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July 3, 2010

What can we patent?

Chris O'Brien, news columnist at the Silicon Valley Mercury News, who surely never squeezed a patentable invention out of his pea brain, asks the title question about the SCOTUS Bilski decision. "How crazy is this?" O'Brien opines in his abject failure to comprehend what § 101 as "a threshold test" means. A garden-variety mainstream press putz scratches his noggin and concludes "we're back to square one having to figure out how to move forward since the Supreme Court decided not to do it for us."

Bilski is already fuel for the fire of anti-patent geniuses, like MIT's Brad Feld. Apparently, patent case law baffles the hoopleheads "bummed out about Bilski."

Hint to the dumb and bummed: abstract ideas out, practical applications ("new and useful") in. No rigid tests. Try "common sense" that is really too rare.

Beyond the grasp of mere "news columnists," there is considerable Supreme Court precedent that serve as guideposts to patentable subject matter:  J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 534 U. S. 124, 135 (2001); Diamond v. Diehr 450 U. S. 175 (1981); Diamond v. Chakrabarty, 447 U. S. 303, 308 (1980); Parker v. Flook, 437 U. S. 584, 588-589 (1978);  Gottschalk v. Benson, 409 U.S. 63 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, 130 (1948); American Fruit Growers, Inc. v. Brogdex Co., 283 U. S. 1, 11 (1931); Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874); Le Roy v. Tatham, 55 U.S. 156, 175 (1852).

When you read lamentation and the wringing of hands over Bilski, know you are reading commentary guano of one who knew not of what s/he wrote.

Posted by Patent Hawk at July 3, 2010 9:48 PM | § 101

Comments

Hawk,

Your link did not work for me.
Here is a link that did work:
http://www.mercurynews.com/business/ci_15424816

Posted by: step back at July 5, 2010 7:09 PM

Thanks 'step back'. Maybe my original link had been Googleized beyond recognition (via Google is how I got to the article).

I updated my link.

Posted by: Patent Hawk at July 5, 2010 9:46 PM

Are you saying that you think the Supreme Court *has* given us enough guidance to determine what is/not an abstract idea?

Posted by: Karen G. Hazzah at July 6, 2010 9:04 AM

Try this Karen:

Think in your mind of an abstract idea which you believe may be entirely covered by the claim - anything you might consider post-solution activity.

Then write such a setence out as below:

This claim preempts the abstract idea of ... . And fill in the blank. If it is a true statement, and not something you just filled in randomly then you'll likely have your answer.

Posted by: 6000 at July 6, 2010 11:25 AM

My favorite line is this quote from Q. Todd Dickinson: "We have never in U.S. history ruled out a category of patentable ideas."


*cough* If a category was ruled out, then it wouldn't be patentable, so this is completely nonsensical. I hope he was misquoted, but would not be surprised if he actually said that.

Of course, there are plenty of categories of inventions that have been ruled out from being patentable. Examples include abstract ideas, devices or methods of committing a crime, and inventions that serve no useful purpose.

Posted by: Defector at July 6, 2010 1:49 PM

Well, without defining "abstract" or "idea" or "business method" since the Supreme Court didn't, all of the following six claims effectively preempt the (abstract) idea of cooking spaghetti in liquid water at a relatively constant temperature of about 500 degrees F. Some are patent eligible, other(s) are not. (Claim 4 is a machine, claim 5 is a transformative method.)

1) Means for cooking spaghetti in liquid water at a relatively constant temperature of about 500 degrees F.

2) A spaghetti cooking method comprising the step of: cooking spaghetti in liquid water at a relatively constant temperature of about 500 F.

3) A method of doing business comprising the steps of: cooking spaghetti in liquid water at a relatively constant temperature of about 500 F; and using the spaghetti to provide nutritional support for an animal.

4) A spaghetti cooking apparatus comprising:
a) a volume of water containing spaghetti;
b) means for heating and pressurizing the water;
c) control means for maintaining the water at a relatively constant temperature of about 500 F until the spaghetti is cooked.

5) A spaghetti cooking apparatus comprising:
a) a pressure vessel;
b) a volume of water containing spaghetti inside the pressure vessel;
c) a heat source in heat transfer relationship with the water;
d) a control circuit configured to increase a transfer of heat from the heat source to the water when a temperature of the water is less than about 500 degrees F and to decrease the transfer of heat from the heat source to the water when the temperature of the water is greater than about 500 degrees F.

