronic printing press. Image processing as digital film (or x-ray) developing. Databases as index cards for a library. Software tools as electronic versions of their physical cousins.

Of course, placing the cutting edge of patentability as reliant upon antecedent analogy is oxymoronic. Rejection of new technology unless it corresponds with old. Positively Amish. Welcome to American patent jurisprudence in the 21st century.

Posted by Patent Hawk at January 25, 2009 3:12 PM | § 101


At least here in TC2600, we have a specific form paragraph explicitly citing Bilski (and Benson among other SCOTUS decisions) that we're to use for Bilski type 101 rejections.

Problem is a lot of supervisors and even TQASs can't even agree on whether 101 is proper for a given claim.

Posted by: 2600examiner at January 25, 2009 10:27 PM

Patent Hawk,

The implied imagery is priceless: A district court judge, donned in his black robes and standing in front of the barn with pitchfork in one hand and Blackberry plus Bible in the other saying, "Gee, now I get it; a relational database is just like the index cards at the local library and just like the stones of the Ten Commandments!"

Yes, welcome indeed to the jurisprudential oxymorons of the 21st Century, where the latter will also be known as the Second Coming of the Dark Ages. Enlightenment was just a fleeting transient phase --like the signals of Nuitgen. It's time to return to our Puritanical roots and to banish all computer related inventions as well as the satanic abstractions that the computer's data clearly "represents".

I for one, sure am glad to be living in these interesting times.

Posted by: step back at January 26, 2009 1:58 AM

Posted by: step back at January 26, 2009 2:17 AM

step back,

thanks. you can even use your own moniker to apply to the situation (although I'm not sure that's the step back you want us to do).

We'll just have to leave enough breadcrumbs to find our way again, once the insanity subsides.

Posted by: breadcrumbs at January 26, 2009 5:32 AM

Let's give examiners and the courts the benefit of the doubt. Legislative and case law don't move as quickly as technology. Nowhere near as fast, in fact. (Most of the time that's a GOOD thing.)

We're in one of those periods now. Things are confusing. Decisions by examiners and courts are not always consistent. That's the penalty we pay for living in interesting times.

But I think we can help. We can draft claims better. We can frame arguments better. We can prosecute in ways that illuminate and define core issues instead of obscure and muddle them.

In Bilski citing in re Abele, it seems pretty clear that one essential criterion for successful claims is to avoid "pre-emption of fundamental principles". Claiming "visual X-rays" as a nice-to-have is verboten; claiming a specific machine that displays nice X-rays in a specific manner is OK even though the X-ray data are not "tangible". Of course, it gets muddier when you claim a tricky way to manipulate pixels so that you can display the nice X-ray faster than anyone else can.

But I suspect that good claim language could express that tricky manipulation in a patentable way without making the method sound like a "fundamental principle". We technologists know that efficient pixel manipulation is a "useful art" and not at all obvious to most practitioners. It is our obligation to effectively communicate this to examiners and courts!

In my example, to avoid the "fundamental principle" trap, the prosecutor would have to do more than simply prefix the claim with "A processor-based method in which..." Horror of horrors, the inventor would have to clearly express and the prosecuting counsel would have to clearly document the specificity and novelty of the invention. Boilerplate leads to bad claims.

So what's the real problem: Unpatentability? Or failure on the part of us inventors and prosecutors to frame claims as know we must? (And always had to, even in the 1800s.)

Posted by: Carl Strathmeyer at January 26, 2009 8:13 AM

Here ya go, patenting the training of Fido with a "stern facial expression":


Do we really want to have our patent Examiners looking for published prior art on intimidating dog looks? As if no one else in the history of the world was smart enough to figure out how to train a dog... (my brother anticipated claim 1 with his dog... known by everyone in my family... ooh, look at claim 20, giving the dog a reward).

Patent applications like this just add fuel to the anti-patent fire. (And I might add, with very good reason, from my perspective.)

Posted by: NIPRA anonymous at January 26, 2009 10:18 AM

Carl, Carl,

Usually I like what you write.

