Court: Claim Term Lacks Definiteness but is not Legally Indefinite

Every Penny Counts v. Wells Fargo Bank, 2014 U.S. Dist. LEXIS 28106 (M.D. Fl. 2014).

In a ruling this week, Judge Merryday rejected Wells Fargo’s indefiniteness argument made in a pre-trial summary judgment motion. Like claim construction, indefiniteness is seen as a question of law that can be resolved by a district court judge. In fact, the Federal Circuit has written that “Indefiniteness is a matter of claim construction, and the same principles that generally govern claim construction are applicable to determining whether allegedly indefinite claim language is subject to construction.” Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008).

EPC’s invention is software for rounding-up credit and debit transactions to the nearest dollar and then putting the extra money to a special use. See U.S. Patent 8,025,217. Claim 1 of the ‘217 patent is listed as follows:

1. A system for accumulating credits from a customer account belonging to the customer and managed by an institution and placing the credits into a provider account, comprising:

an information processor; said information processor including a data store with data identifying the customer, the rounding determinant, the managed institution, and the account;

said data store including machine readable instructions authorizing the processor to access and read the customer account;

said data store including machine readable instructions to calculate rounders after receiving a plurality of payment transactions from the read customer account and to calculate an excess based on the rounders;

said data store including machine readable instructions to withdraw the excess from the customer account;

said data store including machine readable instructions to transfer the withdrawn excess to the provider account.

The indefiniteness issue with the claim is that the claim introduces two types of accounts – a customer account and a provider account – and then refers to “the account” without identifying which of the two accounts are being referenced. Wells Fargo argues that there are “at least four equally plausible interpretations” of “the account” – it could be the customer account, the provider account, both accounts, or some other account. Adding to the difficulty of interpreting the term, Wells Fargo highlights the fact that the patent itself is riddled with seeming typographical errors that make interpretation difficult. The court writes:

The patent is infested with scrivener’s (and other) errors, and the prospect of a missing “s” fits comfortably within the patterns discernible in the patent. For example, the patent states, “The actual transfer . . . concludes with the [transfer of] funds to each listed PC (provider account) . . . .” “PC” is used nowhere else in the patent, and the patent later clarifies that “PA” is the intended acronym for “provider account(s).” But even the creation of the correct acronym, “PA,” is tardy – by the time the patent defines the acronym, the patent has already deployed either “provider account” or “provider accounts” four times and “PA” twelve times. And after the “PA” acronym is created, the patent no longer uses the acronym but uses “provider accounts.” In other examples of error, the patent bungles nearly every acronym, conflates “i.e.” and “e.g.,” and writes “invention invention,” “FIG. 7A” (not “FIG. 7″ – no figure 7A exists), “FIG. 4B” (although Figure 4B exists, “FIG. 4C” is intended), step “8120” (not”120″), “2 $300.14″ (not “$300.14″), “pa id” (not “paid”), “saving s,” and “piece s.” These errors – which say nothing of the drafter’s grammatical and syntactical incompetence and bemusing judgment – confirm that “account” lacking an “s” by mistake accords with the level of compositional adroitness and dexterity that pervades the patent.

In sum, as used in claims 1 and 2, the phrase “the account” lacks definiteness. “[T]he account” might mean “the customer account,” “the provider account,” or otherwise; no informed and confident choice is available among the contending definitions.

Now, here’s the trick – after finding that the phrase lacks definiteness, the court next went on to hold that the phrase is not legally indefinite. Rather, there exist a spectrum of definiteness levels, and the forfeiture of patent rights due to indefiniteness (currently) requires extreme indefiniteness. Thus, a claim term that is only somewhat indefinite will not render its respective claim invalid as indefinite. And, because of the conceptual separation of most patentability doctrines, the lack of definiteness shown here will have no other adverse impact on the patent.

In particular, a claim term is only found indefinite if clear and convincing evidence sufficient to overcome the statutory presumption of validity proves that the claim is “insolubly ambiguous” and “not amenable to claim construction.” Taking that standard, the court could only find the claim sufficiently definite:

Although the entire patent is awkwardly drafted, the oppugned claim is simple. The specification is simple. The drawings are simple. The patent as a whole, notwithstanding the deficiencies, seems understandable; the claim seems understandable. In short, the indefiniteness of the term “the account” leaves no unmanageable gap in the information available for determining the scope of the claim. No practical incapacity or disabling uncertainty appears as a consequence of the fact that “the account” might mean one thing or the other. In sum, the extent of the indefiniteness in the term “the account” is inconsequential and falls far short of the “insoluble ambiguity” required to invalidate the claim.

Holding: Claim not invalid as indefinite.

This case tightly linked to the outcome in Nautilus. If the court changes the standard for determining indefiniteness there then we’ll likely see a modified holding here as well.

[Updated on 3/8/14 with updated information that opinion was written by Judge Merryday not Magistrate Judge McCoun. Via W.Pollack]

 

344 thoughts on “Court: Claim Term Lacks Definiteness but is not Legally Indefinite

  1. This decision reminds me of a case I had where a respected federal judge wrote (paraphrasing) “if ever there was a case deserving of rule 11 sanctions, this is it; sanctions denied.”

    I thought the requirements of Section 112 were pretty clear. Why do courts bend over backwards to preserve patentability, especially in a situation where the notice function of the patent and the claims are defeated? The presumption of validity is merely a presumption and should be cast aside where, as in the subject case, the patentee and his counsel had more than a fair opportunity to get it right.

    It also seems that the Patent Office is abrogating its responsibility to examine a patent application and substituting a cursory review. This also undermines the supposed presumption.

    Shouldn’t practitioners be supporting high and clear standards?

    1. The claim included a typo. Only the attorney of an infringer, or someone from the anti-patent faction, would play so dumb as to be confused by it.

    2. “Shouldn’t practitioners be supporting high and clear standards?”

      They would except these days they don’t care about the patent system for the most part, they’re all about their own self-interest. Their self-interest is bolstered by the current tomscheme.

      1. 6 stumbles with “ except these days… they’re all about their own self-interest.

        I suggest you catch up with some good old Adam Smith.

  2. “which say nothing of the drafter’s grammatical and syntactical incompetence and bemusing judgment”

    Was it really necessary to say that Judge Merryday?

    1. It would be trivial to sharpshoot something Merryday has written. In fact, the very sentence you quote. That kind of gratuitous acerbity in a public court opinion is a prime example of “bemusing judgment”, to say the least.

    2. I wonder if Judge Merryday could write a patent application in the few hours we have to write a patent application.

      My guess is that these judges cannot even understand patent applications and would have no hope of drafting claims.

      (Of course, MM is a master claims drafter for all that has been. MM the ghost of inventions past.)

  3. So I’m late to the commentary on this, but a search for the word Superman returns no hits?

    Please don’t tell me I’m the first to point out this was done in Superman III, then referenced in OfficeSpace?

    Question – if merely mentioning functionality enables and describes it, why is Superman III not prior art? After all, it’s “clerical” to transform his statement of functionality into the actual function, right?

    Remember – DO NOT fill in holes in compound analysis with “tar.” It makes Superman all beardy.

    1. Random, you simply have to check out Max’s post at 16. Apparently, Europe has an article that forbids distinguishing claimed subject matter by its function, and I presume that would include properties.

    2. Question – if merely mentioning functionality enables and describes it, why is Superman III not prior art?

      A question that shows that Random is a novice examiner in this art field.

      (hint: the Star Trek replicator eviscerates ALL chem, biochem – H3LL, all manufactures from patent law).

      1. “(hint: the Star Trek replicator eviscerates ALL chem, biochem – H3LL, all manufactures from patent law)”

        Distinguish science fiction from patentable fact based on the interpretation that some on this board have that mentioning the functional result satisfies 112, 1st. I’m timing you. And…go.

          1. “Science fiction is make-believe.”

            So is getting a patent for claiming a functional result. That was easy.

            The fact is for those who believe that 112, 1st is met by mentioning the functional result, there is no means by which one can differentiate science fiction from an actual work meant to be dedicated to the public.

            Star Trek replicators may be science fiction, but star trek chairs are science fact. Describe them both by their respective functions, and there’s no means to tell which structures exist and which are fantasy.

            That happens to be the problem with functional claiming in general, but for the moment I confine my argument to those who think description of the result satisfies 112.

            1. Nice strawman – tell me the difference between “functional result” and using functional language as part of a claim description.

              And yes, you still do not need actual code in a software patent application.

            2. “Nice strawman – tell me the difference between “functional result” and using functional language as part of a claim description.

              And yes, you still do not need actual code in a software patent application.”

              A claim to a functional result is a claim to any means that achieves the end, which is what software people always try to encompass. They have one particular way of doing something (I didn’t mention code, but whether you want to call it code or algorithm it doesn’t matter here, the point is they have one structure) and yet they seek to claim every way of doing it.

