By Dennis Crouch
Patent “quality” has many different meanings. The primary focus of the PTO under Director Dave Kappos is on the timely issuance of “right sized,” valid patents. I would add an additional important focus of ensuring that the scope and coverage of each patent is relatively easy to determine. These measures of patent quality fit within broader goals of the patent system — incentivizing innovation and disclosure of those innovations within a competitive marketplace. The patent rules are intended work as something of a feedback system at varying levels of granularity, guiding innovators and applicants in ways that hopefully push us toward those ultimate goals.
I tend to model the patenting process is something of a negotiation between the PTO an the patent applicant. The PTO possesses the authority to grant or deny patent applications, but every word found in the patent is written or approved by the patent applicant. Obviously, the patent applicant’s role in this process is deep and substantial. A patent’s conception begins with words drafted by the patent applicant, not the examiner; amendments are made by the patent applicant, not the examiner, and, after approval by the patent examiner, is the patent applicant must approve the final issuance of a patent (with the payment of a fee).
For many years, I have argued that meaningful change in the state of patent law and patent quality could be implemented in incentives that push applicants toward filing quality patent applications – claiming valid subject matter and drafting claims with well-defined scope. The USPTO agrees and has now published a notice on its project to “focus[] on potential practices that applicants can employ at the drafting stage of a patent application in order to facilitate examination and bring more certainty to the scope of issued patents.” Email comments to QualityApplications_Comments@uspto.gov by March 15, 2013.
The PTO’s current ideas on this front focus on ways to clarify the meaning of terms used in the claims and the resulting scope of the claims. Some of the initial ideas presented are traditional define-your-terms notions while others suggest that new mechanisms of information connectivity may offer solutions.
On these fronts, the PTO lists the following ideas and requests comments:
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Clarifying the Scope of the Claims
- Presenting claims in a multi-part format by way of a standardized template that places each claim component in separate, clearly marked, and designated fields. For instance, a template may facilitate drafting and review of claims by separately delineating each claim component into separate fields for the preamble, transitional phrase, and each particular claim limitation.
- Identifying corresponding support in the specification for each of the claim limitations utilizing, for example, a claim chart or the standardized template described above. This practice could be particularly beneficial where claims are amended or where a continuing application (continuation, divisional, continuation-in-part) is filed.
- Indicating whether examples in the specification are intended to be limiting or merely illustrative.
- Identifying whether the claim preamble is intended to be a limitation on claim scope.
- Expressly identifying clauses within particular claim limitations for which the inventor intends to invoke 35 U.S.C. 112(f) and pointing out where in the specification corresponding structures, materials, or acts are disclosed that are linked to the identified 35 U.S.C. 112(f) claim limitations.
- Using textual and graphical notation systems known in the art to disclose algorithms in support of computer-implemented claim limitations, such as C-like pseudo-code or XML-like schemas for textual notation and Unified Modeling Language (UML) for graphical notation.
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Clarifying the Meaning of Claim Terms in the Specification
- Indicating whether terms of degree—such as substantially, approximately, about, essentially—have a lay or technical meaning and explaining the scope of such terms.
- Including in the specification a glossary of potentially ambiguous, distinctive, and specialized terms used in the specification and/or claims, particularly for inventions related to certain technologies, such as software.
- Designating, at the time of filing the application, a default dictionary or dictionaries (e.g., a technical dictionary and a non-technical dictionary) to be used in ascertaining the meaning of the claim terms.
As we all move forward with this process (over the years…), I am confident that we will begin to think of patents less and less like “documents” that printed and read, but more like digital information maps that provides a network of information about inventions. Part of this potential comes from linking claim terms to descriptions found elsewhere and direct mark-up that ties original text to post application changes and notations.
None of these changes would make patent quality easy – but they would likely help move us in the right direction.
I don’t want to judge you but I think that you need to do a little bit more research on the matter.
“Patents only have one use. You can scare people”
Ohhh – the bogeyman is out to get you.
OK, we see that the animus towards patents comes from you thinking that they have only one use – and a nefarious one at that.
Please check your anti-patent bias at the door. Leave it next to your shiny aluminum headgear.
The patents they get are not for offensive purposes — they are for defensive purposes. As such, “tricky” claim language is of no use to them.
Patents only have one use. You can scare people with the threat of a lawsuit if they don’t pay to license them. Whether you do it “offensively” (i.e., first) or “defensively” (i.e., second), you still need a patent that’s good enough to make a credible threat of infringement, and preferably an injunction. The only defense is a good offense.
Unless, of course, you’re lucky enough to get sued by the only patent troll who knows less about patents than you do. Then you can be glad you got twice as many patents for your money, because you can say “look how many pages I have with patent numbers on them”.
