Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[ChrisWhewell]

Nothing.   Wait and see.

In the meantime, file cases as provisionals , and after the decision add matter or draft claims in view of the clues the court provides, assuming they don't create more confusion.  Include tons of claims in the prov's.  No telling what they're going to do, but..... don't we have a pretty good idea of what they're not going to do ?  There's some help there.

As KSR taught the TSM test is not itself dispositive re 103's, I'd predict that Bilski will contain the amazingly profound wisdom that machine or transformation test is not itself dispositive.

With any luck, they'll liberally honor the statute that the new use of a known machine (computer) defines patentable subject matter.   Anyone know about the propriety of the use of the language "The use of a computer ..... in a process for ... comprising the steps of: ....." language in any claims ?

[JustAnotherExaminer]

I personally don't think interactions between humans or processes that can be performed mentally or verbally should be patentable.  I don't think you should be capable of infringing a patent by sitting, thinking, and talking to your friend.

The MoT test excludes these things and is the best test we have to date on excluding these types of processes.  Is it the perfect test? Probably not. But it's damn near close.  The problem is the courts can't just tell examiners to use their own discrection on interpretation of 101, they have to always create some "test".

[ChrisWhewell]

I personally don't think interactions between humans or processes that can be performed mentally or verbally should be patentable.  I don't think you should be capable of infringing a patent by sitting, thinking, and talking to your friend.

The MoT test excludes these things and is the best test we have to date on excluding these types of processes.  Is it the perfect test? Probably not. But it's damn near close.  The problem is the courts can't just tell examiners to use their own discrection on interpretation of 101, they have to always create some "test".

I think it should be possible to infringe a patent by sitting, thinking, and talking to your friend but only provided that whatever portion of the activity that infringes is new, non-obvious, enabled and definite in view of the prior art methods of sitting, thinking and talking, and provided some new function or advantage is provided. 

If I come up with a way to increase the productivity of human interactions mentioned above, the question is, does Public Policy want for me to keep my mouth shut about it, or encourage me to disclose it by providing me a limited monopoly so that everyone can ultimately benefit ?     How about, if I know how to reproduce what Ed Leedskalnin built at Coral Castle, using my mental powers alone, and I know of a way to teach it to you ?   I might disclose it if I could patent it, but if I can't I'll take the secret to the grave with me and you all can build your own danged pyramids using those inferior mechanical contrivances.

It should be an interesting case, that Bilski opinion.   Tests aren't always clearcut, but they're better than nothing.   I think that uniform application of all such "tests" is important, and have yet to see all examiners apply Graham as it was put forth some 50 odd years ago.

[Isaac]

I personally don't think interactions between humans or processes that can be performed mentally or verbally should be patentable.

The MoT goes way beyond excluding those things.   

If preventing patents on such things were the only requirement, then including any steps describing non mental activity in a claim would be enough.  Such activity would not need to be central to the invention to prevent talking with your buddy to result in infringing.  The MoT is "near perfect" only in the sense that it draws a bright line inside which claims will definitely be rejected.  But with regards to finding statutory subject matter, the line is fuzzy and indistinct.  I suspect that anyone interested in something other than rejecting claims would disagree about what constitutes perfection.

[Examinerguy]

I think it should be possible to infringe a patent by sitting, thinking, and talking to your friend but only provided that whatever portion of the activity that infringes is new, non-obvious, enabled and definite in view of the prior art methods of sitting, thinking and talking, and provided some new function or advantage is provided. 

With that mentality by 2050 you'll be living out each day hoping you don't owe money to someone for an action you are performing. OH CRAP I WIPED WITH MY OPPOSITE HAND!! THERE GOES $20!

[ChrisWhewell]

OK, but I have devised a way to review a 30 page spec having eight drawings, perform an adequate search and write a first office action on the merits that meets PTO quality standards in just under seven hours, while sitting in this chair and moving my arms.

Since society won't reward me with a patent, I'm not going to tell ANYONE how I do it - ever.
 

[dablueman]

OK, but I have devised a way to review a 30 page spec having eight drawings, perform an adequate search and write a first office action on the merits that meets PTO quality standards in just under seven hours, while sitting in this chair and moving my arms.

Since society won't reward me with a patent, I'm not going to tell ANYONE how I do it - ever.
 

