August 13, 2010
Inherent
King
Pharmaceuticals sued Eon Labs for infringing
6,407,128 &
6,683,102 after Eon filed an ANDA to make a generic version of the muscle
relaxant claimed, metaxalone,
which was first patented in 1962 (3,062,827).
Eon got summary judgment of invalidity via six prior art references, three of
which the court relied upon. The district court found claims inherently
anticipated. "To inherently anticipate, the prior art need only give the
same results as the patent, not better." One claim was found inherently obvious.
Other claims, in both '128 and '102, were found wanting under §101 for lack of
transformation: the claims' "informing" limitation was ethereal. Whereupon
appeal, with its own special informing about "informing" being unpatentable. "It
is not invention to perceive that the product which others had discovered had
qualities they failed to detect."
Posted by Patent Hawk at 11:46 AM | Prior Art | Comments (0)
August 4, 2010
Pig Out
Merial got a line on a virus infecting swine, and patented it:
6,368,601. Intervet developed a vaccine for treating the virus. Then
Intervet filed a declaratory judgment action against Merial. The district court
ruled noninfringement in summary judgment based on claim construction of six
disputed terms. Merial squealed and appealed. Dissent by Judge DYK raised the specter of a
rehearing, as to whether an isolated DNA sequence is patentable subject matter (§101).
Posted by Patent Hawk at 10:03 PM | Claim Construction | Comments (6)
July 8, 2010
Behind the Times
In
the interest of less-than-compact prosecution, the USPTO is, for the time being,
adhering to the ancient military supply rule: "smoke 'em if you got 'em." The
day Bilski rolled out of the Supreme Court, Robert Bahr, Poobah for
Patent Examination Policy, pooted forth
a letter on the ruling, directing examiners to stick to the old standby
machine-or-transformation test, whereupon giving "the applicant" "the
opportunity to explain why the claimed method is not drawn to an abstract idea."
Posted by Patent Hawk at 8:10 PM | § 101 | Comments (36)
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."
Continue reading "What can we patent?"
Posted by Patent Hawk at 9:48 PM | § 101 | Comments (23)
June 29, 2010
Meaning
A deluge of patent lawyers wanting to explain the import of the Supreme
Court's Bilski bonk has besieged my email inbox, and maybe yours too. Let me save you the
time. Of the SCOTUS patent rulings in the past decade, the implications of
Bilski are the easiest to decipher. What Bilski means is that business methods are patentable. What
Bilski means is that the CAFC § 101 standbys, notably
State Street
and
AT&T Corp. are precedentia non grata (yep, just making up
Latin, but you get the point). § 101 as "only a threshold test" may mean more a
retuning elsewhere than another attempt at pinning down 101 itself.
Posted by Patent Hawk at 9:37 PM | § 101 | Comments (32)
June 28, 2010
Vapors
Today,
9-0, the Supreme Court ruled Bilski's claimed risk hedging an abstract idea,
thereby contravening § 101 as patentable subject matter. Four Supreme Court
justices would have ruled that business methods are categorically not
patentable. So, 5-4, § 101 "precludes a reading of the term 'process' that would
categorically exclude business methods." And, oh, by the way, to hell with
State Street.
Posted by Patent Hawk at 1:49 PM | § 101 | Comments (6)
June 24, 2010
Bookend
This
coming Monday, June 28, is the last day of the Supreme Court session that
started in October 2009. It is also the final day that Justice Stevens sits on
the high Court before retiring. The first case Justice Stevens authored was
Parker v. Flook,
437 U.S. 584 (1978). Flook tried to patent use of a known algorithm, applied to
computerized updating of alarm limits. The claimed method tripped over § 101 as
not "eligible for patent protection," as being merely "the identification of a
limited category of useful, though conventional, post-solution applications of
such a formula." Bilski will also violate § 101, leaving only the
question of exactly how the Court will cast the rejection. Pundit
Hal Wegner
expects the Bilski decision Monday, and puts the odds of Justice Stevens
writing an opinion "almost certain," though hedges "the bigger question" of "whether his opinion will be for the majority or whether it will be a concurring
or dissenting opinion."
