The disposition of Bilski rested on a holding that Bilski’s claims were directed to an abstract idea – hedging. (http://www.supremecourt.gov/opinions/09pdf/08-964.pdf)

The root case for “abstract” is Le Roy v. Tatham, 55 U.S. 156, 174-75, 185-86 (1852) (http://supreme.justia.com/us/55/156/case.html).  This case is cited in Bilski on page five of Justice Kennedy’s majority opinion.  Here are a few excerpts:

The word "principle" is used by elementary writers on patent subjects, and sometimes in adjudications of courts, with such a want of precision in its application as to mislead. It is admitted that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of machinery, a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself under the patent laws. The same may be said of electricity and of any other power in nature, which is alike open to all and may be applied to useful purposes by the use of machinery.  Le Roy, 55 U.S. at 174-75.

That the main merit -- the most important part of the invention -- may consist in the conception of the original idea -- in the discovery of the principle in science or of the law of nature stated in the patent, and little or no pains may have been taken in working out the best mode of the application of the principle to the purpose set forth in the patent. But still, if the principle is stated to be applicable to any special purpose, so as to produce any result previously unknown in the way and for the objects described, the patent is good. It is no longer an abstract principle. It becomes to be a principle turned to account, to a practical object, and applied to a special result. It becomes then not an abstract principle, which means a principle considered apart from any special purpose or practical operation, but the discovery and statement of a principle for a special purpose -- that is, a practical invention, a mode of carrying a principle into effect. That such is the law [he observes] if a well known principle is applied for the first time to produce a practical result for a special purpose has never been disputed, and it would be very strange and unjust to refuse the same legal effect when the inventor has the additional merit of discovering the principle as well as its application to a practical object.  Le Roy, 55 U.S. at 185-86.

Considering that the abstract idea in Bilski is hedging, which in view of Le Roy v. Tatham equates an abstract idea to a law of nature or mathematical formula, hedging is essentially viewed by the Court as equal to a law of nature – a basic principle.  Laws of nature and mathematical formulas are actually not abstract in the sense of being loosely defined, which is how I initially read “abstract ideas” in Bilski.  Instead, the opposite is true.  A claim to an abstract idea is actually very specific, such as a claim to the Pythagorean Theorem, addition, electromagnetism, or even gravity.  Those are very specific things just as hedging is very specific – or concrete, but I will get back to that.  A thesaurus is quite helpful in finding a single word with the same meaning as abstract that is more easily understood.  Conceptual.  An abstract idea is accurately considered to be conceptual as in, “The claim of Bilski was directed at the concept of hedging.”  With this definition in mind, the abstract idea holding makes more sense.  But, it turns out that abstract ideas are not actually abstract at all. 

Nevertheless, I still think the Court took a few mental leaps.  For example, hedging didn’t necessarily always exist.  Hedging is a method developed by man to mitigate risk.  Certainly hedging has been around for centuries.  So it must be that when a basic construct created by man becomes so well known and commonly practiced, the concept becomes principle along the same lines as gravity.  But considering the precedent of Chakrabarty where anything under the son made by man is patent eligible, wouldn’t Bilski have been better, or at least more simply decided under § 102 or § 103?  Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)( http://supreme.justia.com/us/447/303/case.html).  Otherwise it seems there is another test missing in the reasoning of Bilski that can be used to tell us when a construct of man becomes so ingrained that the construct is instead conceptual to a level of being a principle.

So it seems that an abstract idea is simply a conceptual process lacking an application that does not preempt all uses thereof.

In view of the June 28, 2010 memo from Robert Bahr (USPTO Acting Associate Commissioner for Patent Examination Policy) providing post-Bilski process claim examination instructions, when a process claim does not meet the Machine or Transformation test, the claim is to be rejected under § 101 unless there is a clear indication that the claim is not directed to an abstract idea.  (http://www.patentbuddy.com/showPublication?pubId=1704)That leads me to my next point – traversal of an assertion that a claim is directed to an abstract idea.

