When a Functional Claim Limitation is the “Essence of the Invention”

by Dennis Crouch

In re Jasinski (Fed. Cir. 2013)

Jasinski’s patent application is owned by IBM and directed to a method of testing computer memory devices. Application No. 10/906,508.  The USPTO examiner rejected the claims as anticipated and that rejected was affirmed by the USPTO’s internal review board.  On appeal here, the Federal Circuit reversed based upon a claim construction issue.

I have reproduced claim 1 below:

A method for verifying the accuracy of logical-to-physical mapping software designed for testing memory devices, said method comprising:

[a] providing a built-in self test (BIST) fail control function to generate multiple simulated memory fails at various predetermined locations within a
memory array of a memory device;

[b] testing said memory array via a memory tester;

[c] generating a bit fail map by said logical-to physical mapping software based on all memory fails indicated by said memory tester, wherein
said bit fail map indicates physical locations of all fail memory locations derived by said logical-to-physical mapping software; and

[d] comparing said fail memory locations derived by said logical-to-physical mapping software to said various predetermined memory locations to verify the accuracy of said logical-to-physical mapping software.

The USPTO refused to give patentable weight to either the preamble statement of purpose “verifying the accuracy” or the final functional clause indicating that the purpose of the final comparing step is “to verify the accuracy.”  Rather, the USPTO argued that those statements of intended purpose of a step rather than placing any actual limitation on the step itself. According to the USPTO, if the patentee wanted to include a verifying step then it could have done so by positively reciting that step. See Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373 (Fed. Cir. 2003) (a whereby ”clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.”)

On appeal, the Federal Circuit agreed with the notion that a clause that merely indicate the purpose of a limitation does not add patentable weight.  However, the court disagreed the USPTO’s conclusion that the “to verify the accuracy” clause merely indicated the purpose of the step.  Rather, the court found that the “to verify the accuracy” clause refers to the “essence of the invention” and “provides the criteria by which the previously-recited comparing limitation is analyzed.” For this point, the court cited Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d 1330 (Fed. Cir. 2010) (“[T]he ‘for decoding’ language . . . is properly construed as a limitation, and not merely a statement of purpose or intended use for the invention, because ‘decoding’ is the essence or a fundamental characteristic of the claimed invention.”).

The decision by Judge Moore is important on several fronts:

1) Judge Moore is may well be the most claim-focused member of the Federal Circuit.  Yet, the opinion relies upon the “essence of the invention” to lead to its result rather than merely focusing on the claim language. At least on the academic side we continue to have a broad debate over whether the “cult of the claim” is appropriate.

2) From a practical perspective, this decision places additional power in the hands of patent applicants who reject the USPTO’s broadest reasonable interpretation of its patent claims.  Here, the PTO’s motivation was really that the applicant amend its claims to avoid ambiguity, but its approach was blocked by the court. Moving forward we will likely see continued growth in the use of functional claim language.

3) Functional claim language has been under attack since the Supreme Court rejected Samuel Morse’s broad Claim 8.  The patent act particularly allows for functional claim limitations under 35 U.S.C. 112(f), but that provision includes strict limits on the scope given to such limitations.  More recently, we have seen increased calls to take steps to limit the use of functional claim language.  As Prof Rantanen discussed yesterday, Mark Lemley has proposed that the court should begin interpreting functionally claimed elements as also being bound by 112(f). 

  

239 thoughts on “When a Functional Claim Limitation is the “Essence of the Invention”

  1. MM: “(“Malcom has noted that [Dennis's views] and Malcolm’s views on analyzing claims after Prometheus do not align”] and I show you how wrong you are. ”

    I proved YOU wrong up thread and you just ignored it.

    Your infamous “what ever” rebuttal at work.

  2. Steer toward? The conversation started with a software claim that recites an obvious self-testing method.
    My comments were directed to the article cited by Dennis on claim construction. They had nothing to do with software. Regardless, I knew you would bring up the software issue as I was writing it … because you always bring up software.

    Care to diagnose anybody else?
    Since you asked nicely … MD is typical Euro-trash … thinks anything on his side of the pond is the best thing ever created. Ned is a shill, and 6 is simply immature. Actually, there was a good article within the last year that described 6 very well. I just cannot find it.

    Or do you only diagnose people after you’ve personally insulted them?

    I only insult those that truly deserve it. Then again, with you, it is not an insult. It is my observation that you have the typical characteristics of Asperger’s syndrome – in short, you are obnoxious and a 1-track mind. I just call it like I see it.

  3. Some people are remarkably sensitive to any criticism, no matter how indirect. They literally can not be convinced that they are wrong, about anything. They are masters of self-denial.

    Ronnie: “Well, there you go again.

    Or do you only diagnose people after you’ve personally insulted them?

    Be like Malcolm, and skip the diagnoses.

  4. Isn’t wonderful when you so love what you do that you think of it as fun and a game.

    Wouldn’t it be wonderful if everyone could have a job like that?

    The lawyer is happy. The client is happy. Society is happy. Modern advanced countries wouldn’t dream of not having such IP systems, right?

    Can you think of even one?

    What’s not to love?

  5. “When you stated you did not even have to look at the specification to do your first Office Action.”

    Which was when?

    “It’s archived, 6.”

    Then do be a doll and show me where if you’re so sure.

  6. I’m a patent attorney and I game the IP system. I know a lot of patent attorneys that game the system too – the smart ones that want to make lots of money. It exists and it works. Who cares? Clients get what they pay for and want – whether it works or not or is of value to their business – who am I to judge or decide?

  7. Is there a patent topic that you won’t steer towards the “software patets = cr@p” meme you’ve been peddling for years and years and years?

    Steer toward? The conversation started with a software claim that recites an obvious self-testing method.

    your arguments never get any traction

    Hmm. If you say so. Some people are remarkably sensitive to any criticism, no matter how indirect. They literally can not be convinced that they are wrong, about anything. They are masters of self-denial.

    I’m looking forward to some of the big cases that are coming up. Even if “my arguments” lose, it can hardly be said that they didn’t get any traction.

    My diagnosis for you is Asperger’s syndrome

    LOL. Care to diagnose anybody else? Or do you only diagnose people after you’ve personally insulted them?

  8. a business is free to set up any system to remove ‘spam’ which even comes in the form of registered mail.

    No doubt. What instructions are given to the mailroom staff that screens the registered letters addressed to attorneys? What criteria do they use to determine if the attorney needs to see the letter from another attorney informing of prior art relevant to the recipient’ attorneys client? What do they look for, exactly? If there is other information in the letter, is that information redacted? It seems like a malpractice risk to me. That’s why I wonder what the insurance carrier thinks of that practice.

    Do you know anyone who does anything like this, anon? If so, let us know the details. It seems like something that would be of great utility and interest to nearly all patent prosecutors. You seem to know something about it. Maybe you applied for an application on it and that’s why you refuse to provide any details. That would make sense.

  9. If they turn out to be unsolicited spam, and the attorney is a member of a firm (a business – not a person), and the firm (not the attorney) receives and reviews the content and determines that the unsolicited mail is junk,…

    …yes, the attorney does not see the mail.

    I’m sorry, what were you going to say to your insurance carrier? That a business cannot review business mail before a certain employee of that business is exposed to something he should be screened from?

    Do you employ Chinese walls in your firm? Do you allow those walls to be vilolated with a simple act of a registered letter?

    Really?

    Phhhhffffft.

  10. He simply thinks that a sneak-attack-borrow-some-friend’s-other-law-firm-letter-head-send-a-registered-letter-with-unsolicited-prior-art must be seen by the addressed attorney,

    Not necessarily. The addressed attorney could be legally blind and wouldn’t technically see it. But other than that or some “mysterious accident”, I’m curious as to how the addressed attorney avoids seeing the letter. Someone suggested that there was a strategy for an attorney to avoid becoming aware of the contents of a registered letter advising that attorney about a legal matter relating to one of that attorney’s clients. It involved staff screening the letters. I’m just curious about that works in practice.

    Or maybe that person just made it up out of thin air.

    [shrugs]

  11. JS: I have not.

    Me neither. That leaves just this one person who claims that their counsel had implemented such a system.

    Please do let me know if you run across an attorney who uses staff to screen registered letters addressed to the attorney, whereby the staff is instructed to throw the letters away with out informing the attorney of the contents. Among other issues, I’m curious about how the attorney handles the risk management issues associated with that practice.

  12. so as to (function)

    Obviously, that is functional language. I’m sure there’s some floating out there. If the degree of purity is the point of novelty (i.e., nothing else in the claim is “new”) and there isn’t a specific definition for the term in the specification, the claim will be summarily laughed out of court. The Fed Cir brought the hammer down on this nonsense a while back in the bio/pharma world. As always your mileage will vary depending on how much ca$h you’ve got backing your patent but those kind of claims are correctly perceived as plainly defective by those “in the field.”

  13. He simply thinks that a sneak-attack-borrow-some-friend’s-other-law-firm-letter-head-send-a-registered-letter-with-unsolicited-prior-art must be seen by the addressed attorney

    Wait, registered letters on law-firm letterhead addressed to attorneys at your firm aren’t actually seen by the attorneys they are addressed to? Does your insurance carrier know about this?

  14. Regardless, if I’m aware of prior art, I’ll meet my duty of disclosure.

    As you (and everyone) should. Unfotunately, that’s aprt of the whole picture that gets lost in Malcolm’s dust-kicking. He simply thinks that a sneak-attack-borrow-some-friend’s-other-law-firm-letter-head-send-a-registered-letter-with-unsolicited-prior-art must be seen by the addressed attorney, and thus is prime for a sneak attack in court.

    I am sure the judge would want a word or two with the attorney about ethical practices (just not the attorney Malcolm thinks).

  15. 35 U.S.C. 131
    Examination of application.

    The Director shall cause an examination to be made of the application and the alleged new invention…

    (in case you missed it above)

  16. When you stated you did not even have to look at the specification to do your first Office Action. You even stated something to the effect that your then SPE approved of and taught you that manure, er, um, manuever.

    You were steadfastly corrected with cites to 35 U.S.C. 131 – Examination of application:

    The Director shall cause an examination to be made of the application and the alleged new invention

    It’s archived, 6.

  17. “This is the language that is within the statute and it is effectively ignored by the author.”

    Says a devotee of the cult of the claim.

    Tell me, do you guys have hymns that set forth what is meant by that term? Do these hymns also explicate upon reasons why this interpretation of the term is necesary and what mischief it has eventually led us to?

    Because if not, the paper you’re making your way through does.

    To be clear, the author of that paper is looking for a way to make claim construction better and more reliable, and perhaps even more “precise”. He is not saying that the current way of understanding the statute(s) is wrong on its face.

  18. Not (quite) true, Just saying.

    Every once in awhile he does become active.

    It appears to be directly related to certain levels of QQ, and when (I suspect) someone sends him a direct email.

    It would be nice if things like stated and written user policies (e.g. third party influenced postings) were actually policied, or if asked for improvements were listened to (the really insiduous stuff is the purposeful mischaracterizations), but as I also noted previously, I will not be losing any sleep over this. I just though the all bold caps caught the eye.

    That’s also why I end with: C’est la vie.

  19. What makes you think some part of “the story” is missing?

    Because I am the one that supplied those missing parts.

    Per JS’s answer: “Then again, I don’t open my own mail.” and one of those missing pieces being that business mail is different than personal mail and a business is free to set up any system to remove ‘spam’ which even comes in the form of registered mail.

    Let me know what your insurance says. Please make sure you get two different replies (with one addressing all the caveats, including the false representation of the guy “borrowing” another firm’s letterhead – and yes, you saw no ethical issue with that part of the story…).

  20. Anon … c’mon. Crouch could have fixed this problem years ago. There are plenty of blogging sites that allow posts to be rated, posters/threads to be ignored. Plenty of technological fixes that would diminish the ever-presented trolling on this board.

    He has chosen not to. Instead, we are left with a bare-bones blogging system that makes it hard to filter all the chaff.

    Anyway, my point is that asking Crouch for help is a waste of time. He isn’t doing any policing besides automatically deleting posts that contain certain words.

  21. Just saying,

    It’s his “style” or “swagger,” and we are supposed to “enjoy it” (as long as it’s directed to anyone outside of the circle).

    It’s also a blight that earns a default “snark-is-acceptable” mode, as he is fully aware of what he does and would simply [shrug] and stand by.

  22. Someone suggested that was an effective technique for avoiding learning about prior art and went so far as to say that their own patent counsel engaged in that practice.

    I have not. Then again, I don’t open my own mail. Regardless, if I’m aware of prior art, I’ll meet my duty of disclosure.

  23. the “technology” in the computer-implemented claims is non-existent

    Is there a patent topic that you won’t steer towards the “software patets = cr@p” meme you’ve been peddling for years and years and years?

    Do you have an orignal thought? My diagnosis for you is Asperger’s syndrome (“characterized by significant difficulties in social interaction, alongside restricted and repetitive patterns of behavior and interests”).

    I’m very serious ….

  24. Props to “Just Saying” for intellectually B Slapping the anti patent crowd with the law and smacking down MM on the way off the court. Nice to know we have a deep bench on our team to give the other all stars like NWPA and anon a little rest when needed. :)

  25. Nice of you to (once again) leave out the complete story,

    Oh, you know who I’m talking about? What makes you think some part of “the story” is missing? Let me know if you’ve heard of someone actually doing what I described in my comment earlier. I’ve scoured the Internet and I saw a lot of attorneys discussing the strategy of anonymously providing competitors with relevant prior art, going back several years at least. But nobody has ever discussed the “counter-strategy” I proposed. That’s why I was shocked to hear about it a couple weeks ago.

    Do you have more details about this counter-strategy? Can you direct me to any law firm which uses staff to screen registered letters and throw them in the trxsh them so the attorney to whom the letter is addressed never learns about the contents of the letter? I’d like to talk with that firm about the details and risks of instituting this practice.

    In any event, last time I checked JS was capable of personally responding to comments specifically addressed to him. Or has that changed, too?

  26. Please bring back Thurston, we were having such a nice conversation.

    I just advised a client last week to file patent apps – without a prior art search (why is this so common now?)

    I am sure that you are well aware that the client always is the one that makes the decisions, and since I know that you recognize and adhere to your ethical responsibilities, that you fully advised the client of the pros and cons of filing without a prior art search, right?

    I’m sorry, were you (also) trying to impugn attorneys here? Better luck next time.

  27. The patent bacon wagon has been very good to me financially. I just advised a client last week to file patent apps – without a prior art search (why is this so common now?), they agreed. Ka-Ching! Mo’ money, Mo’ money! (I’m doing my happy dance!).

  28. Nice of you to (once again) leave out the complete story, Malcolm. I notice that you too choose not to respond to the points I responded to in that discussion, but merely to provide a caricature for your own delight.

    And this type of t_rolling is perfectly acceptable here?

    REALLY PROFESSOR CROUCH????

    C’est la vie.

  29. You also have a duty of disclosure to the USPTO. If you are aware of prior art, you must disclose it.

    Reminds me, JS: do you use your staff to review registered letters addressed to you to determine if the letters include prior art, so that the staff can then destroy the letter and prevent you from learning about the art?

    Someone suggested that was an effective technique for avoiding learning about prior art and went so far as to say that their own patent counsel engaged in that practice. I’m just curious as to whether you know of anyone actually doing this or whether you’ve done it yourself. If you do utilize this practice, did you inform your insurance carrier about it?

  30. Says someone who doesn’t understand any technology beyond biotech

    I understand lots of technology beyond biotech. I’ve drafted applications and prosecuted technology “beyond biotech.”

    Not that it matters, of course, since the “technology” in the computer-implemented claims is non-existent, unless you consider gimmicky patent drafting to be a “technology” itself. You wouldn’t be the only who believes that, of course. But go ahead and admit it so we know where you stand.