Posted by Patent Hawk at 8:12 AM | § 101 | Comments (7)
April 12, 2010
Located
Global
Locate took SiRF and others to the ITC to stop the defendants from importing
products infringing six of its GPS patents, which claim methods for improving
signal reception. Global Locate prevailed. The defendants appealed. At issue
were standing, infringement, and whether GPS-based methods were patentable
subject matter under the Bilski standard.
Posted by Patent Hawk at 10:10 PM | Standing | Comments (0)
November 10, 2009
Incoming
J. Michael Jakes had one helluva day being slammed with well-deserved
shots from Supreme Court Justices in oral arguments Monday. Jakes
represents Bernard Bilski in his quest for a patent on a ridiculously vague
claim for managing risk. On the government's side, Deputy Solicitor General
Malcolm L. Stewart's position was stiff as a board in supporting the CAFC's
rigid machine-or-transformation test for patentable methods. But that was not
entirely a bad thing.
Posted by Patent Hawk at 12:14 AM | § 101 | Comments (13)
November 7, 2009
Out of Hand
The
New York
Times turns troglodyte on invention, fearing patents can "stifle competition
and infringe on the rights of non-patent holders. Not every bright idea should
be protected as a property right." Only bright ideas that take jobs from
workers. In a nutshell, the New York Times thinks that there should be a law
against the law.
Continue reading "Out of Hand"
Posted by Patent Hawk at 9:28 PM | § 101 | Comments (4)
September 28, 2009
Productivity
In
the eyes of an economist, all inventions go to one purpose: increasing human
productivity. Less effort for equivalent result. More bang for the buck. Patents
are intended as incentive for increasing productivity. Patentability is
circumscribed by utility: a patented invention must be useful. Natural
phenomenon are not patentable, but harnessing such a phenomenon is (think
electrons racing around defined circuits). As a result, increasing productivity
always alters the way humans organize their activity. However things were done
in the past, an invention changes how somebody may do something. The dictionary corresponds
with this by defining 'technology' as "the practical application of knowledge."
On all points foregoing, the U.S. government does not converge.
Continue reading "Productivity"
Posted by Patent Hawk at 4:41 PM | § 101 | Comments (9)
September 27, 2009
Brain Damaged
Janssen
battled a gaggle of generic
drug makers over "a method for treating Alzheimer's disease with galanthamine."
The patent of contention was
4,663,318. The issue before the courts was enablement (§112 ¶1), which, on
appeal, the
CAFC majority tied to utility (§101) for instant determination.
Continue reading "Brain Damaged"
Posted by Patent Hawk at 1:30 PM | § 112 | Comments (0)
September 18, 2009
Patented Treatment
Prometheus
Labs got patents (6,355,623;
6,680,302) on "methods for calibrating the proper dosage of thiopurine
drugs, which are used for treating... autoimmune diseases." "[N]on-responsiveness
and drug toxicity may complicate treatment in some patients. To that end, the
patents claim methods that seek to optimize therapeutic efficacy while
minimizing toxic side effects." The claims go to two steps: 1) administer the
drug, and 2) determine "the levels of the drug's metabolites." Yes, drug
treatment is patentable.
Continue reading "Patented Treatment"
Posted by Patent Hawk at 1:22 AM | § 101 | Comments (2)
July 27, 2009
Lever
Bernard Bilski and his buddy got a nebulous notion about risk management. So
they hired a run-of-the-mill prosecutor to scratch a sketchy spec and draft some
bodaciously crappy claims. The PTO pitched the poop. But then the CAFC fouled
the plumbing with precarious precedent, so the Bilski bauble floated to
the top, where the Supreme Court has the final flush, but the only needed motion
is reiteration.
