Federal Circuit gets Technical with PTAB Failures

By Dennis Crouch

In re Guiffrida (Fed. Cir. 2013) (non-precedential)

Great Lakes NeuroTechnologies is a spin-off of Cleveland Medical Devices (CMDI) and focuses on therapy systems for movement disorders. The new company took control of a handful of CMDI patents when it was formed back in 2011. However, the patent application in question would be their first post-formation patent issuance, and the company’s first patent issued listing its president (Joe Guiffrida) as an inventor.

The preamble of Guiffrida’s first claim is directed toward a “portable therapy system,” although the claims body does not provide any further portability related limitation. In its decision, the PTAB had rejected the claim as anticipated over a single prior art reference (Shields). Shields does not make any remarks regarding portability, but the PTAB found the limitation disclosed because Shields does “not appear to contain any structure confining it to a particular location.” On appeal, the Federal Circuit rejected that analysis – finding that the prior art’s failure to disclose non-portability is not the equivalent of disclosing portability.

An anticipating reference must disclose every claim limitation, either expressly or inherently [and i]nherent disclosure requires that the prior-art reference necessarily include the unstated limitation. . . .

The Board found that Shields inherently discloses a portable system because Shields does “not appear to contain any structure confining it to a particular location.” But that observation does not indicate that Shields “necessarily” includes a portability limitation, or even that Shields must necessarily be free from “confin[ement] to a particular location.” On the contrary, a finding that Shields does not say that its system is not portable—which is all that the Board’s statement implies—is just a restatement of the fact that Shields does not expressly disclose a portability limitation. It does not suggest anything about what Shields inherently discloses that would suffice to shift the burden to Giuffrida to disprove inherency.

A confusing aspect of patent claims is that a claim preamble is often seen as non-limiting. Here, any confusion was eliminated because the PTO and the applicant agreed that the portability limitation is limiting. In the appeal, the Federal Circuit accepted that interpretation without comment.

Broadest Reasonable Interpretation Requires Consideration of Specification: The parties did not wholly agree on the meaning of portability. For its part, the PTO applied its wrong-headed “broadest reasonable interpretation” to suggest that a portable device is one that “can be carried.” Although irrelevant for this case, the Federal Circuit took the PTO to task for applying that “dictionary definition” of the claim term rather than construing the term “in light of the specification as it would be interpreted by one of ordinary skill in the art.” Quoting Phillips v. AWH. According to the appellate panel, the specification provides that a portable system is one that is “capable of being transported relatively easily.” In fact, the specification states that “By portable it is meant among other things that the device is capable of being transported relatively easily.” The Federal Circuit seems to have skipped over the wiggle-words “among other things” that were certainly inserted in order to open the term to a much wider variety of definitions.

Cryptic PTAB Decisions: In an earlier essay, I wrote about the Board’s new approach of writing shorter opinions. Here, the Federal Circuit gave some credence to that approach. Noting that cryptic obviousness rejections can be upheld where the analysis can be “reasonably discerned.” Here, the court noted that the board can rely upon the examiner’s brief in its decision.

Board made a number of obviousness rejections and those were affirmed on appeal except for claim 24 that I will discuss below. On remand, the PTO may also replace the reversed anticipation rejections (discussed above) with obviousness rejections – especially since the result of this case is that many of the here-adjudged novel claims have dependent claims that are here-adjudged as obvious.

Claim 24 in the patent application adds a limitation that some of the system components communicate using “a two-way RF link.” I don’t think that anyone (even a Federal Circuit judge) believes that a two-way RF communication limitation would normally transform an unpatentable system into one that is non-obvious (without something more). But, here the Federal Circuit reversed the rejection – finding that the PTO had failed to prove-up its burden.

[The proffered prior art' uses ultrasound transducers that communicate with a compact unit, which, in turn, communicates with a computer. Those communications are twice referred to as "wireless," but the document says little else about them. It does not mention a radio frequency (RF) link, a two-way or bidirectional link, the retransmission of data over such a link, or any benefits from such retransmissions. We have been pointed to no substantial evidence that Zheng teaches such features.

