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« Scentsational Technologies LLC v. PepsiCo, Inc. (Fed. Cir. 2019) | Main | Senate Proposal for Section 101 Reform: Effect on Biotech/Pharma Inventions »

May 23, 2019


On its face the bill seems to be a step forward. But the 'specific and practical utility' in the definition of useful is an invitation to shift the past 101 issues now to 100. 'Specific and practical' is merely the inverse of an 'abstract idea' and is as such subject to the same potential for confusion. Just how specific is specific enough? And what on earth are the boundaries for practical? And must claimed ideas be both specific and practical? Based on the guidance and court cases dealing with the 'abstract idea', switching to an equally vague 'specific and practical' requirement is not inspiring any confidence. To make matters worse, the requirement 'through human intervention' seems entirely artificial. At least on a literal understanding, this requirement may well turn into another barrier for medical diagnostics, AI/machine learning, and software-type applications. Lastly, it seems odd to me that 101(b) focuses on the claim-as-a whole. Was there ever a proper analysis that would not focus on a claim as a whole? The directive to consider a claim in its entirety should rather be an agency directive to the examining corps. In the end, I am not sure if this bill will provide any clarity.

The "through human intervention" clause may be a back-door to the law of nature / natural phenomenon exceptions, and maybe even some abstract ideas (e.g., your math is not patentable because it exists outside of human experience).


You venture into a rather conflated Land of MIsunderstanding vis a vis “math.”

Please remember to distinguish between:
math (a type you seem to want to refer to);
applied math (for which I would include most all engineering, as well as the view discussed by Ternary over at IPWatchdog); and
MathS (a natural philosophy that involves aspects of math and applied math as distinguished here.

I would further posit that our Sovereign’s Useful Arts May well contain aspects of BOTH applied math as well as MathS.

I would also posit that Magritte’s Deception of Images applies (This is Not a Pipe) in that the man-made constructs BUILT of “math” are NOT the item to which the constructs have been built to model and “explain.”


As a student of all of history, innovation, technology, philosophy and law, I would agree with you and note that the actual underlying danger here is LESS any particular words of Congress and MORE the addiction to policy setting in the statutory law land of patent law that our Supreme Court has shown time and again an inability to keep their fingers out of.

This is precisely why I have formulated not one but two cogent legal mechanisms (one for that branch of the government actually allocated THE Constitutional authority to set the parameters of patent law — and another for the [overstepping] Branch with which to extradite itself from the Gordian Knot of their meddling).

I eagerly await any cogent rebuttals to either of the mechanisms that I have advanced.

Will I see any such inte11ectually engagement (to its logical Ends)?

Sadly, I remain...

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