Why isn’t Congress Upset about Judicial Exceptions to Patent Eligibility?

What isn’t Congress Upset about Judicial Exceptions to Patent Eligibility?Whether a claimed invention is patent eligible is supposed to be an easy, straight-forward question. For the overwhelming majority of the last three generations the question was a threshold inquiry based on a one-sentence statute, and the legislative history to the 1952 Patent Act that explicitly recognized that Congress wanted everything made by man under the sun to be patent eligible in America. Over the last decade, however, the Supreme Court has embarked on an unmistakable crusade to remake American patent law to their liking. The tool of choice has been what the Court refers to as judicial exceptions to patent eligibility.

The Alice/Mayo framework – named for the two seminal patent eligibility cases of the past decade – requires the decision maker, whether a patent examiner, administrative tribunal or reviewing court to ask and answer a series of questions before determining whether the claimed invention constitutes patent eligible subject matter. The first question (commonly referred to as Step 1) is whether the patent claim covers an invention from one of the four enumerated categories of invention defined in 35 U.S.C. §101 (i.e., is the invention a process, machine, article of manufacture, or composition of matter). If the answer to this question is no, then the patent claim is patent ineligible. If the answer is yes, the decision maker must move on to the next inquiry.

It is important to note that this first inquiry under the Alice/Mayoframework is the only question that finds textual support in the statute. The Supreme Court has knowingly and intentionally usurped the power and prerogative of Congress and has added additional hurdles to patent eligibility. The simple, straight-forward, statutory test established by Congress is no longer the complete test for patent eligibility in the United States. The test for what is patent eligible is an extra-statutory test that superimposes the will of the Supreme Court over the collective wisdom and wishes of Congress.

Of course, that is not what the Supreme Court is supposed to do, but it is what they have done in the patent realm. Even the Supreme Court refers to its own test for patent eligibility as embodying judicial exceptionsto patent eligibility, which by the very nomenclature used to characterize the additional steps admits to being beyond the statutory requirements and outside the proper authority for what the federal judiciary is supposed to do under the American Constitutional form of government.


The second question in a patent eligibility determination today is where the Supreme Court begins to impose itself over and above the statutory test. This inquiry (commonly referred to as Step 2A), requires the decision maker to ask whether the claimed invention is directed to one of the three specifically identified judicial exceptions to patent eligibility that have been identified by the Supreme Court. Again, although there is no textual support for the creation of anyjudicial exceptions to patent eligibility in the Patent Act, the Supreme Court has imposed its extra-judicial view of what the statute should require, legislating from the bench in an open power grab.

Thankfully, at the moment the Supreme Court has only identified three judicial exceptions, but since these judicial exceptions find no support in any text, statute or in the Constitution, there are no guarantees that this is an exhaustive list. Indeed, the Supreme Court could choose at any time to expand or extend this judge-made doctrine to render whatever they want to be patent ineligible. But to date, there are three judicial exceptions, which have in and of themselves wrought enough havoc. The judicial exceptions are: laws of nature, physical phenomena and abstract ideas. If the claim does not implicate one of those judicial exception, then the claimed invention is patent eligible. If the claimed invention implicates one of the judicial exceptions, then there is another question that must be answered.

Before proceeding to the final question in the extra-statutory patent eligibility test, it is worth pausing to point out that the Supreme Court has so far refused to define the term “abstract idea” despite the fact that it is singularly important to determining whether software innovations, including innovations relating to artificial intelligence, blockchain and Internet of Things (IoT) methods and systems are patent eligible. Indeed, the Supreme Court has opened Pandora’s box on the next great frontier of innovation while arrogantly refusing to define the critical term in the extra-statutory test of their own creation – saying that they do not need to “labor” to define the meaning of the term “abstract idea.”

