Patently-O Bits and Bytes No. 30

  • PatentLawPic280Standard Setting & Patents: The Court of Appeals for the District of Columbia has overturned an FTC monopolization ruling against Rambus.  The FTC had found that Rambus deceptively failed to disclose its patentable DRAM technology to the JEDEC standard-setting body. On appeal, the DC court found no evidence of competitive harm and a lack of evidence that Rambus violated disclosure policies of the standard-setting body. File Attachment: rambusdecision.pdf.
  • Markush Update: The PTO has proposed new Markush rules (limiting the use of Markush groups in claims). Recently, the office published a “supplementary notice” regarding the reasons for and impact of the rules. [LINK] The office has also posted comments received from the public. [LINK] The comments include a paper from Hal Wegner arguing that generic claim groupings have been the law since Ex parte Eagle was decided in 1870. [LINK]
  • Mediation: Court of Appeals for the Federal Circuit has an ongoing mediation program. In Q1 of 2008, the program completed 20 patent appeal mediations resulting in 9 settlements. (26 other mediations are still ongoing). [LINK]
  • Blog Meister: Publisher & Author, Dr. Jeremy Phillips published an interesting article in the recent WIPO Magazine all about IP Blogging. Phillips heads the UK Patent Blog IP KAT. [Read the Article]
  • PatentLawPic281Community Design: IP Kat has a recent article on a patent dispute involving spiky balls.
  • Prevacid Patent: A Delaware District Court has upheld Takeda’s patents covering Prevacid. [Barkoff]

49 thoughts on “Patently-O Bits and Bytes No. 30

  1. “Have to side with 6k on this one. Dependent claims can embroaden claim scope and moreover shouldn’t be used as a thin edge to needlessly lengthen the examination process. It’s there in black and white.”

    How can dependent claims needlessly lengthen the examination process if they’re before the Examiner? As you said, they’re there in black and white. In my experience, it lengthens the process when the examiner does not examine the dependent claims and merely relies on rejecting the independent claim to reject the dependent claims.

    Thankfully, my experience is very slim on this point as almost all the office actions I receive address the dependent claims. This might explain why appeals in TC 1700 are usually affirmed by BPAI (as addressed in a prior Patently-O post).

  2. Claim differentiation example

    1 … a cylindrically shaped framistat;

    2. the widget of claim 1 where the framistat has an oval cross section.

    Claim 2 isn’t broader than claim 1, but claim 2 does resolve once and for all the question of whether the cylindrical shape of claim 1 must have a circular cross section.

    The fact that a casual reader might not have understood that not all cylinders have circular cross sections doesn’t make claim 2 inappropriate. It also doesn’t mean that in some other application cylindrically might require having a circular cross section. We might even have to “shudder” read the spec to find out what is meant, but at least claim 2 helps out a bit.

  3. “yes, the added structure must be one of the structures … but the dependent claim may then have sufficient structure such that the MPF element in the independent claim is no longer a MPF element in the dependent claim. Thus, both are interpreted differently”

    Careful. Just because the dependent claim has structure now doesn’t meant that it’s broader than the independent MPF claim. Indeed, I find it hard to believe that a specific example would be broader than a “means for.”

  4. “… and I’ve also been discussing how current dependent practice is prohibited by 112.”

    Talk about a lack of reading comprehension! Sheesh!!

  5. “People that have no reading comprehension can kindly not reply to my postings.”

    Better include yourself then.

    I’m just saying. :-)

  6. yes, the added structure must be one of the structures … but the dependent claim may then have sufficient structure such that the MPF element in the independent claim is no longer a MPF element in the dependent claim. Thus, both are interpreted differently

  7. “If the element in the independent claim is in MPF format, a dependent claim may add enough structure so that it is no longer MPF.”

    Are you suggesting that this is one way a dependent claim can be broader than the independent? In order to comply with Section 112, paragraph 4, mustn’t the added structure in the dependent claim be one of the structures described in the specification and corresponding to the means-plus-function element?

  8. If the element in the independent claim is in MPF format, a dependent claim may add enough structure so that it is no longer MPF

  9. “Dependent claims can embroaden claim scope and moreover shouldn’t be used as a thin edge to needlessly lengthen the examination process.”

    What’s so wrong with the word “broaden” that we have to go and make up a new word (“embroaden”)?

    Now, if a dependent claim actually did broaden claim scope, then it would be in violation of Section 112, which expressly states that the dependent claim must “specify a further limitation of the subject matter claimed.”

  10. Have to side with 6k on this one. Dependent claims can embroaden claim scope and moreover shouldn’t be used as a thin edge to needlessly lengthen the examination process. It’s there in black and white.

  11. “and apparently anti-america, given your comments about that pesky ‘third branch’ of the government”

    Pesky? I referred to it as the common man’s saving grace. I.e. the best thing sinced sliced government. People that have no reading comprehension can kindly not reply to my postings.

    “The sort of one claim, very narrow, patents that you’d like to see would be completely worthless.”

    I never said that, claim the whole world if you like. Careful though, I might 102 you.

    “Who in the right mind would publicly disclose their inventions if they could only get protection on one very limited embodiment?”

    Hmmm, people that thought they had figured out something worthwhile to make?

    “As an attorney, it is my job to get my clients the BROADEST protection available for their invention, not to protect one narrow embodiment that they intend on immediately producing.”

    First it should be noted that that is your self-appointed job. Second, I still haven’t said you can’t draft broad claims. All I said was that separate inventions are restrictable under 121 no matter how you claimed them, and I’ve also been discussing how current dependent practice is prohibited by 112. Maybe you could read the above and join that discussion rather than going on about nothing?