6) A spaghetti cooking method comprising the steps of:
a) providing a quantity of uncooked spaghetti in a volume of water;
b) heating and pressurizing the water;
c) maintaining a temperature of the water at approximately 500 degrees F until the spaghetti is cooked.

Alternately, I could add a "temperature sensor" (or a temperature sensing step) to each claim and then not "preempt" anything with any of the claims, since all my claims would then allow open loop operation (hahahahaha!)

This is all to say it's not necessarily what you claim, but rather how you claim it that (apparently) makes all the difference in the world for 101.

P.S. Karen, I believe the reason we can never have a full bright line test on what is patentable is that we can never fully foresee what will be invented (or what someone might try to patent, like a color gradient.) In my mind, the edges of patentability are best decided on a case-by-case basis. Here's a little wisdom (or caution) from the Breyer/Scalia concurrence: "In sum, it is my view that, in reemphasizing that the "machine-or-transformation" test is not necessarily the sole test of patentability, the Court intends neither to de-emphasize the test’s usefulness nor to suggest that many patentable processes lie beyond its reach."

Posted by: nirpa at July 7, 2010 5:02 AM

"Here's a little wisdom (or caution) from the Breyer/Scalia concurrence:"

Proper emphasis on the "little". In fact, so little that only two Justices would put their name to it (funny how an opinion purporting to be agreed to by all only gains two signatures - that would be half those that signed up to the Stevens concurrence about actually joinging the 21st century.

If anything, the lack of signatures says more about staying away from what was said rather than joining up with it.

Posted by: Pedantic Pete at July 7, 2010 6:33 AM

nirpa, I know it's hard to concoct valid claims on the fly in these threads, and I hope you're being facetious, but, man, does your idea of a valid claim suck.

Claim 1 -- MPF are only allowed in combination.

Claim 3 -- preamble asserts a business method but the claim doesn't relate to any business method.

Claim 4 -- you're gonna' argue that a volume of water is an element of an apparatus? Hmmm ... Maybe, but why not just claim a vessel holding a volume of water, overcome any doubt, and save your client the potential expensive fight?

Claim 5 -- makes no sense and is inoperative. A decrease in the transfer of heat will still cause the temperature to increase indefinitely as long as heat is being transferred.

Your premise could not be further from the truth -- there is nothing "abstract" about "cooking spaghetti in liquid water at a relatively constant temperature of about 500 degrees F." It is about as concrete as it can get -- very particular and well circumscribed subject matter.

Posted by: Elisha Gray's hitman at July 7, 2010 8:08 AM

Elisha, way to miss the point of a post about preemption, not claiming pressure cookers and heat transfer.

"Claim 5 -- makes no sense and is inoperative. A decrease in the transfer of heat will still cause the temperature to increase indefinitely as long as heat is being transferred."

Hehh, you aren't an examiner, I hope! (This winter, when the heater in your car is dying and puts out only luke warm air, just tell yourself, "[The] heat will still cause the temperature to increase indefinitely as long as heat is being transferred" and enjoy the warmth!!!)

Posted by: nirpa at July 7, 2010 8:23 AM

nirpa,

Given the elements of your claim, the hitman is right - you would need to add an element of a heat sink (cooling source) such that the net heat transfer rate is negative in order to reach your facetious reply.

Your original post is in error.

Posted by: Pedantic Pete at July 7, 2010 9:25 AM

"(abstract) idea of cooking spaghetti in liquid water at a relatively constant temperature of about 500 degrees F."

See this is what I'm talking about, you can't just make up a non-abstract idea and fill in the blank. Cooking spaghetti is not abstract.

There is only one rule in my version of the abstract idea test. You can't fill in the blank with a non-abstract idea. It is a very simple rule really.

"If anything, the lack of signatures says more about staying away from what was said rather than joining up with it."

Actually not. The reason more didn't just join up is because that would have then made his view the majority view, and the 5 on the majority had decided how they wanted to decide the case whether or not they agreed with the other part as well. The opposite goes for the Stevens camp. Nevertheless, as the justice noted, they were substantially in agreement on the last parts he penned.

