Webinar on Functional Claiming

On Thursday Feb 27, I’ll be participating in my first IPO Webinar hosed by Pamela Sherrid. The event begins at 3PM ET and will focus on the hot topic of “Functional Claiming.” $130 per user per webinar. Register here: http://www.ipo.org/IPChatChannel/. Also on the panel are Stephen Durant of the Schwegman firm and Abran Kean of Erise IP. — Dennis Crouch

143 thoughts on “Webinar on Functional Claiming

  1. I wonder if the panel discussed the question I proposed on whether a claim was invalid under Halliburton and its predecessors if it were functional at the point of novelty and did not use means plus function for the concerned claim element(s).

    The pattern I observe is that when such a case is before the Federal Circuit, the question is presented as to whether the functional term is to be construed under 112(f) or not. That line of reasoning assumes that Halliburton is totally repealed and that all wholly functional language is to be construed under 112(f) regardless that the statute does not say that and regardless that Halliburton was concerned largely with the overarching apparent scope of such functional claims and not with their actual scope after construction.

    1. And yes, I am still waiting for you to address the Nazomi case. For arguments sake, use the fact that software is equivalent to hardware to get past your, ahem, ‘mental roadblock.’

      Among other questions that you still have not provided on point answers to…

  2. Dennis -

    The indenting and numbering or indexing feature is very nice. But it shuts off way to soon. Is there any way to increase the reply limit?

  3. Just so everyone is clear on this, anon’s position is that 112(f) overruled every prior case that had found invalid a claim that was functional or functional at the point of novelty.

    This includes O’Reilly v. Morse, Perkins Glue, United Carbon, Wabash Appliance and, last, but not least, Halliburton.

    And, to top that off, he also has contended that such functional claims are not limited to the corresponding structure and equivalents unless they intentionally invoke 112(f).

    Breathtaking….

    But, actually consistent with the actually practice of the Federal Circuit. Which is why there is so much concern by so many that the patent system is really broken.

    1. anon’s position is that 112(f) overruled every prior case

      BZZZZT – wrong Ned.

      You have a real problem with over-reading things.

      1. no, anon, that is your position. A number of Supreme Court cases prior to Halliburton held claims invalid as functional at the point of novelty. Simply “abrogating” Halliburton as you claim 112(f) did, did not overrule these cases, at least not necessarily. Your FATPON-is-a-canard mantra makes clear you view that these other cases are overruled as well.

        But I agree with you, a Rich-lead CCPA and Federal Circuit went out of its way to act as if the functionality of apparatus and composition claims were no problem. They even began to treat them under 112(f) even without the magic words “means.” They, en banc, decided Donaldson, declaring that cases like Arbeit are overruled — a case that clearly had nothing to do with means plus function, but with a functional claim.

        The Rich lead CCPA and Federal Circuit wrote functionality out of the law. They all but wrote 112(b) out of the law.

        But then, finally, we have a revolt, lead by some on the Federal Circuit, by Lemely, by the President, and now the issue is before the Supreme Court in Nautilus.

        1. no, anon, that is your position.

          No Ned – you do not get to force feed a position that I have not advocated.

          Stick to what I have actually advocated.

          PON is a canard – plain and simple. The 1952 Act was clear in this regard. The legislative record indicates paragraph 3 – not paragraph 6 as critical. Paragraph 6 – written in permissive language – is merely one of a multitude of ways that functional language was allowed by the 1952 Act. You are in serious error by thinking it is the only way. If it were the only way, it would not be written in permissive ‘may,’ but instead would have been written in controlling ‘must’ terms.

          You need to accept this.

          This is directly contrary to your implicit statement of Anti-Rich and your allusion (illusion) of painting him as the renegade.

          He is not – and never was. You continue to make mistakes based on your inaccurate understanding of the 1952 Act.

          1. anon, there is something weird in your viewpoint. A half-dozen SC cases condemned functional claiming. Along come 112(f) in ’53 authorizing MPF claims in combination claims. Nothing is said there about other situations.

            Now, you contend you can claim any new structure that performs a function (“configured to,” “adapted to,” etc.) and it should be construed to cover any new structure that performs the recited function regardless of the Supreme Court cases that roundly condemned functional claiming and without any limitation imposed by 112(f).

            Just how do you get away with this? Where do you even get this idea? It is downright bizarre.

            1. Nothing is said there about other situations.

              Not true Ned – you too should follow the breadcrumbs in the very case you provided.

              I “get away with it” just like Judge Rich “got away” with it: by knowing the law and the intent of the law per the 1952 Act.

              I suggest that you do the same: learn the law. It is not bizarre at all.

        2. A kernel of truth is revealed in your comment about revolt by “some on the Federal Circuit, by Lemely, by the President” as they explicitly are not the ones charged by our Constitution with writing patent law. Judicial re-writing, academic pandering and by-fiat-wrong branch re-writing of the words of Congress are each clearly unconstitutional.

          Patent law has been written by those charted with the authority.

          It is that patent law that was intimately known by Rich – and by him as judge – best interpreted.

          Your anti-Judge Rich crusade is as legendary as it is misplaced.

          Whether or not the current Supreme Court recognizes the lessons that I have so earnestly attempted to teach you remains to be seen.

          1. anon, Judge Rich was a product of Harvard Law, and an excellent patent attorney. He was a mover and shaker in the patent Bar, and was tabbed by the chair of the NCPLA, Mr. Harry Aston, to head up a committee to review Frederico’s draft patent bill. 1500 copies were distributed widely, to all bar associations, who were invited to comment and to make recommendations.

            On Halliburton, the Milwaulkee PLA, recommended the following to Rich’s committee: “Where the essence of the novelty of any claim is recited in terms of means or methods for performing a specified function without the recital of structure or acts in support thereof, the claim shall not be invalid because of its functionality, shall be construed to cover the corresponding structure or acts described in the specification and equivalence thereof.” This was suggested to be an amendment to section 103. Note the new clause was NOT limited to combination claims, and would have covered even single-element claims such as appeared in Morse, or Perkins Glue, or Wabash Appliance.

            Because of objections that the clause as written would allow single means or method claims, and would arguably overrule not only Halliburton, but also O’Reilly v. Morse, Perkins Glue, and Wabash Appliance among other cases, the clause was limited to combination claims, and placed instead in 112 instead on 103. But the essence of the clause as originally proposed was retained.

            Now compare this history with what Rich said about 112(f). He said the clause was intended to restore functional claiming to its state prior to Halliburton. But, what was that state? Did it allow functional claiming generally and only limit claims to corresponding structure when the magical means were used? Hardly.

            Westinghouse in 1898 had authorized the construction of a function claim element to cover the corresponding structure and equivalents to preserve the validity of claims having their novel structure claimed functionally. But the Supreme Court soon began to hold such claims indefinite. See, Perkins Glue, Wabash Appliance and United Carbon. So at the time of Halliburton, the functional-at-the point of novelty doctrine was well established, allowing functional claims only to old elements of a combination. What Rich said about the law prior to Halliburton was hardly accurate.

            So what did 112(f) do? It allowed MPF claims elements of a combination claim even when they were at the PON.

            But that said nothing at all about functional claims that did not employ MPF elements, nor did it say anything about claims that were not combination claims.

            But Rich never found any problem with such claims, did he? In Donaldson, he went so far as to condemn In re Arbeit, a case that had nothing to do with MPF claims. As a result, the PTO removed its reference to Arbeit, and off we ran claiming functions without using means.

            Rich acted and behaved as if the original proposal by the Milwaukee PLA were passed, and then some. He behaved, just as you do, that functional claiming was OK across the board.

            Tell me that he did not, anon.

            1. Ned, there stillis a huge difference with what you said and the fact that PON is a canard.

              You drift and kick sand with additional arguments (single means claims now), but what you do not address is the crux of the matter: the 1952 Act and what that act means.

              And yes, I am still waiting for you to address the Nazomi case. For arguments sake, use the fact that software is equivalent to hardware to get past your, ahem, ‘mental roadblock.’

  4. Dennis: In general, the “problem” with functional claims are that they are overbroad and have poorly defined boundaries. Of course, we already have strong doctrines to deal with issues of breadth (obviousness / enablement) and poorly defined boundaries (indefiniteness).

    Those “strong doctrines” were not developed with functional claiming at the point of novelty in mind. Their “strength” lies in the fact that known structures with known functions in certain contexts can be combined to achieve unpredictable results and functionality in other contexts. That’s where evidence and expert testimony comes in: to establish that the results and functions flowing from those new structures are sufficient to merit a patent, and to establish that the specification shows possession of those structures and teaches others how to combine those structures with less guesswork than that which went through the inventor’s mind as he disclosed his invention.

