In a four-page Federal Register notice of proposed rulemaking of proposed rulemaking, the US Patent Office has indicated its intent to revise its duty-to-disclose standards based upon the recent Federal Circuit en banc decision in Therasense, Inc. v. Becton, Dickinson & Co., — F.3d — (Fed. Cir. 2011).
In Therasense, the Federal Circuit held that, apart from potentially affirmative egregious misconduct, inequitable conduct in patent prosecution should not be found unless it is proven that the misconduct was a “but for” cause of the patent issuing. Focusing specifically on the failure to disclose prior art, the court wrote: “[w]hen an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.” The office introduces its proposal as follows:
Specifically, the Office is proposing to revise the materiality standard for the duty to disclose to match the materiality standard, as defined in Therasense, for the inequitable conduct doctrine. While Therasense does not require the Office to harmonize the materiality standards underlying the duty of disclosure and the inequitable conduct doctrine, the Office believes that there are important reasons to do so. The materiality standard set forth in Therasense should reduce the frequency with which applicants and practitioners are being charged with inequitable conduct, consequently reducing the incentive to submit information disclosure statements containing marginally relevant information and enabling applicants to be more forthcoming and helpful to the Office. At the same time, it should also continue to prevent fraud on the Office and other egregious forms of misconduct. Additionally, harmonization of the materiality standards is simpler for the patent system as a whole.
The newly proposed Rule 56(b) (37 C.F.R. 1.56(b)) would read as follows:
Sec. 1.56 Duty to disclose information material to patentability.
* * * * *
(b) Information is material to patentability if it is material under the standard set forth in Therasense, Inc. v. Becton, Dickinson & Co., — F.3d — (Fed. Cir. 2011). Information is material to patentability under Therasense if:
(1) The Office would not allow a claim if it were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest reasonable construction; or
(2) The applicant engages in affirmative egregious misconduct before the Office as to the information.
* * * * *
Under the new rule, the mere failure to disclose information will never be considered material to patentability if the pending claim is allowable. A parallel change would be made to the disclosure rules governing reexaminations.
The current Rule 56(b) defines material information as non-cumulative information that either (1) “by itself or in combination with other information…compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard” or (2) is inconsistent with “a position the applicant takes” arguing that the claim is patentable. The current rule implemented in 1992 and was itself an attempt by the USPTO to limit the scope of materiality. The pre-1992 rule required submission of information whenever there was a “substantial likelihood that a reasonable examiner would consider [the information] important in deciding whether to allow the application to issue a patent.”
Thus far in 2011, the average issued patent cites 42 prior art references. This number is highly skewed because of a minority of patents that cite to an excessively large number of prior art references. The median patent in 2011 cites 17 references. Only 8% of the 2011 patents cite more than 100 references, but those patents collectively cite more references than the other 92% combined.
The USPTO is also seeking comment on other actions that “may provide an incentive for applicants to assist the Office by explaining/clarifying the relationship of prior art to the claimed invention.”
Written comments regarding the proposed rule change should be submitted to AC58.comments@uspto.gov within the next 60 days (by September 19, 2011).
Now I’m confused. What I thought it meant was that if a claim would have been (speaking hypothetically, as we must) allowed over prior art reference D1, back on date xx.yy.zz, then a mere failure by Applicant timeously to tell the USPTO about D1 will under the new Rule no longer be enough to get a charge of IC up and running.
Quite how the argument will run, as to what would or would not have been allowed, is quite beyond my imagination, given the swings of the PTO pendulum in recent years. To mention just one variable, would we have first to fix where in its swing the pendulum was, before we debate whether the claim would have been allowed, on date xx.yy.zz?
“Under the new rule, the mere failure to disclose information will never be considered material to patentability if the pending claim is allowable”
Am the only one who thinks the above statement doesn’t make sense? Perhaps it should read:
“Under the new rule, the mere failure to disclose information
will neverthat could be considered material to patentability will never be considered a breach of the duty of disclosure if the pending claim is allowable”Interesting discussions, many not all on point. McKesson has not been expressly rejected. So where does this leave us with respect to related apps?
I called it – a complete psychotic break. Hard/ping is now switching between his multiple personalities at an unprecedented rate. Ned, perhaps if you stopped conversing with all of the personalities, Hard/ping could get some rest?
What? Boundy did not direct a post to me, but only to Hard. I suggested that the reason he did not direct a post to me is that he did not disagree with me. That is speculation. It is open to debate, but it is not a lie.
What is a lie and a consistent lie is that Boundy directed a post to me. That lie is propounded by Hard who continues to lecture me that I have been instructed, corrected or whatever.
Now, I believe Boundy agrees that PTO does not have substantive rule making authority — he was a leading opponent of the "rules package." That is my position as well from the opening post. I advised that Kappos revise rule 56 to be consistent with Therasense to
avoid confusion. He did exactly that.
That is my position. The position of Hard is less clear as he, just as ping, does not answer questions. For this reason, we really cannot tell exactly what he thinks. But it is clear that he has a bug up his a.. about this issue, and he appears to think that the PTO can pass a rule that is somehow binding on applicants in court, just not the atom bomb remedy. I disagree.
Another person that Ned has PO’d by his unethical behavior.
Ned, the point here is not the strawman you have inserted at the last moment. Clearly Hard was showing you that you perpetrated a Falsehood (he was nice enough to call it gameplaying) by your first claiming that Boundy and you never had a discussion, and then when you are caught in that l_i_e you, l_i_e_d again and said that Boundy was agreeing with you.
The record clearly shows otherwise.
Some people have been known to get bugs up their “a” for far less than repeated l_i_e_s.
Sometime all it takes is for a discussion to end abruptly when a beautiful analogy that shows error is completely disregarded.
And Ned – such l_i_e_s, deception through topic changing and diversions through asking more questions is more rude than any amount of name calling – you two bit hack.
Troll, OK. I tried, Hard, to be civil to you with a direct response. You have a bug up you a.. that prevents us from having a coherent conversation. You insist on lecturing me rather than discussing issues. Where you get the right to do that, I do not know. You are not king or president or some all-knowing sage.