Posted by Patent Hawk at 3:26 PM | § 101 | Comments (13)
June 29, 2009
Requisite Clarity
In
Bilski,
the rogue CAFC ruled on the wrong grounds, and in the process warped the law, by
setting in stone what were intended as guidelines. To afford case-by-case
consideration, a court writes itself wiggle room. Instead, the CAFC tends to sew
itself straightjackets. To invalidate Bilski's claim, all SCOTUS need do is
reaffirm the definiteness requirement, and then correct the CAFC's errant way
regarding patentable process subject matter.
Continue reading "Requisite Clarity"
Posted by Patent Hawk at 9:04 AM | § 101 | Comments (22)
June 26, 2009
Definitely Not
Bilski's
claims
are neither useful nor definite, and hence non-patentable
under §101 and §112 ¶2. The Supreme Court should rightfully ignore flawed CAFC
case law, looking to its own precedents, most notably Diamond v. Diehr
(for §101) and Markman v. Westview Instruments (§112 ¶2). Here's how
SCOTUS should shoot down Bilski and claims of its ilk - recognize the
intertwining of §101 and §112 ¶2, that an ill-defined process is a strong
indicator of indefinite usefulness, and hence unpatentable subject matter.
Continue reading "Definitely Not"
Posted by Patent Hawk at 12:06 AM | § 101 | Comments (34)
June 15, 2009
Snuffing Candles
Tackling
Bilski and patents in general, the
Wall Street
Journal presents one of the more subtle propaganda pieces seen: "The
greatest innovations today are better methods rather than new machines. We
shouldn't grant monopolies on concepts." Quoting IBM's David Kappos: "As things
now stand, the vagueness of patent law means the 'precious time of skilled
scientists and engineers is too often spent defending against costly and
time-consuming litigation, instead of creating innovations that drive economic
growth.'"
Continue reading "Snuffing Candles"
Posted by Patent Hawk at 11:03 AM | § 101 | Comments (7)
June 6, 2009
Diamond
Bilski's and Warsaw's "managing... consumption risk costs," are
miserable
claims to be scuttling to the Supreme Court on the topic of patentable subject
matter,
because they clearly are not patentable under
§112
¶2, not to mention
§101.
At issue is whether
the CAFC
misconstrued §101, in limiting processes to: 1) machine dependence or 2)
transformation. This is something to be scraped off the judicial shoe as too close-minded, just as Judge Newman opined
in dissent. What
should/will SCOTUS do? To read the crystal ball, peer into how the Supreme
Court has decided before. As to that, one gem gleams.
Posted by Patent Hawk at 8:07 PM | § 101 | Comments (23)
June 1, 2009
Byoki
Byoki
is the Japanese word for sick. Bilski is the American word for sick
patent method case law. At the time of handing down the CAFC decision, Chief Judge
Michel didn't consider Bilski much of a change, even as it immediately
roiled understanding of patentability for processes, especially software. Today
the Supreme Court decided to blow the haze around Bilski, granting
certiorari to the matter.
Posted by Patent Hawk at 9:14 AM | § 101 | Comments (5)
May 29, 2009
Breaking
Every Penny Counts is running a
problematic enforcement campaign with a bankrupt
patent family. Florida district court Judge Paul A. Magnuson saw through claim
15 of
6,112,191, which ostensibly claims an apparatus, but really claims a method,
as not being patentable subject matter. Bilski takes another bite.
Posted by Patent Hawk at 2:51 PM | § 101 | Comments (5)
May 18, 2009
Method High
In
re Bilski, the bad brew for method claims, is scheduled to be discussed
by the Supreme Court May 28th. A decision to grant or deny certiorari could be
included in the Court's Orders List as early as June 1st.
Posted by Patent Hawk at 9:52 AM | § 101 | Comments (1)
March 6, 2009
Marked Marketing
Lewis
Ferguson et al filed a patent application claiming marketing methods, and,
really, the pits of vagary, claims of a "paradigm for marketing." The prosecutor
needs to have his head examined. The examiner rejected the 68 claims under prior
art and indefiniteness. On appeal, the BPAI blew that off, and put up a § 101, a
la Bilski.
