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« Cubist Pharmaceuticals, Inc. v. Hospira Inc. (Fed. Cir. 2015) | Main | 01 Communique Laboratory, Inc. vs. Citrix Systems, Inc., (N.D. Ohio 2015) »

December 29, 2015


"But, the Federal Circuit stated that neither the claims at issue nor the specification provide any details as to how this 'expert system' works or how it produces faster, more accurate and reliable results."

Sigh. Another case which should have been resolved under Section 112, not 101. The chaotic conflation caused by the broken and nonsensical Alice test continues.

101 has become EXPRESSLY what Congress did not like about the actions of the Courts in "defining gist of the invention" in pre-1952 cases, and has negated the direct legislative action in creating 103.

The nose of wax has been ripped off the face of Justice.

There is but one way forward: direct and forceful action by the legislature to protect its constitutional appointment of authority through jurisdiction stripping from the Supreme Court and re-establishing an Article III court that is not brow beaten by the Supremes.

Quite a seasonal rejection really!

The procedure of Fig. 15 concerns intoxicated equipment operators.

In a first step the user screens an equipment operator to detect potential intoxication. The testing person detects whether a potential vehicle driver smells of beer or wine.

The equipment operator is selectively tested for intoxication state when screening indicates potential intoxication. The usual procedure is to ask the affected person to walk putting one foot in front of another along a straight line and to see whether this can be done without the person falling over.

A characteristic is measured. Steady gait, staggering gait or falling is observed.

Selectively testing the equipment operator when the observed characteristic indicates intoxication. Observe the potential driver and see if he/she is sleepy, flushed or slurred in speech. Talking more loudly than usual is also a sign of intoxication.

Controlling operation of the equipment if the selective testing indicates intoxication. The usual procedure is to confiscate vehicle keys and/or offer a bed for the night.

And this is supposed to be inventive???

Mr. Cole,

I think that you are asking the wrong question (and missing the LEGAL point that is causing such consternation).

@ Skeptical

You are quite right about my question, but the opportunity for seasonal mockery was irresistible.

First Step—Are Claims Directed to a Patent-Ineligible Concept?

CRASS ERROR in my opinion - the first question is whether the claimed subject-matter falls within the express language of s.101.

Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972) "A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing."

In claim 1 there is nothing transformed to a different state or thing, so that it is arguable that what is claimed does not fall within the statutory language. That is a much better chain of reasoning than relying on the judicial exceptions.

Claim 16 to the module is a little more difficult. However, machine is defined to cover every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. Again it is by no means certain that any relevant effect or result is produced by the claimed features, whether considered individually or as an ordered combination.

It would have been FAR better if the court had done a proper job and considered the express language of the statute BEFORE going to the judicial exceptions which are probably redundant here. The fact that falling within the statutory language was conceded by the parties should have made no difference. As Abraham Lincoln said: "How many legs does a dog have if you call the tail a leg? Four. Calling a tail a leg doesn't make it a leg." Precisely the same here - the fact that the parties said that the claims were within the statutory language does not make them within the statutory language.

Of course your point about the exceptions intruding in the statutory language is a good one. But the correct case for testing that is Ariosa, not this case.


Further to your point: I doubt any of the patent professionals on this board think that the claims of this patent have serious 35 USC 112 issues. The claims may also have 35 USC 103 issues. But, as you have stated, Mr. Cole is "asking the wrong question."

The question is how in the world this decision was made based on the language of 35 USC 101 which states in its entirety:

Inventions patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Should the written description and enablement requirements be removed from 35 USC 112 in the next "Patent Reform Act" because the Supreme Court and, based on this case, the Federal Circuit effectively believes these sections of 35 USC 112 have been redundant for over 60 years now without most of us patent professionals realizing it?

Alice has turned into I don't like your claims, so I am going to invalidate them 'cause. Interestingly, you cannot have it both ways with expert systems. You cannot say that on the one hand they are so simple to build that they add nothing extra (recent case I can't remember), and then say that the spec lacks 112 because it doesn't tell how to build them.

Also, I am one skilled in the art. I've taught computer science students how to build expert systems. There isn't anything wrong with this spec and claims other than they should have fallen (IMHO) under 103.