    When you throw the requirement for structure out the window then the “strength” of those doctrines also flies out the window. What’s the expected function of a new function? It’s the new function. To the extent we’re talking about information processing functions and the softie woftie folks are asserting that every described function is enabled upon description (something you should remember being asserted here on numerous occasions), you’re left with 102 and nothing else. And that’s the way the softie woftie crowd wants it. They’re used to things being that way, after all, because that’s the way the system has coddled them for years.

    $130 bucks is a lot of money to pay to hear some people tell us that 103 and 112 were intended to address clarity and over-breadth issues. I think we all know that. The occasional claim construction fights in the non-computer arts notwithstanding, the issue that is of most concern to the most people is not the presence in claims of some functional language, but the effective claiming of new functions themselves by the computer-implementer crowd. What are you going to say about that subject? Please don’t just throw up your hands and say that it’s a difficult question. It is the question. What’s not too difficult, I think, is looking ahead and seeing what the failure to address that question will do to an already over-burdened and corroded patent system.

  5. Ned asks the wrong question: “Who is right? Rich, or the Supreme Court?

    Congress is right. Congress rewrote the law back in 1952 that stripped the Court of its power to define invention. It was Congress – not Rich. You need to accept that as a basic fact.

    Perhaps you meant to ask a different question, Ned. Perhaps you meant to ask who better understood what the intent of Congress was when they wrote the 1952 Act?

    We both know that the proper answer to that question is easily Judge Rich.

    That was why he was able to dispose of the rants of dicta in Benson with ZERO fear of any type of reprimand from the Court.

    I have no real clue why you despise the person in the judiciary that was most knowledgeable on patent law in with as much venom as you do.

    1. I am referencing Rich’s statements concerning 112(f) made in Fuetterer.

      He claims that 112(f) restored Westinghouse. Did it? Westinghouse addressed a functionally claimed element that was not expressed in means plus function format. To preserve its validity, the SC construed the claim to cover the corresponding structure, etc., and equivalents.

      Note, this is a lot broader than 112(f). It convers any and all functionally claimed apparatus.

  6. I would like to see the panelist address a simple question:

    Halliburton overruled Westinghouse. Rich said in Application of Fuetterer, 319 F. 2d 259 (CCPA 1963), n. 11, that Westinghouse was restored — thus claims functional at the point of novelty (“e.g., means”) were not invalid, but construed to cover the corresponding structure, etc., and equivalents thereof per Westinghouse.

    Question: Did 112(f) restore Westinghouse, or was the restoration limited to the specific conditions described in 112(f), the use of “means” etc., and only with respect to combination claims?

    If Westinghouse is not restored in its entirety, are claims functional at the point of novelty invalid?

    1. Thanks Ned. This is a good and important doctrinal question. Obviously, the Federal Circuit has come down saying that it is perfectly fine to have functional claim elements outside of the scope of 112(f). One question is whether the Supreme Court would agree. As we get into this debate, a more fundamental question would probe the meaning of “functional” and try to figure out what level of abstraction (if any) goes so far that the limitation becomes functional in a problematic way.

      1. Dennis -
        Lets say that I discover a set of genes associated with human speech and from that discovery, I come to understand that while hundreds seemly different languages have developed, the real communication occurs subconsciously based on clicks and spaces between clicks in the languages. That is, at the click/space level, all languages are the same.

        From that, I invent a method for language to language audio to text translation and what to sell a universal translator that comprises an audio input analog to digital converter, a processor (DSP if you like) that analysis the digitized audio of a spoke input language for the clicks and spaces according to my method to determine the meaning and looks up the corresponding phrases in the desired output language and assembles a text representation of the received spoken words.

        Do you agree that I should be able to patent my translator?

        If so, if functional claiming is unacceptable, how could I draft a claim to distinguish it from other devices that include audio inputs and text outputs with processors in between?

          1. Ned. I want to protect my device. I invented that too. I sell the device. My competitors will sell devices. Juries better understand devices as inventions. Why shouldn’t I be able to protect my device?

          2. Besides, the same people that say functional claiming should be banned, say methods are second class inventions that need to be tied to a machine or transform an article….

            1. Les,

              First, clearly MoT is only a clue.

              The Supreme Court has made it clear:
              Bilski MoT not required.
              Prometheus MoT not sufficient.

              Second, Method patents – according to the explicit words of Congress are not a second tier category. They are on equal footing with the ‘hard-good’ types of categories. Any monkey business to the contrary need to be expunged from our legal minds.

            2. Les, let’s draft a claim and see.

              However, the requirement is that the claim produce a new and useful result. Thus,

              1. Method, comprising;

              receiving spoken language;

              determining from said language its clicks and spaces according to a predetermined algorithm;

              from said determination step, translating the determined click and spaces into a second language translation;

              and

              one of, displaying said second language translation as text or producing an audio reproduction of said second language translation.

              1. Translator comprising:

              means for receiving and converting to digital values spoken language;

              a DSP means for processing said digital values into a translation using a predetermined algorithm that determines clicks and spaces; and

              means for producing from said translation a textual display or an audio reproduction of said spoke language.

              I see nothing wrong with these claims under 101, do you?

            3. Ned – I need to remind you that you have been corrected multiple times with your phrase “However, the requirement is that the claim produce a new and useful result

              That is simply not a requirement. Least not in the manner you are attempting.

              Remember that perfect cures were done well before Diehr and the result of Diehr was thus not a single shot production of something new and useful.

              Also, I will remind you (yet again) to be wary of conflating the utility aspect of 101 and the statutory categories aspect of 101.

            4. Yes and no Ned.

              I think the claims are fine. But the anti patent crowd, will assert mental steps, abstract idea, no transformation, natural law, can’t be saved by post solution activity….yadda yadda yadda.

              Plus the means for lingo is too limiting or requires that my spec be hundreds of pages long to cover all conceivable hardware embodiments.

            5. Les, on the MPF limitation, I daresay that all that is required is a specific algorithm in your specification.

              The claim cover that and equivalents by law.

              Without MPF, the claim covers any program that achieves the result. That is the problem.

        1. So, my general take here is that the debate over functional claiming misses the mark. However, it is the current debate and has sufficient historic grounding that we’re unlikely to fully shift the debate.

          In general, the “problem” with functional claims are that they are overbroad and have poorly defined boundaries. Of course, we already have strong doctrines to deal with issues of breadth (obviousness / enablement) and poorly defined boundaries (indefiniteness).

          A “functional” element test is also problematic for many of the same reasons as the Section 101 “abstract idea” test is problematic. One basic notion is that some claimed function is fine and helpful, but, at some point, claims go too far along the functional scale. A tricky-point then is to define when the claim elements are “unduly functional.” I would propose that the answer to that question would refer us to the doctrines identified in the prior paragraph. I.e., the claim element is unduly functional when the resulting claim is either obvious, not sufficiently enabled, or indefinite.

          1. Well that ain’t much help.

            No one has ever used click type and click spacing to determine meaning before.

            Seems to me, therefore, I should be able to claim, for example,

            a translator comprising:

            an audio input for receiving spoken word audio;
            a digitizer operative to digitize the spoken word audio; and

            a processor operative to analyze the digitized spoken word audio to identify click types and temporal spaces between the identified clicks and to use the identified click types and spaces as an index into a database of text of associated phrases in at least one language of interest to retrieve appropriate phrases in a language of interest and assemble a text translation of the spoken audio.

            Is that indefinite or just broad?

            1. Les, the problem, I think, is that you are not using MPF language to define structure of your processor limitation, the PON. You are simply stating a mathematical process in an apparatus claim. That is functional, not structural.

              Moreover, you stop short of doing something with the text translation. Displaying it at a minimum should be required. Until then, you have the “alarm limit” problem of Flook.

            2. That’s not a problem Ned. That’s what I’m entitled to. I invented click based translation. Just like the guy that invented the wheel covered all of them….rock, wood, steel, rubber etc by claiming: a go fast, comprising: a round thing having a whole in a middle configured to accept an associated axil.

          2. Dennis, I think the answer has to be very simple and straight-forward:

            I suggest, just as did Halliburton and many cases before it, and as did In re Arbeit, that novel structure or composition must be claimed structurally, no if’s and’s or but’s.

            Thus, if an applicant relies on a function in an apparatus or composition claim to distinguish the prior art, the claim is indefinite and must be amended to include novel structure or composition. In court, the applicant cannot rely on a functional limitation to distinguish the prior art.

            The one exception to the above is provided by 112(f). Use MPF, and the corresponding structure or composition is read into the claim.

