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May 16, 2017


Hey Kevin,

Nice write up on this proposal by the AIPLA on revising 35 USC § 101-I hope it gets traction in Congress. I particularly like the fact that it makes no mention of "abstract idea" being relevant to patent-eligibility. I guess that AIPLA has decided that if SCOTUS won't define what this term means (i.e., per Alice), than perhaps it shouldn't be part of the patent-eligibility equation in 35 USC § 101 at all.

I would say, "is known to exist in nature". That stupid rule prevented GE from getting a patent on the diamond it invented.

If I can correlate A with B, is that patentable? Would that be a process that can be performed "solely in the human mind?" I'm thinking of a Mayo v. Prometheus situation.

At first sight a very useful and workable proposal It deserves to gain traction.

"or can be performed solely in the human mind" would cover a claim limited to the correlation. A claim that further recites ways of detecting that correlation, not otherwise known in the prior art, might (and I emphasize might) be a different story.

This comment from SRG reminds me of the differences inherent in discussions of math, applied math (aka engineering), and Math(S) - the philosophical extension of both math and applied math.

And it also reminds me that the focus is obscured just a bit with the thrust of the question.

Patents protect utility.

A thought - ON ITS OWN - does not have the utility that patents seek to protect. If there is an implied attempt to indicate that patents "cover" these things known as purely mental steps, then that attempt is not an attempt at clarity, but rather, it is an attempt at obfuscation. It is a moving of goalposts from what a claim may be to a claim GEARED ONLY to a "mental steps" ideological framework.

The "solely" aspect is meant to reinforce a concept already present in patent law, but that has been the focal point of a renewed (some may say "Zombie") attack based on that decrepit mental steps theory.

As other patent blogs have noted, and as one certain patent blog owner has even coined a phrase describing the situation, there is a very real difference between any claim - taken as a whole - that exists SOLELY in the mind, a claim that is written (painstakingly) entirely in "objective physical structure terms" and a claim that exists in a Vast Middle Ground, with ELEMENTS of structure, perhaps mental steps, and other PURELY OPTIONAL claim formatting.

The patent system has long been under attack by those who would see the merely optional claim form of "objective physical structure" NOT be an option.

As might be expected, this attack circles around the single most accessible form of innovation in the world: software.

However, it should be kept sharply in mind, that as long as one is at least in the Vast Middle Ground, one is NOT in the "entirely in the mind" zone that this new rendition of 101 is meant to emphasize.

To that end, Dr. Noonan, your comment of " A claim that further recites ways of detecting that correlation, not otherwise known in the prior art, might (and I emphasize might) be a different story." is NOT correct as to what the aim of this legal change is.

You may be correct with that comment as it may apply (or not apply, depending on the whims of whichever judicial panel that you draw) with the CURRENT law, as the current law has been mashed (like a nose of wax, even).

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