Question 1 on my short-answer patent law final

What is your best short-answer to this exam question? (See the 20-word limit).

  1. Alice’s patent covers a new flat panel television made with cobalt-ion-trixles (a truly new compound). In her initial patent application, Alice did not disclose a WiFi transmitter/receiver as part of the television. However, during patent prosecution she added a claim directed to the television that includes both the cobalt-ion-trixles and a WiFi transmitter – arguing that the new WiFi limitation is okay because WiFi is so well known in the art. Assuming that WiFi is truly well known in the art, what is the most likely argument against patent validity? (20 words).

81 thoughts on “Question 1 on my short-answer patent law final

  1. Query: should one be able to remove Wi-Fi from the claim in a reissue filed after two years? The patentability of the claim does not depend upon Wi-Fi. The broader invention clearly is disclosed, while the narrower invention is not.

      1. What if the WiFi limitation were in a dependent claim? One could alternatively disclaim the claim or cancel it during a reissue. That should be possible.I really think we need to allow the cancellation of new matter from the claims regardless of broadening. Perhaps we should have a statutory fix.

        1. “What if the WiFi limitation were in a dependent claim?”No problem – disclaim it.”I really think we need to allow the cancellation of new matter from the claims regardless of broadening.”Why? Why a new rule favoring the patentee with an improperly obtained claim?

          1. The case has not (conclusively) been made that the claim was improperly obtained Leopold.Your advice of ‘disclaim it’ is already (potentially) exactly what has happened given the applicant’s admission that the component is known in the art.It’s a bit of silly drafting (I wholeheartedly agree) to add elements in a dependent claim that – while making the claim more particular – do not differentiate from the prior art, but such is not necessarily a cause for invalidity per se.Claims do this all the time – it’s called aiming for different types and degrees of infringement.

            1. “The case has not (conclusively) been made that the claim was improperly obtained Leopold.”Actually, anon, Ned said: “we need to allow the cancellation of NEW MATTER from the claims regardless of broadening.” So yes, that the claim was improperly obtained was assumed in Ned’s statement, to which I was directly responding.”Your advice of ‘disclaim it’ is already (potentially) exactly what has happened given the applicant’s admission that the component is known in the art.”Nonsense. An applicant’s admission that a claim feature is known in the art does not result in the claim being interpreted as if that claim feature isn’t there at all. Yes, it makes the obviousness analysis easier, but it doesn’t change the scope of the claim.

                1. “Ned assumed incorrectly – not the first time. Certainly not the last”Patent Jebus has spoken! Ned shall not assume hypothetical situations for the purpose of discussion, without the express approval of Patent Jebus!

  2. 102 novelty. Combination with trixle and wifi is in earlier filed application because wifi known. Post AIA self collision.

  3. I agree with yoobee that the addition of new matter to a patent does not invalidate that patent – only the claims that depend upon a new matter. Thus the question has to be interpreted in that light, in that we are talking about the validity of claims that include the Wi-Fi limitations. If we do not make that assumption, then the simple answer is that there is no such thing as “patent invalidity.”

  4. Since the claim was passed to grant, one might presume that the added claim was in the form of “comprising,” wherein the WiFi limitation was not read with patentable weight (and thus may not serve as cause for invalidity).Just a thought….

      1. It’s ignored, basically.At least it makes more sense than when examiners say they’ve given a feature “reduced patentable weight” or similar. I wonder how many limitations of “reduced patentable weight” it would take to produce an allowable claim.

      2. Leopold, what is your understanding of the possible terms captured with the phrase “comprising?”(or is this yet another conversation in which you will disappear after making a snarky comment?)

        1. A TV comprising:… ; anda WiFi transceiver.My “understanding of the possible terms captured with the phrase ‘comprising'” is that the claimed TV includes at least one WiFi transceiver.I’m simply trying to understand how the use of “comprising” would lead one to presume that a claim limitation can be read as having no patentable weight. Please explain.

          1. What is the patentable weight of a given standard component in a combination claim under a comprising nomenclature when such is made in an amendment…?What is the patentable weight of any such standard item in a ‘comprising’ setting? Do you understand what ‘comprising’ means?

            1. I asked you to explain yourself, and you answer with riddles. None of this explains why a claim limitation “thus may not serve as a cause of invalidity,” but thanks anyway.