As insulting as it is that the Supreme Court refuses to define the term “abstract idea”, the Supreme Court also uses the terms “natural phenomena” and “laws of nature” interchangeably, saying that they do not need to precisely identify which of the judicial exceptions they are using when analyzing the patent eligibility of a claimed invention in the life sciences sector. Again, this is their own test, and the Supreme Court mandates its application but refuses to define the key terms and phrases. How any jurist trained in the American system can believe an extra-statutory test is consistent with norms of American jurisprudence is a mystery, but hiding the ball and refusing to define key terms and concepts is truly unbelievable.

If this doesn’t get your blood boiling, the final inquiry for those claimed inventions that somehow relate to abstract ideas, laws of nature and natural phenomena, whatever they may be in the undefined collective minds of the Supreme Court, asks whether the claim language adds “significantly more” to the claim such that the claim is not merely claiming the abstract idea, law of nature or natural phenomena. Of course, once again, the Supreme Court has refused to define the term “significantly more.”

Some courts have characterized this final inquiry as “the hunt for the inventive concept.” That would make some logical sense if and only if a claimed invention that is novel and non-obvious would be necessarily found to have satisfied the inventive concept requirement. Alas, that is not the case. Under the ridiculously bastardized law of patent eligibility foisted upon us by the Supreme Court it is actually possible for a claimed invention to be both new and non-obvious and to somehow not exhibit an inventive concept under what is considered a proper patent eligibility analysis. Of course, it is a logical impossibility for a claimed invention to be both novel and non-obvious while simultaneously not exhibiting an inventive concept. If something is new and non-obvious it is by definition inventive. This disconnect merely demonstrates the objective absurdity of the Alice/Mayoframework.

So, we are left with a patent eligibility test that finds no support anywhere in the text of the statute or in the Constitution. The critical terms necessary to understand this Supreme Court created extra-statutory test are knowingly and intentionally left undefined. And the test results in the absurdly illogical conclusion that novel and non-obvious inventions can and do somehow lack an inventive concept. Clearly, the Supreme Court is out of its depth. The industry finds itself in need of a life line.

What is remarkable is that as this entire episode has unfolded Congress has been content to watch their Constitutional powers stripped by an overactive Supreme Court that enjoys legislating from the bench. It is shocking that no Member of Congress has used this simple, easy to understand example of the Supreme Court erecting additional extra-statutory hurdles on top of a one-sentence, clear, straight-forward statute as an example of the dangerous expansion in the power of the Supreme Court.

If the Supreme Court can find judicial exceptions to invisibly exist in a simple, one-sentence statute, then why couldn’t they do the same with any other statute?

It is time for Congress to reassert itself. The federal judiciary is there to interpret the law, not to make it. If they want to make law they should resign and run for Congress.


Image Source: Deposit Photos.


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Join the Discussion

30 comments so far.

  • [Avatar for CJW]
    November 19, 2018 10:59 pm

    Clearly, the high Court has effectively overturned the 1952 act and many of its previous decisions, leaving the USA with effectively, no patent system. The failure of Congress to take action to remedy the matter results in the gov being in breach of the Trust created by the Constitution. If you don’t see the Const. as a Trust indenture, read it again in terms of who was the grantor, who the trustees are, and who the beneficiaries are. You don’t have to wait for the ballot, or for prosecutions, you have the power right now to bring an action for breach of fiducary duty. Trustees cannot rightly take away from the beneficiaries, its right in the preamble. Every public official at every level are trustees and they have a duty to act with the highest level of honesty, integrity and good faith. See Jersey City v. Haugue 1955. The high court itself appears to itself having obstructed Justice. It is each lawyer’s duty to seek Justice and I’m starting to strongly suspect the day isn’t that far off before we start seeing some actions for breach of fiduciary obligation against some of the actors.

  • [Avatar for Lost In Norway]
    Lost In Norway
    November 5, 2018 04:22 am

    Excellent write up Gene. I get so weary of arguing why 102, 103, 112(a) will take care of any of these cases that are in question.

  • [Avatar for Pro Say]
    Pro Say
    November 3, 2018 11:57 am

    Dave @ 23 and Gene.