Traversing an Assertion that a Claim is Directed to an Abstract Idea

To traverse a holding that a process claim is directed to an abstract idea, it seems necessary to be able to show how the claim does not preempt all uses of the process involved in the claim.  Under Flook, the showing must be more than a restriction to a particular field of use and involve more than token post-solution components.  Parker v. Flook, 437 U.S.  584, 590 (1978)(see footnote 11)( http://supreme.justia.com/us/437/584/case.html).

Another possible way to traverse an assertion that a process claim is directed to an abstract idea is to attack the grounds upon which the process is considered to be an abstract idea.  For example, the majority in Bilski cited Judge Rader’s dissenting opinion where he asserted that “[h]edging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.”  The tactic here may be to lodge a demurrer as to the asserted facts and traverse the conclusion that the construct of man has reached the point of being an abstract idea, a.k.a. a principle.

But Wait a Minute…

My investigation into the rightful meaning of “abstract idea” lead me to a thesaurus as previously mentioned.  I noted that “concrete” is an antonym of “abstract.”  That reminded me of the useful, concrete, and tangible (UCT) test from State Street … the same case the Bilski Court refused to endorse.  Could it be that the reason the UCT test didn’t work well is that the concrete portion of the test was not definitionally understood as the opposite of an abstract idea?  Perhaps with the background of Bilski and a proper definitional context for “concrete,” the best way forward would be for the Federal Circuit to take the Supreme Court up on its challenge for “development of other limiting criteria that further the purpose of the Patent Act” by affirming the UCT test pronounce by Judge Rich (whom by the way Justice Stevens was so quick to quote in his contrarian concurring opinion).

Nevertheless, citing Chakrabarty and Thomas Jefferson, the majority acknowledged that Congress plainly contemplated that the patent laws would be given wide scope to ensure that “ingenuity should receive liberal encouragement.”  The majority later continued by acknowledging that “times change” and “[t]echnology and other innovations progress in unexpected ways.”  Importantly, a plurality of the Justices reasserted, citing J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., that “[s]ection 101 is a ‘dynamic provision designed to encompass new and unforeseen inventions.’”  Under this reasoning, the majority did not accept that the “Machine or Transformation” test applied by the Federal Circuit as the only test for patent eligibility, but, the majority failed to articulate any other tests.

In explaining its holding that Bilski’s claims were directed to abstract ideas, a plurality of the Justices realized that “the information age” “puts the possibility of innovation in the hands of more people and raises new difficulties for the patent law.  With ever more people trying to innovate and thus seeking patent protections for their innovations, the patent law faces a great challenge….”  The majority failed to acknowledge that this inventive activity is the type of activity the patent system is intended to promote.  See Constitution, Article 1, § 8, cl. 8.  However it is important to note that the patent examiner of the Bilski patent application was up to the “great challenge.”  The patent examiner rejected Bilski’s application explaining that it merely manipulated an abstract idea – the same grounds upon which the Court unanimously decided the ineligible nature of Bilski’s claims.  This is important to note at a time when the United States Patent and Trademark Office is focused on patent quality.  Here, in a high profile, hotly contested case, the patent examiner made the right decision.

While the Bilski claims to a method of hedging commodities was held to be an abstract idea, the majority did not go so far as to preclude patentability of all business methods.  To the contrary, the majority stated that “[s]ection 101 … precludes the broad contention that the term ‘process’ categorically excludes business methods.”  Thus, in the wake of the Bilski decision, business method patenting still has a breath of life.  However, it is unclear what test(s) for patent eligibility might apply.  It is clear though that a business method claim must be more than an abstract idea, mathematical formula, or law of nature.  Beyond that, there is an abyss of uncertainty.  The majority in Bilski does provide guidance that claims passing the “Machine-or-Transformation” test will pass the threshold question for patent eligibility of Section 101.  This also informs the Patent Bar that method claims of software inventions are still eligible for patent protection under at least the same “Machine-or-Transformation” test being used since the Federal Circuit’s en banc decision in Bilski.  While failing to endorse the “useful, concrete, and tangible” test of the Federal Circuit State Street decision, the majority opinion instructs the Federal Circuit to develop “other limiting criteria that further the purpose of the Patent Act and are not inconsistent with its text.”  Thus, we will anxiously wait to see what other patent eligibility tests applicants will be faced with. 