I could build this system without undue experimentation.

@Paul Cole>>In claim 1 there is nothing transformed to a different state or thing, so that it is arguable that what is claimed does not fall within the statutory language.

Paul, so according to you a sewing machine falls outside of 101.

Paul, "However, machine is defined to cover every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result."

This is just nonsense talk. What does that even mean? In patent law, (let's try to get back to patent law), you construe the claims in view of the spec, what is known to an ordinary person of skill, and the claims. If a claim element does read on "everything" or "all", then it should be easy to find the element in the prior art.

@ Night Writer

It is not a matter of getting back to patent law. The definitions I gave were taken from the relevant section of MPEP, and I took the Gottschalk v. Benson quote from the MPEP.

The process performed by a sewing machine starts with cotton and fabric and carries out a number of physical operations to form stitches in the fabric. The stitches formed by machine differ from those formed by hand. So the result of the process is indeed to transform the fabric and thread into a different state or thing.

As regard the contents of the specification and claims, this is a typical "arm waving" case devoid of technical detail. What structure is there in the specification and drawings to support the functional term "expert system"? How does this expert system differ from any other, e.g. an expert system for medical diagnosis? I have looked at the patent and don't know.

As I used to say to my children avoiding explicit profanity, the specification is a load of carp (very definitely fishy!). Incidentally if you go back to the patent in issue in State Street Bank, you will see quite egregious breach of 35 USC 112(6) as it then was.

Another huge problem with this case is that eligibility of the claimed subject matter is being determined before there is even a sufficient factual record to do so. You even see district courts now taking (improperly in my view) what amounts essentially to Official Notice of facts that have not be properly established as true or correct. Such an approach completely undermines the concept of "due process."

Mr. Cole,

You are incorrect in that the stitches are different.

Different in degree - perhaps. But most definitely not different in kind.

Once again, I think that you are falling into the trap of the "wrong question."

And sadly, it appears that the judiciary has done so as well.

@Paul Cole

1) The claim is to a machine that is processing information. The change in information is certainly more than the stitches. Information processing machines process information that takes time, space, and energy. That is science.

2) Benson is cabined by Diehr. Benson is infamous for having different definitions of everything and for not making any sense.

3) "the specification is a load of carp (very definitely fishy!)." Patent law is not making judgments like this but applying the law. You are not adding in what a person of ordinary skill in the art of expert systems knows, which invalidates what you are saying.

4) Try to use patent law. Whenever you see element A is an XXX where XXX is some abstract characterization such as "abstract" you are now into politics. Try to recognize when you cross that line.

5) You didn't respond to what I said. I could build this system using what is known in the art, the spec and the claims. That makes it enabled. I know the metes and bounds of this claim too. That is patent law.

6) The problem with this claim is 103. All of your statements (except where you ignore what is known in the art) go to 103 and the way to apply that is find prior art and make combination arguments---not some nonsensical judgment like we are seeing from judges.

Night Writer and Paul,

Night Writer, thanks for teaching me something. I thought there might be serious 112 issues with the claims, but it appears that the level of skill in the field of the invention might be sufficient that the specification enables the claims. Of course, without evidence on the record about the level of skill in this field, it's hard to make an informed decision about whether the enablement requirement of 35 USC 112 is met.

Which, of course, raises the issue of how the heck the Federal Circuit could proprely state the following without any reference to evidence showing the state of the art in the field of the invention at the time of the invention:

"critically absent from the entire patent is how the existing vehicle equipment can be used to measure these characteristics; assuming these measurements can be made, how the decision module determines if an operator is impaired based on these measurements; assuming this determination can be made, how the decision module decides which control response to make; and assuming the control response decision can be made, how the 'expert system' effectuates the chosen control response."

How could the Federal Circuit know this based on just looking at the specification? What if, as Night Writer has written, a person of ordinary skill in the art could have built this system without undue experimentation. Shouldn't an applicant be able to provide an expert declaration to this effect, supported by evidence, be able to rebut such a 35 USC 101 determination? But I see no room for an applicant be able to provide such rebuttal evidence in the Federal Circuit's determination.

