Functional Claim Language in Issued Patents

By Dennis Crouch

In a prior post, I included a chart showing a recent rise in the use of the functional claim phrase “configured to.” See Crouch, What Does it Mean for a Device to be “Configured To” Perform a Particular Function, Patently-O (2014). Here, I have updated the data to also add information regarding claims that include the term “means” (the traditional primary trigger for §112(f) analysis) and those that include the phrase “for …ing” (such as “for calculating”) without reciting the term “means.” I see these chosen categories as indicia of the existence of functional claim elements. However, I recognize that my rigid automated approach is both somewhat under and over inclusive. However, the results (below) are so dramatic that it is difficult to argue that nothing is going on here. Complicating this, a legal definition of functional claim language (outside the scope of §112(6)) is difficult to nail down. Working a bit on this definition, the Supreme Court in 1946 wrote that a “claim which describes the most crucial element in a ‘new’ combination in terms of what it will do, rather than in terms of its own physical characteristics or its arrangement in the new combination, is invalid as a violation of [the indefiniteness requirement].” Halliburton v. Walker, 329 U.S. 1 (1946).

For the analysis here, I first downloaded the text of all U.S. utility patents issued between 1976 and 2014. I then wrote a script that parses through the independent claims of each patent to determine whether any of the aforementioned phrases are found within those claims. Because the worry with functional claim elements tend to be their over breadth, I looked only at independent claims rather than the naturally more narrow dependent claims. With those results in-hand, I then calculated the frequency-of-appearance in a week-by-week time series. The chart is slightly smoothed by reporting a 10-week moving average – that smoothing largely imperceptible because the time series encompasses almost 2,000 weeks of data). A nice element of using the entire population of utility patents is that there is no need to include significance levels or confidence intervals.

The basic results are apparent from the chart below. The use of traditional Means-Plus-Function (MPF) language in patent claims has dropped dramatically since the early 1990′s and continues to drop. (Blue data series). In the 1980′s most patents included an independent claim written in MPF form. Today, that frequency is less than 10%. The decline in the use of MPF claim language corresponds roughly with a set of cases that cabined-in the construed scope of MPF elements and also bolstered the doctrine that an MPF claim is invalid if the patent document lacks an affirmative statement showing a structure that performs the claimed function. See In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) (en banc). Although patentees have eschewed the statutory sanctioned MPF format, they have not given up the use of functional claim limitations. In the chart below, I pick up on two particular common approach. One approach has been to replace the term “means for” with a more structural noun such as “circuit for” or “instructions for.” Those types of claim elements are shown in the green data series below and show a rise in that claim format in the 1990s that matches the decline in MPF usage. The red data series shows the use of “configured to/for” language in independent claims as discussed in the prior essay.

As patentees moved away from the use of means-plus-function claim language, they could have conceivably chosen either to focus more particularly on structural elements or instead to continue with an approach of claiming according to the function of the unspecified structure. The chart above graphically suggests that patentees have chosen the latter – replacing means-plus-function claim elements with functional claim elements carefully designed to avoid the statutory trap of §112(6).

The sheer number of patents at issue here is impressive. To be clear, we are talking about millions of patents that are caught-up in this transition. Thus, if we think that it’s a problem to have functional claim limits written outside of the safeguards of §112(6), then what we have here is a big problem.

240 thoughts on “Functional Claim Language in Issued Patents

  1. The briefs in the Nautilus v. Biosig Supreme Court cert. roundly condemn functional claiming, linking the issue to O’Reilly v. Morse, citing both United Carbon and Halliburton. See esp. the Amazon, Google brief.
    link to scotusblog.com

    The Amazon case cites this Taranto case with “approval”: IBORMEITH 2 IP, LLC v. MERCEDES-BENZ USA
    link to cafc.uscourts.gov

    Now, how do you like that? One of our newest Federal Circuit judges being cited with approval to the Supreme Court.

    BTW, IIRC, we never had a blog post here on either Nautilus or IBORMEITH, although Dennis did tell us about Nautilus’s cert.

    1. You can always tell when you’re dealing with an ignoramus in prosecution by their technical drafting capabilities. Gaze ye upon the technical abomination depicted in Fig. 15 where all the lines that go into the oscilloscope are connected to all the lines they run into.

      link to sblog.s3.amazonaws.com

      Overall I’m getting the feeling that what is going on in this case is that the prior art showed a spacing but it wasn’t a “special spacing” like the patentee would have liked, and should have been made to if that is what he wanted, to claim. Is 112 2nd the proper tool here? Mmmmm, to the extent that the patentee’s position relies on the old canards of functional terms magically imparting structure because someone of ordinary skill could figure out what the structure is supposed to be, yes. That’s the same problem we see in computer garbage claims. Perhaps if they take this case, tear it a new ars e, the CAFC will stop that nonsense in softiewaftie claims as well. As to the other issues presented, meh yeah they’re problems as well. And the dearth of 112 2nd cases due to the insoluble ambiguity req having been imposed is quite fascinating and troubling at the same time. I just found out about that one a few months ago.

    2. There’s also some additional points related to technical incompetence of the people motioning against cert. They, and I presume the patentee, both seem to think that electrodes somehow magically enable the removal of signals based on size, width, spacing etc. That’s not really true. Electrodes are just blobs of metal. Signals pass through them and then into the circuit which is then either capable of removing those signals or not from the signals received. Understandably different electrodes will make this easier or harder, but it is ultimately not the electrodes that do this thing or enable such. This seems to go right over these technical ignoramus’s heads.

      Likewise, it really does seem that the patent should have laid out how all this was to be tested. At least said something about standard equipment and the setup. Even if we’re to buy into their whole “well you can test out your device and see if it infringes and that’s how you’ll know the metes and bounds of our functionally claimed invention lolololol” approach.

    3. Here’s another little tidbit, they don’t even know how to use the word “configured” correctly.

      “was that the prior art did not disclose electrodes configured with a differential amplifier for detecting and substantially removing
      EMG signals”

      lulz, electrodes “configured” with a diff. amplfier? lulzroflmao.

    4. This is kind of the real rub that it all boils down to. The Fed Circ holding:

      “The Federal Circuit also explained that because “some experimentation
      may be necessary to determine the scope of the claims does not render the claims indefinite.””

      See some people interpret this to mean that so long as simplistic/reasonable experimentation can be performed on the alleged infringing device or other similar devices and you can tell whether they infringe under the language of the claim then you’re all hunky doorey. Other people interpret this rightfully to mean that you must be able to come to a definite construction through running some reasonable/simplistic experimentation.

      I fall into the later camp myself. For the claims that fall into the first category and not the second category are indefinite since their scope depends solely upon the inventive genius of the alleged infringers and not upon an objective boundary established aforehand.

      Can I get a hells yeah?

        1. Actually it’s good that you bring that up anon because I was just thinking that myself. In the end, it all boils down to what you fundamentally consider claim scope to be and what it is there to do. Under the former view I mentioned above, the sole point to having claims is simply to inform people whether their newly created thing infringes or not. Under the later, claims are there to put people on notice, in advance of making anything, of a definite set of things that will infringe if they create them.

          You’re absolutely right that it comes down to your fundamental beliefs on things. However, in the end, I’m pretty sure that the later are more in line with the whole public notice thing, which the accused noted in their brief here.

        2. anon note how your “belief” system colors your views”

          LOLOLOLOLOLOLOLOLOLOLOL!!!!!!!

          All bow down before the Great Anon, the only truly objective person on his planet.

          1. Malcolm, you have ZERO credibility on saying anything to an objective standard.

            I would be more than willing to put into court anything that I post.

            You would not and cannot.

            Intellectual honesty – try it.

    5. All said, I don’t know if this is a good vehicle or not. It appears from a glance to these briefs to be a big ol sht show of all that is wrong with 112 2nd jurisprudence so in that respect it is a good one. On the other hand, if the late evidence introduced into the record is actually considered meh, that makes it much harder and narrows the sht show to some narrower issues. Though those are still good issues!

  2. The way I see it is this:

    In combination claims, 112(f) should not be invoked in the following situations, and neither should the claims be declared indefinite as functional:

    1. If the invention is a method where particular structure is not important, the method steps (two or more) can be claimed as a method, a system, or an apparatus configured to perform the method without invoking 112(f). Halliburton could not claim his invention as a method as everything in the patent was old but for the new apparatus. In order to clarify, a patent should include a method claim and the apparatus and system claims should correspond to the method.

    2. Old elements in an apparatus claim should be claimable functionally. This form of claim actually adds clarity. Subject to 1, if novelty is ascribed to the element, it should be construed under 112(f).

    3. New structure should be claimed structurally otherwise 112(f) is invoked. However, new structure may still be defined by combinations of old elements that themselves are defined functionally without invoking 112(f).

    A patent then becomes indefinite as functional only when 112(f) applies and there is no corresponding structure, or the specification itself is functional. The case on appeal to the Supreme Court is like this: the novelty was in a new function where there was no corresponding structure defined in the specification that achieved the recited function.

    1. Meh, disagree. If you subjectively believe (or know) “the invention” is a method, then you claim something other than a method (for instance an apparatus) you fail the commandment in 112 2nd immediately. No further discussion required.

      1. 6, it appears that you categorically oppose claiming an invention as a apparatus or system where all the hardware is old and novelty lies in new method, a new way of using the old hardware.

        Now let’s pause and consider a new cell phone. One invents a new way of interacting with the cellular network, but all the novel functionality is in software and that software is load into an becomes part of the cell phone apparatus that is sold to the public. One wants to sue the maker and seller, and bar his imports. To do so, the cell phone must infringe.

        Assume the claim is of the form, “Apparatus” having a number of means plus function clauses, where the software is defined in the steps described by the means clauses.

        Are you OK with such a claim, when the corresponding structure is software?

        If you are, the why would you oppose removing the “means for” and just defining the software in terms of “configured to?”

        1. “it appears that you categorically oppose claiming an invention as a apparatus or system where all the hardware is old and novelty lies in new method, a new way of using the old hardware”

          I do but that wasn’t really what I was harping on in the last comment. I’m a stickler for following the command in 112 2nd to claim that which is subjectively believed to be the invention. If you admit straight up front that you believe the invention to be something other than is what is in the claims I will hit you for it every single time. And put it on the record. The commandment is there for a reason(s). And preventing the tomfoolery you’re proposing just now is one of those reasons.

          “One wants to sue the maker and seller, and bar his imports.”

          See and that’s the real rub. I’m sorry, but there is no reason for us to allow for the subversion of the foundation of the patent system simply because of your subjective wishes to sue various people. Sorry.

          “Assume the claim is of the form, “Apparatus” having a number of means plus function clauses, where the software is defined in the steps described by the means clauses.

          Are you OK with such a claim, when the corresponding structure is software?”

          No, for a variety of reasons. But the reason most pertinent to our instant conversation is because, I’m presuming, that you kindly admit straight up front that you subjectively believe the invention to be the method.

          But even presuming you didn’t kindly admit such and presuming you actually drew out the supposed structure in your drawings and all was hunky dorey on the structure front/mpf format front then I’m still wary of simply allowing the use of the term “configured to” in the way presented by modern software patent apologists. For a variety of reasons that I’ve expounded upon at length here before and I decline to expound upon again at this time.

          1. If you admit straight up front that you believe the invention to be something other than is what is in the claims I will hit you for it every single time
            What happens when applicant has two or more claims or even worse … two or more independent claims? Aren’t they using different language to describe the invention?

            Your problem is that you IGNORE well-settled law that an invention can be claimed in different ways.

            Until you find your way into the solicitor’s office, I would suggest your career would be better served by applying the law — as it actually is, instead of applying it the way you think it should be.

            1. “What happens when applicant has two or more claims or even worse … two or more independent claims? Aren’t they using different language to describe the invention?”

              I’ll let them go until they make the admission. The whole of this modern “claim it as a method and device all the time” claiming paradigm is based on the fact that there are some instances where there are both method and composition/device/ apparatus have indeed been invented and then pretending that all or nearly all inventions are this way to artificially expand coverage for those. Personally I think there should be a better way to enforce this than waiting for an admission but that seems to be the status quo and it isn’t a fight I’m willing to fight atm.

              Sometimes though it’s easy to goad them into the admission though, see for a high profile example, Myriad at the USSC where they admitted the invention was the discovery and got busted (finally). The office could have secured this admission and saved everyone $$$$$$$. When I do it though I always do a double take to make sure that they are indeed admitting what I think that I just goaded them into admitting. And I’m very specific and explicit.

              “Your problem is that you IGNORE well-settled law that an invention can be claimed in different ways.”

              I’ve never said that an invention can’t be claimed in different ways. Many are, legitimately. Many others aren’t. What your problem with this is I’m not aware.

            2. pretending…artificially…

              6′s belief system once again coloring his world view. 6 confuses his ‘being unaware’ and his uncaring about the universality of his comments. 6 – pay attention to what Patent Guru is actually saying.

              .