Nor has the Director persuasively explained why Zheng [the prior art] renders those limitations from claim 24 obvious. On the contrary, the reasoning within the PTO has been inconsistent and conclusory in this matter. In stating that it “fail[ed] to see how a system that can both receive signals from sensors and deliver them to, for example, FES systems, could operate absent a two-way link,” the Board cited a paragraph in Zheng that mentions a wireless link between units embedded in the body and an “outside control unit.” The Examiner invoked different paragraphs from Zheng to find that a two-way link is “implied” or “required.” Broad-brush statements based on Zheng’s generic references to a “wireless” link are insufficient to support the conclusion that Zheng renders obvious a claim calling for the “wireless[ ] retransmi[ssion] [of sensor signals] over a two-way RF link.” We therefore reverse the rejection of claim 24.

On remand, the PTO should be able to find some prior art that shows wireless RF two-way communication that fits this case.

76 thoughts on “Federal Circuit gets Technical with PTAB Failures

  1. A glib answer like pretty much all of them except the ones I will misconstrue

    I answered the question, and I didn’t “misconstrue” anything. If you believe that the doctrines I mentioned have never been applied by the Federal Circuit, then simply state your belief. Then we can discuss whether your belief accords with reality.

    Or you can just keep flinging insults.

  2. [The Examiner] must be bound by what the specification states the claim term to mean if that is clear.

    I agree that he can’t argue that the term means something else, but I don’t agree that the Examiner has to accept the applicants’ drafting choice of putting the definition of the term in the specification if that choice results in a claim that is easily mis-read. The Examiner should be allowed to rewrite the claim with the definition expressly in the claim, or force the applicant to do so if the applicant wants the grant.

  3. MM, agreed, during prosecution the examiner has to have the tools to force clarification, and to me that means during the first action on the merits he can take liberties and should.  But, thereafter, he must be bound by what the specification states the claim term to mean if that is clear.  If it is not clear, the broader interpretation should prevail if it can be justified by reference to dictionaries and other public materials.
     
     

     
     
     

  4. MM, in other words, throw the specification into the trash and read the claims the way they are written?

    No, the claims should be read in light of the specification and the knoweldge of the skilled artisan. But, if there is any possibility of ambiguity being introduced down the road, the Examiner should feel free to force the applicant to state in the prosecution history where the claim term is defined and what those definitions (if they exist) do or do not include.

  5. MM,   in other words, throw the specification into the trash and read the claims the way they are written?
     
    But, isn’t that your position as well?
     
     

     
     
     

  6. 6, The way I read Precision Instruments, link to bulk.resource.org
    the duty of one  having information that could invalidate a patent is to report it to the PTO, and not to an applicant. 

     
    Do you or do you not disagree?
     
    Secondly, is there or is there no a statute regulating the time and manner of disclosure?
     
    Thirdly, do you or do you not disagree that keeping invalidating prior art private between two parties without disclosing it to the PTO can actually be illegal.  See, Walker Process.  link to scholar.google.com
     
    At the very least, keeping the information private between to companies is unethical when the duty is to report the information to the PTO.
     
     
     

  7. There is nothing unethical about informing a person about a piece of art. Ever. Period.

    Of course there is not. There’s also nothing unethical about asking or hiring a straw man to do it for you.

    It is, however, unethical to steal satellite TV, isn’t it Ned?

  8. an example of identical ‘legal logic.’

    Except that it is not even close. Ned’s example deals explicitly with a law controlling the handling of art by third parties and how those parties are directed to deal with notice, while your non-sequitur has absolutely nothing to do with such concepts.

    For someone with such an ‘expert’ grasp of English as a first language, it is you that seems to have the repeated difficulties with words and phrases. Reminds me, is today one of the days that you don’t remember what ‘effectively’ means? How about dissembling? How about svckpuppet? Feel free to phone a Friends (of the Court) on that last question.