The Federal Circuit has effectively taken "Official Notice" of the level of ordinary skill in the art in the field of this invention at the time of the effective filing date of the claims under consideration.

That makes this decision both wrong and lawless on at least that basis.

@ Night Writer

1. Unless I have suddenly become dyslexic. claim 1 is directed to a method, not a machine. Therefore the definition of "method" which I have selected from the MPEP is apt.

2. Benson is quoted in MPEP and the definition I have adopted makes sense. If you have a better and more useful definition of a method from Supreme Court case law, I would be glad to learn of it.

3. Just as a check I downloaded the description and claims into Word and did a word search on "expert system". There were 89 mentions of this word combination, but not a single mention of any specific type of expert system, any specific technical characteristics of desirable expert systems for use in the invention or any known software that a skilled person could use as a starting point for development of a workable practical embodiment. The words "expert system" in this context therefore amount to no more than empty duckspeak.

4. I am into law, not politics. The language "expert system" is a mere functional expression devoid of any supporting structure and is therefore caught by 35 USC 112(f). It is not a situation where the words define a definite known thing e.g. where "amplifier" implies a known type of circuit.

5. I put you to the proof of your assertion that you could build a system based on the disclosure in the specification and the common general knowledge of a skilled reader. What would be your starting point and what would be your methodology to create a workable system? Absent supporting detail your assertion is no more than a mere vainglorious puff.

6. The issues with this patent include 103 and 112, but the temptation facing the judges to throw the whole thing out under 101 proved irresistible. Unless there is something with credible novelty and new utility under section 101 such that it plausibly amounts to an invention, there is no reason for a judge not to throw the case out as quickly as possible and with as little effort as possible. I don't think this invention cuts the mustard under 101 either as regards process/machine or as regards utility.

There is a pending case which could be a wonderful testing ground for judicial exceptions. But this is not it (apologies to Groucho Marx).

My name has become scrambled. I was responsible for the last posting.

Night Writer and A Rational Person,

You are both on the path of realizing why the Supreme Court has been "mucking things up" with its intent to rewrite statutory law in order to reach a conclusion that it wants to reach - efforts that can be traced back to the very first decisions following the chastisement of the Court by Congress. In other words, the veritable "ends justify the means" which only results in simply bad law that cannot "fit" within the statutory framework, and even - truth be told - within itself as written by the Court.

ALL of this can be traced to the Act of 1952 and the reaction therein of Congress wishing to remove from patent law the power of the judicial branch to set the definition of the word "invention" by the power of common law evolution. This power had been granted to the judicial branch in earlier versions of the statutory law by the branch of the government authorized by the constitution to set patent law.

Such cross-branch "allowances" are not unheard of and can meet constitutional scrutiny IF (and only if) that cross-permission meets other constitutional checks such as not being void for vagueness ( a "check," by the way, that even the current "crop" of Supreme Court rulings fails to meet; which means, that EVEN IF we accept for arguments sake that Congress did not remove the power in 1952, these decisions of the Court STILL fail constitutional scrutiny).

Nonetheless, Congress DID act in 1952 to curb an anti-patent Court and remove the power to set the meaning of the word "invention."

In its place - Congress (and NOT the judicial branch) put in place 103.

One of the NECESSARY aspects that stem from the Court attempt to reach the Court's desired end in applying 103 is that PHOSITA was broadly EMPOWERED in the Court's KSR decision.

But that decision - and the NECESSARY implications of that decision simply do not exist in a vacuum.

Because the Court super-empowered PHOSITA in order to reach a desired end state in KSR, that self-same PHOSITA NECESSARILY needs FAR less "teachings" within any one application. The NECESSARY fall-out is that enablement is greatly lowered and that the hurdle of 112 is NECESSARILY is lowered.

One simply CANNOT have one without the other.

What we see now - and in a direct mirror to the evisceration of patent law of a limitless 101 Gist/Abstract sword - is that by merely wanting an ends regardless of means and wanting BOTH a 103 super-powered PHOSITA and a heightened (the opposite of what MUST come from the super-powered 103 PHOSITA) 112, that there is - quite literally - nothing that can be found patentable IF ANY court so desires.