The CAFC appeal comes as no surprise, but some delight, at least in a scathing
concurrence.
Continue reading "Marked Marketing"
Posted by Patent Hawk at 9:22 PM | § 101 | Comments (0)
February 12, 2009
Inscrutable Inconsistency
Amphire
Solutions tried to get a patent (2003/0188264)
on normalizing XML into a relational database, reducing redundancy using linked
lists. On appeal before the patent board (BPAI), the application was Bilskied,
then stomped by Obzilla. While the Board found computerized methods
abstract, and hence unpatentable, a computer performing a function is not
abstract, and hence patentable.
Continue reading "Inscrutable Inconsistency"
Posted by Patent Hawk at 10:05 PM | § 101 | Comments (7)
January 29, 2009
Unreal Estate
Bilski, as intended, is eradicating business method patents. In
Fort
Properties v. Master Lease, Central District of California Judge Andrew Guilford granted
summary judgment of §101 invalidity for
6,292,788, which claimed creating a real estate investment.
Continue reading "Unreal Estate"
Posted by Patent Hawk at 11:38 AM | § 101 | Comments (0)
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."
Continue reading "Intellectually Amish"
Posted by Patent Hawk at 3:12 PM | § 101 | Comments (12)
January 17, 2009
Compact Prosecution
On the seventh office action of a competitive pricing patent application,
yet another non-final, a new rejection appears, besides the continual
findings of prior art pieces that never survive reply, owing to their
inadequacy in rendering the claims anticipated or obvious. A "computer-implemented method"
of changing price is not patentable in light of
§101.
Continue reading "Compact Prosecution"
Posted by Patent Hawk at 1:30 PM | § 101 | Comments (5)
January 16, 2009
Tiny
Bilski
has bilked Intel. The PTO patent appeals board rejected Intel's
claimed alternately calculating using software or processor hardware depending
upon whether the result was "tiny." Such calculation was found not to be "a
practical application of the mathematical algorithm because the result d,
a number, is not a tangible result because it is not a real-world result."
Taking no wooden nickels, the BPAI repeatedly refuse to "exalt form over
substance."
Posted by Patent Hawk at 6:33 PM | § 101 | Comments (0)
January 14, 2009
Mental Method
Stephen
Comiskey filed a business method patent application, which he pursued to the
CAFC, which
ruled his idea an unpatentable "mental process." Petition for en banc
rehearing met with cacophony: limited to authorizing the panel to revise its
earlier flub, to a chorus of dissent. § 101 process patentability once again
gets a retread, this time intimating that novel computer software may be
patentable.
Continue reading "Mental Method"
Posted by Patent Hawk at 4:56 PM | § 101 | Comments (2)
December 22, 2008
Funked Koo Kung Fu
IBM
inventors Fred Koo and Ting Leung got their database query modification patent
application sua sponte kicked in its Bilski on BPAI appeal. The decision
shows how moronically the CAFC
In re Bilski
ruling is being applied. Not that something better could have been expected.
Continue reading "Funked Koo Kung Fu"
Posted by Patent Hawk at 8:29 PM | § 101 | Comments (21)
December 19, 2008
Vaccination
Bilski
has no basis in statute, and by any reasonable metric of jurisprudence, is
downright bad case law. That's right, Chief Judge Michel, I am addressing you,
sir. You are just making stuff up willy-nilly. But it doesn't help that
prosecutors draft jackass claims, which examiners let pass, and then, rather
than sicing the big-footed Obzilla on them for a good stomping, it's just too
easy to rule: "damn, son, you can't patent that." We are talking a chronic
disorder here.
Continue reading "Vaccination"
Posted by Patent Hawk at 1:57 PM | § 101 | Comments (23)
November 15, 2008
Process Flavor de Jure
The
techno-Neanderthal CAFC
having roiled process claims with its bilious Bilski ruling, the question remains how to best draft software method claims.
The economical "computer-implemented method" preamble may not fly now.