I’m not going to draft a $12K patent application when the client only needs a $6K patent application.
It’s no wonder they want the cheaper one, if they wouldn’t know what to do with the expensive one. Also, “needs” is a pretty strong word. You’ve (or society has) managed to convince your client to spend $6k on something commercially worthless that you made yourself. All you’re doing is high end arts and crafts.
“Right. That’s what I’ve been saying here for years. The vast majority of clients don’t appreciate what patents are for, and don’t know a particularly well-drafted one from a hole in the ground.”
You also have to remember that most clients are not out there licensing their technology. The patents they get are not for offensive purposes — they are for defensive purposes. As such, “tricky” claim language is of no use to them.
As a patent prosecutor, you draft patents tailored for what the client wants. I’m not going to draft a $12K patent application when the client only needs a $6K patent application.
“How do you like your cushy job designing the world’s most expensive wallpaper? Maybe you should consider getting design patents on your utility patents.”
Expensive wallpaper = defensive patents. You do know about those, don’t you?
101, I would like to repeal 102(f). But, it specifies that a claim use "magic" words. To date, the courts will not apply 112(f) unless it is intentionally invoked.
So what I say, if you do not invoke it, your claim is invalid, if the invention is claimed functionally.
“101, Diehr involved a process, and did not involve functional claiming AFAIK.”
Yes, I understand now this is your issue. Still not quite sure why you have a problem with it.
Great link Ned – my sincerest thanks.
I wonder why this was not picked up by the blogs?
In part, could it be because Rader is dead-nuts-on right?
With all due respect to our land’s highest court, they themselves have done this to themselves with their desired-results approach (even MM has recently admitted that law is fudged with “policy” at the SC).
This is confirmed by a national poll (published last year, if I find the link I will post it) that revealed that the Supreme Court has not been held in lower esteem by the public in all of modern history. I have heard this mirrored by both lawyer and non-lawyer associates, so my posting here is both personal opinion AND mere reporting of the general view of this country.
And as an example of Rader’s correctness, I have noted (and corrected certain blog masters) that the dead letter comment in Prometheus was not to a law, but rather it was to a judicial exception.
When the highest court in the land is in love with its own history, and must really s – t – r – e – t – c – h to incorporate its own rewriting of patent law in order to keep its fingers in the pie, well, a certain degradation of respect is inevitable.
The King (the SC) really isn’t wearing any clothes. Rader should be praised for pointing this out (and naturally (or third-party-interest-induced), you will quite likely have the opposite reaction).
Again, thanks for the link.
“Functionally claiming machines, articles and compositions.”
Thank you for the clarification. So do you want the following section eliminated from 112? And if so why?
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
“How do you like your cushy job ”
ahh, the animus is revealing itself. So how long have you been jealous of these people and their “cushy jobs”? How do you really feel about the fact that infringers don’t have free reign over this invented stuff?
(in the best Dr. Freud tones).
Along with Rich.
Interesting that you despise the one and revere the other.
(we both know why)
Today’s dose of reality brought to you by…
Just Saying
Anon, why don't you read up on Frederico's remarks concerning 112, p. 3 (now f). He was there talking about nominal elements. And, that man authored the '52 Act.
anon, I have heard one of the professors who posted here say that about Story.
As for the essence of the dispute that still rages, just read the dissents in both Le Roy v. Tatham and Morse.
Functionally claiming machines, articles and compositions.
Rader had this to say:
http://www.law360.com/ip/articles/408846?nl_pk=ad40da3c-8c64-4229-8dbe-d6a2051d357c&utm_source=newsletter&utm_medium=email&utm_campaign=ip
101, Diehr involved a process, and did not involve functional claiming AFAIK.
The vast majority of clients appreciate issued patents FAR MORE than they appreciate ambiguous language that MAY make it harder on a potential licensee some untold years in the future.
Right. That’s what I’ve been saying here for years. The vast majority of clients don’t appreciate what patents are for, and don’t know a particularly well-drafted one from a hole in the ground.
How do you like your cushy job designing the world’s most expensive wallpaper? Maybe you should consider getting design patents on your utility patents.
“Right. And they have better things to do than to draft crystal clear claim language that will never get allowed.”
Huh? Try to craft a sentence that makes sense.
“The point (again) is that the skilled prosecutor learns to draft claims that appear to be narrow, thereby obtaining the patent with a minimum of prosecution history, but understands how those same claims can be interpreted more broadly if the patentee desires to do so.”
Into conspiracy theories I see? If anybody is going to interpret the claim more broadly, it will be the examiner — they are masters of transforming tight language into loose language. Try to work with real life … not fanciful hypotheticals.