From the opening post I made in this thread on this issue, to the very post you quoted just now, I have been consistent that the PTO does not have substantive rule-making
authority and cannot impose a duty on applicants that is enforceable outside the PTO in the courts. You seem to insist that they can.
We will just agree to disagree on this issue.
Ned,
Recapping with questions when the plain words already present only show that you want to continue playing games.
You are twisted.
Approaching Meltdown – are you really that clueless that you cannot take time to actually read the string of posts and see who was talking to whom, and about what?
Really?
Or are you just trolling the site…
Hard, thanks for the refresher. Let's recap, but a bit slower now.
1) Are you aware that the Feds have held that violation of PTO rules is not a ground for invalidity?
2) Do you agree with the District Court in Tafas that the PTO has no power to enact rules that have substantive effect?
2) If the PTO provides by rule a duty of disclosure different from the Therasense majority such that one could violate the one but not the other — is it your position that violation of such a rule could affect the substantive rights of the patentee in any way if there was no violation of the law or any duty imposed by the courts?
I have re-read your posts and have concluded that it is your position that the PTO can provide by rule a
duty of disclosure different from that imposed by the courts and that the courts will enforce the rule in some fashion that will adversely affect the patentee's rights. To this, I remain confident that you are completely and utterly wrong.
Are you aware of a recent case from Germany where the courts held that a violation of EPO rules could not affect the validity of an EPO patent? That position is the same position taken here by the US courts. Rules are not substantive. Their violation has no post-grant effect. The PTO only controls activity while it has jurisdiction and that is only when a patent application is pending. There are, for that matter, even Supreme Court cases on this point, if you would want a citation.
Wow. To prove that Boundy replied to Ned, Hard produces a post that is addressed to Hard, and then announces that it only “appears” to be addressed to Hard.
Discerning minds want to know – has a complete psychotic break already occurred, or is it merely imminent?
P.S. Hard, this post only “appears” to be addressed to you.
Ned,
This point is not up for debate.
From: link to patentlyo.com
Reply Jul 06, 2011 at 05:08 PM
Hardworking at Really Really Really Trying Not to Lose My Patience With Ned’s Gameplaying said…
“You seem to think that the PTO can still require disclosure of cumulative references as if they could impose some penalty for failure to follow its rules. But they cannot.”
That’s just it Ned – they can continue to require disclosure and they actually do continue to require disclosure in exactly the same manner that they previously required disclosure. The fact that the court has changed the court’s remedy is quite beside the point.
Dave Boundy explained this to you on the thread with the breaking news – the Therasense decision only directly affected the court’s control – the court’s decision explicitly left the Office’s control out of the picture.
Yes, this does create the situation wherein the Office currently has a rule that is virtually meaningless, because the court currently has dialed back the atom-bomb remedy. But you need to understand the basic structure of the judicial-executive agency branches (and their differences), and realize that there is, in fact, differences. The PTO STILL requires disclosure just exactly as they did before the Therasense decision came out. Kappos has not yet made any changes, and thus the Office STILL operates exactly as it did before. This is reality – you would be well-advised to recognize it.
From this, one should reason (if one were able to put aside their pre-conceived notions) that the Office and the Feds actually operate under two different systems. And while it is true that those two different systems are not often out of step with each other, there is no denying that the Therasense decision simply did not automatically render the Rule 56 (and accompanying rules of 97 and 98) moot. To state this positively, the Office CAN and STILL DOES require exactly the same things it required before. No matter how you want to think differently, your thinking just does not match the real world. With all due respect, WAKE UP !!
And while you glibly (and falsely) state that I have offered no alternatives, you need to actually read my posts to see that I have indeed offered an alternative – and one you have already actually commented on – that of July 5 at 7:24 AM.
The fact that you don’t understand or remember this indicates that it is you that are the one playing games. Your game is to ignore what others actually post and continue to blather on and on. It is you that needs to stop talking so much and actually listen. Didn’t your mother tell you the reason why you have two ears and one mouth is that you are supposed to listen twice as much as you talk?
And
from:
link to patentlyo.com
the following exchange:
David Boundy said in reply to Hardworking Policy-Hole Identifier…
Two different jurisdictions (the PTO vs. Article III court), two different substantive standards (Rule 56 vs. “but for”), two different penalties.
Just as New York and Massachusetts law differ on many issues, and we comfortably live with both, and we have fairly clean rules to decide which one applies at which context, so may PTO and Article III courts have different rules.
Reply May 26, 2011 at 10:42 AM
Ned Heller said in reply to David Boundy…
See my reply just below to Hardworking.
Reply May 26, 2011 at 12:22 PM – CLEARLY not only did Boundy NOT agree with you, nor you with him, CLEARLY the substance of the conversation shows that Boundy and I had the exact same message to you.
…
Note that Boundy’s reply only appears to be to me due to the way this website structures the reply chains. The substance of Boundy’s reply in fact mirrors what I pointed out to you – and this is reflected in your reply to Boundy – clearly you thought then that Boundy did in fact say something to you. Your choosing to ignore the subtance of a post, when you even bother to remember the post at all borders on the pathological.
Also note my comment on that same thread at May 26, 2011 at 12:49 PM:
Hardworking Tag Breaker said in reply to Ned Heller…
David,
We are in agreement – thank you for the restatement.
And look what I have done with the tags…
…
Ned, I will not entertain your game playing on this subject further. You are wrong and if you cannot admit that, then you will not learn. I offer you the last word, as nothing you can say will change the black and white evidence available to any discerning mind. Have at it if you will.
Hard, Boundy said nothing to me at all. He did direct a post to you however. Do you want me to show you?
The reason he didn't say anything to me, I think, is that he agreed with me.
Ned
“We ourselves discussed Applera before, and you had no problem with the definiteness of the claim, as I recall correctly, but that was under the court construction, not under the Mayazaki construction.”
Yeah I thought we did. After I remembered the case when I just looked it up again tonight after you reminded me about it.
I don’t remember the claim itself. But regardless of how I feel about the claim in Apple that doesn’t change much about how I feel about what the standard should be. Although, truth be told, I do seem to remember that I myself would have held the claim definite under any standard currently in use anywhere.
