Tuesday, February 20, 2007

Ex parte Bilski meets Zurko (5 USC 706)

One anonymous reader brought the ghosts of In re Zurko back into mind. For those who don't remember, Zurko went all the way to the US Supreme Court (Dickinnson v. Zurko). The linchpin of the Zurko decision was 5 USC §706:
TITLE 5--GOVERNMENT ORGANIZATION AND EMPLOYEES PART I--THE AGENCIES GENERALLY CHAPTER 7--JUDICIAL REVIEW Sec. 706. Scope of review To the extent necessary to decision and when presented, the reviewing court [i.e. the Fed. Cir.] shall decide all relevant questions of law, interpret constitutional and statutory provisions, and determine the meaning or applicability of the terms of an agency action. The reviewing court shall-- (1) compel agency action unlawfully withheld or unreasonably delayed; and (2) hold unlawful and set aside agency action, findings, and conclusions found to be-- (A) arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law; (B) contrary to constitutional right, power, privilege, or immunity; (C) in excess of statutory jurisdiction, authority, or limitations, or short of statutory right; (D) without observance of procedure required by law; (E) unsupported by substantial evidence in a case subject to sections 556 and 557 of this title or otherwise reviewed on the record of an agency hearing provided by statute; or (F) unwarranted by the facts to the extent that the facts are subject to trial de novo by the reviewing court. In making the foregoing determinations, the court shall review the whole record or those parts of it cited by a party, and due account shall be taken of the rule of prejudicial error. (Pub. L. 89-554, Sept. 6, 1966, 80 Stat. 393.)
Following on the heels of Zurko's I-III, one can find the following in the MPEP:
"[T]he Board cannot simply reach conclusions based on its own understanding or experience-or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings."
In Ex parte Bilski we find numerous references to "machine" with a concommitant assumption that human beings can never be viewed as falling under the definition of "any" machine and that process carried entirely by operation of the human machine can never qualify as "any" process. More to the point, at pages 6-7 the Bilski panel concludes:
We do not believe the outcome of this case is controlled by ... State Street and ATT v. Excel because ... those cases involve the "special cases" of transformation of data by a machine. ... In recent years the USPTO has been flooded with claims to [alleged] "processes", many of which bear scant resemblance to classical processes of manipulating or transforming compositions of matter or forms of energy [Did you catch that about "energy"?] from one state to another.
And then midway into page 8 we fumble but then catch hold about this deep insight regarding the Heimlich Manuever and its ilk:
Still other process claims involve [mere] physical human activity --methods of throwing a ball or causing a fumble. Do these process claims cover patentable subject matter? Must [we, the poor, the hudled, and the tired USPTO] analyze such claims for compliance with written description and enablement requirements, and [oh my] search the prior art for "evidence" of novelty and nonobiousness [oh my]?
(The sarcasm in brackets [..] is obviously added here. The point is to get you people out there to slow down your speed-reading habits and to start critically analyzing some of the absurd assertions made even at the Board level of the USPTO. Are these assertions founded on "evidence" in the record and on sound logical reasoning? Or are we witnessing a hysterical PTO, drowning under the "flood" of such recent "process claims"?) At the bottom of page 9 comes this imparting of wisdom: "The Fed. Cir. cannot address rejections that it does not see." ... To Be Continued (page 31, item (24) ... page 35 bottom the Board is not bound by guidelines ..but does like to watch Pirates of the Caribbean ... pg 43: the steps of c1 do not transform ... )

No comments: