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).
“gaming” has negative connotations and there is nothing negative about representing your client within the rules
Just wait until the math of Prior User Rights enters the equation…
“good prior art makes most plaintiffs go away for much less.”
Indeed.
Some patentees have even reportedly paid competitors to avoid challenges to their patents.
Not reading replies, just like not listening to what the President actually says, makes it very much easier to climb up on one’s soapbox and give the prepared speech (yet again).
Conversation what?
101, I must apologize. I really don't read your notes are messages to me. The reason I don't is because you and I really don't do not have conversations.
Ned: “The first step was always identifying whether there was an abstract principle at the PON.”
Not for 101 statutory subject matter. The Courts concern with LoN and other exceptions is, ” foreclosing of others from the use of the exception for future innovation.” Look, I already went into depth explaining this to you and MM , at Feb 17, 2013 at 01:45 AM and apparently you both ignored it.
He accuses that which he does.
He knows no other way.
He is a blight on this site. But he does serve a purpose: A negative example of how NOT to act.
Prometheus confirmed, no dissection allowed ever.
Depends on what you mean by “dissection.” Did Prometheus say we weren’t allowed to look at different elements in a claim separately and compare those elements to the prior art?
Let us know, 101E.
Dissection means to “ignore” steps/elements in the analysis.
Diehr expressly prohibited this.
And Prometheus upheld it with “integration”.
“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.”
Any more questions?
I am here to help.
Ned: “01, we appear to have a basic problem when discussing issues, do we not?”
101 Integration Expert: We have no issues.
Ned: Even if the language of the statute or case says X.
101 Integration Expert: But the language of the statute and case law does not say x. The language of the statute and the case law precisely says, “Consider the subject matter as a whole.”
Ned: if you disagree with it, you will refuse to understand it.
101 Integration Expert: But I do not disagree with it. And I do understand it. The statute and the case law says “Consider the subject matter as a whole”.
Thus, I am compelled to follow the law and “Consider the subject matter as a whole.”
Ned: “I will not be so bold as to suggest that you are incapable of understanding it.”
101 Integration Expert: I understand the law and so do you. The difference we have is you wish to interpret the law that says “consider the subject matter as a whole” to mean “dissect the claim into point(s) of novelty at 101.
The only problem with your interpretation is that
1. The statute never instructs you to dissect the claims into points of novelty.
2. The Supreme Court in Diehr interpreted the statute as meaning no dissection, especially for points of novelty at 101
3. The Supreme Court in Prometheus reaffirmed Diehr, and specifically claims as a whole.
Thus your interpretation has no legal foundation whatsoever.
While my understanding is firmly rooted in the law.
Any more questions?
I am here to help.
“I will not be so bold as to suggest that you are incapable of understanding it.”
Likewise.
To me, it is not a question of “incapable,” but rather, a question of thrid party interest taint.
All the more the pity for that.
Test?
The SC has always looked to what was new in the claim. If it was a LON, it asked, in Funk and Mayo, whether enough had been added, some inventive application.
WRT to principles in the abstract, the same procedure was employed. The first step was always identifying whether there was an abstract principle at the PON.
Ned
101, we appear to have a basic problem when discussing issues, do we not? Even if the language of the statute or case says X, if you disagree with it, you will refuse to understand it. I will not be so bold as to suggest that you are incapable of understanding it.
Ned: ” PON is a concern when one is effectively claiming a result, or where one is claiming an LON or principle in the abstract for 101 purposes.”
Hello Ned:
The is no PON test in 101.
There is not Court case law, or statute that says otherwise.
You you have said above is simply not true.
You may be able to fool a novice like Non Sequitur II, but it’s not going to work on a 101 Integration Expert.
Ned: 103 also says find the differences between the claim and prior art. What does that mean?
Consider the subject matter as a whole.
Any more questions?
I am here to help.
101, 103 also says find the differences between the claim and prior art. What does that mean?
Non Seq., right.
A claim can be novel in any number of ways. PON is a concern when one is effectively claiming a result, or where one is claiming an LON or principle in the abstract for 101 purposes.
anon, the PON was once abused by the PTO. It is a term that has fallen into disfavor. But it is shorthand for identifying what is new in a claim for further analysis under 103 or 101 or 112.
Don't invent facts.
We were talking about a SC decision, and then I said the lower court did this or that.
“look at different elements in a claim separately and compare those elements to the prior art”
look?
nice strawman
As a non-precedential opinion, is this really going to change anything for applicants?