  31. Quite in fact, 6 has done so.

    Quite in fact, in essence (I would say effectively, but not sure you understand that so-unorthodox term today), the quote above indicates that the author has done so (failing a direct definition).

    But nice of you to attempt a substantive discussion Malcolm. With the usual results.

  32. Examination has never been limited to claims and claims alone.

    Quite in fact nobody has ever suggested that examination be limited to “the claims and the claims alone” without reference to the specification.

  33. Thanks IBP,

    Your opinion has been noted. Nice soapbox. I have to tell you though, I still have not seen a compelling position (I would say ‘argument’ but in the current climate – chilly – that might be taken as too unfriendly) as to why I should be forced to give up any flexibility that I now enjoy. There are rather straight forward ways of indicating that one wants the preamble to be limiting or not, and, in fact, this decision adds to the clarity and even more dissipates the need to make the change that your opinion would dictate.

    Nice to converse with you again, btw.

  34. BTW, the preamble should ALWAYS be limiting, as it was here adjudged.

    For those who would object to the decrease in wiggle room that they see resulting, there would still be latitude during claim construction to determine the precise meaning of that limitation by reference to the spec. No problem.

  35. Luckily, the CAFC was able to interpret the Board’s feelings correctly: loss of essence. The CAFC can assure the patentee that it will not re-occur, Dennis. The CAFC senses the patent’s power, and they seek the invention’s essence. They do not avoid the Board, Mandrake…but they…they do deny them the essence.

    link to youtube.com

  36. 101 Integration Expert Wrote:

    MM:

    I do believe that many members of the online patent community held a view close to that right after Prometheus’ decision came down. But as you will recall I was the first, and perhaps the only one at the time that stated the correct way to read the case was not for dissection but for “integration”. I then pointed out “Integration” is the antithesis of dissection ( strip away and ignore). Stating, the logical fact that you cannot have an end result that is both “integrated” and dissected at the same time. The USPTO then adapted “Integration Analysis” in it’s official guidance, giving further credibility to my analysis and view of the Prometheus case.

    ( link to uspto.gov )

    In fact I do believe you were the first to post the official link above to the guidelines highlighting this fact. Respected commenters of this blog such as anon, and E.G. have recognized “Integration”. And while I do not know Professor Crouch’s current thinking, I do know the good professor requested me to elaborate on my analysis and shortly thereafter made the following post:

    See: Patents Encompassing a Human Organism
    by Dennis Crouch

    “Most Section 101 subject matter eligibility problems can be cured by “integrating” the ineligible subject matter with subject matter that is patent eligible. This works because the fact that an invention encompassing some ineligible material does not preclude patentability – as long as the invention also includes sufficient eligible subject matter. Following this theory, the Supreme Court in Diamond v. Diehr, 450 U.S. 175 (1981), agreed that a practical use of a mathematical formula was patentable even though the formula on its own would not have been subject matter eligible.”

    So as you can see MM, it is not just myself and perhaps anon that hold the view of Prometheus standing for “integration” and the current law being Diehrs claims as a whole. It’s also the Supreme Court, The USPTO, Professor Dennis Crouch, and I suspect many more members of the patent community whose views have evolved after careful consideration, analysis, and independent thought. You are the only one that seems to be stuck on pushing a dissection theory and agenda that has no legal foundation, or support from the PTO, and patent community at large.

  37. MM: “Why, then, did the Court in Prometheus repeatedly make the point that the only eligible step in Prometheus’ claims was “old and conventional”?

    101 Integration Expert: First of all, the Court never made a statement that

    “ the only eligible step in Prometheus’ claims was old and conventional”.

    Therefore, that assumption in your question is nothing more than a bald face lie. Which makes you MM, AKA Malcolm Mooney, in this instance, a liar.

    As I explained @Feb 16, 2013 at 02:23 PM, the Court’s concern in the Prometheus case was that the claims as a whole foreclosed others from use of the LoN for future innovation. Please see:

    “….. the underlying functional concern here is a relative one: how much “future innovation” is “foreclosed” relative to the contribution of the inventor.”

    “… a danger that becomes acute when a patented process is no more than a general instruction to “apply the natural law,” or otherwise forecloses more future invention than the underlying discovery could reasonably justify.”

    “…. namely the risk that a patent on the law would significantly impede future in- novation.”

    And even then, if the exception is “integrated” in “the process as a whole”, thereby preventing the foreclosing of others from the use of the exception, the claim is patent eligible subject matter.

    Please 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.” [Emphasis Added]

    Now, what the Court was referring to when it used the words “old” or “conventional” was the Court created exception that says when an abstract idea/algorithm, or LoN/Physical phenomenon is the claim as a whole then the claim as a whole is an exception to patent eligible subject matter.

    A bare LoN, even one just discovered would have already existed in nature and therefore been old or conventional. And as we know the claims as a whole in Prometheus were to a discovered naturally occurring correlation, a bare LoN.

    However the Court created exceptions was not, and is not, a point of novelty test of any kind. The Prometheus Court expressly rejected just such an idea proffered by the Government in their brief. Please see:

    “The Government, however, suggests in effect that the novelty of a component law of nature may be disregarded when evaluating the novelty of the whole. See Brief for United States as Amicus Curiae 27. But §§102 and 103 say nothing about treating laws of nature as if they were part of the prior art when applying those sections. Cf. Diehr, 450 U. S., at 188 (patent claims “must be consid­ered as a whole”). And studiously ignoring all laws of nature when evaluating a patent application under §§102 and 103 would “make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. Id., at 189, n. 12. …..These considerations lead us to decline the Government’s invitation.”

    Any Questions?

    I am here to help

  38. I go in “all balls out” and get the job done for them with maximum results. I get the maximum claim scope during examination

    If you are that good at prosecution (which I doubt) that means you aren’t a litigator.

    Getting maximum claim scope is a gruesome process that frequently requires a trip to the PTAB. Examiners don’t give out “maximum claim scope” without a fight.

  39. It costs several million dollars to fight an infringement lawsuit – it’s always cheaper for a target company to just settle or pay a licensing fee.

    Hardly … good prior art makes most plaintiffs go away for much less.

    I really like playing this game and benefiting from it.

    I very much doubt you play this game. You have far too many misconceptions about what goes on to be a real player. Either that or you are a 1st year associate and don’t know better.

  40. “You have obviously not practiced in big law.”

    I’ve practiced in big law and big, big, big patent law. I’ve never heard of (even as part of a remote rumor) anybody discussing (and/or advocating) drafting claims that covered prior art.

    I have an ethical and professional duty to get the maximum claim scope for my client.

    You also have a duty of disclosure to the USPTO. If you are aware of prior art, you must disclose it. If you draft claims that cover that prior art, you are doing a disservice to your clients by drafting claims that will have to be amended (Festo’d and among other negative aspects to amending claims).

    I would NEVER do anything to jeopardize my law license. For a good attorney, it isn’t too hard to find new clients. However, regaining a reputation is much, much harder. I would much rather lose a client than my law license.

  41. Now if you had stopped after the first sentence, I would have had a nice night.

    Well, actually I will still have a nice night. You on the other hand just can’t stop yourself from self-defeating. It’s really quite amusing the way you do yourself.

    Thanks.

  42. How expensive and time consuming is it to try and and show that a patent is invalid?

    Before they raised the USPTO fees on ex parte reexams, I could do it for less than what it probably cost to obtain the patent.

    Patents, and yes, including “invalid” patents, can be, and are, used as weapons as litigation threats against competitors

    Invalid patents make for poor threats. With really good prior art, I can make an invalid patent go away with a simple two-page letter. Of course, you can never stop somebody for suing you on a losing case. However, the same risk exists for any business who can get sued for any reason whatsoever regardless of the merits.

  43. Right. And given the incredible ease of “inventing” those “components” it seems reasonable to put an extremely high premium on the cost of obtaining patent protection for each of them, or make them appropriately extremely difficult to obtain.

    What does one have to do with the other? Why is it reasonable?

