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« USPTO on Patent Eligibility -- Example 37 | Main | Supreme Court Denies Certiorari in Amgen v. Sanofi »

January 15, 2019


So, of course, there are, in more or less clear order and not exhaustively: the Constitution, statutes, the CFR, SCOTUS (in their role interpreting statutes and regulation), the CAFC, PTO Guidance and then... PTO examples. While the take-home of the examples seems clear enough, i.e. that new step 2A,1st identification of an abstract idea in the form of a mathematical calculation should turn on recitation of explicit and possibly basic mathematical operations, what is not clear is what case law supports a take-home bifurcating at this particularly engineered line in claim interpretation. If put into practice, this would have the ironic effect of rendering a BROADER claim patent eligible, as in in these examples, but causing a hypothetically NARROWER dependent claim more explicitly reciting the math to be directed to an abstract idea, at least in step 2A,1st. And what if the broader claim, looking to the specification, only is supported for embodiments such as in the hypothetical dependent claim, then would the broader claim still be interpreted according to the take-home here, based only on its plain language? The PTO Guidance and, presumably, the examples are subject to a period of review, so there's time for revision. Meanwhile, conversations between examiners and applicant representatives citing these examples will be interesting, especially given the above hierarchy.


As I have noted already (but it bears emphasis), this new guidance is a FAIL for both it's lack of reach and it's over-reach.

The "over-reach" is because while explicitly calling out the Supreme Court-induced Common Law law (re)writing of 35 USC 101 as having created a Gordian Knot of contradictions, the director attempts to incorporate those same contradictions (albeit, he attempts to do in "layers," with what appears to be "escape hatches" at some of the higher layers.

The lack of reach is that THIS is merely Office guidance (which of course is a necessary "lack," given our government structure of three branches and separation of powers). It has already been pointed out that MANY existing cases, following the layered (provided escape hatches) approaches would come out with OPPOSITE conclusions that SOME panels of the CAFC (as well as other courts of the Article III nature) would come to.


EVEN IF one is "fortunate" to be able to employ successfully the new "escape hatches" in some of the new layers, one STILL has no ability to predict what possible future "luck of the draw" panel one may obtain at a CAFC level, nor with ANY ability to generate any reliance that a patent that passes the executive branch will -- or will not -- stand in view of what the judicial branch "knows when they see it."

Of course, this is a direct result that the Supreme Court's broken score board remains in place.

Let me ALSO note the recent advancement by Justice Kavanaugh in the oral arguments of the California Franchise Tax Board v. Hyatt:

“Kavanaugh suggested, overruling is proper when a precedent is “egregiously wrong,” has “severe practical consequences,” and generates “no reliance.”

There IS a growing realization that what the Court has done with its fingers in the wax nose of patent law eligibility satisfies each and every one of these three factors.

The problem with ex. 38 is that a model IS a mathematical equation. That's what a model is. F=ma is a model for how an object having a given mass responds to a force. The 'elements' of the model are just variables of the equation. So ex. 38 is essentially claiming an equation having certain variables, randomly generating a value for one of the variables, and solving the equation.That substituting the word "model" for "equation" apparently makes the claim "not recite a mathematical concept" is stupidity of the highest order.

Once again, my test is easier and way more direct as to eligibility on a policy basis.

The invention is a method. The result of the method is information. The information is consumed by an amplifier circuit, a non-human actor. It should be eligible.

As to abstraction in the claims; PHOSITA could make and use the invention from the description, and the claims are not reciting an aspiration.

I don't know enough about the art to make a 103 determination, but that seems to me where the claims would fail, if at all.

If the method were producing information consumed by persons, it would not be eligible. This method is not infringed when a person hears the amplified material- but when the transformation of the signals occurs.

Also, PS, gift-certificates are accounting entries, and accounting information is consumed by persons to make decisions about goods, services, and financial assets. Not eligible.

Mr. Snyder,

Your "PS" is most odd, as you seem to want to draw attention to the fact that in a recent case ( https://www.patentdocs.org/2019/01/coqui-technologies-llc-v-gyft-inc-d-del-2018.html#comments ), you have chosen to contradict your own (rather odd) pet theory.

To wit, the claim there is explicitly "directed to" machine consumption: "...request by a user's communication terminal through a wired network, wireless network, or both, comprising:"

So let me repeat a comment from there (to which you have not deigned to reply) here:

Mr. Snyder apparently has abdicated his stance as to eligibility depending on whether consumption of information is by machine (not possible to be abstract) or by a human.

Here, even machine consumption appears to be "fundamentally abstract" because some later utility is utility by humans.

I wonder how a consistent application of a "any later utility by humans" would play out in ALL of patent law....

Would we even HAVE patent law?

Being entirely objective and consistent with the position advocated by Mr. Snyder, everyone should be:

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