              LOL – 6′s own expressions of “goading them into admissions”- and yet he refuses to recognize when admissions made on this board smack him upside the head (for example, the ladders of abstraction discussion). So very much like the other anti-software patent people: unable and/or unwilling to recognize how their own admissions wreck their agendas.

            3. “Sometimes though it’s easy to goad them into the admission though, see for a high profile example, Myriad at the USSC where they admitted the invention was the discovery and got busted (finally). The office could have secured this admission and saved everyone $$$$$$$. When I do it though I always do a double take to make sure that they are indeed admitting what I think that I just goaded them into admitting. And I’m very specific and explicit.”

              Lulzapalooza.

              Any time you want to provide us with even one example of an instance in which you were successfully able to “goad”an applicant into an “admission” that a claim didn’t recite what they regard as their invention, please feel free to do so. Until then, the rest of us will just consider your post to be yet another one of the typical blatherings uttered by you from the fantasy world where you reside during office hours.

            4. Can’t respond directly to your post there AAA JJ, but I make an attempt maybe every 10th interview. Most folks hesitate when I do a double take and take it back. I make the attempt just to focus their attention really. Specifically on what they regard their invention to be regardless of the current claims on the record.

              But there are some very few incompetent boobs that have talked themselves into a 112 2nd which so far as I’m aware is permanent once such an admission has been added to the record on their behalf. I’ve never seen one of these incompetent fools get the relevant claim(s) issued. Fundamentally some of them seem to finally have it dawn on themselves that they never considered that to be the invention in the first place. /facepalm.

          2. “But there are some very few incompetent boobs that have talked themselves into a 112 2nd…”

            I would agree that any practitioner that talks about “the invention” as anything other than what is claimed is a boob. Although I still find it hard to believe that a practitioner would make an “admission” that whatever was claimed wasn’t regarded as at least “an invention” of the applicant. Given that you have no understanding of what an “admission” is (see, e.g. this from you: “…which so far as I’m aware is permanent once such an admission has been added to the record on their behalf”), the more likely explanation is that you’re simply wallowing in the usual examiner ignorance of rather simple and straight forward concepts such as evidence, facts, law, etc.

            “… I’ve never seen one of these incompetent fools get the relevant claim(s) issued.”

            Again, any examples, even just one, you’d care to share and enlighten us with would be helpful.

            1. You’ll get examples when I leave, just the same as on other topics people care to ask about on that day. I have yet to spread the gospel to enough other examiners to be able to give out examples from them on this topic.

            2. “I have yet to spread the gospel to enough other examiners to be able to give out examples from them on this topic.”

              Lulz.

              I remember when I worked at the PTO and this one examiner told me about rejecting an application for failing to disclose the best mode because it disclosed plural embodiments. He was real proud of how clever he thought he was. You remind me a lot of him.

      2. The ignorance of 6 is on full parade as he shows that he does not understand one of the most basic aspects of innovation – that an invention most often easily has modes in several of the categories of patent eligibility.

        Yet another character suicide.

        1. “that an invention most often easily has modes in several of the categories of patent eligibility.”

          Pretty sure I never said that. I simply noted that in the instant case the prospective applicant admitted that he subjectively does not believe that to be the case in the instant hypothetical. Instead, he subjectively believes the invention to be solely in the method as explicitly noted by Ned.

          1. Pretty sure that not only did you say that, you just reaffirmed that with your attempted defense of your inane position.

            You really svck at this law stuff 6.

            Try reading my post again and noting that the particular mode of eligible category is a complete misnomer to many inventions.

            1. “Try reading my post again and noting that the particular mode of eligible category is a complete misnomer to many inventions.”

              No thanks, instead I think I’ll just apply the law. K?

            2. 6,

              First you have to understand the law before you can apply it.

              You continue to show that you do not understand the law. You appear to not even understand that your belief system is preventing you from understanding the law.

            3. “You really svck at this law stuff 6.”

              I know, right? It’s amazing. His writing and his understanding (if you can even call it that) of the law is actually getting worse.

  3. Ned: you raise good points. Thank you for being articulate in your counter arguments.

    As a patent drafter, I just want to know what the rules are so that I can play by them. When I prosecute a patent, and an examiner entirely disregards everything following “configured to” as “merely intended use,” I honestly believe he is disregarding an entire body of valid caselaw. Regardless of which line of caselaw it is.

    More specifically, as I understand it, what follows “configured to” is either is a limitation expressed in functional terms (see Typhoon Touch Technologies v. Dell et al., 659 F.3d 1376 (Fed Cir., Nov. 2011), Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008), etc…) - or - it should be construed under 112(f) (see MIT v Abacus Software 462 F 3d 1344 (Fed. Cir. 2006), Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004), CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002), etc…).
    Either way, I am entitled to SOME construction and shouldn’t have it entirely disregarded.

    I honestly don’t care which line the PTO follows, I just want it to be consistently applied so that I know how to do my job. Likewise, in a perfect world, the PTO would clarify the statement in 2114 that “While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function,” as even purely functional terms should be entitled to a structural construction under 112(f).

    1. Either way, I am entitled to SOME construction and shouldn’t have it entirely disregarded.

      If you think that there is a structure corresponding to your recited function, then you are free to describe that structure to the Examiner and provide evidence and reasoned argument to support your conclusion. Or you can amend your claim to recite the structure which you surely included in your specification (because who wants to get sued for malpractice?).

      It’s not the Examiner’s job to draft a patentable claim for you.

      “While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function,”

      That’s called “common sense”. You really need a case cite for that?

      1. That’s called “common sense”. You really need a case cite for that?

        He didn’t ask for a case cite for that. He asked for the PTO to supplement the existing case cite with some clarification. As he noted, some examiners are reading that statement to say that anything that follows “configured to” can be ignored, despite ample case law that clearly indicates that limitations expressed functionally very often can and should be construed as imparting structural limitations to the claimed apparatus.

        He is exactly right. 6 appears to be confused, thinking that this citation to in re Schreiber says something odd, i.e., to the effect that functionally expressed limitations are meaningful in an infringement context but not in determining patentability. Other examiners are confused about the distinction between limitations that express an intended use, which do not add any structural limitations to the claimed apparatus, and functionally-defined limitations that do.

        1. LB: some examiners are reading that statement to say that anything that follows “configured to” can be ignored

          Context is everything. I don’t doubt that some examiners are doing that improperly, but I also don’t doubt that some examiners are seeing so many claims relying on bogus “configured to” functionality that the default approach should be to ignore those functions. I have no idea what sort of claims anonymous is presenting. Of course, I could take a guess …

          Examiner consistency has been and always will be a problem. But applicants have amplified this problem by relying excessively and improperly on such language.

          As I said, I don’t know who “anonymous” is. I do know that some people have been defending functional claiming for years while many other people (myself included) have been pointing out that if it becomes normalized then the patent system goes into a death spiral (just as would be the case if [oldstep]+[newthought] claims were permitted).

          Perhaps the presumption in every case should be that “configured to” isn’t a structural limitation unless (a) the structure is evident from the claim (e.g., “said wire is configured to connect X to Y” or (b) the applicant can identify the corresponding structure for achieving that function when asked to do so by the applicant. That shouldn’t be a problem for anyone who has a patentable invention and who has described its structure somewhere in that application. You’re still going to get some inconstency with (a) but at least applicants will know what to expect when they are pushing the limits of functional language at the point of novelty.

          1. Canards and QQ

            Ignoring the law and what it actaully says and instead ‘relying’ on the law as Malcolm says it should be.

            Throw in the well-roasted vacuous ‘theory’ of [oldstep] and Malcolm’s soapbox looks oh so pretty.

            Y.
            A.
            W.
            N.

        2. “As he noted, some examiners are reading that statement to say that anything that follows “configured to” can be ignored, despite ample case law that clearly indicates that limitations expressed functionally very often can and should be construed as imparting structural limitations to the claimed apparatus.”

          My influence grows by the day! Though my adherents aren’t always so skilled as myself, and lag behind the curve. Some of them simply ignore the limitations instead of considering those limitations to refer to a 1 or a 0, the slightly more advanced formulation of the same thesis that helps to narrow the issue for the ignoramuses that have been generating caselaw at odds with reality.

          “6 appears to be confused, thinking that this citation to in re Schreiber says something odd, i.e., to the effect that functionally expressed limitations are meaningful in an infringement context but not in determining patentability. ”

          If you think I’m sooooo confused then you should consult your legal treatises and textbooks on the matter. Be sure to grab an old version, and then compare and contrast to newer versions. Newer versions of course sometimes note the apparent disregard for the oldschool law which is supposedly becoming accepted practice through nothing but people allowing it to occur. The USSC is mightily not impressed with such nonsense, which is why I’ve stated quite clearly it is yet another aspect of the CAFC’s caselaw just begging to get knocked down by the supremes. In a round about manner we’ll likely see this happen in Alice.

          And to be clear, the citation to schreiber isn’t so complex as “the effect that functionally expressed limitations are meaningful in an infringement context but not in determining patentability. ” The limitations are “meaningful” in both contexts. But what you’ve stated is simply what follows from the actual law that the claim be DISTINGUISHED in terms of structure, that is, from the prior art. Even if the claim is properly DISTINGUISHED from the prior art in terms of structure, it may still contain functional recitations which will of course bind the patentee in court when it comes time to judge infringement. That’s just simply an effect of the law, not the actual formulation thereof. And it is there for good reason.

          But here, on this sub-category of discussion, just between you and me LB, since we have a similar case pending at the USSC perhaps we can discuss the matter a bit further. Perhaps you’d be so kind as to tell me, does the claim in Alice really implicitly require “complex” coding (set aside Techdirt showing 16 lines of code to perform the method) and a bunch of specialized machinery like Rader and those adopting your views would have us believe? Note that your position here, regarding apparatus claims essentially rests on essentially the same premise. If the premise falls then so does the rest of the position.

          If you think so, do you predict Alice comes through the ordeal with flying colors? Or, would you instead suggest that the USSC will see through such nonsense and see the claim for what it is?

          And if the later, do you not see that your premise is pretty much shot, and thus your view on modern drafting of apparatus claims likewise falls by the wayside sans that same premise?

            1. Well I was the original bringing this to light and I do spread the gospel. If there are other people out there doing likewise then I’d sure be interested to know these folks.

      2. The words following “configured to” mean something. If an examiner can’t figure it out, then maybe the proper rejection is under 112. The legal tools exist to construe even purely functional language. Examiners aren’t allowed to pick an choose which words they consider when judging patentability. See MPEP 2143.03 “All words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).

        Your arguments may be valid policy arguments, and may be totally appropriate in a brief for the Alice v. CLS Bank case, but policy is set by legislators, judges, and rule making committees. Examiners and applicants must both follow the rules that are handed to them. Right now, I am more concerned with what the law is, and not what it should be.

        1. Examiners aren’t allowed to pick an choose which words they consider when judging patentability. See MPEP 2143.03 “All words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).

          This kind of out-of-context CCPA aphoristic silliness is just another way of sticking your fingers in your ears and pretending that the issues being discussed don’t exist.

          Moreover, it ignores reams of Federal Circuit case law which says that the exact opposite is true in certain circumstances. See, e.g., case law re preambles, claims reciting new “results”, product by process claims, and/or claims reciting so-called “printed matter”.

          Patentability of a claim is undoubtedy judged by the words in the claim. But not all words are treated equally for all purposes.

          1. So MPEP 2114 is good common sense law, but 2143.03 is aphoristic silliness.

            To recap:
            1. not all claim terms are treated equally, and some we can just plain ignore.
            2. not all MPEP sections are treated equally, and some we can just plain ignore.

            Makes total sense to me.

            1. 1. not all claim terms are treated equally, and some we can just plain ignore.

              You’re learning! There’s a lot more to it than that but maybe if you go to law school and take the patent bar you’ll start to get a better handle of now things work.

              2. not all MPEP sections are treated equally, and some we can just plain ignore.

              The MPEP has been rewritten many, many times. It’ll continue to be rewritten as case law and applicant behavior evolves. At any moment in time there are MPEP sections that are out of date and MPEP sections that beg to be re-written or written for the first time. For example, I can think of quite a few basic facts that should be considered and probably articulated (for the benefit of the naive or faux-naive applicant) every time an information processing apparatus or method is claimed and presented to the PTO. Can you think of any? If so, please share them with everyone. Oh wait: that would like shooting yourself in the face, wouldn’t it?

    2. “I honestly don’t care which line the PTO follows, I just want it to be consistently applied so that I know how to do my job. ”

      That’s a big part of the problem. People causing trouble for other people that are affected by their work not caring how their work affects others.

      1. More character suicide by 6.

        Try again 6 – you missed his message: he seeks to understand the rule so that he could do his job correctly.

            1. Nah that’s not what he’s saying. But as Mr. I can’t read worth a flying fck, you surely show us how your inability to read can be used to further your own thinking.

  4. Dennis:

    Because of your focus on functional claim language. Let me ask you a serious question. Why do you think it is a problem?