            1. Les, the “novel structure” is the algorithm disclosed in the specification. The MPF format of the claim coverts the method of the claim into apparatus by operation of law.

            2. Your answer is – and has been – rejected Ned.

              You repeated the exact same b.s. a thousand times when Prometheus v. Mayo was cued up. That was a 9-0 decision that will never, ever be reversed.

              Now the issue of functional claiming at the point of novelty is being cued up. It’s going to turn out the exact same way for you, anon.

              You’d better figure out your fallback position because you’re going to need one. Or are you just going to pretend it never happened like you do with Prometheus v. Mayo? That’s your choice, of course, although it does make you look just a tad imbecilic.

            3. Malcolm does his usual AOOTWMDs with a “although it does make you look just a tad imbecilic.

              How imbecilic do you think you look carting around the albatross of “intellectual honesty is not required because this is a blog and not a court”…?

            4. Sort of like Myraid, Malcolm?

              No, not at all like that. We both agreed that Myriad’s claims were junk, but for different reasons. Also, I don’t have any issue with the ineligibility of Myriad’s claims. I’m fine with that result. I just wish the Court’s reasoning was more clear.

              That’s a pretty huge difference. But of course you knew that already.

            5. How imbecilic do you think you look carting around the albatross</i?

              How imbecilic do you think you look carting around Ronald Reagan's decaying corpse?

              Fun game! When you stop beating your wife, I assume you'll start the next round, as usual.

            6. Also, I don’t have any issue with the ineligibility of Myriad’s claims.

              30,000 plus words of mewling QQ afterwards, an inability of you to say three little words, and your recent admission that youstill don’t understand the reasoning of the court says otherwise.

              Just being honest is really really difficult for you, isn’t it?

          3. One basic notion is that some claimed function is fine and helpful, but, at some point, claims go too far along the functional scale. A tricky-point then is to define when the claim elements are “unduly functional.”

            There’s nothing tricky about it. They go too far when the functionality recited in the claim is relied on for patentability.

          4. I agree with you Dennis that there is no “functional claiming” debate, as there is no per se invalidity of functionality. Functional description of old items may be encouraged, 112(f) is particularly sanctioned, and I can see a properly bounded non-(f) functionality that is valid.

            That being said, you would certainly agree that the problem lies in when non-means functional claims are failed to be evaluated properly with respect to 112, 1st. So that leaves the questions:

            Is there a concensus as to what are the current standards?
            and Are the current standards sufficient?

            To me, Lizardtech is a perfectly applied case, but so often because other issues are appealed there is a discussion of functional claims but no statement that the claims would fail under 112, 1st. I can’t tell you how many times someone has cited a claim construction case or a 101 case as an counter argument against written description. How is this fixed, given that a court generally shouldn’t do exactly what I’m saying – offer an opinion about something that isn’t before it?

          5. >>A tricky-point then is to define when the claim elements are >>“unduly functional.”

            I contend that to understand the functional claim issue one must view the claim in terms of one skilled in the art. “Unduly functional” as you say should be viewed by one skilled in the art.

            The fact is that if one actually spends the time to understand the inventions that are being claimed in information processing, one will understand that the metes and bounds of the invention are very well set out with functional claims. And one will understand that structure is recited by functional claims in information processing (both EE and CS.)

            The problem is hard because the ignorance is so rampant.

            1. And let’s not forget that information processing is spec’ed out in real life in functional terms. That it is discussed in functional terms, it is taught in the classroom in functional terms, etc.

              Academics (Lemley) can turn on their smoke machine and try to start from some theoretical starting place, but the reality is that the functional claims are exactly right. That there is no problem with functional claims. And the only one buying this nonsense is a bunch of academics and judges that are ignorant.

            2. turn on their smoke machine

              A clear indicator of the effect of the smoke machine is the miss by Random of what Malcolm is actually saying.

              Malcolm wishes to completely eviscerate elements of a claim that are stated functionally – he wants to give zero patentable weight to these elements of a claim.

              This is often easily recognized when he imports a strawman “claim totally in the mind” argument in software patent discussions.

              Instead of intellectual honesty, Malcolm almost universally resorts to dust-kicking and obfuscation and attempts to hide in a “anyone can talk about policy” cloud and refusing to recognize the tables of fact and law that stand between his ‘policy’ and reality.

              Another indicator of what NWPA says is the desire to move back in time to before the 1952 Act and before computers changed the world. A critical element that must be kept in mind is that claims are to be read from the perspective of the art field. Far too often another canard is attempted: mental steps doctrine as denying eligibility (note – not patentability – let’s keep these terms appropriately distinguished). A claim clearly to a manufacture, a machine component or to a machine (made new with a new configuration of a new component) is not a claim to a thought, untethered (and to draw the copyright analogy – unfixed in some medium). Of course, my favorite word for annihilating the mental steps doctrine is anthropomorphication. Machines (no matter what spin Malcolm attempts) really do not think.

            3. When I wrote:

              Malcolm wishes to completely eviscerate elements of a claim that are stated functionally – he wants to give zero patentable weight to these elements of a claim.

              This is often easily recognized when he imports a strawman “claim totally in the mind” argument in software patent discussions.

              I was not specifically thinking of another strawman – but another one has been raised by both Ned and Random: that of single means claiming. However, the point of the matter is that this is not the argument under discussion.

              Let’s stay focused people.

        2. if functional claiming is unacceptable, how could I draft a claim to distinguish it from other devices that include audio inputs and text outputs with processors in between

          You could recite the code you wrote that actually works to achieve this stunning result, for starters. I don’t think many people would object to you owning that.

          Oh but wait — that’s not good enough for you, is it? Being first to market with a working product that nobody can copy just wouldn’t be enough. You need to get money from everybody else who can write better code than you and, of course, you don’t want to have to write any code at all in the first place. I mean, writing code that actually works for the claimed function is for the little people, after all, not awesome imaginary “innovators” like you.

          1. You could recite the code you wrote that actually works

            You do realize that we have been over this already, right Malcolm? You do realize what “constructive reduction to practice” means, right Malcolm? You do realize that working models have not been required for more than 100 years, right Malcolm?

            Why the dust-kicking with asking for something that is not actually required?

        3. And herein lies the problem with functional claiming:

          “Lets say that I discover a set of genes associated with human speech and from that discovery, I come to understand that while hundreds seemly different languages have developed, the real communication occurs subconsciously based on clicks and spaces between clicks in the languages. That is, at the click/space level, all languages are the same.”

          Okay let’s say that. You have no protection for any work you’ve mentioned so far, because what you have done is “discovered” things that pre-existed you. I trust we agree on this?

          “From that, I invent a method for language to language audio to text translation and what to sell a universal translator that comprises an audio input analog to digital converter, a processor (DSP if you like) that analysis the digitized audio of a spoke input language for the clicks and spaces according to my method to determine the meaning and looks up the corresponding phrases in the desired output language and assembles a text representation of the received spoken words.

          Do you agree that I should be able to patent my translator?”

          What you can do is describe the means by which your machine achieves the function – i.e. what inputs it takes, how it transforms the inputs and how it outputs the transformed inputs.

          For example, you would need to describe, with particularity this: “a processor (DSP if you like) that analysis the digitized audio of a spoke input language for the clicks and spaces according to my method to determine the meaning”.

          Then, in doing so, you may claim not the function, but your machine’s method steps.

          A statement as to the function is an attempt to capture every means of achieving the translation. You don’t have that, and you aren’t entitled to it. What you were is the first to discover an eternal relationship and then you invented one particular means of capitalizing on that. The scope of your invention goes to your particular means.

          “If so, if functional claiming is unacceptable, how could I draft a claim to distinguish it from other devices that include audio inputs and text outputs with processors in between?”

          A processor doesn’t have a life of it’s own, describe the algorithm steps created by the code that you feed through the processor.

          Your situation is zero percent different from Morse. All Morse did was discover a particular means of communication, invented a particular means to capitalize on it, and then claim every means of achieving his ultimate goal. He failed on the broader claim, and so should you.

          The proper scope is to give you protection for your machine. The improper scope would be to make it so nobody could use clicks and spaces but you.

          1. You are wrong. Discoveries are patentable. Have a glance at 101. As you imply, there is nothing to discover but natural laws and naturally occurring compositions of matter. Accordingly, all the judiciary created doctrines in this area a wrong.

            or we could go, no one could use clicks for translation as no one knew about them. I discovered it, therefore I’m entitled to protected for another 20 years or so, in exchange for telling the world how to do it . Why is that not fair?