    Here. Here. Yes; please do this (pdf / word). I will send it to all my area reps and my state’s two senators.

    Enough is enough.

    MPGA: Make Patents Great Again.

  • [Avatar for Mike]
    November 2, 2018 11:42 pm

    Dave @ 23 and Gene:

    Yes! Please do this. Rewrite something like this article, geared for inventors to use when speaking with our representatives. Include footnotes identifying SCOTUS decisions and other cases where congressional intent is overstepped. Simply this and produce it so that inventors can be equipped.

    Us inventors should be equipped with a common set of tools and resources that we can use to mobilize and share with our representatives.

    And we can’t assume they will draw up legislation either. We will need to come with proposed legislation in hand and get them to sponsor and/or cosponsor.

    HR 6557 is one example. See http://usinventor.org/ipa.

    We need organized resources so we can educate our representarives and also present them with a prepared plan of action. If we don’t have any visible rust on our wheel, our squeaking will be in vain and we will never get the grease. That visible rust is the resources and evidence that we need experts like Gene to provide. Please do consider this.

  • [Avatar for David Stein]
    David Stein
    November 2, 2018 04:31 pm

    Gene @21:

    “If the claim is so abstract that it lacks any evidence of inventive concept it can’t possibly be concrete enough to be evaluated for novelty and non-obvious.”

    Right on. Cue David Kappos’s observation that rejections under § 101 are largely redundant with § 102/103/112.

    This is what really kills me about the new § 101 framework – how many different *flavors* of § 101 rejections that have been shoehorned into one statute:

    * Is it patent-ineligible because the claims are a mental process, as per In re Abrams? If so, pre-Alice § 101 was already sufficient.

    * Is it patent-ineligible because the claims are a disconnected mathematical algorithm without a specific use, as per Gottschalk v. Benson (and – conversely – Diamond v. Diehr)? If so, pre-Alice § 101 was already sufficient.

    * Is it patent-ineligible because the invention is commercial and not technical, as per Hotel Security Checking Co. v. Lorraine Co.? Again, pre-Alice § 101 was already sufficient.

    * Is it patent-ineligible because the claims are overbroad to the point of ambiguity and undue preemption, as per O’Reilly v. Morse? If so, § 112p1/p2 are the more appropriate standard.

    * Is it patent-ineligible because the invention is “conventional,” as in: “applying standard technology to a simple problem to produce a predictable result?” If so, § 102/103 are the more appropriate standard.

    The real damage done by Alice is conflating these distinct, specific legal principles in to a generic “abstractness” smell test, which judges and examiners formulate as a stew of aphorisms that loosely reference these principles. The Supreme Court established the tone by asserting *all five* of them against the Alice patents.

    And this is why arguing against § 101 feels like battling a hydra. Sure, go ahead and prove that the claims aren’t overbroad and preemptive… the examiner can just recharacterize the subject matter as “conventional.” Etc.

  • [Avatar for Gene Quinn]
    Gene Quinn
    November 2, 2018 04:01 pm

    David R @23-

    Thank you. I like your suggestion. I am contemplating something similar, although I am not opposed to what you suggest. I think 2019 might be time for IPWatchdog to start filing amicus briefs. I need to work through the ramifications of what that means, whether I do it personally, etc. Stay tuned.

  • [Avatar for Claire Laporte]
    Claire Laporte
    November 2, 2018 03:44 pm

    I’ve been asking this same question — why is the Supreme Court making up patent law? — for a while: https://www.healthaffairs.org/do/10.1377/hblog20150402.046084/full/
    But expecting any rational activity from Congress seems like a stretch at this point.

  • [Avatar for Dave R.]
    Dave R.
    November 2, 2018 02:22 pm

    Excellent article, Gene. I suggest that you or someone create a re-written version of it which includes footnotes / bibliography identifying the specific cases to which you refer, and where possible the actual portions of the Sup. Ct. decisions where they went off the legislative rails and superimposed their own law making ideas.