              Using functional language is sometimes proper as sometimes it only refers to well-known things in shorthand. One could conceivably list all of the known materials which float in water and it would be perfectly valid. Using functional language as a shorthand to avoid having to write out hundreds of pages of lists is perfectly acceptable, because all it is is describing old structures. Reference to old structures in shorthand fashion is completely different to failing to disclose a new structure by only claiming it by it’s functional result.

              As I’ve said before, I can kill cancer cells by shooting the host. That achieves the function of killing cancer. But it makes no sense to give me a patent for the function of killing cancer simply because I’ve found one means for doing it. Maybe, just maybe, my patent should be limited to the actual steps I take (which involve shooting a gun) rather than to the functional result (which is the only thing of commercial value, and is being improperly claimed).

              For all we know (since they rarely disclose their particular means) the software inventor is doing the equivilent of shooting a gun at the host. In fact, there is probably a substantially better way of achieving the function (as it’s unlikely the applicant actually used the best possible means) but the applicant seeks to claim it as his own despite him not having it.

            3. Using functional language as a shorthand to avoid having to write out hundreds of pages of lists is perfectly acceptable

              LOL – You mean exactly like I showed you in our earlier conversation about the number of different software languages?

              I see that you still struggle with understanding the true meaning of ladders of abstraction.

            4. “Star Trek replicators may be science fiction”

              Maybe you old people haven’t heard, the “replicators” are just what we now call “3d printers”. Same as “communicators” now being called “cell phones”. Anon has a really hard time understanding that the “replicator” is nothing more than a magic box, we already have real life “replicators” called 3d printers and they don’t “eviscerates ALL chem, biochem” etc. etc.

              He’s just too dmb to understand this.

            5. Merely mentioning functionality can satisfy 112because when software designers communicate with their minions (the ones that actually write the code), the software designers merely describe the functionality and the minions (ones of ordinary skill in the art) are able to make and use the product (or invention) from that, without undue experimentation.

            6. “Merely mentioning functionality can satisfy 112because when software designers communicate with their minions (the ones that actually write the code), the software designers merely describe the functionality and the minions (ones of ordinary skill in the art) are able to make and use the product (or invention) from that, without undue experimentation.”

              Tour was just saying that you people are strawmen further down.

              That is simply not true. It is insufficient to merely state the functional result and claim you have enabled the functionality.

              What actually happens is the boss states the functional result and then pays for hundreds or thousands of man-hours which produce one working result. But the claim does not go to one result, it goes to all results.

              What is the monetary and time requirement that would need to be invested in order to properly execute all means of achieving a functionality? Is that undue?

              Your statement isn’t true in fact, and more importantly, is insufficient as a matter of law.

            7. ““Using functional language as a shorthand to avoid having to write out hundreds of pages of lists is perfectly acceptable”

              LOL – You mean exactly like I showed you in our earlier conversation about the number of different software languages?”

              Don’t take my statement out of context. The allowable usage of functional language is to describe known structures by their inherent properties. When the functional language is directed toward new code there are no known structures and no inherency.

              If you admit your function is within the prior art, I’ll stand down on 112, 1st. Of course, since your processor is within the prior art as well you’ve tailor-made a 103 for me.

            8. RandomExaminer,

              Clearly, you do not get 103 either.

              Chew on this: electrons, protons and neutrons are old in the art (very very very very old); all elements are old in the art (we will exclude any potential not yet created maxi-ones for argument’s sake); all ways of joining any components of electrons, protons, neutrons, elements are old in the art. ANY combination, manufacture (by your logic) is then de facto obvious.

            9. The allowable usage of functional language is to describe known structures by their inherent properties.

              RandomExaminer – the allowable usage of functional language is more than that.

              As I have pointed out to you, you rely on abrogated case law. The 1952 Act changed the allowability of using functional language.

              Period.

              Point of Novelty is a canard.

              You keep on building a strawman that any other view is tantamount to a violation of 112(a) or 112(b). Such is simply not the case. 112(f) uses a permissive “may,” fully indicating that such a tactic is but one manner of using functional language, but clearly, not the only manner. If it were the only manner, different language would have been used (the non-permissive “must”). Your discussion of this difference elsewhere is pure legal error, betraying your examiner-style misunderstanding.

              You assume the conclusion you want in error because you are not using the law as written in 1952.

              You may not like that, but that is the law. Feel free to contact your Congressman.

            10. “The fact is for those who believe that 112, 1st is met by mentioning the functional result, there is no means by which one can differentiate science fiction from an actual work meant to be dedicated to the public.”

              Sure there is. The science fiction doesn’t exist and it isn’t useful. Therefore, it isn’t patentable.

              If someone pulls a fast one and gets a patent on something that doesn’t exist, what is the harm? Are you upset that you can’t make, use or import something that doesn’t exist without paying a royalty?

          2. “What actually happens is the boss states the functional result and then pays for hundreds or thousands of man-hours which produce one working result. But the claim does not go to one result, it goes to all results.

            What is the monetary and time requirement that would need to be invested in order to properly execute all means of achieving a functionality? Is that undue?

            Your statement isn’t true in fact, and more importantly, is insufficient as a matter of law.”

            Even if that were true. It doesn’t amount to undue experimentation. Its just typical product development given the big picture description of the inventive combination of functions.

            My statement IS true. And just as importantly, describing the various functions is sufficient as a matter of law.

            If I were claiming a transmission, I would describe the various gears by type and placement and relationship to other gears and clutches and indicate their various functions.

            I wouldn’t have to explain how to mine iron ore, make steal, and machine plates.

            1. While Les sometimes drives erratically, his point here is germane: claims are to be read by the KSR-super-powered PHOSITA – and applications are to be understood by the same and need NOT be detailed down to the nubs and facets of how software inventions change the physical structure of silicon/electron gates.

            2. “Even if that were true. It doesn’t amount to undue experimentation. Its just typical product development given the big picture description of the inventive combination of functions.”

              What’s funny is that this is reminiscent of arguments no doubt made by people in bio when the patent hammer was coming down on their art back 30-40 some years ago.

    3. Question – if merely mentioning functionality enables and describes it, why is Superman III not prior art? After all, it’s “clerical” to transform his statement of functionality into the actual function, right?

      All that prior art is irrelevant science fiction until Prawn M0r0nville writes it up in a patent application. Then we all need to bend over and pay him because his patent is The Most Important Thing Ever for the US economy. Do you want to go back to the stone age?

      Besides, I have a box of programmable protons which devastates your position, which is just your policy agenda and not actual law.

      Also, the Founders built this city on rock and roll.

      And please keep your government out of my entitlement program! It’s private property.

      /patent txxbxggers off

      1. LOL – a great collection of misinformation and spin from Malcolm.

        While attempting to be humorous at the expense of others, Malcolm’s lack of touch with reality for any of the points that he attempts to ridicule make him the f00l.

        1. Out of idle curiosity anon – why do you bother with responding to that mephitic recreant whose gratuitously bilious ridicule would make the odious Alinsky blush? You seem to be fully aware that he is (1) uneducable; (2) shameless; and (3) contemptible. Just curious. Is it a quasi-religious thing, you know, a perceived burden to aid victims of hideous intellectual leprosy or something? Because if so, I might remind you of certain apropos phrases, “casting pearls before swine” and such.

          For whatever reason you keep trying, you’re a better man than I am Gunga Din.

          1. Thanks Tourbillion – I chuckled at your post, but you should note the following:

            (1) uneducable – not really – the fun thing to do is to nail him to the wall with his lack of substantive posts on point, and then when he tries to talk about the merits, he volunteers admissions against his interests that make him look even more f00lish and intellectually dishonest.

            (2) shameless – that he is. Note on this thread how he dares play a race and sex card even though history shows the exact opposite effect. Of course, this has the same result of (1) above in showing how depraved he is. That he still tries to champion a certain agenda in his depravity actively works against that agenda. If he ever got wise to the damage he does and went quiet, the chances of his agenda actually working would skyrocket. My providing him the chance to ‘shine’ in all his in-glory is one of the best pro-patent moves around.

            (3) contemptible – See (2) above.

            It is Malcolm who is making the mistake of whom enjoys playing in the mud (as it is immensely fun to get the best of him so often). He is the Fox News poster child of how not to behave on a blog.

    4. I’m not sure if you attacked the keyboard after commencement of happy hour (not that there’s anything wrong with that), although your post is no less rambling and unintelligible than many office actions. But seizing on the one comprehensible phrase it contains, I do not believe that anyone ever advanced the proposition that merely “mentioning functionality enables and describes it”, except perhaps a buffoon or two trying to erect a ridiculously ineffective straw man.

      Incidentally, a “hammer” refers to familiar structure entirely in terms of its functionality. Its structure is not a “hammer” – its function is TO hammer. Its structure is an elongated handle with a typically metal mass (not always – rubber mallets, Random) at one end, also often (not always – mallets again, Random) elongated transversely to the handle, with a typically (not always – ball peens, Random) flat disk-shaped end and opposed elongated diverging prongs extending away therefrom. But since the term “hammer” existed at the dawn of the Industrial Revolution, the age still comfortably occupied by the understanding of many posters on this site, it’s a dandy of an uncontroversial term.