Another charade exists. Post-Bilski, the BPAI still let Beauregard software
claims pass §101 muster.
Continue reading "Process Flavor de Jure"
Posted by Patent Hawk at 12:16 AM | § 101 | Comments (4)
November 9, 2008
Getting Physical
Non-final office action,
received post-Bilski, directed to claims with the
preamble: "A computer-implemented method comprising:", followed by steps of
computer file selection, storage, and network transfer/copy. Examiner rejection as
follows:
The claims lack the necessary physical articles or objects to constitute a machine or a manufacture within the meaning of 35 USC 101.They are clearly not a series of steps or acts to be a process nor are they a combination of chemical compounds to be a composition of matter. As such, they fail to fall within a statutory category. They are, at best, functional descriptive material per se.
Continue reading "Getting Physical"
Posted by Patent Hawk at 4:29 PM | Prosecution | Comments (35)
November 4, 2008
Divining Bilski
Bilski was nothing short of a jurisprudential obscenity, horrendous in its
incoherence. To the degree it was coherent, it was ludicrous. That makes Bilski
a definitive statement on the quality of the CAFC, most notably majority author
Chief Judge Michel. Only Judges Newman and Rader had a clue. As Judge Newman put
it:
This exclusion of process inventions is contrary to statute, contrary to precedent, and a negation of the constitutional mandate. Its impact on the future, as well as on the thousands of patents already granted, is unknown.
From one judge to another, that's harsh language. None more harsh.
Continue reading "Divining Bilski"
Posted by Patent Hawk at 1:41 AM | § 101 | Comments (16)
November 2, 2008
Bilking Bilski
35
U.S.C. § 101 cedes patentability to "any new and useful process," without
further qualification. The CAFC Bilski ruling, limiting process claims to being
tied to a particular apparatus or transforming something, has no basis in
statute, and questionable case law heritage. As dissenting Judge Newman
observed:
The breadth of Section 101 and its predecessor provisions reflects the legislative intention to accommodate not only known fields of creativity, but also the unknown future. The Court has consistently refrained from imposing unwarranted restrictions on statutory eligibility, and for computer-implemented processes the Court has explicitly rejected the direction now taken.
Posted by Patent Hawk at 1:07 AM | § 101 | Comments (7)
November 1, 2008
Milking Bilski
Bilski
was a simple ruling, affirming software patentability from State Street
(though discarding the State Street test as "insufficient"). The Bilski brouhaha
was its effect on software and business method patents, of which there was
little to none. The reaction of uncomprehension has been impressive, a
Rorschach of patent
attitude. Anti-patenteers who drank the mega-tech corporate kool-aid were
delusionary thrilled. The mainstream press mostly revealed its cluelessness.
Continue reading "Milking Bilski"
Posted by Patent Hawk at 1:42 PM | § 101 | Comments (4)
October 31, 2008
Software Patents
Software patents are best embodied as method claims. Did yesterday's
In re Bilski
decision change the patentability landscape for software? Not in the least. If
anything, Bilski affirmed the patentability of software as a data
transformer.
Continue reading "Software Patents"
Posted by Patent Hawk at 2:45 PM | § 101 | Comments (9)
October 30, 2008
Method Acting
Bernard
Bilski and Rand Warsaw filed a patent application claiming managing commodities
trading risk. The
patent
appeals board agreed with examiner rejection that the claimed process wasn't
statutory under §101. In a sua sponte en banc hearing, the CAFC affirmed, albeit contentiously. In re Bilski
sets the patentable-process test to whether a claimed method is: (1) "tied
to a particular machine or apparatus," or (2) transforms the subject matter of
the claim.