    Those applications disclose half-baked concepts

    Says someone who doesn’t understand any technology beyond biotech and doesn’t know the difference between half-basked and fully baked. It is easy to make arguments when you assume that anything that isn’t biotech is a bunch of cr@p and should never be patented – a paragon of reasonableness you are … or perhaps I should say a paragon of consistency –> not biotech ≠ unpatentable.

    about ways to apply existing technology

    Let me clue you into something … one of the differences between biotech and everything else. We apply existing technology all the f’n time … in everything. I do everything except biotech and hardcore chemistry and everything I do employs existing technology. We don’t discover new compounds. We put old things together in ways they were never done before. We make existing technology do things it never did before. As I said, you view patent law through a very distorted lens that maybe applies to maybe 5-10% of all patent applications. This is why your arguments never get any traction – you are speaking to an audience that doesn’t share your POV.

    wherein old process is on a hand-held device

    Let’s see some patent numbers and 102/103 prior art.

    Hard to know what to do with this sort of deep denial about the world we live in

    Access to the law shouldn’t be about how much money you have or the size of your company. Regardless, we live in my world much more than your world … SORRY.

  44. Is this the part where the smoke and mirrors comes in? Change the subject?

    You can change the subject if you like. It doesn’t appear that you have anything to contribute except your usual inuendo and insults, so maybe a new subject would be an improvement.

  45. I see nothing of value in your response.

    That’s nice.

    Everyone else can see that the first sentence in my response is a direct answer to your asinine question.

    So, you know what you can do now.

    Have a nice evening.

  46. Prof. Crouch’s noting of an inconsistency in the Prometheus decision does not mean that he believes your claptrap.

    Right. And carbon dating doesn’t prove that the universe is more than 6,000 years old. Never stop believing, anon. You have all the answers you need.

  47. do you have a point? a specific item you wish to share?

    Oh, sure. You said that I accused you of spreading a “mal-cious f-alsehood” (9:13 pm). I said the opposite. Here’s my 9:04 comment with all the confounding clauses and adverbs removed to make it more appropriate for your reading level:

    you .. are still … accusing [others] of spreading “malxcious fxlsehoods.”

    You’re welcome.

  48. LOL – maybe you should read what I actually did write.

    You’ve done nothing of any import. Waiving your hands over your hand and giving a snippet of Prof. Crouch’s noting of an inconsistency in the Prometheus decision does not mean that he believes your claptrap.

    Not by a mile.

    What was that line about keep pretending…?
    Ronnie: “Well, there you go again.

  49. is this a time when you know what blah blah blah

    No, this is a time when you accuse me of doing something (“Malcom has noted that [Dennis's views] and Malcolm’s views on analyzing claims after Prometheus do not align”] and I show you how wrong you are. And then you try to change the subject rather than simply acknowledge that you were wrong.

    Again, other than 101E, you’re the only “person” I’m aware of who continues to pretend that the Prometheus opinion doesn’t authorize the analysis of individual claim elements with respect to their relationship to the prior art, at least for 101 purposes.

    But by all means, please continue to keep pretending if it makes you happy to do so.

  50. Whatever that phrase means,

    (sigh), are we back to that? Some well understood phrase of patent law all of sudden is a mystery to you?

    Leopold, can you crack that great dictionary of unorthodox terms and help Malcolm out again?

    Not sure what point you are trying to make with KSR. Prety much of a non-sequitur in relation to the Flash of Genius we are discussing, but, um, OK, thanks for adding it to the conversation, I guess.

    Is this the part where the smoke and mirrors comes in? Change the subject? Move the goalposts? Can we return to the point of the elimination of the Flash of Genius and your odd obsession with excessive taxing of patents you, for some reason beyond law, deem “easy?”

  51. Of course, your agenda is to make money (wink wink).

    Who cannot identify with that?

    Of course, making money is not unethical, so if your agenda is merely making money, well, your shtick gets pretty old, pretty quick. But if somehow you can tie the ability to make money back into some egregious wrong…

  52. The charade, Howie, is the attempted impugning of the system because it aligns with making money.

    You started losing it when I pointed out the oath and declaration part and really let it slip away when I pointed out that if the application covered a later competitor’s product, that there was no actual ethical transgression of claiming what the applicant has a right to claim.

    You almost made a rebound with the expense of the system, but you have not pursued that.

    Too bad. There was a possibility of a good conversation there.

  53. .I’m sorry, can you be explicit about which “malxcious fxlsehood” I’ve been spreading?

    Please re-read what I wrote before popping off.

    Thanks.

  54. “Patentability shall not be negatived by the manner in which the invention was made.”

    Whatever that phrase means, it certainly does not prevent a court from looking at the knowledge of a skilled artisan and determining that the invention constituted nothing more than the application of common sense to existing technology.

    See, e.g., KSR.

    For example, computers receive, store, process (e.g., “sort”) and transmit information. That’s ancient knowledge. It’s nothing more than common sense to use a computer to process information, for any reason, and it doesn’t matter what you call the information or how much money people will pay for the information. It’s not worthy of a patent. 103 exists for a reason. 101 exists for a reason. 112 exists for a reason. Computer-implemented claims are granted in spite of these reasons.

    Look at the claim at the top of this thread. It’s just another ancient concept vaguely and broadly jacked into the computer context, where it’s probably existed already (albeit applied to some other “kind” of files). What’s the point of a patent like that except to line the pockets of grifters, skimmers and speculators?

    Those who never saw a patent they couldn’t embrace might want to consider the principle behind dangling a carrot in front of the donkey if you want to the donkey to move forward. It only works if the donkey is hungry and you keep the carrot out of the donkey’s mouth.

  55. because the process is effectively an unpatentable law of nature

    Tell me, is this a time when you know what “effectively” means, or a time when you don’t knwo what it means?

    You switch back and forth so often, I am just plum tuckered out on keeping track.

    Re: the Prof.’s note of Flook and Diehr, that was something asked of you long ago to square.

    You never answered that call for your sharp legal insight. Yes, your lack of answer is archived.

    Following Mayo, the court could logically find that the information in the DNA represents a law of nature, that the DNA itself is a natural phenomenon, that the isolation of the DNA simply employs an isolation process already well known and expected at the time of the invention, and ultimately that the isolated DNA is unpatentable because it effectively claims a law of nature or natural phenomenon

    Ooops, did Malcolm just provide another link that self-defeats one of his positions…?

    Yet again, when you think you have mad a compelling case, it just turns out that you have not.

    No wonder you have such self-loathing.

  56. That’s why, one year after a remarkably crisp and expected 9-0 decision (whose conclusion you railed against for years)

    Has Michael R Thomas been visiting you again with his three grandparents and the time machine?

    I’m sorry, can you be explicit about which “malxcious fxlsehood” I’ve been spreading? You know, like I have asked you several times before for specific information that you seem neve able to come up with (and trust, me I can point out a few of your blatant lies quite readily).

    But really Malcolm, how would you characterize your inclusion of “Dennis must like it too,” except in an internet-tough-guy-bully type of manner?

    Is that eplectic rage meter about to go Kablooey again?

  57. My desired agenda is to make lots of money – the IP system permits me to do that with impunity. I’m not against the IP system – I absolutely love it. If clients value my IP legal services, I give them what they want, that’s all. God bless the American IP legal system. What is this “charade”?

  58. Malcolm has his eye on you and has noted that you have not aligned with him or his (singularly within circle) held view of what “*really* the Prometheus case was about.

    Not at all. Dennis immediately recognized the Prometheus opinion for what it plainly states:

    link to patentlyo.com

    the application of that newly discovered law is also normally unpatentable if the application merely relies upon elements already known in the art.

    …it is likely important that in this decision the court unfavorably cites the limitation of Flook found in Diehr that eligibility under § 101 “must be” based on claims “considered as a whole.”