            1. Les steps into the bear trap and SNAP.

              Sorry Les, but no – the word “discovery” has taken multiple meanings in patent law and Random is correct here.

              Kind of.

              He still seems to be hedging to a “you must supply code” version as opposed to an allowed ladder of abstraction version. But other than that, pure discovery is not the same thing as “discovery” covered under patent law. There is that warehouse of nature thing that you have to abide by.

            2. anon

              I don’t care about ridiculous court rulings and legislation from the bench. Both the Constitution and 101 say discoveries can be protected. If someone legislates from the bench to change the meaning of a word to read it out of the statute, that is something to be undone, not something to be revered.

              Anyway, this thread is regarding having a discussion about what should be, not about what is. So, stop correcting me.

            3. Sorry Les but no – I will not stop correcting you when you step into bear traps.

              Directly on that point, your statement of “this thread is regarding having a discussion about what should be, not about what is.” is as CRP as Malcolm’s pure fantasies.

              You want to jump to a fantasy untethered in law or fact of what is now – go to a science fiction blog. You want to talk law – even law as it should be – then base the discussion in reality.

              Or to adopt another metaphor, to climb the rungs of a ladder, you must be on that ladder.

      2. Several points should be made and kept as a baseline reference:

        PON is a canard. Plain and simple. This is backed by the statement “Obviously, the Federal Circuit has come down saying that it is perfectly fine to have functional claim elements outside of the scope of 112(f).” Ned attacks Judge Rich for this. But Ned cannot counter – and does not counter – the fact that no judge knew the law better – and thus could give a better interpretation of that law than Judge Rich. Ned’s attack is as groundless as it is misdirected.

        The 1952 Act needs to be recognized for the powerful changes that it set forth, especially in all items related to patent eligible subject matter and the related PON doctrines.

        That Act removed the common law ability of the court to set “invention.” This included ‘inventive gist’ and all other such devices. This was in direct reaction against an activist Court that stated “the only valid patent is one that has not yet appeared before us.” Also in that act, functional claiming was freed from the shackles of the anti-patent Court.

        Did the pendulum swing too far? An interesting, but moot question as it is not up to the Court to decide that question in any effort to rewrite the law. It is up to Congress per our Constitution. The Court does not have the authority to write law at a different level. If the Court finds that Congress stepped over its Constitutional authority (and that should be doubtful given the vast power as noted in a fairly recent Supreme Court copyright case), then the appropriate action by the Court is to tell Congress to come up with a better rule – NOT to tell either the lower courts or itself to re-write the rule of invention. Remember – that power was revoked by Congress in 1952.

        Implicit rewritings of law should be extremely discouraged. How far down the rabbit hole does implicit go? Even Stevens warned about the power addiction in the 101 nose of wax. “Prometheus showed the direct effect of that power addiction when Court placed its implicit writings to be an untouchable “live letter” – no matter is the plain and direct words of the law dictate otherwise. To this effect, Prof. Crouch’s statement of “ One question is whether the Supreme Court would agree.” has an (albeit unfortunate) pragmatic angle. Will the Supreme Court recognize their own addiction? Will they recognize their own part in the morass that has been created of 101? Will the Supreme Court agree to look at the explicit words of Congress? Or will the Supreme Court continue to make a mess of things by trying too hard to hold onto its activist powers and keep their fingers in the nose of wax 101 power?

        .

        Lastly, what Prof. Crouch identifies as a more fundamental question is directly tied to the concept of the ladders of abstraction. Without a doubt, any claim of value – any claim beyond a complete (and thus easily designed around) picture claim – climbs one or more rungs on the ladder of abstraction.

        To attempt a subjective “how high up the ladder” rule is to court disaster.

        The Court has repeatedly recognized the risks of evisceration of patent law. The truth of the matter is that ANY rung short of the top rung of a ladder allows a rung to exist that eliminates the absolute preemption concern that may trigger a use of the judicial exception based on Abstract rejection. The truth of the matter is that any attempt to create a mid-height limit artificially constrains how high man can climb in their innovation efforts. When you cap how high you allow, you run the direct risk that you are violating the constitutional imperative by limiting and not promoting innovation. The very real problem the Court faces is that there is no apriori limit to man’s innovation and thus any cap – short of absolute knowledge that the cap is the absolute top rung is detrimental and not in accord with the constitution.

        1. The Court has repeatedly recognized the risks of evisceration of patent law.

          There is zero risk of “evisceration of patent law” by requiring applicants to structurally describe their new compositions of matter and articles of manufacture. None whatsoever.

          There’s also no risk that softie woftie applicants will stop writing better programs if you take functional claiming away. Why is that? Because they don’t need patents to protect their better programs. They already have copyright law, specially designed for them.

          We all know that you believe that copyright law is inadequate. That’s nice. You also habitually defend the worst junk and the worst actors out there in the patent world. Go figure.

        2. “PON is a canard. Plain and simple. This is backed by the statement “Obviously, the Federal Circuit has come down saying that it is perfectly fine to have functional claim elements outside of the scope of 112(f).””

          Those statements don’t follow. It’s perfectly possible to have functional language outside of 112(f) that doesn’t fail any of the required tests in 112 or 103. How you leap from there to “PON is a canard” is unknown. Certainly each limitation goes into the whole of a claim and the claim must be enabled and described.

          “Implicit rewritings of law should be extremely discouraged….Will the Supreme Court agree to look at the explicit words of Congress?”

          This is an interesting statement coming from you. Since certainly enablement is a black-letter requirement, yet software functionality hangs its hat on the unproven assertion by a court that a described function is enabled. And then they go even further and don’t even describe their functions according to another court’s holding. It seems very odd that some court holdings should be followed and others not, and they seem to be drawn down the line of what anon feels will give him the right scope of patent allowance and protection.

          “The Court has repeatedly recognized the risks of evisceration of patent law…The truth of the matter is that any attempt to create a mid-height limit artificially constrains how high man can climb in their innovation efforts. When you cap how high you allow, you run the direct risk that you are violating the constitutional imperative by limiting and not promoting innovation. The very real problem the Court faces is that there is no apriori limit to man’s innovation and thus any cap – short of absolute knowledge that the cap is the absolute top rung is detrimental and not in accord with the constitution.”

          Spoken as a man who ignores 112, 1st. You should take a look at who is truly trying to eviscerate patent law. There is no “artificial constraint” – there is a black letter requirement that the scope of the invention must be enabled and described. There is a standard for description. There is a standard for enablement. You wish to ignore these standards and allow the applicant to subjectively claim whatever means he wishes. When one ignores the requirement that in order for computer software to be enabled the function it runs must be described, and the way the function is described is by recitation of the algorithm it runs and instead substitutes a standard that merely summarily mentioning functionality both enables and describes it, one eliminates the very real, very necessary constraints that prevent overbroad claiming. Whether you foolishly believe that is the law or not, it is clear that the system cannot stand absent a 112, 1st that puts meaningful limits of the breadth of claims.

          Ladders of abstraction, just like 112, 6th, are a meaningful tool for an applicant to claim the scope he seeks to claim. But that scope is still evaluated under 112, 1st, even if you want to pretend there’s some sort of judicial interpretation of patent law that makes it always met (and thereby write’s Congress’ intention out of law).

          1. My poor friend Random’s turn in the bear trap: “Those statements don’t follow. It’s perfectly possible to have functional language outside of 112(f) that doesn’t fail any of the required tests in 112 or 103. How you leap from there to “PON is a canard” is unknown. Certainly each limitation goes into the whole of a claim and the claim must be enabled and described.

            When you say that “Certainly each limitation goes into the whole of a claim and the claim must be enabled and described” you necessarily eliminate why PON as a concept was created. Not only “do they follow” – they must follow.

            PON is a canard – a tool from a bygone era that has no place in patent law since the 1952 Act.

          2. Nice strawman with “even if you want to pretend there’s some sort of judicial interpretation of patent law that makes it always met

            You keep on saying things that I have never said and arguing against the arguments you create.

            Why don’t you try to argue against the points I actually do provide?

          3. Random again misses with the fallacy of “Spoken as a man who ignores 112, 1st

            No such thing my friend. I suggest you read the decision here to see what level is required to meet 112, 1st. Let me give you a spoiler alert: I am right and you are wrong.

            1. Then lets ask you straight out, and give me a straight answer –

              1) Does Aristocrat detail the requirement for a single means of computer functionality, i.e. are you required to describe the algorithm by which the function occurs? If it is not that, is it something else? If so, what else?

              2) Whatever the standard of description of a single means is, do you agree that as you step up the ladder of abstraction that you must meet 112, 1st as to that broader rung? If not, by what standard does policing which separates a given rung from the rung above it and the rung below it occur?