Your application would be rejected as a claim for a perpetual motion machine. 

[MYK]

OK, but I have devised a way to review a 30 page spec having eight drawings, perform an adequate search and write a first office action on the merits that meets PTO quality standards in just under seven hours, while sitting in this chair and moving my arms.

Since society won't reward me with a patent, I'm not going to tell ANYONE how I do it - ever.
 

Your application would be rejected as a claim for a perpetual motion machine. 

Only if coffee is not involved.  Still dangerously close to this:
(http://4.bp.blogspot.com/_I2uQkGxIykM/Sbdsh68XAMI/AAAAAAAADG4/fAao2TN6VvQ/s1600-h/wormhole-500x399+mcs.jpg)

[JimIvey]

I think it should be possible to infringe a patent by sitting, thinking, and talking to your friend but only provided that whatever portion of the activity that infringes is new, non-obvious, enabled and definite in view of the prior art methods of sitting, thinking and talking, and provided some new function or advantage is provided. 

With that mentality by 2050 you'll be living out each day hoping you don't owe money to someone for an action you are performing. OH CRAP I WIPED WITH MY OPPOSITE HAND!! THERE GOES $20!

Oh, give me a friggin' break!!  No patent filed today will be in force in 2050.  And, 102(b) is still very much in effect.  And, I'd be happy to submit a sworn statement that I practiced the invention of wiping with the opposite hand well before one year prior to the filing of the application in question if necessary to keep stupid patents like that from issuing.

Get a grip, dude.  After 101, you still have to get through 112, 102, and 103.  And patents only last 20 years from filing.  I assure you that the sky is not falling.

Regards.

[inventorchick]

Nothing.   Wait and see.

Time=money.  Wait and see is VERY expensive.

Provisional filing is an interesting idea.  On the other hand, for those who are getting 101s of the method claim in a standard apparatus with method of using the apparatus claim, super simple way of overcoming such a 101 is to convert the independent method claim into a dependent method claim, as in

The method of using the apparatus of claim 1.

Simple solution, makes file wrapper tiny.

[cheesepep]

The method of using the apparatus of claim 1.

Simple solution, makes file wrapper tiny.

Would this be considered a method claim and a dependent claim?

[JimIvey]

Nothing.   Wait and see.

Time=money.  Wait and see is VERY expensive.

My guess is that Chris meant not doing anything differently until a decision is handed down, not postponing filing of all papers until the case is decided.  At least, that's how I took it.

For what it's worth, In re Bilski has affected the way I write and prosecute application in only a very small way -- spending just a little more effort to make involvement of computer hardware just a little more explicit.  I don't expect to change that after the decision from the Supreme Court.  I haven't postponed anything and don't intend to.

I also haven't changed my thoughts as to what will and will not survive SCt scrutiny in In re Bilski.  Whatever may happen to the claims at issue in In re Bilski, I expect the law of Section 101 to return to its prior state.

Regards.

[inventorchick]

The method of using the apparatus of claim 1.

Simple solution, makes file wrapper tiny.

Would this be considered a method claim and a dependent claim?

Yes to both I think.  Realize a claim like this is a hybrid: both a method claim and an apparatus claim.  Incidentally, that the whole point of Bilski, that pure method claims are illegal, no?

[Robert K S]

No.  Or, depends how you define "pure".

[JimIvey]

The method of using the apparatus of claim 1.

Simple solution, makes file wrapper tiny.

Would this be considered a method claim and a dependent claim?

Yes to both I think.  Realize a claim like this is a hybrid: both a method claim and an apparatus claim.  Incidentally, that the whole point of Bilski, that pure method claims are illegal, no?

First, I think it's clearly a method claim and not an apparatus claim.  At the very least, it's not a hybrid claim as I understand the term. 

And, I disagree with the interpretation of Bilski -- I'm not sure what you mean by "pure method", but method claims are expressly listed as statutory in Section 101.  Bilski modified a judicially created exception to that -- disallowing method claims that don't require a machine or require transformation of matter.

Ah, I think I get your point.  If by "hybrid" claim you mean a method claim that has some explicit reference to physical elements and a "pure" method claim does not refer to anything physical, you're close.  Just note that "hybrid" claims mean something different and they're impermissible.  I would also note that reference to physical things in a method claim need not be explicit -- see In re Abele.

Regards.