    You and 101E are the only two “people” I’m aware of who insist on pretending that this never happened and who insist that I am somehow alone in understanding that it did. My earlier comment merely acknowledged that, for whatever reason, your magical bubble has not been popped. That’s why, one year after a remarkably crisp and expected 9-0 decision (whose conclusion you railed against for years) you and your buddy 101E are still reciting the same script as if nothing happened and, on top of that, regularly accusing those of us who disagree with you of spreading “malxcious fxlsehoods.”

  59. Hard to know what to do with this sort of deep denial about the world we live in.

    It’s evident that you have been struggling with this personally for a very, very long time now.

  60. That’s a nice statement of the obvious, Malcolm.

    But such a statement provides absolutely no support for you. Such a statement, quite in fact lends absolutely no support to the notion that just because invention in one area is “easier,” that it should be taxed more heavily.

    Not only does this go against the very mission of the Patent Office (promoting innovation does mean wanting more innovation), it goes against the law: 35 USC 103 – “Patentability shall not be negatived by the manner in which the invention was made.

    You know – the part that was added to eliminate that Flash of Genius thing you got going on.

    You really need to get out of this field as it causes you such distress.

  61. Anon and NWPA must be real greenhorns in IP.

    LOL – why would you say that? Are you saying that having ethics is simply a sign that you are a “greenhorn?”

    Help me out Howie, you seem to want to rail against the system, but are getting caught up in actually cornering a “defect” when how the system actually works is explicated a bit.

    I think you may have some valid concerns about “the system,” but those concerns are starting to dim with your charade.

    It is amusing though, even as it quickly loses its ability to advance your desired agenda.

  62. I honestly couldn’t care less

    Real lawyers don’t let their ethical switches get stuck in the ‘off’ position.

    See my post at 6:40 PM.

    The rest of your paragraph sounds like you are starting to drift though.

  63. This is the IP system that we have – deal with it.

    You may have a point to make in that the system is unreasonably expensive.

    You also might make better traction if you had a viable alternative to discuss. Viable, as in something more than “patents are ev1l.”

    Give it some thought – I bet it would make a very good conversation to discuss alternatives.

  64. the Flash of Genius concept that permeates your “they don’t deserve a patent” mindset

    Nice try.

    In response, I’ll state the obvious (pun intended): there is a big difference between requiring a “flash of genius” test for patenting and requiring that patents be granted only for distinctly claimed, non-obvious eligible subject matter.

  65. You have obviously not practiced in big law.

    So… you think that big law itself is an ev1l that perpetuates the scam on everyone?

    I have an ethical and professional duty to get the maximum claim scope for my client.

    Not sure how that is “damaging.” Maybe you can discuss this a bit more.

    If the claim language just happens to “rope in” a competitors product, oh well,

    Are you saying that an invention that rightly makes claims that a competitor infringes is somehow, well, bad?

    Have you been reading the Infringer’s Handbook and think that Patents are just plain ev1l, that all property is just plain ev1l, and that anyone should be able to do anything at anytime?

    Just curious, mind you.

  66. and apparently Dennis likes it, too

    LOL

    ooooo wooooo

    Watch out Prof. Crouch, Malcolm has his eye on you and has noted that you have not aligned with him or his (singularly within circle) held view of what “*really* the Prometheus case was about.

    This is so far beyond p_@thetic has to be humorous.

    I applaud Malcolm’s right to post this type of crediblity-dev@stating c_rrp. Self-credibility-dev@stating that is.

    [golf-clap]

  67. a single modern processor will probably be covered by tens of thousands of patents and the software running on your computer will likely covered by even more patents.

    Right. And given the incredible ease of “inventing” those “components” it seems reasonable to put an extremely high premium on the cost of obtaining patent protection for each of them, or make them appropriately extremely difficult to obtain. As the system currently operates, I can take an existing claim and swap in a previously unclaimed “kind” of data (e.g., “average rushing yards, wherein said yards are rushed on Saturday in the rain”) and get a patent on it for cheap. I do that maybe twenty times with increasing degrees of incomprehensibility and now I’ve got a “company”. Then I start trolling.

    Moore’s Law, for example, isn’t achieved by just a couple of advances – it is achieved by hundreds if not thousands of advances.

    The fraction of patent applications that have anything to do with Moore’s law is incredibly small.

    The rest of the technological world doesn’t have the $$$ to spend on a single application.

    “Technology” has little to do with the vast majority of computer-implemented inventions and has nothing to do with the ones which rely on functional claiming. Those applications disclose half-baked concepts about ways to apply existing technology, typically to automate old eligible processes or to automate new ineligible information-processing methods (“collecting ['new' information] and using said information to sell something). And that’s not even counting the applications that merely represent of redux of old computer-implemented processes using someone else’s technology (e.g., “wherein old process is on a hand-held device”, “wherien old process is activated with a touch-screen”, “wherien old process is activated with brain waves” etc).

    A cost/benefit analysis shouldn’t be an important part of the patent process.

    Hard to know what to do with this sort of deep denial about the world we live in.

  68. Looking for and focusing on patent ineligible steps or elements does not identify the invention because no individual part is the claimed invention. That includes thinking steps, old steps

    no Court case since Diehr has engaged in such “dissection” … Certainly not Prometheus.

    Why, then, did the Court in Prometheus repeatedly make the point that the only eligible step in Prometheus’ claims was “old and conventional”?

    That’s a rhetorical question. You’re simply wrong, 101E. Flat out, miserably wrong. But keep repeating your nonsense. anon likes it and apparently Dennis likes it, too.

  69. I wish I could get paid to blog about this stuff. Why more people aren’t using IP laws much more aggressively is mind boggling. The IP system is a very useful tool. Anon and NWPA must be real greenhorns in IP. IP is a LEGAL rational tool for businesses to use to destroy competitors and totally dominate an industry if used tactically. The IP system does have serious deficiencies – that is the reality, but these can be exploited effectively. Why stick your head in the sand?

  70. “isolated” and “purified” aren’t functional terms.

    Functional terms describe the function of the claimed element or composition. That’s why it’s called “functional” claim language.

    I’m not aware of any case where it’s even been suggested by anyone — an examiner or a defendant — that those terms are “functional.” Are you? If so, I’d like to see the cite.

  71. Have you ever done so?

    Yes. See the 4:37 post which you responded to immediately with your usual asinine b.s. See also my 4:41 post which you responded to with your usual weird self-reverential nonsense.

    for one only too eager to apply the “whatever” analysis

    And you’re only too eager to play the part of a mindless f—–d. Most j-nk y patent claims can be successfully attacked using multiple legal theories. It’s not terribly important which theory is ultimately adopted as long as the theory is effective and doesn’t unnecessarily impact properly claimed patent-worthy inventions. History shows that you started losing your s–t about this “analysis during the run up to the Prometheus decision. That was a predictable and reasonable 9-0 decision that drove you and a few of your friends around the bend. Will you ever recover? I’m guessing “no” because that’s a case that’s going to keep on giving, as long as method claims and pseudo-method claims (also known as “programmed computer claims”) keep being prosecuted and granted.

  72. I honestly couldn’t care less if the IP system works or doesn’t work – I’m completely indifferent – I need to make a good living. If the client feels that they need and want a patent, so be it, and they can pay my ridiculous fees, I go in “all balls out” and get the job done for them with maximum results. I get the maximum claim scope during examination – even if there is a reexam, which is unlikely, there are dependent claims with further varying claim scope for any amendments that can placate any board, judge, opposing legal counsel and target company.

  73. Most, <99% of patents are never litigated – so why even worry about the patent being valid or invalid? It costs several million dollars to fight an infringement lawsuit – it’s always cheaper for a target company to just settle or pay a licensing fee. This is the IP system that we have – deal with it. The IP system is not going to go away. I really like playing this game and benefiting from it.

  74. This is not a false confession – I absolutely love the patent system. It is not evil, but a welcome godsend for me. I do benefit greatly from the IP system. You have obviously not practiced in big law. I draft patent claims that encompass my clients invention – the PTO does its job to tell me what is and what isn’t an appropriate claim scope. Maybe I’m not giving just interpretation to the claim language and the prior art – I’m not infallible, I let the PTO tell me what is appropriate. I have an ethical and professional duty to get the maximum claim scope for my client. If the claim language just happens to “rope in” a competitors product, oh well, the PTO is omniscient with regards to patent law and the prior art.

