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Is 101 redundant? June 29, 2010

Posted by Brian Schar in General, Patent prosecution, USPTO.
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In Bilski, the Supreme Court reiterated the “three specific exceptions” to the broad expanse of patentable subject matter defined by 35 USC 101: “laws of nature, physical phenomena, and abstract ideas.”  But are these exceptions necessary?

Laws of nature and physical phenomena necessarily anticipate themselves.  Gravity has billions of years of prior art behind it, for example.  Additionally, an inventorship issue arises with respect to natural things that are discovered; one could not patent X-rays, for example, solely on the basis of being the first to develop a detector to observe them.  (The detector, of course, would be patentable, and in this case almost certainly neither anticipated nor obvious.)  So, there is no need for an exception to 101 for these categories of subject matter.  Claims directed to that subject matter would fail fatally in the first Office Action.

An abstract idea, by definition, is not capable of enablement or reduction to practice, constructive or otherwise.  Thus, any claim directed to an abstract idea would lack description in the specification, and would be rejected under 112 during prosecution.

If 101 lets one patent anything that isn’t one of those three exceptions, but none of those three exceptions are needed to prevent claims directed to those three areas from issuing, then what’s it useful for?

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Comments»

1. In re Bilski Roundup | The Invent Blog® - June 30, 2010

[…] American IPA – Is 101 Redundant? […]

2. Karen G. Hazzah - July 23, 2010

Brian, you make a great point, and an original contribution to the Bilski discussion. I have a blog entry on Interesting Bilski Posts, and I’ve added your blog entry to the list.

>An abstract idea, by definition, is not capable of enablement or >reduction to practice, constructive or otherwise.

Amen to that.

One of the [many] things that bugs me about “abstract idea” in the context of 101 is that people misuse the word “abstract.” Many folks state that a computer executing instructions to perform an algorithm falls within “abstract idea”. Webster’s first definition is “disassociated from any specific instance”. AHD’s first definition is “Considered apart from concrete existence.”

I don’t understand how folks can say with a straight face that a computer executing instructions meets either of these definitions.

3. The Invent Blog | In re Bilski Roundup - The Invent Blog - November 24, 2013

[…] American IPA – Is 101 Redundant? […]


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