    “Who put this idea in your head anyways?”

    Reading the statute with a greater than second grade reading comprehension level. I’m far from perfect, but nobody has gotten on here to explain me being wrong except that congress hasn’t done anything. Which come on, you all know congress, like any legislative body, goes by “if it ain’t broke don’t fix it”. In this case, we’re starting to see that it was broke a long time ago and it’s just now beginning to show.

    “knew and understood what was intended by the language used.”

    So if I say, what a nice clear blue day it is on a rainy day the day is now clear and blue? That was my intent in using the language correct? Your argument and your suggestion are as ridiculous as the fallacious interpretation itself. Maybe the suggestion less so, if only in regards to finding the root cause of the problem.

    You seem to be rather well versed in the history, tell us, did the term “limitation” have a substantially different meaning back in the day than it does now? Perhaps the laws are only going out of date and just need touching up to keep up with language. Or perhaps that’s not the case and limitation meant the exact same thing back then as it does today.

  12. Why not look to what the authors of Title 35 have to say in interpreting Section 112? “When the courts [or others], in seeking to interpret the language of the Act, go through the ritual of seeking to ascertain the ‘intent of Congres’ …, they would do well to look to the writings of these men — Federico, Rich, Harris, and the others — as they, far more than any members of the House or Senate, knew and understood what was intended by the language used.” Mr. Crumpacker, House Subcommittee on Patents, San Franscisco ABA meeting, summer 1962 (quoted in 75 JPTOS 3).

    The late Judge Rich (one of the three authors of the codification which was passed by Congress in 1952 and judge in both the CCPA and the Federal Circuit) has a long list of opinions which he authored, and I have never seen one in which he asserts that the statute re dependent claims has been misinterpreted, and I have seen many in which the validity of dependent claims was considered. He was not one to hold back if he felt a statute was misinterpreted. (I have always found his opinions to be lucid and polite, and knew, when I found one of his cases, that it would be well-grounded in fact and in law.)

    The 1954 Commentary on the New Patent Act by P.J. Federico (examiner-in-chief, US Patent Office, and considered by Judge Rich as the primary author of the 1952 Patent Act), also found in 75 JPTOS 3, states that the provisions of the former statute relating to the specification are, for the most part, set out in section 112 although “changes in arrangement and in language have been made.”

    Dependent claims are dealt with summarily: “In the old statute the requirement for a claim pointing out what the applicant regarded as his invention appeared as a clause in the same sentence relating to the description, which led to some confounding of the nature of the two requirements in a few decisions. In the new statute the clause relating to the claim has been made a separate paragraph to emphasize the distinction between the description and the claim, and the language has been modified. The possible existence of more than one claim in a patent is recognized in the new language.”

  13. Ek6,

    Since you are so violently anti-patent (and apparently anti-america, given your comments about that pesky ‘third branch’ of the government), why the heck do you work at the PTO?

    Also, I’d like to point out an economic reality to you. The sort of one claim, very narrow, patents that you’d like to see would be completely worthless. It would be laughably easy for someone to design right around them. Nobody would file for patents and everything would be kept as trade secrets. Who in the right mind would publicly disclose their inventions if they could only get protection on one very limited embodiment?

    As an attorney, it is my job to get my clients the BROADEST protection available for their invention, not to protect one narrow embodiment that they intend on immediately producing.

  14. E6K — why don’t you write and publish an article on the dependent claim subject if you feel this passionate about it

  15. E6k,
    Dude… The legislature sees how the patent system is working. If Congress thought 112 was being interpreted improperly, then they would amend it to say, “Dependent claims of narrowing scope are improper.” Because we haven’t seen much of a movement in that direction, it is pretty clear that 112 is being interpreted as Congress intends. Who put this idea in your head anyways?

  16. “I was being facetious in that instance sorry if you didn’t pick up on it since I apparently didn’t make it obvious enough”

    Tone doesn’t carry well over the internet. :)
    It’s too bad – I’ve been a victim before too.

  17. “Please don’t take this the wrong way. Your statements on much of this reveal a deep ignorance of the history of the law,”

    No, what the reveal is the horrendousness of the history of the law.

    “In the specific instance – Congress passed the patent statute fully aware of dependent claims being new limitations on the subject matter, and intending that that historical practice should continue.”

    I’m aware. Doesn’t excuse it not covering what they “intend” for it to cover.

    “There is a give and take between Congress and the courts, and when a word is taken to mean something by the courts, Congress continues to use that word when they want that meaning, even if it doesn’t fit “plain English”.”

    I’m aware, that is why I’m saying that the courts have failed to properly execute their duties to ensure that the laws are valid as written. This is a fairly big problem when we have disputes that regularly hinge upon wording that blatantly means something other than what it is understood to mean by those in the field. Such practice does nothing but discourage the participation of the everyman, who I might add, has the courts as their last defense against the evils of government left unleashed. Do you know why our system of gov. is so different than the ones than so many that came before it? The third branch. Sure, there is a give and take, but when it’s apparent that disputes are regularly popping up over such plain issues it’s time for the courts to do their part. Make no mistake, the issue above is indirectly intertwined with the existance of dependents as they are used today. It is a separate issue, but it’s effects run deep enough to affect the discussion about why 121 would only apply to deps or to separate ind’s, a proposition which is absurd based on a plain reading of 121 which involves “inventions” a term not well enough defined by the statute itself to treat the matter properly.

    “Primaries do not spend much time with dependents because…”

    I’m aware, I was being facetious in that instance sorry if you didn’t pick up on it since I apparently didn’t make it obvious enough. The primaries are more well aware than I am of the history etc. I’m quite sure the situation is as you describe.