The very worst of all worlds is now possible: the nose of wax formerly (and "merely" only pertaining to 101) now is in play for ALL of 101/102/103/112.

It is not without irony that before 1952, there was but "one ring to rule them all" in the form of a single paragraph from which that Congress (in 1952) forged the DIFFERENT rings of 101, 102, 103, and 112.

The ONLY salvation possible is for Congress to make the trek to Mordor and throw that One Ring into the fires of Crack of Doom.

This of course is the change in law that I have posited of jurisdiction stripping and a resetting of a non-brow beaten Article III patent court.

Paul Cole wrote: "such that it plausibly amounts to an invention, there is no reason for a judge not to throw the case out as quickly as possible and with as little effort as possible."

This is actually not law. This is politics. Hindsight. The judges aren't skilled in the art. For those reasons they are not in a position to make this judgment and only So, you would then leave claim 16 standing and are only talking about claim 1?

Really, you know that expert system has no structure or meaning? Just a ridiculous statement.

Look, the way patent law works is the specification contains what is new. Here, one skilled in the art like me can spot what they are claiming is new easily.

The game that is being played by Moore and you is you are ignoring what is known in the art. You appear to be saying that it is not known in the art how to make an expert system as recited in the claims. Wrong. Moore is saying that at the time of the patent application it was not known how to detect whether the operator was impaired. Ridiculous and wrong.

Paul, science reality: information processing is real. What in the world do you think you are? Processing information takes time, space, and energy. The conservation of information is the most important law of physics.

Try to address real issues. You have fallen into the trap of the witch trials fabricating abstractions.


"The game that is being played by Moore and you is you are ignoring what is known in the art. You appear to be saying that it is not known in the art how to make an expert system as recited in the claims. Wrong. Moore is saying that at the time of the patent application it was not known how to detect whether the operator was impaired. Ridiculous and wrong."

An important consideration in determining what is "enabled" under 35 USC 112 is the fact that what is "known" in the art tends to increase over time. For example, back in the 1950s or even 1970s, you might have to explain in your patent application how a general windowing system worked if you patent included a claim involved a windows-type GUI. In contrast, in 2015 (soon 2016) the general operation of windowing systems are well-known in software design.

In this case, the only way the Federal Circuit could reach its decision was to effectively take "official notice" of the state of the art for enablement purposes based on no evidence whatsoever.

>In this case, the only way the Federal Circuit could reach its decision was to effectively take "official notice" of the state of the art for enablement purposes based on no evidence whatsoever.

This is the key point that they are making decisions based on using their own imaginations. Moreover, there was another case recently where the opposite conclusion was reached--that an expert system was so well known that it couldn't possible add structure. Taranto decision.

@ Night Writer

The time has come for you to put your expertise on the line.

WHAT do YOU consider, having read the disclosure of the patent in issue, was the new utility disclosed and the new contribution to human knowledge?

How would YOU go about designing an embodiment from the invention? What would be YOUR starting point, and what methodology would YOU adopt to go from that starting point to a workable embodiment.

If you can answer these questions, your expertise is to be respected. If not, then what you have said is mere bullshit.

Moore said:>>> Critically absent from the entire patent is how the existing vehicle equipment can be used to measure these characteristics;

Background of patent: U.S. Pat. No. 6,886,653 issued to Bellehumeur, on May 3, 2005, discloses a system including a galvanic skin sensor that can provide trans-dermal monitoring of a person's skin for ascertaining whether or not the person has consumed alcohol and the person's skin temperature.

Seriously Paul?! Moore's argument is a joke. I am pretty busy tonight. Not sure I want to spend an hour outlining a solution and obviousness arguments.
Can you tell me why Moore's entire argument should not be dismissed based on my quote above?

@ Night Writer

I think you have a good point.

Just now over here we have about 15 minutes of 2015 left, and I shall be opening a bottle of Prosecco to welcome in 2016. Very best wishes for the new year to you and to all readers of this blog.

Mr. Cole,

With all due respect, your ultimatum places YOU on the "mere bullshit" list.

I do expect better from you.

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