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« In re Tropp (Fed. Cir. 2018) | Main | Webinar on EU Guidelines for Patenting AI and Machine Learning Technologies »

December 13, 2018


"The Mayo/Alice test is clearly not fully evolved."

Hey Brittany and Anthony,

I disagree: the nonsensical and broken Mayo/Alice framework is unworkable. As I've said repeatedly, I could do better using a Ouija board than to apply this unworkable framework. This Frankenstein monster was created by SCOTUS. They should never have created it in the first place. But their failure to at least fix it by defining what they mean by "abstract ideas" so us "mere mortals" can even understand what this framework is represents appalling conceit and arrogance on their part.

Alice-Mayo complaints would get more sympathy if not so often presented in cases with obvious obviousness issues as broadly functionally claimed. Isn't a "self-evolving generic indexing of information" that would permit users to access search parameters based on what other users may have previously conducted been part of what Google and others have been providing for internet search result listings from their beginnings?

"Alice-Mayo complaints would get more sympathy if not so often presented in cases with obvious obviousness issues as broadly functionally claimed."


There might be fewer such complaints if SCOTUS would do its job, and tell us "mere mortals" what they mean by "abstract idea." Instead, as SCOTUS brazenly did in Alice, as they did before in Bilski, they simply refuse to do so. The fact that they interjected "inventive concept' into that framework simply compounds their error by conflating 101 with 103. So if obviousness is the "real issue," stick with resolving it under 103, not under 101.

I would posit the opposite of:

"Alice-Mayo complaints would get more sympathy if not so often presented in cases with obvious obviousness issues as broadly functionally claimed."

These types of cases for which other sections of the law would EASILY work only all the more show the infirmity in using 101 as the "catch-all" it was never intended to be.

That is, if one understands what 101 was intended to be (by Congress).

Skeptical [anon], by now readers should be well aware that Alice and Mayo join earlier Sup. Ct. judicially created unpatentable subject matter exceptions, as exceptions to 101, NOT based on the language of 101.
They should also be well aware of why it is not true that "other sections of the law would EASILY work." Because they typically require an entire very costly trial and appeal, whereas unpatentable subject matter is a preliminary matter that can be raised by motion on the pleadings before any other trial expenses even start.
It does not help to confuse valid criticisms of this practice with its existing realities.

My modified comment from a recent thread:

An abstract invention is not the same thing as an abstract claim.

An abstract invention is an eligibility problem. An abstract claim is a patentability problem.

All information is intangible, but some information is not abstract.

Information consumed by human beings is always abstract. Without a human being, there can be no abstraction.

A method which gains its utility via the processing of some species of information and whose result is new and useful information is an information invention.

Information inventions where the utility arises by non-human consumption of information should be eligible inventions.

Information inventions where the utility arises by human consumption of specific information should be ineligible for patenting.

Abstract claims mean the claims are too abstracted from the invention, and thus do not encompass any particular invention. This abstraction can arise from obviousness, failure to demonstrate complete grasp of the invention, or the use of components in their designed capacity to produce variations, not innovations.

What did I miss?

Mr. Morgan,

You have confused ease of expediency with ease of law.

I suggest that you recognize the difference in an attempt to gain (regain) a sense of Rule Of Law.

"Skeptical," as with quite a few other commentators, on this subject you are confusing what the present law and practice is with what you would personally like it to be.
EG, yes, the Sup. Ct. left the term "abstract" in undefined confusion. But absent Congressional action, that leaves it up to the lower courts [here, the Fed. Cir.] to work that out. [Which, BTW, is not unusual for Sup. Ct. decisions.]

Mr. Morgan,

You err in presuming that, on this subject, I am confused at all, much less confusing what the present law is with what I would personally like the law to be.

You assume that a current state of what "is" IS a proper view of what the law IS. As is typical with glossing over fundamental disconnects, such is driven by an alignment with the Ends reached, and a closure of critical thinking as to the Means used to arrive at those Ends.

Such a "Ends justify the Means" shortcut view of what IS does a grave disservice to ANY understanding of the Rule of Law.

ESPECIALLY in law (and the Rule of Law), such thinking (or lack thereof) is a grievous fault, not an attribute to be ignored, much less adhered to.

This critical thinking state is "thing" that I personally want things to be.

First step: recognizing when a broken scoreboard condition exists.

It is only after such recognition is obtained, can one then think critically about that condition and how that condition affects the Rule of Law.

Let me note a particular Rule of Law evidences in the last paragraph of your most recent comment:

To the notion of "not unusual" for lower courts to "work out" a new Rule of Law written by the Supreme Court is a truism. I doubt that anyone would argue with the truism itself. But that does not address the larger Rule of Law that is implicated with any such type of "working it out."

Do you understand why?

Here is a hint: the judicial branch does not have unfettered ability to engage in the law writing that comes from the Common Law law writing approach.

That type of power is not in place in the U.S. legal system.

Is there such a thing as Common Law law writing power?


Is that power unlimited?

Absolutely not.

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