However, the question in the Mayo petition for certiorari in Mayo v. Prometheus is left unsettled.  In the Prometheus case, the Federal Circuit found compliance with the “Machine-or-Transformation” test inherent in the claims.  But, at times in the Federal Circuit’s Prometheus opinion the inherent compliance with the “Machine-or-Transformation” test seemed tenuous, at best.  Absent compliance with the “Machine-or-Transformation” test, patent eligibility in Prometheus rests on a law of nature – a measured presence of a substance in a patient sample providing insight into patient health – a correlation which is arguably naturally occurring.  Nevertheless, I expect Mayo’s Petition for Cert. to be remanded by the Supreme Court for further consideration in view of today’s decision in Bilski.  (Subsequent to writing this, the Supreme Court granted cert. in Prometheus, vacated, and remanded the case to the Federal Circuit for further consideration).

Also, the USPTO provided the Examining Corps instructions on the Bilski v. Kappos decision on June 28, 2010.  The instructions direct the Examiners to continue use of the Machine or Transformation test with regard to § 101 “using the existing guidance” unless it is clear the claims are directed to more than an abstract idea.  These instructions can be viewed here.

Considering the opinion and the subsequent instructions to the Examining Corps, I don’t think much has been accomplished in the past two or so “Bilski years.”  We have all been modifying our practices, writing claims, and drafting applications differently, and consuming a lot of time all because of Bilski.  However, no real progress has been made.

For example, I believe the majority opinion in Bilski really stand for three principles:

1.     No business method exception;

2.     Claims must positively recite the invention in more than an abstract manner; and

3.     The Machine or Transformation test is an important test, but it is not the exclusive test.

Of these three principles, we already knew there wasn’t a business method exception and that we can’t claim an abstract idea.  Also, most of us knew number three as evidenced by the extensive amicus briefing, but the Federal Circuit was somehow confused.  So yesterday’s opinion really only corrects the confusion at the Federal Circuit, but otherwise seems to restate what we already knew.  So I ask the rhetorical question, “What did this Bilski exercise accomplish?”

Whether you agree with the view of this Primary Examiner or not, if you have an application pending before the 3600 art unit or you are drafting an application that has the potential to be classified in the 3600 art unit, keep this in mind.  If you need to claim a processor or foresee a potential need to amend your claims to include a processor, be sure to include support for hardware processors, such as a microprocessor or an application specific integrated circuit.  If you are amending your claims or considering claims that recite “a processor,” you may want to say “a microprocessor” or a “hardware processing unit.”  Something to that effect.

However, the Federal Circuit also states that mental steps are not patent-eligible per se.  On the surface, this seems a bit odd.  A mental step involves receipt of information in the mind which transforms that information to arrive at a decision.  A decision will typically result in taking an action, or forbearing therefrom.  Resolving how a transformation performed by one bodily-organ is a patent eligible transformation while transformation by another is not is not is difficult.  Does the difference rest in the media of input and output?  Drug in – blood out versus information in – action out?  Or is it more of the court’s perceived value of methods of medical treatment being greater than the value of methods of doing business?

Comically, in view of recent Federal Circuit opinions, it seems the owner of a business method patent may revalidate their invalid patent if they were to consume the patent, take blood samples to measure metabolic changes, and make a determination therefrom.

http://online.wsj.com/article/SB125302724795512223.html

XXIV. What if the applicant electronically files an application via EFS-Web, and on that same day, realizes that they have inadvertently omitted a document from the application?

One advantage of filing an application via EFS-Web is that the applicant may view the submission in PAIR and file a paper directly into the application on the same day as the filing date of the application.  In certain situations, applicant may correct an error by filing a missing item(s) on the same day as the filing date of the application.  Applicant, however, may wish to file another new application in other certain situations.  For example:

(1) Oath or Declaration - Applicant may file an executed oath or declaration on the same day as the filing date as the application via EFS-Web.  The oath or declaration will not be considered late and thus a surcharge for filing a late oath or declaration will not be required. 