    What if everyone who has an interest in patent law reforms, e.g. those who follow this blog, write their member of the House and their US Senators, copying them with Gene’s comments and also providing their own?

    Members of Congress aren’t going to have interest in this matter or others in which the Sup. Ct. legislates unless their constituents inform them and ask them to take action.

    You might also bring attention of this matter to the White House and Secretary of Commerce.

  • [Avatar for Night Writer]
    Night Writer
    November 2, 2018 12:58 pm

    @16 Meowzer The simplest example is a pure business method; for example, a truly inventive accounting technique. It is new, it is non-obvious, but you could do it entirely in your head or with pen-and-paper. It’s an abstract idea, under Step 1 of the Alice/Mayo framework. … It is absolutely possible, and common, to have a claim that lacks an “inventive concept” but that nevertheless claims something that’s never been done before.

    I just can’t read this stuff without my head pounding. It is like being force to say that the Sun revolves around the Earth. Just insane statements that offend my training in science. We really need to remove jurisdiction of patents from the Scotus and dissolve the CAFC and then reform it with only people that are trained in science and have a background in patent law.

    Notice how the anti-patent forces use the same technique over and over again. They make up a new work “inventive concept” and then say that you can’t have a patent if you have one of these or don’t have one of these. And then the definition of the new word is entirely discretionary based on what the judge feels.

    I feel like we need to flush people like this.

  • [Avatar for Gene Quinn]
    Gene Quinn
    November 2, 2018 11:50 am


    Sorry, you are wrong. You use a lot of words and with unconvincing circular logic (just like an examiner does in many 3600 Art Units). The truth is it is impossible to be novel and non-obvious and lack an inventive concept. Your error is you just assume that something that is an abstract idea (whatever that undefined term means) can simultaneously be both so abstract that it lacks any inventive concept, but it is yet concrete enough to be evaluated for novelty and non-obviousness. Clearly that is an impossibility.

    If the claim is so abstract that it lacks any evidence of inventive concept it can’t possibly be concrete enough to be evaluated for novelty and non-obvious. But if a claim passes 102 and 103 because there is no prior art out that necessarily means the claim contains elements or aspects that are not well known, routine or conventional. You simply can’t have it both ways simply because in a non-informing way you wish it to be true.

    And the problem with your example regarding E=MC2 is it fails under the statute itself. Mathematical realities are not devices, processes, articles of manufacture or compositions. You don’t need Alice or Mayo. Nice try.

  • [Avatar for Jason Lee]
    Jason Lee
    November 2, 2018 10:00 am

    Great read Gene. Thanks.

    @ concern

    Great point, and yes that is a tell sign, big tech is the cancer in growing new inventors and ip holders from getting paid. It’s hard to introduce laws when Rep.and Dem are bought up by Sillicon Valley elites. I’m a little perplexed why the SCOTUS has been so anti patents. There has to be a rebalance implemented. Good to see the new director of the USPTO is being active in trying to remedy the gutting left by his predecessor Ms. Lee. Its still not enough, the hatred for patent inventors and ip holders by congress and the SCOTUS is shameful. The fight for patent rights will continue rules in 101 plus fixes to Alice and EBay must be addressed. In eight years I have never seen more naritive posted as we have seen great carnage done to patent holders since the passage of the AIA Act, 101, EBay and Alice. I hope SCOTUS and Congress can get it right and protect IP theft as we move into 2019.

  • [Avatar for American Cowboy]
    American Cowboy
    November 2, 2018 09:52 am

    Why isn’t Congress peeved? I attribute it to at least two reasons:
    1. The politicians do not know and do not care. The headlines that the voters look at do not mention the mess that Scotus has made, so why should the politicians pay attention?
    2. The anti-patent crowd has spread around big bucks in campaign contributions and paid lobbyists to have the politicians on their side when the so-called troll problem is trotted out as an excuse to kill patents.