        1. I’ll simply observe that just as the Royal Navy has a daily rum ration which must not be exceeded, so has Providence a lifetime screwdriver ration. Which some exhaust sooner and others later.

      1. “Incidentally, a “hammer” refers to familiar structure entirely in terms of its functionality. Its structure is not a “hammer” – its function is TO hammer. Its structure is an elongated handle with a typically metal mass (not always – rubber mallets, Random) at one end, also often (not always – mallets again, Random) elongated transversely to the handle, with a typically (not always – ball peens, Random) flat disk-shaped end and opposed elongated diverging prongs extending away therefrom. But since the term “hammer” existed at the dawn of the Industrial Revolution, the age still comfortably occupied by the understanding of many posters on this site, it’s a dandy of an uncontroversial term.”

        This is, again, a backwards way of looking at it, as nobody ever tried to patent all “hammer”s nor the act of “hammering”, nor does anybody suggest that the structure you described is the only structure that could achieve the act of hammering. Instead what you have is a set of known structures which perform (but do not fill the field of) a common function. Clearly you can reference the standard structure, and clearly you can reference a group of known structures which inherently perform the act, as both of these statements are simply means of talking about what are structures which are admittedly within the prior art.

        Compare that with, for example, Morse’s machine, which performed the function of typing letters at a distance, and which was claimed, in one claim, as such. The court correctly found that the language was drawn not to a set structure, but to all structures (known and unknown) that achieved the function. The court then used language which, if drawn to today’s statutory scheme, would sound in 101, 112, 1st and 112, 2nd. This is because a claim to a function (even if you nominally claim it to be embodied in a machine, as Morse did) is a claim to a non-statutory thing, the description by the inventor only discloses the means the inventor knows (while the field is substantially larger than what the inventor knows) and the scope is indefinite because what the inventor has actually created is one structure, yet he’s seeking to claim an unknown number of other structures.

        The software field today is replete with Morse-copycats. People who invent one means of achieving the function but refuse to claim their single means, instead attempting the claim the function for themselves. A claim to a novel computer functionality is no different than a claim to Morse’s function, and it would be no different than a naked claim to the function of hammering. It is no more likely that one person invented all the computer algorithms which achieve a function than it is that one person invented every structure which could be used to hammer. Thus the patent must be limited to HIS algorithm or HIS hammer, which is, after all, the sum of what he invented.

        Please discontinue working backward, as it is a logical fallacy. Describing a novel structure by the function it performs is not the same thing (nor is it logically equivalent) as describing a function by common structures that cause it. In the latter case, the structures are known and the causal link is within the prior art – the reference is clearly drawn only to old things. In the former case, the structure is unknown (as the inventor is the only one who knows it and is not disclosing it) and the causal link is tenuous as there are any number of possible structures which could result in the same functionality.

        1. I should point out that the above argument is of general applicability. My original statement was a joke about the position held by NWPA, who has argued that:

          1) Stating a functional result describes the structure of the function
          2) Describing a function inherently enables the function and thus
          3) Mentioning what you want to achieve is sufficient to overcome 112, 1st.

          This is, of course, ridiculous, because it would do exactly what my joke suggested: It would allow a science fiction writer to become an inventor simply by dreaming up the function he wants his machine to do and then stating that he has a machine which does it. Stating the function you want to occur is insufficient as a matter of law for a novel function. I can understand how you may consider it a straw man, Tour, as it is indeed ridiculous. Unfortunately, the standard of a strawman is not how crazy it is, but whether it has been advanced as an argument.

          That being said, regardless of NWPA’s argument, there exist a large number of applications that in fact simultaneously argue that Function F is novel and whose specifications simply state that their machine “can do function F” or “performs function F”.

          1. Gee, Random, thanks for setting up a nice straw man to burn down for me. I hope you painted my face on it so that you got some real pleasure.

            Let’s get to real things: a real product. I write patent applications for real products. I write functional claims. They are enabled by the specification. Some of the inventors are people with Ph.D.’s from top engineering schools. We understand what is enabled. We understand what embodiments are covered by the functional language.

            You guys are shameless. You write abstract nonsense to the ignorant masses and don’t address any real issues in patent law. Such as: here are about 1000 ways we can see how to implement the invention. How does one cover those enabled embodiments with claims that aren’t functional–you cannot.

            Your nonsense and Lemley’s filth have nothing to do with real patent law.

            1. “Let’s get to real things: a real product. I write patent applications for real products.”

              Good so far.

              “I write functional claims.”

              Less so.

              “They are enabled by the specification.”

              Conclusory.

              “Some of the inventors are people with Ph.D.’s from top engineering schools. We understand what is enabled. We understand what embodiments are covered by the functional language.”

              Understanding what embodiments are covered by the functional language is one component of indefiniteness. I notice you don’t mention written description at all, as what you’re required to do is describe YOUR invention. Your Ph.D.’s simply aren’t in possession of all the algorithms that do something. You’re in possession of one algorithm that does something, and you’re trying to get more than that.

              “You guys are shameless. You write abstract nonsense to the ignorant masses and don’t address any real issues in patent law. Such as: here are about 1000 ways we can see how to implement the invention. How does one cover those enabled embodiments with claims that aren’t functional–you cannot.”

              The Supreme Court has rejected the “but maaaa it’s really really hard” argument. Similarly, the united states doesn’t owe you a commercially valuable patent, just a patent. If you do something one way in a medium that allows for 1000 ways, you’re going to get designed around. Tough nails. In fact, when there’s 1000 ways of doing it, you might consider that you’re wasting the Ph.D.’s time. When you actually file a claim discussing your novel algorithm solely by it’s functional result, now I know you’re wasting your client’s time.

              “Your nonsense and Lemley’s filth have nothing to do with real patent law.”

              Patent law protects inventions. It doesn’t allow you to try and create monopolies in a field. It specifically is against that. You’re not trying to prevent competition via your means, you’re trying to prevention competition over your end. You’re misunderstanding patent law, which is unfortunate, given your career choice.

              “And, why do people keep mentioning my name on this blog? Go and make your own arguments and stop building little straw men made from strands of my arguments you have patched together with your psychotic under-powered minds.”

              You mean the exact same argument you just made wholesale in a single paragraph one post above? Stop making terrible arguments and you’ll stop getting called out on them.

          2. And, why do people keep mentioning my name on this blog? Go and make your own arguments and stop building little straw men made from strands of my arguments you have patched together with your psychotic under-powered minds.

          3. Random, good series of posts. Again, I must applaud you. Thanks for helping out, as functional claiming has long been a bug-a-boo of mine.

            I think the problem all along is that the CCPA (Rich) was hostile to the point of novelty analysis. Thus they pulled language from Wabash direct to old, well known structures, and applied it to novel structures.

            It has taken a very long time for the Supreme Court to take the errant lower court to task. But, only the Amazon brief really lays the case out. None of the “no party” brief even has a clue – never mentioning that Nautilus claims were functional at the point of novelty.

            1. Ned,

              You are doing that “Gee the examiner is an Einstein because he also believes in my agenda” thing again.

              Stop your mischaracterizations of law – the 1952 Act – and your micharacterizations of different entities (Federal Circuit) later changing the law. Your anti-Rich penchant is as well known as it is misplaced. You really do need to realize how much was changed by Congress in 1952. You really do need to recognize the judicial activism for what it is – regardless of alignment with your Crusades. As we have discussed, this inconsistency of yours leads to you picking and choosing legal positions, parsing (incorrectly) any judicial interpretations, and greatly affects the credibility of your positions across the board.

            2. “You really do need to realize how much was changed by Congress in 1952″

              Anon we’re all open to “realizing” how much was changed by congress in 1952. We simply see nothing about it in the congressional record, or, even moreso, nothing in the statutory changes themselves. We ask you, time and again, where we are to find such and you’re just go silent. You just sit and pound your same old boring drumbeat boring us all to death. Seriously, we’re open to “understanding” or “realizing”. We just don’t see, based solely on what has been put forth already, a solid footing for making such a “realization”.

              Sorry, we just don’t. We’re totally open to such.

              But you’re not going to persuade anyone by being boring or repetitive. So just spare us, please.

            3. LOL – ever wrong again 6.

              I have indicated in the case law where the congressional record is referenced and the specific text of the statute being permissive (not mandatory) in one way (not the only way) of using functional language.

              Pull your head out of the sand, 6 – your belief system is getting in your way.

            4. “I have indicated in the case law where the congressional record is referenced and the specific text of the statute being permissive (not mandatory) in one way (not the only way) of using functional language.”

              First I’d like to note that you are in fact relying on a decision, and its quoting of some unrelated parts of congressional record and some unrelated permissivity of a statute that doesn’t even apply to the situation. Notably you are not referencing the actual explicit language regarding this type of claiming under instant discussion. Which is what we note time and again, and which you’re too dmb to just cop to and say “sure thing, but but but, I have a decision here that says that the CCPA decided that’s what the congressional record and permissive language meant”.