              1. So….You not willing to show that you understand a basic concept in the term “comprising” results in my posts being a riddle….?And you want me to try to explain something to you that requires understanding that basic concept?Leopold, you need to do better.So, no, Thank you.Also, to my first thought, add to the mix the use of wherein clauses, intended use clauses, and sometimes items in preambles. LOTS of ways for elements in claims not to be given patentable weight.

                1. “LOTS of ways for elements in claims not to be given patentable weight.”LOL. But simply listing components after the term “comprising” is not one of them. But go ahead with that advanced understanding of the term “comprising.” I wish you the best of luck.

                2. Nothing to do with any “advanced” understanding from me Leopold (you are doing that red-cape-of-anon thing again).Try to re-read the posts. The amendment to the claim (yes, amendment, and that is an important part) theoretically introduced a non-critical part of the open universe of “comprising’ into the claim without any backing in the specification based on the applicant’s (binding) statement of “it’s common in the art.”But please, you tell me (something, anything) how you think such a situation creates patentable weight….Unless of course, you only have snark to offer.(btw, where are my references on ladders of abstraction that you still owe me?)

                3. A limitation is a limitation, regardless of whether it’s a “non-critical” part, regardless of whether it was added by amendment or not, and regardless of any “binding” statements by the applicant. Any patentability analysis of that claim has to consider that limitation.Your earlier post suggests that a patentee might escape a 112(a) invalidity problem by arguing that “the added claim was in the form of ‘comprising.'” I asked you to explain what you mean, because I’m not aware of any situation in which a patentee can argue that a limiting term can simply be ignored for the purposes of assessing new matter, on the basis that it is “non-critical” or on the basis that if follows the word “comprising.” For whatever reason, you either refuse to or cannot explain your original comment, but have instead responded with a series of insults and irrelevancies, apparently thinking that you can distract anyone who’s following along from the actual topic at hand. That seems to be a pretty typical pattern.

                4. Your ‘spin’ is inaccurate Leopold. I am not saying anything about avoiding a legitimate problem (either with 112 or new matter).

                5. I didn’t read all the back and forth above, but as for an element not receiving patentable weight:A tv comprising:…; and associated with a wifi receiver.You could also do a list:…; and at least one of wifi or ethernet.I suppose an Examiner could say that because, in the first example, associated with is indeterminite and, the second example, there was no support in the spec, the wifi element has no patentable weight.But if an Examiner did, that would be wrong. Stuff that’s in the claims without any support shouldn’t be there.

                6. If I amend an original dependent claim (which uses ‘comprising’) to an electric television set with the novel cobalt-ion-trixles and other elements with the addition of an electric power cord, have I added new matter? Isn’t an electric power cord one of those things in the television arts, already part and parcel of the electric television?Sure, it is a rather silly amendment to make, but is being silly the same as invalidating?(and yes, your operative word is ‘shouldn’t’ – but that word is not the same as ‘mustn’t’)

                7. Well, there you have the potential argument that an electric power cord is inherently disclosed since powering the tv in some way is fundamental to the operation of the novelty. The argument would probably go something like, “a PHOSITA would understand at least that. . . .” Now, could you add a power source being a Mr. Fusion? Probably not.

                8. Thanks idlebidle for confirming my position – now notice the fact pattern as provide by Prof. Crouch.We are way closer to the “a PHOSITA would understand at least that…” than to a “Mr. Fusion.” In fact, the applicant basically states that a PHOSITA would understand.(mind you in a real case, the Graham factors would likely determine where on the spectrum the silly amendment would lie – if indeed, such an amended item was inherently disclosed or possessed)

                9. I’m not sure what position I confirmed.The feature of a power cord is not on par with the feature of wifi. One is essential (or relates to an essential aspect–requiring power) and the other is not. In other words, just because wifi was well known doesn’t mean that it is inherently possessed. These are not the same.

                10. Your point is valid – they may not have the same ‘necessity’ factor. But they may be sufficiently present in the art to count.And you confirmed the difference between “shouldn’t” and “mustn’t.”add: the PHOSITA portion would not be necessary to the novelty aspect as you mention above (“in some way is fundamental to the operation of the novelty” – it would be there in relation to the existing prior art. In fact, if you need the feature as fundamental to the novelty, then an Ariad-type rejection might well apply. This then reinforces my notion of what ‘comprising’ entails – those items not having patentable weight. Another example might be adding an element “and colored blue’ wherein blue is not determinative of patentability. Sure, it’s a silly and needless amendment, but such is not necessarily illegal or patent invalidating to make.