  18. e6k – Please don’t take this the wrong way. Your statements on much of this reveal a deep ignorance of the history of the law, especially as it relates to patents. You look at a statute, and believe that you can understand it and what the authors of it meant in “plain English” – much like a first year law student might. However, the history of patent law is that the Congress follows the courts around, codifying the interpretations of the court as they feel their way through what good law regarding patents might be. Thus, historically speaking, rather than the courts hitting a bad drive and hacking away at law in the rough, Congress looks where we are once in a while and tries to capture that with the statutes (or Congress re-draws the fairway to torture that analogy). And the truth is, many areas of the law are like that, it’s not limited to patents or intellectual property. Law is a messy business, not just in the area you see. Since you are up to your waist in patent law, you assume that the problems in this area are limited to this area.

    In the specific instance – Congress passed the patent statute fully aware of dependent claims being new limitations on the subject matter, and intending that that historical practice should continue. The fact that it may be worded inartfully is irrelevant. There is a give and take between Congress and the courts, and when a word is taken to mean something by the courts, Congress continues to use that word when they want that meaning, even if it doesn’t fit “plain English”.

    Primaries do not spend much time with dependents, because if the independent is allowable the dependent must be allowable, and if not then it can be rejected as being dependent upon a non-allowable claim. If the subject matter looks important then they research it and provide a more specific example, and if not they either give a BS restriction (the matter is found in there somewhere) or the say would be allowable if they are pretty sure based on the art they’ve looked at that the limitaions are just not present in the art. Your logic is wrong twice to get this to all fit back into place.

  19. Don’t take this the wrong way, thinking I ha te the system or pto, or I think the judges are horrible, or anything else. I say it’s a complicated matter and that not treating each an every facet of it properly leads to problems down the road. Those problems highlight the instances of each facet wrongly treated, even though that treatment might get you through daily life.

    Maybe they meant Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further restrictive condition of the subject matter claimed. Or perhaps they meant “Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further something that restricts the subject matter claimed” perhaps. However, we then run smack into the fact that subject matter does not have “restrictive conditions” or things that restrict it, and thus cannot have “further restrictive conditions”, subject matter is what it is, it is immutable, unrestrictable, already set forth in the specification/claims as originally filed. Once it has been set forth in an independent claim as what the applicant regards as his invention, that subject matter can also not be changed, it either is, or it is not the subject matter which the applicant regards as his invention and any claims further limiting that subject matter directly countermand the original claim having been the subject matter which the applicant regards as his invention. One cannot say “I would like to place a restriction (or further restriction) on the subject matter which I believe to be my invention” for that is absurd, the subject matter which you regard as your invention cannot be “restricted” neither to begin with, nor further (at least at one moment in time, i.e. filing time, i.e. response to amendment time). You believe what you believe to be the subject matter of your invention. It is either this thing or that thing but it is not both (especially at any one given time, though we can get into “amendments” later, as they would appear to be fine as currently practiced).

    I think I have discovered why many primaries do not deal with deps. The law as written declares them either counter to law, or that they are merely a further description of what you were talking about in the first place, but they do not limit the subject matter to which you are referring. Take your pick, but you can’t have both.

  20. Now, perhaps you see the problem, we clearly are not making a “a” restriction, as in we are not making a regulation. We are clearly making a “b” restriction (if we are making a restriction at all). Now comes the interesting part, “b” refers back to the definition of limitation to define “restriction” which supposedly means a limitation on the use or enjoyment of property or a facility. The definition goes full circle in relying on itself. You have got to love words like that.

    In this context however I believe it is plain to see what a limitation is. A limitation is a statement (written or oral, but in this case written) of a description of a boundary of a thing (in this case subject matter). It is not, as you might be thinking in the back of your mind, the boundary itself of the thing, it is the statement of that boundary. Obviously the courts disagree and think it’s simply a “restriction”. That my good audience is how you boil down statements into meaning something they do not. Simply interpret the “”‘s anyway you feel like (or perhaps the “”‘s mean “literally”, in which case restriction literally means: 1. something that restricts; a restrictive condition or regulation; limitation <<< limitation lol). In a manner which requires further modification of other areas of the statute to accommodate. Tell a small lie, or get one definition wrong, and the whole thing falls into the ridiculousness we have on display in the case of the original topic.

  21. And let’s be clear, what is a limitation? Is it a boundary of subject matter? Or is it a description of that boundary? This is really what it all boils down to. The Mirriam Webster law dictionary shows what the real trouble in properly determining the context of the usage of “limitation” in 112 4th is. Looking up limitation we find that it is a quote un quote restriction. Or, it is a statement in a deed or will placing limits (on the stuff of deeds and wills, i.e. heirs). Notice the second legal definition of limitation is not expounded to patents as it should be (a statement in a patent or application describing limits), since limitations in claims most certainly are statements of the placement of limits, rather than the “restriction” on the subject matter itself. How can this be seen? Well, let’s look up “restriction” shall we? We see that it is in the law dictionary:
    1: something that restricts: as
    a: a regulation that restricts or restrains
    b: a limitation on the use or enjoyment of property or a facility

  22. “If e#6 would put as much effort into examining cases as he does in posting here, that might solve the backlog right there!”

    Sadly I do, it just results in more cases being better rejected rather than that many more cases being done. Though yes, I do put out more cases when I try hard.