    As patent claim drafters, we work with an imperfect medium … the English language. Look up any word in a dictionary and you’ll likely find several entries. Additionally, we have different words that have nearly the same meaning where the words are used different to express a slight nuance in the meaning – although some people don’t recognize/appreciate those nuances. These are the tools of our trade and they are imperfect tools.

    When drafting claims, we aren’t necessarily enabling the invention. Instead, we are to particular point out and distinctly claim the subject matter to be invented – which is a combination of identifying the claimed subject matter while at the same time distinguishing from the prior art. When I analyze an invention, there is rarely a single feature, that on its own, could be considered patentable. Instead, what I find is that most inventions are combinations of several known elements combined in a manner not contemplated by the prior art.

    What I have also found that in both mechanical and computer related applications is that many elements are best described in functional terms since it is the function that is important – not the specific “means” to perform the function. In many instances, there could be several, a dozen, a hundred, or a thousand different means to accomplish the claimed function. However, which one performs that function is irrelevant to the invention (although it could be relevant to best mode, but that is a different story). Why should I be forced to describe the element structurally when it doesn’t matter in the context of the invention?

    Most inventions do something, which means that I can also claim the invention as a series of steps (i.e., a method/process). Thus, I can easily claim the invention in the context of method steps, which does not require the structure. If I can claim “a method, performed by a processor, comprising: step A, step B, step C,” what is the big deal about claiming “a computer comprising: a processor configured to perform step X, step Y, and step Z”? Why should we be limiting the “configured to” language in the device claim when the method claim will not be so encumbered?

    Functional language merely provides a claim drafter with a tool to claim an element broadly. Moreover, as with all claim language, it is a double-edged sword. While the broader language allows for expansive infringement arguments, broader language also permits more prior art to be cited against the claims.

    As I have noted in the past, some alleged “structural” terms are functional by their very nature. For example, consider the following: connector, distributor, light, copier, radiator, computer, container, router, amplifier, filter, insulator, conductor, joint, linkage, sensor, switch. These are all structural terms that are derived from the function they perform. Should we be questioning the use of these terms as well?

    Getting back to my point about the English language, we are constantly inventing new “structural” terms because the English language is not perfect. Moreover, many of these new terms are based upon what the structure does – not what it is. Given that the English language is imperfect, we have to make do with what we have. As such, why should we be hamstringing our ability to particularly point out and distinctly claim the invention by limiting ourselves to a particular category of words?

    1. PG: While the broader language allows for expansive infringement arguments, broader language also permits more prior art to be cited against the claims.

      In theory that might be true. In practice, of course, it’s a complete joke and everybody knows it.

      If the prior art doesn’t teach the combination of functions you recite, what difference does it make to you if “more prior art” is cited or not? You’ll just pound your fists on the table and shout “claims as a whole” and argue that the prior art didn’t enable that combination of functions.

      That’s the game that you guys play.

      These are all structural terms that are derived from the function they perform. Should we be questioning the use of these terms as well?

      Otherwise known as “the sky is falling” argument. Again, the problem is not the use of old terms with functional connotations and actual structures that are readily ascertainable to skilled artisans. Nobody is arguing that if you use the term “conduit” in a claim that your claim should be unenforceable. Got it? Try to relax.

      The problem is “new” machines or manufactures (or methods that use “new” machines or manufactures) where no new structure is provided for those “new” machines but rather just the new functionality (or new functionalities, in the case where the Examiner finds anticipatory art whereupon you fold in some additional function that isn’t found in the anticipatory art). The typical example and the most problematic example of this kind of a “new” machine is an old information processing machine, otherwise known as “a computer” with new functionality magically ascribed to it.

      connector, distributor, light, copier, radiator, computer, container, router, amplifier, filter, insulator, conductor, joint, linkage, sensor, switch. These are all structural terms

      Why? Because you say so? What’s the “structure” of “switch”? What’s the “structure” of “light”? What’s the “structure” of “computer”? What’s the “structure” of “copier”? What’s the “structure” of “sensor”? What’s the “structure” of “connector”? These terms are surely more functional than structural but, again, the use of functional terms per se is not the issue.

      why should we be hamstringing our ability to particularly point out and distinctly claim the invention by limiting ourselves to a particular category of words?

      There’s nothing “particular” or “distinct” about a description of a desired functionality for a machine or manufacture that you have never built or whose structure is completely unknown to you.

      So go ahead and cry me a river. Plenty of inventors and patent attorneys have been describing manufactures and apparatuses and compositions without using functional language at the point of novelty. And there’s good reasons for requiring that of inventors and their patent attorneys. One good reason is that if you don’t do that you end up with grifters piling into the system simply placing bets on what desired functionality is going to be commercialized next. That’s not the way to promote progress. That’s just a way to promote grifting. And here’s the thing about grifters: they are going to grift no matter what. Let them find another teat to nurse off.

      And nobody really believes that patents are needed or even helpful for promoting the progress of information processing “technology.” Even if they were, the least helpful way to do it would be by granting claims on the new functionality without providing de-bugged source code ready to be used in commercially relevant operating systems. You want the patent? Provide some working code. That’s “particular and distinct” disclosure. Then we might see some real progress. That’s how the “real world” works. Or that’s the way it used to work before some lawyers decided they wanted to own the Internet.

      1. Your post said absolutely nothing MM. You yapped a little straw man. You burnt your little straw man. Then declared the facts that according to you are that we are all cheating the system. SMMoke.

      2. There’s nothing “particular” or “distinct” about a description of a desired functionality for a machine or manufacture that you have never built or whose structure is completely unknown to you.

        This seems to be the crux of what really bothers you about claims that use “configured to” language. But I don’t think the law backs you up here. Assuming that the claims are enabled, what is really required by the “particular” and “distinct” aspects of Section 112 is that you can tell which apparatuses infringe and which don’t. Just as with any other claims, drafters who know what they’re doing don’t usually have any real trouble with that, even while using “configured to” language.

      3. In practice, of course, it’s a complete joke and everybody knows it.
        If I recall correctly, you don’t practice in the arts in which the term “configured to” is used. As such, how would you know? I have, and I can tell you with 100% certainty that an Examiner will never have a problem citing art against any language that an attorney will used.

        If the prior art doesn’t teach the combination of functions you recite, what difference does it make to you if “more prior art” is cited or not? You’ll just pound your fists on the table and shout “claims as a whole” and argue that the prior art didn’t enable that combination of functions.
        As any good attorney should do if the Examiner has failed to present a rational underpinning for the proposed combination.
        That’s the game that you guys play.
        Arguing case law is not playing a “game.” It is practicing law.
        Nobody is arguing that if you use the term “conduit” in a claim that your claim should be unenforceable. Got it? Try to relax.
        Why not? What is an “insulator” but another word for “means for insulation”? Why shouldn’t these words be questioned as well? What is the policy rationale for coming down hard on “means for insulation” but not “insulator”?
        an old information processing machine, otherwise known as “a computer” with new functionality magically ascribed to it
        Unfortunately, that is (one of) your problem(s). Computers are little more than a magical device to you. Your past comments have made it painfully clear that you don’t understand their incredible complexity. Listening to you talk about computers is probably about as painful as a modern doctor listening to a doctor from the 1700s attempting to diagnosis an ailment. What is so sad is that your are more than content to wallow in your blissful ig nor ance.

        There’s nothing “particular” or “distinct” about a description of a desired functionality for a machine or manufacture that you have never built or whose structure is completely unknown to you
        Are you performing the function? If yes, then you meet that particular claimed limitation. If not, then are not meeting that particular claimed limitation and are not infringing. Pretty f’n’g particular and distinct to me. As to the part of building, there hasn’t been a requirement for working models in quite some time. Regardless, most of this stuff is fairly easy to build. In fact, with the clients I work with, the stuff is being incorporated into real products.

        So go ahead and cry me a river.
        It is you (among others) that are b’tch’n and moaning about these types of claims – not I. Both the USPTO and Federal Circuit have blessed these claims. In fact, we wouldn’t be having this conversation except that there are some who cannot accept that these claims have long been deemed acceptable. I’m not the one crying a river … you are.

        One good reason is that if you don’t do that you end up with grifters piling into the system simply placing bets on what desired functionality is going to be commercialized next
        There will always be people who attempt to game the system. This is going to happen regardless of the limits placed upon what claim language is required. If you want to remove the speculators, then go back to the requirement of working models be submitted. Regardless, there are legitimate inventors using these terms for legitimate reasons.
        Moreover, you completely ignored my point about the relationship between method claims and device claims reciting “configured to,” which is that there is little difference between the two. Limiting the scope of “configured to” isn’t going to change the scope of the method claims. As such, everything you are arguing for isn’t going to have any substantive impact since the method claims will still have same scope.

        nobody really believes that patents are needed or even helpful for promoting the progress of information processing “technology.”
        Hauling out that canard again … what, for the ten thousandth time?

        That’s “particular and distinct” disclosure.
        You are really pathetic. How many times have you been told about the difference between the 1st and 2nd paragraphs, and you still don’t get it. You don’t understand that particular and distinct applies to the claims – not the disclosure. You also don’t get that specification need only enable one skilled in the art to make and use the claimed invention – not provide a working blueprint.

        1. The worst part would be if in fact ‘he gets it’ by understanding the controlling law but nevertheless simply does not care and is merely pursuing his agenda.

          Facts won’t matter to such a person.
          Law won’t matter to such a person.
          Intellectual honesty won’t matter to such a person.

          (are you getting the picture?)

        2. Patent_Guru, let me say I agree with everything yous say here. There is a real difference between claiming a new method that has a plurality of steps and/or claiming an apparatus or system configured to perform that method, and claiming new structure functionally, i.e., a single claim element defining the structure in terms of what result it achieves.

          I see that Random Guy also gets it.

          Halliburton truly was limited to what are effectively single means claims where the new structure being claimed is defined by the result it achieves — where the other elements in the claim are ‘nominal,” i.e., the combination being claimed is old but for the one element defining the new structure functionally.

          Halliburton did not extend beyond “functional-at-the-point-of-novelty.” There is no Supreme Court authority, or any other authority that I know of, that holds indefinite or non enabled claims that employ functional limitations to define old elements or new combinations.

          We really need the courts to clearly confine 112(f) to a specific overruling of Halliburton. Thus, if a claim does not employ “means for”or “step for” language, it is not governed by 112(f), period, end of story.

          That would mean that claims that did not employ such language and that were in fact functional at the point-of-novelty would be invalid under 112(b) per Halliburton.

          1. “We really need the courts to clearly confine 112(f) to a specific overruling of Halliburton.”

            They already did and you cited me a 1993 decision that made the painfully clear. All it does is tell you how to construe terms drafted in a certain way and bless such drafting.

        3. “I have, and I can tell you with 100% certainty that an Examiner will never have a problem citing art against any language that an attorney will used.”

          I’ve observed such prosecutions and they’re worse than jokes. Which is also why there’s so much qq always coming from the crowd that practices before the office in such arts regarding the art applied in such cases.

        4. “In fact, we wouldn’t be having this conversation except that there are some who cannot accept that these claims have long been deemed acceptable.”

          I think we’re having this conversation because of evidence D found as to the pervasiveness of the use of the term increasing. As predicted and as is completely understandable. “configured to” for every patent I say! It should be as commonplace as “comrprises”.

    2. Patent Guru, there are two real problems here: 1) claims functional at the point of novelty which is the very subject of Halliburton; and 2) 112, 6 — which everyone in their right mind wants to avoid given the grabbed jurisprudence of the Federal Circuit. Your post really does not relate to either issue.

      Regarding functional language per se, you make a lot of valid points that I have always agreed with which compel me to ask you to join with me to call for a repeal of 112, p. 6.

      Now, go read Halliburton and the cases it relies on all the way back to Wyeth v. Stone and O’Reilly v. Morse. Claims functional at the point of novelty essentially claim a result, not a method. The are, in effect, single means claims.

      1. The are, in effect, single means claims.

        Except for the fact that they are not, and that to get to such a ‘logical’ point, one must then eliminate the ENTIRE ‘read the claim as a whole’ jurisprudence.

        Ned, stop the PON canard already.

        1. one must then eliminate the ENTIRE ‘read the claim as a whole’ jurisprudence.

          Apparently much of that jurisprudence is unadulterated hogwash if it’s led people like you to believe that it’s forbidden to analyze the relationship of elements in a non-anticipated claim to the prior art.

          Take a non-anticipated claim in the very typical form:

          An apparatus comprising
          receiver for receiving information from [old source]
          processor for determining [something about said information].

          There is no new structure in that claim. You’ve got a device with an old receiver and you’ve got a processor that “determines” something. But the game you guys play is that “claims as a whole” prohibits finding such a claim obvious in spite of the fact that it’s utterly transparent to anybody with half a brain that you are doing nothing more than claiming a new function for an old device without providing any new structure.

