Wednesday, August 15, 2018

Berkheimer guidance: "It depends on what the meaning of the word 'new' is."

On August 17, 2018, President Clinton introduced one of the more interesting "word issues" of all time, concerning the meaning of the word "is."
In context, the relevant exchanges:

Q: Mr. President, I want to, before I go into a new subject area, briefly go over something you were talking about with Mr. Bittman. The statement of your attorney, Mr. Bennett, at Paula Jones deposition, "Counsel is fully aware" – it's page 54, line 5 – "Counsel is fully aware that Ms. Lewinsky has filed, has an affidavit which they are in possession of saying that there is absolutely no sex of any kind in any manner, shape or form, with President Clinton". That statement is made by your attorney in front Judge Susan Webber Wright, correct?

Clinton: That’s correct.

Q: That statement is a completely false statement. Whether or not Mr. Bennett knew of your relationship with Ms. Lewinsky, the statement that there was "no sex of any kind in any manner, shape or form, with President Clinton," was an utterly false statement. Is that correct?

Clinton: It depends on what the meaning of the word "is" is. If the – if he – if "is" means is and never has been that is not – that is one thing. If it means there is none, that was a completely true statement. But, as I have testified, and I'd like to testify again, this is – it is somewhat unusual for a client to be asked about his lawyer's statements, instead of the other way around. I was not paying a great deal of attention to this exchange. I was focusing on my own testimony…]

[See, for example,]

About twenty years later, related to 83 FR 17536 ( April 20, 2018 ), the U.S. Patent Office asks us, by August 20, 2018, to present comments concerning guidance on subject matter eligibility, specifically pertaining to Berkheimer v. HP, en banc rehearing denied, 890 F.3d 1369 (May 31, 2018).

The current patent issue might be stated by Clinton to be

"It depends on what the meaning of the word 'new' is."

One notes that 35 USC 101 (but not 35 USC 102) contains the word "new":

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent therefor, subject to the conditions and requirements of this title.

The particular issue: how can a patent claim directed to otherwise ineligible matter, be transformed to a patent-eligible state by adding an inventive concept beyond “well-understood, routine, conventional activity previously engaged in by researchers in the field.”[Mayo v. Prometheus, 566 U.S. 66 (2012)]

Of some historical relation, contemplate the earlier Diehr case.

The priority date for what became the Diehr patent is May 23, 1974. At this point in time, mini-computers such as the PDP-8 were well-established in both academic and industrial laboratories. They could be fitted with analog to digital converters, which ultimately could read, and input, signals from thermocouples, so that temperature readings from external experiments could be made available for rapid calculations.

The first claim of Diehr involved making temperature measurements with a thermocouple, and using these measurements to make calculations via the Arrhenius equation to predict a cure time:

A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:
• providing said computer with a data base for said press including at least, natural logarithm conversion data (ln), the activation energy constant (C) unique to each batch of said compound being molded, and a constant (x) dependent upon the geometry of the particular mold of the press,
• initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,
• constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,
• constantly providing the computer with the temperature (Z),
• repetitively calculating in the computer, at frequent intervals during each cure, the Arrhenius equation for reaction time during the cure, which is
where v is the total required cure time,
• repetitively comparing in the computer at said frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and
• opening the press automatically when a said comparison indicates equivalence


Diehr’s reply brief emphasized the importance of the rapid computer calculations: “Constant recalculations along with continuous determinations of the actual temperatures, is the key feature here, not the equation or the fact of calculation.”

The use of minicomputers to take inputs from thermocouples and to perform calculations thereon was well-understood, routine, and conventional to a skilled artisan at the time of the patent (May 1974). Assuming Diehr was the first person in the micro-world of the rubber-curing business to recognize the value of lab computers in performing calculations (which is not clear on the record), does the claim become eligible under 101 for performing a species of the type of work well-known in the larger area of materials science? As a general matter, can a worker in one field import well-understood, routine, and conventional techniques of measurement or computation from another field to make an abstract idea or law of nature otherwise not patentable, patentable?

In 2012, the Mayo court analyzed the Diehr decision in terms of all the steps. It "found the overall process patent eligible because of the way the additional steps of the process [besides the equation] integrated the equation into the process as a whole." Nothing "suggested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional."

Later, the Alice court gave a different explanation:

In Diehr, by contrast [with Flook], we held that a computer-implemented process for curing rubber was patent eligible, but not because it involved a computer. The claim employed a "well-known" mathematical equation, but it used that equation in a process designed to solve a technological problem in "conventional industry practice." The invention in Diehr used a "thermocouple" to record constant temperature measurements inside the rubber mold — something "the industry ha[d] not been able to obtain." The temperature measurements were then fed into a computer, which repeatedly recalculated the remaining cure time by using the mathematical equation. These additional steps, we recently explained, "transformed the process into an inventive application of the formula." Mayo...


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