Iirc anyway, it has been awhile. I think that’s why I thought that it was a poor vehicle, because the USSC wouldn’t change the result of the case from what the feds said even if they did change the standard.
“Regarding the “other claims” issue, the courts have held that cancellation of broader claims without a limitation in favor of a narrower claim that has them is equivalent to amended the broader claim to add the limitation it lacks for the purposed of estoppel.”
That is interesting. Oh well, I guess the courts are just out to get you. Not that I blame them, what with applicants amending all of the place all the time hither and thither. That sht is annoying.
You know, 6, I too thought there was a legal basis for the use of BRI with MPF claims, and that was the requirement of Section 112, p.2 that the claims be definite. The CCPA had even held that 112, p. 2, justified the Office in ignoring 112, p.6's rule of construction during examination.
But the Feds held differently in Donaldson.
Perhaps if the Supreme Court takes this case, Applera, and upholds both the PTO's use of BRI and the Courts narrower construction when considering 112, p. 2, then perhaps the Supremes should question, in a footnote of course, the rationale of the Feds in Donaldson.
Actually, the Applera case on appeal has this exact same fact pattern — the spec. disclosed some examples and provided a test. The Feds held the claim definite. We ourselves discussed Applera before, and you had no problem with the definiteness of the claim, as I recall correctly, but that was under the court construction, not under the Mayazaki construction.
Regarding the "other claims" issue, the courts have held that cancellation of broader claims without a limitation in favor of a narrower claim that has them is equivalent to amended the broader claim to add the limitation it lacks for the purposed of estoppel.
OK, I was talking procedure, not law. So long as it is understood that the ultimate claim interpretation is that provided by law, why is a particular procedure authorized by long PTO practice "wrong" — and I assume, by wrong, you mean, contrary to statute?
Are you referring, perchance, to 35 USC 131 which requires that the Director "shall cause an examination to be made of the application and the alleged new invention?"
Thanks Ned I actually looked it up and found this:
link to americanbar.org
From the ABA describing the case. Thanks though.
“How can there be two different substantive legal requirements for the same statute? ”
The ABA explained this. Although personally I support the adoption in the courts of the PTO’s standard.
And Ned, I think there is a legal basis for the difference. The statute that has the courts presume issued patents valid and the lack of such a statute in the context of not yet issued applications before the office.
The petition:
link to scotusblog.com
Regarding Mayazaki:
How can there be two different substantive legal requirements for the same statute? The last time this issue was squarely addressed was in In re Donaldson. There the Office contended that BRI required it to not limit MPF claims to the corresponding structure. The Feds held that the statute did not distinguish between the Office and the Courts, and for this reason, the statute had to apply consistently between the two.
Now the question is Section 112, p.2. How can a claim that is valid
under 112, p.2 be unpatentable under 112, p.2. BRI was advanced as the reason in Donaldson, but there rejected. What makes this situation different as a matter of statutory construction?
The explanation contained in the government's brief in Applera for the different standard is policy driven and provides no legal basis for the difference. link to sblog.s3.amazonaws.com
Ned,
I hope you realize that IANAE is not a practitioner, but only an academic and is merely stroking you.
“You know, patent prosecution. I’ve done that”
Not believable – by any stretch of the imagination. You’ve been told not to partake in that charade.
“the examiners feel entitled to adhere to their initial construction based on Federal Circuit cases.
As they should, in most cases.”
You parsed (purposfully, no doubt) the best part of the quote: “Read the claims, issue an office action, and see how the applicant reacted. It actually had a lot to recommend it. However, the problem we now have is”
The Law and the Rules are clear on this: the entire application is what is being examined – not the claims. Ned, the number of times you circle back and post gratuitously wrong steps in your arguments is absolutely amazing. For you, the actual law must be a line razor thin, a mile long after a downing a fifth – you keep falling off.
Reading the claims alone has always been and will always be WRONG. This is indefensible.
Yes if the examiner was “using BRI to read the claims on prior art way outside the range”.
Note the part in that quote about “prior art”. Then note the part about a narrowing limitation, presumptively added in an amendment to overcome the office’s BRI made rejection. If the applicant had any brains he would have drafted a seperate set of claims with his range etc. in them if he thought them of importance and then he wouldn’t have had to do anything but cancel the claims the office rejected under BRI. Presto, you have your doctrine o equivs.
“given that in court the court would have construed “relatively hot” to automatically include the test and the range?”
That is a hypothetical within your hypothetical. Not a given within your hypothetical. The court cannot say that it would necessarily have made that construction or not.
“But, really. If there are examples in the spec. and a test, the Feds would say the claim can be construed and therefore is not indefinite.”
True, they would, at least in a litigation setting. However, we’re talking about indefinitness here at the office where they have the ability to amend their claims.
See Miyazaki for the proper standard here at the office.
“So, assuming the claims are not indefinite, ”
I decline to assume such.
“Of interest here is that the Feds jurisprudence on definiteness is now on petition to the Supreme Court, where the Office’s version of Section 112, p. 2 is advanced as the proper version: i.e., if the claim has more than one reasonable interpretation, it is indefinite.”
Wait wait wait, where is this on petition? Plz to be showing! Although, to be sure, the petition will likely be denied.
6, right. Take the “relatively hot” example. I give examples in the spec. I give a test and a range. But the examiner uses BRI to read the claims on prior art way outside the range.
Does a narrowing limitation to incorporate the range into the specification have anything to do with patentability given that in court the court would have construed “relatively hot” to automatically include the test and the range?
Malcolm, regarding examples, many, from my own cases that for obvious reasons I cannot talk about. For me, this is not an academic issue, not at all. It is a major issue. I see it all the time and the (potential) impact is enormous.
Ned, sorry, but no. You can’t have it both ways. That is the point of my comment.
You are going on and on and on about this is a huge issue but you can’t find a single example (there should be dozens, at least) of a case where a patentee was even SUBJECTIVELY (even from a total txxbxxger perspective) wrongfully burned by a “bad BRI”. Why not?
I know the answer to the question. Do you?
6, I like your hypo. But, really. If there are examples in the spec. and a test, the Feds would say the claim can be construed and therefore is not indefinite.
So, assuming the claims are not indefinite, what is the statutory authority?