    “I imagine in your ideal … So my question is”

    No I wouldn’t say that is my ideal world, I would say that is how the law, if actually read, rather than “interpreted”, has set forth. My views are not anti-patent, if that is what congress intends, as the voice of the people then so be it, but the law must properly support that system and not be interpreted into supporting it. I work for the PTO right now by a fluke chance, amongst decent job offers this was the only one remotely close to civilization and that would pay enough to at least start me out on my goals in life (family, maybe a business?, etc.) and I didn’t realize what I was getting myself into. That said, I’m loath to leave a job before I’m even officially hired, and ~two years seems decent to me. You may or may not be aware but the norm right now is for people my age is to have left their first job in the first few years (at least according to my shady sources). Though, even with all that said, you must understand, I’m a reasonable person when it comes down to it. I understand why the system is the way it is, and I understand (enough for now at least) how it works.

    followup- I notice that everything you said comes from the MPEP rather than the statute except for the part about 112 4th requiring the claim be further limiting. Lets read what it actually says shall we?

    ‘Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.’

    That’s funny, what the statute says is that the dependent claim shall then specify a further limitation of the exact same subject matter claimed (in the ind etc.). Hmmm, well, in my little example I would say that my dependent does further limit the exact same subject matter which was in the ind. but it does not change the subject matter.

    Think it through, this has been “interpretloled” into meaning something that it does not say. If congress wanted you to be limiting the subject matter of the ind. to a smaller subsect of subject matter then the statute would read thus:

    ‘Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify further limited subject matter (or alternatively, “further limitations of subject matter”) within the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.’

    Unless someone here believes congress is incapable of saying what it means rather than some convoluted nothingness that needs to be interpreted weirdly to even function. The phrase “Subject matter” and word “limitations” are not equivalent.

    Finally, of course there is no case law supporting my position, if there was then it would be changed by now. And we wouldn’t be having court cases over whether the office can implement new rules that are not supported by the traditional lolinterpretations of the law but are supported by a clear reading of the statute. We also wouldn’t have them having to implement new rules to limit examination of claims that are, supposedly, directly within the law. Except when you read the statute that is. The reason lawyers quote caselaw etc. all the time in these basic matters is because they need for someone in authority to have advocated their position (a judge) because they know that a plain reading of the statute goes against them, heavily.

    Let me explain the way I see it a little more clearly. Congress writes a law that doesn’t say anything anywhere near what some allege it to say. The courts, not wanting to just spit the legislation back in the face of the legislature “interpret” the language into saying things that it doesn’t (but mightlol, if you want to stretch words hither and tither) and we all go on with life. Everyone’s happy right? Except the people who aren’t professional learn the law for lifer’s who would like to use the system. If I “advocate” or even hold a position for anything it’s having clear legislation that the everyman can live by without needing a lawyer, except perhaps in the most important of cases. And, I might add that professionals could explain to the everyman in a minute rather than a day. Wishful thinking perhaps, but let’s be honest, why not have the law say what it supposedly means?

    “If you truly believe what dependent claims are illegal, please reject them as violating 112 so that we can get the question before the BPAI / Federal Circuit and get a resolution as to whether you are correct.”

    I might would after having considered it for a long time (months, years?) but unfortunately I don’t control what goes to the board just yet. I would need to be a spe at least. This is why hardly anything gets done by the avg joe, you need to get through layers of authority and you don’t have all day. Ask any lawyer about this, this another thing at the heart of their profession.

  23. e#6k – Your views are virulently anti-patent and there is not a court or decision it sounds like you agree with. (Which should not be read as an accusation that you don’t actually understand what the law is, just that you disagree with the powers that be on what the law should be). I imagine in your ideal world, you would limit everyone to claiming a single embodiment of their invention, narrowing them into it so that everyone else in the world can just practice all of the equivalent or similar embodiments right out of the same description with impunity. I.e., the entire concept of patents would wither away and disappear.

    So my question to you is – why are you contributing to this mess by working at the patent office? Why would you want to have anything to do with this?

  24. If e#6 would put as much effort into examining cases as he does in posting here, that might solve the backlog right there!

  25. “Earth to 6k…”

    6k to JD, point me to where it says they MUST get it right the first time. You will in fact need to be a bit more specific as to which notice. Surely you have this information in your “Favorites” probably with line no’s included in the description.

    Perhaps we can discuss the bedrock of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude from Aro Mfg. Co v Convertible Top Replacement? While we do so, you may notice the “patent” part not saying “application” and the “invention” part being “the invention to which the patentee is entitled the right to exclude” rather than “the invention”. That’s all I have time to go over tonight.

  26. But you’re right, these things are “basic” if we follow the line of man ure (caselaw interpre lol tations of the law) straight from the back of the carriage that started at a horse’s behind. If we go and see what the carriage actually is these things are still basic (it’s still a horse and carriage), but they look a lot different than they do from behind the ar se (they look like a nice means of transportation rather than a “pollution spouting mass”). Strangely, in this case they look kind of like a statute that requires different inventions be divided into different applications. Not merely seperate descriptions of seperate inventions be divided into different applications. Again, I think congress knows how to write and they wrote what they meant in precisely all of the laws they drafted. It’s only been after substantial crying (and the threat of even more crying) on the part of the masses that the courts have “interpreted” the laws into saying things they don’t. I might would give you that “issued claims define the invention” but even that is sorely lacking in the truth of the matter. Only “issued cliams are a currently accepted definition of the invention” would be actually even nearly permissable. And of course, at the time of examination that is nowhere near applicable.

