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March 20, 2018


HP argues, "That means a fact issue will arise in virtually every case, because for a patent to issue in the first place, every claim should at least allegedly recite something new". Well, uh, yeah. Sorry to burst your post-Alice bubble thinking that patents are just wallpaper.

It's attorneys who make these kind of arguments that give the other 1% a bad name.

To counter the notion supplied by MPEP 2106:

An important aspect at the examination level is the "binding" rules for examiners as to when Official Notice (that is, that very "conclusory statement and nothing more" avenue) may and may not be taken.

One avenue that is forbidden: to establish the state of the art.

While state of the art is typically thought of in regards to the prongs requiring LESS evidence such as novelty and non-obviousness, state of the art certainly covers the more heavily evidence-required state of "well-understood, conventional, and routine" or in other words, in widespread use.

The Office has already barred itself from merely swinging the Court's "Gist/Abstract" sword.

The following statement from the write-up is in error:

"If this is the case, then one must "consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application." Well-understood, routine, and conventional elements do not."

Transformation may very well happen from the ordered combination (one may read that as "configuration" of elements, each of which in their own stead are eminently well-understood, routine and conventional.

Quite in fact, ALL matter (anything within the statutory categories typically considered to be "hard goods") are - at their core - merely configurations of elements (elementary particles) that are eminently well-understood, routine and conventional. For such, it is ENTIRELY the configuration or "ordered combination" of the underlying well-understood, routine and conventional items with which innovation and invention inure.

Will the anti-patentists recognize the frailty of their own "logic?"

I remain:

Your point is taken, but I think you and Mr. Borella are actually in agreement on this point; you just are looking to clarify any confusion from the phrasing to note that elements and combinations of elements must be considered.

He has a good point and I've updated the post with a parenthetical.

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