Of interest here is that the Feds jurisprudence on definiteness is now on petition to the Supreme Court, where the Office's version of Section 112, p. 2 is advanced as the proper version: i.e., if the claim has more than one reasonable interpretation, it is indefinite.
“Malcolm, regarding examples, many, from my own cases that for obvious reasons I cannot talk about. For me, this is not an academic issue, not at all. It is a major issue. I see it all the time and the (potential) impact is enormous.”
Probably due in large part to your examiners letting you off the 112 2nd para hook. Perhaps because many of them don’t know how to properly apply it.
“there should be no downstream impact on DOE or on damages, as any clarifying amendments had nothing to do with patentability.”
Lulz, amending to correct the claim construction has nothing to do with patentability? I lulzed you guys.
“Now the question I pose is this: if the claims as construed in court are definite, if the claims as construed in court are both valid and patentable, if the claims as construed in court are fully supported under Section 112, p. 1, then by what statutory authority does the PTO finally reject such claims?”
Well I would use 35 USC 112 2nd para to kill “relatively hot” if the claim doesn’t recite what the hotness is relative to.
For instance, if the specification included an embodiment where Cameron Diaz was used as an example of hotness and then compared that hotness to that of Mila Kunis such that Ms. Diaz was only “relatively hot” then I would say that the claim was too open to subjective determinations of relative hotness and give a 112 2nd rejection.
And that would be true even if they included a way of measuring heat in the spec.
Malcolm, regarding examples, many, from my own cases that for obvious reasons I cannot talk about. For me, this is not an academic issue, not at all. It is a major issue. I see it all the time and the (potential) impact is enormous.
And, I do agree with you that if the contest with the examiner is clearly about claim construction and that is made abundantly clear, there should be no downstream impact on DOE or on damages, as any clarifying amendments had nothing to do with patentability.
Ned : IANAE, I agree with everything you said, but the problem with this is it is not clear that such “clarifications” will not cause loss of the use of the DOE per Warner Jenkison and Festo; or will not result in loss of damages for infringement of a published application or issued patent.
Oh baloney, Ned. Let’s examiner goes off the rails and says that the term “lead-based paint” as used in a recited method includes “beer”. Applicant submits an affidavit saying that the construction is unreasonable. Examiner backs off and retracts the construction.
Do you believe that this sort of prosecution history is going to have a significant impact on the scope of equivalents under the d.o.e. given to the term “computer”?
I sure hope not, Ned.
It should certainly prevent the claim from being construed to cover methods that are otherwise identical to the claimed method but which use beer in lieu of lead-based paint. Do you have problem with that?
Bottom line, Ned, is your continued hand-wringing over BRI is nothing more than a chicken little story. Can you cite a single example of such an argument actually taking place in litigation, i.e., where the patentee was wrongfully “burned” by “bad BRI” as you suggest? Because there’s no reason that such things shouldn’t have been happening for many years already. So where’s the fire, Ned?
Hard, you may be right in terms of how the courts have construed BRI, but I suggest that at least Rader does not agree with your views. However, I urge you to review a recent post of a real example so we can begin to talk about this issue in context. Please see my post at
link to patentlyo.com
In court, courts will add limitations from the specification when construing functional terms or terms of degree. If I say “relatively hot,” and provide a way of measuring heat in the specification, the claims are construed to include that test, otherwise they are indefinite.
In the PTO, the claims are construed using BRI. In the example, it is more than likely that the PTO will not limit the construction to the test, but will construe the claims to cover subject matter beyond the ranges of the test.
Now the question I pose is this: if the claims as construed in court are definite, if the claims as construed in court are both valid and patentable, if the claims as construed in court are fully supported under Section 112, p. 1, then by what statutory authority does the PTO finally reject such claims?
Ned,
If I may be so bold to call a “dodge” a “dodge,” even the semantic game playing between “consistent with the specification” and “in light of the specification” will not save you when it comes to interpreting claims that have terms in specification examples, because even in a “consistent with” pedantic world, an example still is only an example and by its very language means that other uses are intended. So even for arguments sake, were we to employ a “consistent with examples” interpretation, your position on the instant examples fails.
Besides which, you only now introduce this and all of the case law and other items that you have been using to buttress your position have been solidly fixtured in the “in the light of” arguments.
So, to your now (very leading) “the one consistent with the specification must be chosen” I say that you are forcing a conclusion that you have not proved at all.
In fact, the overriding majority of case law points to the “in light of” position, so I would daresay that the only issue left is one of your accepting what I have shown you. It is, after all, the only reasonable thing to do.
IANAE, I agree with everything you said, but the problem with this is it is not clear that such "clarifications" will not cause loss of the use of the DOE per Warner Jenkison and Festo; or will not result in loss of damages for infringement of a published application or issued patent. Allowing the examiners broad powers to force clarifying amendments is a good thing if it is clearly understood by all that such clarifying amendments have little or nothing to do with 1) prior art; or 2) 112, p. 1. They have everything to do with clarifying what is claimed under 112, p.2. But this, I respectfully submit, normally has nothing to do with validity, as the same claims in court would be construable and therefor valid.
the examiners feel entitled to adhere to their initial construction based on Federal Circuit cases.
As they should, in most cases.
If you think the examiner’s construction is broader than you would have liked/expected, too bad. The examiner is entitled/required to construe the claims as broadly as he can, right up to the point where the breadth becomes unreasonable.
If you think the examiner’s construction is unreasonable, talk to him. Explain why. Show him what the term means in the prior art. Get a sworn affidavit from someone who’s been working in the field for decades. You know, patent prosecution. I’ve done that, and it does work. But only if the construction is actually unreasonable. If it’s merely broader than you wanted your claim construed, then the problem is in the words you chose, and you’d do well to amend your claim.
It’s your job as an agent to make the words of your claim mean exactly what you choose them to mean – neither more nor less. All the examiner is doing is drawing your attention to the fact that you could have done better. And all you’re doing is shooting the messenger.
Thanks, Hard. Good post.
On the law part, this is where I have "issues." Is BRI an artifact of the examination process, statutorily imposed or court created? I don't know the answer to that question, as even In re Morris seem to suggest that it was a practice of the PTO, but consistent with Section 112, p. 2.
