|I know you are playing devils' advocate, but this is ignoring what the printed|
matter doctrine is, and this is also ignoring where is the sign in this claim.
The printed matter doctrine is not limited to claims directed to printed matter.
It applies to claims *involving* printed matter. You just can't escape the
printed matter doctrine by saying the claim is not directed to the printed
matter but to a machine.
Think about it. A machine with labels painted on it is clearly a machine. You
don't get to patent an old machine because of new labels without doing more than
a paint job. There are printed matter cases saying that.
And the referent is not the printing press. The printed material doesn't talk
about the printing press. The claim does, but the sign in this invention is not
the claim. The sign is the printed book. The meaning of the content of the book
is not the printing press.
You can go in a bookstore and ask for a book describing hobbits traveling in
faraway countries to destroy an evil ring. They will bring you a copy of The
Lord of the Rings. This is a reversal of the normal semantical relationship. You
use the content of the book to describe the physical stack paper with marks of
ink. That doesn't make the book a referent of its own text. The book is still a
sign-vehicle. When identifying a referent you need to take the reversal of the
semantical relationship into account. This is the error discussed in section
It is funny that you argue the referent is the printing press because this is
what the claim is describing. I can imagine the Federal Circuit arguing
precisely that because, in effect, this is what they are currently doing with
software patents. I can't imagine the Supreme Court going along with this
nonsense once it is brought to their attention.
This is precisely the point of the printing press argument. It makes the
absurdity apparent. If one tries to argue the configured printing press is
indeed patentable as you did, the case won't survive a Supreme Court challenge.
I think there is also hope that even the Federal Circuit will fear going this
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Maybe the printed matter doctrine might invalidate the methods claims. But I
don't see how the apparatus claims (to the configured printing press), if
satisfying the 'utility' requirement, could possibly be patent-ineligible, under
patent law as I understand that patent law is currently applied in all areas of
technology. In patent prosecution and litigation, the claims are what matter.
Infringement is determined with respect to individual claims, that have to stand
in their own right. I claim the printing press. The printing press is a
machine. As Judge Newman would say (and did say during the CLS v. Alice oral
argument with regard to the 'system' under discussion there), if the printing
press is patent-eligible, as a machine, it cannot cease to be patent-eligible,
on account of being configured in some specific fashion. If the printing press
itself is patent-eligible (and therefore qualifies to be considered for novelty
and non-obviousness under sections 102 and 103), then so is the configured
printing press. Moreover configuring a printing press for printing surely
cannot 'print' the text on the machine. If the text is printed on the printing
press simply by configuring the printing press for printing, what printing
device prints the text on the printing press in the course of configuring the
printing press to print The Law of the Rings. And what meta-printing
device prints that text on the printing device that prints it on the printing
press so that it can be printed on the paper? Configuring a machine must surely
be more significant for purposes of claim differentiation and claim limitation
than merely sticking a label on a machine?
I have a recollection that
Judge Rich said, 'Look to the invention'. But, for Judge Rich, the 'invention'
was not what you or I would consider to be the true invention, assuming there
was one. For Judge Rich, the invention was synonymous with what is
claimed. And I understand that is a basic principle of current patent law.
Say I added claims 1 and 2 to a specification going into excruciating mechanical
detail about how the printing press was constructed, and how it was configured?
How would you argue for the existence of the printed text, in order to
invalidate the claims under the printed matter doctrine, when the printed
book does not appear in either the claims or the specification? And if you
can't find the printed book, or anything that specifically refers to the
meaning of the text, where or what is the referent?
would presumably reject claims 1 and 2 for lack of 'utility'.
hopefully, once the Federal Circuit has finished with CLS v. Alice, all the
arguments will be flushed out, the Supreme Court will grant certiori, refute the
arguments that will be put forward by Rader, Newman et al., and give us a
sensible per curiam opinion, hopefully unanimous, that will help to form
the foundation of a sensible and workable Section 101 jurisprudence.
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