  • [Avatar for EG]
    November 2, 2018 07:26 am

    Hey Gene,

    The reason is that there are too many folks in Congress that include the likes of Issa, Goodlatte, Lofgren, Leahy, Smith, and more who frankly don’t care if the U.S. patent systems “burns to the ground.” (Notice that this problem is on both sides of the political aisle.) Some like Issa and Goodlatte will be gone (good riddance!), but we need more like Tom Massie (to the south of me in Kentucky) who, with HR 6264, want to fix the mess created by both the AIA and SCOTUS. I also wish we still had former Senator Tom Coburn (from Oklahoma) who thoroughly understood why the AIA was the “Abominable Inane Act.” The one bright light is that we’ve got now is a USPTO (Iancu) who understands there’s a mess and is willing to be the “spear point” to try to fix it; we need to get behind Iancu and tell the likes of Zoe Lofgren (the SV is her constituency and she’s behold to them) that her criticism of Iancu in that hearing to suggest reform of IPRs was thoroughly uncalled for and outrageous.

  • [Avatar for concerned]
    November 2, 2018 04:33 am

    If one observation could serve Congress as to what is really going on it would be this one:

    It was reported that a standing ovation was given to the USPTO director by a table of inventors after a speech where he stated that patent rights needed to be strengthened. Meanwhile, the many tables of big tech people sat and gave the Director an obligatory hand clap.

    If big tech was truly inventing, they would be standing also to protect their current and future inventions.

    Big tech’s (UN)excited utterance is just as much a poker tell as the excited utterance in my opinion.

  • [Avatar for Meowzer]
    November 1, 2018 10:58 pm

    The author writes, “it is a logical impossibility for a claimed invention to be both novel and non-obvious while simultaneously not exhibiting an inventive concept.” I respectfully disagree, this argument overlooks the difference between 101 and 102/103 that has been recognized by many cases.

    The simplest example is a pure business method; for example, a truly inventive accounting technique. It is new, it is non-obvious, but you could do it entirely in your head or with pen-and-paper. It’s an abstract idea, under Step 1 of the Alice/Mayo framework. And if the claim was written to just recite the business method and doesn’t add anything more (for example, a particular technological application or implementation that idea), then the claim lacks an inventive concept even though it would pass the novelty and non-obviousness requirements.

    The Federal Circuit has explained this principle many times; E=MC^2 was no doubt a brilliant, novel formula, but it cannot be patented itself without an “incentive concept.” The word “inventive concept” doesn’t mean inventive under the rubric of 102/103.

    It is absolutely possible, and common, to have a claim that lacks an “inventive concept” but that nevertheless claims something that’s never been done before.

  • [Avatar for Night Writer]
    Night Writer
    November 1, 2018 10:32 pm

    @11 David Stein

    That is well written. I would add that the anti-patent forces are as strong as they have ever been.

  • [Avatar for Jeff Lindsay]
    Jeff Lindsay
    November 1, 2018 09:07 pm

    Nicely written and spot on.

  • [Avatar for Software Inventor]
    Software Inventor
    November 1, 2018 07:25 pm

    So well articulated, Mr. Quinn. While this beautifully written piece is focused on judicial exceptions, may I add that it is the same government body that unilaterally confiscated my rights and made them a government franchise, contrary to the document that they are sworn to uphold.

    Article I, Section 8, Clause 8, of the United States Constitution grants Congress the power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the EXCLUSIVE RIGHT to their respective writings and discoveries.”

    Madison ([1829a] 1865: 51) argued, “that persons and property are the two great subjects on which Governments are to act; and that the rights of persons and the rights of property are the objects for the protection of which Government
    was instituted.”

    US Congress: please take note and act accordingly, promptly, for all the people you are elected to represent.

  • [Avatar for Harvey]
    November 1, 2018 05:38 pm

    “How any jurist trained in the American system can believe an extra-statutory test is consistent with norms of American jurisprudence is a mystery, but hiding the ball and refusing to define key terms and concepts is truly unbelievable.”