                11. But at least then she would be in a good position for a broadening reexamination in which she added the limitation “and an elephant”.

  5. Based on my convo with youbee, there is a nuance that I did not fully appreciate at first: If the argument is that the tv’s with WiFi are old and notorious and WiFi is a well know feature of a tv, then there may not be a written description problem. There remains, however, a 112(b) problem.Furthermore, tell me what the addition of WiFi has to with the novel cobalt-ion-trixies. Nothing that I can tell. On the same principle, one can include all the other well known components of a TV that have nothing do with novel cobalt-ion-trixies. All of this addition goes to mask the novelty.Now let us make the assumption that the combination of a TV with WiFi is a novel combination: How is this patentable? Under KSR, citing A&P, a combination of old elements unchanged in their respective functions is not patentable. It is per se obvious. So adding such to the claim does not and cannot add patentable subject matter, leaving the claim less precise in scope. Again the obvious problem, if WD does not solve the issue, is that the claim with the WiFi makes the claim less particular to the real invention, the cobalty-ion-trixies. Still a 112(b) problem.But, since the PTO and the Federal Circuit do not put any meaning into 112(b), barking up this tree may not prevail over the simpler proof that a WiFi is not disclosed.

  6. Invalid because patentee did not regard claimed subject matter as her invention. Gap-filling doctrine will allow P to survive written description challenge.

  7. No written description-112(1), WiFi not an inherent function, thus, new matter-35USC132. 1.56 inequitable conduct if no disclosure of “well-known” WiFi.

  8. Written description: Did not show that at filing she had possession of Wifi limitation; did not disclose in original specfication.Getting this down to 20 words was tough.

    1. Ryan – This is good. I would have wanted you to cite the statute as well (as per the directions that I did not post here). And, I see the real problem not so much as lacking possession of the WiFi limitation per se, but instead as lacking possession of the whole invention (the Cobalt-Ion-Trixles TV with WiFi).

      1. I agree with Dennis that the combination of TV + WiFi is where it would fail. (or is certainly the strongest argument) After all, almost all inventions are a combination of old elements.

  9. Since the call of the question regards “patent validity”, I am assuming the claim was allowed by the examiner. Therefore, we are talking about arguments for invalidating the entire patent, either in litigation, re-exam, or post-grant review.To my knowledge, the only way to invalidate an entire patent based on one claim added during prosecution would be to allege that the applicant engaged in fradulent or deceptive behavior before the Patent Office by hiding information on such WiFi subject matter.This is probably not a winning argument, since the examiner apparently accepted the claim with his eyes open. He could have requested additional information (e.g., declarations by the inventors) to overcome his concerns if he had any. Since the claim was allowed, the party challenging the validity of the patent will likely have a higher burden of proof as well.

    1. Just read some of the other comments. If the question meant to ask about the patentability of the Wi-Fi claim (instead of validity of the patent), I would agree that 112, 1st paragraph, or 112(a) post-AIA is the best bet. Alice could try to overcome this by supplying an affidavit that such a concept would have been readily understood by a person of ordinary skill in the art reading the specification.

        1. Not sure how Alice’s statement could be construed as an admission that the addition of WiFi does not form part of the invention. She merely states that the use of a WiFi transmitter was well-known in the art; but clearly she contends that the combination of her TV with the WiFi transmitter is inventive.

          1. yoobee, consider KSR, the union of two well known components without any change in function of each is not invention — per se obvious. Assume here both a TV and WiFi are well known. Why isn’t the combination of a TV with WiFi per se obvious?

            1. Ned – the TV portion of the combination is given as non-obvious (due to the cobalt-ion trixles).add: and yoobee is correct insofar as Perkins Glue being an older case and being modified. From the syllabus of Perkins glue: “A patentable process is a method of treatment of certain materials to produce a particular result or product.” This is MoT. And as everyone knows, MoT is neither required nor sufficient.

              1. anon, noted. The claim does include novel subject matter. But the addition of WiFi to that novel subject matter is in the nature of aggregation making the claims less definite.