              3) Assume a proper 112(6)th function. Applicant writes another claim which is the same in every respect but the function is no longer expressed in means plus. Is this second claim broader, narrower, or of the same scope as the first? Is the second claim easier, harder or just as easy to patent as the first? If the first claim is found to be allowable, must the second be? and vice versa?

              4) Do you agree with me that the legal precedent states that enablement of a computer function is necessarily dependent upon the proper description of the function (i.e. that translation is only a “clerical step” once a function has been described)?

              5) Assume that a person has no knowledge of computers or programming at all, but they believe that certain functionality would be profitable, for example – a function that analyzes your food eating habits and work schedule and automatically orders and pays for delivery, so your favorite dish is waiting for you when you get home. Can this person receive a patent? And I want to be very clear here – This person knows nothing about computers, he only knows what function he wants to see them achieve. His specification will read with the same level of expertise as my exposition here does. Why or why not?

            2. 1) Single means..? – Let’s move the goal posts back, shall we? Ask a crooked question…

              2) asked and answered – another strawman of yours.

              3) not sure what point you are trying to make. Do some applicants write claims with no difference? Sure. Is there a difference in means plus claims and non-means plus claims? Sure? What is the actual difference? The great lawyer answer (of which, you should have been aware of before you asked the question): it depends.

              4) Again, it depends – give me a pincite and how you are using the pincite. Not all of what you post is wrong, but a lot of it is.

              5) 103 comes to mind with your forced hypothetical. Or do you wish to revoke “patentability shall not be negatived by the manner in which the invention was made.” with some type of requirement that says the inventor must really understand what they invented? You overplay your cards here with your anti-functional views. Try understanding the law as it is.

            3. 1) I meant single means in the sense of the nominated structure (as in, the particular means of execution). Do you agree that the structure of a function is the algorithm that causes it, if not, what is it?

              2) So the answer is yes?

              3) What I am getting at here is to determine if you agree that there is a scope change between claiming a function inside and outside of 112(6).

              4) It appears that Matter of Application of Sherwood, 613 F. 2d 809, despite being a best mode case, is the basis of the line of thinking of the enablement of computer functions (the rule is often misapplied to “every function even mentioned is enabled”). Read that, along with the footnotes. The question I ultimately seek to answer here is: Is there any question but that NWPA is wrong about his scope of enablement logic? Straight out question – does disclosure of one algorithm allow an applicant to claim performance of the function without limitation to the particular disclosed algorithm?

              5) This really gets to the heart of it, because if your answer is anything but No, many of the foundational aspects of computer-implemented functional claiming are completely destroyed. If, for example, the answer is yes, then it is improper to conclude that one of ordinary skill in the art is an EE, or even a college graduate, right? If the answer is yes, then the reasoning of Sherwood is undermined. If the answer is yes, how does patent law distinguish between someone who has the invention (WD, a requirement) and someone who is simply attempting to monopolize what may be a commercial exploit? If the answer is yes, what benefit has his disclosure provided to the scientific arts?

            4. +1) Odd use of ‘single means’ and ‘structure of a function.’ Algorithm is another of those oddities, but with that one, one needs to be careful, as it has been used with a very limited legal meaning (See Benson). I am not sure I can translate terms for you, given your peculiar uses. To any of your oddities though, I am sure that the DOE makes what you seem to want to view as very singular, not so. I think that you are very much still confused as to wanting to have a singular item like code when no such singularity of code is required.

              +2) So the answer is the same as I gave you before.

              +3) Asked and answered.

              +4) Interesting choice of a case to use as your foundation. As to your new ‘straight out question’ sorry, I do not have any wrinkle related to NWPA as I have not followed your particular beef with NWPA all that closely, but I do think that you are off with your view of scope of enablement, and I have told you so. Your insertion now of “without limitation” is clearly moving the goal posts. I am pretty sure that NWPA would not agree with how you are stating his position. Since I know that you have not stated my position correctly in our discussions, to get ‘straight out answers’ you will have to stop making crooked questions.

              +5) See what I say about crooked questions? Sorry, but your ultimatum “must answer” here is summarily rejected. You assume that you are correct in your views and then try to force fit the real answers to your forced views. Your assumptions have not been correct and thus you continue to simply spout nonsense. Functional claiming is functional claiming. Do you somehow have some unstated (crooked) special view for “computer-implemented functional claiming” that carries with it other peculiarities that I should be aware of? As to the distinction of “having an invention” and merely “attempting to monopolize what may be a commercial exploit,” you are going to have to try rephrasing the question, as your question is nonsensical. The fact that you have a patent application under discussion means that you ARE necessarily “attempting to monopolize what may be a commercial exploit.” You seem to be confused about the two and seem to assume that having an invention must mean something different. Take a refresher course in set theory. Finally, I think that you show a wee bit too much bias with your use of ‘scientific arts.’ A really odd choice of phrase for a patent professional. Combined with your seemingly wanting to exclude commercial exploits from the Useful Arts, your oddities make me think that you are not a patent professional.

      3. On what statutory provision would the Supreme Court base a holding that functional claim elements are impermissible?

        Or would it be another one of those judicial exceptions?

        1. “On what statutory provision would the Supreme Court base a holding that functional claim elements are impermissible?”

          Nobody has ever said that functional claim elements are inherently impermissible. What has always been said is that a claim to functionality covers every structure capable of performing the function, and it’s pretty hard for an applicant to prove that his disclosure represents all of the possible ways of doing something.

          To be extremely clear: If I claim the function of travelling to St. Louis, that claim encompasses by means of Star Trek transporter. Unless the applicant can prove that either a) a transporter is impossible (and it’s not, it’s just not going to happen at our current level of technology) or b) the applicant has enabled a transporter, he really hasn’t achieved the full scope of the function that is travelling to St. Louis.

          This is very distinct of when a function is used to describe something well known. In that case, the Applicant isn’t seeking to describe something new, but just use shorthand for describing a range of things he admits to be old. Because all these structures are known, there’s no problem.

          As it applies to computers, the functional limitation is novel – applicant is claiming code that he asserts never existed before him. Applicant can claim his means (i.e. he can describe the algorithm created by his code and claim that) but to expand his means to every possible means is an overbroad statement. Contrast this with biomedical or chemical, where the functional language is generally used to describe a range of known compounds, applicant isn’t claiming he has new chemicals, he’s claiming a novel and non-obvious combination of them.

          So to answer your question – 112, 1st. Description and enablement are the means by which you stop people from claiming more than what they have.

          1. if no one has ever gone to St Louis before and yesI can protect going to St Louis, even with the transporter.someone else can patent the transformer for general travel purposes. They just can’t go to St Louis without my permission.no one could go to St Louis before I invented going to St Louis so what is the harm lol ing me to decide who goes since I’m the one it figured out how?without me, no one goes to St Louis. With my invention, for the next 17 years or 20 years people willing to pay a royalty can go to St Louis. After that, everyone can go where no one could go before.

          2. Random completely misses with “Nobody has ever said that functional claim elements are inherently impermissible.

            Try reading any of the voluminous QQ from Malcolm on how “only valid claims are completely designated structurally,” or his offshoot of “you can ignore any functional claim elemetns as having no patentable weight.”

            Open your eyes son.

            1. Random completely misses the point with: “nobody of any legal heft. You are permitted to chortle.

              Um, you do understand that the posts in response to vacuous chortling is meant to address that vacuous chortling, right?

              You really do need to open your eyes Random – you seem to want to operate in some type of vacuum. Look into the history of propaganda (for example, the despicable G of WWII era). If you let someone say something – even if you personally think that no one could ever think that the nonsense that person ‘chortles’ would be taken seriously – often enough, some people will take that chortling as ‘truth.’

              And again, not all of what you post is wrong – Malcolm is nobody of any legal heft.

              But that only shows that what he posts is propaganda. That propaganda does need to be dealt with.

            2. And I will point out that there are others with apparently some ‘legal heft’ that chortle and are listened to, when under a critical view, they should not be.

              Two examples come to mind: Lemley and Chien.

    2. With the obligatory premise that I don’t know the answer to the question, I must say that I find the notion of “indefinite because functional at the point of novelty” problematic, because novelty necessarily depends on the prior art at hand. If the prior art you consider for the test is not the one known to the applicant when filing the application, you are basically asking the applicant to draft on the basis of prior art he does not know the existence of. Furthermore, it often happens that different documents cover a claim in a piecemeal fashion (ex: claim is to A, B, C, and D, Doc 1 discloses A, B, Doc 2 C and D and Doc 3 A and C) – how do you determine the “point of novelty” for indefiniteness purposes then? I’d rather judge whether a claim is indefinite or not based on its wording alone, in combination with the disclosure of the description, without mixing in issues related to novelty; there’s plenty of rules you can devise, starting from this basis, to curbe the use of functional claiming so that it appears only when it is useful.