    I find it interesting that the Supreme Court has struck down numerous laws based on the laws being “vague,” but they allow themselves to add requirements to the patent law without defining the very terms they are using. Granted, patent law is not criminal law. But shouldn’t the same principles apply? To take a law that is clear on its face and to add requirements to it without defining the most important terms of the added subject matter seems incredibly unfair. What’s more vague than the term “abstract idea?” We often talk about various levels of abstraction. It’s more of a continuum than a specific point. The abstract idea exception gives the decision maker the power to arbitrarily define what an abstract idea is on a case by case basis. That is fundamentally unfair to people pursuing patents. If you can’t define the term, don’t add the judicial exception.

  • [Avatar for David Stein]
    David Stein
    November 1, 2018 04:27 pm

    I believe that the explanation here is pretty simple.

    Intellectual property law, including the USPTO, is one of several complicated systems of the federal government. Other examples: taxation, securities, bankruptcy, immigration and naturalization, admiralty, food safety inspection, medical research grants, HUD, interstate highways (there’s actually a Federal highway Administration)… etc.

    Pick any of these systems. I’m guessing that 98% of Congress has no idea how it works, isn’t interested in the details, and doesn’t want to mess with it unless there’s a major problem with a nice, tidy answer and a political angle.

    Gottschalk v. Benson was issued in 1972. We’ve been grappling with § 101 chaos for at least 46 years, with no end in sight. When did Congress sit up and take notice? NTP v. Research In Motion – the sudden prospect of everybody, and more importantly Congress, losing their Blackberry pagers over *what looked like* extortion. The EFF, Mark Lemley, and the gang seized on that opportunity to drive the term “patent troll” into the public consciousness (such as through those two irresponsibly inaccurate NPR “When Patents Attack” episodes). We, the patent bar and tech community, failed to counteract that narrative. And so Congress, faced with a politically trendy and one-sided story, followed the lead by passing the America Invents Act – and here we are today with the IPR system.

    The bottom line is that Congress will likely stay out of patent law unless there’s a simple, compelling narrative that pushes it to act. And nobody, *nobody*, can get their arms around the Alice/Mayo story – not the USPTO, not the Federal Circuit, not the Supreme Court. It’s maximally incoherent, and until some repercussions gel in a way that suggests a clear solution, Congress won’t get its hands dirty.

  • [Avatar for Night Writer]
    Night Writer
    November 1, 2018 04:24 pm

    @3 anon

    That is one of your better posts anon. And the post, Gene, is really good.

    We have to start from where we are, which is basically re-fighting a battle that was won 70 years ago. I think the other aspect that has been completely lost in the last 70 years is holding professors to an ethical standard.

  • [Avatar for Anon]
    November 1, 2018 03:58 pm

    Gene @ 4,

    As much as I might enjoy agreeing, I have to much going on from now through year’s end.

    Notwithstanding that – and in view of some of the subsequent comments, I would add that WHAT is going on now (started by the Supreme Court) is basically a re-writing of statutory law (constrained to only one single branch of the government for this particular type of law).

    Of course, as some have noted, the Supreme Court flipped off Congress by continuing to write “gist of invention” common law after Congress took that away from them – and the problem has now spread from the Supreme Court to the “ping-pong” effects at the CAFC (the actual use of the term “common law” was used by a CAFC judge) and (even worse) has spread into the Executive Branch*** with the “adoption” of the Alice/Mayo “protocol.”

    101 has not only been mashed beyond recognition as the proverbial nose of wax, it has generated a severe lawlessness and disregard for separation of powers (among at least three strikes of Constitutional infirmity).

    *** See my recent “dream” at https://ipwatchdog.com/2018/10/25/director-iancu-keynote-aipla/

  • [Avatar for Pro Say]
    Pro Say
    November 1, 2018 02:01 pm

    Nice job Gene — thanks.

    MPGA: Make Patents Great Again

  • [Avatar for Ternary]
    November 1, 2018 12:31 pm

    There is fourth judicial exception: mathematical formulas. From MPEP 2106.04: “For example, mathematical formulas are considered to be a judicial exception as they express a scientific truth, but have been labelled by the courts as both abstract ideas and laws of nature.”