                1. Less definite?You missed the rest of my comments Ned. It is long practice with comprising claims to have dependent claims (and it is fully reasonable to presume that the added combination claim is a dependent claim) that more finely tune the independent claim with additions of material that can be considered to fall under the comprising label. The opposite of your ‘less definite.’Now if you wanted to argue prolix, that would be a different story (especially in the example of 111 different features), but that is not the legal position you take.Further, your “aggregation” argument is a 101 argument, no? That too is not in the call of the question. It might apply as a claim with a fish element and a bicycle element, but it is pretty clear from the post that such an “aggregation” position is out of the realm of reasonableness (there is clearly a permissible functional relationship present given the phrase “Assuming that WiFi is truly well known in the art”).And please, no kool-aid drinking with that “exhaust the examiner” B$, as well as your anti-Judge-Rich views (as I do believe that this aspect was also embraced by your ‘hero’ Frederico).

                2. I really think anon that adding obvious elements is not making the claim more particular.Sent from Windows Mail

                3. That quite depends, doesn’t it Ned?Clearly, adding obvious elements can in fact make a claim more particular. It happens on a very routine basis in practically every single art field. Mind you, it is not the best practice, but how many times have you seen ‘filler’ claims filed in order to reach some magic numbers (like 3 and 20)?I am not certain what point you are trying to make. If you are saying that you don’t like it, that’s one thing. Fine. You don’t like it. But if you are making a legal argument, well, you will have to do much better.

                4. anon, you cannot be serious can you? Filling a claim with obvious additional elements hardly makes the claim more particular as to what the claimed subject matter is. It in fact hides it.

                5. LOL – what did you just post to me, Ned…?Claim as a whole…?If you add limitations (even obvious ones), you have added limitations, right? More limitations, more particular….

                6. I think you need to listen to what I am actually saying as opposed to what you think I am saying. There is a difference between reciting critical elements and adding obvious elements that add nothing.

                7. Sure there is a difference between so called critical elements and obvious elements that “add nothing.”But the point here that you seem unable to grasp is that my statement is absolutely correct. The quotes around “add nothing” are present because we both know that such additions may not add anything meaningful, but that such additions STILL are in fact making the claim more particular.

                8. Ugh. The claims require the culture on a particular man-made layer. This is the limitation that I think you read out of the claim.

            2. KSR would apply if both elements were known; however, Alice’s TV features are presumably not known, and therefore we are not dealing with a KSR-type obviousness argument.But I’ll bite on your argument anyway. Even if the TV was also known, I think you are extrapolating way too much from Alice’s statement (admittedly, we would need more information about how the components work together to argue that this is per se obvious under KSR). Regardless, simply stating that the Wifi technology was known doesn’t mean that she is acknowledges that the rest of her claim is not patentable or inventive.

              1. True, my point is that adding subject matter that is obvious does not change the result if the claim also includes patentable subject matter. It simply does not further define the invention. Neither does it increase the particularity of the claims, it decreased that particularity. If the PTO and the Federal Circuit were actually enforcing the law, there would be a 112(b) rejection here even if WiFi were not new matter based on the admission that WiFi was old and without any proof of synergy between the combination of the particular tv type with WiFi.Compare Perkins Glue where an admission in the specification as to what the inventors discovered was used to declare the claims invalid as indefinite when the claims were not limited to that subject matter.Thus I invent the new carburetor for a car. My claim then adds 111 features that are standard on every car. How is that adding to particularity? Guys like Rich see no vice in this, but it does cause harm as the PTO simply gives up trying to show all the features in one reference.Some time ago I was told that this practice of adding in standard features was common practice for that very purpose — exhausting the examiner. I personally find the practice abhorrent.

                1. Ned, I think I am having a hard time seeing why you need to rely on 112(b) to make what is essentially an obviousness argument. If we assume that both the TV technology and the Wifi are known in the art, then 103 and KSR already provide more than adequate means for rejecting the claim–it’s simply a matter of finding a reference that teaches the TV in combination with the admission that Wifi tech was known. Of course, Alice could refute this with additional facts if necessary.As far as “exhausting the examiner”, there are many mechanisms in place to prevent this. First, if the applicant continues to add new features, the examiner can make the rejection final since it requires additional searching. Second, the majority of applicants wouldn’t spend money prosecuting such a narrow claim because it would be so easy to design-around and would therefore have little value. Third, if the features really are that “standard” or common, then the examiner shouldn’t have a problem finding the necessary references that teach them; if the combination has nothing more than predictable results, then it’s a pretty straightforward 103 rejection. The practice that I find abhorrent is when I encounter an examiner who simply relies on subjective conclusions like “this feature is standard on every car” without any substantiation.I do not recall the Perkins Glue case; do you have a cite for that? The only one I found was from 1928, but I am pretty sure the statute has changed since then.

