Acting Director Rea to Step Down from USPTO

by Dennis Crouch

In a message to her USPTO colleagues, USPTO Acting Director Teresa Stanek Rea has announced her intent to leave the agency in the near future. Director Rea joined the USPTO in 2011 as Deputy Director after Sharon Barner stepped down from that position. Rea worked closely with then USPTO Dave Kappos in developing and implementing key elements of the America Invents Act. She has been Acting Director since Kappos stepped down in January 2013. Prior to joining the USPTO, Rea was a partner at the law firm of Crowell & Morning.

The Obama administration has not yet nominated a replacement for Dave Kappos. That decision has apparently been delayed for the past nine months because the position of Secretary of Commerce (the USPTO Director's Boss) was also open. Penny Pritzker has now assumed office as the 38th US Secretary of Commerce and we can expect an announcement of a new USPTO director within the next few weeks. It is unclear whether Director Rea will stay on until an appointed director takes office. If not, the usual succession decision would place Peggy Focarino with the duties of Acting Director (although without that title). Ms. Focarino is currently Commissioner of Patents.

209 thoughts on “Acting Director Rea to Step Down from USPTO

  1. Tourbillion,

    Malcolm has lost the ability (or the inclination) to be able to tell what is dripping down his chin.

    His great conflation legal theory of WHATEVER is in full force.

  2. Paul, much of the commentary here is irrelevant to Rea leaving. As I should imagine you might know, having asked the same types of rhetorical questions a half dozen times or so. May I suggest that if you find it distasteful, simply move to another thread? While this may regrettably entail relinquishing the satisfying moral preening that comes with being Hall Monitor, it may have the salutary effect of lowering the blood pressure.

  3. “Instead we should express thanks for the work she has done and best wishes for the future.”

    What work did she actually do? I read some director’s blog posts, most just self-serving copyright nonsense that one wonders why the PTO director would be involved in, but meh. Other than that I haven’t seen much out of the good director’s office. I’m sure she kept up with day to day operations and all that, but what else?

  4. A claim that recites a “new function” for an old structure is not a claim to a new eligible invention. It’s a claim to a new “function. If the invention is a new object (e.g., an article of manufacture or a composition of matter), the distinguishing structure of that object needs to be described.
    No … not an “old structure” … an old structure that has been reconfigured into a new structure. Regardless, there is no requirement that the “distinguishing structure” be described in the claims. Basic stuff.

    But if your “invention” is the newly recited function, then you’ve got to describe in your claims (or indirectly, via the spec) the new distinguishing structural features that allow the functionality to be achieved. Because that’s the “invention” that is eligible for patenting. Not the function
    I only have to disclose enough for one having ordinary skill in the art to make and use the invention. Again, basic stuff.

    Do you not understand that we disagree about what is required and I’m explaining to you the basis for my position?
    I agree that we disagree. However, the basis for my arguments are 35 USC 112. The basis for yours? A dislike of software?

  5. MM I don’t know what you do for a living but I hope you’re not an economist. Those billions of dollars would be losses to the tech industry – meaning they would be losses to shareholders of the tech industry – meaning they would be losses to the big pension funds who hold stock directly (or through mutual funds, indirectly) in the tech industry. The big pension funds, if you don’t know, hold the retirement money of middle class America.

    The class warfare Kool-Aid does not become anyone particularly when it starts dripping down one’s chin.

  6. LOL, my thoughts exactly. Although, I have noticed in recent months RIDICULOUS requirements (many contrary to the law) from the intake division.

  7. 1%…?

    What would Jane say?

    I don’t know. I do know that it’s unfortunate for your PR purposes that the Great Patent Casino caters to the whims of the wealthy gamblers who make up the vast majority of its “clients.” Most people (you know, the kind of people that still have voting rights, in spite of the efforts of the same well-heeled business people to take them away) do not share your views about the irrefutable essential awesomeness of, e.g., software patents, patents on methods of determining prices for stuff, and other j*nk. Pointing out that the most vocal adherents of your views are almost invariably people that are already eating high on the hog is additional useful information that people can consider when “making their choices”.

    Maybe I should patent a method of communicating that information “automatically”, using a computer? LOL.

  8. How about the fact that Malcolm himself voluntarily admitted that ‘configured to’ is structural language?

    How about the fact that Tr0 llb0y voluntarily admitted that his parole officer caught him behind the 7-11 “making friends” while wearing only a hospital gown?

    Fun game, Tr0 llb0y. Will you start the next round, as usual?

  9. duplicity

    Tr0 llb0y back to his game of finding “equivalance” somewhere on the Internet — anywhere! — to justify the behavior of his arrogant s*ckie friend who pops in every few weeks to tell everyone that only ignorant dishonest people disagree with his views because … “technology”! Or something like that.

    Good luck, Tr0 llb0y. Never stop believing that the world really does care about your bizarre obsessions with the pseudonyms people use on other blogs, no matter what your nurse tells you.

  10. “Ultimately, the PTAB deemed a processor is a “verbal construct devoid of structure.”"

    I think to be clear, the deemed a processor “configured to x” is a verbal construct devoid of structure. Processors themselves are fine.

  11. “That is the great thing about the USPTO, the left hand doesn’t know what the right hand is doing. Additionally, the PTAB doesn’t know what the Federal Circuit is saying.”

    See, some people want to apply the law, other people want to apply the Federal “we make factual findings as a matter of law” Circuit “law”.

  12. How about the fact that Malcolm himself voluntarily admitted that ‘configured to’ is structural language?

    Or how about the fact that Malcolm himself voluntarily admitted that he understood the controlling law regarding the exceptions to the printed matter doctrine?

    LOL – some very toasty facts.

  13. You’re right NWPA, what they should have said was: link to en.wikipedia.org

    HAHHAAHAHAHAHA

    “The ability to infer the (hypothetical) meaning of a nonsense word from context is used to test for brain damage.”