    In Mackay Radio, the Supreme Court at least still talks about an “empirical formula.” Since then we have gone completely medieval. Mathematics, being the language of science and technology, is in many respects more precise and less abstract than common language. But not to the Courts.

    Currently, the use of a formula and or algorithm in a claim causes an immediate Alice rejection and requires at least an RCE to overcome this nonsense.

    There is clearly a huge disconnect between what the engineering/science community considers to be an invention or new development and what should be considered to be a “law of nature” or “scientific truth” and what the US Courts think about scientific methodology. Any formula that describes and predicts an empirical fact is a “scientific truth,” so that cannot be a criterion for patent ineligibility.

    I find the EPO’s treatment of mathematical formulas much more in line with scientific and engineering methodology. And if we want so desperately to “harmonize” with others, this is an example where others clearly have a more rational approach than we have.

    As to the Why? Because it fits the narrative of certain interest groups. And Congress is unwilling to let rational considerations beat ideological arguments.

  • [Avatar for step back]
    step back
    November 1, 2018 12:10 pm

    Show us where in Alice the royal nine authorize or order the USPTO or the CAFC to carry out the Alice 2 step dance. In Alice, it is the royal “We” that perform the dance. No one else is asked to join the dance. They do so at their own peril.


  • [Avatar for Paul Cole]
    Paul Cole
    November 1, 2018 11:21 am

    I am delighted to see this post which raises a point on separation of powers which I have alluded to in a number of briefs that I have drafted for the Federal Circuit and the Supreme Court either personally or through CIPA/EPI.

    On a Venn diagram, the allowable categories and the judicial exceptions must be regarded as non-intersecting sets, subject to the proviso that claimed subject matter merely presented with the outward appearance of an eligible category should be open to objection if in reality it relates to a judicial exception. But in making this analysis all claim elements should be taken into account, and the “directed to” test is applied with far too much latitude, building a “straw-man” that is not representative of the original claim and is struck down

  • [Avatar for Gene Quinn]
    Gene Quinn
    November 1, 2018 10:59 am

    Anon @3-

    Excellent point. Any interest in writing something up along these lines for proper posting as an article? If not, I can run with it.

    Step @1-

    Yes. You are correct. Embarrassing to spend time over multiple days on this one only to screw up the first word. Thanks.


  • [Avatar for Anon]
    November 1, 2018 10:45 am

    A most excellent synthesis of many of my arguments that I have made over the last several years.

    I would add one small (but still extremely important) point, vis a vis: “Some courts have characterized this final inquiry as “the hunt for the inventive concept.”

    This so called hunt was precisely the subject of the reaction by Congress against a former anti-patent Supreme Court (that had described itself with the phrase: the only valid patent is one that has not yet appeared before us) in the Act of 1952; which coincidently created the section of law of 35 USC 101.

    While that section carries over from a prior single paragraph, importantly Congress carved up that single paragraph into today’s sections of 35 USC 101, 35 USC 102, and 35 USC 103.

    The processed intent of so doing was to strip the Court of the law writing power of using common law to “settle” what was meant by “Gist of invention” (or other of dozens of like terms), and instead use the concept of obviousness.

    This has been known since the Act of 1952 itself – and explicated by one of the architects of that act: Judge Rich.

    In its recent 101 jurisprudence, the Court has thumbed its nose at Congress and what Congress did in 1952.

    This is also why I have advocated that this time, Congress should do more and exercise its Constituional authority of jurisdiction stripping and strip the non-original jurisdiction of hearing patent appeals from the Supreme Court.

  • [Avatar for Concerned]
    November 1, 2018 09:58 am

    Routine, well understood and conventional on a process that has been proven by overwhelming evidence never existed on Earth.

    Welcome to my world.

  • [Avatar for step back]
    step back
    November 1, 2018 08:23 am

    Shouldn’t first word in title be “Why” and not “What”?