  75. You don’t by chance have a short list of modern advanced societies that have seen the light of IP=ev1l and thrown out all IP law, have you?

  76. If in fact you are a practitioner, you have serious ethical issues.

    If in fact you are not a practitioner, you have serious ethical issues.

    Game the system? Sure, always a possibility; but by no means limited to patent attorneys. Such would aflict anyone with any level of power or authority.

    Troll the board with “incriminating” false confessions? Hmmm – yep, much more likely.

  77. I make a great living as a practitioner from the patent system, maybe not so much for my clients – but this is reality. Early in my career I realized that I benefit more from the patent system than my clients or anybody else for that matter that foolishly decides to go down the patent rabbit hole. I enthusiastically advocate for patenting with my clients and potential clients knowing that they will keep me gainfully, and quite lucratively, employed.

  78. How does one (that is, very expensive opposition legal counsel) show (that is, prove) that an oath has been violated? Patents have a presumption of validity until proven otherwise. How expensive and time consuming is it to try and and show that a patent is invalid? Do tell. Given litigation costs, even “invalid” patents can be enforced – wink, wink. Patents, and yes, including “invalid” patents, can be, and are, used as weapons as litigation threats against competitors.

    In reality, unfortunately, even more so now with the KSR decision most patents are indeed most likely invalid:

    link to oandplibrary.org

    link to emlab.berkeley.edu

    link to cardozoaelj.com

    link to nber.org

  79. Lets not kid ourselves – your post has no truth (not to say that it has no merit).

    As I am sure that you are aware, a little thing called an Oath or Declaration is filed with all applications, and if you are knowingly violating that oath…

  80. Lets not kid ourselves, even invalid patents have value. I as a matter of policy routinely draft patent claims that encompass a competitors product in order to shut them down – It’s kind of like government-sanctioned legalized theft. They should go to court to have the patent invalidated if they have lots of time and money.

  81. Certain people have actually stated that they stand by their ability to spin facts, misrepresent law and others’ postings, and would simply [shrug].

    Eyes fully closed as to the means when the ends are so valued (by them).

  82. Why is that a problem?

    The NO in inNOvation and the besmirching of Kappos just because Kappos stated “Rejection does not equal quality

    LOL – yep, a pattern alright.

    then what difference does it make if it’s in a patent or not?

    Curious then the drive to publish US apps prior to issue date. Why demand disclosure at all of anything not in a patent?

    given the incredible ease of conceptualizing information processing “inventions” it seems reasonable to put a high premium on the costs of application filing

    Your petty jealousy is never a good basis for policy. Congress alreay took a direct slap at the Flash of Genius concept that permeates your “they don’t deserve a patent” mindset. The same mindset that warps your views, but finds no solace in the law. I know that you know this. I know that you know I know you know causes even more of your self-loathing.

    But if we are going to have conversations, you are really going to need to deal with that. Sure, express your opinions and keep on making admissions that you know that law shoots down your crusades. I don’t think that your credibility can further diminish, but it is always your choice to try to reach new lows. I support your ability to post “WHATEVER” you want, as long as you are clear about what you are posting. The only problem I have is the lies and spin and deceit when we both know you know what the law really is.

  83. NWPA,

    You don’t have to look far: “isolated” and “purified” as within claims at the USPTO patent and application databases yielded a combined 196,567 hits.

  84. Why is that a problem?
    For a greedy attorney it isn’t a problem. However, I don’t let my own self-interest impact either the decisions I make on behalf of my clients or my opinions on patent law in general. The goal of the patent system is to encourage disclosure. You do not encourage disclosure when a properly drafted application costs $50K-$100K. You price the individual inventors out the market and you patent more of a sport of kings that it already is.

    Really? That would depend on what is being disclosed. If what is being disclosed is just a thin, obvious concept that is going to be disclosed anyway, then what difference does it make if it’s in a patent or not?
    If it is “thin, obvious concept” then it won’t be patented. Moreover, if the claim language is construed broadly, the more likely it will be to invalidate.

    Typical programmed computer specifications disclose zero actual “embodiments” of the programming.
    They stop requiring supplying actual models of the invention a long time ago. Try to catch up with the law. BTW … what do you consider to be the disclosure of an actual “embodiment” of programming. I’ve seen pretty of flow charts (commonly used to disclose methods) and software can be claimed as a method.

    Contrast that, e.g., with inventions in other fields such as biotechnology where entire infrastructures were developed to enforce both submissions of detailed elecronic molecular descriptions of the inventions and actual biologic deposits
    What can I say …biotech is the red-headed stepchild of patenting. The inventions are very different, the claims are different (and simplistic, IMHO), the specifications are different, and the attorneys are different. Your problem is that you view patent law through a lens that few people see it through.

    Obviously there are differences between the two technologies (biotech and software) but given the incredible ease of conceptualizing information processing “inventions” it seems reasonable to put a high premium on the costs of application filing.
    No … the difference is between biotech and everything else. I know biotech people that wouldn’t touch an application for less than $20K-$30K, and I’m sure that number could even be low. With few exceptions, those cost structure just isn’t going to cut it anywhere else. Then again, a single application will cover an entire product in the biotech world. However, a single modern processor will probably be covered by tens of thousands of patents and the software running on your computer will likely covered by even more patents.

    The rest of the technological world doesn’t have the $$$ to spend on a single application. Moore’s Law, for example, isn’t achieved by just a couple of advances – it is achieved by hundreds if not thousands of advances.

    A cost/benefit analysis shouldn’t be an important part of the patent process. If you have a good idea, while even now expensive, you shouldn’t have to budget $50K-100K just to get a single patent.

  85. Fish, you are exactly right.

    There is absolutely no basis in the law for dissecting claims.

    None.

  86. MM: “The point of the “claims as a whole” theory of claim construction is not to prevent people from trying to understand what the applicant contributed to the art.”

    Claims as whole does not prevent anyone from understanding what the applicant contributed to the art.

    Indeed it is when you construe the claims as a whole that you understand exactly what the invention is.

    Looking for and focusing on patent ineligible steps or elements does not identify the invention because no individual part is the claimed invention. That includes thinking steps, old steps new steps, machine steps, transformation steps, and any combination of steps that are not the claims as a whole.
    Such an analysis only serves to rip the invention apart in order to declare it patent ineligible.

    Furthermore no Court case since Diehr has engaged in such “dissection” of the claims. Not Bilski and Certainly not Prometheus.

    Only If the claims as a whole are an abstract idea/algorithm, or LoN/Physical phenomenon are the claims as a whole then an exception to patent eligible subject matter.

    And even then, if the exception is “integrated” in the process as a whole, thereby preventing the foreclosing of others from the use of the exception, the claim is patent eligible subject matter.

    Indeed it is “the inseparable whole” that is the foundation of all of patent law.

    To otherwise engage in any type of dissection only serves to eviscerate the very law that holds the patent system together.

  87. Somehow or another I am pretty sure that bio/chem applications are written in the same way where possible.

    If by “whenever possible” you mean “by incompetent agents/attorneys” I agree. Such claims are unenforceable in the biotech context. See, e.g., Ariad v. Eli Lilly and other cases.

    But sure functional language is all over the place. No argument there. That doesn’t make it right, especially when the composition itself is distinguished from the prior art compositions solely based on it’s new function.

  88. Try that for a change instead of spewing insults.

    Have you ever done so?

    And for one only too eager to apply the “whatever” analysis, your over-particular view here on “point of novelty” is most peculiar.

  89. The actual impact will simply be to drive up the costs of patent applications in order to describe every possible embodiment. This will lead to extremely high costs for preparing good applications and a lot of applications that are extremely narrow (and hence less valuable). Both (i.e., more expensive applications and less valuable applications) will cause a significant drop in the number of patent applications being filed.

    Why is that a problem?

    Less patent disclosures, however, is not desirable.