  9. Your response to the first question is equally as fallacious.

    Tell me (explicitly) which ‘useful’ canons? A glib answer like pretty much all of them except the ones I will misconstrue is not an answer, but is merely you employing your typical anti-patent spin.

    Give me a real answer. If you can.

  10. what does BRI really mean?

    How about: “the broadest construction that a very zealous patent owner must have in mind when he informs hundreds of potential licensees of the existence of the patent.”

    Is that satisfactory?

    Or how about “the broadest consruction that a very zealous patent owner could assert without being sanctioned by a court.”

    Any problem with that?

  11. We have a statute that governs excessive noise. Is it unethical to call my neighbor and tell him to turn his —-ing stero down?

    Holy Non-Sequitur Batman! Malcolm’s ‘legal logic’ on wondrous display again.

    Attaboy.

  12. Which ‘useful’ canons?

    Pretty much all of them except the b.s. ones that pop up from time to time like zombies: (1) construing the claim to preserve its validity even when the claim scope is not ambiguous; (2) construing the claim to read only on a specifically disclosed embodiment in the specification, in spite of the applicant’s knowledge and use of a broader term in the claim.

    Useful’ to whom?

    Useful to the public, including the overwhelming fraction of the population whose freedom to do stuff is limited by the claim, from the time the claim is granted until the time the claim expires. Who did you think I meant?

  13. “To deliberately flaunt the requirements of the law by mailing the prior art instead to the applicant is unethical.”

    There is nothing unethical about informing a person about a piece of art. Ever. Period. The person recieving the art can choose to submit the art or not. Their call.

  14. The mailroom staff would have to do it,

    And why not? If anon’s mailroom staff is qualified to evaluate registered mail and throw it away without the attorney seeing it, they are surely qualified to report unethical behavior to the USPTO. Of course, they’d have to squeeze that in between the hours spent reviewing mail to the attorney and deciding whether or not to throw it away and the hours spent reviewing the firm’s budget, the firm’s tax and insurance liabilities for the year, and proofreading the next day’s court filings.

  15. provided that the useful canons of claim construction are followed.

    Which ‘useful’ canons?

    ‘Useful’ to whom? (Well, this one knows your leanings towards useful for Infringers, but I want to see if you could attempt an honest answer)

  16. You’re trying to change the subject again

    LOL – more of that lovely accuse-others-of-that-which-you-do CRP, as look above to see exactly who started kicking up dust with a change in subject (hint: that would be you Malcolm at 2:19 PM).

    Yet another Malcolm FAIL.

  17. MM, In re Morris case went to the Feds because the PTO insisted that BRI allowed them to use dictionary definitions in face contrary and clearly inconsistent usage in the specification.

    The Feds acknowledged that “consistent with the specification” allowed dictionary use, but not in face of definitions and consistent usage to the contrary.

    But, this in truth is the court construction. Therefore, what we do not have is any clear distinction between court and PTO claim construction because both are bound by the specification when there are definitions and when there is consistent usage, but dictionaries can be when the spec. is inconsistent or not clear.

    So what does BRI really mean?

  18. anon Ned agrees with me

    Nothing in Ned’s comment suggests that Ned agrees with your mailrooom screening system, which is still a ridiculous black box because you’ve never explained to us how the mailroom staff determines which letters to throw away and which registered letters to forward to the attorney to whom the letter was addressed.

    And everything else that Ned said, other than his expression of his “belief” about the ethics of anonymous letters, is irrelevant or wrong.

  19. Ned: Perhaps your firm would provide a better service if they would report such violations to the USPTO

    What’s the “violation”, Ned? X is an attorney. X’s client, who wishes to remain anonymous, asks X to send a registered letter to a person, informing that person of some information that would improve their patent.

    So … what’s the “violation,” Ned? What’s going to appear in your “report”?

    I’ll tell you this much: you file enough of those “reports” against that attorney and you will be the one defending yourself against the ethics board of your state bar.

