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July 24, 2016


Above, you helpfully write:

"Under current jurisprudence, a technical solution to a "non-technical" problem does not pass muster under § 101, while a similar technical solution to a problem occurring in a "technical" field would. The line between what is technical and non-technical however, is quite thin.........."

And later on you suggest that S 101 is being used as "a proxy for obviousness".

For this reader from Europe, it is startling, how the courts in the USA are now developing a jurisprudence that looks as if it is inspired by the jurisprudence in Europe, a jurisdiction which has been engaged since 1978, over by now literally thousands of borderline cases, with the key question, where exactly (on the facts of each particular claim) to draw the line between "technical" and "non-technical".

Co-incidence, or what?

I don't know if it is coincidence or not, but the Federal Circuit and USPTO have been enforcing the "technical solution to technical problem" approach off and on since Alice. The statute and the Supreme Court do not explicitly require such an analysis.

"On its face, the '933 patent appears to disclose a useful, time-saving invention -- a computer program that can perform calculations that would otherwise take tens or hundreds of hours manually."

Programmable computers can do math faster than people?

That's amazing. Oh wait -- no, it's not. It's old news. It was old news back in 1950, more than a half century ago.

Since math is eligible for patenting, it makes total sense that doing math on an old programmable computer should also be eligible for patenting.

Oh wait: math isn't eligible for patenting.

This is all so complicated! Why can't we just let people patent doing math on a computer in a zillion different contexts? That sounds like a wonderful world to, like, ten or twelve people who habitually express their confusion here about why 300,000 patents a year isn't nearly enough. We should respect those people!

Thanks Mike. As to your "on and off" thought, I suggest it might depend on the make-up of the Panel (at the PTO and the Fed Ct, in any one case). I give you that famous quote from Max Planck to the effect that a new way of looking at stuff does not triumph when oldsters drop their established thinking and change their minds but, rather, only when a new generation of thinkers comes through, familiar with it during the time when they are growing up.

Until courts define "technical" and "abstract" all such cases will continue to amount to "we know it when we see it".

The statement in OIP Techs that "relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible" is unambiguously a 103 rationale. But it's little more than a gratuitous kick in the head to claim that's already down. Unless the courts are going to uphold claims that "rely on a computer to perform non-routine tasks," it forms no part of the 101 rejection.

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