    ^what the claimed term really is: a test for brain damage!

  14. Leopold,

    How do you feel about the ‘maturity’ of the *click* conversational technique

    LOL, because I employ it so arbitrarily and unfairly.

    Just like I tell Tr0 llb0y to go f himself for no reason! It’s so unfair. Because Tr0 llb0y is a saint and a gentleman who would never, say, accuse someone of being prejudiced against blacks based on some comment that Tr0 llb0y refuses to produce for everyone. No, Tr0 llb0y would never stoop so low.

    Tr0 llb0y always takes the high ground and is always willing to discuss his views plainly and matter-of-factly. Like his view on the eligibility of purely mental processes. Tr0 llb0y has been very clear that he believes that purely mental processes should be eligible for patenting. Oh wait. It’s the opposite, right? In any case, he’s answered the question “many many many times” and we’re all supposed to know the answer. Because he’s a saint and a gentlemen and you’ve never met a more honest “intellectual”.

  15. Malcolm,

    Why do you hide behind an ever-changing line-up of pseudonyms when you post over at PatentDocs and then QQ about your own perception of someone doing the same thing here?

    Why the duplicity?

  16. “Specifically, we construe processor in “a processor adapted
    to” as a nonce word invoking § 112, sixth paragraph, and find that the
    Specification does not disclose sufficient structure, in the form of a general
    purpose processor and an algorithm, corresponding to “perform an action in
    response to identifying the at least one object descriptor that matches the
    first object descriptor,” as required by Aristocrat Techs. Australia Pty Ltd. v.
    Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).”

    Wait for it, wait for it…

    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

    And also, let me just say that I’d very much like to see that structure in the drawings.

  17. That’s the way things used to be, but now we usually find that these people have committed many acts that are less than honorable.

    Sorry, Paul, but now public service usually means lining your pocket or lining someone else’s pocket to set yourself up for your exit job.

    Reality.

  18. s uckie the s uckpuppet: Functional limitations are used ALL THE TIME for machines and machine components

    Right, but if the only difference between the claimed article or composition and the prior art is the new function, you have to recite the distinguishing corresponding structure (directly or indirectly if you rely on 112p6) responsible for the new functionality or your claim is unenforceable j*nk.

    Go ahead and show everyone a few of the examples that you are thinking of. Go find, say, some claims to a new can opener and show us where you see new functionality, sans structure, as the only difference between the prior art and the claimed invention. Then we can discuss whether such a claim is enforceable. Should be easy for you, right? Because this happens “all the time.”

  19. Paul,

    Your comments and kvetching are coming across as overbearing and Pollyanna.

    While it may not be the most polite thing to do, commenting on how the Office is a royal CF under her watch – she is in charge of the PTAB, you know, is entirely appropriate.

    You don’t have to join in that conversation, but your attempt at censorship is itself uncalled for.

    Please stop.

  20. Do you really think that you are qualified to write a post on this

    LOL. Only people that gramps thinks are “qualified” can comment here! Too funny.

  21. But the “configurable machine” is still the same old “configurable machine.”

    No. Different arrangement of parts = different machine.

    Run with it, man. It’s a winner! Type it in bold caps with italics and it’ll be even more persuasive. Maybe get Gene Quinn to put on a toga, climb to the top of a high hill, and scream it out of a megaphone until his lips bleed. Then nobody (except the truly ignorant, of course) will ever doubt your awesome conclusion!

    The fact that some people believe something doesn’t impress me in the slightest.

    You’re so awesome! A real free-thinker.

  22. Do you really think that you are qualified to write a post on this MM? You are one of the Palin boys that mock the Church-Turing Thesis and now you are going to try to tell us about electronic and information processing inventions…

    **click**

  23. claims are only required to distinguish the claimed invention over the prior art

    A claim that recites a “new function” for an old structure is not a claim to a new eligible invention. It’s a claim to a new “function. If the invention is a new object (e.g., an article of manufacture or a composition of matter), the distinguishing structure of that object needs to be described.

    There is no requirement to describe (in the claims) the structural features that confer the part with its stated functionality.

    Right, you can certainly recite means plus function or other functional language in a claim. Thats permitted. But if your “invention” is the newly recited function, then you’ve got to describe in your claims (or indirectly, via the spec) the new distinguishing structural features that allow the functionality to be achieved. Because that’s the “invention” that is eligible for patenting. Not the function.

    Why do you have such trouble understanding this concept?

    I understand “the concept” perfectly. Do you not understand that we disagree about what is required and I’m explaining to you the basis for my position?

    “Functionality” is not an eligible invention for patenting. You can’t tack “new functionality” onto a claim to an old device or compossition and get an enforceable patent. And it’s never been enough to say “Oh well I’ve described this new functionality so that one skilled in the art could make a device/composition with that functionality so give me my patent on any and all modifications to the old composition, whatever they may be, regardless of the form they take, as long as they achieve the stated funcationality.” Patent law has never worked that way.

  24. But the “configurable machine” is still the same old “configurable machine.”
    No. Different arrangement of parts = different machine. I can make dozens of different machines from an erector set … I just rearrange (configure) them differently.

    You can’t patent the “newly configured old configurable machine” merely by reciting a new function achievable by the new configuration unless you describe the new configuration in structural terms
    Been happening for decades. Where have you been?

    This is the way it has always been for claimed articles of manufacture and composition of matter
    No – not even close. Functional limitations are used ALL THE TIME for machines and machine components (which are articles of manufacture or an improvement to a machine, depending upon how you want to look at it).

    until this magical hand-waving by a few judges and the PTO changed everything to please some people who “wanted to get rich off the Internet”.
    Uh … most of the important decisions were rendered well before the ‘internet boom.’ Nice try though.