      1. If the prior art you consider for the test is not the one known to the applicant when filing the application, you are basically asking the applicant to draft on the basis of prior art he does not know the existence of.

        Why should that matter? So an uninformed patent applicant gets blindsided and he doesn’t get a patent. Why is that a problem? It happens all the time. Why should the public care?

      2. Good point.

        Note that the Halliburton court went out of its way to also condemn functionally claimed old elements as well.

        But that was just dicta, as the holding of the case was limited to claims functional at the point of novelty. See, Faulkner v. Gibbs, 338 U.S. 267, 70 S. Ct. 25, 94 L. Ed. 62 (1949):

        “The record, briefs and arguments of counsel lead us to the view that Halliburton, supra, is inapposite. We there 268*268 held the patent invalid because its language was too broad at the precise point of novelty. In the instant case, the patent has been sustained because of the fact of combination rather than the novelty of any particular element.”

          1. anon, can you tell me whether in “abrogating” Halliburton congress also abrogated every other Supreme Court case finding claims “functional at the point of novelty” indefinite. There are a lot of them.

            1. Ned, I will refer you to the Prof. Hricik side of the blog and the recent post that you say you concur with my views on.

              You need to realize that PON being a canard is tied to those things that you say that you agree with me on.

              You still do not seem to appreciate the magnitude of the change in patent law (removing from the Courts the ability to set ‘invention’ by common law process) and what that means to the Court’s addition to wax noses and implicit writings.

      3. “because novelty necessarily depends on the prior art at hand.”

        Not really, the applicant knows what he considers to be novel, but I see, you’re being practical…see below.

        “If the prior art you consider for the test is not the one known to the applicant when filing the application, you are basically asking the applicant to draft on the basis of prior art he does not know the existence of.”

        How is that different from non-functional limitations? They have to be definite too.

        “Furthermore, it often happens that different documents cover a claim in a piecemeal fashion (ex: claim is to A, B, C, and D, Doc 1 discloses A, B, Doc 2 C and D and Doc 3 A and C) – how do you determine the “point of novelty” for indefiniteness purposes then?”

        This situation sorts itself out. If the applicant claims ABCD and the office shows ABCD, the applicant can either argue there is an improper motivation to combine, in which case the novelty is in the combination and this rule doesn’t apply (KSR will decide the case), or he argues that at least one of ABCD is not shown by the prior art. If that is the argument, the spec better describe and enable that argued limitation.

        What you cannot have is a situation where a patent issues on a limitation that is both not taught by the prior art and not taught by the applicant. If the applicant is going to argue the former, there’s a rejection with respect to the latter, and vice versa. That’s not hard to understand, I think. Nor is it a problem if an applicant over explains because he may think multiple features are novel. Nor is there a problem (for the concept of patent law) if the applicant underexplains and no patent is granted, as the system is working properly.

    3. Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 18 S. Ct. 707, 42 L. Ed. 1136 (1898).

      “It may be stated generally that the position of complainants in this connection is, that the novel feature of this patent, in respect to which they are entitled to be protected, is the opening of a passage directly from the train-pipe to the brake-cylinder, without passing through the auxiliary reservoir and without reference to the means by which such passageway is controlled. Defendant’s theory is that they are limited to such passageway when governed by the auxiliary valve 41, a device which, although of no utility as arranged in the patent in suit, became afterwards exceedingly useful when further combined with the supplementary piston shown in patent No. 376,837. The further inference is that, as they do not use the auxiliary valve of this patent, they cannot be held liable as infringers.

      Complainants’ case must rest either upon the theory that the admission of compressed air directly from the train-pipe to the brake-cylinder is patentable as a function, or that the means employed by the defendants for that purpose are a mechanical equivalent for the auxiliary valve 41, described in the patent.”

      “The difficulty we have found with this claim is this: That, if it be interpreted simply as a claim for the function of admitting air to the brake-cylinder directly from the train-pipe, it is open to the objection, held in several cases to be fatal, that the mere function of a machine cannot be patented.

      “This case, however, does not call for an expression of our opinion upon this point, nor even upon the question whether the function of admitting air directly from the train-pipe to the brake-cylinder be patentable or not, since there is no claim made for an independent process in this patent, and the whole theory of the specification and claims is based upon the novelty of the mechanism.

      But if the second claim be not susceptible of the interpretation that it is simply for a function, then the performance of that function must be limited to the particular means described in the specification for the admission of air from the train-pipe to the brake-cylinder. This we understand to be the theory of the defendants, and this raises the same question which is raised under the first and fourth claims, whether defendants’ device contains the auxiliary valve of the Westinghouse patent, or its mechanical equivalent.

      In this view, it becomes unnecessary to express an opinion whether the second claim be valid or not, since in the aspect of the case most favorable to the complainants, it is necessary to read into it something which is not found there, or, in the 558*558 language of complainants’ brief, “to refer back to the specification; not, it is true, for a slavish adoption of the identical instrumentalities therein described, but for the understanding of the essential and substantial features of the means therein illustrated.” In thus reading the specification into the claim, we can adopt no other construction than to consider it as if the auxiliary valve were inserted in the claim in so many words, and then to inquire whether the defendants make use of such valve, or its mechanical equivalent.” Id. at 553-558.

  7. It’d be nice if the webinar addressed the distinction (or lack thereof) between claiming new functions versus claiming old devices or systems with new functionality.

    The former is expressly outside of the scope of 101. That’s why nobody even bothers claiming, e.g., “A new function for a programmable computer, wherein the new function is blah blah blah.”

    Why should it matter if the claim is rewritten with the computer as the “object” of the claim but is otherwise indistinguishable from the plainly ineligible claim (i.e., there are no additional limitations recited in the rewritten claim)?

    Looking at the issue this way seems to get right to the core of the problem with functional claiming, at least where the functionality (or functionalities) are the only inventive features of the claim.

    Once that discussion is gotten out of the way, it seems that the only significant issue remaining is whether an exception to ineligibility is necessary in certain fields, at certain times. If so, exactly what are criteria justify such an exception? In that regard, one might wish to look at instances where such exceptions have been judicially granted in the past (e.g., antibodies) and ask (1) what criteria were invoked to justify that exception; (2) what structural disclosure requirements, if any, remained to take advantage of the antibody exception; (3) are there any important differences between antibodies and other fields in which similar exceptions are demanded by practitioners?

    1. “Why should it matter if the claim is rewritten with the computer as the ‘object’ of the claim but is otherwise indistinguishable from the plainly ineligible claim (i.e., there are no additional limitations recited in the rewritten claim)?”

      Uhm, maybe because if the claim recites subject matter eligible under 101 then it should be eligible under 101, and then patentability under 102, 103 and 112 should be determined.

      Just a thought.

      “Once that discussion is gotten out of the way, it seems that the only significant issue remaining is whether an exception to ineligibility is necessary in certain fields, at certain times.”

      An exception to ineligibility? That seems to be putting the cart before the horse.

      1. Uhm, maybe because if the claim recites subject matter eligible under 101 then it should be eligible under 101, and then patentability under 102, 103 and 112 should be determined.

        Uhm … maybe that’s the sort of kindergarten level form-over-substance “analysis” that has been rejected forcefully by the Supreme Court, and very recently, in a decision that is never, ever going to be overturned. You’re going to need to do much, much better than that.

        Just a thought.

        Moreover, it’s been noted before that proponents of a toothless 101 love to pretend that the answer lies in the “other statutes,” and yet they never seem to be able to articulate how those statutes are supposed to work without invoking the same 101 considerations that they found so troublesome in the first place.

        For example, 102 is easily sidestepped by reciting a new function. So much for that. 112 is easily sidestepped once we accept the softie woftie crowd’s admission that new computer functionalities are possessed and enabled upon their recitation because any programmer can make it happen without “undue experimentation”. The function is rarely indefinite (like everything else).

        Perhaps you can answer the question: when does a new computer-implemented information-processing functionality become non-obvious? When it’s new? That seems to a bit problematic. It also seems to be the status quo, judging by the junk that flows out of the PTO every week.

        But go ahead and tell everyone when a new computer-implemented information processing functionality becomes non-obvious. What does the analysis look like? Given that computers have been known for a long, long, long time to be capable of processing any kind of data that is presented to them in readable form, please share with everyone an example of an unexpected computer functionality. Please note that I’m not asking for an unexpected solution to a problem of creating a computer with a certain functionality. Not at all. That would be asking far, far too much of you.

