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.
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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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