If you have any views on this, please discuss.
On whether a choice between an interpretation that reads on the spec. and one that does not is a choice between reasonable and unreasonable, I will note this: the original phraseology of the courts of the rule included "consistent with the specification." Rader, in a recent case, seem to
suggest that these words cabined the choice.
But even you do not seem to agree that if there is a choice, the one consistent with the specification must be chosen.
This is where the battle lines are drawn. We need an en banc decision or some action by Kappos, depending on who controls the issue.
Looking glass, that was the practice by examiners for a very long time. Read the claims, issue an office action, and see how the applicant reacted. It actually had a lot to recommend it. However, the problem we now have is that the examiners feel entitled to adhere to their initial construction based on Federal Circuit cases.
“I agree that this fairly summarizes the actual practice of the Office.
But consider this, Hard, if the claim term can be construed in a number of different ways, only one of which reads on the embodiments of the specification, why is the choice that reads on the embodiments tantamount, in you words, to incorporating limitations from the specification into the claims?”
Well thank you Ned for agreeing that this fairly summarizes the acutal practice of the Office.
However, that is not enough, as you really should be agreeing as well that this summarizes the law.
I notice that you do not offer such agreement.
Please explain.
Secondly, (sigh) for your consideration, I offer that you are confusing again the concept of “incorporating limitations from the specification into the claims” and “reading the claims in light of the specification.”
I also notice the inclusion of “in you[r] words” in your comments, which I reject. There is no need for such subtle word twist play.
The problem here Ned is that you want to limit the reasonable choices that an otherwise nonlimited claim term to only one choice.
That is not a reasonable thing to do.
I am not sure if you agreed with me (it appears that you do, but I do not want to put words into your mouth) that “And this of course means that an example in the specification is only an example, and thus, by definition, is not the only constraint….”
I hope you realize the deliberately chosen closeness of “constraint” with “limitation.” There is nothing wrong with including the example from the specification into the determination of the scope of a claim term, but there is no reason, since, in the instant case, the specification only provides a mere example, to so choose to limit the claim term and exclude any otherwise reasonable meanings from the claim term, fully read in light of the specification.
You do understand that to so choose to limit is the vehicle by which the import of limitation is commenced, do you not?
You seem to want to be able to say, “but I only gave one example” as a way of saying “my only example is an affirmative definition and I so choose to limit that term.”
This evinces a fundamental misunderstanding of what an example is – and it is does not matter if only one example is provide, that example is still only a mere example.
If the applicant does want the example treated as an example, the applicant is within his total power to write the application so indicating that such an “example” is meant to be an explicit and limiting definition.
I am still wondering what happened to paper database files and how to obtain a set genuine set for reasonable or reasonable cd copies they should price lower for small entity. You cant just type in a search on the internet because of hackers in or out of the office. Then if you file without checking every possible combination of wordings you dont get a complete search and they want to cry fowl.I also wonder what circumstances pto backdates filing and why there is no designation of questionable filing dates I think this one has created a huge false database.
“first phase where they read the claims first, issue an office action based on that read alone.”
Read claims in a vacuum? On purpose?
W
T
F
Today’s Wacked Out Post Award has a mighty stalking horse.
where did you get this? if you want, cite chapter and verse Supreme Court cases
Double treat:
“procedure is necessary by encouraging ”
Something is not necessary by encouraging. Ever. Something is necessary by requiring.
Sorry, only one award for Wacked Out Post, and doubling up the inane ideas within a single post does not count.
Yah Ned maybe as I have stated before a Summary of the application.. then when and if allowed, a summary of the Invention. And just think another Fee and Form to fill out.
Ned,
You are becoming confused again.
It was I that stated you you were admonished by Boundy on the earlier thread – and you could not even recall discussing anything with him.
Boundy was reminding you – as I and others continue to do – that there were two realms in play here – the court and the Office. Has this not been a constant reminder from me to you?
It’s as simple as that.
Malcolm, do you consider BRI to be a court-induced claim construction standard, or is it rather a claim construction standard within the authority of the patent office to define by rule or practice?
I think this might be a threshold question for the Office to consider. If the standard of construction is inherent in the legal requirement for the Director to examine patents for patentability, then he would have the authority to set the rules.
Just for example, I personally think examiners should conduct examination in two phases: a first phase where they read the claims first, issue an office action based on that read alone. If the claims are ambiguous, and often they are, the response by the applicant would be to clarify them in some fashion, such as by amendment.
The second phase would be directed to examining the now clarified claims for patentability over the prior art, support in the specification, subject matter, etc.
I note that Kappos has somewhat agreed that this procedure is necessary by encouraging pre-action interviews.
Since I think this is really necessary in many art areas, and since it is really is a form of claim construction and defining with precision what the applicant “regards” as his invention, I would hope that any clarifying amendments not result in the loss of any rights. Otherwise, applicants will simply dig in their heels and resist amendments, as they do now.
Read my post. link to patentlyo.com
What did I actually say? It is not at all what you said I said. What I said, in fact, was that I hoped Rule 56 would be revised to be consistent with the court rule so as to not impose two difference “duties” on the applicant.
Upthread, you or one of your alter egos said that I had been admonished by Boundy. If you check, it was not me who was so admonished, but you.
anon, where did you get this? I can, if you want, cite chapter and verse Supreme Court cases for what I said.
As to scope, some would say it relates to the patent as a whole, but when claims are functional at the point of novelty, they have too much scope.
“But my impression remains”
This has got to be the weakest rebuttal I have ever seen from Malcolm.
Perhaps he has been in the hole too long, and is too weak to do anything but whimper.
The article posits that BRI is wrong. Malcolm, do you agree with the article? Do you agree with the points made by Ned that align with the article? If your answers to these questions are “No,” then your posts above are misplaced.
What are your answers?
I had thought that definiteness could be analyzed by terms of the claim (this is not the same as “point of novelty”).
Scope is analyzed on the claim as a whole. This is related to the 101 analysis.
Novelty – analyzed as a whole, regardless of combination or not, as novelty and obviousness are sisters and share the same foundation.