“You are using a piece of a sentence to argue that sentences can’t be evaluated in pieces.”
No, I am using the “statute” to argue that “claims” must be evaluated as a whole and not dissected, or as you say “evaluated in pieces.” You do understand the legal ramifications of the foregoing right? Besides you ducked my question about what you said up thread. Please answer now.
Here it is again below:
101 Integration Expert Wrote: “Can you elaborate from a legal perspective on why a “such that” clause modifies, and changes the statute, so that “claims as a whole” means a point of novelty test is the law?”
You’re funny. Apparently, you contend that claims must be evaluated as a whole, but sentences can be evaluated in pieces. This is even funnier because claims are single sentences. You are using a piece of a sentence to argue that sentences can’t be evaluated in pieces.
All you had to say was, “No”.
Just saying :”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.”
No truer words have ever been spoken! I like this “Just Saying”.
Just sayin! 🙂
Great, now I owe YOU a coke! lol
Do you see the irony of demanding that claims be viewed as a whole while quoting only part of the sentence?
So the “claims as a whole” law only applies if you quote the “whole” sentence? Sorry, that just does not sound logical to me.
“This is especially true given that the “such that” clause modifies “the differences”.”
Hmmmm….Can you elaborate from a legal perspective on why a “such that” clause modifies and changes the statute so that “claims as a whole” means a point of novelty test is the law?
Look forward to your answer. I always enjoy learning from smart attorneys. You a patent attorney right?
MM: Do you and 101E want to share the prize for World’s Biggest Hypocrite?
You have called me a lot of names on this blog, but hypocrite? That makes no sense whatsoever.
I’ve heard of ethical screens, anon. But I’m curious as to how this works, as we don’t have a procedure like the one you appear to be describing. How does your staff know which registered letters to discard?
This makes ZERO sense.
You click too fast as the topic is the same.
You have heard of ethical screens, yes or no?
Why are you lacing up your running shoes?
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.
Please continue. You’re on a roll, JS!
You left a bunch of people out.
there is a single instance in the MPEP – which, I am sure you recgonize has no force of law.
LOL. Do you and 101E want to share the prize for World’s Biggest Hypocrite?
Non Sequitur II Do you see the irony of demanding that claims be viewed as a whole while quoting only part of the sentence?
Good luck, NS II. You’ll need it.
Every term in an element of a process does not need to be functional.
That’s nice.
We’re talking about claiming novel compositions and distinguishing them from the prior art solely in terms of their “new” functionality, or about claiming new methods that differ from old methods solely because they incorporate new compositions of matter that differ from old compositions only in terms of their “new” functionality.
Prometheus confirmed, no dissection allowed ever.
Depends on what you mean by “dissection.” Did Prometheus say we weren’t allowed to look at different elements in a claim separately and compare those elements to the prior art?
Let us know, 101E.
As far as I know, only two “people” on the planet think the answer is “yes.” Those two people are (1) you and (2) your li’l buddy, anon. Once upon a time I’d say there might be more (although doubtful). But all those other suspects turned out to be anon’s sockpuppets.
NO.
I see the irony in ognoring the “as a whole” condition, though.
Thanks for chiming in.
Do you see the irony of demanding that claims be viewed as a whole while quoting only part of the sentence? This is especially true given that the “such that” clause modifies “the differences”.
A patent may not be obtained … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.
–
Be careful what you wish for. Software is gradually replacing all other methods of controlling anything whatsoever. If software patenting is curtailed or eliminated, there may be little else new to patent, and perhaps eventually no job for 6!
103: “such that the subject matter as a whole”
Sorry Ned, you lose again.
It doesn’t “take” for some very straight forward reaons:
It’s a canard.
It has no real value.
Even if some element is novel, the analysis does not end there.
It is a trap for the unwary, as a bridge to unsavory non-legal views like dissection, mental steps must be ev1l, functional descriptions in elements must be ev1l, and so on.
You will find the only ones even bothering with the canard are those who have other agendas and want to twist facts and misrepresent the law. Plenty of case law is givne that preaches against it. Ignore at your peril.
Far better simply to not yse the canard at all. Such is simply hewing to the high road, to a path of iintellectual honesty.
I believe the issue is with the phrase “point of novelty” and not with the concept. A 103 analysis necessarily requires a comparison to the prior art, which could be considered the point(s) of novelty. Referring to something composed of old elements is a red herring because novelty can be found in the arrangement of old elements. In such cases, the point(s) of novelty would be a comparison to prior art arrangements of those old elements.