(2) Filing Fees - Applicant may file the filing fees (e.g., the basic filing fee, search and examination fees, application size fee, or excess claims fee) on the same day as the filing date of the application via EFS-Web.  The fees will not be considered late and thus a surcharge for filing the filing fees will not be required.

(3) Non-publication request - Since 37 CFR 1.213(a)(1) requires any non-publication request to be filed with the application, applicant cannot simply file the non-publication request to correct the error.  If applicant does not wish to have the application publish, applicant must file: (a) a new application with a nonpublication request; and (b) file a petition for express abandonment to avoid publication under 37 CFR 1.138(c) and fee under 37 CFR 1.17(h) in sufficient time to permit the appropriate officials in Pre-Grant Publication Division to recognize the abandonment and remove the application from the publication process. 

(4) Drawings - Applicant may file the missing drawings as a preliminary amendment on the same day as the filing date of the application. The drawings will be considered as part of the original disclosure of the application.  See 37 CFR 1.115(a)(2).  If the application, however, were filed with the “wrong drawings,” the “wrong drawings” would still be part of the original disclosure.  A preliminary amendment could be filed on the same day as the filing date of the application adding the correct drawings and deleting the “wrong drawings.”  An amendment adding new drawings and deleting the “wrong drawings,” filed on a day after the filing date of the application, may raise new matter issues.  Certainly, if applicant wishes to have an application without the “wrong drawings” being a part of the original disclosure, applicant should file a totally new application (e.g., new specification including claims(s) and fees) comprising the correct drawings, and, if desired, expressly abandon the original application.

(5) Claims - Applicant may file the claims as a preliminary amendment on the same day that applicant filed the application papers.  Please note that the application will not be entitled to a filing date until applicant files at least one claim in the application.

(6) Part of the specification - Applicant may file the missing portion of the written description as a preliminary amendment on the filing date of the application.  Such amendment will be considered as part of the original disclosure.

If applicant files another new application to correct the error, applicant will have two applications.  Applicant may continue to prosecute the first application that has the error or abandon the first application by filing a declaration of express abandonment.   Please note that any fees paid in the first application will not be refunded or applied to the second application.  Applicant may request refund of the search fee and any excess claims fees (but not the basic filing fee, examination fee, and application size fee) paid in the first application if the application was filed under 35 USC 111(a) on or after December 8, 2004 and the applicant files a declaration of express abandonment in accordance with 37 CFR § 1.138(d). 

Another option is available when the error is not one of omission, but rather one such as having pages out of order in the specification.  A communication identifying the EFS ID number of the original filing with a description of the error and a copy of the specification in the proper order will correct the error.  You may follow up with a phone call to the Electronic Business Center at (866) 217-9197 and request that the erroneous document be removed from the file as well.  The concern about making such a correction is not one of lacking enablement as your pages are most likely numbered along with the paragraphs, but rather to ensure the application is published accurately and avoiding any possible arguments that a clever attorney may raise later in litigation.

To very briefly provide a bit of background, Blackboard, the patent holder, described a function and asserted that a general purpose computer was the structure that performed the function.  The question is whether or not a general purpose computer is sufficient structure under Section 112, paragraph 2 to provide sufficient disclosure to be considered definite when ascertaining the scope of the means-plus element of the claim.  The Court found that a general purpose computer is not sufficient structure to meet the requirements of Section 112, paragraph 2 when ascertaining the scope of a means-plus element of a claim stating, “’any general purpose computer must be programmed’ and … relying on such general structure is equivalent to saying ‘that the function is performed by a computer that is capable of performing the function.’” (Citing Aristocrat Technologies Australia Pty Ltd. V. International Game Technology, 521 F.3d 1328, 1331 (Fed. Cir. 2008)).  The Court stated that, “[W]hen a computer is referenced as support for a function in a means-plus-function claim, there must be some explanation of how the computer performs the claimed function.” Page 23.  Citing the Finisar Corp. v. DireTV Group, Inc. (523 F. 3d 1323, 1340-41 (Fed. Cir. 2008)) decision, the Court also provided that, “Simply reciting ‘software’ without providing some detail about the means to accomplish the function is not enough.”