Posted by: 6000 at July 7, 2010 12:01 PM

Man, looking at your original post is even worse than I thought NIRPA. And I disagree with your form v substance argument. It is precisely the substance that matters. You're just inappropriately applying the test.

Posted by: 6000 at July 7, 2010 12:05 PM

Actually so, 6000.

Each written portion ascribes only the signatures attached. That's why different sections have different levels of signatures. There is no correlation to the making of the section a part of the majority view, other than if enough agreed with that section it would become the majority view. So obviously, the others did not agree as witness the lack of signatures.

Just because Breyers says his section is agreed to by all just doesn't make it so.

Posted by: Pedantic Pete at July 7, 2010 1:22 PM

"Just because Breyers says his section is agreed to by all just doesn't make it so."

So then you propose that he lied and the majority didn't happen to clarify that he lied?

"There is no correlation to the making of the section a part of the majority view, other than if enough agreed with that section it would become the majority view."

That's precisely what I said. If everyone jumped on then it would have become the majority opinion but they wanted to decide the case on other grounds. I don't see what is so difficult for you to understand about this.

Posted by: 6000 at July 7, 2010 1:42 PM

Never mind, I'm talking to the same "pedantic pete" that needed a paper that I'd read years before to understand the things I was telling him last time I talked to him.

You simply don't have the background knowledge to converse with me sir. Good day to you.

Posted by: 6000 at July 7, 2010 1:44 PM

...and you are under some delusion that Justices won't sign something they agree to because it might make it a majority opinion. As if they are somehow afraid that making more than one thing a majority diminishes the rest...

Sheer lunacy.

If you need to have a certain "background knowledge" to have your (lack of) understanding, THANK GOD I don't have that.

Posted by: Pedantic Pete at July 7, 2010 3:41 PM

6K, I've never in my life heard of a "non-abstract idea." Honestly, it sounds oxymoronic to me (and to me "abstract idea" sounds redundant). If you would, please give us a definition for an "abstract idea" or a "non-abstract idea" to distinguish between the two so we can better apply the test (and please, please don't say something passé like, "A non-abstract idea is an idea that is tied to a machine or that when implemented effects a physical transformation of matter or energy.")

P.S. If you do answer the question, next up will be to define "business method," and then you and the patent community can rest easy. :-)


i·de·a
–noun
1.
any conception existing in the mind as a result of mental understanding, awareness, or activity.

Here are some non-abstract "ideas," or maybe they're "abstract," you know I really can't tell (and I actually think we can't determine patent-eligiblity from that distinction alone)....
0) cooking spaghetti in liquid water at 500 degrees F;
1) watering plants with a dilute alcohol-water mixture;
2) drinking whiskey on the rocks;
3) measuring blood-alcohol content;
4) transporting a case of whiskey;
5) receiving a case of whiskey;
6) buying a case of whiskey;
7) buying stock in a whiskey company;
8) hedging the risk of buying stock in a whiskey company;
9) detecting a gene indicative of a propensity to alcoholism;
10) detecting the alcoholism gene and treating the patient by enrolling him in AA;
11) detecting the alcoholism gene and treating the patient with a drug that inhibits the assimilation of consumed alcohols;
12) detecting the naturally-occurring sulfur content in coal;
13) separating coal based on detected naturally-occurring sulfur content to provide clean coal;
14) isolated adrenaline;
15) a unique string of bits;
16) detecting a unique, illegal string of bits;
17) using an illegal string of bits as a sync mark (for establishing timing) in a data stream;
18) the sync mark in the data stream;
19) the sync mark on a recording medium;
20) a redundant sync mark in a data stream;
21) Morse Code;
22) a screen font;
23) a mechanical typeface on a printing press;
24) a color gradient that is undetectable (camouflage) by the human eye;
25) an object with a reflected color gradient that is undetectable by the human eye.

Posted by: nirpa at July 8, 2010 5:31 AM

I think we have lost the forest for the trees here.

There are "things" that can be both and abstract idea and a non-abstract item. The terms are not mutually exclusive. In fact, any (and all) non-abstract items can be abstracted and placed in the "mind's eye" where they can exist as a pure idea.