    In short, your submitted description of your invention is not necessarily what your invention is, it is merely a description of a legal boundary which you believe to be adequate to describe what you regard it as being, no more, no less. Or your client does whatever. Oh, and feel free to cite a couple of the big cases that I know are popping into your mind speaking to the issue so that we can see first hand how badly the legislation is mauled by either taking caselaw out of context or the judges themselves having become confuzzled by the previous caselaw and issuing new ever worse than the previous caselaw.

  27. “This is all pretty easy stuff. The fact that you’re not getting it leads me to believe you are regressing.”

    “not getting it” and “refusing what I know you are saying as being a valid interpretation” are two separate things. I assure you I “get” what your interpretation is, and why you hold that interpretation. Finally, I “get” why that interpretation is in widespread use. I also “get” why it’s ridiculous and always has been. That’s the part you don’t seem to “get”. You seem blissfully unaware that someone can understand how things are currently held to be, and operate on those principles while at the same time rejecting them as hogwash. Earth to JD, this happens all the time to everyone on the face of the planet. As you are well aware what the applicant “regards” as his invention is no indication whatsoever what the actual invention is. The last time I checked I’ve rejected a sht ton of applicants that “regarded” something as their invention that apparently wasn’t their invention (or is so evidenced by their amendment). The only thing you MIGHT get away with saying is “the allowed claims are the invention”. Even that is ridiculous on it’s face as we have reexams where the claims are narrowed at an astounding rate. One could say that claims define the scope of the invention, if one were so inclined. Even so, the fact that the invention is within the definition of the scope provided by the claims that would not countermand the fact that there may indeed be more than one invention in one claim (i.e. a sentence that defines the scope of the invention). Perhaps you are mistaking “scope of the invention” with “the invention”? I don’t know JD, but you really have nothing to stand upon here.

  28. Re: when E6K thinks dependent claims might be proper

    E6K: So far as I can tell it may be when claims are not substatively “further limiting” but merely expound upon what was meant by terms in the first claim.

    This sounds like claim differentiation. That’s a good start. But 112 requires the dependent claim to “further limit” the claim it depends from. If it isn’t substantively further limiting, I would suggest that you reject the dependent claim on that basis. See MPEP 608.01(n)(II).

    “I have not fully considered what situations would actually be proper, it may in fact turn out that there are no proper situations to date and congress has included that in order to help allow for future developments, none the less that does not preempt the current wide use of them as being improper. ”

    The latter end of this sentence makes a good point. You have a policy disagreement with Congress and the USPTO management, which have concluded that proper situations generally exist all the time. Please keep thinking about it. If you truly believe what dependent claims are illegal, please reject them as violating 112 so that we can get the question before the BPAI / Federal Circuit and get a resolution as to whether you are correct.

    “A proper generic claim might be appropriate If there are no other claims (other ind’s differing substantially in scope, or improper deps, the type we see today) countermanding that actually being what the applicant regards as his invention and there is only one invention left in the application (after a restriction) or there was only one “species” disclosed in the first place.”

    MPEP 608.01 prefers the applicant to arrange the claims in order of scope. MPEP 608.01(n)(III) suggests you can restrict out the dependent claims if you think it’s a different invention. I can guarantee that pharmaceutical companies would love it if you did.

  29. BTW, if J. Linn is shocked at the “quality” of that case, just wait until 09/193,787 and 09/077,337 wind their way up to the court. Somebody have the smelling salts handy.

  30. “I saved you for last JD, because this one is sooo juicy. You of all people know good and well, off the top of your head, there is a difference in ‘the (a?) invention’ and “the claimed invention’.

    No. I don’t. The invention is whatever is claimed. Period. End of story.

    “First, let’s start off with the premise that the claims somehow ‘define’ the invention. It’s not stated anywhere in 112 (nor anywhere else), and that would fly directly in the face of more narrowly amending claims if it was.”

    Uhm, last time I checked 35 USC 112, 2nd paragraph states: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

    You may want to review all of the case law on this. In your spare time, of course.

    This is all pretty easy stuff. The fact that you’re not getting it leads me to believe you are regressing.

    Do I need to lower your grade again? You’re perilously close to failing as is. Are you sure you want to continue? The drop/add deadline is still a couple weeks away. You’re probably past the point of a tuition refund, but you could just consider it a lesson learned. Maybe you could transfer to the business school.

    “I’m not sure where you got that from JD, there are no current nor proposed rules or legislation that would require the applicant to get it right the first time.”

    Did you miss that 129 page Federal Register notice PTO (mis)management had printed up last August?

    Earth to 6k…

  31. “But it is consistent with current PTO (mis)management’s position of: applicants/practitioners are required to get it right the first time, but we’ll give our employees an unlimited number of opportunities to get it wrong.”

    I’m not sure where you got that from JD, there are no current nor proposed rules or legislation that would require the applicant to get it right the first time. If you want to change the system such that if, on appeal, the case is “reversed” then it is automatically issued then contact your local representative. In my cases I’m ready to put up or shut up at time of appeal, so let’s change it such that if I’m affirmed then your case is perma abandoned, along with any DIV’s or Con’s in part etc. Sound good? It’ll be bad for the public but hey, who really cares about that?

  32. “So now we have it – the real reason for requiring an AQS. Not patent quality, not to “share the examination burden”, but no, to reduce the backlog. Of course we knew this already, but sometimes they let the mask slip and reveal just how anti-patent this patent office is.”

    That’s like calling the DMV anti-registration if the DMV were flooded with bogus applications for car registrations that are not fully filled out or properly filled out and had a backlog of greater than 2 years worth of backlog sorting them out and them wanting tighter restrictions on submiting an application.

    “However, if an application needs 50 claims, we file 50 claims. ”

    LOL “needs”.

