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January 11, 2018

Comments

Interesting take: the importance of construction.

Of course, this already falls into the Two Step dance and the unbridled (unrestrained - and therefore arbitrary - vague [as in, Void for Vagueness]) power in the Gisting step of the Supreme Court's "Gist/Abstract" sword.

The very act provided by the Supreme Court of "evaluating the 'directed to' aspect of a claim is a violation not only of the law as written by Congress, but of the separation of powers limiting the authority of the Supreme Court.

There is no wonder then that lower courts (and not just the CAFC) will - in applying what the Supreme Court has put forth - create an endless mess of the statutory law.

Will Congress wake up and take back its authority provided by the Constitution?

Sadly, I remain:

A very useful decision.

The claim when understood is of a transformative nature, and therefore appears to fall in the positively eligible "process" category of section 101.

It is worth quoting the concluding part of the decision which is arguably of considerable importance:

"Apple, Affinity Labs, and other similar cases hearken back to a foundational patent law principle: that a result, even an innovative result, is not itself patentable. See Corning v. Burden, 56 U.S. 252, 268 (1853) (explaining that patents are granted “for the discovery or invention of some practicable method or means of producing a beneficial result or effect . . . and not for the result or effect itself”); O’Reilly v. Morse, 56 U.S. 62, 112–113 (1853)(invalidating a claim that purported to cover all uses of electromagnetism for which “the result is the making or printing intelligible characters, signs, or letters at a distance” as “too broad, and not warranted by law”).

Here, the claims recite more than a mere result. Instead, they recite specific steps—generating a security profile that identifies suspicious code and linking it to a downloadable—that accomplish the desired result. Moreover, there is no contention that the only thing disclosed is the result and not an inventive arrangement for accomplishing the result. There is no need to set forth a further inventive concept for implementing the invention. The idea is non-abstract and there is no need to proceed to step two of Alice."

To minimise our cases failing Alice, it is important to keep Corning v Burden in mind and ensure that the features needed to obtain the new result are clearly and explicitly stated. In the infamous Ariosa v Sequenom decision the second and arguably critical feature was "amplifying a paternally inherited nucleic acid from the serum or plasma sample ..." Although expressed as a process step, that feature specifies a result and nothing more. Questions that come to mind include: Amplifying what - the whole sequence or a selected part of it? By what reagents? To what level of amplification, e.g. for fluorescence or radiographic detection? Inclusion of answers to these questions which relate directly to the Corning dictum would have made it much harder for the Federal Circuit to reach the decision that it did.

@ Skeptical

I completely agree with you about vagueness, and briefs that I have filed make precisely that point. I also agree with you on the separation of powers point.

But self-help is better than no help, and is I believe in keeping with US traditions (over here Samuel Smiles wrote a book in the 19th century with precisely that title). We can help our clients by taking note of the case law relevant to each of the four eligible categories, and ensuring that the broad independent claims that we draft fall into the selected one of them.

@Paul Cole:

Why are such "result" based steps in method claims not treated under the now broadened (as of Williamson) 112(f). Claiming a "step for" achieving a result is fine, and allowed by 112, but in turn the step limited to the algorithm for achieving that result that is in the spec.

As the federal court has explicitly ruled that the actual words "means for" mean almost nothing with respect to apparatus claim, why has that not crossed over into method claims yet? Claiming a step for achieving a result--even absent the words "step for" should invoke 112(f), and a lot of this would be taken care of.

Your repeated calls for 112(f) only show that you have a rather crabbed view of that section of law, 21f2f3fff

Let me guess: you are not in favor of software being patent eligible.

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