    Plenty of people who understand the technology and the law are persuaded by this (including me).
    I read where a majority of Republicans believe that Obama is hiding information about his birth. The fact that some people believe something doesn’t impress me in the slightest.

    For starters, the “technology” (to the extent that term is even applicable) is not very difficult, particularly at the level practiced of the worst offenders in this area
    A lot of people practice not-very-difficult chemistry (e.g., burning wood, making beer). However, that doesn’t mean that they understand what is actually going on at a fundamental level.

    Let me know if you have trouble understanding any of the “facts.”
    When you present them, let me know.

  25. We already have people willing to say that actual hardware is abstract.

    Who? Name them and show us the quote so we can see why you are so very concerned.

    Or maybe consider shutting tfu with your asinine lies?

    I realize it’s tempting to make stuff up when “your side” is stacked top to bottom with some of the most arrogant, caustic and self-entitled blowhards that ever walked the face of the earth. But you’re not “helping” your cause any.

    LB is lending you a hand and all you can do is bite it. That’s not going to work out well for you.

  26. Silly games like *click* Malcolm?

    You are doing that Accuse-others-of-that-which-you-do thing again.

    And that is your main specialty.

    It is also excessively trite and transparent.

    @ta boy

  27. half of the CAFC has no problem with jeopardizing a few million claims worth billions of dollars

    Worth “billions of dollars” to whom? Oh right: to the top 1% income bracket who can easily afford the loss.

    The negative economic impact of the loss of patent protection for software will be close to zilch.

  28. By the way, s*ckie, your lame s0ckpuppetry bugs
    I see MM has deemed the conversation over and has now engaged in insults and threats. Way to uphold your reputation MM.

  29. it needs to be claimed like other allegedly new “machine components” and any other physical composition: by a description of the structural features that confer the part with its stated functionality
    You still don’t get that claims are only required to distinguish the claimed invention over the prior art … not enable the invention (i.e., the difference between the 1st and 2nd paragraphs of 35 USC 112). There is no requirement to describe (in the claims) the structural features that confer the part with its stated functionality.

    Why do you have such trouble understanding this concept?

  30. Aharonian says a C source-code listing is “clearly” a computer program.
    Then he is wrong.

    If you’re telling me that a “computer program” is not “software,” then we’re back again to the original point
    What I said, quite clearly, is that there is a difference between a computer program (i.e., software) and a computer program listing (i.e., a printed list of the instructions).

    By (knowingly) interchanging source code listing with a computer program, you are deliberately mixing apples with oranges.

  31. Malcolm, what is controlling law

    *click*

    If Tr0 llb0y has a point to make in response or rebuttal to my comment, Tr0 llb0y should learn how to articulate the point instead of playing silly games.

    Of course, it’s much easier for Tr0 llb0y to play silly games. That’s pretty much all he does here. That’s his speciality.

  32. Gene Quinn even admitted that hardly anything on the market is actually covered by a patent. But people view patents as being necessary for business success.

    Funny.

  33. No said in reply to MM…

    Missed the part about qu

    By the way, s*ckie, your lame s0ckpuppetry bugs so when the “answers” dry up, you know why.

    Or maybe we need a little reminder about why Tr0 llb0y was busted and outed?

  34. a new configuration means a new relative arrangement of parts of elements (i.e., a new structure).

    Sure. But the “configurable machine” is still the same old “configurable machine.” You can’t patent the “newly configured old configurable machine” merely by reciting a new function achievable by the new configuration unless you describe the new configuration in structural terms. Basic stuff.

    New configuration = new structure (as well as new function) = patentable.

    It’s “patentable” only if you recite the structure. you cannot recite “Old configurable machine configured in a new way, wherein said configuration confers the ability to [insert new non-obvious awesome utility here]. This is the way it has always been for claimed articles of manufacture and composition of matter … until this magical hand-waving by a few judges and the PTO changed everything to please some people who “wanted to get rich off the Internet”.

    ust don’t delude yourself into thinking that your arguments on the facts have any basis and/or will persuade people who do understand the technology.

    Plenty of people who understand the technology and the law are persuaded by this (including me). For starters, the “technology” (to the extent that term is even applicable) is not very difficult, particularly at the level practiced of the worst offenders in this area.

    I don’t have the hubris to debate you on factual issues regarding biotechnology.

    Oh, the irony.

    1. A new antibody, wherein said antibody recognizes [insert new , non-obvious antigen here].

    Does that claim recite structure that distinguishes the new antibody from old antibodies? No. That claim is j*nk. And that’s exactly what the Supreme Court would tell anybody who challenged such a claim “all the way” up the chain.

    No “hubris” required to make that call. Let me know if you have trouble understanding any of the “facts.”

  35. Leopold,

    How do you feel about the ‘maturity’ of the *click* conversational technique so often employees by Malcolm in his absence of anything intelligent (or intellectually honest) to say?

    Your one-sided tendencies belie your true nature.

  36. While a few comments on this posting have been appropriate, the mass of them have been irrelevant, thoughtless and inappropriate. Not something that we as a profession should be giving to Terry as a keepsake.

    The ONLY appropriate comment in response to this news is to express our appreciation and thanks to Terry for her service at USPTO and our best wishes for the future.

    I have complained by e-mail to Dennis on this subject and he is invited to comment.

  37. Malcolm, what is controlling law as to the exceptions to the printed matter doctrine and why are they important to this legal discussion.

    Truly a simple question, as you have already volunteer the admission against interests.

  38. I’m just expressing my opinion. We definitely need people a the PTO who will like what they do and are vocal proponents of the patent system.

  39. I’m not a hypocrite. I make a very good living from patent law, “helping” inventors and companies get patents which are government help in furthering their business, or so they think. What we do is legal after all and viewed as legitimate.