Blackboard argued that the description was sufficient so that a person having ordinary skill in the art, based on what has been around for a long time in the field, could construct the invention claimed in the means-plus format.  The court replied by stating that this argument goes to enablement under the first paragraph of Section 112 and not the second paragraph to allow a person to ascertain the scope of the claim.  The Court more accurately framed the question as whether the specification contains a sufficiently precise description of the corresponding structure to satisfy Section 112, paragraph 6 (i.e., also paragraph 2), not whether a person of skill in the art could devise some means to carry out the recited function.

A patentee cannot avoid providing specificity as to the structure because someone of ordinary skill in the art would be able to devise a means to perform the claimed function.  To allow that form of claiming under Section 112, paragraph 6, would allow the patentee to claim all possible means of achieving a function.

This portion of the Blackboard opinion is Section 3 on pages 19 – 26.  The Opinion can be downloaded under the Reference Info tab of this group.

My take away from this case is

1.       If you include mean-plus claims under Section 112, paragraph 6, include embodiments of algorithms including great detail.

2.       Describe the algorithms connected to structural elements, such as processors, specific processors if possible, various hardware components and potential interconnections, etc.

3.       If a specific algorithm, or portion thereof, can be embedded as firmware or as specific chip-logic, describe it as such.

4.       Tie your means-plus claims to specific portions of the specification so it is clear later on where the support is.  Double check this support to ensure it is sufficient to render the claim clear not only to the Examiner, but also to a court should the claim ever be enforced.  If there is potential for ambiguity, tighten it up or describe another embodiment.

At the same time, really think through including a means-plus-function claim.  Remember if you appeal a means-plus-function claim to the Board of Patent Appeals and Interferences, you have to cite each portion of the specification providing support for the means.  This requirement presents a “great” opportunity for you to create claim-limiting estoppel should you fail to cite a portion of the specification that does actually provide support.

I am not very bullish on means-plus-function claims for computer implemented inventions.  Means plus function claims present claims with additional burdens for enforcement, create additional burdens on appeal while providing an opportunity to create estoppel, and, in view of the Blackboard decision, impose what is seemingly greater burden on applicants to file an adequate specification.

Although means-plus-function claims for computer implemented inventions can be useful and I am sure you can find a situation where such a claim makes perfect sense, be extra careful….  Doing so may be equivalent to playing with fire, all in return for a claim having limited scope.

Along with the independent claims rejected under § 102, you will probably also have dependent claims.  If the dependent claim(s) are rejected under § 103 based on the commonly owned reference and another reference, your job is usually pretty straight forward.  When at least one dependent claim is not rejected under § 103 based in part on another reference, your job is a bit harder.  Nevertheless, the approach is the same.  Your goal is to amend the independent claim(s) so as to be rejected under § 103 instead of § 102 and then attack the non-commonly owned reference.  This is common practice and probably isn’t that helpful of a tip.

However, the tip here is to check the commonly owned reference in view of the language of § 102 to verify the Examiner’s assertion of the reference under at least § 102(a) or (b).  It is not uncommon for a reference to be asserted under § 102(a) or (b), but to actually be a § 102(e) reference.  When faced with a § 102(e) rejection, amending the claims so as to be rejected under § 103 based in part on the commonly owned reference will win the day in view of §103(c), which removes references available as prior art only under § 102(e), (f), or (g) that were owned by the same person or subject to an obligation of assignment to the same person.  Thus, by merely amending the independent claims so as to be rejectable based on the commonly owned reference only under § 103, the commonly owned reference falls away, and you have overcome the rejection.  Particularly note that you overcome the rejection based on the commonly owned reference without having to make a single comment as to the content of that reference.  Merely establishing common ownership is all that is necessary.