Ned,
Thanks for the link. Indeed a good read and if you agree with the points raised, I see where you are coming from.
As for the scholarship, I admit to being disappointed.
I fear objective measured scholarship will not be found in the article.
“Is someone going to jump in now and argue that this is an even worse situation than the “habitually unreasonably broad” scenario envisioned by others?”
Why I thought you’d never ask!
THAT IS A WORSE SITUATION THAN THE HABITUALLY UNREASONABLY BROAD SCENARIO ENVISIONED BY OTHERS!
Also, this entire minutia of patent lawl, which is itself a minutia of lawl is simply not important.
That’s right. I said it. What now btches?
The article at page 309:
The case law provides little to no guidance on the contours of the BRI standard. It is difficult to find examples or additional verbiage in Federal Circuit case law that demonstrate how examiners are to implement the BRI standard. The Manual of Patent Examining rocedure’s (MPEP) description of claim interpretation during prosecution contains no further instructions specific to employing the BRI. The interpretation section, MPEP section 2111, begins by instructing examiners to give pending claims their “broadest reasonable interpretation.” The section goes on to provide no examples, no tests, and no direction to examiners on how to implement or employ this standard.”
I agree that some examples would be helpful. In particular, examples of unreasonable interpretations, including detailed reasons why those interpretations are deemed unreasonable, would be helpful.
But my impression remains that most Examiners are reasonable and do a fine job with BRI, while many tend to err on the side of interpreting claims more narrowly than they I would consider reasonable, at least if I was a defendant trying to invalidate the claims with prior art. Is someone going to jump in now and argue that this is an even worse situation than the “habitually unreasonably broad” scenario envisioned by others?
lulz. I C wut u did thar.
Although yes, I suppose that they could very well see the issue in a different way as well.
Where is Malcolm indeed.
Still think that Ned feels that it is perfectly fine to apply BRI as it is understood by the courts?
Feel free to tell us how you honestly feel after reading today’s additions from Ned.
Then tell us who is in the hole, as you are the master of being in the deep hole.
““I believe Ned’s point is that the Examiner should certainly be considering the specification for what it teaches but if the specification teaches nothing relevant to the claim terms, then it certainly can be ignored.”
give it a day for Ned to reveal his true colors:
“If the PTO construes claims in way that is divorced from reality”
That would be a complete miss Malcolm, and
“Malcolm, agreed. You will note that ping misquoted me, twisting what I said into the opposite of what I said.”
That would make you a complete l_i_a_r Ned.
Unless you have some point in equating “divorced from reality” to the reasonableness standard inherent in BRI.
Still waiting for you to try to take your turn and make sense.
Now you have Malcolm depending on you to prove that you are not a l_i_a_r and he is not a f_o_o_l.
Jes us Criminy Ned.
You have been told again and again and again not to conflate the Office and the courts, and yet there you go again.
The “duty of disclosure” was not announced in Therasense. “Duty of disclosure” is an Office term.
What was announced in Therasense was related to the court’s doctrine”
You really are that clueless, aren’t you?
“a new light now”
A New Light…
Now, that is funny.
I don’t know, 6. It’s possible that the authors have changed their views and see the issue in a new light now. Don’t you think?
Sport, let’s see. In the case of 2500 references cited, if we were to charge a mere $25 per reference, the total charge would be a mere $62,500. Pocket change considering the investment in actually reading those references at $500 per hour.
And if one can afford to file 250 continuations at a time, one can afford the pocket change.
Still, if the people that filed the 250 continuations are not deterred by a $62k bill for an IDS, plus postage, why don’t we double the toll each time the count exceeds a multiple of 50. I can’t do the math here, the numbers become too high, but the last 50 references would cost around $1,125,000,000,000,000 each. That should slow them down a tad, and perhaps even pay off the national debt to boot.
I know this is the rule and has always been the rule. If the practitioner is in compliance with the rule, he would necessarily not have violated the duty of disclosure as announced in Therasense.
Do you disagree?
Here is my post from that thread in its entirety, Hard. It says what I thought I said,
“My glean:
The PTO does not have substantive rule making authority and cannot legislate a materialty standard.
So, what does this mean about current rule 56 when this case goes final. Is it revoked — in whole? In part?
The PTO has to act so that the pratitioners are not given two inconsistent requirements for disclosure.
What would you do if you were the Director?”
Well, we see what Kappos actually did, exactly what I recommended — provide a rule that refers to the court case so that there is no room for confusion.
“That only worsens the already uneven playing field of obtaining patent coverage.”
How’s that? You could still obtain patent coverage. It’s just that the court might hold you accountable for your IC.
“I would suggest the rule this way:
–At no time should the applicant advance any claim that he knows to be unpatentable over a reference that is not disclosed.–
After the prosecution is over, if he has fulfilled that duty, he should be cleared of IC.”
Ned, as has been noted already today on one of these threads, this has always been the Rule.
Not to be rude, but what is your point here?
Actually Ned, you are not remembering correctly.
You first said that the Office could not be independent of the Therasense case.
It was only after (repeated) corrections of you by me that you started to understand.
On this you really should give credit where credit is due.
A simple “Thank you” will suffice.
“Is that better Hard?”
I don’t know. Let’s see if A New Light starts talking with you again.
“as it was not of issue in that case”
See, Ned, that wasn’t so hard to admit, now was it?
“Malcolm, do you disagree with this from the article at p. 309?”
Where is Malcolm? Does he still back Ned Heller on this topic?
“I would suggest that your idea of only applying BRI after allowance has a further weakness. Any offering of disclosed references (and keep in mind that Rule 97 is left completely intact here) after allowance will of necessity cause that allowance to at least be put on hold and another round of examination then must be commenced.”
I would suggest the rule this way:
–At no time should the applicant advance any claim that he knows to be unpatentable over a reference that is not disclosed.–
After the prosecution is over, if he has fulfilled that duty, he should be cleared of IC.
Does this make sense?
Just one more point, there Hard, it was I who raised the issue of independence of the PTO in the initial thread about Therasense. I was concerned that the PTO not impose a standard of disclosure inconsistent with the duty of disclosure as announced by the court. I was concerned that such could cause confusion, especially if the PTO rule was stricter, for what would be the penalty for non compliance?