    I was telling the truth. We need people at the PTO and politicians who will expand our influence and grip on business. Patent lawyers need to be viewed as essential to society and innovation – so that I can continue to make an awesome paycheck. Gene Quinn even admitted that hardly anything on the market is actually covered by a patent. But people view patents as being necessary for business success.

  40. What has this to do with Terry’s departure, which is the subject of this post?

    Shame on you for your thoughtless irrelevance

  41. C source-code stored in (and capable of being executed by) a computer (e.g., in a storage medium) is software, and that is equivalent to hardware.

    Okay, so if “hardware” is “equivalent” to a “machine component” than it needs to be claimed like other allegedly new “machine components” and any other physical composition: by a description of the structural features that confer the part with its stated functionality, and not by description of the new functionality itself, or by description of its “new use”, or by description of the manner in which the article was produced.

    Your “argument” depends on a very kindergarten level interpretation of section 101 (i.e., the Rader interpretation). You’ll never convince the Supreme Court to interpret 101 that way. The days of making that happen are long past.

  42. the computer is “equivalent” to a “configurable machine
    To be configurable means to be capable of having a different configuration, and a configuration means “relative arrangement of parts or elements.” Hence, a new configuration means a new relative arrangement of parts of elements (i.e., a new structure).

    the information in the instructions is not (and should not be) protectable by patents
    New configuration = new structure (as well as new function) = patentable. We get that you don’t want software to be patentable. However, to make your argument, you have to ignore that software changes the structure of a computer.

    Perhaps that argument may ultimately prevail. However, it won’t be because it is an intellectually honest argument. It will prevail because there will be enough anti-software proponents to safely ignore the facts.

    Your arguments are based upon policy (anti-software), not facts. Just don’t delude yourself into thinking that your arguments on the facts have any basis and/or will persuade people who do understand the technology. I don’t have the hubris to debate you on factual issues regarding biotechnology. Unfortunately, you don’t share the same qualms.

  43. How about thanking Terry for the hard work and goodwill she has put into her time at USPTO? Isn’t this what we should be doing?

  44. Is this mass of irrelevant self-serving claptrap REALLY the way to mark the departure of a distinguished and able patent attorney from the USPTO after some years of public service?

    Instead we should express thanks for the work she has done and best wishes for the future.

  45. Go to Barnes and Noble. Pick out a book. Does it seem like it was manufactured to you? If so, it is a manufacture.

    Next, give the book to your robot chef. Does your robot chef function differently when it reads the book? If so, the book is a machine component.

    The point of this exercise is to demonstrate that the “argument” you are making opens up a can of worms that represents a far more radical change to patent law than do the arguments made by “the other side”.

    Please also recognize that nobody is arguing that discs are not “articles of manufacture” in the everyday sense of that term. The argument being made is that a claim to an old medium for storing information can not be both eligible for patenting and patentable over the prior art merely because the claim recites a functionality that is acquired when the computer “reads” the “new information”. Such a claim effectively protects the “new information” (a problem by itself) and, furthermore, it protects infinite unknowable means of expressing the “new information” that might endow a computer with the recited functionality (a different problem, but still a problem).

  46. We agree with Appellant that the claim language requiring programs that enable a processor to carry out specific functions defines structural limitations, and is not merely a recitation of intended use. See Ultramercial,Inc. v. Hulu, LLC, 722 F.3d 1335, 1348 (Fed. Cir. 2013) (“[P]rogramming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”) (quoting In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994)).

  47. Then , there are some at the PTAB don’t believe the same. This statement is from Ex Parte Kawashima 10821732, which was decided on Wednesday:

    We agree with Appellant that the claim language requiring programs that enable a processor to carry out specific functions defines structural limitations, and is not merely a recitation of intended use. See Ultramercial,Inc. v. Hulu, LLC, 722 F.3d 1335, 1348 (Fed. Cir. 2013) (“[P]rogramming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”) (quoting In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994)).

    That is the great thing about the USPTO, the left hand doesn’t know what the right hand is doing. Additionally, the PTAB doesn’t know what the Federal Circuit is saying.

  48. A C source-code listing is not equivalent to hardware. A C source-code listing is no more “software” than a picture of a tree is a tree. A C source-code listing is a visual representation of the software, but it isn’t software.

    OK, but I refer you back to the first sentence in the Aharonian quote that I started this discussion with. Aharonian says a C source-code listing is “clearly” a computer program. If you’re telling me that a “computer program” is not “software,” then we’re back again to the original point, which is that a ban on patenting computer programs as such really is not that dramatic an event.

  49. At the end of the day, the analogy the courts will rely on is that a computer is a configurable machine that can be “instructed” by software to perform different information processing tasks. In that sense, the computer is “equivalent” to a “configurable machine” and software is “equivalent” to any set of ineligible instructions for configuring that machine. The instructions aren’t “machine components” and whether they are placed on an old tangible media or carried in a signal or stored in a person’s brain, the information in the instructions is not (and should not be) protectable by patents.

  50. Go down to Best Buy. Pick out a packaged DVD in the “Software” section. After you pay for it, open it up, take out the DVD and hold it in your hand? Does it seem like it was manufactured to you? If so, it is a manufacture.

    Next, put it in your computer? Does your computer function differently when you put it in? If so, it is a machine component.

    So easy to understand for most ….

  51. and show us where in the archives you think it isn’t.

    Nice misrepresentation of what I said INANE.

    I wanted you to commit to your denial before I – not you - present the link that exposes your 1ie.

    Funny how you want to dodge making that commitment.

  52. I just wrote a really cool program. How many manufactures/machine components do I have?
    I have an old bottle opener that is made out of a single piece of metal that can both pop open caps and punch a hole in a can. How many manufactures/machine components do I have?

