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January 14, 2019


"receiving, via the GUI, a user selection to organize each icon based on a specific criteria, wherein the specific criteria is an amount of use of each icon;"

*A* criteria? The singular form is "criterion", the plural form is "criteria". There's no such thing as "a criteria".

Having seen the "quality" of what passes for examination these days, I'm not surprised that the PTO would publish "guidance" in which the PTO displays its apathy toward (or is it ignorance of?) basic grammar. But I am nevertheless disconcerted by that fact.


There is more to be upset about than merely grammar.

I am more upset about the fact that it is expressly stated that the Common Law re-writing of the statutory law of Congress is contradictory, and yet the guidance here attempts to capture the very case law creating the contradictions, as if doing so will yield anything BUT the same Gordian Knot.

Yes, I do notice that there is an attempt here to "Layer" the effects of case law and the attempt to put in layers is an attempt to bypass the contradictions with some "earlier" "stop here" messages (along with a healthy dose of ambiguity). But make no mistake, NO clarity can be obtained with the attempted inclusion of cases that are -- as a set -- contradictory.

As I have also noted, this guidance WILL NOT STOP additional Common Law law writing from the courts to CONTINUE adding contradictory case law.

What SHOULD upset you is the fact that a "broken score board" is STILL not being recognized as such (even as Iancu is explicit in pointing out the state of contradictions).

Iancu isn't concerned with "clarity" or cohesion. He's concerned about making it easier to get "do it on a computer" patents grant. Nothing else matters to him. If anything else mattered, he'd spend a nominal amount of time connecting the Supreme Court's dots. The problem with doing that is you end up destroying software patenting, which Iancu is afraid to do because it would offend his "customers." Never mind that it's the right thing to do.

The third comment above appears to be the same poster who posts misguided items "at that other blog" (using a historical pseudonym, but having NO actual valid or cogent association between the chosen pseudonym and the feelings of the poster).

The "right thing to do?" What do you have against the form of innovation most accessible to the most people?

There is a far simpler line to be drawn here.

Take the claim — as a whole — and viewed in light of (context) of the specification, and ask a simple question: is a machine (a computer) being claimed (or “directed to”).

Yes, there are things that a human COULD do, but a machine claim may ALSO do.

This is true is MANY art units outside of those involving computing. Heck, method claims need not even recite items of the other statutory categories (as the Process category is its own distinct category and not a sub-category of the “hard goods” categories.

The penchant for somehow wanting a computing innovation to be held to a (nebulous) higher standard is - I posit - an offshoot of the attempts to re-animate the Zombie Mental Steps Doctrine — which died out long before major computing innovation was on the scene.

So, rather the opposite of what the historical pseudonymed poster would indicate, it is the right thing to do to promote “software patenting.”

In SmartGene v. ABL (Fed. Cir. 2014) the Court reviewed patent US6081786 relating to a method for guiding the selection of a therapeutic treatment regimen for a patient with known disease comprising providing patient information to a computing device comprising a first database with different treatment regimes for said disease, second database comprising rules for evaluation and selecting the treatment regime of said disease, a third database with ancillary information and the generation in said computing device of a list of possible treatment regimens in order of recommendation and auxiliary information. According to the Court this claim does not meet section 101 of the law as per Cybersource Corp. v. Retail Decisions because it deals with process defined simply by the use of computer to perform a series of mental steps that a person, aware of the steps, could perform in his mind.

This conclusion based on mental steps creates a cleavage between simple (which can be executed by the human mind) and complex methods (impracticable of executions by the human mind), ie the patentability determined by the complexity of the method. In addition, this criterion is left out of the European criterion, which is not good for harmonization of the examination. According to the EPO examination guide, the mere involvement of mental steps does not mean that the material is considered non-technical (T643/00). In EPO at T643/00 the Court stated that an array of menu items on the screen may involve technical considerations by allowing the user to manage technical tasks such as searching and retrieving images stored on an image processing device of a more efficient or faster even though a mental assessment by the user may be involved

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