On pages 5 and 6 he offers the following riddles:

Riddle 'There will be many which will increase their destruction.'
Answer 'The ball of snow rolling over the snow.'

Riddle ' Those who give light for divine service will be destroyed.'
Answer 'The bees who make the wax for candles.'

Riddle 'The dead will come from underground and by their fierce movements will send numberless human beings out of the world.'
Answer 'Iron, which comes from under the ground, is dead, but the weapons are made of it which kill so many men.'

On pages 7-16 he was exploring mirrors and reflectance angle from convex and concave mirrors of different curvatures as well as the optical properties of the moon.

On pages 27-28 he included a question from Dante’s Paradiso, XIII, 101-102:

O se d'un mezo circol far si pote triangol si ch'un recto non avessi e che gli altri due un retto non faciessi

Or if your Italian is a bit rusty:

Translation: 'Is it possible for a triangle contained within a semi-circle not to include a right angle?'

To this mathematical question, Leonardo adds the corollary 'or for the other two angles not to add up to 90 degrees.'

You can view images of these pages at:

http://www.bl.uk/onlinegallery/ttp/leonardo/accessible/introduction.html

I am afraid to say though that Mr. de Vinci failed to have his notebook witnessed.  Therefore it seems this notebook will not be useful as evidence to prove up a date of conception or reduction to practice unless some form of carbon dating is performed.  Sorry Leo.

Joint patent infringement is a bit of a hot topic in litigation right now.  Probably the most important Federal Circuit opinion on this topic in recent years is the BMC Resources v. Paymentech case.  There is explicit instruction from the Court in this opinion regarding “proper claim drafting.”

“The concerns over a party avoiding infringement by arms-length cooperation can usually be offset by proper claim drafting. A patentee can usually structure a claim to capture infringement by a single party. See Mark A. Lemley et al., Divided Infringement Claims, 33 AIPLA Q.J. 255, 272-75 (2005). In this case, for example, BMC could have drafted its claims to focus on one entity. The steps of the claim might have featured references to a single party’s supplying or receiving each element of the claimed process. However, BMC chose instead to have four different parties perform different acts within one claim. BMC correctly notes the difficulty of proving infringement of this claim format. Nonetheless, this court will not unilaterally restructure the claim or the standards for joint infringement to remedy these ill-conceived claims. See Sage Prods. Inc. v. Devon Indus. Inc., 126 F.3d 1420, 1425 (Fed. Cir. 1997) (“[A]s between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure.”)”

To ensure you capture an infringer, remember to keep in mind who might infringe the claim you are drafting.  Although there are theories of indirect infringement and joint infringement, these theories carry a heavier burden of proof for the plaintiff.  Thus, when drafting claims, keep in mind that you are drafting claims for the plaintiff for assertion in litigation.  The lesser burden of proof required to enforce the claim, the better.

The opinion is posted in this group under Reference Info.

NOTE:  At the AIPLA Spring Meeting on Wednesday next week, Morning Concurrent Track #2 will include a 20 minute presentation on Joint Patent Infringement.

·         explain findings regarding the nature of the claimed subject matter in comparison to the four enumerated categories of statutory subject matter, (i.e., machine, article of manufacture, process, or composition of matter); and

·         explain analysis regarding how the claimed subject matter falls within one or more, if any, of the judicially recognized categories (i.e., laws of nature, scientific principals, and abstract ideas) of subject matter that are excluded from patent protection.

In Kelly, the Examiner made unsupported, conclusory statements and the Board held that this was insufficient to sustain § 101 rejections.

The Ex parte Kelly opinion is posted under Reference Info in the In re Bilski group.

A nice quote from MPEP Section 706(II) brought to my attention by another patent attorney:


"When an application discloses patentable subject matter and it is apparent from the claims and the applicant"s arguments that the claims are intended to be directed to such patentable subject matter, but the claims in their present form cannot be allowed because of defects in form or omission of a limitation, the examiner should not stop with a bare objection or rejection of the claims. The examiner's action should be constructive in nature and when possible should offer a definite suggestion for correction."