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« In re Depomed, Inc. (Fed. Cir. 2017) | Main | Webinar on Patent Prep and Prosecution »

March 09, 2017


Hey Michael,

Every time I hear a court say what the claimed invention is "directed to," it's like someone scratching a chalkboard with their fingernails. 35 USC 112 says in explicit terms that the invention is that which is defined by the inventor in the claims, and all the language in it. SCOTUS should frankly be ashamed for ever having created this preposterous, nonsensical and broken Mayo/Alice framework.

Michael, your final point is well made and of course, very much in line with how the EPO have viewed inventions. At the risk of sounding, perhaps a little prim, I think that if you cant define what problem your invention sets out to solve and just how it does that, then its hard to understand why you think you have an invention.

"Every time I hear a court say what the claimed invention is 'directed to,' it's like someone scratching a chalkboard with their fingernails."

Too true. What does this even mean, "directed to"? A claim is "directed to" what it claims, not just part of what it claims. The supposed "Alice analysis" is absurd on its face.


Your answer is a little too prim, given the US jurisprudence and the amount of "patent profanity" developed here.

The Problem-Solution approach is just not what our law is geared to here in the US. Trying to use the "eyeglasses" of the EPO to see what is going on here will only result in blurred vision.

I have recently become very interested in positive section 101 compliance.

The court starts off: We begin our analysis at Alice step one: “whether the claims at issue are directed to a patent-ineligible concept.”

Would it not have been a good idea to consider first of all whether there is any case that the claimed subject matter fits within any of the eligible Section 101 categories?

The definition of "machine" in MPEP refers to Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570, 17 L. Ed. 650 (1863) and Corning v. Burden, 56 U.S. 252, 267, 14 L. Ed. 683 (1854).

The claim recites "an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors." In other words the claim recites the result or benefit achieved without reciting any structure or arrangement that enables the benefit to be achieved.

Such broad generality accords neither with the holding in Burr nor with the holding in Corning. It is therefore strongly arguable that the claim recites insufficient structure to properly fall within the "machine" category.

The courts have become so obsessed with the Mayo/Alice framework that they forget essentials.

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