              And we disagree with that particular judge or panel of judges in that particular case. What of it? We can feel free to disagree with their reading of the law. And we can feel free to discuss that on the interbuts. What is your problem with us doing that?

              Hmmm? What’s your problem with our doing that? Don’t want it changed or what? Because we have a case pending now were that issue is coming right straight up to the fore. You ready for ol judge Rich’s words to mean jack squat here shortly?

            5. First I’d like to note that you are in fact relying on a decision

              No 6, I am relying on a case that directs you to the congressional record.

              Pay attention.

              Notably you are not referencing the actual explicit language regarding this type of claiming under instant discussion

              No 6, also wrong – I do talk about the explicit language in the statute – see my notes regarding the permissive ‘may’ language as opposed to your view that would require a mandatory ‘must’ language. You really should pay attention to why that difference is important.

              we disagree… what of it

              LOL – you can always disagree – you would be wrong, but hey, you are free to be wrong (and almost always are).

              So go ahead 6 and proudly proclaim just how wrong you are. Never mind that impending cliff, stay in lockstep with your fellow lemmings.

        2. “Please discontinue working backward, as it is a logical fallacy.”

          I expect that to be in a memo tomorrow to the examining corps of the U.S. Patent & Trademark Office.

          Get cracking.

          1. Re your strawman comment: See this thread at 17.2.1.1.1.5.

            “I expect that to be in a memo tomorrow to the examining corps of the U.S. Patent & Trademark Office.

            Get cracking.”

            I have yet to see a specification (and arguments of counsel do not replace facts) that provides facts that show why the action being taken by the applicant is outside very straightforward application of logic open to anyone of skill in the art.

            Applying very obvious solution X to well-known problem Y doth not a hindsight analysis make.

      2. Tour, Wabash Appliance recognized that functional language, e.g., descriptive nouns and adjectives, and equivalent functional terms, are quite permissible if, to one of ordinary skill, they defined known structure.

        Now, just what have I been saying, ad nauseum, and for a very long time now. There is no vice in using functional language for old and well know structures. The SC recognizes this.

        Where the train went off the rails for the CCPA/Fed. Cir. was in Swinehart, where the CCPA took this line from Wabash Appliance and used it to justify a functional definition at the exact point of novelty.

        1. descriptive nouns“…

          Watch as the goalposts start to move…

          And yes, Ned, your error in trying to lay blame on the Federal Circuit has been repeated ad nauseum. Your repetition will not make your error go away – no matter how many times you make that error.

          PON is a canard.

    5. Merely mentioning functionality enables and describes an invention in the world of methods implemented by software because when software designers communicate with their minions (the ones actually write the code), the software designers merely describe the functionality and the minions (ones of ordinary skill in the art) are able to make and use the product (or invention) from that without undue experimentation.

      1. “No one says that “merely mentioning” functionality “enables it.”

        Why do you spout such garbage?”

        This was said at 17.6. You should check 17.5.

      2. *No one says that “merely mentioning” functionality “enables it.”*

        Except the Federal Circuit.

        “As a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software.   This is because, normally, writing code for such software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed.”

        Judge Lourie
        Fonar Corp. v. General Electric Co., (Fed. Cir. 1997)

  4. At 14.2.3.1.1 above, Ned Heller writes:

    1. A chocolate-coated finger biscuit wherein the chocolate is characterized such that it does not adhere to a finger at body temperature.

    The specification discloses one chocolate formula, but only one formula, for achieving the claimed functionality. Obviously the claim covers all chocolate formulations. There is a discrepancy between the scope of the claim and the scope of disclosure. The Federal Circuit might hold the claim non-enabled, but would not hold it indefinite. In contrast, controlling Supreme Court authority would hold the claim indefinite because it described the composition not in terms of what it is but in terms of what it does.

    How do you handle this in Europe?

    Here’s the answer:

    The claim is not allowable, for a number of reasons. I would include amongst them:

    1. Not clear (Art 84, EPC). First, definition by function not acceptable unless there is no other way. see the EPO’s MPEP. Here, there is another way. Simply recite in the claim the choc compn that works. Second, what does “adhere” mean? Under what test conditions do we determine whether or not the chocolate adheres? Not in the claim? Claim not clear.

    2. Not novel. Conventional chocolate doresn’t adhere either (at least if you can specify the test conditions to favour non-adherence).

    3. Not inventive. Simply reciting in the claim the problem to be solved is not enough (except when the invention lay in perceiving the problem). Here, the problem (adherence) is not only known but notoriously known.

    But Ned, the EPO would likely allow that the claimed subject matter is sufficiently disclosed, and enabled.

    Suppose nevertheless it issues. Hard, I know, but just suppose.

    Want of clarity is not a ground of opposition. It would be hard to persuade the EPO to revoke for insufficiency. What’s left? Novelty and obviousness. Both a shoo-in I would say at any EPO Board of Appeal these days. Depending what prior art is available, the patente would limit down to the disclosed composition and, with that limitation, the patent would likely be maintained.

    Is that a win for the patent owner or for the opponent? You tell me!

    1. Max, 1. Not clear (Art 84, EPC). First, definition by function not acceptable unless there is no other way. see the EPO’s MPEP.

      Gott in Himmel! Finally! Finally we began to understand why functional claiming does not and cannot exist in Europe. It is verboten.

      Once, we had such rule in the United States. It appears to have been overruled by combination of In re Swinehart and In re Donaldson. Take a look at In re Arbeit, one of the cases that was overruled. Application of Arbeit, 206 F.2d 947, 99 U.S.P.Q. 123 (C.C.P.A. 1953). This case flatly refused to distinguish apparatus or compositions by their properties of functions.

      1. It appears to have been overruled by combination of In re Swinehart and In re Donaldson.

        (sigh) – Once again Ned – no it was overruled by Congress in the 1952 Act.

      2. link to documents.epo.org

        Ned go to para 4.10 claiming by “result to be achieved”. That is what I am alluding to, by “functional”. This is different from including in the Claim something “functional” like, say, “means for cutting”.

        1. Max, may I quote from the referenced 6.5:

          “A claim may broadly define a feature in terms of its function, i.e. as a
          functional feature, even where only one example of the feature has been given in the description, if the skilled reader would appreciate that other means could be used for the same function (see also F-IV, 2.1 and 4.10). For example, “terminal position detecting means” in a claim might be supported by a single example comprising a limit switch, it being evident to the skilled person that e.g. a photoelectric ell or a strain gauge could be used instead.”

          You may have notice that claiming “old elements” was and still is quite permissible using functional language. It is quite apparent that this is exactly what is intended by the 6.5, otherwise the alternative known to the skilled reader would make no sense.

          The novelty cannot exist solely in the functional element though, as by definition the functional element must have known equivalents.

          This whole conversation is about functionality at the exact point of novelty, where the applicant distinguishes the prior art based upon the function. Necessarily, the structure or the composition of matter that causes the novel function or property is the invention. The Supreme Court required this to be in the claim.

          The Federal Circuit (CCPA)? It overruled cases that actually required such. See, In re Donaldson and Application of Swinehart.

          Now, just how they could do that is a wonder. And that arrogance has now been brought to the attention of big brother in Nautilus.

          1. That’s all fine, Ned, except I don’t know how you come to the idea that para 6.5 is “the referenced” paragraph.

            The paragraph in the EPO Guidelines to which I invited attention was the 4.10 para (F.IV.4.10) which I think you will find is on point, namely, claims where the point of novelty is recited as a result to be achieved.

            As you might well imagine, the Framers (of the Guidelines, that is) were wise men who contemplated all that had gone before, and then tried to build on it, taking that which was good and making full use of it, but setting aside that which was not good enough for inclusion. For example, first Edition of the Guidelines used the gloriously named 100 year old English case of No-Fume v. Frank Pitchford, a case about an ash tray. The point of novelty was that the tray had a lid and the characterizing part of the claim was written functionally, to the effect that the smoke from the burning cigarette end was confined beneath the lid. The claim in issue was found valid. Note that a claim to a result to be achieved is NOT categorically excluded by the Guidelines, even today.

            Does anybody else remember ash trays topped by a plunger. One stubs the cigarette out on a platform, then depresses the plunger to spin the cigarette end into the cavity below the platform. On release of the plunger, the platform closes back over the cigarette end in the cavity below. I think those devices were commercially quite successful, in the days when we used to buy smokers’ requisites as birthday presents!

            1. Ned,

              For shame (insert sarcasm here), it is obvious that para 6.5 is different than para 4.10, as it even says so.

              The actual difference is, um, “clear.”

              as precise as the invention allows” – this too is “clear.”

              Clearly.

            2. MaxDrei,

              Isn’t the meaning of “The area defined by the claims” taken to be the area defined by the claim as a whole?

              Not only does 4.5.3 seems to suggest this, but that section of the guidance also seems to place structure and functional descriptions on equal footing.

              But I do permit that I may be misunderstanding this and I am open to learning.

            3. Max, I read 4.10. It broadly forbids functional claiming the novelty (the invention) as stated in your post. It excepts necessity.

