On 7/21/05, Arnoud Engelfriet <[EMAIL PROTECTED]> wrote: > US Patent class 705 is full of such patents where the examiner > wasn't "on the ball". Only very recently have I seen US office > actions where the examiner talks about "technological progress".
Oh, I agree with you completely that this is one of the worst areas of incompetence and/or regulatory capture in the USPTO. But it's hard for me to lay the majority of the blame at the feet of the legislative or judicial branches, based on what I understand to be the public record. Maybe the State Street case was chosen for litigation because it's an extraordinarily convincing presentation of the facts illustrating the principle that an invention can solve a microeconomic problem rather than engineering as such. If so, it has its parallels in EPO case law, including two cases cited by your PBS Partnership example. > My understanding was that this kind of patent was perfectly > allowable under US law. There's a useful, concrete and tangible > result, and you can't throw it out because it's a method of > doing business. That's how "everyone" interpreted State Street Bank. There still needs to be an authentic engineering relationship between the claimed process and a tangible outcome, which I just don't see in PBS Partnership. The State Street opinion didn't change that requirement, and I find it difficult to imagine the Federal Circuit authorizing the acceptance of the disclosure and claims of #4,750,121 as an "invention". Generally speaking, the precedential value of an appellate opinion doesn't extend far beyond its holdings. The only holdings I can find in the State Street opinion are: <quote> We hold that declaratory judgment plaintiff State Street was not entitled to the grant of summary judgment of invalidity of the '056 patent under § 101 as a matter of law, because the patent claims are directed to statutory subject matter. </quote> OK, that's just a summary of the holding below; no risk of that statement by itself being dispositive in a later case. <quote> Today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces "a useful, concrete and tangible result" -- a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades. </quote> That's a statement that Alappat's "useful, concrete, and tangible result" test is applicable when the result is market activity rather than seed-free cotton or goop in a test tube. Now, if you ask me (IANAL, TINLA), this holding is unfounded in Supreme Court authority. The main Supreme Court precedents (Diehr and Benson) cited as support by the State Street court rely on the 1877 Cochrane v. Deener case, cited in part: "A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing." That doesn't sound to me like carte blanche to patent a mode of pricing analysis. Flook isn't on point, and to my eye the claim of support from Chakrabarty is disingenuous at best; I cannot agree that "the Supreme Court has acknowledged that Congress intended § 101 to extend to 'anything under the sun that is made by man" based on a passing quotation from legislative history in the Chakrabarty opinion, nor does a pricing proposal strike me as a "_thing_ made by man". But I see no indication that State Street Bank sought certioriari; so we may have to wait for a later business methods case to see whether the Supremes rip the Federal Circuit a new one for abuse of discretion. By the way, I need to correct something I said earlier. The State Street court did not direct the USPTO to cease the practice of automatically denying patents on business methods. The USPTO had already done so in 1996, presumably in part as a consequence of the Alappat ruling. The State Street opinion comments approvingly on the 1996 editions of the Manual of Patent Examining Procedures and Examination Guidelines for Computer Related Inventions, closing with: "We agree that this is precisely the manner in which this type of claim should be treated. Whether the claims are directed to subject matter within § 101 should not turn on whether the claimed subject matter does 'business' instead of something else." Cheers, - Michael