    To deliberately flaunt the requirements of the law

    Where is the law that prohibits an applicant from being anonymously informed of prior art, Ned?

    when one has material prior art, one’s duty is to report it to the patent office not to the applicant.

    There is no such duty, Ned.

    we have a statute that governs submission of prior art by 3rd parties

    We have a statute that governs excessive noise. Is it unethical to call my neighbor and tell him to turn his —-ing stero down?

  20. LOL – you mean like who was right and why in the Myriad case, Malcolm?

    Like that?

    Or any one of your other anti-patent crusades?

    LOL

    Keep reminding? Okeedokee.

  21. anon, I agree that it unethical to send an applicant a piece of prior art when we have a statute that governs submission of prior art by 3rd parties. To deliberately flaunt the requirements of the law by mailing the prior art instead to the applicant is unethical.

    Moreover, when one has material prior art, one’s duty is to report it to the patent office not to the applicant. One of the founding Supreme Court cases on the duty of disclosure involved exactly this kind of situation where the bad facts were made known to the applicant, but not to the PTO.

    Perhaps your firm would provide a better service if they would report such violations to the USPTO so that they could conduct an appropriate investigation.

  22. Sounds like the examiner who claims “everything is pivotably connected because if ya jest twist it hard enough, it’ll pivot” or “everything is removably attached, if’n yuh jest yank on it hard enough”.

    Again, the point is for you to put it on the record exactly what “pivotably connected” means so that latter you don’t sue someone selling a manufacture that is otherwise identical except instead of a part that is “pivotably connected” it has a part that “twists off if you yank it hard enough.”

    It’s frankly unbelievable that in 2013 such a difference (a part that is “pivotably attached”) could make the difference between obtaining a valid patent and not but … people spend money on all kinds of wasteful j–k I supppose.

  23. If a PHOSITA like myself laughs when they read your BRI then it’s not reasonable.

    I’m not sure what’s “funny” about it. It’s certainly broad. But it’s not unreasonable. It doesn’t cover the entire universe of manufactures.

    The dictionary definition of “collapsable” is “able to be folded into a small space.” The term “small” in the dictionary definition is indefinite. All that reasonable people could agree on is that whatever “small” is, it must be “smaller” than the space occupied by the non-collapsed object.

    Examiners need to remind applicants what can happen to a patent that is granted with terms whose scope has not been plainly and expressly addressed during prosecution: the patent can end up in the hands of someone (e.g., a patent troll) who is going to leverage the indefiniteness of the term and the flaws in the legal system to extort money from people who, like you, can’t believe what the claim is being construed to cover. That’s just one of the reasons that BRI is not “wrong-headed” (if applied correctly).

  24. 6: the whole topic is stu pid

    It’s just a quintessential and relatively recent example of Tr 0llb0y flinging poo and insulting people who disagree with him and then, after he surely realizes he was chock full of s h-t, pretending that it never happened and doubling down with irrelevant nonsense (“don’t you know what a spam filter is”?).

    Rinse. Repeat.

    If anon would just learn to shut the f—k up or have a discussion like a human being instead of immediately insulting everyone he dislikes every day of the week, no matter what they write, then it wouldn’t be necessary to keep reminding him and everyone else of his serious kookoobanana A-whole tendencies.

  25. Yes. Halliburton v. Walker, 329 US 1 – Supreme Court 1946 link to scholar.google.com

    “This patent and the infringement proceedings brought under it illustrate the hazards of carving out an exception to the sweeping demand Congress made in Rev. Stat. 4888. Neither in the specification, the drawing, nor in the claims here under consideration, was there any indication that the patentee contemplated any specific structural alternative for the acoustical resonator or for the resonator’s relationship to the other parts of the machine. Petitioner was working in a field crowded almost, if not completely, to the point of exhaustion. In 1920, Tucker, in Patent No. 1,351,356, had shown a tuned acoustical resonator in a sound detecting device which measured distances. Lehr and Wyatt had provided for amplification of their waves. Sufficient amplification and exaggeration of all the different 12*12 waves which Lehr and Wyatt recorded on their machine would have made it easy to distinguish the tubing catcher and regular shoulder waves from all others. For, even without this amplification, the echo waves from tubing collars could by proper magnification have been recorded and accurately counted, had Lehr and Wyatt recognized their importance in computing the velocity. Cf. General Electric Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242.

