About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Conference & CLE Calendar | Main | Celgene Corp. v. Peter (Fed. Cir. 2019) »

August 04, 2019


"But for the 5,000th time, we have more well-founded and objective tests for these issues in §§ 102, 103, and 112. Lumping obviousness and written description into § 101 results in the skewed analysis that you see here and in other eligibility decisions."

Hey Michael,

Completely agree with your statement. Section 101 is not the correct statute to judge these claims by.

What complete and utter b.s. on the part of the court. Shame on the district court for ruling as it did, shame on the CAFC for sustaining the district court's judgement, and shame again on the CAFC for denying rehearing en banc. There's NOTHING abstract about:

An apparatus, comprising:
a control device ...;
a transceiver ...; and
a controller...

You can touch that apparatus.

Is weed now legal in the District of Columbia? Sure seems like it.

As pointed out (now, more than five years ago), the Supreme Court has fashioned a weapon comprising a double-edged blade: the leading edge is the “Gist,” in which the Court dispenses with the words of Congress as to exactly whom has been granted the great power (and the great responsibility) of defining what the invention is; and the trailing edge is the “Abstract,” in which the Court violates the Void for Vagueness prohibition by not actually defining the term (not its parameters), thereby inserting an open-ended (And never ending) RE-WRITING of statutory law with a Common Law mechanism that is untethered to any actual interpretation OF LEGAL WORDS of statutory law.

No matter how much glass anyone tries to put on the “Gist/Abstract” Sword — and often merely with an Ends justifies the Means mantra — the legal fault remains in what the Supreme Court has done.

1) A workable solution turns on the meaning of two words: "process" and "abstract".

2) Abstract inventions are not the same as abstract claims, so we have two separate problems.

3) With no human mind, there can be no abstraction.

There is little controversy around inventions claimed as machines, compositions of matter, or manufactures. The trouble is mainly with inventions claimed as processes, because just about anything people do can be considered a process.

Many software, business, and diagnostic methods are claimed as processes. The Supreme Court has firmly declined to define or limit the meaning of process. Common sense suggests at least one thing that we can rely on regarding processes: every process must have an intended result.

Just as our trouble is limited to just one of the four permissible kinds of inventions listed in Section 101, our trouble among the three judicial exceptions to Section 101 is also mostly limited to just one exception.

We don’t have much controversy with laws of nature or natural phenomena, but we have serious problems defining “abstract ideas”. One reason for that trouble is that “abstract ideas” are actually two different problems.

Inventions are things in the world, while patent claims are words used to describe them. Every patent claim is an abstraction.

Claims that are too abstract will turn on extrinsic factors such as the state of the prior art and the construction of the notional person having ordinary skill in the art.

On the other hand, there should be something easily identifiable about an invention that makes it intrinsically abstract.

What makes an invention intrinsically abstract? Mere intangibility does not preclude eligibility according to the Supreme Court.

The most basic definition of the word abstract, from its Latin root, is when one thing is drawn from another. We usually invoke a meaning as that which is drawn, but we can also define abstraction as a form of consumption.

Thus my test: is the invention a process? If yes, is the useful result of performing the process some species of information? If yes, does the utility of the invention arise from human consumption of that information? If yes, the invention is abstract and ineligible.

A human mind consuming information should be beyond the reach of the Constitution.

If the utility of the process arises from non-human use of the information, the invention should be eligible as a process, because without a human mind to host it, there can be no abstraction.

While the claims may describe an eligible invention, but unless they meet the requirements of Sections 103 and 112, they will not be valid. Intrinsic abstraction should be dealt with at the pleading stage, and extrinsic abstraction should be managed as a mixed question of law and fact, with appropriate adversarial safeguards- in other words, exactly as claims are construed today in Markman procedures

This simple framework handles the patent problems of the information age. It allows for patenting of new, useful, non-obvious algorithms and standards such as MPEG, advances in encryption, robotics, networking, genetic medical devices, etc. while removing all kinds of processes relating to human-created meaning, such as stock trading, online shopping, user-interfaces, games, etc.

Improving techniques of handling information unrelated to the human meaning of the information would still be eligible inventions.

Human affairs are impossibly ambiguous and should not be the proper subjects of the patent system. This is the philosophical core of the current debate.

Ideally, all logic and instructions should be excluded from the systemhttps://papers.ssrn.com/sol3/papers.cfm?abstract_id=2709289 details these ideas in depth, including scholarly support, sample cases, etc.


(not its parameters) => (nor its parameters)
how much glass => how much gloss

Mr. Snyder,

You keep on wanting to push your agenda and you keep on losing credibility with statements like:

“There is little controversy around inventions claimed as machines, compositions of matter, or manufactures.”

When you are digging yourself into a hole, digging more, or digging faster will NOT get you out of that hole.

This is turning into a traveshamockery.

The comments to this entry are closed.

June 2024

Sun Mon Tue Wed Thu Fri Sat
2 3 4 5 6 7 8
9 10 11 12 13 14 15
16 17 18 19 20 21 22
23 24 25 26 27 28 29