“But I think this is on the short list of required skills.”
Hardly.
“You know, you can get MCLE credit and often times a free lunch when you attend a qualifying presentation”
I know all about it … I put those things together for years. What you are suggesting is of such ephemeral importance. The vast majority of patent prosecution work done in Biglaw is done by associates. Partners rarely get their hands dirty drafting claim language. The knowledge and experience to draft the type of claims you are suggesting are out there isn’t going to be had by the average associate. You can find that experience in smaller firms. However, in most instances, clients are not going to care about nor spend the type of $$ it is going to take to draft “tricky” claim language.
“You think it’s poor and middle class people who suddenly decided to invest in patent applications when the housing market collapsed? Really?”
You don’t become rich by throwing around cash heedlessly. They don’t want to spend any more of their $$ than they have to. That being said, if it isn’t required, they likely won’t want to do it. Let me break this to you easily … there is little chance any of these suggestions will ever make it past being suggestions.
Whether you (through the taint of third party interests) see a vice or not – I do not care.
I care about what the unadultered view of the law presents. I care that you leave behind your canard of “point of novelty.” I care that you leave behind the facile (and fallacious) implicit dissection in your desire to limit functional language.
Did you know that Justice Story was overly enamored with English patent law, even so far as to beleive that methods (really) were not even patentable? (at that time in England, method patents were not allowed).
There is an intrinsic bias that should be recognized for what it is. That bias persists to this day under the guise of treating patent eligible subject matter differently depending onif you are talking about the ‘hard’ items (manufactures and such) and the ‘soft’ item – processes. But there is no legal basis for this distinction in US jurisprudence.
The other way this bias sneaks in is through tryint to treat method claims as legitimate only as far the method is used to create one of the ‘hard’ items. Likewise, there is no legal basis for this distinction in US jurisprudence.
Just in case you wanted to know.
“Better things to do? Isn’t what you just described a patent prosecutor’s entire job?”
Hardly … you worry about getting a patent first. Ambiguous claims = easy/bady rejections by the USPTO. If you want to monkey around with the claims, you do so in a continuation application.
The vast majority of clients appreciate issued patents FAR MORE than they appreciate ambiguous language that MAY make it harder on a potential licensee some untold years in the future.
anon, lets take a few examples:
1. The invention is a picture frame. Nails, screws and similar things are known means for attaching the wood beams together. The claim recites the plurality of know apparatus functionally, as
– a fastener;
– means for fastening;
– adapted to fasten;
and the like. I see no vice in these.
2. The invention is now glue to fasten the wood beams together. The picture frame is old.
A claim that reads word for word the same as the claim in 1 would literally cover the invention, but also the prior art. It would not particularly point out the invention.
Now if we could distinguish the prior art by arguing the specification, the glue, the claim would issue. But the claim itself would still not tell us what the invention is. It would not fulfill its proper role of identifying the invention within the borders of the claim.
2. Same as 2, but the claim fastening means is "adapted to fasten such that there is no freedom of movement between the two intersecting beams. The nails, screws and the like, all allowed some freed of movement about the axis of the shaft of the nail or screw.
The problem with this claim is that it does not claim "glue," the a result. If others invented other means for attaching that achieved the same result without using glue, the claim would cover it. The claim itself does not include any of the novel means or methods actually invented. It falls squarely withing the prohibition of Morse.
“I don’t believe my remarks were addressed to processes.”
Then exactly what class are you talking about?
I don't believe my remarks were addressed to processes.
“The best part is that he perpetually self-defeats with his “9-0 baby” jig.”
Yes, I recall MM on here crowing as soon as the Prometheus decision came down, and Ned proclaiming him as brilliant or something like that. I even think Max was jumping on the his usual suck up bandwagon hoping he cold be one of the gang. But apparently none of them read the decision first or they would have realized the Court took the claims as a whole, 9-0
Integration 9-0.
Dissection zero.
Right in MM’s face.
So when Federal Circuit Judges like Linn write in Alice that:
“…. ignoring claim limitations in order to abstract a process down to a fundamental truth is legally impermissible”
It has so much power and authority. Proust(?) looked so weak in her losing dissent claiming Linn had ignored Prometheus.
When it was Linn that was following Diehr, same as Prometheus did.
Same for all those shill attorneys paid to write amicus briefs with the same losing argument.
Like MM is so found of saying…Supreme Court precedent 9-0, and it’s not going to be overturned baby!
The best part is that he perpetually self-defeats with his “9-0 baby” jig.
“Perhaps his circle mate MM can post that link to how the Office understands the Prometheus decision.