              You did state that one can claim using MPF or functional claims. I found that in 6.5. That clause can only be read to allow such claim elements with known variants — which is precisely how they were authorized in the US prior to Rich and his merry crew rammed 112(f) down our throats.

              Comparing the two clauses together — one cannot claim the novelty, the invention, functionally. Elements maybe expressed functional, provided there are KNOWN variants (the invention can hardly be found in a MPF element).

              If you did not appreciate that this is what these clauses actually say, I would recommend that you think about them for a bit. They are in large measure in accord with US law prior to Rich.

            4. Ned errs with the wishful thinking of a man possessed and wearing blinders – unwilling to see anything except what he wants to see with “That clause can only be read

              Sorry Ned – as that is simply not so. See 4.5.3. Note the claim as a whole parallel (which eliminates the canard of PON). Note the absence of the “Means” or “Step” mandatory type of direction.

              Note that you continue to run away from the valid points I present. Tell me Ned, why is 112(f) NOT written in the words of Congress in mandatory terms?

              Stop running away.

      1. Test conditions (say): Select from the range of conventional chocolate coating recipes, for minimum adherence to body temperature skin. Take thus coated chocolate finger out of the refrigerator, dot it down fleetingly on the body temperature finger, then inspect finger with the naked eye, for chocolate residues. If there are none, the chocolate has not “adhered” to the finger. ergo, claim not novel.

        1. Test conditions lack clarity for at least he following:

          range
          conventional
          minimum
          body temperature
          coated
          fleetingly
          inspect
          residues
          none

          1. …and anon, your point is?

            Are you saying that Ned is entitled to issue of his filthy claim, that gives 20 years of exclusivity to more or less all chocolate-coated finger biscuits, merely because you find room to assert that my test conditions are not clear? Is that it?

            The statutory duty of Examiners at the EPO is to object, object, object, until satisfied that the application meets all requirements of the EPC. These requirements include clarity and novelty. Nothing unclear or of doubtful novelty shall get through to issue. Never mind my test. Ned’s claim it is, that is not clear and not yet shown to be novel.

            1. It is clear what I am saying: you lack clarity.

              I am saying nothing as to what Ned is entitled to. Why would you think that? It is abundantly clear that nothing in my post would indicate that position.

              I pick on your words to stress the point that your proselytizing of EP wonderfulness is misplaced and overblown. I pick on the words of your test because you want things to be so easy and clear when they are not. Language is messy – no matter if that language is in the EP or the US or someplace else.

  5. It is good that you-all discuss the lofty ideas of statutory matter. I agree that many “computer” (I’ll call them) inventions are very worthy of patenting; perhaps even biz methods. However, this particular patent seems to be about rounding numbers and sticking the remainder somewhere. I would think this could easily be found to be un-patentable based on obviousness.

    1. Non-US practitioner,

      Please excuse us and our “lofty ideas” as we discuss foundational aspects of law.

      Yes, to some of us, this discussion supersedes the individual example of a single patent. But you should realize that the discussion of law must come first. Then when you understand that and understand the foundations built by our Founding Fathers you can easily recognize the tomfoolery and vapid ‘policy’ agendas in play.

      If you do not know better than to accept large wooden horses as gifts, your protective city walls will be for nothing.

      1. Anon: Thanks for your patronizing lecture/sermon. At least the non-US commenters agree that “definite’ is not clear.

        1. And thank you for the smarmy reply – “clear” is as definite as “definite,” but don’t let that bother you too much, as clearly you don’t want to be involved in any legal thinking that might happen here.

          1. Clear is as definite as definite, is it?

            I would prefer to say that clear is as clear can be, as in “clear and convincing” when it comes to the assessment of evidence.

            That the evidence shall be “definite and convincing” just doesn’t have the same clarity, I find.

            1. Love the “as can be.” It goes with the ‘per se’ and ‘as such’ of other tidbits of EP law, and the lack of (non-circular) definition of ‘technical’ that you have ‘contributed’ in past discussions.

              I also love the ‘above the law’ effect that you mentioned as once it passes the office, clarity is simply ‘beyond question.’

    2. when you understand that and understand the foundations built by our Founding Fathers you can easily recognize the tomfoolery and vapid ‘policy’ agendas in play.

      This country was built on the backs of slaves. What’s your point?

      1. The point here Malcolm is that your desired insertion of “slavery” is a complete non-sequitur to patent law and the fact that you feel no shame at all for (mis)playing a race card speaks more ill of you than you might care to imagine.

        Then again, you still maintain that intellectual honesty is not required on blog posts “because this is not a court,” right?

        1. a complete non-sequitur to patent law

          No more or less of a non-sequitur than your “foundations built by our Founding Fathers” gxrbage.

          Just how much Tea Party b.s. do you engorge yourself with on a daily basis? We’re still recovering from one of the worst recessions in history and you’re here complaining about the Supreme Court tightening up an entitlement program for the wealthiest people in the country. Geez, man, get a clue already. Didn’t you get Eric’s memo?

            1. Foundations of patent law are not a non sequitur to a discussion of patent law.

              And exactly what are the relevant “foundations” you are referring to which you somehow believe renders all* policy discussions about patents “vapid”?

              *the term “all” in this context plainly refers to “discussions about policies with which anon disagrees”

              you still maintain that intellectual honesty is not required on blog posts “because this is not a court,” right?

              The nurse will be by shortly to adjust your meds. Please be patient.

            2. Property – patents are considered personal property. Award winning research on that aspect and the aspect of alienability of property that undergirds all modern law.

              How about them apples?

              Your turn (I will not be holding my breath).

              Any time that you want to commit to posting in an intellectually honest manner, please start – until then, your credibility is deservedly non-existent.

              Svcks to be you.

          1. patents are considered personal property

            That’s nice. So are guns and cars and drugs and sausages. What’s your point? We can’t regulate patents because we can’t regulate guns, cars, drugs or sausages? Or is it something less subtle and thoughtful than that?

            Please share your wisdom with us, Mr. Nugent.

      2. Macolm, a bit overbroad there. Not “this country,” but the Confederacy, a rebellious region that THIS COUNTRY spent countless treasure and hundreds of thousands of lives to defeat in order to end slavery.

        1. He was not “overbroad” as much as he was crass Ned in attempting to play a race card where no value or appropriateness in playing such a card could be obtained.

          He was clearly trying to impute disregard to anything the Founding Fathers did because of an unrelated issue.

          You should know that such is his “swagger” – what the rest of the world readily recognizes as a lack of intellectual honesty. It is a dishonor that he perversely wears proudly.

        2. a bit overbroad there.

          Too narrow, in fact. I left out the fact that women, too, were denied basic rights by these illustrious “Fathers”.

          But, hey, these sorts of personality cults are just par for the course for patent txxbaggers like anon. If they’re not worshipping some imaginary idealized version of “the Founders” or Tommy Edison, they’re out there spritzing perfume on Judge Rich. They gravitate towards that kind of thing because they’re basically simpletons and that’s what simpletons do. There’s no script easier to recite than “So and so said so!”. Just ask Rush Limbaugh.

          1. Malcolm vapidly tries to play both the race and sex cards – and fails miserably.

            I do not wander too often over to the patent barrista’s place, but I happened to tonight and htey had an article showing the OPPOSITE of what Malcolm wished to use as denigration.

            link to patentbaristas.com

            But Malcolm will still rant on about unrelated topics….

            1. Paul Morinville, Independent Inventor and Entrepreneur

              LOL. Paul Morinville takes a break from his endless fluffing of Tommy Edison’s corpse and writing junk patents to shill for his own self-interests. Here’s an example of the pathetic junk that he “innovated”:

              1. A method comprising:

              defining a hierarchical organizational structure of positions within an organization;

              associating one of a plurality of roles with each of the positions;
              defining one or more business processes;

              a first position within the hierarchical organizational structure associating one or more access/approval rules with a first one of the business processes, wherein the access/approval rules are applicable to a first subset of the roles;

              automatically associating the one or more access/approval rules with the first one of the business processes for all positions that are subordinate to the first position within the hierarchical organizational structure and that are associated with the first subset of roles; and

              enabling access by positions associated with the first subset of roles to the first one of the business processes according to the access/approval rules.

              The United States needs “innovators” like Paul like it needs a nuclear war. Get the bottom-feeding scum out of the system.

            2. As typical, Malcolm aims with ad hominem at the authors of the piece, while ignoring the historical facts that show his rantings to be nothing but CRP – his attempted playing of race and sex cards to be crass and vapid attempts to denigrate a link to the Founding Fathers and their expectations and foundations of the patent system.

              It is fortunate to set the expectations of Malcolm to an extremely low level so as to be NOT disappointed.

            3. MM, why did you take a quick look at the software patents being issued to the likes of IBM to see whether the big companies are getting patents like this as well?

            4. why did you take a quick look at the software patents being issued to the likes of IBM to see whether the big companies are getting patents like this as well?

              Been there, done that.