Hey, Hard, if that is what it takes, the OK.
A new light, I think you did raise a good issue for discussion. I simply break right while you break left. But we can agree to disagree on which is the better choice, because the issue is left open by the court in Therasense, as it was not of issue in that case.
Is that better Hard?
Hard, on functional at the point of novelty, there are numbers of Supreme Court cases that discuss claims in this way when the issue is definiteness or scope of the claim. The Supremes treat novelty this way, except in new combinations. The Supremes treat Section 101 and 103 issue as a whole.
We have discussed this issue numbers of times here at Patently O. If you want a few cases, I will give them to you.
Hard, you said, “Clearly, and as the case law suggests, when a term in a claim is common to the art and is not explicitly constrained to a particular meaning by the specification, it is perfectly reasonable to apply “whatever” meaning can be “reasonably” applied. And this of course means that an example in the specification is only an example, and thus, by definition, is not the only constraint on an otherwise term (common, art-specific, or otherwise).”
I agree that this fairly summarizes the actual practice of the Office.
But consider this, Hard, if the claim term can be construed in a number of different ways, only one of which reads on the embodiments of the specification, why is the choice that reads on the embodiments tantamount, in you words, to incorporating limitations from the specification into the claims?
It is quite evident that you transitioned to the “Not thinking about it” mode prior to making your comments here.
If you really are not interested in developing the issue, I suppose your current methodolgy tracks well.
However, if you ever do want to contribute in a meaningful way, you might want to consider not merely loling everything (especially as this gives the impression that you do not understand anything) amd leave the thinking on prior to reviewing the ideas presented.
There is an added benefit that you might actually learn something.
“Only then can one know how the claims are being construed. It is at this point the duty to disclose art that is material to the claims as construe should arise.”
And Ned, as I pointed out, once that happens, the need for examination – of those supplied references would be required. It is that examination, newly invoked after the initial claim construction is complete that can then change the BRI of the prior completed construction – you have an infinite loop possibility here.
You need to recognize that such is the case. You need to recognize that your view of examination is not realistic, as the article you put forth also mistakes, examination is not meant to be perfect – errors are to be expected and BRI – as NOW applied – is a tool in managing those errors in a cost and time conscious manner.
“It is at this point the duty to disclose art that is material to the claims as construe should arise.”
True – but not true enough. The duty to disclose material art is present ALWAYS. Surely, you reccognize and agree to this basic concept.
“The Feds… requires application of the duty before the applicant has had a chance to rebut the examiner’s construction”
Ned, Once again I remind you that this was said for the realm of the courts – EXPLICITLY NOT THE REALM OF THE OFFICE. Please, please, please, please take note of this distinction and remember it. Every time you make an argument confusing this, your position weakens.
As to your two paragraphs (splitting out a non sequitur paragraph of your reminder of the amend/appeal option – You really do not need to understand this at all, as it has nothing to do with the point at hand (please curb your wandering) related to “That is really the question on the table” – I see that you have finally responded to A New Light’s very point of a flaw in the present-rebut-amend philosophy of the Office wholesale and unadultered copying of the court decision (for application in the courts).
Funny it is that what you claimed earlier as missing the mark badly has been transformed into the very item that is “really the question on the table.”
I would also offer a recommendation that you mend your relationship by not only apologizing for telling A New Light that he missed the mark badly, but by giving credit where credit is due. Wouldn’t you agree that would be the gentlemanly thing to do?
“ I am trying to find out if there are any “rules” of construction to BRI”
Listen Ned, all I am saying is that you are going about it in a rather odd way, continually conflating what happens before the Office and what happens in the courts (pre and post-grant) and now interjecting all sorts of your other beliefs.
You keep on trying to say that “reasonable” is not “reasonable,” and it gets awfully confusing as to what you are on about.
When you cite cases and opinions, you need to make sure that the topic is appropriate for the holding you wish to use in your argument. When the court is talking about activity in the court, that’s one thing. It is a completely separate thing when activity before the Office (per se) is being discussed – especially by the Office.
But circling back to “reasonable.” You still have not explained the gulf you seem to see. Again, please explain.
You also seem to continually want to be able to import the specification into the claims (as if “the invention” is innately more than the claims. Across many many threads now I have seen this theme (and variations on the theme) brought to your attention. I would have thought that the phrase “Invention, as claimed” mentioned so often to you over the course of many months would have penetrated any desire to not recognize that it is indeed true that the claims are the “game.”
Clearly, and as the case law suggests, when a term in a claim is common to the art and is not explicitly constrained to a particular meaning by the specification, it is perfectly reasonable to apply “whatever” meaning can be “reasonably” applied. And this of course means that an example in the specification is only an example, and thus, by definition, is not the only constraint on an otherwise term (common, art-specific, or otherwise).
For the meaning of “reasonable” you have asked others not to twist your words, but you seem more than able to twist them, like a nose of wax, to be in accord with the law and at the same time, horribly misapplied by the law – the difference only guided by what you suggest or by your definite feelings.
Other than blindly accepting your feelings (not something one of critical mind is liekly to do), what is one to do except to ask you to explain those feelings?
Further, in the post above you now introduce your crusade against use of functional terms in claims, or, heaven forbid, the notion of functional terms at the point of novelty. I would rather not sidetrack this discussion by reminding you that the Supremes have been adamant in saying that claims must be viewed as a whole, so we will leave that discussion for another day.
You appear to be snowballing all of your passions into one argument. Listen Ned, I admire your passion. I really do. But I have to tell you, when you start snowballing like this, you just do not make any sense on any issue, let alone the convoluted jumble of all of them together.
I advise you to take one issue at a time. Slow down and make sure you have the court reasoning appropriately placed on the actual issue the court was discussing, identify those areas that are mere conjecture or driven by belief of how things “should be” and construct your posts accordingly.
In all kindness, I think this will help you not only make a better and understandable argument, you will come off less of a ranting nutball, case law mangler and personal agenda pusher.
Because applicants get WD for original claims. So, in effect, they are construed to “read upon” themselves since applicant can amend his spec to include an embodiment reciting specifically what is in the claim. Although you still look to the spec for any special interpretations that need to be made of terms.
