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Definition of 'the invention' | 661 comments | Create New Account
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Definition of 'the invention'
Authored by: macliam on Monday, April 01 2013 @ 06:37 PM EDT

The definition of “invention” in § 100 is obviously incapable of defining the term, since the definition is circular, and, if treated as recursive would presumably define an “invention” as a “discovery”, which would be absurd, and would also make the word redundant.

So this is my latest:

An “invention” is the subject-matter that results from an act of invention or discovery.

With this definition, it should be clear that, in order to satisfy the requirements of Section 101 it is necessary that an act of invention or discovery within the meaning of the statute has occurred. For this purpose, the manner in which the subject matter was arrived at is not relevant. But in cases where a claim recites a law of nature, natural phenomenon or abstract idea, it must be shown that the subject-matter amounts to more than an obvious application of a law of nature, natural phenomenon, or abstract idea. The scientific discovery of a law of nature or of a natural phenomenon is not an inventive act within the meaning of the statute. And the devising of an application of such a discovery that would be obvious to a PHOSITA apprised of the discovery would not be an inventive act. In particular, the devising of an application of a scientific discovery would not be an inventive act if the possibility and nature of the application were foreseen before the process of scientific discovery were undertaken. The same principle would apply to obvious applications of abstract ideas such as mathematical theorems and algorithms that solve a particular mathematical problem.

This reasoning, if valid and accepted, would demonstrate how the Mayo doctrine is necessarily implicit in the wording of the statute. And maybe, if the evidence of an expert witness suffices to prove enablement, where the specification does not disclose a detailed algorithm, the evidence of the expert witness surely should be sufficient to prove that the devising of the subject matter of the most egregious troll patents (e.g., covering a way of doing business over the Internet) is not an inventive act if the claimed subject matter would be obvious to the PHOSITA. If the threshold requirement for invention under § 101 were met, and the subject matter were properly claimed under § 112, one could then move on to consider the prior art under the well-established investigation under § 102 and § 103.

___

The practically non-existent evidence for ‘legislative intent’ in 1952 would show that the 1952 was intended as a clean-up of the previous statute plus a codification of existing case law. It was not intended to extend the scope of the subject matter.

[ Reply to This | Parent | # ]

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