Judge Pauline Newman in Trading Technologies v. CQG wrote that:
“For Section 101 purposes, precedent does not consider the substantive criteria of patentability…. We reiterate the Court’s recognition that “at some level, all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Alice, quoting Mayo. This threshold level of eligibility is often usefully explored by way of the substantive statutory criteria of patentability, for an invention that is new, useful and unobvious is more readily distinguished from the generalized knowledge that characterizes ineligible subject matter….the public interest in innovative advance is best served when close questions of eligibility are considered along with the understanding flowing from review of the patentability criteria of novelty, unobviousness, and enablement, for when these classical criteria are evaluated, the issue of subject matter eligibility is placed in the context of the patent-based incentive to technologic progress.”
It appears that Judge Newman is essentially explaining that there is sometimes value in analyzing 35 U.S.C. 102 and 103 (novelty and non-obviousness) issues in order to help resolve close-cases of 101 (statutory eligibility) issues. That leaves open the possibility that she would apply the Alice-Mayo framework to only those cases where statutory eligibility is not glaringly apparent from the face of the claims.
Obviously, any restriction of Alice-Mayo framework would be more than welcome at this juncture. It should be mentioned, however, that Judge Newman's analysis is not precedential, and moreover, even if it were precedential, the U.S. Supreme Court could overrule her. Still, we are seeing a glimmer of hope for software patents in the wake of the horrors brought by Alice and Mayo.
“For Section 101 purposes, precedent does not consider the substantive criteria of patentability…. We reiterate the Court’s recognition that “at some level, all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Alice, quoting Mayo. This threshold level of eligibility is often usefully explored by way of the substantive statutory criteria of patentability, for an invention that is new, useful and unobvious is more readily distinguished from the generalized knowledge that characterizes ineligible subject matter….the public interest in innovative advance is best served when close questions of eligibility are considered along with the understanding flowing from review of the patentability criteria of novelty, unobviousness, and enablement, for when these classical criteria are evaluated, the issue of subject matter eligibility is placed in the context of the patent-based incentive to technologic progress.”
It appears that Judge Newman is essentially explaining that there is sometimes value in analyzing 35 U.S.C. 102 and 103 (novelty and non-obviousness) issues in order to help resolve close-cases of 101 (statutory eligibility) issues. That leaves open the possibility that she would apply the Alice-Mayo framework to only those cases where statutory eligibility is not glaringly apparent from the face of the claims.
Obviously, any restriction of Alice-Mayo framework would be more than welcome at this juncture. It should be mentioned, however, that Judge Newman's analysis is not precedential, and moreover, even if it were precedential, the U.S. Supreme Court could overrule her. Still, we are seeing a glimmer of hope for software patents in the wake of the horrors brought by Alice and Mayo.
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