          As I’ve pointed out before, this is the without any doubt The Lowest Form of Inventing. Anybody can do it. No skill is required. No work is required, other than writing down your dream of what this new computer can do. Now you’ll cite some garbage about “inventions shall not be negatived by the manner in which they were achieved” as if that’s relevant to deeply flawed claims of the sort we are discussing.

          The curtains are closing, friend. Figure out your next move. As we all know, grifters are going to grift. You’ll find something else to do. Maybe you can work in a mailroom somewhere. You seem to have some expertise there, as I recall.

          1. The Lowest Form of Inventing. Anybody can do it. No skill is required

            So says Malcolm – do very Carroll.

            Wait, maybe Malcolm thinks that there is some other standard (by law)…? Maybe, a Flash of Genius is ‘required’….?

            LOL

            Come back to this reality Malcolm.

      2. Halliburton = overruled by statute
        112, 6 = not invoked

        BTW … what is the underlying reasoning against functional claim language? We aren’t talking about Morse claiming anything and everything to do with electromagnetism. We aren’t talking about a claim to a “means for curing cancer.” We are talking about language in which the invention can use any number of a multitude of different structures to perform a particular function and it doesn’t matter which one is used.

        1. Patent Guru: “Halliburton = overruled by statute
          112, 6 = not invoked”

          Mr. Guru, Not overruled the way you think. 112(f) authorizes claims functional at the PON that Halliburton would find indefinite, but it imposes a rule of construction that everyone abhors.

          But, 112(f) is not literally limited to claims functional at the point of novelty, and ropes in claims where 112(f) should not apply.

          Rich, in writing 112(f) back in ’52, needlessly made it apply to all functionally claimed elements, old and new, and included methods and material as well. Why in the world did he do that? It almost appeared that Rich himself was at war with method claims, with claiming old elements broadly, etc., etc., etc.

    3. The reason it is a problem Patent Guru is that Mark Lemley figured out it was another way to attack the patent system. Mark Lemley’s article on functional claim drafting is ridiculous. He re-writes the history of claim drafting and fabricates a narrative of patent attorneys as banksters. Just look at the history of these attacks. 6 years ago computer programs were laws of nature. Now we shot that one down. Now it is functional claim language. But, we that do the work, know there is no problem.

      1. Completely agree. The article on functional claiming by Lemley is the worst trash that I have ever read by him (and that is saying a lot).

        I vomitted several times just trying to get through the opening paragraph.

    4. “In many instances, there could be several, a dozen, a hundred, or a thousand different means to accomplish the claimed function. However, which one performs that function is irrelevant to the invention (although it could be relevant to best mode, but that is a different story). Why should I be forced to describe the element structurally when it doesn’t matter in the context of the invention?”

      This is where you lose me. Your “invention” clearly has a particular means of achieving it. It’s also within your ability to state other means of achieving it. But you want to skip those steps and just say “I claim the result regardless of how it’s achieved.” You may view that as your invention, but I don’t think that is something we have ever permitted someone to capture. The result captures means not known or considered by the inventor. The result captures completely different structures which, while you may not consider them important, in fact are. The court denied Morse all machines that achieve his function regardless of how they were set up – why is this situation any different?

    5. See, when it comes down to it, sht gets whiny really fast:

      “As patent claim drafters, we work with an imperfect medium … the English language.”

      “When I analyze an invention, there is rarely a single feature, that on its own, could be considered patentable. Instead, what I find is that most inventions are combinations of several known elements combined in a manner not contemplated by the prior art.”

      That’s a weird art you’re in.

      “What I have also found that in both mechanical and computer related applications is that many elements are best described in functional terms since it is the function that is important – not the specific “means” to perform the function.”

      You say “important”, but “important” to who? Imaginary men? You? The inventor? The accused infringer? The public?

      “Why should I be forced to describe the element structurally when it doesn’t matter in the context of the invention?”

      Any number of reasons? Because that’s just your subjective opinion of what the “context” of the invention is? To demonstrate possession? To distinguish over other structures? To actually contribute something to the art in exchange for your patent? The list goes on.

      “If I can claim “a method, performed by a processor, comprising: step A, step B, step C,” what is the big deal about claiming “a computer comprising: a processor configured to perform step X, step Y, and step Z”? ”

      There are fundamental things about how claims work at play there. Method claims are for intangible things. Apparatus/product claims are not. That’s the way it’s been forever. And for good reasons that I could repeat for you if you insist.

      “Why should we be limiting the “configured to” language in the device claim when the method claim will not be so encumbered?”

      Who says the method claim will not be similarly encumbered? It will be, in different ways.

      “Functional language merely provides a claim drafter with a tool to claim an element broadly. ”

      And avoid things like drawings, definitively distinguishing over the prior art, contributing to the art and demonstrating possession. Amongst some other things.

      “As I have noted in the past, some alleged “structural” terms are functional by their very nature.”

      I’m stringent on those as well. If the functionality of the term comes into play and is relevant to the case one must be vigilant and the CAFC often is not. But no, you don’t question the use of them. You simply question what happens when they’re used.

      “As such, why should we be hamstringing our ability to particularly point out and distinctly claim the invention by limiting ourselves to a particular category of words?”

      I think I answered pretty much the same question throughout this comment. Though I’d love to hear from D.

    1. NWPA,

      MaxDrei is not really interested in actual conversations. He has explicitly said so in the past. All that he is interested in is his little soapbox. Anything that interferes with that magiaclly becomes incomprehensible to him.

  5. Dennis, if possible, it would be nice if the comments clearly indicated who was being replied to. That’s sometimes difficult or impossible with the nesting set-up as it presently stands.

    1. I like to pretend you aren’t responding to me MM, but just rambling to the ether. The format on this site makes that easier.

      1. Ned: we need to know who a post replies to and which post.

        The alternative is to re-learn the old habits, like always quoting from the comment you are addressing with an indication of where the quote is coming from (like I did here).

        Sort of annoying but it’s the only clear alternative I can think of.

        1. Of course, since programming a computer is the easiest thing ever once the function is described this obvious and tiny change should be a five second fix for some artisan of ordinary skill. And yet …

          So much for that “golden age” someone was clapping about downthread.

          Does Discus own patents on the format of comment threads, I wonder? It’s frightening to contemplate those claims …

          1. Nice non-sequitur Malcolm.

            Of course, being pedantic comes naturally to you, no matter what the software application being used, so no real surprise there.

  6. Why are we citing to Halliburton? That case was statutorily overruled by Congress. Courts since then have held that it was the intent of congress to allow functional limitations…

    See, In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) (en banc). (“In Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S.Ct. 6, 91 L.Ed. 3 (1946), the Supreme Court held that means-plus-function language could not be employed at the exact point of novelty in a combination claim. Congress enacted paragraph six, originally paragraph three, to statutorily overrule that holding. See In re Fuetterer, 319 F.2d 259, 264 n. 11, 138 USPQ 217, 222 n. 11 (CCPA 1963) (noting that it was Congress’s intent to restore the law regarding broad functional language in combination claims to its state prior to Halliburton).”

    1. According to the SCOTUS (forget the cite, but it will come to me), the 1952 Act merely codified their common law. It didn’t change their common law one whit.

      The great battle is not the Fed. Cir. misbehaving, it is the SCOTUS refusing the passage of the 1952 Patent Act.

    2. The citations to Halliburton are intended to rake the muck and
      a) mirror an old battle lost
      b) force constraints (choose 112(f) or be ‘indefinite’)
      c) is a gasp by the anti-software patent crowd desperately thrusting its head in the sand given the plain facts that software is a man-made manufacture and machine component that creates a new machine.

      As to b), the canard of Point of Novelty is bandied about as if that zombie were alive and some have actually maintained that such is an adequate position for 101 or even 102/103.

      The notion that the 1952 Act was purely codifying is complete fallacy not supportable in the least.

      Yes, the Supreme Court is to blame for the lawlessness – they refuse to release their addiction to fingers in the nose of wax. Power once held is difficult to relinquish, but our constitution did NOT give that power to the judiciary (implicitly or otherwise).

      1. >>The notion that the 1952 Act was purely codifying is complete fallacy not >>supportable in the least.

        There is a case where the SCOTUS say it merely codified their case law.

        1. If what you say is true, then it appears that the SCOTUS is at odds with the drafters of the 1952 patent act…

          See In re Fuetterer, 319 F.2d 259, 264 n. 11, 138 USPQ 217, 222 n. 11 (CCPA 1963) (stating “… See also in this regard the February 1952 issue of the American Patent Law Association Bulletin wherein is reprinted at pp. 40-50 an address by the Hon. Joseph R. Bryson, Representative from South Carolina, given on January 24, 1952, to the Philadelphia Patent Law Association. Representative Bryson was at this time Chairman of Subcommittee No. 3 of the Judiciary Committee of the House of Representatives, which subcommittee was in charge of the legislation which resulted in the Patent Act of 1952. He stated in part (at pp. 45-46):

          ‘I should like to say a word on the provision in the bill for functional claiming. [H.R. 3760, 82d Cong., 1st Sess., § 112 (1951)] * * *. This provision in reality will give statutory sanction to combination claiming as it was understood before the Halliburton decision. All the elements of a combination now will be able to be claimed in terms of what they do as well as in terms of what they are.’”)

          1. “All the elements of a combination now will be able to be claimed in terms of what they do as well as in terms of what they are.’”

            If Congress actually intended to allow applicants to claim new functions for old machines without describing (either in the claims or in the specification) the specific novel structural arrangements responsible for those functions, it chose a very bizarre way to state their intent. Because Bryson certainly didn’t say that when he (rather thoughtlessly) spouted the quoted passage above, nor does 112P6 say that, nor has any case that I’m aware of stated that functional claiming at the point of novelty (without structure in the claims or spec) was what was being greenlighted.

            And I’m quite certain the Supremes aren’t going to greenlight that idea now or ever as long as it’s expressed plainly in a way that confuses nobody. Nor will Congress.

            Maybe you guys should come up with some kind of compromise because the talking points you’re working with will never carry the day.

            1. claim new functions for old machines

              LOL – yet again Malcolm slinks back to rhetoric that he refuses to answer core questions to.

              Malcolm, how exactly does this old machine – without changing into a new machine – obtain this new function?

              You never seem to want to answer questions that have exposed your rather moldy script.

              See Alappat. Then try – please just try – to join the conversation in some minimal intellectually honest manner.

            2. Inherency crushes your vapid ‘oldbox’ paradigm Malcolm.

              That and the fact that paten law allows patents for manufactures (which is what software is) and for improvmeents to machines (which is what happens when an old machine is CHANGED and configured to have a new capability.

              Still no substantive word from you on the recent case, Malcolm (or Ned, for that matter).

              Still no intellectually honest response from you on the Grand Hall experiment, Malcolm (or Ned, for that matter).

              Gee, this is not surprising to anyone, is it?

          2. Yes anonymous. What the USSC said, and what the gentleman in question said are in fact the same thing. You just don’t understand what the gentleman in question was saying. Note that he is talking about “combination claims”. That is an old school term of art for a very specific type of claim. (Ned can provide you some help in citations if you’re unfamiliar with this). Likewise, those kinds of claims are indeed now able to be claimed in terms of what they do as well as what they are, in the very limited instance of using the 112 6th means for language. I’m sorry that the gentleman was not clear enough for you to understand that he was not talking about them overruling Halliburton itself but rather giving people an easy out from the overall ruling. A very specific easy out. They did not intend to open the flood gates so to speak.

            1. 6, the SC in Halliburtion WAS talking about combination claims in their more limited sense of claims to apparatus.

              But Rich rewrote the proposal of the Milwaukee PLA to extend the 112(f) (then paragraph 3) to any combination of apparatus, materials or acts, and in Application of Fuetterer, 319 F.2d 259 (C.C.P.A. 1963) he applied 112(f) to a claim to a composition that was formed by combining two other materials. MPF was not used.

              The vice people find themselves in is apparent. All functionally expressed claim elements in combination claims are both authorized by and subject to the limiting construction of 112(f) regardless of whether the function is at the point of novelty.

              Thus Rich’s cure to Halliburton was fantastically overbroad and completely unnecessary — a cure far worse that the disease he was trying to cure.

            2. “6, the SC in Halliburtion WAS talking about combination claims in their more limited sense of claims to apparatus.”

              Ned I can’t respond to your comment directly due to the new comment system.

              But:

              Ned, if you’ll bother yourself to read the decision they’re not talking about the context of combination claims in the format addressed by 112 6th paragraph. The claims are written in mpf format, but the court notes that the lower courts explicitly construed them not in the manner we currently interpret such mpf language (i.e. to cover the stuff in the spec and equivs). Instead, they interpreted the term the way we would normally construe just ordinary functional language. The USSC upheld that construction and that was why the USSC pounced on them. Dat claim construction.

              The congress stepped in with explicit orders on how to perform claim construction in that instance where combo claims are written in what we now know as mpf format. And that is specifically what the gentleman quoted above was referring to in the congressional record. Of course once you interpret such claims in such a manner it’s all good and the USSC doesn’t mind.