              IBM, Apple, Google, Farcebook etc, they all file lots of junk, too. Generally speaking, they aren’t out there earning all their money by asserting their junk against Target, Toys R Us, Walgreens, Netflix or whomever, and they aren’t demanding that their junkiest junk be made as easy as possible to obtain and enforce because “the Founders” or whatever garbage argument the txxbaggers make.

              That doesn’t make these companies white knights or saints. Not by a long shot. It just makes them a typical large companies that files a lot of junk patents.

              I have no love for any of the companies I named above. They all s*ck quite terribly for a vast number of reasons. I’ve been clear about that from Day One and I’ve happily ripped apart junk patents owned by each of them and I will continue to do so.

            5. MM, but IBM does have a business model whereby they get patents and enforce them to make money. If they also get these “junky” patents, why are they not a troll? A large number of people have thought that about IBM for a very long time.

              The reason, I think, is that they do no behave the way the so-called trolls do.

              Bad patents enable abuse of the system. But not everyone abuses it, nevertheless.

              But if we eliminate, as best as possible, bad patents, we go a long way to forever fixing the system.

            6. Ned is only halfway correct with “But if we eliminate, as best as possible, bad patents, we go a long way to forever fixing the system.

              The point you seem to miss Ned is that the boogeyman of “Troll” is being abused by those who want more than what patent law should provide – and that that wanting is but a thin veneer of those pushing for Infringers’ Rights.

              You are of course correct that better patents would be, well, … better.

              But you quite miss the fact that much of what is being kicked up as dust as being “bad” is NOT “bad.” The entire notion that ‘picking on the Mom and Pops” MUST be bad is sheer dissembling lunacy. Infringement is still a strict liability offense. Infringement still includes use. Every bit as it simply does not matter who owns a patent is the reciprocal notion that it does not matter who the patent infringer is.

              As Marty amply demonstrates, the effect of the propaganda machine has confused the public into thinking that patent law is something other than what patent law actually is – that there are some requirements of minimal damage that must be met before protecting one’s right of exclusion can be sought, or that the fallacy of a “use” requirement exists.

              Open your eyes and stop playing into those that would pervert the system under the classic propaganda machine tactics of FUD, or boogeyman denigration. It is only too clear that your ad nauseum and misplaced attacks are but a thin cover for your long standing crusades against software and business method patents.

              Wake up and realize that you are being a tool.

        3. Not including slaves and woman as voters is quite a bit different from stating that this country was built on slavery. That statement does not recognize nor give credit to the fact that fully half the country did not have slavery, and that was remarkable given the times. The movement to abolish slavery was alive and well in the US as it was in England. It bore fruit, but in a bloody civil war.

          The movement to universal sufferage was a long time coming as well.

          Let me ask you this, Malcolm, did the French of 1792 grant women the right to vote in their nascent republic?

          1. Not including slaves and woman as voters is quite a bit different from stating that this country was built on slavery.

            I suppose if you want to keep moving the goalposts around and ignoring the context of my comment. My point is simply that when a patent txxbagger such as anon invokes “the Founders” it’s just a pathetic rhetorical ploy, no different than his pathetic and incessant accusations that critics of the patent system are communists.

            did the French of 1792 grant women the right to vote in their nascent republic?

            Dude.

            Nobody is invoking “the French of 1792″ to justify the perpetuation of a broken patent system that serves grifters at the expense of everyone else. When that happens, I’ll be more than happy to discuss “the French of 1792″.

            1. no different than his pathetic and incessant accusations that critics of the patent system are communists

              A rose by any other name still smells like a rose, n’cest-ce pas?

              The accuracy of my observations is unquestionable Malcolm. So sad for you that you do not like that. It is not a matter that you criticise Malcolm, it is how you criticize. Here is a hint: do something other than pound the table of your vapid policy that reflects a Jane view of the world.

              Those that have the law on their side, pound the law.
              Those that have the facts on their side, pound the facts.

              Malcolm has neither.

          2. ” That statement does not recognize nor give credit to the fact that fully half the country did not have slavery,”

            Right, they had child labor for their factories. Sooooooo much better.

      3. Malcolm,

        I echo anon’s response that what you just said is completely off topic, racist in the extreme, as well as grossly offensive and insulting to African-Americans. What planet do you live on? You might do well to read the articles I posted on Granville Woods and George Washington Carver on IPWatchdog to realize that African-Americans have excelled ins this country in spite of the efforts of you white liberals to enslave them to government. I’ve got nothing but contempt for that “slavery” comment you just made.

    3. Non US, if one cannot patent X, the form of the claim is irrelevant. Thus Benson decided we cannot patent MATH — MATH being, like a law of nature, too fundamental to patent broadly. Bilski decided we cannot patent – er, what precisely is the question.

      Alice argues that the Benson exclusions are limited to Law of Nature, Products of Nature and MATH. CLS Bank relies on Bilski for the proposition that fundamental economic principles must also be excluded for the same reason as was MATH.

      I personally think the Supreme Court really needs to clarify whether we can patent fundamental economic principles, or better, whether economic principles are fundamental.

      “Economic principles” seems to be just another way of saying “business method.” If there is a difference, I do not know what it is.

      1. Bilski decided we cannot patent – er, what precisely is the question.

        We have been around and around on this Merry-go-round Ned – why do you insist on not remembering how I used the very reference source you provided to show that your past crusade as Bilski as being anti-business method patent as simply wrong?

        Your “seems to be” is an intellectually dishonest attempt to attack business method patents yet again.

        Stop the intellectual dishonesty.

          1. They were pretty clear about the reason they chose Ned.

            Not sure what point you are trying to get at – did you lose your merry-go-round ticket?

      2. Software is not MATH, Ned.

        Software is a machine component, a manufacture made by man with utility and a purpose, and – as a category – is fully patent eligible in and of itself.

        Software is equivalent to firmware and equivalent to hardware.

        On a separate note, you do remember what the “point of novelty” in Diehr was, right? Remember, each of the piece parts in Diehr were each old. The Arrhenius equation, thermocouples (inherently provide continuous data, perfect cures were obtained (albeit more difficultly), etc.)

        1. anon, Software is not MATH.

          In principle, I agree. But the problem is that the output of a computer unless it is used to control something is a number. One can look a computer up to another machine and use it to operate that machine or process as in Diehr. But unless the machine is so configured, all it does is output numbers. So it becomes very difficult to distinguish between the output of a software program and the output of a mathematical algorithm.

          Thus the distinctions are really immaterial if nothing more than a number is produced.

          1. unless it is used to control something

            Ned, this argument FAILS for the same reasons that such an argument fails for other manufactures. One simply does not require what you seem to want under patent law.

            I will repeat the examples previously given to you: rivets, tires and bullets.

            Thus, I will (once again) ask you to NOT conflate the 101 requirement of utility with the 101 requirement of statutory category (your ‘just a number’ position is inapposite to the ‘manufacture as a patent eligible category,’ and rivets, tires and bullets – in and of themselves – lack the same sense of utility that you are trying to conflate into the discussion).

            I will also repeat the legal foundation that you have NEVER acknowledged, let alone incorporated into your legal thinking: the exceptions to the printed matter doctrine, which provides that software, having a functional relationship, carries patent weight that establishes the utility that you otherwise seek to conflate.

            I will also repeat the fact of the legal requirement of fixed in a tangible media (thus having tangible structure) that software must have in order to earn copyright necessarily carries over to the patent world and eliminates the fallacy of any claim of “totally in the mind” that some of ill repute try to kick dust with.

            Finally, I will (once again) ask you to use the fact that software is equivalent to firmware and is equivalent to hardware to serve you in your understanding of the Nazomi case and ask you (once again) to acknowledge the legal argument used in that case.

            In principle, then – and otherwise – Please stop running away and address these valid points that I raise.

            1. Asked and answered – many many many many times now Ned:

              You cannot use that which has not yet been changed (upgraded, re-configured, made into a new machine having the capability). Programming IS creating a new machine (See Alappat).

              This is the essence of the very simple question I put to Malcolm and from which Malcolm continues to run away from:

              How does an ‘oldbox’ – without change – have a new function that it did not have before the change?

              This too goes to my question to you, that you continue to run from: what is the legal reasoning in the Nazomi case? Use the fact that software is equivalent to hardware and move forward to understanding the legal reasoning.

              Please stop running away.

            2. anon, I take your post as an admission that using an old computer is the same thing as programming an old computer. In such a case, the statute provides that the knee use of an old machine is a process, Not a new machine.

            3. Ned is completely wrong with “I take your post as an admission that using an old computer is the same thing as programming an old computer

              That is like saying black is white, Ned. – Try the opposite.

              Using is NOT the same as programming. One can use in the sense you wish to spin AFTER programming. They are distinct.

              Stop running – you are really starting to look desperate.

            4. Also – you are attempting to overrule Alappat with no basis whatsoever with “use of old machine” when it is to be understood that the programming of that old machine creates a new machine.

              You cannot use an old machine (without changing it) to do something the old machine could not do without changing it.

              In other words, you really do have to come to grips with the proper understanding of both Nazomi and Alappat.

              Please stop running away.