    Really? That would depend on what is being disclosed. If what is being disclosed is just a thin, obvious concept that is going to be disclosed anyway, then what difference does it make if it’s in a patent or not?

    If you have a broad concept that has hundreds/thousands of applications and you disclose both the broad concept and a few embodiments – that is enough.

    Typical programmed computer specifications disclose zero actual “embodiments” of the programming. Contrast that, e.g., with inventions in other fields such as biotechnology where entire infrastructures were developed to enforce both submissions of detailed elecronic molecular descriptions of the inventions and actual biologic deposits. Obviously there are differences between the two technologies (biotech and software) but given the incredible ease of conceptualizing information processing “inventions” it seems reasonable to put a high premium on the costs of application filing.

  90. claims should be construed “as a whole” and not by point of novelty

    It’s hard not to get the feeling sometimes that pro-software patent proponents can’t walk and chew gum at the same time.

    The point of the “claims as a whole” theory of claim construction is not to prevent people from trying to understand what the applicant contributed to the art. The point is to prevent judges and examiners from analyzing each element of a claim in view of the art separately, finding that each element is old and then declaring that the claim is unpatentable as a result of that analysis.

    As I noted upthread, the prohibitions against “point of novelty” arose in particular contexts as well. But if there is a point of novelty in a claim, there are no prohibitions against acknowledging that fact, particulary if that part of the claim is the worst written part of the claim.

  91. I don’t think this functional claiming is limited to computer implemented information processing inventions.

    I know I took a class on mechanical claiming where we read the Fed. Cir. cases that held that the language was 112, 6. The game was to write a claim as close as possible to 112, 6 without going over.

    That was for mechanical. Somehow or another I am pretty sure that bio/chem applications are written in the same way where possible.

  92. Gut feeling from many decades of private practice

    I figured. That would be a difficult study to perform.

    In any case, your “gut feeling” is similar to mine: there isn’t “continued growth” in the use of m+f claiming, whether at the point of novelty or elsewhere. It’s diminishing.

    Perhaps Dennis is referring to the use of “pure” functional language which has been used by applicants forever but especially heavily (nearly universally) exploited by applicants for computer-based patents. The use of that language will no doubt “continue to grow” in absolute numbers unless something significant changes in the way the law is applied to such claims. But the percentage of computer-based patents which rely on functional language is not going to increase much, if at all. There’s no more room for growth.

  93. Then why don’t you ever show that ‘mastery?’

    If you disagree with something I wrote, anon, maybe you could just say so and explain why you believe I’m wrong.

    Try that for a change instead of spewing insults.

  94. Quite in fact the regulations demand that the specification be both read and understood prior to looking at the claims.

    Examination has never been limited to claims and claims alone.

  95. Judge Moore will be the Chief soon, and if this outlying case is any indication, claim interpetation will change considerably. Precedent jarring decisions like this however, should be en banc’d down, and quickly. But that will not happen. It will be allowed to stay there, as a lifesaving ring for the infrequent appellant to reach for, only to eventually die in the mists of time due to infrequent use.

    The lack of a coherent landscape keeps so many guides employed. So, thank you Fed Cir.

  96. Well said, but I think these “professors” are intentionally misrepresenting facts. I think this “professor” knows what this would mean and the intent is to hamstring software patents at the cost of academic integrity (but another Lemley spawn so what do you expect.)

  97. That’s the flip side of making PHOSITA nearly omniscient.

    An example: “programmed to” is structural because software really does work to change a machine. See Alappat.

    Once that is accepted, minute detail of that structure simply is not required.

  98. And, I know Lemley didn’t write it. Dippy doodle wrote it and he is a Lemley spawn. (So, we can expect years of amoral nonsense from Dippy Doodle.)

  99. Yes, what dippy doodle leaves out is the POSITA. Lemley is great at attacking at every angle he can. He is just like a litigator, but publishing his briefs in “law journals” aka the vanity press of the paid whores.

  100. Good post. The “author” ignores that patent applications are supposed to be concise and only contain what is needed for 112. POSITA is supposed to interpret the claims in light of the specification. If I had to write every embodiment that a POSITA would see in a set of claim in light of the spec, each patent application would be like 12000 pages long.

    ===above is the key point the author is intentionally misrepresenting ==========

  101. The authors proposal is the following:
    Claims are not written to directly delineate the boundaries of exclusion. Claims highlight subsets of the embodiments disclosed in the specification.
    This is a typical (and unfortunate) misreading of the statute – common to many patent examiners. 112 2nd talks about distinctly claiming. Distinctly means to distinguish or to identify the difference in. This much more closely comports with “to directly delineate the boundaries of.” In contrast, highlighting the subset of the embodiments means describing the invention – not describing the differences. Interestingly enough, despite feeling the need to use the word “cult” 69 times, the author here only mentions the phrase “distinctly claim” 7 times. However, AT NO POINT does the author ever explore what is meant by that term. This is the language that is within the statute and it is effectively ignored by the author.

    The author wants to limit the claims to the disclosed embodiments — “Ultimately the patentable invention (i.e., the resulting grant of exclusive patent rights) extends only to the patentable portions of the claimed, described invention.” To restate what I stated earlier, all this does is force an Applicant who could have gotten away with a 20 page application to write a 200 page application to make sure that every possible embodiment is covered.

    This is what happens when you get an ivory tower academic, who has never practiced law as a patent attorney, writing about patent law. You get a proposal that has the appearance of reasonableness until one looks at what the actual impact of the proposal will be. The actual impact will simply be to drive up the costs of patent applications in order to describe every possible embodiment. This will lead to extremely high costs for preparing good applications and a lot of applications that are extremely narrow (and hence less valuable). Both (i.e., more expensive applications and less valuable applications) will cause a significant drop in the number of patent applications being filed.

    Less patent disclosures, however, is not desirable. Hence, patent law has evolved so as to not require perfect and complete disclosure. If you have a broad concept that has hundreds/thousands of applications and you disclose both the broad concept and a few embodiments – that is enough. It is also OK to rely upon the knowledge of those skilled in the art – i.e., you don’t have to spell out each and every detail.

  102. The article cited by Dennis is bad.

    He wrote:
    Importantly, in this view there is no special relationship between claim construction and the specification. The only time the specification is relevant is when “the patentee, acting as his or her own lexicographer, has clearly set forth an explicit definition of the term different from its ordinary meaning or . . . if the inventor has disavowed or disclaimed scope of coverage.”

    Wrong. There are plenty of Federal Circuit cases that state that the specification should be consulted with regard to claim construction — even if an explicit definition has not been set forth.

    His paper cites the following:
    Specifically, a patent will usually disclose just one or a few embodiments of the invention in the patent’s specification, but will often claim thousands of different embodiments in a claim.

    What I believe the author fails to appreciate is that patent applications are not encyclopedias. They are not intended to be 1000 pages long. If my invention has a 1000 different applications and I describe 3 of the different applications such that one having ordinary skill in the art would be able to apply my invention to the other 997 applications, that is enough.

    The underlying purpose of the patent law system is to encourage disclosure. However, there has to be certain tradeoffs. If patent applications were required to be encyclopedic cookbooks, there would be much less disclosures because the cost of preparing an application would greatly increase.

    to be continued …

  103. Am I the only one that reads this as an idea claim?
    Testing the tester by generating fake errors.

    The claim itself enables the invention. Because the claim isn’t limited to whatever material is disclosed in the specification, this would be a patent on the idea, assuming this claim ever issues.

  104. But to advance the conversation, the point of not leaning on the word “invention” in the specification (which has been a reaction against the INADVERTENT over-application by courts) is being discussed at Gene Quinn’s IPWatchdog.

  105. “2) From a practical perspective, this decision places additional power in the hands of patent applicants who reject the USPTO’s broadest reasonable interpretation of its patent claims.”

    Broadest Reasonable Interpretation is abused something awful by the PTO, and I am heartened to see some Fed Case law that attempt reign in this abuse.