  53. Computer hardware is also a composition of matter. A C source-code listing is not.

    A C source-code listing is not equivalent to hardware. A C source-code listing is no more “software” than a picture of a tree is a tree. A C source-code listing is a visual representation of the software, but it isn’t software.

    C source-code stored in (and capable of being executed by) a computer (e.g., in a storage medium) is software, and that is equivalent to hardware.

  54. Talk about your nice fallacies: “ makes no sense at all to the layperson

    Please explain the legal principle you are relying on with that statement.

  55. Comments on form without you engaging the substantive matters is more than just a little shallow Malcolm.

    By the way, you still owe me an answer to my copyright question.

    But please, play the @$$hat some more – that is one of your specialities.

  56. Software ‘in the mind’ is not software.

    See the lesson I have attempted to teach Ned regarding the fact that software can earn a right of copyright.

    Once again, you choose to play the Macolm-like game of pedantic dust/kicking.

    Stop and think.

  57. That is outrageously off base
    … and all three opinions are labeled as informative.

    A synopsis of these cases are as follows. Draft a claim that recites “processor configured/adapted/programed to perform [step a, step b], and you will be deemed to have drafted a means + function claim. You will then get a 112, 2nd rejection and possibly a 112, 1st rejection as well.

    The PTAB writes To determine whether the presumption is overcome, we must decide whether the term “processor” as used in claim 1 is one that connotes structure, or is instead a verbal construct devoid of structure that is used as a substitute for the term “means for.” See Lighting World, 382 F.3d at 136
    Ultimately, the PTAB deemed a processor is a “verbal construct devoid of structure.”

  58. I am far more intellectually honest than you Leopold, as my example – as absurd as you may find it – fits what you are attempting to do on several levels:

      - the attempt to merely label as silly the fact of equivalence (and the refusal to even acknowledge the meaning of the word, instead seeking to kick up dust)
      - the game-playing between ‘is’ and ‘equivalence’
      - the game-playing with the statutory categories (you do know that manufacture is a statutory category, right? You do know that software is a technical machine component, right?

      Just like your attempted lecture on having a mature conversation, your lecture here and your implication that I have not been intellectually honest missed the mark.

      And badly so.

      This is a typical result of yours, and seems to happen quite regularly when you charge the red cape of ‘anon said.’

  59. Software IS a manufacture and a machine component.

    Love the bold and caps. Why not italics, too? Scream the conclusion louder! That’s the winning way. Or, more likely, a graceless and memorable way to lose.

  60. Try this: Software IS a manufacture and a machine component. Knock yourself out.

    I understand what you’re trying to say, but I don’t think software fits very well under either of those categories of things until you embed it into a computer-readable medium. Manufactures and machine components are countable things. I just wrote a really cool program. How many manufactures/machine components do I have?

  61. Standard-cell integrated circuits (ICs) are designed in the following conceptual stages, although these stages overlap significantly in practice.

    A team of design engineers starts with a non-formal understanding of the required functions for a new ASIC, usually derived from requirements analysis.

    The design team constructs a description of an ASIC to achieve these goals using an HDL. This process is analogous to writing a computer program in a high-level language. This is usually called the RTL (register-transfer level) design.

    Suitability for purpose is verified by functional verification. This may include such techniques as logic simulation, formal verification, emulation, or creating an equivalent pure software model (see Simics, for example). Each technique has advantages and disadvantages, and often several methods are used.

    Logic synthesis transforms the RTL design into a large collection of lower-level constructs called standard cells. These constructs are taken from a standard-cell library consisting of pre-characterized collections of gates (such as 2 input nor, 2 input nand, inverters, etc.). The standard cells are typically specific to the planned manufacturer of the ASIC. The resulting collection of standard cells, plus the needed electrical connections between them, is called a gate-level netlist.

    The gate-level netlist is next processed by a placement tool which places the standard cells onto a region representing the final ASIC. It attempts to find a placement of the standard cells, subject to a variety of specified constraints.

    The routing tool takes the physical placement of the standard cells and uses the netlist to create the electrical connections between them. Since the search space is large, this process will produce a “sufficient” rather than “globally optimal” solution. The output is a file which can be used to create a set of photomasks enabling a semiconductor fabrication facility (commonly called a ‘fab’) to produce physical ICs.

    Given the final layout, circuit extraction computes the parasitic resistances and capacitances. In the case of a digital circuit, this will then be further mapped into delay information, from which the circuit performance can be estimated, usually by static timing analysis. This, and other final tests such as design rule checking and power analysis (collectively called signoff) are intended to ensure that the device will function correctly over all extremes of the process, voltage and temperature. When this testing is complete the photomask information is released for chip fabrication.

    These steps, implemented with a level of skill common in the industry, almost always produce a final device that correctly implements the original design, unless flaws are later introduced by the physical fabrication process.

    There is no reason on earth that new ASICs should be allowed to be claimed by reciting their desired “new” functions. In that sense (and in that sense only), hardware and software are “equivalent.”

    But LB is absolutely correct: the “argument” that hardware and software should be treated identically for eligibility purposes (whereby, presumably, they would “rise and fall” together) because they are “equivalent” is a terrible argument.

    Why are they “equivalent”? Because each can process information? Is that the “argument”?

  62. I am kind of busy, but certainly I think that a computer readable media falls within the statute. I think that it is clearly a machine component.

    Sigh. Sure it is. But a C source-code listing is not a computer-readable medium. Why can’t we talk about one thing at a time?

  63. Who?

    It’s in the archives, but we’re not at liberty to tell you until you flatly deny it and show us where in the archives you think it isn’t.

  64. I am kind of busy, but certainly I think that a computer readable media falls within the statute. I think that it is clearly a machine component.