    Rocket scientist- I cannot tell from your description if the “new embodiment” is merely a species of your generic claims in your previous patent, or is it for all intents and purposes a “new invention”. Also, by “should” are you referring to what should happen in reality or according to current LOL land policy? Be advised I cannot offer you substantive legal advice.

    “I want to ask you, in what situations do you think a dependent claim would be appropriate? Your prior comments seem to indicate that you do not believe genus claims should be allowed. But from your prior comments, a dependent claim always turns the independent claim into a genus claim.”

    I have been considering what situations it would be appropriate according to a proper interpretation of the statute. So far as I can tell it may be when claims are not substatively “further limiting” but merely expound upon what was meant by terms in the first claim. Saying for instance “the automobile tire of claim 1 above wherein the tire is also a steering tire” wherein it is inherent that a tire “steers” things. Perhaps it is to include functional language (since that doesn’t really change what the applicant invented, let’s be honest). I have not fully considered what situations would actually be proper, it may in fact turn out that there are no proper situations to date and congress has included that in order to help allow for future developments, none the less that does not preempt the current wide use of them as being improper.

    “It seems the only thing that could satisfy you is to allow only picture claims.” I wouldn’t say that. A proper generic claim might be appropriate If there are no other claims (other ind’s differing substantially in scope, or improper deps, the type we see today) countermanding that actually being what the applicant regards as his invention and there is only one invention left in the application (after a restriction) or there was only one “species” disclosed in the first place.

    “Do you really not understand that the “invention” is whatever is defined by the claims? (See, e.g. 35 USC 112, 2nd paragraph.) There are no “multiple inventions” in one claim. There is one invention in one claim. That’s not really that hard to understand, is it?”

    ^ First sentence is possibly the most misleading (unless he actually believlols it?) thing JD has ever said on here. There have been some doosey’s mind you. I saved you for last JD, because this one is sooo juicy. You of all people know good and well, off the top of your head, there is a difference in “the (a?) invention” and “the claimed invention”. First, let’s start off with the premise that the claims somehow “define” the invention. It’s not stated anywhere in 112 (nor anywhere else), and that would fly directly in the face of more narrowly amending claims if it was. Then let’s move to the situation where you have a couple of dep’s claiming the different species encompassed by your gen ind., whether or not there really are multiple inventions in that gen claim is yet to be seen, but the applicant clearly believes there are multiple inventions in that one claim, and at the time of filing the examiner should have no reason to argue that with them. It’s not hard to comprehend your fallacious interpretations JD, and in fact it’s not hard to live by them but that does not directly repudiate them being false.

    I’ve just been getting my first tastes of gov. and what I’ve realized is that it’s mostly just a horrible mismatch quilt of behind the scenes policy thrown together and lolinterpreted to make a system by which we can go about life. That does not mean that citizens should not insist upon the actual legislation itself reflect the situation by which they wish to have enforced and live by instead of it blatantly requiring a different situation be enforced. At least after a few decades or so, I mean come on, is it that hard to amend the law to reflect current practices If everyone in congress loves those practices as you guys believe they do?

  33. “This wasteful course of proceedings does not promote the fair and efficient administration of justice and is inconsistent with the PTO’s mission”

    But it is consistent with current PTO (mis)management’s position of: applicants/practitioners are required to get it right the first time, but we’ll give our employees an unlimited number of opportunities to get it wrong.

    More recording breaking quantity at record breaking quality from your friends in PTO (mis)management.

    It’s 5:00 PM somewhere.

  34. Whoa, check out Linn’s concurrence today in In Re Stephan Michal Reuning, slip. op. 2007-1535:

    “By taking nearly three years to decline to adjudicate the merits of claims 3-66 on a procedural technicality, and by forcing Reuning to appeal before recognizing the superficial nature of its actions, the Board squandered judicial resources and needlessly frustrated Reuning’s interests. This is not a reflection of the Board’s finest work.

    Although I assign the lion’s share of the blame to the Board for this case’s current posture, I wish to make clear that Reuning also is not without fault. He compounded the problem, and in a sense, invited the Board’s error, by unduly focusing on claim 1 in his appeal briefs and relying on happenstance for the Board to fill in the gaps. Although not technically improper, Reuning’s appeal brief to the Board was less than comprehensive and demonstrates the adverse consequences that may flow from arguments that are in some measure left to inference. The end result is that as to claims 3-66, the parties are now back to where they started, albeit without the time and money it took them to get there. This wasteful course of proceedings does not promote the fair and efficient administration of justice and is inconsistent with the PTO’s mission “to ensure that the intellectual property system contributes to a strong global economy, encourages investment in innovation, and fosters entrepreneurial spirit.” United States Patent & Trademark Office, Introduction, link to uspto.gov . I have the utmost respect for the members of the Board, the leadership of the PTO, and the members of the patent bar, and while I would like to believe that this case represents an aberration from the standards of practice I have long admired and have come to expect, I am concerned that it does not.”

  35. “David Freeland, who has been chief information officer at the Patent and Trademark Office since 2005, has announced his plans to leave the agency. ”

    Maybe the next one can put in enough hardware to get Public PAIR to work right.

  36. “I wonder how the new markush rules will play out now that we are for all intensive purposes limited to 5/25″

    Maybe you mean “for all intents and purposes?” I’m curious, why do you feel that you’re still limited to 5/25? One result of the attempted rule changes for me is that my clients are a little more sensitive to the additional government fees that result from large numbers of claims. However, if an application needs 50 claims, we file 50 claims.

