In re Bilski / Part 2 / The fundamental fundamentals of "fundamental principles"

The In re Bilski majority notes: "Specifically, the [Supreme] Court has held that a claim is not a patent-eligible "process" if it claims [1] "laws of nature, [2] natural phenomena, [or] [3] abstract ideas." ...Such fundamental principles [footnote 5] are "part of the storehouse of knowledge of all men . . . free to all men and reserved exclusively to none." ... ("A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.") --quoting Le Roy v. Tatham, 55 U.S. 156 (1852)

One must ask what the urgent need was for the Bilski majority to invent new terminology ("fundamental principle") for covering up and hiding the original triad of:
[1] "laws of nature",
[2] "natural phenomena", [and]
[3] "abstract ideas"?
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In re Bilski: Trick or Treachery?

Halloween is a day for costumes.

Halloween is about disguise.

People can't see behind the mask to divine among the wicked and wise.

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The Punched Drunk Eye of Schrodinger's Cat

Ex parte Cynthia Roberts (USPTO BPAI 7/15/08) is sufficiently "perturbing" to stir me out of my blogging hiatus.

Since when is a perturbed eyeball not a composition of matter in an altered state?

If a thing is measured, is it not quantum mechanically in an altered state due to entanglement with the measuring device?

Here's the background:

Claim 120. A method for improving refractive ophthalmic treatment comprising:
[a] obtaining a first, pre-operative diagnostic measurement of an individual cornea of an eye;
[b] determining a first operative corneal ablation specification based on the first, preoperative diagnostic measurement;
[c] obtaining non-tissue removing perturbation data from the individual cornea before ablation to obtain a biodynamic response data from that individual cornea;
[d] obtaining a second, post-perturbation, preoperative diagnostic [second] measurement of the individual cornea;
[e] correlating said non-tissue removing perturbation data with the biodynamic response data gathered from a statistically significant number of corneas; and
[f] establishing an individual customized laser ablation specification for corneal ablation for that individual cornea, based at least in part on said biodynamic response data.

Are you with me so far?

The body of claim 120 ties itself to a composition of matter (an individual eyeball) and inherently requires perturbation of the eyeball in order to obtain the recited bio-"dynamic" response. (There is another claim 99 in the case that explicitly recites perturbation.)

So what does the USPTO Board of Appeals say about the 101 eligibility of claim 120?

You guessed correctly:

"The claim does not include any recitation of a particular machine used to implement the claimed steps. The steps could be performed entirely by a human being with no machine involvement whatsoever."

"[A]bsent the development of some hitherto unknown type of technology, “[t]ransformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.” ... Claim 120 fails to recite transformation of subject matter into a different state or thing. ... [O]btaining data and measurements relating to the cornea ... is a combination of data gathering and mental steps. No transformation of subject matter occurs in these method steps."

"Claim 120, however, does not recite that the individual customized laser ablation specification is established by a computer. The claimed method is not tied to a computer anywhere in the claim."

[So there you have it straight out of 35 USC 101: Whoever invents or discovers a a new and useful process, only if tied to a computer, or an improvement thereof may apply for a patent therefor.]

Wait. There's more. The Board gives us their scholarly analysis of Arrhythmia Research Tech. v. Corazonix Corp., 958 F.2d 1053, 1056 (Fed. Cir. 1992). However, this rant is long enough. We leave it to the readers to grok the rest of Ex parte Roberts for themselves.

A Life More Ordinary

Phil Phositua was the most ordinary of practitioners in practicing his chosen area of useful art, save for one grace. Phil did not live in the present. He existed only in a far forgotten past known fondly as that time of crystalized conception of invention.

Everyday Phil would "routinely" wake up, routinely eat breakfast, routinely eat lunch and dinner and then routinely go to bed.

There was one thing that Phil did not routinely do. That was to everyday routinely conduct every conceivable experiment that could be conceptualized in hindsight by persons who wanted to intrude on the routine of Phil's ordinary day.

Remarkable as it may sound, ordinary artisans do not have such a routine. Ordinary practitioners are routinely lazy. They like to do as little as may be necessary for carrying on with their ordinary lives and the ordinary practice of their art. Phil is not an automaton. He is a person. Persons get tired and upset when asked to perform more than is absolutely necessary in their routine jobs. Automatons do not get tired. Automatons do not get lazy. Automatons do not fall into habits. However even an automotan has limited finite memory, limited bandwidth and can't routinely perform all conceivable experiments as a matter of routine. Automatons are not imaginative. But then again, neither is a "routine" set of acts imaginative. It's as dull as boiler plate pablum from a governement agency.

(Please stay tuned. The Ordinary Soap Opera Days of Phil's ordinary life will be continue after a word from today's sponsor.)

Today's sponsor is the word "routine".

Routine: habitual or mechanical performance of an established procedure, commonplace tasks, chores, or duties as must be done regularly or at specified intervals; typical or everyday activity, a regular course of procedure, a regular, unvarying, habitual, unimaginative, or rote procedure, a worked-out part (as of an entertainment or sports contest) that may be often repeated, an unvarying and constantly repeated formula, as of speech or action; convenient or predictable response, a sequence of computer instructions for performing a particular task.

(Please come back to this site and re-read The Ordinary Soap Opera Days of Phil's Ordinary Life. Make it part of your daily "routine". Until we meet again, may your life continue to be ever so ordinary.)