  65. The computer hardware and the C source listing both capture the invention just in different forms.

    I agree, NWPA. However, one of those forms doesn’t fall under the statutory category of process. We could rewrite the statute, and maybe we should. But I don’t think it is helpful to rail against illogic and ignorance on the part of the judiciary while at the same time pretending that an abstraction (i.e., a list of instructions) is a mechanical component. That’s a stretch for those of us who understand the notion, and it makes no sense at all to the layperson.

  66. Or perhaps you have a specific example in mind?

    “Oh yeah, find where it’s not in the archives!”

    Let’s have a flat denial from you before I produce the link.

    “You’ll have to deny it before I tell you what you’re denying.”

    Between you and N-Dubz, it’s like being in grade school again. Only, without the education.

  67. LB: your comment brings up the issue that the courts need to treat these new innovations with respect.

    The computer hardware and the C source listing both capture the invention just in different forms.

    Just as in mechanical systems often the form of the material does not make a difference.

    Please LB, do not fall into the anti trap of trying to find some historical way to understand information processing. It is new. It is a new technology with a new science. The courts have not tried to understand it–to their eternal shame.

  68. No INANE, your ‘allusion’ that what I say is not in the archives is false.

    Or perhaps you have a specific example in mind?

    Or perhaps, you wish to deny the quote you made that plainly revealed your infringer bias, and the fact that that quote resurfaced several times over the course of several months after your little oopsie?

    LOL – please keep begging for a Calvinball face sp1ke. Let’s have a flat denial from you before I produce the link. Please.

    Make my day.

    (said in the best Harry Callahan tones)

  69. “Wood is not metal”

    That is the essence of your argument, Leopold.

    It is not persuasive.

    Further, it is completely unclear why exactly you are attempting to align with the anti-software patent view.

    What is up with that?

  70. But a ban on patent computer programs as such doesn’t keep

    WRONG – I already raised this point, Leopold.

    (sigh) a return to the CRP – run away from the valid counterpoint – and CRP again strategy.

    Leopold, computer hardware and computer software are both manufactures.

    Deal with it.

  71. Yet again with the (attempted) subtle twist to “is” from “equivalent.”

    Why do you think that it is not plainly evident that you are attempting the very same game that Malcolm and 6 play?

    Try this: Software IS a manufacture and a machine component.

    Knock yourself out.

  72. Perhaps we should dig through the archives

    LOL, like anything you say is “in the archives” actually is.

    Keep digging.

  73. Should someone be able to design around your hardware by putting a little bit of it in software?

    No. But a ban on patent computer programs as such doesn’t keep you from protecting your invention against this kind of design-around. Why are we insisting on making the debate about something it’s not really about?

    I agree they are different things, just a wood and metal are different but can be equivalent materials for mechanical cases.

    Wood and metal are both solid compositions of matter, NWPA. Computer hardware is also a composition of matter. A C source-code listing is not.

  74. How’s the weather in Alaska? I know you don’t believe in evolution either.

    I suppose that’s equivalent to a witty remark?

  75. Leopold,

    Very poor attempt at spin: “Assuming that is true” means that you cannot turn around and claim the same thing is a false argument.

    Better tr011ing please.

  76. LB: let’s just look at it from a protection point of view. Should someone be able to design around your hardware by putting a little bit of it in software?

    And vis-a-versa. I agree they are different things, just a wood and metal are different but can be equivalent materials for mechanical cases.

  77. INANE,

    I see that you are aching to take your usual Calvinball face sp1ke yet again.

    Perhaps we should dig through the archives for that oopsie post from you showing your blatant Infringer’s Rights outlook?

    LOL – you have no credibility in these discussions.

    At all.

  78. It does mean something.

    Whether or not you are willing to recognize that it means something is a completely different matter.

  79. Here’s a sentence for you: Software is equivalent to firmware and both are equivalent to hardware.

    Here’s another sentence for you: A description of something is equivalent to the thing itself. And another: Instructions for carrying out a task are equivalent to actually performing the task.

    Sure, if you want to say that “software is equivalent to hardware” then knock yourself out. But a source code listing is not an apparatus, no matter how “equivalent” you say it is.

  80. rent-seeking

    Funny way to view the law as written and its intent to protect the rights of inventors.

    Hmmm, I see that you also try to co-opt ‘Truth.’

    Talk about the use of vacuous scripts…

    The word for you: hypocrite.

  81. What is false about ‘equivalent?’

    Uh, nothing is false about ‘equivalent’. Is that really what you wanted to know?

    When I suggested that you use it in a complete sentence, I meant a complete sentence that actually means something.

  82. LOL – what a F’n copout.

    So very Malcolm of you.

    Here’s a sentence for you: Software is equivalent to firmware and both are equivalent to hardware.

    Come to think o fit, you still owe me some answers…

    What are the chances that you will disappear once again without providing them?

  83. It is equivalent, Leopold.

    Your labeling it as ‘foolish’ won’t change the fact of its equivalence.

    How ‘adult’ is it for you to persist in your wrong-thinking on this? to label a fact as foolish?

    And please stop with the Malcolm-style goalpost moving, as your trying to use “same as” is EXACTLY like the little tiff between you and 6 on a recent thread.

    NWPA – this is exactly the type of inconsistency from Leopold that I mentioned. He refuses to recognize what a PHOSITA recognizes because he happens to think that equivalence is ‘foolish.’

  84. Assuming that is true, how does a response based on false arguments help?

    We have to do everything we can. It won’t be long before people start arguing that everything made of metal is abstract, and then we won’t even be able to invent iron age technology anymore. You don’t understand how deep this conspiracy goes.

  85. We need someone with a good hardcore rent-seeking mentality to further expand patent laws hold and encroachment on technology innovation. Somebody like a Saul Goodman from the show Breaking Bad, but the parasitic, entitlement-minded patent attorney version.

  86. What you utterly fail to grasp is that the rejection won’t stop at the claim of the software. We already have people willing to say that actual hardware is abstract.