              “All functionally expressed claim elements in combination claims are both authorized by and subject to the limiting construction of 112(f) regardless of whether the function is at the point of novelty.”

              I wish brosefus. Frankly the whole “combination claim” term of art has been discarded on the dust heap of history and it isn’t about to be brought back anytime soon. We of modern heritage see no point in distinguishing between claims with just one element and a “combination claim” where there are multiple elements. Frankly ivo this the whole of 112 6th needs revision. Well, it needs revision or striking anyway but yea.

              “Thus Rich’s cure to Halliburton was fantastically overbroad and completely unnecessary — a cure far worse that the disease he was trying to cure.”

              I certainly agree with that. But frankly I think Rich was up to no good from the beginning. The guy was the ultimate of ultimate patent maximalists. Though, to be sure, in his age of barely any patent activity one can understand why he’d want to jumpstart the whole endeavor into something he’d feel was worthwhile. I doubt though, had he lived to 2020 that he’d still hold such beliefs as he was a rather reasonable man from what I hear on the whole.

          3. anonymous, Rich in Fuetterer did say that 112(f) was intended to authorize all functional claiming in combinations (and regardless that they used MPF) or that apparatus was involved. But, that is not what people want is it? They want to use functional claiming without having the claim be subject to 112(f)’s construction clause.

            Can’t have it both ways now can we?

            1. We want the best of both worlds for a very good reason. Speaking as an electronics engineer, almost any electronic function can be implemented in an almost infinite number of ways without making any noticeable difference. To be limited to one implementation of each element would be a disaster. Or to put it another way, the statute tends to limit claim scope to the point where you have a blueprint claim that anyone can design around. So, we look at the latest attack on functional language and write around it. If there is a viable alternative, I’m sure I don’t know aht it is.

            2. “Or to put it another way, the statute tends to limit claim scope to the point where you have a blueprint claim that anyone can design around.”

              That’s kind of the point Alun. You get what you described/invented/claimed and other people get to make what they want to also. That’s what is known as “promoting the useful arts”. Though I understand why people don’t like that and why there is pushback. Fact is, the patent system was never made for electronic devices, it came about before them and they’re just bootstrapped in. If congress would explicitly give directions on how to handle such things then there would be no debate (at least from me) as the will of the people would be done.

            3. 6 in reply to Alun states “That’s kind of the point Alun.

              Once more suiciding his character and his pursuit of his belief system in the face of actual law.

              You do know about the concept of the doctrine of equivalents, right 6? You do know why ipsis verbis is something that is neither required, nor is good (and that the picture claim mentality you are presenting is a BAD idea), right?

              LOL – wait, this is directly related to the concept of the ladders of abstraction and we all know that you refuse to understand that concept.

          4. anonymous – Fuetterer supports the anti-functional position, not the pro…

            In Fuetterer the functional language was to describe a property of old item. The language you quote goes to that proposition. It specifically distinguished functional claiming as they’re used today:

            “In the Fullam case, this court stated that some claims were properly rejected as “functional in claiming merely the desired result well known to and sought after by workers skilled in the art.” Claims directed merely to a “desired result” have long been considered objectionable primarily because they cover any means which anyone may ever discover of producing the result. See, e. g., O’Reilly v. Morse, 15 How. 62, 14 L.Ed. 601; Heidbrink v. McKesson, 290 F. 665.”

            “It is true that appellant’s inorganic salt is defined in terms of “what it does” rather than “what it is.” We note, however, that the Supreme Court, in a seldom quoted passage in the Wabash case, stated:

            “A limited use of terms of effect or result, which accurately define the essential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable * * *.”

            Appellant in the instant case has made just such a use of terms of result to define an essential quality of his inorganic salts.”

            Applicant used functional language to define an inherent property of an old item. Applicant was not claiming that his novelty arose from new functionality. The court was simply stating that functional language is not categorically improper, but there’s a distinction between permitting its use categorically and categorically saying that it’s allowable. The other citations by the court show that functional claiming to define something new is improper.

        2. SCOTUS is wrong.

          Point blank wrong.

          Such addiction to power is the reason the founding fathers gave Congress – not the courts – the ultimate power to write patent law.

          When the Court reaches out to rewrite patent law (and make no mistake that such is exactly what has happened when the Court has to dance mightily and find ‘implicit’ wording that simply logically cannot co-exist next to the explicit words actually used by Congress), you know that the power struggle is afoot.

          The real question is a bit different. The real question is whether the Court will finally see its own hand in the mess created, will finally stop its addictive overreach and Lochnerian judicial activism, and finally stop trying to rewrite patent law, and instead allow the actual words of Congress to control.

          I really doubt that this Court is ready to do that.

          Instead of muckraking, I would prefer the ‘intelligensia’ of our legal teaching community would wake up to this power struggle and address it. I find it humorous (in a bad joke sense) that our legal teaching institutions use the power struggle of a mere appointment as a defining moment in judicial power (amongst the branches of the government), but remain silent as to this power struggle when so much more is riding on who is actually writing the law that matters.

          1. >>I would prefer the ‘intelligensia’ of our legal teaching community >>would wake up to this power struggle and address it.

            But, then how would they turn a buck?

          2. anon: would prefer the ‘intelligensia’ of our legal teaching community would wake up to this power struggle and address it.

            Because nobody in legal academia ever discusses the “power struggle” between the Supreme Court and Congress.

            What you really mean is that you wish that “legal academia” would discuss only that subject and nothing else, and then write a stern letter to Congress demanding that somebody scold the Supreme Court for not loving patents as much as you do.

            First they took away claims to mental processes, even though 101 clearly says processes are eligible! Then they made it harder to claim the human genome. Now they are going to make it harder to get patents on functionally claimed computers. I can feel the Republic collapsing! Oh noes! Here come the married gay people. You know what it reminds me of? Fascism.

            1. What I really meant is what I really said.

              No need for Malcolm spin and mis-characterization.

              Find a different profession Malcolm, your loathing of the natural work product of what you do is twisting you.

            2. First they took away claims to mental processes,

              LOL – ONLY in Malcolm’s strawman universe in which only he (alone) talks about claims COMPLETELY made up of mental steps.

              In this reality, no one is talking such, and the actual claims under discussion are those that are not completely mental steps.

              Lo and behold, the claims under actual discussion are often patent eligible and patentable.

              Intellectual honesty Malcolm means that you have to leave behind your favorite vacuous strawmen.

              I don’t think that you are capable of doing it.

              .

              Re: the genome case… Are you obliquely referring to the Myriad case? LOL – who was right in that case, Malcolm? And who was right for exactly the right reasons?

              LOL – you do not get to spew another 30,000 plus words of mewling QQ in your ‘answer.’

          3. “SCOTUS is wrong.”

            That’s anon’s position on pretty much every contention between me and him. And then when a case gets to the supremes of course they go with my position (because it is their position). And then anon qq’s a bit more and runs to the federal circuit to hold his hand.

        3. NWPA,

          It did in Graham v. John Deere:

          “We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago [383 U.S. 1, 4] announced by this Court in Hotchkiss v. Greenwood, 11 How. 248 (1851), and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same.”

          As you and anon note, this view by our Judicial Mount Olympus in Graham is utter rhetorical nonsense. Congress didn’t simply codify prior case law in the 1952 patent statutes. That our Judicial Mount Olympus “didn’t get the memo” from Congress in this regard or more likely simply ignores that “memo” reflects very poorly on SCOTUS.

          1. That our Judicial Mount Olympus “didn’t get the memo” from Congress in this regard or more likely simply ignores that “memo” reflects very poorly on SCOTUS.

            Hardly. That was ages ago. If the Supreme Court had so clearly misapprehended what Congress was trying (not very hard) to say, Congress has had ample time since then to amend the statute to unambiguously say what they mean.

            Unless poor drafting and hoping for the best in court has become some kind of weird patent law tradition.

            1. That a fragmented Congress has not corrected the Court in no way indicates that the Court was wrong in the first place.

              You too, need to borrow the notes on ‘legal realism’ from Leopold.

            2. So to be clear, anon thinks (in a post that it is impossible to respond to in the commenting system) below that a “fractured” congress couldn’t set the court straight. Apparently this fracturing happened right after the act was passed and the court ruled on it some 50 years ago and the congress has never healed since. But but but you might ask, was the congress whole in 1952 if they are now still fractured? According to anon, I guess so.

          2. Good job taking a quotation out of context. The “principle” referred to in your Graham v. John Deere quote is that an invention is not patentable if it would be obvious to one skilled in the art. Hotchkiss dealt with a simple substitution of materials, which was held to be within the skill of of an ordinary mechanic. This is a specific reference to a specific legal precedent…

            See Graham at 16 (discussing the argument between the various parties about the intent of the first sentence of 103: “It is contended, however, by some of the parties and by several of the amici that the first sentence of § 103 was intended to sweep away judicial precedents and to lower the level of patentability. Others contend that the Congress intended to codify the essential purpose reflected in existing judicial precedents — the rejection of insignificant variations and innovations of a commonplace sort — and also to focus inquiries under § 103 upon nonobviousness, rather than upon “invention,” as a means of achieving more stability and predictability in determining patentability and validity.”)

            1. Anonymous,

              Sorry, but I’m not quoting that passage from Graham out of context. The fact is that SCOTUS had essentially ignored/overlooked the principle enunciated in Hotchkiss for years, including the A&P case just before (or around when) the 1952 patent statute came out. Section 103 (the second sentence of which also explicitly slayed the “flash of genius test”) was a clear directive from Congress (not SCOTUS) what the standard for patentability was to be. That SCOTUS used the long-ignored Hotchkiss case as an excuse for what Section 103 means was, in my opinion, simply “cover” for them.

      2. The citations to Halliburton are intended to rake the muck and
        a) mirror an old battle lost

        You’re protestations here are exactly like those that you and your fellow patent teabaggers raised against Prometheus.

        Halliburton is cited because Halliburton makes sense. 112P6 also makes sense as it’s presently being interpreted. What doesn’t make sense is allowing people to claim “new” compositions of matter and manufacture merely by reciting a “new” functionality. We’ve provided you with our reasoning. You respond by pounding the table.

        That’s not how the law works. You should have learned that by now.

        1. We’ve provided you with our reasoning. You respond by pounding the table.

          It actually seems to be the exact opposite. We have provided legal citations to caselaw that has not been overturned. You respond with conclusory statements.

          That’s not how the law works

          I’m pretty sure it does work in that way. Congress writes the laws, the courts interpret the laws, we follow the interpreted laws. No one cares what you think makes sense. If you can’t back it up with a legal cite, it is irrelevant.

          1. No one cares what you think makes sense. If you can’t back it up with a legal cite, it is irrelevant.

            It’s not about what I think. It’s about what makes sense.

            Again, we had similar discussions around Prometheus with the Dierhbots pounding the table telling us that we were somehow trapped by some poorly worded dicta in that piece of junk case. But they could never address in any meaningful way the policy issues raised by the [oldstep]+[newthought] claims that Prometheus was asserting (other than to announce the “death of innovation” should Prometheus lose the case — LOL!).

            You’re views about how the country should work have been around a long time. There’s a lot of free black people and a lot legally married gay people that would beg to differ with your ridiculous views about what is “irrelevant” and what isn’t.

            1. It’s not about what I think. It’s about what makes sense.

              LOL – because what makes sense is what Malcolm says makes sense.

              Oh, how very Carroll of him.

        2. We’ve provided you with our reasoning. You respond by pounding the table.

          (sigh) well, there you go again.

          It is quite the opposite, Malcolm. It is you that has remained silent on the foundations of the questions of law and fact.

          You fumble at providing ‘reasons’ why you refuse to answer the simple questions, spending inordinate amounts of time and effort dodging fundamental First Principles. Your “reasoning” is shallow canards and vacuous QQ ing.

          And yet you wish to admonish “how the law works” – the irony is most impressive (albeit surely lost on you).

          1. anon: That you seek to ‘hide’ what you are doing (vacuous table pounding) with those who are black and gay seeking change is deplorable.

            News flash: black and gays who were seeking change spoke up about why the change was necessary and explained why the existing laws needed to be changed. I’m doing the same thing in a different context.

            Your response is to keep spitting the dumb rules back in my face. Historically, that’s a losing proposition and, historically, people who behave the way you do end up looking like axxholes. Enjoy it while it last, though. After all, people like me are just “jealous” of people like you, right? That’s what your buddy told everyone, remember?

            1. “Dumb rules” or controlling law…?

              What? Can’t hear you Malcolm, what?

              That you align your ’cause’ with fundamantal rights is beyond grotesque. You have no shame.

      3. “The notion that the 1952 Act was purely codifying is complete fallacy not supportable in the least.”

        If you take the time to read and understand the Halliburton case it is easily supported.

        Takes like 20 minutes to an hour get your sht together.

        1. You do realize 6 that reading the Halliburton case cannot in this reality support your contention concerning the 1952 Act because the 1952 Act came AFTER the Halliburton case, right?