        I’m asking for an unexpected functionality. Something surprising (and something that is also immediately enabled of course, as per the status quo).

        Go ahead. Let’s have one of those “serious discussions” you guys are always clamoring for. Sort of like the ones you have over at Gene’s echo chamber where you pile on with your relentless horsesh*t and then Gene bans the guy who disagrees with him.

        Go ahead. Make my day.

        1. “Uhm … maybe that’s the sort of kindergarten level form-over-substance ‘analysis’ that has been rejected forcefully by the Supreme Court, and very recently, in a decision that is never, ever going to be overturned. You’re going to need to do much, much better than that.”

          We’ll have to wait and see how the Supremes rule in Alice before that is certain. Feel free to file an amicus brief though and explain to the court how a claim to a computer or a computer system is ineligible. I’d be interested in reading it. But as it would take more than your usual, “It’s facially invalid” level of analysis, I seriously doubt you up to it.

          “Moreover, it’s been noted before that proponents of a toothless 101 love to pretend that the answer lies in the ‘other statutes,’ and yet they never seem to be able to articulate how those statutes are supposed to work without invoking the same 101 considerations that they found so troublesome in the first place.”

          Who noted that? You?

          Actually if you get Aharonian’s emails he advocates for the abolition of section 101. And when he criticizes a patent he actually provides the prior art he’s relying on. You should email him and sign up. Even you should be capable of at least that much effort.

          “For example, 102 is easily sidestepped by reciting a new function.”

          But according to you, there are no new functions. Aren’t you the one always ranting about how information has always been collected, analyzed, processed, transmitted, etc.? If tanking this “softie woftie junk” is as easy as you claim to do it regularly on this site, why don’ the examiners reject, and the courts invalidate, all of these patents with your brilliant analysis?

          “So much for that. 112 is easily sidestepped once we accept the softie woftie crowd’s admission that new computer functionalities are possessed and enabled upon their recitation because any programmer can make it happen without ‘undue experimentation’.”

          You don’t have to accept anything. If you think a claim is not enabled and/or described, make the case. But again, I think your going to have to do more than your usual fisting pounding that you do here.

          “I’m asking for an unexpected functionality.”

          Well, despite the wet dreams you might be having about KSR, “unexpected functionality” is not a requirement of non-obviousness. If you actually have evidence that all of the claimed features are within the scope and content of the prior art, and you want to argue that there’s nothing “unexpected” when you combine the references, then make the case. But there’s simply no requirement that a claim to a device or apparatus or system have an “unexpected functionality” to be eligible under section 101 or non-obvious under section 103.

          “Go ahead. Make my day.”

          You might want to cut back on the Dirty Harry marathons in your mom’s basement just a little bit.

          1. Tired: it would take more than your usual, “It’s facially invalid” level of analysis,

            That’s not my the level of my analysis. But guess what: you’re a m0r0n. Fun game! You’ll start the next round, as usual?

            “Moreover, it’s been noted before that proponents of a toothless 101 love to pretend that the answer lies in the ‘other statutes,’ and yet they never seem to be able to articulate how those statutes are supposed to work without invoking the same 101 considerations that they found so troublesome in the first place.”

            Who noted that? You?

            Yes, several years ago and repeatedly (probably hundreds of times) since then whenever the same behavior is displayed here or elsewhere. Kevin Noonan and Gene Quinn are probably the quintessential repeat offenders, but it’s a tried and true tactic. Heck, the government tried it in Prometheus v. Mayo. Perhaps you need to pull your head out of the sand? Or maybe you really are that dim and unaware. [shrugs]

            according to you, there are no new functions.

            I never said that. In fact, I noted the precise opposite already in this thread.

            Aren’t you the one always ranting about how information has always been collected, analyzed, processed, transmitted, etc.?

            Yes. That’s just a statement of fact. I guess it might seem like a “rant” to an ignorant person or dishonest person who wishes that it weren’t true and recoils whenever that unpleasant fact is presented.

            If tanking this “softie woftie junk” is as easy as you claim to do it regularly on this site, why don’ the examiners reject, and the courts invalidate, all of these patents with your brilliant analysis?

            Court invalidate softie woftie junk all the time. And tons of softie woftie junk is rejected. But tons more isn’t. I’m not sure what your point is but you seem to wish to change the subject. Why don’t you just say that you love computer-implementd junk and I’m a mean person for wanting to make it harder for you to obtain it? Because that’s pretty much all your doing here, right down to your pathetic pseudonym.

            your going to have to do more than your usual fisting pounding that you do here.

            You’re the fist pounder and one of the pathetic fist pounders ever born! Fun game! You’re really great at it. I’ll let you start the next round again. More importantly, I appreciate you proving my point. See how it works, folks? Out of one side of his mouth, he suggests that functional claiming at the point of the novelty should be addressed by 112. Out of the other side of his mouth, he suggests that a claim to a new computer distinguished solely by its new functionality can be fully enabled merely by describing the new functionality. Again, we ask: how is that different from claiming the new functionality itself? And again we’ll be told: “Because ‘computer’!!!!” That’s his argument.

            Does anyone really think that’s the answer the Supreme Court is going to give us?

            We’ll have to wait and see how the Supremes rule in Alice

            I guess that makes one person. A person with zero credibility who is plainly working from the same loser script that was already stale and five years ago.

            there’s simply no requirement that a claim to a device or apparatus or system have an “unexpected functionality” to be eligible under section 101 or non-obvious under section 103.

            LOL. What’d I tell you, folks? The teabaggers just can’t follow through. Nobody could have predicted.

      2. “Uhm, maybe because if the claim recites subject matter eligible under 101 then it should be eligible under 101,”

        Yeah, idk about that. Why do you think that such a thing “should” aka is obliged to be, eligible?

        Just tagging in some eligible subject matter shouldn’t, aka is not necessarily obliged to be or in fact is obliged not to, really affect the determination all that much, as noted in the recent Prom decision.

        1. “Why do you think that such a thing ‘should’ aka is obliged to be, eligible?”

          Uhm, maybe because the statute says it is. And because “judicially created exceptions” to clear statutory language should be narrow and rarely applied.

          1. “Why do you think that such a thing ‘should’ aka is obliged to be, eligible?”

            Uhm, maybe because the statute says it is.

            Uhm, so I guess that mental processes are also eligible because the statute says processes are eligible.

            “judicially created exceptions” to clear statutory language should be narrow and rarely applied

            LOL. You guys are, like, so principled and stuff! I’m so glad the patent teabaggers are here to protect the Republic.

            1. “LOL. You guys are, like, so principled and stuff! I’m so glad the patent teabaggers are here to protect the Republic.”

              Come on MM, let’s be honest, they supply the majority of the cannon fodder for this country. Always have, and likely will for the duration of its existence. So don’t get too snarky about them being here to protect the republic since many of them actually bodily do so.

          2. “Uhm, maybe because the statute says it is. ”

            That’s interesting because I don’t see that written in the statute.

            “And because “judicially created exceptions” to clear statutory language should be narrow and rarely applied.”

            To be clear, they were judicial exceptions prior to that statute even existing. They’re not judicial exceptions to that clear statutory language, they’re exceptions to eligibility, established before that statute even existed. And, notably, there appeared to be no intention on the part of congress to undo those exceptions to eligible subject matter with the passage of the relevant statute.

    2. Tired of Examiner Mooney

      I’m not an Examiner by the way. But I can imagine why it would please you to pretend that I am, given that you know nothing about patent law and dropped out of high school when your drug habit got the best of you.

      See how that works, Mrs. “Tired”? Fun game, isn’t it? I’ll let you start the next round, as usual.

        1. Pretty much the same tired bullsh!t from you.

          Actually it’s your bullsh!t that’s the same and tiresome.

          Fun game! You’ll start the next round, as usual? Maybe you and your li’l buddy “anon” can hold hands and spew your inane insults together. That would be really special and surprising.

      1. Who do you think would be the best person to argue that functional claiming at the point of novelty is good for the patent system and should be allowed, without limitation?

        Gene Quinn, maybe? Eric Guttag? Dale Halling?

        Who are the most brilliant persuasive pundits out there to speak out in defense of functional claiming at the point of novelty?

        Let everybody know who you have in mind. And please point us all in the direction of their most compelling writings on the subject.

        Thanks.

        1. “Who do you think would be the best person to argue that functional claiming at the point of novelty is good for the patent system and should be allowed, without limitation?