    Assuming that is true, how does a response based on false arguments help?

  87. Hunch is that the CAFC would reverse on appeal but you never know.

    Especially if the appellant is foolish enough to rely on arguments like “software is equivalent to hardware.”

    I haven’t read these opinions yet, but this is something I’ve seen coming for a long time. Maybe we’ll get a rational panel at the CAFC to clear this up. Or maybe those corresponding method claims are even more important now.

  88. Leopold,

    Your short-sightedness is ‘impressive.’

    What you utterly fail to grasp is that the rejection won’t stop at the claim of the software. We already have people willing to say that actual hardware is abstract.

    OPEN YOUR EYES.

  89. Or maybe the meaning of the word ‘equivalent’ escapes you?

    I’m pretty sure I know what the word ‘equivalent’ means. But you’re going to have to use it in a complete sentence before I can have any idea what you’re trying to say.

  90. So, the point is that we have a new technology that has many solutions and many forms and we should not rule based on the form of the invention.

    That is certainly a point, NWPA. But another point is that a ban on patenting computer programs as such does not prevent anyone from patenting a software-implemented invention. Aharonian (and lots of others) says that it does. That takes us back to my original point, which is that hysterical and technically inaccurate arguments like Aharonian’s do not help those of us who simply want to help our clients protect their innovations.

  91. Dangerous stuff, and published as “informative opinions”. With the CLS case demonstrating that half of the CAFC has no problem with jeopardizing a few million claims worth billions of dollars, why should the PTAB not construe a claim to a processor that is not in MPF format under 112(f) to jeopardize billions of dollars of more claims?

    Hunch is that the CAFC would reverse on appeal but you never know.

  92. LB: the point he is trying to make is the one I just made above. That the form of the invention cannot matter. He just didn’t elaborate on what he meant.

    Of course, literally, a computer code listing is not the same as a ASIC, but in terms of patent law, and an invention it may be equivalent.

    Come now LB: take the circuit you designed the other day. Either one of us could take almost any part of it and turn it into software. (Except for a few well-known components.)

    So, the point is that we have a new technology that has many solutions and many forms and we should not rule based on the form of the invention.

  93. So, maybe she is leaving because she finds it too distasteful to follow the orders of the Obama corporate slaves…

    This does not bode well for us. I would predict that we are about to get a henchperson appointed. Probably someone filth like Lemley.

  94. Then ask yourself does it matter if it is a GPS running software or a ASIC, or firmware?

    I agree with you completely. But that’s not what Aharonian says. He says that C source code, which everyone agrees is a computer program, is equivalent to an ASIC. Therefore, according to his logic, a ban on claims to computer programs as such is “meaningless.”

    Do you agree that a computer program listing is the same as an ASIC, NWPA? Yes or no?

  95. What an odd thing to do. This is clearly not how one skilled in the art would view the application. One skilled in the art may say that one of the elements is too broad and lacks enablement, which may be a fair rejection.

    But, saying a part of the method (or configured to processor) is indefinite and then go to the conclusion that the processor is a nonce word? That is outrageously off base.

    And expecting a WD to include a definition of a processor is ridiculous. I guess for doors if you don’t include a definition of wood that you are indefinite.

  96. Below is the game they play in each of the cited cases:

    Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
    ground of rejection for claims 27, 28, 30-35, 37-42, 44-52, and 80 under 35
    U.S.C. § 112, second paragraph, for indefiniteness. Specifically, we
    construe “a processor . . . configured . . . to” perform various control
    functions, as recited in independent claim 27, as a “means-plus-function”
    limitation subject to 35 U.S.C. § 112, sixth paragraph, and conclude that the
    Specification’s failure to disclose an algorithm corresponding to the recited
    functions renders the claim indefinite under 35 U.S.C. § 112, second
    paragraph.

  97. Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject
    independent claim 18 under 35 U.S.C. § 112, second paragraph, for
    indefiniteness. Specifically, we construe processor in “a processor adapted
    to” as a nonce word invoking § 112, sixth paragraph, and find that the
    Specification does not disclose sufficient structure, in the form of a general
    purpose processor and an algorithm, corresponding to “perform an action in
    response to identifying the at least one object descriptor that matches the
    first object descriptor,” as required by Aristocrat Techs. Australia Pty Ltd. v.
    Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).

  98. That Smith one is strange. I will have to take a closer look, but it doesn’t look good. Why were there so many judges on it for one thing.

  99. specious reasoning that hurts the ‘pro-software-patent’

    LOL – you prefer the even more specious reasoning of Malcolm Mooney?

    Or maybe the meaning of the word ‘equivalent’ escapes you?

  100. You know, I think the proper way to think about this is as a black box performing a function. Then ask yourself does it matter if it is a GPS running software or a ASIC, or firmware?

    And, then the other big part of this—now we are going into theory again so the Palin brothers are going to howl–is that any electric circuit and any computer can be reduced to a few well known components and then software.

    So, anyone that cares to understand the art of electronics and computer science, can then see that almost nothing is patent eligible in computer science and electronics if software is not patent eligible.

    The EPO basically gets around this by saying well those things that are currently made in hardware are hardware and if some software makes hardware fun faster than it is a technical solution. This of course is typical European thinking. And, what you do is have massive battles over the line of hardware/technical solution with lots of euros down the drain. (Kind of like a WW I trench warfare.)

  101. Meh …there has been some funny business going on at the PTAB since Kappos has left.

    Read these three cases:

    Ex parte Smith, No. 2012-007631 (14 March 2013)
    Ex parte Erol, No. 2011-001143 (13 March 2013)
    Ex parte Lakkala, No. 2011-001526 (13 March 2013)

  102. Well, it’s nice to see that it includes some good examples of the silly, specious reasoning that hurts the “pro-software-patent” types more than it helps them. From Jeff’s blog, where he quotes Aharonian:

    Take a computer program written in C, with a listing of the C source code. Clearly that is a computer program. Now, run the C code through a hardware/software co-design tool and create an Application Specific Integrated Circuit that performs the C code. Is the ASIC a computer program? Of course not, it is hardware, a chip, not programmable … but a computer program to anyone who isn’t brain dead.

