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Authored by: Anonymous on Tuesday, July 10 2012 @ 08:12 PM EDT |
No, the grandparent to this post is right. The Act uses the
term "subject matter" in both 101 and 103. It's easy to
confuse "subject matter" with "obviousness" because the act
itself makes no distinction. It says that anything "obvious"
is not patentable "subject matter."
What the great-grandparent meant to say was, "don't confuse
101 arguments with 103 arguments."
There's a not-quite-dead debate about whether 101 and 103
can be read separately or not, but the current leading
theory is as the parent to this post stated: first you ask
whether 101 is satisfied, then if you pass that hurdle you
tackle 103.
Under 101, you ask, "is it pure math, or a law of nature,
or..." (various other things that aren't actually found in
the text of the statute but have been propounded by the
Supreme Court, mostly for reasons that are hard for me to
completely separate from section 103 arguments). If not, go
on to section 102.
Under 102, you ask, "is it new, and also not 'abandoned'?"
If so, go to 103. 103: "Was the invention non-obvious?"
And so on.
Lawyers like to break analysis down into discrete, testable
questions, otherwise you can go round and round.[ Reply to This | Parent | # ]
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Authored by: Anonymous on Tuesday, July 10 2012 @ 08:28 PM EDT |
As I understand it, Gene Quinn interprets things the way you just described. From his reaction to Mayo v. Prometheus:But wait, there is
more! With respect to mixing the 101 patent eligibility inquiry with the 102
novelty inquiry, Breyer admits that is exactly what he is doing! He wrote:
We recognize that, in evaluating the significance of additional
steps, the §101 patent-eligibility inquiry and, say, the §102 novelty inquiry
might sometimes overlap. To be clear, he wasn't happy.
Also:Did all nine of the Supreme Court Justices just conflate patent
eligibility with novelty and non-obviousness? Yes they did! But it gets worse
— they explicitly admitted doing so! The Supreme Court also further
specifically ignored the Government’s objective, reasonable and until today
correct assertion that any step beyond a statement of a law of nature transforms
the claim into one that displays patent eligible subject matter, with issues of
whether those steps are known to be properly resolved by 102 and
103. He wants to decide if the subject matter is patentable, then
look at novelty, etc. That seems to favor the patent owners.[ Reply to This | Parent | # ]
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