If there's a human in your machine, it's not patentable?

[Robert K S]

At the end of MPEP 2105, which deals with the interpretation of 35 U.S.C 101 in light of court cases like Diamond v. Chakrabarty and Funk Seed Co. & Kalo Co., the MPEP rather cavalierly makes a conclusion that seems to come out of nowhere:

"If the broadest reasonable interpretation of the claimed invention as a whole encompasses a human being, then a rejection under 35 U.S.C. 101 must be made indicating that the claimed invention is directed to nonstatutory subject matter."

So, the MPEP says, if you're claiming a car, make sure not to claim it with a driver.  If a helicopter, don't claim it with a pilot.  If you're claiming a medical device with sensors, don't claim it as having the sensors attached to the patient.  As soon as you do, you've run afoul of 101.

But--where does this conclusion come from?  There is no statutory language with respect to humans.  The guideline doesn't apply to non-human animals at all; the section makes that clear.  Is the guideline based on any court case or BPAI decision?  Or was it just fabricated out of thin air?  If it is based on case law, why doesn't the MPEP section cite to the case?

[JimIvey]

Not surprisingly, I believe the conclusion is wrong.  I have no idea how they came up with it.

I'll just note that, generally speaking, it's good to avoid affirmatively reciting people in your claims (users, and such).  It's not very likely that anyone will make, use, sell, or import a machine with a person pre-installed.

Regards.

[Robert K S]

Make, sell, import, maybe not.  Use, though?  If it's impossible to use the invention without a person attached, there's no issue.

[JimIvey]

Okay, so I see a user/computer combination as claimed.  How am I going to use that user/computer combination?  I suppose I could drag them into position to serve as a doorstop. 

And, more seriously, I meant on a large enough scale to support the costs of patent litigation.

Regards.

[JustAnotherExaminer]

So, the MPEP says, if you're claiming a car, make sure not to claim it with a driver.  If a helicopter, don't claim it with a pilot.  If you're claiming a medical device with sensors, don't claim it as having the sensors attached to the patient.  As soon as you do, you've run afoul of 101.

"Encompasses" in 101 rejection land means "at least one BRI embodiment that is", not that the actual claim is directed to encompassing humans.

So if one BRI embodiment of a particular claim is one or more humans then you get a 101 issue. You could have other embodiments in the spec that aren't human, but the claim language "encompasses at least one embodiment that is non statutory".

[JimIvey]

Sorry for being dense this morning....  "BRI"?  Not sure what that is.

Regards.

[DogDayPM 9er9er9er]

Sorry for being dense this morning....  "BRI"?  Not sure what that is.

Regards.

Broadest [UN-]Reasonable Interpretation as used against a feature of the claims in order to sweep in all possible prior art. 

A recent example for me was in a method claim reciting something is washed "with water", under BRI, the examiner reads this feature of my claim onto prior art showing a washing step using 90% Isopropanol. 

Because after all, for 90% isopropanol the other 10% is normally water, therefore the art process is the same as washing "with water".

[JimIvey]

Funny!  When someone offers me a glass of "water", that's what I consider a reasonable interpretation -- anything with more than about 2% water is, in fact, "water."

But now the earlier post makes more sense.  It's not that any claim that includes a human as a component violates Section 101 but rather than any claim for which a human being alone is an infringing embodiment runs afoul of Section 101. 

That makes more sense, though I wonder if it applies to surgical procedures or pharmaceutical treatment involving prescription of a substance in treatment of a disease.  I think those are performed by human beings alone.

Regards.

[DogDayPM 9er9er9er]

Funny!  When someone offers me a glass of "water", that's what I consider a reasonable interpretation -- anything with more than about 2% water is, in fact, "water."

   Tell the wife the same thing all the time...  "But Honey, at least I DID put a piece of ice in it".

Coming at it from the opposite direction, I'm about frustrated enough to mention in my next argument what a nasty trick it would be to hand a man, dying of thirst and asking for water, 180-proof moonshine.  Then ask if the Examiner thinks those are also equivalents...

[Robert K S]

So, the MPEP says, if you're claiming a car, make sure not to claim it with a driver.  If a helicopter, don't claim it with a pilot.  If you're claiming a medical device with sensors, don't claim it as having the sensors attached to the patient.  As soon as you do, you've run afoul of 101.

"Encompasses" in 101 rejection land means "at least one BRI embodiment that is", not that the actual claim is directed to encompassing humans.

So if one BRI embodiment of a particular claim is one or more humans then you get a 101 issue. You could have other embodiments in the spec that aren't human, but the claim language "encompasses at least one embodiment that is non statutory".