    Under these circumstances the broadness, ambiguity, and overhanging threat of the functional claim of Walker become apparent. What he claimed in the court below and what he claims here is that his patent bars anyone from using in an oil well any device heretofore or hereafter invented which combined with the Lehr and Wyatt machine performs the function of clearly and distinctly catching and recording echoes from tubing joints with regularity. Just how many different devices there are of various kinds and characters which would serve to emphasize these echoes, we do not know. The Halliburton device, alleged to infringe, employs an electric filter for this purpose. In this age of technological development there may be many other devices beyond our present information or indeed our imagination which will perform that function and yet fit these claims. And unless frightened from the course of experimentation by broad functional claims like these, inventive genius may evolve many more devices to accomplish the same purpose. See United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236; Burr v. Duryee, 1 Wall. 531, 568; O’Reilly v. Morse, 15 How. 62, 112-13. Yet if Walker’s blanket claims be valid, no device to clarify echo waves, now known or hereafter invented, whether the device be an actual equivalent of Walker’s ingredient or not, could be used in a combination such as this, during the life of Walker’s patent.

    13*13 Had Walker accurately described the machine he claims to have invented, he would have had no such broad rights to bar the use of all devices now or hereafter known which could accent waves. For had he accurately described the resonator together with the Lehr and Wyatt apparatus, and sued for infringement, charging the use of something else used in combination to accent the waves, the alleged infringer could have prevailed if the substituted device (1) performed a substantially different function; (2) was not known at the date of Walker’s patent as a proper substitute for the resonator; or (3) had been actually invented after the date of the patent. Fuller v. Yentzer, supra, at 296-97; Gill v. Wells, supra, at 29. Certainly, if we are to be consistent with Rev. Stat. 4888, a patentee cannot obtain greater coverage by failing to describe his invention than by describing it as the statute commands.”

  26. LB: The question that has been on the table since you first raised the topic 7 months ago is how you can have a mailroom staff throw away registered mail addressed to an attorney for the express purpose of preventing the attorney from seeing it. Now that seems like the bigger ethical issue.

    Of course, we’re trying to get an honest explanation from a s0ci0path who tr0lled this blog for years using hundreds of aliases in an effort to squelch the views of a “vocal minority.”

    It’s possible that “anon” simply did not understand what registered mail is. This quote from anon is the funniest:

    Do you really think that just by sending a letter registered mail that you can dupe a system of screening attorneys from the unsavory practice of trying to trick them? Really?

    I wonder what “trickery” anon is referring to? The simplest explanation for all this is that anon simply did not understand what registered mail is and why it exists. Perhaps he’s confused about process servers as well. But his continued inability to explain how his “system” works (without creating some serious ethical and/or insurance issues) is just, well, sad.

    anon: I certainly hope that most major firms protect themselves this way.

    Exactly what way is that? None of the major firms I contacted use mailroom staff to screen registered letters to attorneys and discard the letters deemed by the staff to contain prior art relevant to a client’s pending application. None. They all laughed at the idea.

  27. it is now all hunky dorey and totally ethical.

    What could be more unethical than a lawyer doing billable work for free? Apart from receiving non-threatening, informational letters by registered mail.

  28. Also, nevermind I even said anything, the whole topic is stu pid. Nobody is screening out their registered mail to stop their attorneys from recieving a piece of art and an on is completely bonkers. And even if they were I don’t care.

  29. Anon seems to be implying that so long as you didn’t just have your buddy, an attorney, do the deed, and instead hired your buddy to do the deed, then that is a crucial difference. Presumably he means by it being crucial that it is now all hunky dorey and totally ethical.