(you know, the link that exalts the integration theory and makes no mention of the [oldstep]+[newthought] fallacy)”
Oh yes, that is for certain. MM is such an intellectual coward and weakling that he will never even address, let alone apply the Court’s “Integration Analysis” to any real claims.
“You draw an artifical distinction based on a canard which implicitly requires dissection.”
I believe this the primary reason Ned ( MM too) and others with an anti-patent agenda can’t apply the Court’s “Integration Analysis” to any claims.
They can see that “Integration” is the antithesis of dissection, and therefore buttresses Diehr’s claims as a whole mandate.
And without dissection they are stripped off the instrument they need to eviscerate claims they do not like.
Ned:”All one has to do is add a number of nominal elements to surround the claim to a result. The Office never seems to “get it,” and the patent issues.”
Ned, I honestly do not understand the point you are trying to make with this function Vs Result dichotomy you have created.
Are you saying that a process claim can’t include functional steps?
Are you saying that a process claim should only include functional steps?
Are you saying that a process claim can’t claim a result?
Please clarify your position.
Thank you.
Ned: “Clearly, as well, the Federal Circuit is clueless.”
Well, now that depends on which case/panel you are referring to. Certainly Rader and Linn get it in Research Corp and Alice respectively. They understand Diehr controls what is patent eligible subject matter, and take the claims as a whole, with no dissection.
And the Supreme Court has twice now upheld Diehr, especially at “claims as a whole” and agreed unanimously that the reason Diehrs claims were patent eligible subject matter was because the claims were “integrated”.
Are you beginning to understand now?
“I don’t understand how you can make that leap, 101.”
Okay, I am going to try and help you understand. You do not have to make the leap because the Supreme Court has given you a very steady, stable, bridge called “integration”.
First we begin with Diehr quoting one of your favorite cases…
“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e.g., Funk Bros. Seed <450 U.S. 188> Co. v. Kalo Co., 333 U.S. 127, 76 USPQ 280 (1948);Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v. Deener,94 U.S. 780 (1876); O’Reilly v. Morse,15 How. 62 (1853); andLe Roy v. Tatham, 14 How. 156 (1852).”
Next Diehr says:
“In determining the eligibility of respondents’ claimed process for patent protection under §101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the <450 U.S. 189> process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter.”12
Finally in Prometheus Diehr’s claims are interpreted as:
In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as “a whole”. 450 U. S., at 187. These additional steps transformed the process into an “inventive application” of the formula. ) [MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC 566 U. S. (2012) 3 Syllabus] (Emphasis Added) Please note the added emphasis of the quotation marks.
And that my friend is how you get to eligible subject matter without taking a leap. Simply walk across the bridge of integration.
“add a number of nominal elements”
Very much misses the point about integration (sigh).
Have you not been paying attention?
“that old elements of a claim cannot be claimed functionally”
That is most decidely not the law. You draw an artifical distinction based on a canard which implicitly requires dissection.
However, I suspect your third party interests prevent you from an honest appreciation of current law. You should realize how tortured your logic becomes when faced with the inevitable. how very unconvincing you become. The need to claim that you don’t understand…
It’s a shame really.
Funny, he does not understand.
Perhaps his circle mate MM can post that link to how the Office understands the Prometheus decision.
(you know, the link that exalts the integration theory and makes no mention of the [oldstep]+[newthought] fallacy)
101,
That would require dissection and the (canard) treatment of some type of “point of novelty,” in isolation of anything else in a claim, as well as the baseless legal insertion that functional claiming must be bad, very bad.
There is also the process of using the hammer. Same goes for the nail.
No.
Typically when you claim a result you claim an article or machine or a composition in terms of what it does or the result it produces.
But there is a difference between the process of making the hammer and the result it produces.
Ned: “I don’t understand how you can make that leap, 101.”
Tell it to the Supreme Court. I don’t have a problem with it. Maybe you do. But it’s still the law.
Ned in my opinion is simply the most dishonest commenter on the blog
Good evasion too.
Since you so boldly made the assertion you should now responsibly and honestly answer the question.
Last, the problem with claiming an invention functionally is as old as the hills. They claim a result.
This is not to say that old elements of a claim cannot be claimed functionally. They can.
Sent from iPhone
Good question.
Sent from iPhone
No.
Typically when you claim a result you claim an article or machine or a composition in terms of what it does or the result it produces.
Sent from iPhone
I don't understand how you can make that leap, 101.
Sent from iPhone
Whats your beef with functional claiming Ned? Why is it “low quality” to claim something functionally? We are in the computer age now. Often the invention is in the function and not a particular implementation.
How can a process claim not claim steps and only claim a result?
If one claims a hammer or a nail do you not claim a result?
“One cannot have a patent on a principle in the abstract.”
But one can have a patent on an “inventive application” of a principle.