Continue reading "Method Acting"
Posted by Patent Hawk at 12:14 PM | § 101 | Comments (10)
August 29, 2008
101 Love
USPTO Deputy Commissioner for Patent Examination Policy
John J. Love took it upon
himself to interpret 35 U.S.C. §101 for software method claims. Months ago in an
internal memo to examiners, Love encouraged 101 rejections for method claims
that merely recite computer usage in the preamble. Love wants software process
claim steps tied to a system or apparatus, and transformation of the underlying
subject matter. Now he has backing from the PTO appeals board. Herein, a BPAI
ruling bombastic in its vacuity, disingenuous dissembling of case law to drive
process patentability into the ditch.
Posted by Patent Hawk at 10:15 PM | § 101 | Comments (15)
July 2, 2008
101 Clarification
An
interoffice memo on examining claims for § 101 compliance issued to the
USPTO examiner corps in mid-May.
Based on Supreme Court precedent and recent Federal Circuit decisions, the Office's guidance to examiners is that a § 101 process must (1) be tied to another statutory class (such as a particular apparatus) or (2) transform underlying subject matter (such as an article or materials) to a different state or thing. If neither of these requirements is met by the claim, the method is not a patent eligible process under § 101 and should be rejected as being directed to nonstatutory subject matter.
Posted by Patent Hawk at 1:18 AM | § 101 | Comments (0)
June 23, 2008
Smoke Signal
Law
professors John Duffy, Dennis Crouch, Mark Lemley, and others, filed an
amici brief for certiorari before the Supreme Court, to toss the CAFC
mistake
In re Nuijten, which ruled that transient signals were not patentable
subject matter under
35 U.S.C. § 101.
Continue reading "Smoke Signal"
Posted by Patent Hawk at 9:53 PM | § 101 | Comments (1)
June 16, 2008
Bilskiwhacked?
The USPTO has chimed in on the
Bilski case on its internal website.
The USPTO has done its best to follow the guidance in State Street and AT&T, which some believe state that any useful series of steps is patent-eligible. However, the USPTO does not believe that such a broad reading of those rulings is consistent with the Supreme Court's views on the eligibility of "process" patents, as set forth in Diamond v. Diehr, 450 U.S. 175 (1981).
Continue reading "Bilskiwhacked?"
Posted by Patent Hawk at 12:11 PM | § 101 | Comments (0)
May 12, 2008
Useful
The CAFC's sua sponte en banc rehearing of Bilski's claimed risk management
process, so far denied as unpatentable subject matter, indicates the appeals
court's desire to draw a "bright line test for determining whether a claimed
invention embodies statutory subject matter," a "quest" that a
BPAI
judge in Bilski's case deemed "an exercise in futility." That just shows the
BPAI not having the sharpest tacks in the box, because a bright line test is
exactly what's called for, and can be accomplished.
Posted by Patent Hawk at 11:04 PM | § 101 | Comments (0)
February 11, 2008
No Signal
Petition
for CAFC en banc rehearing In re Nuijten shorted out 9-3. Nuijten had appealed
encoded signal claims, disallowed by the BPAI as unpatentable subject
matter under
35 U.S.C. § 101; a
ruling
upheld in CAFC panel. A cogent dissent signals the wire still live: the
Nuijten ruling conflicted controlling precedent, and left unanswered questions
about the relationship between § 101 & § 103. Resolution awaits a willing en
banc, or certiorari before SCOTUS.
Posted by Patent Hawk at 5:47 PM | § 101 | Comments (1)
September 20, 2007
Mental Process
Claiming
in his patent application legal arbitration, Stephen
Comiskey appealed his patent board rejection from
35 U.S.C. § 103(a). The appeals court didn't care about
obviousness, finding of its own volition Comisky stepping out of bounds on
statutory subject matter: mental processes are not patentable, but "a claim that
involves both a mental process and one of the other categories of statutory
subject matter (i.e., a machine, manufacture, or composition) may be patentable
under
§ 101." In a case-law flip-flop return from the grave: the
"technological arts" test.
Continue reading "Mental Process"
Posted by Patent Hawk at 11:58 PM | § 101 | Comments (0)
Ephemeral Signals
Petrus
Nuijten appealed to the CAFC patent office rejection of his encoded signal
claims. The disclosed technology went to reducing distortion from introducing a
"watermark" into signals. Nuijten had claims granted for the encoding process, a
device that performs such process, and storage for holding resultant signals.