  30. Ahhh, so hiring an attorney to do your work for you makes it all better?

    What are you talking about, 6?

  31. Ahhh, so hiring an attorney to do your work for you makes it all better? I swear to go d. Attorneys, so tar ded.

  32. You’re changing the subject again. I’m perfectly happy to explore that topic in a little more detail, but I’m still waiting to learn how your mailroom staff is trained to discard registered letters.

  33. where it is perfectly fine to hire an attorney

    That is a missing piece. You are inserting a fact critically missing from the original conversation.

  34. Let me know if you still have trouble identifying the ethical issue.

    Oh, I understand perfectly well what you think the ethical issue is. I happen to disagree with you on that – there are lots of situations, including this one, where it is perfectly fine to hire an attorney to represent you and act on your behalf, so that you can remain anonymous.

    But, you’re trying to change the topic. The question that has been on the table since you first raised the topic 7 months ago is how you can have a mailroom staff throw away registered mail addressed to an attorney for the express purpose of preventing the attorney from seeing it. Now that seems like the bigger ethical issue.

    You said it could (and should) be done, though, didn’t you? But you won’t tell us how it works. Please, how does your mailroom staff sort the good registered letters from the bad?

  35. LOL

    Thanks for the archive. Here’s a hint:

      “can be done anonymously by having a friend at a distant law firm send the letter

    ” Let me know if you still have trouble identifying the ethical issue.

  36. Will you please let everyone know when you want to stop miscontruing the original discussion setup (and the apparent tie-in to the example of spam control)?

    How is he misconstruing it, anon? You never explained how that “apparent tie-in to the example of spam control” works with registered mail. Here, let’s go to the “archives”:

    Chas: I’ve historically done “third-party submissions” by simply mailing the prior art to counsel for the applicant with a note explaining why it is material (this can be done anonymously by having a friend at a distant law firm send the letter).

    anon: You have, at the least, highly questionable ethical issues with what you historically do, and at the most, possible fraud … The fact that you advertise yourself as associated with the Utah bar is fairly reprehensible … I would love to face you in court and have you had attempted such a stunt. $anction$ There’s a reason why our counsel is screened from unsolicited mail, even (and especially) anything that looks like unsolicited prior art. I certainly hope that most major firms protect themselves this way.

    MM: How does one tell whether an unsolicited registered letter contains prior art or not? Just curious. How much mail does your counsel refuse to accept?

    anon: It’s not difficult to screen this type of incoming material – you might have to have staff that can read.

    MM: And exactly what do you tell your “staff” to look for when they receive and open these letters? You do realize that your counsel will be sent the letter registered and the receipt will show that your counsel received the letter.

    anon: You haven’t worked in a firm with a mailroom, have you MM? You have no idea how a spam filter would work with snail mail, do you?

    MM: I’ve never received spam by registered mail. Tell me exactly how your counsels “spam filter” works, anon, to screen out “bad” letters sent by registered mail from “good” letters sent by registered mail.

    anon: Do you really think that just by sending a letter registered mail that you can dupe a system of screening attorneys from the unsavory practice of trying to trick them? Really? Does that actually need an answer?

    anon: you might try understanding the difference between personal and business mail, and what a firm is allowed to handle (regardless of registered mail address)…

  37. “it’s not unreasonable at all to argue that the term includes anything that can be taken apart at least partially disassembled such that its length width or height is reduced. ”

    That’s where you lose me. Irrational interpretations to a PHOSITA do NOT constitute a reasonable interpretation. If a PHOSITA like myself laughs when they read your BRI then it’s not reasonable.

  38. .
    There’s one political party for which any example of political correctness is too much.

    And there’s one political party for which no example of political correctness is ever too much.

  39. Sounds like the examiner who claims “everything is pivotably connected because if ya jest twist it hard enough, it’ll pivot” or “everything is removably attached, if’n yuh jest yank on it hard enough”.

  40. Will you please let everyone know when you want to stop miscontruing the original discussion setup (and the apparent tie-in to the example of spam control)?