Thus you have not reconciled the old cases with Diehr, as was done in Prometheus.
Understand?
101, we agree that this is a 112 problem. The problem is that so many patents issue with claims just such as this, because the vice is easy to cover up. All one has to do is add a number of nominal elements to surround the claim to a result. The Office never seems to “get it,” and the patent issues.
Clearly, as well, the Federal Circuit is clueless. Claim a result? No problem, just cover that up in claim construction.
But the SC does get it. There is a remarkable difference between the two courts on the requirements for claims in terms “particularly point out and distinctly claim.”
If the claim recites a series of steps that produce a new result, and the steps are disclosed, the claimed method clearly is eligible.
It think you miss the point, 101.
The point is that the claim does not claim the steps at all, just the new result.
One cannot have a patent on a principle in the abstract.
101, I think what the SC had in mind something like a broad range of equivalents for pioneering inventions. But the claim still could not conver the future "independent" inventions of other that did not drawn on the patent, but nevertheless accomplished the same work.
And let’s not forget his odd views on the Chakrabarty case.
I am afraid that Ned has too severely compromised his views on case law given his third party interests. He has shown himself unable to separate himself from an interested (and biased) viewpoint – at least regarding 101 matters. On some other matters, Ned has been able to be more forthcoming in discussions.
“And that problem goes to the heart of the most vexing problem we have today in patent law: over broad, functional claims that claim a result. They are inherently indefinite.”
If performing the steps in the claims ( irregardless of breadth) produces the new and useful result described in the specification, how exactly would that make the claims indefinite?
“That is, unless you deny that those cases exist.”
Since the Court told us in Bilski that it’s precedents stand for no more than the principles in Diehr, my question is; how do you reconcile those cases with Diehr?
And specifically how do you reconcile those cases with Diehrs mandate of claims as a whole/no dissection, and integration?
Or do you just deny the Diehr case exist?
Ned: “I invent the cure for one cancer. I claim the cure for that cancer without any details as to what the cure is. Naturally, the claim covers my invention. It also covers ever other cure for the same cancer.”
That’s simply a 112 problem. And easily fixed while drafting the application.
So what would be your point?
“If one invents on way of accomplishing a thing, one cannot patent all ways of accomplishing that thing.”
So now pioneering inventions are no longer patent eligible?
That would amount to “retarding” the progress of the useful arts!
anon, I think they do stand for what I say they do.
If one invents on way of accomplishing a thing, one cannot patent all ways of accomplishing that thing. But that is what happens when one claims a machine, an article or a composition by describing the the result it achieves, by what it does, rather than what it is.
The cases I cite all have this as a central theme.
BTW, answer me this, anon, do you see any vice in a claim that covers all ways of communicating intelligible symbols at a distance using electro magnetism? What a about glue by comparing its qualities to a known glue? What about a filament composed of grains that prevent sagging? What about a sensor that counts the number of tubing collars by whatever means? What about a ice carving machine… without the slightest detail of how that machine is constructed?
I invent the cure for one cancer. I claim the cure for that cancer without any details as to what the cure is. Naturally, the claim covers my invention. It also covers ever other cure for the same cancer.
Your continued opposition to this principle of patent law is what gives one pause, anon. This proposition of law handed down to us by Story and by the Supreme Court in any number of cases is quite simple to understand.
Perhaps, like Rich, you find no vice in such claims as they all could be construed to cover only the disclosed means and methods. But even if that were true, anon, there still would be a problem, would there not?
And that problem goes to the heart of the most vexing problem we have today in patent law: over broad, functional claims that claim a result. They are inherently indefinite.
Ned,
Your false logic is that because those cases exist, they must mean what you say they mean.
They don’t.
Stop with the canards already.
a device configured to perform a recited function….
If that is the claimed invention, then it surely runs afoul of O’Reilly v. Morse and its progeny that includes Perkins Glue, GE v. Wabash Appliance and Halliburton Oil v. Walker.
That is, unless you deny that those cases exist.
Improve (blogging) quality:
Do not perpetuate canards like “Point of Novelty.”
Treat “configured to” as established in the art: structural (LOL, Ned you can even ask MM, as he has volunteered this admission).
Reference numbers… Meh, a minor nit.
Improve quality:
1. Do not permit functional or equivalent generic terms at the point of novelty. Suggest that elements that are defined functionally be placed before a colon and be deemed part of the prior art.
2. Treat “configured to” as functional.
3. Require reference numerals.
anon, me too, many times. However, other examiners do not so insist.
MM:The idea of having tiered rules (or merely multiple rules for different situations) is old as the hills.
Is it a fact that the above is the idea/concept of the invention? ( Remember only the “Actual Inventor” can tell you that.)