            5. “Asked and answered – many many many many times now Ned:

              You cannot use that which has not yet been changed (upgraded, re-configured, made into a new machine having the capability). Programming IS creating a new machine (See Alappat).”

              Asked and answer Ned, see, all you gotta do is buy into the bizarro “reasoning” of alappat and you’re good to go on your journey into the patent maximalization religion!

            6. “anon, I take your post as an admission that using an old computer is the same thing as programming an old computer.”

              Obviously it is, he just wants to try to draw an arbitrary symantic distinction between the two things which are obviously the same thing irl. This is the “essence” of the “reasoning” in Alappat. Arbitrary line drawing to support a policy position the federal circuit adopted when it created it out of whole cloth. Of course its founded on nothing but their own tomwanking in their minds and might be discarded out of hand in the upcoming case. Keep your eyes peeled!

            7. “Ned, your post of 15.3.2.1.1.5 proves my point.”

              Was your “point” supposed to be that unprogrammed computers cannot be “used”? I mean, seriously, pull your head out of your arse.

            8. Translation of 6’s “ buy into the bizarro “reasoning” of alappat

              If you ignore what the law really is, then anything is possible. After all, to 6, law is something purely subjective and in the mind, so anything goes…

              (6’s self-Fail delusion is front and center)

              Such is “arbitrary and tomwankering, because 6 decided in his mind it is so – but take notice, this is the same mind that believes that his Britney Spears CD is actually all of the software ever created, including the next three versions of Microsoft’s operating systems (no really – he really believes that).

              Close the patent office – everything is defacto obvious if not lacking novelty in 6’s blue pill world. His belief system tells him so.

              (and tell me 6 – exactly what can you use a computer without software for? LOL – you failed this question in the Grand Hall experiment, and now fail it with actual case law of Nazomi – hmm, why that is exactly why Ned runs in fear of understanding the legal logic of that case, isn’t it?)

            9. “If you ignore what the law really is, then anything is possible. After all, to 6, law is something purely subjective and in the mind, so anything goes…”

              You may have noticed, we have a case at a court who doesn’t give two shts about the “law” the federal circuit has tomwanked into being.

            10. 6,

              Differentiate your (mis)use of the word ‘use’ with my example of my big box of electrons, neutrons, protons, and all elements and ‘using’ these things to ‘create’ ANY molecule or even manufacture. Clearly you think that ANY new machine or improvement of a machine is covered by ‘allowable use’ of machine and the creation of new components by ‘using’ the machine. Try to be consistent in your ‘reasoning.’

              Have Malcolm bring the popcorn – or Captain Picard (after he makes his tea, Earl Gray, hot).

            11. “‘using’ the machine”

              If the “machine” was a “magic box” as depicted on the show then maybe. But even the “magic box” replicators on star trek can’t make everything.

            12. Ned,

              15.3.2.1.1 remains unattended to. Your “use” without recognizing the need to change first prior to “use” dust-kicking is quashed.

              In principle, then – and otherwise – Please stop running away and address these valid points that I raise.

            13. “15.3.2.1.1 remains unattended to. Your “use” without recognizing the need to change first prior to “use” dust-kicking is quashed.”

              Now you’re stating that you need to “change first” “prior” to “use”. I’m changing “during” my “use”. I extend the time period to cover the whole of the changing and the whole of the “use” that occurs after changing all under the umbrella of overall “use”. Especially because in most situations if I have a blank slate of a computer/processor with nothing on it then I literally will be “using” the machine while I’m “changing” it. I don’t know how you don’t understand this. When I’m talking about “changing” the computer, and I presume when you are talking about the same, we include not just sticking in a CD etc. and loading up a compooter program. I’m talking about sitting down at the computer and programming it by hand via keyboard/mouse to do x, using only the machine itself, off the shelf even. And I presume you include that manner of use also in the ways you can “change” the computer.

              It’s that simple brosef, and it’s totally allowed under the English language. I’m sorry, it just is. You can draw an arbitrary line of distinction between “changing” and “using” all you like, but so long as the machine is one of ordinary type where you can “change” it by “using” it then the two actions are synonymous in their reference to the same physical behavior by the operator.

              I’m also not sure why you still want me to “respond” to this, we’ve talked about it to death, you’re just dmb and buy into the arbitrary line drawing that the federal circuit put in place. I presume this is because of your blind faith in “law” that supports your profession, and complete inability to even understand what other people are saying if it goes agin such. I mean jesus fck bro, what I’m saying isn’t rocket science. If you don’t understand it by now there’s only so many millions of ways I can say it for you for you to understand.

              And frankly I think you are capable of understanding it, and do, somewhat, you just really really don’t like it and consider “against the ‘law'” that you hold so dear. I mean, there’s nothing that I can do about that. I understand why you don’t like it. I also understand that the “law” you hold so dear may just go up in smoke in a few months just like state street did when you <3'ed that so much. We don't have to keep discussing it. It's just boring bro. The case is pending, let it play out.

              "Nonresponsive – try again 6."

              I'm not even sure what specifically it is that you're saying is nonresponsive. I presume you're saying that my response regarding your magic sci-fi box "argument" is non-responsive. It is as responsive as I'm required to be. I have no obligation to be more responsive than that. If you don't find it persuasive, oh my god, huge surprise! You're dumb enough to dream up the magic box argument ad absurdem in the first place, it's small wonder that you can't recognize that it doesn't take a huge earthshaking come back to dismiss it out of hand.

              In either event, if it makes you happy I'll expound a bit. The magic boxes depicted on star trek aren't really meant to be "real technology". Just ask the people behind the scenes. They've stated straight up on many behind the scenes specials that replicators were intended to just be magic boxes to provide characters with xyz they needed for the show. The same as transporters were put in the show because they didn't have $$$ for shutlecraft props. And, they've further stated that even though they were supposed to be magic boxes they later on added in that even replicators can't make everything, even in the star trek fictional universe because they felt like it would make it seem more "down to earth". If replicators, even magic ones, as opposed to 3d printers we have irl, can't make everything, then they surely cannot "invalidate everything" as you routinely "argue" (or at least think you're arguing, though you're really just arguing ad absurdum). Your argument rests on the magic box being able to make anything.

              I'm sorry there's nothing more "responsive" to say than that. Your "argument" is nothing but an absurd take at making an argument against the judicial exceptions being applied in the compooter space. And it rests on a fiction, specifically a magic box, being able to make everything out of any old atoms. Even if we buy into your fiction argument, even in the fiction world the magic boxes can't make everything, and they use specific materials as their building materials (look up the make believe specs in the make believe books about star trek's tech in your local book store) not just any old atoms. So your "argument" simply doesn't work out, even if we presume the boxes to be the magic ones depicted on the show.

              It's fine if you want to make such an absurd "argument" ad absurdum, but I wouldn't try it in a real court for fear of being laughed at to my face. You on the other hand can feel free to. I'll be around to lol@ur face when you do and we get the case posted. But I don't want to talk about it everyday bro, it's just boring. Ring me up when you make the argument to a court and get loled at. Then we can share a lol at your expense ok?

            14. 6 engages in massive self-FAIL with “Now you’re stating… I’m changing “during” my “use”…

              LOL 6 –changing while using is inventing. This is not a “now” type of thing – this is an “always been” type of thing. You get a new machine and a patent eligible effort for that type of ‘use.’

              You prove my point by needing to extend the effort.

              Your umbrella is not what you think it is. It is what I have been trying to tell you. Clearly, this is not something ‘I don’t know’ – it is something you don’t understand. After all, we both know that “programmed to” is structural language, and you are in fact creating a new machine when you do so.

              buy into the arbitrary line drawing that the federal circuit put in place

              Still wrong on your understanding of law and fact there 6. The fact you portray this as ‘buying into’ is only your belief system getting in the way again. The key here my lemming friend is to realize that it is you that lacks the understanding. Your belief system and that blue pill you swallowed…

              just like state street did when you <3'ed that so much

              You must be thinking of someone else – as I have ever reminded Ned, I simply have never used that as a citation as I do not need to use it. But thanks anyway ‘bro.’

              It is as responsive as I’m required to be.

              LOL – required? You are not “required” to be anything at all. You can fully be the “ignorant belief-ridden lemming oblivious to actual law and actual fact” self that you ever want to be. You are not required to respond intelligibly (if you are even capable of such). All that I am doing for you is letting you know that your rambles were not responsive.

              You expounding on Star trek reminds me of the Shatner line (with some commentary: link to youtube.com )

              Your thickness is amazing (and that is not a good trait).

              Your argument rests on the magic box being able to make anything.

              My argument is making fun of your argument. You rather miss the parallel necessary with the “House” fallacy and all future inventions already a part of the machine CRP. Your satire meter is on the fritz.

            15. “changing while using is inventing.”

              Feel free to assert that all you like. I don’t particularly mind. To me, and many others, de minimus changes to a device, being used exactly how it is intended to be used is not “inventing”. Especially where nobody even gives a dam what the actual changes were, or bothers to disclose them. And somehow I doubt the USSC is going to be buying that sort of a rational here shortly. But hey, I won’t be surprised if we see that sort of thing in the briefs from Alice. All the better, so we’ll know that they’re soundly smacked down 9-0.

