In practice, moving on to examination under sections 102 and 103 means
processing the application on examination of prior art alone. Section 102 just
concerns novelty with respect to publications and prior art. But many people do
computer-related things without writing academic papers or magazine articles
about what they are doing, and they don't all submit patents. If you did not
know how the law was applied, then you might presume that
‘nonobviousness’ had some role in preventing “stupid”
patents, but all it is used for, is to say that a patent claim is
‘obvious’ over X and Y, because it would have been obvious for the
PHOSITA to combine the prior art references in view of some specified
reason.
In patent law, “obvious” does not mean
“obvious to implement”. Nor does it mean
“obvious with the
benefit of hindsight”. Under section 102, the question of whether the
invention is obvious over references X and Y means, upon being informed of
references X and Y, would it have been obvious to the unimaginative PHOSITA that
their teachings should be combined. Or would it have been obvious to the
PHOSITA
to go a little bit beyond what is taught in X, perhaps prompted by some
small suggestion.
If much computer programming and mathematics is to be
kept out of the reach of State Street patent law, then a penumbra of
unpatentable obvious routine applications needs to be established around the
umbra of laws of nature, natural phenomena, and abstract ideas. The
Supreme Court justices seem to have
started down that road in Mayo, but
it will require more judgements from them to establish the boundaries of such a
safe harbor from over-reaching patent law.
And there are very tricky
questions as to how you separate off the unpatentable subject matter from the
patentable subject matter, and no matter what people might think, it will not be
easy to find the dividing line. [ Reply to This | Parent | # ]
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