And did the inventors claim the disembodied idea or did they claim an application of the idea?
Remember what Alice told you…
“As the Supreme Court has recently acknowledged, “too broad an interpretation of [the exceptions to § 101] could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Prometheus, 132 S. Ct. at 1293. Any claim can be stripped down, or simplified, removing all of its concrete limitations, until at its core, something that could be characterized as an abstract idea is revealed. But nothing in the Supreme Court’s precedent, nor in ours, allows a court to go hunting for abstractions by ignoring the concrete, palpable, tangible, and otherwise not abstract invention the patentee actually claims. It is fundamentally improper to paraphrase a claim in overly simplistic generalities in assessing whether the claim falls under the limited “abstract ideas” exception to patent eligibility under 35 U.S.C. § 101. Patent eligibility must be evaluated based on what the claims recite, not merely on the ideas upon which they are premised. In assessing patent eligibility, a court must consider the asserted claim as a whole. Diehr, 540 U.S. at 188.
It is inappropriate to dissect the claim into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”
CLS BANK v. ALICE CORPORATION 20 Id. at 188-89.2
What MM, and people like him must understand is that because they may not like or value a particular art or technology has no effect on patent eligibility. Such n approach would surely eviscerate patent law.
“Did it really take three people to come up with the concept of controlling credit card access with a computer?”
It’s not the concept but the “application” and thanks to Prometheus, the “integration” of the concept that matters. Also see Diehr, 450 U.S. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”); Research Corp., 627 F.3d at 868 (holding that a process is patent eligible subject matter when it “presents functional and palpable application in the field of computer technology.”); Alappat, 33 F.3d at 1544-45 (holding that claims directed to a specially-programmed computer—a “specific machine to produce a useful, concrete, and tangible result”—are directed to patent eligible subject matter).
MM: “This is a classic attempt to claim an abstraction ”
Oh really? Let’s see. In Diehr the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. 450 U. S., at 187. These additional steps transformed the process into an inventive application of the formula. ) [MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC 566 U. S. (2012) 3 Syllabus] (Emphasis Added)
Using the Courts line of 101 cases as the lens thru which to determine when claims are “integrated” it is apparent that a new and useful process claim in general has a clear presumption of “Integration” and the presumption remains valid, and requires no further analysis under 101 unless the claims as a whole recite;
1. A bare Court created judicial exception, (derived implicitly from the Congressional Statute of 101) or
The first element of the claim is a bare Court created judicial exception (derived implicitly from the Congressional Statute of 101) followed by additional steps or claims that apply the judicial exception. In the case of the latter, analysis for extra-solution activity, (pre or post ) occurs to determine if the claims are integrated or instead pre-empt the judicial exception. We can look to the Court’s definitions of “abstract” to help us with this claim.
“[a] principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.”Bilski II, 130 S. Ct. at 3230 (quoting Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175 (1852)).
1.We know the claim “as a whole” is not a fundamental truth; an original cause; a motive.
“a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011),
2. We know the claim “as a whole” can’t be performed entirely within the mind.
3. We know It has not been proven the claim “as a whole” preempts an unapplied concept.
Therefore, in keeping with Supreme Court precedent and line of 101 cases, the claims “as a whole” maintain their presumption of “Integration” and are not abstract.
Now whether the claims fail at 102 or 103 requires a different set of questions and analysis, but I can assure you simply “mocking” the claims will not suffice as an effective argument in any [C]ourt. Any questions? I am here to help.
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1. A method for establishing a multiple-tier transaction rule based at least partially upon geographic location using a handheld electronic device comprising:
using the handheld electronic device to define the multiple-tier transaction rule by:
defining a first geographic limit and selecting a first control action to be implemented if a transaction initiated by a subsidiary financial account linked to a primary account belonging to the user of the handheld electronic device violates the first geographic limit;
defining a second geographic limit and selecting a second control action to be implemented if the transaction initiated by a subsidiary financial account violates the second geographic limit;
defining a third geographic limit and selecting a third control action to be implemented if the transaction initiated by a subsidiary financial account violates the third geographic limit; and
defining a fourth geographic limit and selecting a fourth control action to be implemented if the transaction initiated by a subsidiary financial account violates the fourth geographic limit, wherein the first, second, third, and fourth geographic limits are different from one another, and wherein the first, second, third, and fourth control actions are different from one another; and communicating the multiple-tier transaction rule to an external server controlled by a financial entity that manages the primary account and subsidiary account, wherein the communication of the multiple-tier transaction rule causes the external server to apply the multiple-tier transaction rule to the subsidiary account.
MD: I’m reminded of telephone systems in law firms which assign to different levels of employees different degrees to which they can dial telephone numbers outside the firm.