                2. Regarding up Perkins glue, yes, it is the 1928 case, and yes the statute has changed – somewhat to codify this case. In Perkins Glue, the specification had described what the invention was, but none of that was in the claim. Based upon the admission of what the inventor regarded as an invention, the Supreme Court held the claim indefinite.Notice how the Federal Circuit seems to follow Perkins Glue, but in claim construction – they read into the claim the essential feature of the invention. When we state X is the invention in the specification, we want to see that in the claim. But that is also the reason we write specs the way we do to avoid the use of invention in the specification.

      1. Does the fact that Wi-Fi is readily understood by artisans overcome the fact that Wi-Fi is not mentioned in the specification and thus is not part of the written description? I don’t think so. Alice would be wasting her time arguing against your written description argument.

      1. You’re right–I should have said that the fraud argument would render the patent unenforceable. Still, I do not know of any reason why a granted patent would be invalidated based on a single claim that was added during prosecution. Maybe we were supposed to assume that the added claim was the only claim in the patent that was allowed.

        1. yoobee, On that issue I fully agree. The addition of new matter does not invalidate the patent. It only invalidates the claims that depend upon a new matter. So the question is misleading to an extent. If one is to take the question as is, then it is observed that patents are not invalidated. Only claims are invalidated. And because of that, one could not show that the patent was invalid based upon the addition of new matter in a claim.

  10. Lacks written description support. This answer has been brought to you by Pringles! Pringles: Once you pop, you can’t stop.

  11. I would tend towards a written description problem here as other commenters have noted. There’s also a best mode problem potentially (no longer useful in litigation).

  12. The question asks for patent invalidity, not claim invalidity. However, the question may be ambiguous as to how this term is used. Thus, my answer:Claim invalidity based on defective specification, and patent invalidity based on fraud for withholding wifi disclosures from examiner.

  13. Hmm my post didn’t show up.edit: I just ran down 112 1st WD possession req and how it is different from things which are well known/obvious. And then stated to send 112 1sts until poor Alice can’t read anymore and cries uncle! Our 112’s will blot out the sun! She will have to respond in darkness!

      1. I don’t quite understand your argument under 112(b) that she has admitted that the addition of a WiFi transmitter is not part of her invention. She only states that the use of a WiFi transmitter was well-known; presumably, she is arguing that the combination of the WiFi transmitter with her new TV was not known, and therefore is inventive.

        1. It would be odd indeed that where one argues the combination is old and well know that adding such to a claim is no vice. But, it does diverge the claim from the “particularly point out and distinctly claim” part of the statute.

          1. She is not admitting that the combination is well known, just that the WiFi transmitter technology is well-known. It is not difficult to argue that combining a known technology (WiFi transmitter) with another, unknown technology (the TV) is novel and non-obvious.I am more inclined to agree with you that the claims lack clarity, but that basically piggy-backs on the written description rejection. The claims are sufficiently clear, and the issue really boils down to whether or not the WiFi transmitter could be considered part of the written description. I think the argument under 112(a) is much stronger.

            1. I think, youbee, that the applicant is not claiming that a tv is new or that the combination of a tv with wifi is new. If that combination is not new and that actually is the basis for patentability, then I would wholeheartedly agree that we have a clear case of new matter.But if rather, the combination is old and well known, then we do not have a WD problem, as that goes to the “invention” and the addition of the WiFi is admittedly not part of the invention, then the problem is a 112(b) problem.

      2. “What about 112(b)? Alice admits the addition of WiFi is not her invention.”idk about that Ned. I didn’t make out that admission. She seems to be asserting that she believes, subjectively, that it is her invention.

  14. Written Desc baby! 112 1st that girl till she can’t take the heat anymore and cries uncle! Also remind her that written description isn’t about obviousness, or what is known in the art, it’s about what you showed possession of at the time of filing. Also thank her for her tacit admission accompanying her argument that it is well known that she in fact did not show possession at the time of filing since she did not mention it at all explicitly or implicitly and she would rather allege that it as simply well known. Also I’d remind the test maker that girls do not invent flat panel televisions made with cobalt ion trixles. The whole premise of the question is so outrageous as to not even bear thinking about. Maybe in 20 years or so when we’re grown a new crop of girl engineers. http://www.goldieblox.com

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