“It’s funny to me how you can presume anything about the level of knowledge about Einstein from someone who supplies a quote from him.”\
Lulz, for a minute I thought you were not NAL/ANL. Never mind.
But just fyi, I “presume” things about you and NAL/AND’s level of “knowledgelol” about everything. Because you have little and you understand less than the commonman. There is literally a 0% chance that you understand anything even remotely related to Einstein’s work and an even smaller chance that you took the time to learn anything about him as a person.
“A New Light has published his “wonderful understandinglol.””
Yes, but you didn’t publish it in “a” paper that got officially peer reviewed.
Although, sure, I do support peer review here on the site as well.
“Rather than take an immature, and baseless, mocking of Einstein knowledge, why don’t you try reviewing the idea put forth? ”
I already did, loled @ it, loled @ the Fed. Circ. for the Theranonsense decision and then moved on with my life without wasting too much of my life thinking about it.
The main issue here is potential inequitable conduct on the part of uspto reguarding corrupt file insertions by employees potential or reality and the possible corrupt lack of congressional action to eliminate the possibility by installing immediate on filing televised novelty examination. apperantly since 1960 with the establishment of the 18+ month secrecy application database. Congress also rejected due date files lockering to insure correct inventorship determination. The potential of having your invention stolen then being prosecuted for it is apperantly to hanious of an injustive even for the judges.
Listen Hard, I am trying to find out if there are any “rules” of construction to BRI. At times, I think the only limit is that BRI means any claim interpretion that is not totally irrational. However, I have a definite feeling that the CCPA had something entirely different in mind at the time it created the rule of construction. I believe it had in mind all the normal rules of construction, save the one that preserves validity by reading limitations into the claims. But, when does that happen in court? It happens when one uses functional terms in claims.
I suggest that what BRI should me is that the PTO should follow Phillips, without the rule that a narrower construction is authorized to preserve validity. That is what I think the CCPA meant.
In fact, in a recent case, Rader, citing the Supreme Court, opinine that one must always construe claims in light of the specification. Whether that meant the same rules as defined in Phillips, he did not say. But that is what I think he meant.
Hard, my post gave the policy reasons for determing the duty after claim construction is complete. BRI, the way it operates, it indefinite until the process is complete. Only then can one know how the claims are being construed. It is at this point the duty to disclose art that is material to the claims as construe should arise.
The Feds said as much in rejecting the current rule 56 because it requires application of the duty before the applicant has had a chance to rebut the examiner’s construction. I even quoted the relevant passages from the case upthread.
Also, we must understand that often the examiner is quite wrong in his claim construction, but we applicants simply amend rather than appeal. The former gets us a patent now. The latter maybe, in a few years at best.
Now consider that the reference is material only before amendment but not after. Has the applicant committed IC? That is really the question on the table.
I suggest not, as the claims as allowed are patentable over the reference.
“If USPTO Examiners were to refrain from unreasonable interpretations, much of the heat would go out of this issue, wouldn’t it?”
I agree with you MaxDrei on this point. I would further note that this is not a matter of BRI being the wrong doctrine, but rather a matter of that doctrine being applied incorrectly. I think that Ned confuses the two.
As for “Why can’t everybody else do it like that?” I only refer you back to the point of US Bound’s post: the law is different and this requires that people do things differently. Harminization is not the answer because the foundational beliefs are not the same.
I am reminded of The New Seekers by your message and I thank you for that. Alas, perfect harmony must remain a commercial pitch for now.
Ned,
You keep on saying “why then doesn’t the MPEP require it with the claims as filed unless the is no way this is reasonable.”
You also keep on acknowledging that BRI means Broadest Reasonable Interpretation.
Somewhere between the two you have created a gulf around what is “reasonable.”
Please explain.
“It’s funny to me how those who know the least about Einstein are the most fascinated by him.”
It’s funny to me how you can presume anything about the level of knowledge about Einstein from someone who supplies a quote from him.
This speak more about the lack of your logical thinking than anything else.
As for published papers and peer review, don’t you thnk that a bit much? After all, all of us (it is hoped) are here on this blog to review and develop the issues put before us by Dennis. So, in a sense, A New Light has published his “wonderful understandinglol.” Rather than take an immature, and baseless, mocking of Einstein knowledge, why don’t you try reviewing the idea put forth? Let’s see you advance an issue instead of engaging in juvenile sidetracks.
Ned,
With all due respect, your post does not advance the issue put forth by A New Light.
Just why do you think A New Light’s view misses the mark badly?
I think the post illuminates a New Light’s issue beautifully. There is a clear distinction between the actions before the Office and the actions before the courts. The very foundations of the BRI standard are based on the benefits that come from the interaction between the applicant and the Office because of the Examiner’s use of BRI. The Office’ rendition of the court’s Therasense standard negates the prinicples of this interaction.
Whether or not you like BRI as a normal Office tool really is not central to the issue that A New Light shines upon.
It appears that you are having difficulty maintaining the separation of functions of the Office and the courts. Your comment of “In this regard, I would judge BRI after the claims are allowed” speaks more to only court actions because the Office work is done at the point of allowance (except for minor clerical work, such as the minor work of issuing and determining PTA). At the same time that you appear to want BRI after allowance (and thus in the court’s domain), you critize the court’s decision, as adopting BRI. This circular and contradictory reasoning is confusing.
I would suggest that your idea of only applying BRI after allowance has a further weakness. Any offering of disclosed references (and keep in mind that Rule 97 is left completely intact here) after allowance will of necessity cause that allowance to at least be put on hold and another round of examination then must be commenced.
I think that the Bey-Cotropia article (by the way, thank you for the link – very much appreciated), was, although interesting, flawed in many respects. Office examination was never meant to be perfect. There simply is not infinite time and resources available to precisly inspect any one application. This requires a management approach to minimize errors (both Type I and Type II errors). The rejection of the BRI is unsound, because removing that tool without replacing it indicates an expectation of Office examination capability that is not reasonable. The article (and your joining in on this) seems to fail to recognize the reality of the situation.
You sir are a piece of s….
Sent from iPhone