You should be reminded of that. The idea of having tiered rules (or merely multiple rules for different situations) is old as the hills.
Yes, friends, it’s been true for most of our entire lives that computers can be instructed to control all kinds of activities “automatically”. Merely describing another context in which such control can be implemented is not “inventing.” And make no mistake: nothing more or less than that is being claimed here. Instead of a “financial transaction”, these “rules” could relate to any other activity that requires electronic access. Throw in a couple robots or humans “equipped with devices capable of receiving electronically transmitted information” and you can expand that to non-electronic activities. Where’s the “inventing”?
Even if companies can’t get the broad claims, then they’ll just try to get claims covering the “rules” that are being “implemented”. So now we’re patenting “rules” for deciding when someone can and cannot do something … using an old computer. Oh, right: it’s a small computer now. Nobody could have predicted that computers would get smaller and portable back in 2009.
Heckuva job, Kappos.
A hand-held device though. There’s a thought.
An incredibly, nearly impossibly shallow thought but surprise! a thought that is driving an incredible number of patent applications these days. A hand-held device!! What will they think up next??????
Flashback to 10-15 years ago when patents were being filed (and granted) on all sorts of ancient, obvious activities like buying something on credit from a merchant that knows who you are (so you don’t need to tell him a secret word and confirm that you really wanted to buy that thing before you he takes your money) … USING A COMPUTER! Or claiming a prize based on a raffle number associated with a purchased item … USING A COMPUTER!
It’s hard to imagine how primitive our world would be had those patents not been available. What other possible incentive would exist to implement such brilliant inventions which were technologically light years ahead of their time?
I’m curious about the three inventors on this patent. Did it really take three people to come up with the concept of controlling credit card access with a computer? Was one of them in a meeting saying “Hey, I just thought of something. You can set rules to control access to your credit card with a hand-held device.” And then the other one suddenly piped up “Dude, think about this: you can set rules for YOUR KIDS with a hand-held device.” And the first “inventor” says, “DUDE! That is so intense.” And then the third inventor is all “Dudes, you can set rules based on stuff like where the card can be used.” And the other two guys are like “DUDE! You are so on this patent application with us!!!”
America is the best. I’m thinking at least ten jobs are created when this patent is granted, minimum.
My “good system of note-taking” is the specification. I give some background, I give a summary of the invention, and then I give a detailed description. If that written description does not inform all later comers of the key features of the invention, then I have failed at my job.
I’m reminded of telephone systems in law firms which assign to different levels of employees different degrees to which they can dial telephone numbers outside the firm. I, as partner, can dial any number in New Zealand, my assisting attorney if it is a client, my paralegal and secretary not. When it comes to numbers/clients in Europe and when it comes to domestic numbers/clients, access is not so heavily restricted.
A hand-held device though. There’s a thought. I wonder, is a PC keyboard a hand-held device?
WTMQQDNR
Case in point
US 20130018792
1. A method for establishing a multiple-tier transaction rule based at least partially upon geographic location using a handheld electronic device comprising: using the handheld electronic device to define the multiple-tier transaction rule by: defining a first geographic limit and selecting a first control action to be implemented if a transaction initiated by a subsidiary financial account linked to a primary account belonging to the user of the handheld electronic device violates the first geographic limit; defining a second geographic limit and selecting a second control action to be implemented if the transaction initiated by a subsidiary financial account violates the second geographic limit; defining a third geographic limit and selecting a third control action to be implemented if the transaction initiated by a subsidiary financial account violates the third geographic limit; and defining a fourth geographic limit and selecting a fourth control action to be implemented if the transaction initiated by a subsidiary financial account violates the fourth geographic limit, wherein the first, second, third, and fourth geographic limits are different from one another, and wherein the first, second, third, and fourth control actions are different from one another; and communicating the multiple-tier transaction rule to an external server controlled by a financial entity that manages the primary account and subsidiary account, wherein the communication of the multiple-tier transaction rule causes the external server to apply the multiple-tier transaction rule to the subsidiary account.
This is a classic attempt to claim an abstraction (a method for “establishing a rule” – try to believe it) in the form of a flowchart. There’s lots of words. It looks sorta complicated at first glance.
Note first the lame attempt to “limit” the claim by the recitation of “hand-held device,” as if the recitation of this ancient “device” somehow makes a difference with respect to the computer-implemented and non-computer implemented art that renders this p.o.s. obvious.
Note second the equally lame attempt to “limit” the claim by the recitation of the activity (“financial transaction”) that is prohibited by the “rule” that is “established” by the method.