          Gene Quinn, maybe? Eric Guttag? Dale Halling?”

          I think any of those gentlemen would do fine. Each has written much more persuasively than your typical, “Oh come on, everybody knows it’s facially invalid cr#p!!!!! It’s so old and well known nobody ever bothered to write it down!!!!! It’s so obvious it’s clearly not eligible. I just tanked this patent in five seconds!!!!!” schtick.

          I’d rather see Aharonian on the panel than any of those actually scheduled to speak, but I will still listen in on the webinar.

          1. I think any of those gentlemen would do fine. Each has written much more persuasively

            Please show me an example of their brilliant writings in defense of functional claiming at the point of novelty. Do they have any arguments besides “Waaaah!! Waaah!! You’re all ignorant! Iron age thinking!!! Waaah!!” That’s really all I’m aware of.

            I’d rather see Aharonian on the panel

            Please point us to an example of his brilliant writings in defense of functional claiming at the point of novelty. I’ll give Greg credit, at least, for being entertaining and capable of articulating his beliefs in a reasonable coherent fashion. But I’ve not read any of his defenses of functional claiming at the point of novelty. Does he have one?

            1. “Waaaah!! Waaah!!”

              I’m sorry, but you are confused. “Waaaah!! Waaah!!” is the argument of the anti functional claiming crowd…. as in “Waaaah!! Waaah!!, functional claims are too broad even though the examiner considered them under 35 USC 102 and 103 and agreed that even claimed functionally there was no anticipating prior art or even art that would make the claimed subject matter obvious “Waaaah!! Waaah!!””

            2. “I’ll give Greg credit, at least, for being entertaining and capable of articulating his beliefs in a reasonable coherent fashion.”

              I’m sure that’ll give him a warm fuzzy all over. Especially coming from somebody as non-entertaining and incapable of articulating his beliefs in a reasonable coherent fashion such as yourself.

            3. Especially coming from somebody as non-entertaining and incapable of articulating his beliefs in a reasonable coherent fashion such as yourself.

              In fact, it’s you who is non-entertaining and incapable of articulating his beliefs in a reasonably coherent fashion.

              Fun game! I’ll let you start the next round, as usual.

              Still waiting for a link to the brilliant writings of Quinn, Guttag and Halling where they defend functional claiming at the point of novelty. Are they as awesome and compelling as your defenses, Tired?

              Oh wait, let me guess: you don’t need to defend anything, do you? Because a claim with functional language at the point of novelty got granted last Tuesday. Awesome “argument”! Almost as good as “Diehr says you can’t dissect claims”. Keep ‘em coming, Tired. You guys are winning, in your own minds, and nothing will ever change that. That’s the beauty of your zombie mentality.

    1. 6, I would be surprised if we heard nothing but denunciation.My how the worm turns. In 1952, the patent bar thought the world of functional claiming and thought Justice Douglas was some kind of arch villain for writing cases like Halliburton and Mercoid.

      In truth, Douglas was adhering to the law while Rich and crew were trying to overturn it.

      1. Your post makes me laugh Ned as it is widely known that Douglas was one of the very worst Justices ever and that your ever-present vendetta against Rich continues even as no other judge – or justice – was as intimately familiar with the actual law than he.

        Your ‘view’ of Judge Rich trying to overturn law is a massive FAIL.

        That you now provide citations – knowing (because I have informed you) that are not in accord with current law – and trying to portray those citations as controlling law borders on your own writings of what constitutes unethical practice of law.

        Your passion for your agenda does at times blind you.

        1. it is widely known that Douglas was one of the very worst Justices ever

          LOL. Is that what they taught you at Heritage University?

          no other judge – or justice – was as intimately familiar with the actual law than [Rich]

          Ooooh! The “actual” law. This is the same Judge Rich who believed you should be able to protect a useful, non-obvious mental step by tacking on a conventional non-mental step, like drinking a cup of water. Either that or he was simply too dumb to contemplate the possibility of such a claim being presented.

          Yes, he was a real deep thinker when it came to patents. We really owe him a lot.

          [insert f@rt noise]

            1. Because nothing “advances a conversation” like an unsubstantiated statement that a Justice was “widely known” to be the worst ever.

              This is why the term “hypocritical tool” fits you to a T, anon. But you knew that already.

            2. like an unsubstantiated statement that a Justice was “widely known” to be the worst ever.

              LOL – it is true that Douglas was considered one of the worst ever. Try using that English “skill’ of yours to read some history.

            3. it is true that Douglas was considered one of the worst ever.

              It is true that you are considered to be a pathological liar with sociopath tendencies.

              Fun game!

              I trust you’ll keep “advancing the conversation” as usual.

            4. Malcolm,

              Your adherence to the belief that intellectual honesty is not required because this is merely a blog and not a court ends your game.

              Look up at the scoreboard son. That zero next to your name is your amount of positive credibility.

        2. Anon, you have to admit that Rich tried to assert, time and again, that section 112 paragraph 6 was intended to restore the doctrine of functional claiming to its state prior to Halliburton. See e.g., footnote 11 of Application of Fuetterer, 319 F.2d 259 (C.C.P.A. 1963).

          You further have to admit that In re Donaldson overturned two en banc precedents to the contrary, i.e. that held that Congress did not intend to supplant the requirements of section 112 paragraph 2 that claims be clear and definite in passing section 112 paragraph 3 now paragraph “f.”

          Finally, it is a wonder that even though Donaldson was specifically limited to means plus function clauses, the patent office removed a reference to In re Arbeit that did not have to anything to do with a means plus function element, only with a functional claim.

          You should know that the effort by the Milwaukee Patent Law Association to begin with was in fact an effort to overturn Halliburton regarding all functional claims. It ended up much more limited than that, but Judge Rich never admitted that it did. He continued to treat the topic more broadly, basically asserting that section 112 paragraph 6 applied all functional claims – allowing them in claims but applying the rule of construction in court.

          But that is not how the statute reads, is it?

          1. To your notion of “ It ended up much more limited than that

            I will again inform you that Halliburton was abrogated.

            Period.

            You do not get to cherry pick from an abrogated case any ‘portion’ that you think survived abrogation because it fits your agenda. You do not get to pick other cases that operated under pre-1952 law to attempt to ‘validate’ what you think the 1952 law changed.

            Your attempts to say “Pay no attention to the man behind the curtain” will not work. Dorothy and all of her friends see you twisting the knobs and pushing the buttons.

            1. anon, you cannot seriously believe, can you, that the doctrine that a claim was indefinite if it was functional at the point of novelty was abrogated by simply overturning Halliburton?

            2. Let me assure you, anon, that many cases prior to Halliburton held claims indefinite because they were functional at the point of novelty. I bring you United Carbon, Wabash Appliance, Perkins Glue and O’Reilly v. Morse for four.

              True, Westinghouse would have construed such claims to cover the corresponding structure and materials, etc. Halliburton overruled Westinghouse.

              So, when Rich opined in Fuetterer that Westinghouse was restored, was it? Really. That would mean that Perkins Glue, Wabash Appliance, United Carbon and O’Reilly v. Morse were also abrogated.

              Who is right? Rich, or the Supreme Court?

              I see nothing in 112(f) that restores Westinghouse as a broad proposition. Nothing. The statute pertains to MPF clauses in combination claims. Unless the claim is a combination claim, and unless it uses the magic words, 112(f) does not by its terms applies. A broader implication of overturning well established Supreme Court precedent to the contrary cannot be proper.

              Westinghouse was overruled. It was not restored. It is gone.

              Claims functional at the point of novelty are invalid.

            3. Ned asks the wrong question: “Who is right? Rich, or the Supreme Court?

              Congress is right. Congress rewrote the law back in 1952 that stripped the Court of its power to define invention. It was Congress – not Rich. You need to accept that as a basic fact.

              Perhaps you meant to ask a different question, Ned. Perhaps you meant to ask who better understood what the intent of Congress was when they wrote the 1952 Act?

              We both know that the proper answer to that question is easily Judge Rich.

              That was why he was able to dispose of the rants of dicta in Benson with ZERO fear of any type of reprimand from the Court.

              I have no real clue why you despise the person in the judiciary that was most knowledgeable on patent law in with as much venom as you do.

            4. anon, why will you not answer the very simple question of whether congress “abrogated” every other case that relied on the functional at the point of novelty analysis to hold claims indefinite when it “abrogated” Halliburton?

              I think this is fair question, a question you will not answer for some reason.

            5. I think this is fair question, a question you will not answer for some reason.

              Asked and answered already Ned – see above and here too for your convenience: PON is a canard. It has been since 1952.

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