JustAnotherExaminer, do you mind if I ask you some questions that will help clarify what you're saying?

An invention claimed as a human wearing a bionic limb may "encompass" a human insofar as it includes a human.  But it does not "encompass" a human in the meaning of the word "encompass" you seem to be using, because it is not solely a human.  It is a modified human, an augmented human.  Have I interpreted your "encompass" correctly?

Let's say I claim a bionic limb having a socket having an interface capable of mating with a bionic attachment implanted in a human limb.  The examiner gives a 101 rejection saying, "Human included.  Fix it by changing "bionic attachment implanted in a human limb" to "bionic attachment adapted to be implanted in a human limb".  Isn't the proper response, "No way, Jose, the claim isn't about the bionic attachment, it's about the bionic limb having an interface, and the 'adapted to' is already implicit in the 'capable of mating with'"?

[JustAnotherExaminer]

Um, your example has nothing to do with my art and I wouldn't pretend to have a clue what you're talking about.  Let me try an easier one...

Claim 1. A network comprising:
a host for hosting a conference;
at least one participant for joining the conference;
wherein conference material is presented to the host and the at least one participant simultaneously.

Your spec says: "a host and participant can be a computer, pda, or the like"; "conference material is any audiovisual information or the like".

Claim 1 could be embodied as Embodiment1 where the host is a pda, a participant is a computer, and the conference material is audio signals played out over speakers.
Claim 1 could also be embodied as Embodiment2 where the host is a human, a participant is a human, and the conference material is verbal communication.

You would get a 101 because the claim encompasses at least one embodiment that is non-statutory (specifically embodiment2).

Substitute "encompasses" with "is broad enough to be directed towards"?

[JimIvey]

Funny!  When someone offers me a glass of "water", that's what I consider a reasonable interpretation -- anything with more than about 2% water is, in fact, "water."

   Tell the wife the same thing all the time...  "But Honey, at least I DID put a piece of ice in it".

Coming at it from the opposite direction, I'm about frustrated enough to mention in my next argument what a nasty trick it would be to hand a man, dying of thirst and asking for water, 180-proof moonshine.  Then ask if the Examiner thinks those are also equivalents...

At the risk of going to an unpleasant place here.....  You could conduct an interview and offer the examiner some "water".  (be sure to make the air-quotation-marks with your fingers).  And, to complete the point, ask her/him what s/he would have thought was in there without the clear warning of the air-quotation-marks.

And, to be fair, you could amend "water" to recite "only water".  Then, be prepared to litigate over how pure water must be to still be "water".  For example, does tap water qualify?

Regards.

[JimIvey]

You would get a 101 because the claim encompasses at least one embodiment that is non-statutory (specifically embodiment2).

Why not 102 instead?  I'm not sure 101 is secure footing here, whereas 102 is a slam dunk if the claim really does cover two or more people talking to each other.  From the outside, pressing 101 at the fringes of the law when a clear and easy 102 is available seems, from the outside, as if the PTO is pushing a political agenda.

I believe much of the complexity of Section 101 law is that many see it as a proxy for 102.  I don't think it should be; it muddies the law.

Regards.

[DogDayPM 9er9er9er]

And, to be fair, you could amend "water" to recite "only water".  Then, be prepared to litigate over how pure water must be to still be "water".  For example, does tap water qualify?

Regards.

I'm afraid "only water" or words to that effect would draw a new matter rejection.  The EU agent who wrote the spec never contemplated there being any argument about what "water" meant, so all uses of the word in the spec are simply "with water" and "in water" without the sort of discussion or definition you'd usually see in a US-drafted spec.

[Robert K S]

Reviving this thread to ask again--when the MPEP says, "If the broadest reasonable interpretation of the claimed invention as a whole encompasses a human being, then a rejection under 35 U.S.C. 101 must be made indicating that the claimed invention is directed to nonstatutory subject matter", is there any case law upon which this proscription is based, or is it just policy indicating the PTO's in-agency interpretation of 101?

More importantly, is the proscription against people valid only for apparatus/system claims or does it apply to method claims as well?  E.g., if a method is claimed which talks about different (potentially human) parties contributing to a transaction, would that trigger a 101 rejection?  (Presume the method claim meets the Bilski test by incorporating a particular machine in a non-insignificant step.)  Is there anything that would prevent the limiting of a claim by saying who, precisely, must perform a step of the method?  (E.g., a surveyor gathering the data, an engineer running the geological stress simulation, an architect revising his plan on the basis of the simulation, rather than just gathering the data, running the geological stress simulation, revising the plan on the basis of the simulation.)