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August 01, 2017


Hey Joseph,

Yet another "poster child" for why the nonsensical and unworkable Mayo/Alice framework needs to be dumped ASAP. How this claimed invention (filtering and interpreting real-time sensory data from an electrical system) can be deemed "abstract" under 101 blows my mind. If it is truly just a "functional result," it should be judged under 112, not 101.

Perhaps, the problem that the district court sees is that many practitioners in these section 101 cases attempt to disguise means-plus function claims as questionable structure claims. The court is looking for some inventive structure in at least one element and sees none. In this case, each element of the claim 1 could have been written in a means plus function format. To be fair, I have not read the patent specification to determine if any such structure can be found, and if such structure is linked to its corresponding function.

I also understand that the "broad" electrical monitoring and correction claim could have been analyzed under 102/103, but the court's do not seem to want to go there. Was each step known in the art? Which is the inventive step? Does the patent explain what is actually inventive about claim 1? What story does the patent specification tell? It is almost like the courts are analyzing claims in some form of prima facie 101. If the courts do not identify any structure to define a particular element, then they are not going to parse the specification for that structure. That job is for the practitioner.

My point is if a practitioner desires to define an "inventive" process by function, then use P6, and force the court to look to the specification for that linking structure. And of course, lay out what you believe are the inventive features of the claimed process.

No invention there. We need a better way to find that out early, but with more rigor than the totally subjective 101 inquiry.

Also, of course, the problem is that all information is abstract, but some information my meet all of the criteria for patenting.

But how to approach distinguishing them?

Is the nature of the alleged infringement something that occurs "totally within the mind?"

If not, then "abstract" no matter how NOT defined is not likely being used correctly.

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