    Does anybody else see the not-so-subtle trick that Aharonian pulls to create this false equivalency? (I’ll give you a hint – VHDL…) Wow, a C source-code listing is exactly like an ASIC! It’s outrageous and incredibly ignorant that those Luddite judges don’t understand that!

  103. Well, not sure why it is not taking what I wrote about what the English did to Turning, but Ned (!!!!!), you turned on him.

  104. Yes, makes me think about how ridiculous it is to be on this blog and have the Palin brothers follow me around and mock the Church-Turing Thesis.

    Just think boys and girls, the en banc Fed. Cir. spent 10 minutes “considering” the pencil and paper test during the Alice arguments, and yet the pencil and paper test is rendered absurd by the Church-Turing Thesis.

  105. I had the privilege of chatting with Teresa last week in Shanghai before her presentation at Managing IP’s Global Innovation Summit. I was so impressed. She gets IP as an essential factor for business growth and innovation. Excellent background and strong vision. Was hoping that she would stay on for many years. Sigh.

  106. Izzat some kind of secret code? Don’t think I didn’t recognize that it anagrams into “See yon rum?”.

  107. That was 3 years ago… what’s happened since? Did someone in authority slap Komen for trying to haul “for the cure” out of the public domain?

    As distinguished from their actual marks, e.g. “Breast Cancer 3 Day Benefiting Susan G. Komen For The Cure A National Philanthropic Trust Project” and “Passionately Pink For The Cure A Program Of Susan G. Komen For The Cure” and of course “Susan G. Komen For The Cure”.

    Here’s a bunch of other “for the cure” marks not owned by the Komen Stalinites (there’s 3 or 4 hundred more, by the way):

    Quest For The Cure
    One Team For The Cure
    Brides For The Cure
    Skateboarding For The Cure
    Roll For The Cure
    Make It Happen! Hunt For The Cure For Bone Marrow Disease
    While We Hope For The Cure…We Must Focus On The Care
    Hope For The Cure
    Deals For The Cure
    The Common Thread For The Cure
    Copy For The Cure
    Bless For The Cure
    Wall For The Cure
    Cannabis For The Cure (surely a big hit in the Pacific NW!)
    Photography For The Cure
    Standup For The Cure
    Customers For The Cure
    Shredding For The Cure
    Wrinkle Erase For The Cure
    Deals For The Cure
    Camel Caravan For The Cure
    Ship For The Cure
    Caravan For The Cure
    Fishing For The Cure
    Models For The Cure
    War For The Cure
    Cabs For The Cure
    Hopping 4 The Cure
    Yoga For The Cure (yogurt for the cure would have been more fun)
    Tri For The Cure
    Triathlon For The Cure
    Dressage For The Cure At The Peak
    2 Embrace The Race For The Cure
    Answers For The Cure
    Campaign For The Cure
    Cycle For The Cure
    Shoot For The Cure Usa
    Dive In For The Cure
    All Out For The Cure
    Conversations For The Cure
    Salsa Para La Cura
    Bicycle For The Cure
    Crunch For The Cure
    Nurses For The Cure

  108. IANAE: “Do you judge by how much you giggle “

    Now THAT there was funny, I’m telling you! (said in best Dan Whitney tones).

    I take back every time I (accidentally) typed your screen ID with that second enn.

  109. a) sex
    b) background: academic/gov/private practice/in-house

    c) etc…

    If you will take me up on it, we can define a list.

  110. I did not find ‘patent unisphere’ in the linked article. Are you attributing this quote to the articel from one of the several hundred random comments?

  111. How does it even make sense to talk about whether person C is “closer” to person A or to person B?

    Baldness might be one criterion.

  112. no on the challenge.

    You haven’t explained what the “challenge” is. Are you predicting a “DOJ henchman” or a “Kappos”?

    Has anyone even discussed possible nominees?

  113. “They seem to be very aggressive in policing their mark ["for the cure"], or what they’re claiming to be their mark,” he told HuffPost.

    Well yeah, they don’t want anybody copying their idea of raising money to cure a thing.

  114. Don’t be thick.

    Seriously?

    You predict person A, he predicts person B, and person C is inevitably nominated. How does it even make sense to talk about whether person C is “closer” to person A or to person B? Do you judge by how much you giggle when you say “Palin” after their names?

  115. link to huffingtonpost.com

    Michael Mercanti, an intellectual property lawyer, said he is surprised by the large number of oppositions Komen has filed against other charities–a number he would expect from a company like Toys”R”Us or McDonalds, but not a charitable fundraising organization.

    “They seem to be very aggressive in policing their mark ["for the cure"], or what they’re claiming to be their mark,” he told HuffPost. “I guess there are a lot of ways to captain a ship, but it seems like there are ways they could protect and police their trademarks and also allow other charities to coexist.”

    Mercanti said filing hundreds of oppositions is not only damaging to other charities, but could also be counterproductive for Komen’s brand.

    “They could actually be seen as being a bully,” he said. “They’re going to alienate some donors who don’t appreciate them stepping on smaller, worthwhile charities.”

    “This is just another unintended consequence of the shrinkage of the patent unisphere.”

    /patent apologist off

  116. said in the best Charles H. Duell tones

    TB once again relies on a myth to make a point that is neither amusing nor clever. Difficult to parody this stuff.

  117. I would challenge you to another contest MM. Let’s both make a guess who the next director will be and see who is closer.

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