E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Enter your email address:

Delivered by FeedBurner

Contact the Docs

Docs on Twitter


About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.

Disclaimer

  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.

Pharma-50-transparent_216px_red

Become a Fan

« Berkeley Files Opening Brief in CRISPR Appeal | Main | PTAB Life Sciences Report »

August 01, 2017

Comments

Hey Joseph,

Yet another "poster child" for why the nonsensical and unworkable Mayo/Alice framework needs to be dumped ASAP. How this claimed invention (filtering and interpreting real-time sensory data from an electrical system) can be deemed "abstract" under 101 blows my mind. If it is truly just a "functional result," it should be judged under 112, not 101.

Perhaps, the problem that the district court sees is that many practitioners in these section 101 cases attempt to disguise means-plus function claims as questionable structure claims. The court is looking for some inventive structure in at least one element and sees none. In this case, each element of the claim 1 could have been written in a means plus function format. To be fair, I have not read the patent specification to determine if any such structure can be found, and if such structure is linked to its corresponding function.

I also understand that the "broad" electrical monitoring and correction claim could have been analyzed under 102/103, but the court's do not seem to want to go there. Was each step known in the art? Which is the inventive step? Does the patent explain what is actually inventive about claim 1? What story does the patent specification tell? It is almost like the courts are analyzing claims in some form of prima facie 101. If the courts do not identify any structure to define a particular element, then they are not going to parse the specification for that structure. That job is for the practitioner.

My point is if a practitioner desires to define an "inventive" process by function, then use P6, and force the court to look to the specification for that linking structure. And of course, lay out what you believe are the inventive features of the claimed process.

No invention there. We need a better way to find that out early, but with more rigor than the totally subjective 101 inquiry.

Also, of course, the problem is that all information is abstract, but some information my meet all of the criteria for patenting.

But how to approach distinguishing them?

Is the nature of the alleged infringement something that occurs "totally within the mind?"

If not, then "abstract" no matter how NOT defined is not likely being used correctly.

Verify your Comment

Previewing your Comment

This is only a preview. Your comment has not yet been posted.

Working...
Your comment could not be posted. Error type:
Your comment has been saved. Comments are moderated and will not appear until approved by the author. Post another comment

The letters and numbers you entered did not match the image. Please try again.

As a final step before posting your comment, enter the letters and numbers you see in the image below. This prevents automated programs from posting comments.

Having trouble reading this image? View an alternate.

Working...

Post a comment

Comments are moderated, and will not appear until the author has approved them.

Your Information

(Name is required. Email address will not be displayed with the comment.)

August 2017

Sun Mon Tue Wed Thu Fri Sat
    1 2 3 4 5
6 7 8 9 10 11 12
13 14 15 16 17 18 19
20 21 22 23 24 25 26
27 28 29 30 31