The signals themselves were found unpatentable subject matter, outside the scope
of 35 U.S.C. § 101, by the patent appeals board. The CAFC affirmed, via
long-winded analysis. The appeals court decision followed the precedent of the
1853 Supreme Court Morse code ruling without acknowledging it.
A logically compelling dissent found the signals an article of manufacture, and thus statutory. Ephemeral existence, which the majority found germane, was an irrelevancy to the dissenter - the claimed signals last as long as they need to.
Continue reading "Ephemeral Signals"
Posted by Patent Hawk at 10:22 PM | § 101 | Comments (0)
June 13, 2007
CAFC Chief Judge Plays Patent Examiner
Hal
Wegner reports: In In re Comiskey, Fed. Cir. App. No. 2006-1286
(Michel, C.J., Dyk, Prost, JJ.), the overworked court is now looking for
additional work beyond its statutory mandate, pondering whether to affirm the
PTO in an ex parte appeal on the basis of a ground of rejection that is not
before the court, viz., a patent-eligibility determination under 35 USC § 101.
Continue reading "CAFC Chief Judge Plays Patent Examiner"
Posted by Patent Hawk at 3:40 PM | Prosecution | Comments (0)
February 19, 2007
Transformation
Bernard Bilski helped the USPTO set up an appeals court review of statutory subject matter - 35 U.S.C. §101. Bilski claimed a method of economizing in managing risk; more simply, simply a method of doing business. Self-admittedly, the claims aren't tied to any physical structure, don't recite a transformation of matter, nor even of computer data. The patent appeals board rejected Bilski's claims as unpatentable. A case with considerable intrigue, it raises the question of whether the patent office is attacking its pendancy problem by attempting to scotch business method patents.
Continue reading "Transformation"
Posted by Patent Hawk at 5:13 PM | § 101 | Comments (0)
November 28, 2005
PBAI Claim Mixup
In a non-precedent case before the Patent Board of Appeals (PBAI 2005-0970), Xerox got a copy of the IPXL v. Amazon ruling: mixing claim types traverses 35 U.S.C. § 101 & § 112 ¶ 2.
Continue reading "PBAI Claim Mixup"
Posted by Patent Hawk at 12:34 PM | Prosecution | Comments (0)
November 14, 2005
Business Methods Patents
The United States Patent and Trademark Office released a set of interim examination guidelines for assessing the patentability of business method patents.
Continue reading "Business Methods Patents"
Posted by Peter Haas at 9:20 AM | § 101 | Comments (0)
October 28, 2005
Highway 101 Revisited
Surfing the wake from the Lundgren case, the Patent Office has released an interim "Guidelines 101", informing examiners, and the patent prosecutors who argue with them, how to tell if a claim is eligible subject matter.
Continue reading "Highway 101 Revisited"
Posted by Patent Hawk at 12:48 PM | § 101 | Comments (0)
October 16, 2005
Technological Arts
Carl Lundgren has been pushing the state of the art in economic processes.
He's also pushed the state of the legal art in having the Patent Office Board of
Appeals (BPAI
2003-2088) get rid of a non-statutory § 101 rejection that a claim must be within the "technological arts".
Continue reading "Technological Arts"
Posted by Patent Hawk at 11:15 AM | § 101 | Comments (0)
September 8, 2005
§101 Wilted Flower
Dana Fisher et al had a single claim relating to corn synthetic genetic material during anthesis: "A substantially purified nucleic acid molecule that encodes a maize protein or fragment thereof comprising a nucleic acid sequence selected from the group consisting of SEQ ID NO: 1 through SEQ ID NO: 5."
So, what is that good for? The Patent Board of Appeals and CAFC (04-1465) said "not enough".
Continue reading "§101 Wilted Flower"
Posted by Patent Hawk at 1:09 PM | § 101 | Comments (0)
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