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« September Was a Good Month for Patent Eligibility in the District Courts | Main | Purported Public Interest Group Challenges Drug Patent in Qui Tam Action »

October 17, 2016


There are strong arguments that the Mayo/Alice analysis is narrower than generally appreciated.

Very little attention is paid, either in court decisions or in the USPTO Guidance to the requirement to comply positively with one or more of the eligibility categories of Section 101. This omission is astonishing considering that such compliance is an essential precondition of any eligibility enquiry and ought to have a significance on the outcome of any Mayo/Alice analysis.

In particular, the mere recitation of a sequence of steps is insufficient for the claimed subject-matter to fall into the eligible process category, see MPEP 2106 Patent Subject Matter Eligibility and the reference to Gottschalk v Benson which would repay study, in particular in relation to the abstractedness of the claims in issue and the omission in the Supreme Court opinion of any mention of the advantages associated with the method or any new result achieved. Unfortunately there does not appear to be any published version of the specification that was in issue in that case, so we do not know what the significance of the method sought to be patented may have been or what its real world advantages (if any) were, but these do not appear to have been before the Court. To qualify as an elegible process the claimed sequence of steps should be transformational and lead to a new function or result which is the inventor's own discovery, and non-compliance with this requirement is an indicator of a poor outcome.

Assuming that there is some prima facie compliance with one or more of the 101 categories, then the term "directed to" in the first step of the Mayo/Alice analysis could be regarded as somewhat narrow. A process of cooking an omlette involves eggs which are a narural product, and relies on a law of nature that eggs harden from a liquid state under the action of heat, but neither of these things means that the cooking method is "directed to" eggs.

Focus on the improvements over the prior art is clearly a pointer in a favourable direction.


As in Machine or Transformation?

I will refer you to the Bilski Supreme Court case that in noninsetyled terms (and one of two 9-0 portions of that case) that takes your view and refutes it.

In essence Mr. Cole, you are chasing the Windmill of thinking that the Supreme Court cases can be reconciled, one with another (and with all).

They cannot be.

The faster you realize this, the better your energies will be put to good use.

Do I need to say "I told you so" yet again?

"Together, these decisions are expected to play an important role in guiding the formation of patent-eligible claims"


Because two self-interested patent attorneys at some place called "Dilworth" say so?

Funny stuff.

You could at least attempt to take a poll, guys. Not everyone shares your "expectations". But maybe some self-serving propaganda will keep a few naive clients feeding you for a while longer.

The garbled phrase should read: "in no unsettled terms"

I see that the rather unimaginative Malcolm has "borrowed" a new word: propaganda.

Of course, he is simply using his favorite ploy of accusing others of that which he does with his use of that word.

Get well soon, PatentDocs

I am tempted to ask whether the Alice Two-Step is some kind of ballroom dance.

Somehow the phrase "... two-step Alice" prompted this mischievous thought.

I am confident Skeptical will have a viewpoint.

Yes, Mr. Cole, I do have a viewpoint, and at the end of the day, when you have reflected on all of the "I told you so"s, will you realize the disconnect between your admittedly patient and thorough analysis and what is actually happening in US jurisprudence?

Sadly, on that note, I remain...

@ Skeptical

Do you have a sense of humor?

My research reveals that the Alice Two-Step is derived from the Country and Western dance tradition. In the present difficult situation that thought might, perhaps, cheer us up.


I find the current joke of US jurisprudence on this subject something NOT to laugh about.

(outside of that, I have a wonderful sense of humor)

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