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January 16, 2017


Kevin, this case is a poster child for what's wrong with patent-eligibility determinations in the USA today. The claim recites an MRI apparatus. As any 3-year-old can tell you, there's nothing abstract about such an apparatus - it's a big piece of equipment. If the PTO wants to kill the claim, it should do so under 102, or 103, or 112, but it's an insult our intelligence to tell us that what's claimed is abstract and therefore not patent-eligible.

As to the PTAB itself, one can try to excuse the board and say it's only following precedent, but as Nancy Linck pointed out several years ago (we were both in the room when she said it), the PTO should be looking for ways to limit the application of Mayo/Myriad/Alice, not to expand such application. The PTO has no business relying on any decision that talks about "looking for the underlying invention", especially when it "gists" away everything until there's nothing left and ignores the claim as a whole.

Hey Kevin,

With all due respect, I agree with Dan F.: these PTAB decisions are an "insult to our intelligence." Again, what SCOTUS has done in foisting the nonsensical Mayo/Alice framework on us is shameful. In particular to have Breyer suggest the "mind-boggling" example of an abacus as equivalent to "real-time" data processing is equivalent to saying the Sun revolves around the Earth.

Dr. Noonan,

You state: An analysis must start with the claim (or at least that rubric of patent law remains true for now)

I would be remiss if I did not remind you that application of the "Gist" portion of the gift from the Supreme Court makes your statement merely only nominally true.

"Gist" enables ANY court (or Court) to shape the actual words of a claim into some type of desired "directed to" that, dare I say, is exactly like the nose of wax that even the Court itself says to be on guard against.

I would also be remiss if I did not point out that Congress (in 35 USC 112) pointed out exactly who gets to define the invention - and it is not the courts.

Defining the invention - by one tactic or another - is exactly why Congress acted in 1952 to tread the different path of obviousness.

It's tiresome when people complaining about the state of affairs at the USPTO consistently define the "invention" as that which might be described in a patent spec or in a claim preamble. Courts have to deal with the claim elements and what they exclude from the public as a whole. It is an insult to our intelligence to force the USPTO to construe a sham claim, whip out their crayons to invalidate a claim written by a three year old under 112, 102, or 103. Nip it in the bud. Attempting to legally construct a sham apparatus claim gives it more abstract weight than it deserves.

Kevin, et al. Last year my co-authors and I published a paper in AIPLA Quarterly Journal entitled "The Time Has Come to Amend 35 USC 101" 44 AIPLA QJ 171(2016). After despairing at the state of eligibility law, we urge the Congress to take action, because the courts and the PTO are tying themselves into ever more un-pickable knots. This horrible PTAB decision makes our recommendations ever more urgent.

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