          You playing with that time machine and alternative universes again…?

      4. anon, don’t you think it ironic that the universal battle today is against 112(f) written by Rich as cure to Hallibuton?

        We really, really, really need to repeal 112(f).

        1. Ned,

          The battle is beign falsely constrained to 112(f) because not all functional claiming can be equated to the means plus scenario.

          We both know this.

          Even Prof. Crouch alludes to this fact (and thus reaches to find some law to fit). The problem of course is this post-Act stretch to try to resurrect a case that was abrogated. It should not be surprising that the era in which the Supreme Court was most anti-patent is the area that such case law is beign dredged from.

    3. Courts since then have held that it was the intent of congress to allow functional limitations…

      It’s not the mere presence of functional language in the claim that is the problem. It’s the claiming of the new function as a proxy for describing the new structure of the machine that is capable of achieving this new function.

      If your claim already described, in structural terms, a new non-obvious machine (either directly or indirectly using 112P6), the fact that there is some additional arguably “functional” language in the claim isn’t the worse thing ever. In that case the functional language could, e.g., simply be ignored. Or if one skilled in the art would understand the additional term to refer to a finite, readily ascertainable number of structures for achieving that function, that also should not create much of problem.

      It’s when we allow the functionality itself to be the invention that the floor turns to quicksand. And that issue is greatly compounded when the functionality is information processing functionality because there are no structures that correspond predictably to such functionality. The patent therefore covers an infinite number of actual embodiments with the functionality, while typically providing zero examples of such.

    4. The basic issue is that the statute does not fully address the issue of functional claims. Rather 112(f) only focuses on functional claim elements written in MPF format and says nothing about how we should treat functional claim elements written in other formats. So, we have an indeterminate situation and are reaching for prior Supreme Court cases that suggest the correct answer.

      1. Based on how it has been interpreted, one could argue that 112(f) deals with all elements that are devoid of specific structure and are expressed purely in functional terms. See MIT v Abacus Software 462 F 3d 1344 (Fed. Cir. 2006), Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004), CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002), Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000), Personalized Media Commc’ns, LLC v. Int’l Trade Com’n, 161 F.3d 696 (Fed. Cir. 1998), Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996).

        While counter to the language of the statute, the Fed. Cir. has chosen to emphasize substance over form as it applies to 112(f). If this is truly the case, then the effect of 112(f) may have addressed more than the specific claim language used in the Halliburton case. See, In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) (en banc) (quoting In re Fuetterer, 319 F.2d 259, 264 n. 11, 138 USPQ 217, 222 n. 11 (CCPA 1963)).

        1. anonymous, I fully agree. The Federal Circuit has never addressed the reason Halliburton limited its holding to “point of novelty.” They address all functional elements as equals and this is wrong.

          That is why I have called and continue to call for a repeal of 112(f).

          If a claim is functional at the point of novelty, it is invalid under 112(b). But there are good reasons to describe conventional elements functionally, as well as to describe two new elements in terms of how they interoperate (distinguished Continental Paper Bag) that do not invoke “point of novelty” and should be given their full breadth.

          1. Ned,

            You need to realize that PON has been co-opted in the broad [sic] attack on an attempt to remove from patent eligibility an entire art field under the guise of a patentability doctrine.

            Conflation and ‘WHATEVER’ are never elements of sound law.

      2. “The basic issue is that the statute does not fully address the issue of functional claims. ”

        Obviously and that is just as congress intended. The CAFC ran amok. Yet again, as always, on this topic. Or else patent lawlyers got the impression that they did, which is just as bad.

        1. just as congress intended. The CAFC ran amok

          The irony of course is 6 blaming the wrong body, being as the CAFC was explicitly created by Congress to brign order to the judicial interpretations of patent law (thus running amuck is exactly the wrong description).

          The real blame lay with the Supreme Court and their mucking about.

      3. Or the basic idea is to limit patents and use a pretext that functional claims do not convey a definite structure to one skilled in the art in view of the specification, which it does.

      4. What does “configured to” convey to one of ordinary skill in the art? Shouldn’t that be question answered first. It — to my mind–clearly conveys structure and clearly conveys the definite metes and bounds of the claim.

      5. Dennis, 112(f) is also limited to combination claims, where the prior cases that Halliburton relied upon were not directed to combination claims.

        The a claim to a compound configured to provide utility X is functional and is not protected by 112(f) because it is not directed to a combination.

        Also consider Application of Fuetterer, 319 F.2d 259 (C.C.P.A. 1963). The court there addressed a composition that was the result of mixing two compositions. Rich held the claim directed to a combination and authorized by 112(f) regardless that MPF language was not used.

        “The word “combination” in this paragraph includes “not only a combination of mechanical elements, but also a combination of substances in a composition claim, or steps in a process claim.” P. J. Federico, Commentary on the New Patent Act, 35 U.S.C.A. Vol. 1, p. 25 (1954). We agree with that statement in the commentary, which is fully supported by the legislative history.” Id. at 264.

      6. Dennis: “The basic issue is that the statute does not fully address the issue of functional claims. Rather 112(f) only focuses on functional claim elements written in MPF format and says nothing about how we should treat functional claim elements written in other formats.”

        But basic statutory interpretation/stare decisis solves this issue. The court makes a sweeping rule, Congress acts to abrograte part of the rule and is silent on the rest – the result is that the part of the rule untouched by Congress remains in place.

        Prior to Congress’ action there were a handful of precedents:
        1) No functional claiming at the point of novelty
        2) Functional claiming raises serious scope of enablement and description issues
        3) Functional claiming to old elements are allowable

        To me, the only question is if 112(f) affects 3. i.e. Did 112(f) limit functional claiming in old elements? It clearly meant to overturn Halliburton as to 1, so long as 112(f) means-plus is applied. But if you don’t use means-plus you’re not availing yourself of 112(f) and Halliburton’s rule applies.

        I have yet to see any precedent that allows claims:
        1) Where functionality is claimed
        2) Where that functionality is not limited to a particular means in means-plus
        3) and therefore that functionality defines an unbounded range of structures
        4) and that functionality is the reason for novelty

        The above happens constantly in computer claims nowadays, and should be rejected, either under an issue in Halliburton or under 112, 1st. Can someone point to a case that categorically allows this situation? I would like to read it myself and see if it says that.

    5. anonymous, but you do recognize that if a functionally claimed element is authorized by 112(f), it is subject to is as well.

      There lies the conundrum.

      1. A false conundrum, as not all uses of functional description can be lumped (as is being attempted) under the (misused) term of ‘functionally claimed.’

  7. Scope. Of. Enablement. Full stop.

    Configured to is a short hand for: all the ways that are known to a person having ordinary skill in the art who has read the specification.

    We. All. Know. That.

    What is missing from this post is how the underlying methods of working has changed. How engineers and scientist build and make things has radically changed over the last 50 years. Just look at the army specifying weapons. They specify them in functional terms. Just like the configured to language. Information processing is specified in language just like configured to. Mechanical devices are the same.

    LizardTech discusses how to enforce claim scope.

    The patent system should work to change with the technology. Configured to is a great example of the patent system changing to accommodate the technology change and a great example of how judicial activism is destructive to our society.

    1. Procurement bodies specify what they want in terms of a performance requirement. They leave to the contractor the task of solving any technical problems there might be, to achieve that specified level of performance.

      Patent Claims define inventions. Merely to specify a performance level to be achieved is not an Invention. To anybody but a patent geek, the claim has to define a non-obvious solution to a technical problem, and it is not enough that the claim merely announces something obvious, namely an aspect of performance that one is seeking to improve.

      When the claim owner tells us that the skilled reader knew what to do to achieve that claimed aspect of performance, he has just told us that his claimed subject matter was obvious at that level of generality.

      So, yes, agree with NWPA, if there is a patentable invention it corresponds to the specific way of solving whatever problem there was in implementation, so to be valid, the scope of the claim has to be commensurate to the inventive contribution in the Detailed Description because the invention lay in solving the problems of implementation, not in announcing the problem to be solved.

      1. You have switched functional specification with performance. Big difference. Smoke alert.

        But, you did say one thing interesting in that you say that the inventor is telling us that his claimed subject matter is obvious at one level. That is correct. The specification should focus on what is new. And, the inventor needs a way to claim and specify what is new by including all currently known solutions, which in today’s world is enormous.

        So, again where are we? We are in a place where the world has changed and we need the patent law to change to help. Instead what we are getting is witch people trying to burn the system down with claims of functional claims that have no structure. So, there are some problems to be worked out with configured to, but under the current environment of people like Lemley it is almost impossible to get the system working. Maybe that is the point of Lemley. Maybe what it wants to do is throw wrenches into the system to keep it from fixing itself. Certainly Lemley and Stern are the most destructive people in the history of patents.

        Scope of enablement is really all that needs to be said. The rest is blowing smoke.

      2. And Max, I am not talking about just procurement bodies but how engineers specify mechanical and information processing (yes electrical is included in this) devices.

        They talk to each other in functional terms. Just like configured to. And me having to say this is outrageous. And anyone that raises doubts about this is shameful.

        1. I daresay you are right, that engineers, when talking to each other, use expressions like “configured to”. But so what? anon will tell you that patents are written in legal language, which is NOT the language which engineers when talking to each other.

          Can you be telling us that each time an engineer opens his gob and utters the Magic Words “configured to” he discovers/communicates/imparts to his colleague engineer a patentable invention . Surely not.

          Next point: “performance” might have a wider meaning than you suppose. Performance is another word for result. Defining an Invention by laying down a “result to be achieved” is a bold way to go, because it is usually obvious. Better to recite in the claim the particular non-obvious “way” you address the task, get a “result”, get the system to “perform” and solve the obvious problem in a non-obvious way.

          1. I will also tell you (MaxDrei, if you dare to actually listen fully to what I say, and not run away), that what the law says is NOT what the Court is twisting it to say with their ‘implicit’ findings.

            How deep does ‘implicit’ run? What else can be (or will be) found to exist ‘implicitly?’

            Your ‘surely not’ is without any substance. You are merely stepping up onto your old familiar soapbox.

            Let us all first and foremost recall that there is a very real difference between patent eligiblity and patentability. Can we all first at least stop trying to conflate the two?

            1. Classic anon: a conclusive statement without explanation (including a parenthetical personal insult), followed by an incomprehensible non-sequitur in the form of a question, followed by another personal attack against the commenter he’s responding to, and capped off with another non-sequitur.

            2. With the best will in the world

              There are none so blind than those who would not see.
              There are none so deaf than those who would not hear.
              There are none so dumb than those who would not understand.

              Your ‘best will’ is a fallacy.
              If that indeed is your ‘best,’ than your best will not do.

    2. The patent system should work to change with the technology.

      By coddling the technology with nonsensical exceptions? By looking the other way while the patent system implodes? For whose benefit?

      Who is benefitting from the reliance on functional claiming? Certainly not the public. Certainly not the vast majority of skilled programmers (whom you have smeared as thieves).

      The beneficiaries are those people who can afford to exploit the flaws in the system and who would rather gamble at the Patent Casino and take other people’s money rather than do anything productive. That’s it. That’s a tiny, tiny percentage of the population and invariably it’s a part of the population that really does not further coddling.

    3. How engineers and scientist build and make things has radically changed over the last 50 years. Just look at the army specifying weapons. They specify them in functional terms.

      What a bizarre statement.

      Requesting that something be built is completely different from actually building them. Dreaming of a box (or a missile or gun) that performs a new function (e.g., shoots farther or targets specific things) is not the same as inventing a machine with that new function. You need to describe the structure of the new machine in order to have invented the new machine.

      1. Try (again) the notion of constructive reduction to practice.

        The “notion” is non-responsive. If you have a point, make it. Write out the words in English.

        Do you believe that all embodiments of a new computer with a given functionally are “constructively reduced to practice” simultaneously with the conception of the desired functionality? That the structure of all embodiments performing that function are “fixed and permanent” and reduced to practice at that moment? If not, when does the “constructive” reduction to practice happen? When you write out the claims describing the function for that “new computer”?

        Are there any other machines to which your views about “constructive” reduction to practice applies? Or is it just new computers that are so easily manufactured that the structures of the computer do not need to be described?

        These are obvious questions. You brought up the “notion” as if the answers to all these questions were evident. They’re not. Please enlighten everyone.

        1. Not only is my reply responsive, it (qagain) highlights the vacuousness of your position.

          Grow up Malcolm. There is no requirement for a working model to be supplied with a patent applicationand there has not been one for many many many many many decades. Regardless of the art field involved.

          Or do you ‘feel’ according the oh so very Carroll Malcolm Rule of Law (note, not applicable to this reality) that this too is some actual law that you can merely dispense with because you say it is not a good law?

    4. “Configured to is a short hand for: all the ways that are known to a person having ordinary skill in the art who has read the specification.

      We. All. Know. That.”

      Well if that’s the case why not write it out longhand in a few apps and let’s see how long that survives?