  106. Bad, it must really set you off that Lemley is often cited by the Supreme Court while your favorite judges, such as Rader, are hardly ever cited with respect, let alone approval.

    Why?

  107. anon,

    Now we get to new vs. old.

    If a screwdriver is well known, saying screwdriver in the claim is quite acceptable.

    If a widget is unknown, saying widget in the claim does not inform. One has to look to the specification to find what a widget is. That is exactly what 112(f) commands.

  108. No Malcolm, the “cult of the claim,” was the least part of what you posted. That has a clear link ot paper bythe same name and is snark free.

    It was the “Feel the perniciousness! [cluthces pearls] ” part.

    In what possible way does that part advance the conversation?

    After having perfectly polite rejoinders expunged, for something as vacuous as the post at 4:05, with no evident purpose but to troll, makes me wonder about the standards employed here. But I won’t lose any sleep over it.

    C’est la vie.

  109. Would that apply to claims that use the word “isolated,” or “purified?”

    Or for that matter, any word that has as its origins a verb? Screwdriver, for example?

  110. Devilish? Not really. I guess if you consider chum “devilish.”.

    We just had a similar exchange on another thread concerning the definition of manufacture, wherein the miscue was thinking too literally. That might be the case here – and it might not be. I have not yet read the paper, so I am reserving comment until I actually do.

  111. A few decades ago a very high percentage of patents included means-plus-function claim elements at the point of novelty.

    Is there actual data on that or is that just a gut feeling?

  112. Do you have a hard time grasping the big picture of patent law?

    No. I’ve experienced patent law from all angles, except for judge and Examiner. Once you’ve been arond the block a few times, it’s not terribly difficult.

  113. This was a great article right up until the Lemley reference. Who cares what a non-practicing, non-participant in the market thinks about patent law? Name one country that has taken Lemley’s view of patents and been successful. Can we just forget about him now?

  114. A few decades ago a very high percentage of patents included means-plus-function claim elements at the point of novelty.

    [Also, IMO there should be no difference in whether the element is at the point of novelty or not.]

  115. In what possible way does this advance the conversation, Malcolm ?

    Depends on which conversation you are referring to.

    Someone around here was complaining about the use of the word “troll” and it’s allegedly caustic effect on civilized discourse about certain kinds of patentees.

    I suspect I would count myself among these “cult of the claim” adherents. The term “cult” is something of a pejorative. Guess what? My fee-fees aren’t hurt. In fact, I think it’s clever. Yes, that makes me a better person than the whiners who complain about the use of the word “troll.”

  116. “the court should begin interpreting functionally claimed elements as also being bound by 112(f). ” In other words, all of the “configured to … ” elements would become means plus function elements. [Better include more algorithms in software applications.]

  117. I think

    1) For the purposes of definiteness, the functional limitation should be read without limitation from the specification for both patentability and validity.

    3) For the purposes of infringement, however, the claims should be limited to the corresponding structure acts or materials and equivalents, exactly like 112(f) states.

    Frederico opined that 112(f) did not apply to patentability (validity). He thought the statute clear on that point. But Donaldson held otherwise.

    In my view, Donaldson needs to be reversed.

  118. at the point of novelty

    This was the point for which I provided the caselaw quote that Hal Wegner used in his email this morning.

    Imagine that, someone else expressing themselves in the same words I use.

  119. Again, IF the “essence of the invention” is defined in the specification as a particular term and that term appears in the claim, there is no reasonable case law that could prevent someone from consulting that definition during claim construction and noting that the specification refers to the term as the “essence of the invention”.

    Missed a key word there. Fixed.

  120. Moving forward we will likely see continued growth in the use of functional claim language.

    Interesting prediction. I’m not sure if it’s a confirmable prediction one way or the other, but it’s still interesting.

    But Dennis can you tell us when this “growth” started? Means plus function claiming is not “growing”, is it? Applicants have been using functional language in claims for a long time.

    The issue of concern is functional claiming at the point of novelty, particularly in the computer-implemented context. We’ll see if that continues to grow or not.

  121. “This court… has rejected a claim construction process based on the ‘essence’ of an invention.

    Except those cases aren’t similar to what’s happening here, in spite of the language that Moore clumsily used. I also disgree with Dennis’ description that this case “relies upon the ‘essence of the invention’ to lead to its result”. I don’t think that’s true, at least in terms of how the “essence of the invention” concept has been abused in past cases.

    This case case isn’t about rescuing a broad claim by inserting an unrecited limitation from the specification (i.e., “the essence”) into the claim to “rescue” the claim, or about ignoring claim limitations and finding the invention anticipated by a similar “essence” in the prior art. Rather, this is a case about construing a claim so as NOT to read out terms recited in both the preamble and the body out of the claim. That said, the term “to verify the accuracy of said logical-to-physical mapping software” hardly seems limiting in the context of this claim. It seems like a statement of intended use and I think the PTO was right to ignore it.

    My question is: how could this make any difference to the patentee? If these claims aren’t anticipated, then they are surely irredeemably obvious. Is there something unexpected or inventive about comparing related objects to determine if they are identical? Once again, everyone’s time has been wasted by j–k and the Federal Circuit pointlessly adds more confusion to its own case law.

    See, e.g., Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1345 (Fed.Cir.2002) (‘It is well settled that ‘there is no legally recognizable or protected essential element, gist or heart of the invention in a combination patent.’ ’) (citing Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345 (1961)).

    Aro was a case about the repair/reconstruction doctrine and the issue of the “gist of the invention” arose out of a completely different context. Again, the “essence of the invention” is defined in the specification as a particular term and that term appears in the claim, there is no reasonable case law that could prevent someone from consulting that definition during claim construction and noting that the specification refers to the term as the “essence of the invention”. Silly absolutist rules … when will the Federal Circuit learn?????

  122. From the abstract of the Cult of the Claim Paper, the statement:

    “The invention is simply the inventor’s own solution to some technical problem”

    Wow. For somebody from Europe, that my friends really is harmonisation.

    But I wonder: in the USA, is the statement in any way controversial?

  123. The examiner never took the position that “to verify the accuracy” was an “intended use,” instead clearly stated in the response to arguments of the final rejection that the reference disclosed the feature.

    The APJ’s, recognizing that the examiner was full of sh#t, but h#ll bent on affirming anyway, cooked up the “no patentable weight” theory. Should’ve been designated a new grounds of rejection, but hey, what are the odds the applicant would appeal to the Fed. Cir. Heh, heh.

    Oops.

    Heckavu job, APJ’s.

  124. Although this thought will probably give some patent people appoplexy, I wonder if there is really a good reason why, [just for reexaminations or Markman, judge or jury evaluation purposes] a confusingly-written claim stuffed with meaningless non-limitations cannot be presented re-phased in Jepson form and/or in Plain Engish, as long the Scope of the claim is not changed?

  125. A counter point from this morning’s Hal Wegner email:

    “This court… has rejected a claim construction process based on the ‘essence’ of an invention. See, e.g., Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1345 (Fed.Cir.2002) (‘It is well settled that ‘there is no legally recognizable or protected essential element, gist or heart of the invention in a combination patent.’ ’) (citing Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345 (1961)). Indeed, this court has done so quite forcefully and quite recently. See MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1330–31 (Fed.Cir.2007) (‘We sympathize with the district court’s choice, since we agree that [the feature] is an essential element of the invention…. However, we cannot endorse a construction analysis that does not identify ‘a textual reference in the actual language of the claim with which to associate a proffered claim construction.’ ’) (quoting Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 990 (Fed.Cir.1999)).”

    Ormco Corp. v. Align Technology, Inc., 498 F.3d 1307, 1322-23 (Fed. Cir. 2007)(O’Malley, J., concurring in part and dissenting in part).

    If this sounds familiar, it is because it should. I provided the Aro Mfg quote in one of the threads recently.

  126. If functional claiming gets its balls clipped then there will truly be nothing wrong with patent lawl that deals with substance after software gets tossed in Alice. All in all, this has been a pretty good decade for patent lawl. The great scourge that began in the 1950′s will have been put right.

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