But if you step back and reconsider what you are proposing now, it could just as easily have started this way: "Let's give slave owners and the Dread Scott court the benefit of the doubt. ..."

Now I'm not trying to equate examiners with slave mentality or the Bilski majority with that in Dred Scott, mind you. But I am concerned that you so easily fall prey to neuro-manipulation phrases like "fundamental principles".

There is no such thing as "fundamental principles". The Bilski majority made it up, probably with purpose of engaging in evasion and avoidance of clear thinking. I'm not willing to forgive them or give them benefit of the doubt.

Too often people in government convince themselves that they are right simply because they are on the government side. (I govern, therefore I am --right.) Accused felons deserve benefit of reasonable doubt because the combined resources of government are being brought to bear against them. Government officials, on the other hand, deserve the exact opposite: continuing and unrelenting questioning and doubt.

Not only should you question the contrived "fundamental principles" of Bilski, but also the nonsense of "natural phenomenon" and "laws of nature" in Benson. Everything is a "natural phenomenon". When you mix chemicals and they react, that is a "natural phenomenon". The "natural phenomenon" line is shear retro grade nonsense. So is "Laws of Nature". Mother Nature does not come down from the mountain top to announce her "laws" to us. We make all that stuff up. E=mc^2 is our abstract idea of how we think Mother Nature operates. We could be wrong. It's just our made up story (our current theory). Maybe it's E=mc^1.99 or some other model instead. But the point is that there are no "Laws of Nature". And there are no "fundamental principles".

Of course you can't expect judges to understand science (except for Judge Newman) and there lies our biggest problem. In these troubled times; just when we need clear scientific thinkers, we get the exact opposite: principled fundamentalists. Sheesh. /rant

Posted by: step back at January 26, 2009 12:33 PM

No argument with any of that.

My point is simply that judges can only adjudicate what is brought before them, and they rely on the parties and their counsel to identify and clarify the issues the court is asked to consider.

So all I am suggesting is that if we all did a better job of drafting claims, and a better job of stating our positions during litigation, then examiners and judges would have a better chance of doing a better job too.

In other words, if we're so smart, we should be helping the other parts of the patent system get smart too. And I think we do that through case law, not through blog rants.

(Not that I'm accusing Hawk of a blog rant here. He makes a living these days doing exactly what I am advocating. He is a strong advocate of taking the time and care to write self-evident claims and of crafting specifications that read like technology tutorials.)

Posted by: Carl Strathmeyer at January 26, 2009 1:04 PM

Preemption of fundamental principles was from Benson. Bilski had to discuss this because the Bilski decision also took the "physical transformation" from Benson, and how can you accept as applicable the one without at least discussing the other? After all, Benson was a very badly-written and badly-reasoned decision, that even admitted the patentability of software was "a policy matter to which we are not competent to speak." I don't think there is any question that if it were to be decided today, the outcome of Benson would have been different.

Step back, you're right about the term, "fundamental principles." Its as squishy a term as "abstract idea" or "tangible and concrete." I don't know what any of these terms mean. That is one reason I actually believe Bilski improved the certainty in distinguishing patentable methods from unpatentable methods (the chorus to the contrary notwithstanding -- also notwithstanding the recent BPAI decision Ex parte Cornea-Hasegan, which I can only hope is an abberation). Yes, there are still uncertainties, but at least now we have a test slightly more robust than the Jacobellis v. Ohio test for obscenity, i.e., "I know it when I see it."

Posted by: Defector at January 26, 2009 1:30 PM


Feel free to do a search on the BPAI website. Use "bilski" in the text field.

Cornea-Hasegan is not an aberration, it is Bilski as applied by the USPTO.

Posted by: BPAI search at January 26, 2009 2:25 PM

Posted by: BPAI search at January 26, 2009 2:26 PM

Not sure what your point is, Mr. Search. Cornea-Hasegan held that a new and useful article (i.e., a machine readable medium) is the same as an abstract idea under Bilski. Where does Bilski provide support for such a proposition? Like I said, I *hope* Cornea-Hasegan is an aberration resulting from over-zealous BPAI judges.

Posted by: Defector at January 27, 2009 5:08 PM