        1. Sure, do you know that this appears to outside observers, and will ultimately appear this way to outside observers with power over this issue, that you’re instead simply afeared to have such analyzed on the real merits and skipping by via the skin of your teeth relying on courts misconstruing such?

          1. that you’re instead simply afeared

            No.

            Do you realize that your wanting more than what is required, than what is needed only comes across as you ‘trying to trap’ someone?

            The old brier-rabbit tactics of 6 at play. You really need to grow up a bit and realize just how obvious your little tricks are. You just are not as clever as you like to think that you are.

            1. Notice your delusional rants – already done 6.

              Notice that you refuse to even acknowledge how delusional you are? That too has already been done.

              Any other inane comments from you?

  8. Dennis,

    2 questions

    Can you determine which technologies use the “configured to” language?

    Is a claim to an antibody to a specified antigen indefinite when in reality this is a claim to an unspecified compound “configured to” have a functional effect (i.e. to bind).

    1. Is a claim to an antibody to a specified antigen indefinite when in reality this is a claim to an unspecified compound “configured to” have a functional effect (i.e. to bind).

      Absolutely. I’ve been pointing this out for many years. Do you know what this strange rule is called? It’s called “the antibody EXCEPTION.” And it’s a practice that should have been overturned a long time ago.

      That said, the requirements for obtaining an enforceable claim to a new antibody are miles beyond those for obtaining enforceable claims to a functionally claimed “new computer.”

      1. Another reply has disappeared.

        To recap here, Malcolm blandly calls out “EXCEPTION” all the while refusing to discuss the First Principles in the discussion of software patents and the excpetion to the printed matter doctrine.

        As noted, he and Ned refuse to even acknowledge the concept, let alone the controlling law nature of the concept that provides for the legal basis of understandign exactly why software is a manufacute and thus patent eligible in it’s own right: much like rivets, tires and bullets.

    2. Meldrew, does it really make any difference whether the claim is to a combination or to compound? While Halliburton addressed combination claims, the cases it relied on were to compositions that also were functional. Read them. They include United Carbon, Wabash Appliance and Perkins Glue. They are all cited in Halliburton.

  9. Dennis, it is quite fashionable here in Silicon Valley to eliminate “configure” and simply say “to.” Most big firms here use this style today.

    1. Ned,

      Your post here strikes me as disingenuous window dressing at best.

      Trying to paint the picture as one of mere fashion and style only plays to the purported denigration of what we as professionals do – such is even worse than calling us mere draftsmen.

  10. The thing I find hilarious is how the “configured to” wasn’t even used at all it appears prior to 1992 or so. Some case must have happened right around then, or treatise published mentioning that. Or at least some conference was held.

      1. I’m not sure that I’m alluding to anything in so far as I was hinting at something indirectly. I was directly mentioning that according to the graph showing “configured to/for” it looks like that phrase was hardly ever even used prior to 92. Nothing indirect there. Just straight up observation of the data.

        Likewise, I then surmised that something (a case, treatise or conference etc.) must have spurred the rise of this. What that might be I don’t know since it happened prior to the beauregard case/publication on B claim format by its drafter in 1994-95. Again, all fairly straightforward.

        If you’re curious about the B claim case I mentioned in the below comments I can provide it, and I can provide the publication by that case’s drafter setting forth the “reasoning”, such as it is, underlying the format.

        I presume though that there must have been some cases leading the author of that work to do his dirty tomwordery or else we wouldn’t have ever had it arise. Certainly there was at least one case in the 80′s that was relevant to that work, but it wasn’t relevant to using the word “configured to” in so far as I know. If you’d like to investigate this topic though, which I’d surely love to do if I were a student looking to score points with you, then I’d start my search with 35 IDEA 13 1994-1995 the article called “clamining computer-related inventions as articles of manufacture”. There’s plenty there to paw through. And it is almost assured to give up the goods as to what sparked this trend you’ve plotted.

      2. Dennis, seem my reply to 6, but the case that cause the shockwaves was Valmont Industries Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 25 U.S.P.Q.2d 1451 (Fed. Cir. 1993).

    1. The case that caused the shockwaves and the wholesale abandonment of MPF was Valmont Industries Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 25 U.S.P.Q.2d 1451 (Fed. Cir. 1993), written by Rader, joined by Michel and Friedman. link to scholar.google.com

      Wow! What a reaction it caused.

  11. Dennis: The sheer number of patents at issue here is impressive. To be clear, we are talking about millions of patents that are caught-up in this transition. Thus, if we think that it’s a problem to have functional claim limits written outside of the safeguards of §112(6), then what we have here is a big problem.

    To be clear, the big, big problem (as suggested in the post) is functional claiming at the point of novelty. If, e.g., the claim recites a novel (patentable) structure in structural terms, then the existence of functional language (e.g., “configured to”) elsewhere in the claim is not necessarily a concern. Similarly, if its clear in view of the specification that there are a finite, readily ascertainable number of structures implied by the functional language, that should also not concern anyone.

    But functional claiming at the point of novelty is a different beast entirely and implicates not just 112 but also 101. A claim that recites “[old device] configured to [perform previously undescribed function]” is clearly a claim to the “new” functionality itself. There’s nothing fixed and permanent about the structure of the device and therefore, in the patent sense, there’s been no conception of the structure of that device.

    The problems with such claims are further exacerbated (extremely so) in the context of information processing machines that are distingushed from prior art machines using functional language (e.g., an old machine “configured to receive ["new" information]” or “configured to receive information from ["new" information source"]) because the ability of people to use such machines for their intended purposes is easily, rapidly, and inevitably constrained by such claims (assuming people wish to obey the law). Thus we find individuals and businesses (large and small) who legally own computerized devices threatened (or worse) by patentees who “own” the right to some “functionality” of the device, regardless of how that functionality is effected. When we see patents every week on “systems” for “automatically troubleshooting” some old computerized method, or patents on “systems” that are infringed only when a certain kind of information (e.g., “menus”) is displayed or transmitted through them, then we can be absolutely certain that all reason has left the building. That’s been the status quo for years now.

    It should go without saying (but I’ll say it anyway) that most “devices” that receive and transmit and store information themselves (or via other devices) are very old (new devices can be patented, of course, by describing their new designs in structural terms). Reciting their “structure” generically (e.g., “receiver configured to” or “controller configured to”) or reciting their old, well-known interconnectivities changes nothing about the above analysis.

    1. MM,

      I feel like you cut too broadly – lets say I buy two computers of the same model from the store. I load one up with software that lets it do something new – function X. Computer 1 can now do function X and computer 2 cannot, and the reason is because of a structural change in Computer 1 (the writing of 1s and 0s onto the hard drive by the addition of code).

      So you can read “[old device] configured to do X” as old device + function, which wouldn’t be allowed under 101, or you can read it as claiming any structural modifications to the old device which result in the ability to do the function. This range occupies all the code which could cause the function to occur.

      In the latter case, your inquiry hasn’t ended, because you still need to determine if they have disclosed enough which would enable and describe the range of codes which cause the function. I find the answer to this to almost always be “No”.

      You don’t take it from a 112 standpoint though, you take it from a 102/103 standpoint. A device that is configured to receive information from a new source may be anticipated or obvious, but it isn’t because it’s of the same scope as “a device configured to receive information from any source”.

      To simplify the situation – if you make a new arrow, claiming a bow “configured to fire my new arrow” is not inherently anticipated by the fact that you haven’t mentioned a new bow. Maybe it would be obvious, but that requires an obviousness finding. I would note, though, that the finding would likely have to be admitted by the applicant in response to a written description rejection.

      1. RG: So you can read “[old device] configured to do X” as old device + function, which wouldn’t be allowed under 101, or you can read it as claiming any structural modifications to the old device which result in the ability to do the function.

        Agreed. This problem is fundamental and arises from using the wrong words (functional terms) to describe new objects so you can reach the same result (no enforceable claim) by numerous paths. An identical problem is presented when I claim, e.g., “A new non-obvious book, wherein the new, non-obvious book comprises a plurality of pages with words on them, wherein the pages are bound together by glue.” Is that claim anticipated? Is it obvious? You could certainly argue that it is. Or you could argue “Hey, it says that it’s new and non-obvious right there in the claim! So there must be something new and non-obvious about the structure of the book. You need to look at the specification.”

        The issues presented by functional claiming at the point of novelty (hereinafter “FCPN”) are “logically equivalent” to this (to cop a phrase). In fact, this type of claim is better than many FCPN claims because many FCPN are obvious even if we permit the functionality to be a bona fide claim limitation.

        1. An identical problem is presented when I claim, e.g., “A new non-obvious book”

          Identical? LOL – there is a common thread: fallacy and canard.

          Once again the deceptive attempt to use an example from outside of the Useful Arts.

          Shameless.

          You try this in an actual court and just see how fast you would be sanctioned.

          1. You try this in an actual court and just see how fast you would be sanctioned.

            Try what? Making an analogy to illustrate the problems presented by “functional claiming” and the problems presented by your feeble attempts to impart specific “structure” into an information processing function?

            That’s sanctionable? I mean, I can see how you might wish that was true but here on planet Earth it doesn’t work that way.

            1. Try what?

              Try your dissembling manner of posts – that’s what.

              Tell me Malcolm, what is controlling law regarding the exceptions to the printed matter doctrine and what would happen if you made “an analogy” that directly went against controlling law without informing the court what the controlling law was?

              Shall I hold your hand and reprint the definition of dissembling for you in order for you to connect the dots?

      2. Of course Malcolm cuts too broadly.

        That is because the aim (like the 101 aim) is to eradicate an entire art field.

        Never mind the reality about us that we are in the midst of a digital revolution, that innovation is in a golden age. Those that wish to deny this reality, to stick their heads in the sands of time have been invited to NOT enjoy the spoils of that innovation, and of course they mumble something unintelligible about how ‘oldboxes’ have this Morse/House effect of denying patent eligibility to any improvements to machines, or a blanket denial of concepts (even concepts that would take but a few minutes to verify) – concepts like the exceptions to the printed matter doctrine that provides the legal foundation for software to be recognized as a machine component and manufacture, perfectly patent eligible in its own right.

        But when these perfectly legitimate concepts are brought forth for discussion on the merits, the anti-software patent group refuse to join the discussion in ANY intellectually honest manner.

        And it is clear exactly why.

        1. we are in the midst of a digital revolution, that innovation is in a golden age

          LOL.

          Nobody is trying to stop patents on technology that increases the speed of computers are their ability to store more information, provided that technology is properly (not functionally) claimed.

          That’s technology. “New” computers that differ from old computers merely because, e.g., they shove more ads in my face or because they “enable” me to “identify available real estate” or “rank my friend” or “delete one of my credit card accounts” … that’s just junk. There is no “golden age” for that kind of junk, either. It’s just a stain on the patent system.

          concepts like the exceptions to the printed matter doctrine

          You have a habit of seizing on some of the very worst judicial wankery that’s floating out there. Gee, I wonder why.

          1. What you so blandly call “worst judicial wankery” is controlling law.

            You volunteered an admission against interests once of knowing this.

            And yet, you have expended considerable time and effort hiding from this admission and continuing to post misleading arguments as if the controlling law was not there.

            That, my good sir, is an ethical violation. That you pretend that you are not bound by ethics because this is a mere blog only reinforces my posts that call you out for your intellectual dishonesty.

            That you pretend that you do not savage your own ‘credibility’ by continuing to post as you do, is, well, simply odd.

            1. What you so blandly call “worst judicial wankery” is controlling law.

              Right, just like Diehr was “controlling law” in Prometheus. Remember how that turned out for you?

              I do. 9-0. And that case will never, ever be overturned.

            2. Nor will you ever ever be able to square what was actually said in that case.

              Last time you tried Malcolm, you tossed your little pet theory onto a bonfire – and then refused to save yourself with your “English as a first language” skills.

        2. Either stop taking the drugs you’re taking or find some better ones.

          We’re commenting on a patent blog, not filing briefs in court. If you don’t make an actual comprehensible reasonable argument for your position, in English, then nobody needs to respond to you.

          You think that the taffy swamp that is the Federal Circuit’s laughable “case law” on the “exception to the printed matter doctrine” somehow bulletproofs functionally claimed computer-implemented junk? Then explain why. And please take your time because the last few times you tried to do that you didn’t get past first base.

          1. My response has vanished, so here is a recap:

            We’re commenting on a patent blog, not filing briefs in court

            Translation: Malcolm obviously feels that honesty is not required because this is a mere blog.

            Malcolm, you really should treat this blog with more respect and answer as if you were in fact filing a brief in court, at least in the intellectual honesty aspect of what you post.

            As you clearly do not feel the need to be intellectually honest in your posts, your reply here proves my point.

            Thanks for again engaging in your self-defeating ways.

            Now, change and try to be intellectually honest in your posts.

    2. MM, agree.

      Because of the “exact point of novelty” limitation, there really was no need to pass 112, 6 except if one really wanted to provide what are effectively single means claims. I don’t know what panicked the bar so much, but they were really freaked by Halliburton.