  41. do I have the money to appeal to the Federal Circuit, who goes out of the way to w ank with the claim construction sometimes, and is there a director who is too stubborn to reopen prosecution when the case gets back? If yes to both, and the examiner didn’t bring in a second portable referene, meh, there’s at least a 50/50 shot.

    Great system we have here.

  42. Yeah I don’t know if D is saying BRI is always wrong-headed or just the particular BRI that was adopted in this case was wrong-headed.

  43. “You think you can just slap “portability” onto a claim and get it allowed because the prior art does not teach an “analogous” portable device?”

    That depends, do I have the money to appeal to the Federal Circuit, who goes out of the way to w ank with the claim construction sometimes, and is there a director who is too stubborn to reopen prosecution when the case gets back? If yes to both, and the examiner didn’t bring in a second portable referene, meh, there’s at least a 50/50 shot.

  44. “My question is: are there any limits to that rule?”

    Not that I know of.

    “Can an applicant define “black” to mean “white”? ”

    Not if they’re claiming “black”.

    “What is the point of 112p2 anyway?”

    To take care of claims drafted in the manner you’re suggesting?

  45. btw, nice attempted deflection from the fact that it was your reading skills that were deficient in regards to the post by 6.

    There’s a word for that: how does ‘dissembling’ sound? Maybe the phrase ‘moving the goalposts,’ or perhaps, ‘kicking up dust.’

    LOL – maybe it is just your typical Malcolm FAIL.

  46. Tell everyone,

    LOL – you first: tell everyone who was right (and why) in the Myriad decision and who was wrong.

    C’mon Malcolm, tens of thousands of words and (still) not yet the most important three. Still haven’t found the nuts yet, eh?

  47. Sounds like your experience is one of being the king’s tailors, fawning over the non-existent clothes.

    My practice includes the (ethical) part of advising the client when they have a ‘big loser,’ whether or not that ‘big loser’ belongs to the owner of the company or not.

    Perhaps you need to broaden the type of experience you have ‘earned.’ Or perhaps this is just another sign that you need to get into a profession that you can believe in.

  48. BRI may well be ‘wrong headed”

    There’s nothing inherently “wrong-headed” about the approach to examination or claim construction, provided that the useful canons of claim construction are followed. What’s far more “wrong-headed” is the idea that claims should ever be construed more narrowly than their broadest reasonable interpretation for the sole purpose of keeping them “alive.” The inappropriate use of that doctrine has been far more corrosive to our patent system than BRI could ever be.

  49. BRI may well be ‘wrong headed”, but sadly there is the “cold, dead hand of precedent” behind it – In re Morris.

  50. Joe Guiffrida is part of the 1% crowd?

    I don’t know. It’s highly probable.

    What I mean, though, is that he’s part of the “this is the company owner’s pet case so we have to get pushing it even though everybody involved knows it’s a big loser.”

    If you’ve never been down that road, you haven’t been practicing very long. Or maybe you were just never allowed to handle the “important” cases.

  51. The consideration here really needs to be: what is a troll who buys this patent going to say that “collapsable” covers when it asserts the j-nk patent against a weaker party?

    LOL – because actually enforcing patent rights is the ‘worst thing evah’ and automatically puts you into the same camp as the pejorative ‘Trolls.’

    /eyeroll

  52. Tell everyone, Tr 0llboy: do you believe that I should be able to claim a novel folding chair with the following words:

    1. A method for determining the likelihood that a patient is predisposed to throat cancer, comprising (1) obtaining a sputum sample from said patient; (2) determining the level of 6-TG in said sample, wherein the if the level is between 13 ug/L and 25 ug/L the patient is at an increased risk of throat cancer.

    What about using the exact same words as a previously granted method claim, but definining the words differently? Should that also be permitted?

    If you believe this should be allowed, explain why you believe that. In your answer, please discuss what you believe the purpose of requiring claims is, what you believe the purpose of 112P2 is, and the potential impact of your policy decision on members of the public who might be infringing the claims. Thanks, Tr 0llboy.