  37. “If congress wanted to allow multiple inventions anywhere in any part of the claims of an application (much less in one claim)”

    Do you really not understand that the “invention” is whatever is defined by the claims? (See, e.g. 35 USC 112, 2nd paragraph.) There are no “multiple inventions” in one claim. There is one invention in one claim.

    That’s not really that hard to understand, is it?

  38. A question for Mr. e6k, since he (or she) has the broadest interpretations(or distortions) of anyone on this site… if an inventor has a late flash of genius for an improved embodiment apparatus of their invention…late,to the fact that their patent application is already on file and in line for examination…and this embodiment is such of an improvement that the embodiment described and claimed in the pa is actually inferior in relation to the ‘new’ embodiment, that is, the new embodiment is the most simple and cost effective one to practise the method… should a continuation application be of critical mass (rocket scientist lingo) or should I not worry about it ( described embodiments are just examples, hopefully?) I am actually thinking of seeing a patent attorney on this matter, because I don’t know what to do… and I certainly want this ‘flash of genius’ embodiment covered when my patent issues- even a pro se needs help once in a while. The tool company I hired to machine tool 10 working finished models ( not prototypes) agree with me and think first embodiments are now already obsolete. This is sort of a weird but satisfying place to be as an inventor, to trump your own work, but also perplexing.

  39. I wonder how the new markush rules will play out now that we are for all intensive purposes limited to 5/25

  40. –If congress wanted to allow deps in all applications then they would have left out “where the nature of the case admits” in 112 3rd or does someone here think that congress just threw that in for giggles?–

    E6K,

    I’m pleased to see you’re starting to read the statutes. I want to ask you, in what situations do you think a dependent claim would be appropriate? Your prior comments seem to indicate that you do not believe genus claims should be allowed. But from your prior comments, a dependent claim always turns the independent claim into a genus claim.

    It seems the only thing that could satisfy you is to allow only picture claims. But both Congress and the courts have agreed that patents will be granted which are broader than only picture claims, and they have both agreed that an inventor does not have to actually “make” his invention to receive a patent for it.

    So, to repeat the question, in what situations do you think a dependent claim would be appropriate?

  41. Here’s news from one of the lovely members of the Coalition for Patent “Fairness” who helped to push the “Applicant Quality Submissions.”
    It looks like the CPF’s efforts to bribe congress this year have FAILED, but the CPF thieves are NOT going away (count on it – they will be back next year) and unless we get organized …..
    We should let the public know what the CPF is all about – foreign corporations like RIM and IBM (the original patent ‘troll’) together with lovelies like Countrywide Financial ….

    —–
    CALABASAS, Calif. (AP) — A securities filing shows Countrywide Financial Corp. CEO Angelo Mozilo earned about $10.8 million in total compensation and cashed out $121.5 million in stock options last year.

    The compensation disclosed in the Securities and Exchange Commission filing released Thursday represents a nearly 80% cut from the 70-year-old’s 2006 pay of about $51 million.

    The Calabasas, Calif.-based company reported a yearly loss of $704 million in 2007 amid the nationwide mortgage market meltdown.

  42. Check out this bit of info from the PTO’s “Women in IP Law Luncheon” (courtesy of the BNA reporter) -

    “Lois E. Boland, director of the PTO’s Division on Intellectual Property Policy and Enforcement, said that the patent system “is working very well,” but that there is still substantial room for improvement.

    Boland remains enthusiastic about other aspects of the [patent reform] bill, most notably the “Applicant Quality Submissions” requirement. That provision would require patent applicants to submit “a search report and analysis relevant to patentability,” and “any other information relevant to patentability that the Director, in his discretion, determines necessary,” or otherwise risk abandonment.

    Boland asserted that **if applicants were required to submit an AQS with each patent application, the PTO could reduce by one-third the number of total patents and applications received**, and cut its backlog by 60 percent. Thus, the AQS, as the “lone patent quality issue in the bill,” represents an important step in addressing the PTO’s problems, Boland said.”

    So now we have it – the real reason for requiring an AQS. Not patent quality, not to “share the examination burden”, but no, to reduce the backlog. Of course we knew this already, but sometimes they let the mask slip and reveal just how anti-patent this patent office is.

  43. I honestly hold an unconventional opinion. I do not have any trouble understanding why things are interpreted the way they are nor the explanations thereof.

    Also, the embodiments are not simply examples. Examples are a different thing than embodiments though they are similar.

    That said, I don’t think that my real opinion, which is merely that the statutes as written should not be “interpreted” into creating a working system in a most horrendous fashion as has been done and that we should rather insist upon the laws themselves create a working system by a plain interpretation thereof. For example, I don’t go into the law on traffic, or even most of criminal law and find it anywhere near as repleat with situations where statutes are blatantly misinterpreted just to create a system that users of the system want. Frankly, the courts have been a bit too generous in their interpretations. If congress wanted to allow deps in all applications then they would have left out “where the nature of the case admits” in 112 3rd or does someone here think that congress just threw that in for giggles? If congress wanted to allow multiple inventions anywhere in any part of the claims of an application (much less in one claim) then they would not have drafted 121 to say “if two or more independent and distinct inventions are claimed in one application” they would have drafted it to say “if two or more ind and distinct inventions are claimed in separate claims in one application”. Maybe this means you need an application for the generic, and one for each species, or maybe it means you can only do either the generic in an application OR do the species in one or more applications, or maybe it means you can only do species (lol), but there is no way on god’s green earth that a rational human being could argue that 121 should be interpreted as not specifically allowing separate inventions be separated, no matter if they’re all described as a generic. I mean come on, 121 first sentence requires only 5th grade reading comprehension to see this.