What we’re looking at is an attempt to claim a method of “establishing a rule” that allows an owner (e.g., a parent) of a subsidiary account (e.g., a shared credit card account) to control access of that subsidiary account by a particular user (e.g., a child). In other words, “Hey, Junior, I don’t want you to use that credit card I gave you when you go to Ft. Lauderdale.” That’s the invention.
Oh but wait! This is “multiple tiered”! That means there are additional rules. “Hey Junior, I don’t want to use that credit card when you go to Ft. Lauderdale or Daytona Beach.” (what possible difference could this make for patentability, whether there is 1 such rule or 2 or 3? )
Oh but wait! There are different rules depending on where you go. “You can use the $100 on the card to take your Grandma in Tallahassee out to dinner”. (what possible difference could this make for patentability?)
Oh but wait! The financial institute is involved. “Junior, I called the bank and they aren’t going to let you use that card anywhere in Florida except in that restaurant in Tallahassee”. (what possible difference could this make for patentability?)
Oh but wait! The rule doesn’t rely on communicating to people with voices. It’s done using a POWERFUL COMPUTER BRAIN. But using a computer to control access is ancient. How can that matter?
Oh but wait! This brain FITS IN THE PALM OF YOUR HAND! No, that can’t be the answer. Hand-held devices were ancient when this application was filed back in the dark, dark ages of 2009 long before kids had shared credit card accounts with their parents and before anybody dreamed of controlling what the kid could do with that account.
Oh but wait! This PALM-SIZED POWERFUL COMPUTER BRAIN is capable of taking into account geographic information! That must be it. Computers weren’t capable of doing that in 2009 and these guys figured out a solution to that problem. That must be it. Right?
The circle group almost in full – or as is evidenced, in fool.
Lou Gehrig was a beloved individual, stuck down in his prime.
You sir, are no Lou Gehrig
(Said in Benson tones)
Dude,
The implications of your attempted humor are more than just a little odd.
I’m the Lou Gehrig of patent law. Today I consider myself the luckiest man on the face of this earth.
your post indicated a real man, INCLUDING a real man’s mental furniture and that the quote you just now add indicates that the legal “man skilled in the art” is precisely not a real man, as real men carry withthem real imagination and have some inventive capacity.
Also, sometimes that real man likes to smell like a different-smelling man.
I’m on a horse. He seems thirsty.
the Leopold Disease
Dude, you told me that was just a cold sore.
most patent prosecutors have got better things to do than to draft ambiguous claim language that makes it harder for them to get the application allowed.
Right. And they have better things to do than to draft crystal clear claim language that will never get allowed. Any other strawmen you want to discuss?
The point (again) is that the skilled prosecutor learns to draft claims that appear to be narrow, thereby obtaining the patent with a minimum of prosecution history, but understands how those same claims can be interpreted more broadly if the patentee desires to do so. Of course, narrower and less ambiguous and more plainly valid claims can be presented in another application should there be an actual client product to protect.
Do patent prosecutors have “better things to do” than the above? Maybe. But I think this is on the short list of required skills.
I worked in an office with over 100 IP attorneys (litigation/prosecution/trademark/everything). Your belief about how much information gets shared is idealistic.
I think your office just didn’t have a robust system for communicating information between practice groups. You know, you can get MCLE credit and often times a free lunch when you attend a qualifying presentation.
these suggestions would put getting a patent out of the range of all but the very well heeled
The cost might go up a little bit, but not much. I don’t think it would have a noticeable effect on who’s filing patents. We know that almost all patent applications filed these days are filed by “the very well-heeled”. Who else has the money to gamble with? We’re in the middle of a nasty recession. Only the richest people in this country are making more than they did back in 2008. You think it’s poor and middle class people who suddenly decided to invest in patent applications when the housing market collapsed? Really?
Correct – notwithstanding the attempted snark.
Great first step – now take the second and recognize that your post indicated a real man, INCLUDING a real man’s mental furniture and that the quote you just now add indicates that the legal “man skilled in the art” is precisely not a real man, as real men carry withthem real imagination and have some inventive capacity.
Rather than getting p1ssy (and undeservedly so, I might add), you might want to take a step back and realize that you misspoke.
The automaton point I raised has clear, unmistakable, and substantive legal impact. Your reaction to my post highlight the “you” problem that You need to overcome (the Leopold Disease).
There was nothing in my post requesting gratitude from readers – and provoke you into a worthwhile post is exactly what I did. Quite the contrary, my posts helping you understand at done in a selfless manner. And while at times it may seem that I am being cruel to be kind (in the right measure), you do deserve credit, and that is what I did provide to you as well.
The proper response, Max, is “Thank you.” I think it’s wonderful that anon has (selflessly) helped you to understand the EPO conception of the “man skilled in the art.”