  53. LOL,

    Malcolm is always quick to tell others to READ what has been written – here he needs to try again as 6 expressly pointed out: “ against what it would ordinarily mean and a person of ordinary skill.

  54. Could term definition explain only partialy such term, and leave “among other things” as explanation of other aspects?

    One can certainly do that and people do it all the time. The effect of that definition is (1) to clarify that certain embodiments are expressly included within the scope of the claim comprises the defined term, and also (2) to indicate that those specifically recited embodiments are not the only embodiments that fall within the scope of the claim. This latter part is the risky part, at least when it comes time to rely on the definition to narrow the claim with respect to the prior art.

  55. you’re simply talking about a situation where the applicant was attempting to be his own lexicographer

    No, I’m talking about something more specific and extreme than that. I know the case law about applicants being their own lexicographer. My question is: are there any limits to that rule?

    Can an applicant define “black” to mean “white”? Can an applicant define “attached” to mean “separate”? Can I define “method” to mean “composition”? It’s pretty easy to see where that rule, without reasonable limitations, can be extremely disruptive to the functioning of the patent system. One could present a claim to the USPTO that, on its face, plainly means one thing to the skilled artisan before the specification is consulted but means something completely different only after all the definitions of all two hundred words in the claim are consulted.

    What is the point of 112p2 anyway?

  56. Are all prior art devices inherently “collapsable”?

    Depends on how you define “collapsable.”

    To the extent the term is not defined and is merely tossed in as a dependent claim that suddenly becomes “important” because the device is otherwise anticipated, it’s not unreasonable at all to argue that the term includes anything that can be taken apart at least partially disassembled such that its length, width or height is reduced. And that covers a great many manufactures.

    The consideration here really needs to be: what is a troll who buys this patent going to say that “collapsable” covers when it asserts the j-nk patent against a weaker party?

  57. a portable device that is analogous no doubt.

    “Portability” by itself is obvious per se.

    You think you can just slap “portability” onto a claim and get it allowed because the prior art does not teach an “analogous” portable device? That’s ridiculous.

    That sort of functional limitation is complete b.s. absent a structural solution, reciting in the claim, to the problem of imparting portability to the prior art device. Likewise with j-nk like “handheld” and “collapsible.”

  58. “On remand, the PTO should be able to find some prior art that shows wireless RF two-way communication that fits this case. ”

    As well as a portable device that is analogous no doubt.

  59. you’re simply talking about a situation where the applicant was attempting to be his own lexicographer in redefining “metal atom and a halogen atom” against what it would ordinarily mean and a person of ordinary skill. There is quite a bit of case law addressing that situation.

  60. Ah, yes. We’ve all seen this story play out before.

    Joe Guiffrida is part of the 1% crowd?

  61. I second that question with”:

    Could term definition explain only partialy such term, and leave “among other things” as explanation of other aspects? Isn’t it just dead weight that do not need to be accounted for?

  62. “broadest reasonable interpretation” requires consideration of the specification”

    Nothing new there. And the PTO interpreted the claim correctly, as Dennis noted.

    Question for Dennis (or anyone else): is there case law addressing claims that are misleadingly broad or narrow on their face? i.e., can one obtain a claim to “A composition comprising a metal atom and a halogen atom”, where the phrase “a metal atom and a halogen atom” is expressly defined shockingly more narrowly in the specification (such that the claim is, in fact, valid over the prior art)? What about the opposite scenario, where a claim appears very narrow but a clause in the claim is defined surprisingly broadly in the specification?

  63. I wouldn’t call the prior art failing to disclose features of the claims as “technical.”

    The prior art certainly does disclose every feature of the claims, which are ultimately going nowhere.

    Why would anyone waste their money on this j-nk?

    the patent application in question is would be their first post-formation patent issuance, and the company’s first patent issued listing its president (Joe Guiffrida) as an inventor.

    Ah, yes. We’ve all seen this story play out before.

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