      Right after Donaldson, the ABA IP section voted to repeal 112, 6, and the AIPLA patent law committee recommend similar legislation.

      I and Rudy Hoffman wrote a article on MPF describing the events that lead to 112, p.6. It looks like the Supreme Court my take a fresh look based on the pending 112, p. 2 case that claimed the invention in terms of its function.

      1. Of course you agree Ned – this aligns with your agenda.

        And of course, we know exactly what is behind that agenda, don’t we?

        1. Ned – this aligns with your agenda. And of course, we know exactly what is behind that agenda, don’t we?

          If you believe that Ned is speaking only as a mouthpiece for someone else and does not believe or understand what he is saying, then tell everyone exactly why you believe this is the case. Be specific. Otherwise you would be better off taking your innuendo and sticking it where the sun doesn’t shine.

          It would help, of course, if you were able to coherently address the flaws in Ned’s reasoning. But you seem to have great difficult with that, too.

    3. MM, a computer programmed to do method X is truly a claim to a method X. Eight, IIRC, out of the ten judges in Alice so held.

      One really has to look at the method claim to see if it is functional at the point of novelty.

      You might also observe how the Halliburton court distinguished Continental Paper Bag that spoke of the invention by describing its various parts and how they interoperated. That was OK — and the reason being is that the invention really was a method where two devices interoperated in a particular fashion.

      Computer software claims for these reasons should not present a problem under Halliburton.

      Whether they are covered by 112(f) is a somewhat distinct issue. That would depend on whether 112(f) applies to all functionally claimed elements of an apparatus (combination) claim.

      1. Ned,

        STOP with the composition style of attempting to make ANYTHING out of the Alice decision. Re read what the Chief Judge satys is the result – and the only result of that case.

        Shall I offer the treatise that you yourself first posted a link to explaining just how WRONG it was to try to fashion dicta (which is above what you are trying to cobble together) into some statement of law?

        Your behavior in this regard is reprehensible.

  12. To me this chart is most damning to the Applicant’s attorneys. They know they’re not invoking 6th (in fact, they argue against it when it is brought up), they know they don’t meet the expanded scope (they argue against obviousness despite the spec not teaching what they consider to be non-obvious) and they prosecute anyway.

    Just because the CAFC does a poor job of explaining the law and thus the PTO does a poor job of examining based on the poor guidance doesn’t absolve applicant’s counsel. Their job is to get the Applicant the broadest valid patent, see what the broadest invalid patent you can sneak by the office is.

  13. So in other words, the climb in functional language (non computer arts) happened a full decade before the focus on computer arts, but when the computer arts starts to follow that methodology, THEN it deserves the mania and hysteria we see on the blogs….

    1. What are you talking to, it got started around 1995, precisely the time when the B case happened and a certain person wrote a little treatise on how to bs functional language to claim software all while pulling the wool over the wolf’s (CAFC) eyes. I’m going to go out on a limb here and state that it appears blatantly obvious what occurred.

    2. What are you talking about? It got started around 1995, precisely the time when the B case happened and a certain person wrote a little treatise on how to bs functional language to claim software all while pul ling the wool over the w olf’s (CAF C) ey es. I’m going to go out on a limb here and state that it appears blata ntly obvious what occurred.

      1. 6,

        Are you willing to have an intellectually honest discussion on the facts and law on their merits?

        Or will your belief system rise up again and prevent you from understanding reality?

        Pull your head out of that dark and dank space. Open your eyes.

        1. Do you, 6, recognize the controlling law of the exceptions to the printed matter doctrine?

          Do you, 6, recognize the logic used in the Nazomi case?

          Do you, 6, recognize that machine components – as manufactures in their own rights, are a perfectly patent eligible category?

          Do you, 6, recognize when your own belief system prompts you to post such utterly ridiculous self -defeating garbage as to prompt the Character-Suicide references?

        2. “Are you willing to have an intellectually honest discussion on the facts and law on their merits?”

          I don’t know why we need to rehash all that, right now we’re just talking about simple dates on a simple graph and I mentioned the date on a historical case. I think for now we should just keep it simple and focus on that. Once you’ve noted the dates that I noted, then perhaps we’ll proceed. Until then, no, I’m not willing to discuss further facts or law beyond that already under discussion.

    3. anon, I don’t think the typical computer software claim has only one functionally claimed element. There should be no issue under Halliburton.

      I think, though, that there are a lot of patents that claim the invention functionally, trying to avoid the rule of construction of 112, p.6. Either they are protected by 112, p.6, or they are invalid under Halliburton and its predecessors, and there a number of such cases.

      1. Halliburton is not good law.

        Period.

        Not all claiming using functions can be lumped together.

        Period.

        A massive amount of dust-kicking is underway.

        Prof. Crouch – shame on you for inviting this skulduggery.

          1. Ned, plain and simple Congress reacted against a Court that was palpably anti-patent, and Halliburton was one of the explicit reasons.

            It was abrogated by Congress. It is legal error to treat the decision as having any authority.

            The notion that Prof. Crouch condones authority to it because an Article I (super-examiner) ‘court’ has attempted to resurrect it is well beyond the pale.

            The fact that you have repeatedly lived in a fantasy that somehow it is good law would make your co-author spin in his grave (as I have posted in the past).

            Ned, let me ask a question in return: why do you avoid questions that I ask of you? Simple questions that you clearly do not like the answers to? The logic in Nazomi, the latest (which mirrors the Grand Hall experiment), the exceptions to the printed matter doctrine as another? Why do you pull these disappearing acts in the middle of our conversations?

            1. The notion that Prof. Crouch condones authority to it because an Article I (super-examiner) ‘court’ has attempted to resurrect it is well beyond the pale.

              So is Dennis stupid or is he a liar?

              Finish your thought, anon.

            2. anon, the original proposal to Rich by the Milwaukee PLA was directed at a repeal of Halliburton. It was along the lines of that a claim shall not be invalid for using functional language at the point of novelty. But that would have also overturned another long line of cases before Halliburton as well. These cases included United Carbon, Wabash Appliance and Perkins Glue, the very cases Halliburton relied upon for its holding.

              Thus, Rich rewrote the proposal to allow MPF claims generally, with the caveat of construction.

              But Halliburton itself was not limited to MPF claims, now was it? It extended the holding of its prior cases to combination claims, where the point of novelty was functional. Means clauses were the common form of functional claiming at that time.

              Thus the real question is THIS. (Pay attention, anon.) Does 112(f) apply to any and all combination claims that are functional at the point of novelty regardless that they do not use MPF language? For if they are NOT PROTECTED by 112(f), they are invalid under 112(b) per Hallibuton (and any number of prior Supreme Court cases including United Carbon, Wabash Appliance and Perkins Glue).

              Now tell me, anon, did 112(f) overturn United Carbon, Wabash Appliance, Perkins Glue, O’Reilly v. Morse and Wyeth v. Stone? If not, why not? Every one of these cases also dealt with functional claims.

            3. No Ned, the real question is why do you disappear when any one of a growing number of First Principle issues are discussed.

              Like Lemley and the rest, all I see from you is yet another attempt at dust-kicking.

          2. ..and of course, we can guarantee that no answers from Ned (answers on point) will be forthcoming.

            Now, is anyone (and I really mean anyone) surprised at the deafening silence?

  14. The graph of the decline of problematic M+F language and its routine replacement with other, less problematic wording (synonymous with M+F yet avoiding 112(6) narrowing) is a graphic revelation of:

    1. why no other jurisdiction has anything like the absurd and ineffective 112(6) in its law and

    2. what happens when the judges that handle patent cases are not patent-savvy.

    Big issue? Of course it is. We all knew that, but it takes the graph to bring it home. As we all know, functional language yields the broadest scope of protection. It is our job to secure the broadest scope of protection. So, law-makers, expect virtually every claim we write to be in functional terms, to the extent we can get away with it.

    Come on courts: do your job! Give the USPTO the jurisprudence it needs to do its job properly!

    1. That would be like disliking chickens so much that you make the fox the master of the coop.

      Or eradicating all disease through a program of human annihilation.

      (sigh)

    2. …and last I checked, the US Constitution gave a certain branch of the government that ‘jurisprudence.’

      Hint: it was neither the judiciary, nor the executive branch.

    3. Max, in my view, 112, p.6 was a mistake.

      I long ago called for its repeal.

      But that leaves claims open to invalidation under Halliburton and its predecessors if the claim is functional at the point of novelty.

    4. MaxDrei, clearly 112(f) was mistake, a big mistake. Rich had a narrow problem the bar wanted to address: Halliburton. He could have address that problem simply, but instead he wrote 112(f) that through a gigantic monkey wrench into the patent system.

      What a fool that Rich was.

      1. Ned,

        Your anti-Rich rants are nothing but a blight and say far more about you than what you wish to say about him.

        Please (for your sake), stop.

        1. Oh come off it anon, the man thought that a diaper-change delivery service by truck and hand should be patent eligible. It’s pretty hard to say something that would insult the man more than such insults himself.

          1. The man knew the law because he helped write the law.

            That’s rather important in the real world. The untoward animus and blind bias induced clearly is not helpful in the least for any understanding of the law and this reality.

            1. “The man knew the law because he helped write the law.”

              Oooookay… but that doesn’t mean he didn’t insult himself with his proposed patent eligibility regime.

              “That’s rather important in the real world. The untoward animus and blind bias induced clearly is not helpful in the least for any understanding of the law and this reality.”

              So?

              The question is what “should be” eligible. Not what “is” eligible under your, or any other delusional person’s thinking.

            2. 6 states “The question is what ‘should be’ eligible.

              Absolutely not.

              The question is what IS eligible under the law as written.

              Will 6 even recognize his admission here of trying to see the law how he wants to see it as opposed to how it is?

              Doubtful. He cannot get out of his own way. The 2-D man is trapped in the circle of his own belief system, and just does not understand what it means to raise himself up with an understanding of the actual law and step over that circle.

            3. See here’s where your poor reading skills come in anon.

              “the man thought that a diaper-change delivery service by truck and hand should be patent eligible.”

              ^ my comment. Note the “should”. “Should” is at issue because I made it be at issue in this conversation. Sorry, you don’t get to change what my topic of conversation is ta rdo.

  15. At this point, we routinely indicate (according to policy we’ve been given) when certain claim elements are being interpreted under 112(f). In the computer-related arts, it’s also pretty standard practice for the attorney to argue back that the element doesn’t invoke 112(f), with the argument being that the term “unit” or “module” connotes structure. Disclaimers in the spec indicating that only “means for ___” can invoke 112(f) are far less common but not unseen.

    1. “At this point, we routinely indicate (according to policy we’ve been given) when certain claim elements are being interpreted under 112(f).”

      Unfortunately the “policy” that you’ve “been given” is directly contrary to controlling Fed. Cir. case law on when claims invoke 112, 6th (now 112(f)). That doesn’t seem to bother anybody at the PTO though.

      I’ve had to respond to several of these silly “policy” based “interpretations.” But I’ve written a nice little “form paragraph” to insert into my responses when I get such nonsense in an OA. Saves time.

      1. “Unfortunately the “policy” that you’ve “been given” is directly contrary to controlling Fed. Cir. case law on when claims invoke 112, 6th (now 112(f)). That doesn’t seem to bother anybody at the PTO though.”

        Tbh, after the years and years of legal tomwankery I’ve waded through coming out of the federal circuit in just the last 5 years, and their inability to stop generating reams and reams of nonsensical drivel in their decisions (often to then be reversed by the USSC), even though it is usually dicta, has led me to have less and less faith in their ability to even state what the law actually is on a given topic much less generate binding law on a given subject. They may tomwank quite a bit, and then may generate what they’d like to consider “binding precedent” all they like, but with their reversal rate the amount of respect accorded to those decisions is necessarily sinking. So I’m rather unconcerned with plurality’s or other examiner’s (or the administration’s) apparent lack of respect for such and issuing or adhering to other policies.

        I’m sure you as a law lt ard are very concerned with such, but rather than blaming the office, a hapless bystander in the tomwankery going on at the Federal Circuit, you should take your concerns directly to the Court and the bar that is under them and demand that they make decisions in line with the law in the first place so you’re not stuck trying to implement some new supposed “law” or “precedent” they dreamt up that is blatantly counter to actual law and is merely awaiting the USSC to knock it down.

        In other words, respect doesn’t just happen and cannot just be dictated, even by law or practice. The body that needs such respect needs also to earn such. If they can’t be bothered to get a basic question like who has the burden of proving infringement right then what hope can there possibly be for them to get more complicated questions right when their decisions are even more far-out on those other subjects?

        I tell you what, I’m not all about abandoning the CAFC experiment in the name of returning cases to regional courts simply because I think it would be best to hear from differing bodies, but I am warming to the idea to simply get rid of the daftness of the decisions coming out of that one unified body where the only recourse to get it straightened out is the highest court in the land.

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