This is way to nuanced for our pro-patent trolls, NSII. I’ve tried to walk them through it before. It doesn’t “take”.
Ned: 101, you cannot be serious.
101 Integration Expert: Why not ?
Ned: Read 103 again.
101 Integration Expert: Just did.
The “subject matter as a whole” is still in there.
Point of novelty test remains missing.
I believe the issue is with the phrase “point of novelty” and not with the concept. A 103 analysis necessarily requires a comparison to the prior art, which could be considered the point(s) of novelty. Referring to something composed of old elements is a red herring because novelty can be found in the arrangement of old elements. In such cases, the point(s) of novelty would be a comparison to prior art arrangements of those old elements.
But the Thurston Howell line at least had some playful wit…
It’s a step infringers’ rights.
Attacks from the Right and from the Left.
Is anyone really surprised?
I was thinking to satisfy your intellectual curiousity – like most intelligent people do.
I see the juxtaposition of the terms, even as I alwasy hold out hope that someday you will change.
Either way, the “point of novelty” is a canard. The only use is by people who attempt to obfuscate other portions of law with it.
Time to let it go.
Do you understand this case? If the case is currently at the Federal Circuit, then your phrase “lower court” does not mean the current court.
Isn/t there enoughdust kicked up already?
101, you cannot be serious. Read 103 again.
The court I reference is the Federal Circuit
Mean, or include?
What happened to Howie?
He was going so strong … I was expecting him to be become a regular
.
.
.
.
or perhaps he already is?
To be clear, the author of that paper is looking for a way to make claim construction better and more reliable.
To be clear, the author of the paper is ignoring the language of the statute. The statue talks about “distinctly claim” — not “descriptively claim.”
perhaps even more “precise”
There is a tradeoff between precision and cost. More precision = greater cost.
Regardless, if the claims are going to be limited by what is within the specification, why have claims at all? Why not have the invention defined by the specification?
If I claim “element A fastened to element B using a removable fastener,” do I have to specifically mention in the specification every possible removable fastener ever created? If I don’t, based upon this author’s proposal, then my claims won’t cover the non-described embodiments.
The impact of this proposal will have patent applications that do less describing the invention and do much more creating laundry lists of equivalent elements. This proposal doesn’t provide more precision as much as it generates traps for the unwary.
Miss an equivalent element in your laundry list and you provide a loophole through which an infringer has a safe harbor to practice the invention.
This isn’t a step forward — it is a step back.
Because you will pay me to?
Ned Heller: Tell, me Mr. 101, how one determines those “differences.” What does one look for?
The subject matter as a whole.
Any more questions?
I am here to help.
Just one question: as a non-precedental opinion, how does this help me when I believe the examiner has given the claim an unreasonable interpretation?
Ned,
You do realize that the “lower court” was the very own Office’s BPAI (article I – not article III court), right?
Those “super-examiners” opinions are not worth much at all, I am afraid.
Ned: “101, try reading the lower court’s opinion where they looked to the “purpose” of the invention in part to sustain the claims.”
I would like to read the lower courts opinion. But as usual you did not provide a cite. How about a citation please?
“without a prior art search (why is this so common now?)”
Good question.
Give me a firm that does NOT employ Chinese walls or some other ethics screening mechanims, Malcolm.
Um, you do know what ethics screeing mechanisms are, right?
It certainly is not your blogging “talents.”
Looks like the cat got Ned’s tongue on this one.
Ooops.
Ned,
There is no way in H311 that what you read means “point of novelty.”
Tell me this – can a claims, completely composed of old elements pass this 103 thing you just listed?
Please stop with the twisted mischaracterizations of law in the attempt to salvage your cannard.
101, try reading the lower court's opinion where they looked to the "purpose" of the invention in part to sustain the claims.
101, try
103) "A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art…"
Tell, me Mr. 101, how one determines those "differences." What does one look for?
For you 101 IE, the case cites were already provided and here is the MPEP: 2173.05(g) version e8r9 (also note that these versions have changed – and the controls for these changes are more than suspect).
Ned,
You are incorrect. It is not in the statute – there is a single instance in the MPEP – which, I am sure you recgonize has no force of law.
Now compare it to the case law presented (both by me and Hal Wegner (funny, I don’t remember Hal Wegner as having English as a second language).
That is what is, actually.