It's what my friend Spongebob calls Imaaaginaaation.

Posted by: Pedantic Pete at July 8, 2010 6:42 AM

"You simply don't have the background knowledge to converse with me sir."

For somebody who doesn't understand the difference between a majority opinion and a concurrence, it's hard to imagine what "background knowledge" you might have. I guess it's the usual sh!t you just make up in your head.

Posted by: pong at July 8, 2010 7:46 AM

"If you would, please give us a definition for an "abstract idea" or a "non-abstract idea" to distinguish between the two so we can better apply the test"

I already gave the "test" over at PO as it applies to patent claims. It is very simple. Write a sentence describing any kind of idea and start the sentence with: "The claim preempts the abstract idea of:" If the sentence is in fact true, and does in fact make sense, then you have just described an abstract idea that is preempt by your claim. If you fail on either account then you have not just described an abstract idea, or the claim does not preempt it. In either case, you're in the clear in so far as patent law is concerned. You'll also want to factor in post-solution activity to that analysis once you've graduated from patent law 35 USC 101 101 class and move into the patent law 35 USC 101 201 class.

"P.S. If you do answer the question, next up will be to define "business method," and then you and the patent community can rest easy. :-)"

I don't mind the definition provided by congress. MM presented a decent one the other day as well. Only tards that would like to try to be smooth need it to be any better.

"For somebody who doesn't understand the difference between a majority opinion and a concurrence, it's hard to imagine what "background knowledge" you might have. I guess it's the usual sh!t you just make up in your head."

I understand those things quite well. Go now grasshopper, and read on your interwebs the words of prominent people in the patent community that believe that courts will assign a great bit of weight to the concurrence. Since you will then be confused, you can then begin your inquiry into why this might happen here:

http://en.wikipedia.org/wiki/Plurality_opinion

Now, like I said, good day to you sir. I'm not discussing the matter with you futher. As much as it obviously frustrates you, I simply do not regard you as well versed enough in what is happening to have a good conversation. Do your own digging and maybe one day you will be.

Here's you a hint since I know you're not really up to snuff and you will be soooooo bothered that I won't hold your hand: The full "majority" opinion did not recieve the full support of (in this case "over") half the justices, but recieved more support than any other opinion. Scalia is the concurring opinion offering the narrowest rationale and he (and Breyer) also provides the parts of the concurring opinions which overlap and arrive at the same result.

Take it and go from there, then observe what happens in the coming months.

You can also go troll around PO for awhile as it was even discussed there a bit. Try starting here:

http://www.patentlyo.com/patent/2010/06/bilski-v-kappos-business-methods-out-software-still-patentable.html

search for "plurality" then read the responses.

Here, I just googled you something too because I figured I might be charitable and help you find some of the things I found. This isn't what I read, but it is similar:

http://www.kelleydrye.com/publications/client_advisories/0581

and here:

http://blog.hdp.com/bilski/bilski-update-analysis-june-30-2010/

Just hit this:

http://www.google.com/search?sourceid=navclient&ie=UTF-8&rls=GGLD,GGLD:2004-30,GGLD:en&q=bilski+plurality+decision

and read.

Posted by: 6000 at July 8, 2010 12:54 PM

Hey,

Check it out.
The new post Bilski BOPAI decisions are out:

http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009006599-07-08-2010-1

Posted by: step back at July 8, 2010 4:37 PM

"The full "majority" opinion did not recieve the full support of (in this case "over") half the justices, but recieved more support than any other opinion."

That has got to be the most asinine thing I have ever read.

Does this person think that by using quotation marks that majority somehow equals plurality and magically plurality has the same force of law as majority?

Posted by: Anon at July 8, 2010 7:42 PM

The only "majority" opinions to come out of Bilski are 1) Bilski's "invention" is not patent eligible subject matter under section 101; and 2) "business methods" are patent eligible subject matter.

"That has got to be the most asinine thing I have ever read."

Keep reading. 6tard will top himself. Soon.

"Does this person think that by using quotation marks that majority somehow equals plurality and magically plurality has the same force of law as majority?"

I stopped reading after "Does this person think..." and answered the question thusly, "No. 6tard doesn't think. He has diarrhea of the keyboard."

Posted by: pong at July 9, 2010 5:09 AM