  44. “If Hal is watching I’d like him to expound upon how a VALID generic claim issued isn’t substantively equivalent to 5 species patents on all the species making up the generic genus in terms of protecting his IP If they disclose all the species in the spec.”

    Well, I’m not Hal (and I would love to hear his reply), but I’ll say what I think, concerning predictable arts and after-emerging technologies:

    You (1990):

    1. A portable camera comprising a non-volatile storage device for storing compressed digital images.
    2. The camera as recited in claim 1, wherein the storage device is a floppy disk.
    3. The camera as recited in claim 1, wherein the storage device is flash memory.
    4. The camera as recited in claim 1, wherein the storage device is a magneto-optical disk.
    5. The camera as recited in claim 1, wherein the storage device is a magnetic bubble memory.
    6. The camera as recited in claim 1, wherein the storage device is a hard disk.

    Me (1998, jumping quickly onto the MRAM bandwagon – MRAM being a brand new non-volatile storage technology that, in hindsight, is perhaps very analogous and maybe equivalent to the old non-volatile magnetic core memories from the 1950s, but now being made on a micro- or nano- scale):

    1. A portable camera comprising an MRAM for storing compressed digital images.

    Questions:

    a) Assuming your claims 1-6 are/would be valid, are you sure I shouldn’t have to license your patent to practice mine?

    b) If you only have claims 2-6 as species, do you think I would have to license your patent(s)?

    c) If you had been encouraged (policy) to file/disclose the generic claim 1, doesn’t that cast more doubt (as it should, I believe) on the patentability of my species claim to after-emerging technology that is neither encompassed by nor (arguably) obvious over your five species, than if you were forced to only file five species claims as separate applications, which you dearly hoped would not be presumed to be “patentably indistinct” under the new Claims and Continuation Rules (so you would not want to risk including in them overlapping and generic disclosures)? Or do you want generic disclosure and species claims (but the Claims and Continuations Rules penalize that)?

    d) Isn’t the PTO now speaking out of both sides of its mouth, saying:

    d1) related claims (e.g. directed to patentably indistinct inventions) should be presented in a single application or they will be treated as though they were. (“The Office is also revising the rules of practice with respect to multiple applications that have patentably indistinct claims and a common assignee by either requiring that all patentably indistinct claims in such applications be submitted in a single application or effectively treating the multiple applications as a single application.” Claims and Continuations Rules, FR 46716); and

    d2) if a genus claim (e.g. covering species directed to a “single invention” in 37 CFR 1.146) is presented in a single application, the species can/will be restricted by the Examiner. (“The examiner may require the applicant to restrict any claim [directed to a "single invention"] that was subject to an election requirement under paragraph (a) of this section to the one or more species that were searched and examined if any species encompassed by the claim is not patentable.” FR 45000)

  45. e#6k:

    Are you seriously having difficulty understanding that the embodiments described in an application are simply examples? I cannot tell when you are just having some fun and when you honestly hold an unconventional opinion.

  46. Then he gets into that an applicant who did not invent a certain species “C” would have no protection at all for species “C” if he couldn’t claim the generic (which he presumably invented species A and B of previously to C and a competitor beat him to C). No sht? The only question that remains is why is that inventloler entitled to “protection” for something he himself did not invent? The answer of course is that in the LOL (Legal Or Legalized) world people that invent generics deserve to exclude (or extort money from) people from practicing their contributions to the generic work. He then goes on to tell about how pioneer research organization need generic protection. Well despite the lolableness of “needing” protection for things you didn’t yourself create, but merely suggested might be created (at most), the office isn’t even trying to deny generic coverage.

    I believe the highlight of his entire paper is comparing the first part of the sentence on page 10 “So the discretionary power to limit one application to one invention is no excuse at all for refusing to examine a broad generic claim” with the end of the sentence “no matter how many independently patentable inventions may fall within it.” The sentence manages to contradict itself hah. “Even though you have the discretion to limit an application to containing only one invention you have no excuse for not examining all of the inventions falling within the application”. This guy cracks me the freak up, I mean seriously, I’m rofling some mao over here. That isn’t to say I don’t agree with what he’s saying “In the world of LOL there is no room for any changes such as the rules proposed by the office because in the world of LOL reality does not matter, only widely accepted bad interpretations of words matter”. He’s absolutely right, at least until the case is appealed to a judge with his head below the clouds.

    I’d also like to hear a few comments from him about 112 2nd since he also believes it is the applicant’s duty to define what he regards as his invention and yet we have applicants just claiming the whole of the subject matter in the spec through nigh on inf. deps. Specifically, I’d like to hear from him how a dependent claim’s very existance doesn’t countermand the applicant belief that the independent “defines” the inventive subject matter. It is on it’s face ridiculous to say that a broader statement than a more specific statement actually defines that which is in the specific statement and instead merely scratches the surface of defining it.

  47. If Hal is watching I’d like him to expound upon how a VALID generic claim issued isn’t substantively equivalent to 5 species patents on all the species making up the generic genus in terms of protecting his IP If they disclose all the species in the spec. He cites a case that states that the totality of the resulting fragmentary claims (in a case that has a single claim divided up into many applications) would not necessarily be the equiv of the original claim. Then he states that the fragmented claims would be broken up according to the examiner’s will and not the applicant’s so some of the fragments might not be described in the spec. No way? Maybe the applicant should be required to disclose the all of the species information on a broad genus he wants to claim. On that topic he ends us off with Ruschig telling “wherein a species of a properly described genus was found not to be described.” Hmm right, that just means that the genus wasn’t “properly” described except in some made up legalized fanciful way.

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