“While completely ignoring the one concrete ruling made by the Court, that claims including a LoN or Algorithm, “Integrated” into the process as “a whole” are patent eligible subject matter.”
Oh, I am sorry. I forgot to provide the citation:
“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)
Not that you and MM will ever acknowledge it. But it does not matter the Court already has, and so has the PTO.
link to uspto.gov
Ned Heller: “Essence of the invention” is to use the data to do X. Therefore, read into the claim the X action. That is exactly the analysis the Feds used in Prometheus.”
I did not read anything about “Essence of the invention” in Prometheus.
Citation please?
Oh wait, it’s Ned Heller again talking to MM and making stuff up. No chance of citations from these two.
Since the first day the Prometheus case was decided by the Supremes you and MM have spun it more ways than a broke compass. Imagining and then shilling for every whacky possible theory other than the actual holding from the case.
While completely ignoring the one concrete ruling made by the Court, that claims including a LoN or Algorithm, “Integrated” into the process as “a whole” are patent eligible subject matter.
Ned: “Point of novelty, anon, is actually in the statute.”
Citation please?
Oh silly me, This is Ned Heller, and Ned does not do citations.
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?
Every term in an element of a process does not need to be functional. The terms may be language that describes the limitations placed on the function. Irregardless the claims must be read and considered as a whole. As Diehr taught you, and Prometheus confirmed, no dissection allowed ever. Never forget that part!
“Essence of the invention” is to use the data to do X. Therefore, read into the claim the X action.
That is exactly the analysis the Feds used in Prometheus.
The Federal Circuit apparently has solved the problem of its opinion in Prometheus by reading into the claim something from the specification that is required both for novelty and for eligibility.
I checked out “Euro-trash” and found:
“A human sub-phylum characterized by its apparent affluence, worldliness, social affectation and addiction to fashion. Males are characterized by a semi-slovenly appearance (including half-shaven faces), greasy hair, rib-hugging shirts, tight jeans and loafers worn without socks”
I have to say, I’m impressed by Just saying’s perspicacity. I had no idea that my postings were giving away my true identity. With my greasy hair and slovenly appearance (that Just Saying so perceptively detects) it’s a wonder I get any clients at all, let alone so many top-dollar highly-discriminating US law firms and corporations. Must just be my irrepressible talent, I suppose.
the firm (not the attorney) receives and reviews the content
The firm? Who’s “the firm”? Who are the people at “the firm” who review registered mail addressed to attorneys and and what critieria do they use to determine whether a registered letter to an attorney that discusses a legal matter is properly thrown away without the attorney learning about the contents of the letter? You keep spinning round and round anon without presenting any details.
If you don’t have the time, just let me know the name of a single firm that employs people to screen registered mail to attorneys with instructions to throw the mail away without informing the attorney of the letter’s contents if the letter contains information relative to a patent application of the attorney’s client.
Just one firm. Then I can contact them and verify the practice you alleged AND we can publish the strategy for other attorneys. I’m particularly curious as to how the risk management issues are dealt with.
Do you employ Chinese walls in your firm?
Just provide the name of a firm. Any firm that does patent prosecution and uses the strategy you have very vaguely outlined and seem unwilling to describe in any detail. Just one firm. It doesn’t have to be the firm you use. Unless of course that’s the only firm that has implemented the screening practice you described. Perhaps they did so as a special favor to their n-ttiest client.
Just one firm, anon. Name it. I’ll make the call and we can have a conversation about the details of the implementation, which you seem unwilling to provide.
Malcolm, correct me if I’m wrong, but the claim here consists of a series of method steps, apparently all old because of the anticipation rejection. It further included a new “purpose.” The new purpose was defined in a “to” clause.
Haven’t we seen this pattern somewhere else recently? I am thinking of the Prometheus case where we had a number of steps, data-gathering steps, for new purpose, but without actually having to do anything with the new data. The Supreme Court had something to say about that. I wonder what was?
Here all the patent office wanted to do was add into the claim some act, some physical action, to physically apply the old data-gathering method to a new and useful end. They did so for novelty purposes, but is there a difference when the issue is novelty and not patent eligibility?
Point of novelty, anon, is actually in the statute.
The sames reason you search for anything.
Why would I search for something I do not believe exists?
“thank you, 101”
You are welcome Fish.
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.
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.
“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.
“be a doll”
um, not likely.
doll?
Your an examiner, right? You can’t handle a search like this…?
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?