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August 26, 2019


"Nonetheless, § 101 is once again the wrong tool for applying the prior art motivated invalidation. There are other parts of the statute to serve that function."

I think you are confusing inquiries. There are 4 requirements in 101 for receiving a patent. (1) someone must invent something; (2) that something must be new; (3) that something must be useful; and (4) that something must fit into one of the categories.

The Alice test is attempting to evaluate requirement (1) above, not (2) (which is better addressed in 102/103). Though they both involve analyzing what was known in the art, they are different inquiries. Sometimes (usually?) there may be overlap, but that doesnt change the fact that it is a different inquiry.

The other big difference is that 102/103 specifically examine the 'claimed invention' -- not 'the invention' as 101 does -- and these are explicitly different things according to definitions in USC 100.

Consider this example: I live in a dorm room. I rarely lock my door. In fact, the only time I ever lock my door is when I am watching my little pony (which I do naked). Did I invent or discover something?

"I claim: A door for entering a room, the door comprising a lock, wherein the door being in a locked state indicates that an adult male occupant is watching my little pony naked inside the room."

So I didn't invent the door, or the door lock, or the method of locking the door. Those elements were 'routine and conventional.' I did ascribe extrinsic meaning to the door being locked.

So, did I invent something? If so, what did I invent?

I could also add a lot more conventional and routine parts to the claim-- a door jamb, a doorknob, etc. but that doesnt impact the analysis of whether I invented or discovered something.

(Also note -- assuming no adult males ever watched my little pony with the door locked before me-- that the claimed invention itself is novel under 102, non-obvious under 103, and trivially enabled under 112, which just shows you the inquiries are different).


… or is it ping?

I've lost track.

Re: "..its 2003 priority date was well before wireless transceivers were being added to all kinds of conventional devices."
? Numerous installations of door and window burglar alarm systems with wireless signaling of their open or closed positions?

I like Comment #1 for its listing of the requirements set by 35 USC 101. First off, you have to have an invention.

This is what lies behind PCT Rule 5. You have to describe your invention, already in your patent application as filed, so we know what it is. Whether it is a patentable one remains to be seen. In 101, all we are interested in is eligibility. The invention to be assessed is the one described in the application as filed.

But what does "invention" mean? Context is all. In 35 USC the context is contributions to something that in the 18th century was identified by the term "useful arts". Nowadays, we call the application of natural science "technology". The Federal Circuit are now busy enquiring whether the thing identified in the application as filed does indeed meet the definition of "invention" in the context of the useful arts.

But that's only right and proper, isn't it?

Notably MaxDrei, the US Sovereign choice of Useful Arts is BROADER than the technological arts.

Do you really need to be reminded of this yet again?

Additionally, you are on record as having NOT defining "technology." So here, I have to wonder exactly what do you mean by "application of natural science."

Do you by chance include in that application the works of Deming et al? Why not?

That you are approaching this topic without any predetermined "objective," and that "objective" includes not a small bit of obfuscation, well, I remain:

Additionally (now that I am commenting), the "definition" posted above in the first post as to what 35 USC 101 actually entails is incorrect.

As you should know by now, the Act of 1952 which SET 35 USC 101 was explicit in removing the notion of "invention" from what that era's Supreme Court had made a muckery with patent law about (in dozens of similar terms).


There are only two elements of 35 USC 101 that are controlling in and of 35 USC 101 itself, and these were intended to be extremely LOW bars to entering the patent system.

Those only two elements are:
1) Can the innovation be portrayed in at least one of the statutory categories; and
2) is the utility of the innovation within the Useful Arts -- that is, is the utility not of the Fine Arts.

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