              “This is not a “now” type of thing – this is an “always been” type of thing. ”

              Really accordian players invent a new accordian every single time they play one? I’m just curious, tell me, straight up, do they or don’t they? And then, has it always been that way?

              “After all, we both know that “programmed to” is structural language”

              I’ve disputed that when you bring it up and I dispute it irl. It’s functional language if what it modifies is naught but a function. I’ve yet to need to allow any case based on this alleged “structural language”ness of that phrase. Nor will I likely ever allow such under my own authority.

              “Your umbrella is not what you think it is.”

              The umbrella is precisely what I made it be ya re re. I made/stated the fraking thing. Whether you like me making the umbrella extend thusly, or whether x court will buy into it is another matter. But should this ever make its way to the surpremes I can assure you that all the patent protectionism of the Federal Circuit propping up your position will be nowhere to be found.

              “The fact you portray this as ‘buying into’ is only your belief system getting in the way again”

              Oh I agree, I belieb in rationality. The Federal Circuit beliebs in setting they consider to be desirable policy. Just ask them. And maybe such is kinda sorta maybe their job in some people’s opinions. In reality of course they’re supposed to be disinterested judges. But they’re the furthest thing from it in such matters.

              One thing you should remember anon, both you and I chafe under “decisions” made before we were even born that were made for a different age. For you, Benson. For me, various federal circuit decisions. Thing is, from those two categories only one of them is likely to be overturned anytime soon.

              “My argument is making fun of your argument”

              Yeah I know, it’s called an argument ad absurdum. But you should consider that it isn’t my “argument”. It’s what the USSC has held time and again regarding the subject. It’s a simple holding, not an “argument” as to why that holding should be made.

              In any event, I’m not further addressing your dmbas argument ad absurdem re the magic box.

              You may have the final word on either subject right now, go right ahead, and let’s be done discussing it until the current USSC cases resolve alright? Stop begging me to discuss this further aight? All you do is get on here and act an arse when I do.

            16. de minimus changes

              LOL _ not so de minimus when those changes create the capabilities that the ‘oldbox’ just did not have.

              Again – your view is tantamount to ALLOWING Morse to patent all future inventions because you would capture all future machine changes in the very first computer.

              You are still not quite quick enough to realize that, are you?

              Really accordian players

              LOL – step right into the music canard and abandon any hope of an actual legal argument 6 – nice character suicide.

              I’ve disputed that

              Hey don’t blame me for the truth – also your pal Malcolm volunteered that admission.

              I made/stated the fraking thing.

              LOL – yeah – that’s the best part – you don’t know what you are talking about and you make my case for me, admitting now to inventing as what you mean by using.

              Oh I agree, I belieb in rationality.

              Your belief system is not rationality 6. Your eyes are so tightly clenched that you cannot see rationality.

              It’s what the USSC has held time and again

              LOL – show once where the SC held that. I believe that the case you say I do not like said expressly otherwise: here is a hint: find the quote in Benson that states “We do not so hold” and let me know the rest of that quote.

            17. “LOL – show once where the SC held that”

              Nah bro I commend you on holding off being an arse somewhat in your last post, real improvement there. You should try doing it earlier maybe next time. But the topic is still just as boring as it’s been for the last year. We’ve spent years chasing each other around. There’s a case pending. Just hold your horses.

              That was your final say and that’s fine. I commend you on at least trying to move some aspects of the conversation forward and was thinking I might respond further, but seriously? There isn’t much point. I’ve spent years talking about this. We could have finished the discussion in person in like an hour. Two tops. And we’d have fleshed it out much more because I’d have held your hand through everything.

              The case is pending, we can resume afterwards if there is much left to talk about.

            18. 6: “You may have the final word

              LOL – you just cannot help yourself, can you?

              March, march, march right up that hill, my little lemming. We both know why you want to hold someone’s hand – that precipice is approaching, and none of your lemming buddies are even bothering to look up.

              March, march, march.

    4. Ned Heller, IBM is trolling the hell out of my company right now on the junkiest of junk patents; U.S. Patent No. 5,999,939

      The “damages” may be in the range of $20K- assuming the patent is not invalid for obviousness, anticipation (by us among others), and being drawn to an abstract concept with minimal (to say the least) computer implementation.

      I owe Dennis a summary of the thing, but I have not gotten to it yet because naturally its a long and ugly history, and the subject of current litigation so I have to be super precise to be fair- which is more than they have been with us. Costing my tiny company $30K a month for NOTHING. Total troll behavior of the worst order. Kafkaesque nightmare, that’s why I’ve become radicalized about patent abuse.

      And before you say anything again anon, piss up a rope with your BS about “the law”. This is a pure power play- the law is just a misused tool do to it. They are 25,000 times bigger than us….we mean nothing to them, and the royalties and the feature are utterly trivial to anyone.

      1. Martin, I hear you.

        In the disk drive industry, Conner Peripherals once took on IBM who demanded a balancing payment in exchange for a cross license. Both parties had patents that covered the other’s products. In Conner’s view, this justified a royalty free cross license. In IBM’s view, their larger expenditure on R&D justified a balancing payment.

        Both positions had merit. But when negotiations broke down, they cross-sued each other for patent infringement. Even though Conner was a fairly large company, they could not afford the litigation. In the end, the case was settled, terms unknown. But Conner then failed as a going entity. If they won in that settlement, it was a Pyric victory. One simply cannot sue or be sued by a company whose resources are so much greater than one’s own.

        Now, if a big company uses its shear size to force others to pay it tribute, I think this is a matter for the justice department. I really do. Might does not make right, and we have heard quite a lot recently how the cost of litigation forces the small fry to settle. When the government investigates, they should not exclude from their view big companies who may be abusers of the system as well.

        On a aside, there is a theory of “just war” and it applies to litigation. One of the requirements for a just war, however just the cause, is the ability to win. A small country, like the Ukraine for example, cannot take on larger country it cannot defeat. It simply must comply, resistance is futile.

        1. Ned, what happens when the settlement demand is far beyond the capacity to pay? Get a loan? Who would underwrite it? Sell the family home?

          That’s what a Kafkaesque nightmare really is.

          All one can do is fight honorably until overrun, which is what we are doing. That patent is shit- it will never survive a jury, and probably not a MSJ either…Judge Robinson of Delaware had choice words for it in a previous litigation….but she could not grant the MSJ because the other lawyers went in the wrong direction on obviousness (e.g. did not argue it, they thought the easy to find prior art would be enough, so did not do a complete search, leaving a matter of fact here or there still open)

          Also we were of course surprise attacked- no demand letter, no nothing- merely informed by our general counsel we were sued.

          IMO, IBM likely does not want to admit they were swindled in the deal when they got the patent, so nobodies like us have to be broken on the wheel….

          1. Martin, what you say here is nothing short of outrageous.

            They sued without notice, demand an amount that you do not have …

            All you can do is throw yourself on their mercy. But, I would certainly write my congressman.

            1. I don’t actually know that we ever did get an actual settlement offer. There was a confidential mediation, but it went off in an odd way inter alia because there were 6 defendants involved (they sued a dozen nobodies in two jurisdictions) The others could not share details but scuttlebutt indicated the numbers were utterly disconnected from reality….

      2. How apropos. The claim from the referenced patent that IBM acquired and is now asserting against small businesses, filing suit like Mr. Spangenberg without any demand letter or notice of infringement, has the exactly indefiniteness problem of the poster boy. Check the last element and “said data strings.” Now, to what is that element referencing: “Source” or is it “Target” data strings?

        “1. A method for facilitating the accurate transfer of information from each of a plurality of nonuniformly formatted source data streams into a structured database, said method comprising the steps of:
        supplying digital data representing each of a plurality of source data streams from a plurality of users, each said source data stream containing data corresponding to multiple discernible source data strings;
        processing said digital data for extracting selected ones of said source data strings and generating related target data strings;
        displaying a structured form comprised of multiple fields, each field being capable of accommodating a data string and wherein one or more of said fields have said target data strings inserted within;
        enabling each user to modify and/or accept said target data strings inserted within said displayed form corresponding to said source data stream originating from said user; and
        storing data corresponding to said data strings from said form fields into a database.”

        Now, if what Mr. Snyder is saying is true, IBM is a PAE, and among the worst of the breed. Everything they, and their allies, say about the patentability of software must be taken with a grain of salt. It seems clear they are not protecting investment in software. They are doing exactly the same things as every other PAE, acquiring patents and asserting them.

        1. They are doing exactly the same things as every other PAE, acquiring patents and asserting them.

          Last I checked (yup – still there) this is a foundational aspect built into the patent system.

          Malcolm, please share the (still controlling) 1908 Supreme Court case that you (wink wink) do not know with Ned that HOLDS that there is no ‘use’ requirement in US patent law.

      3. so I have to be super precise to be fair

        No. You do not. But you really should understand the law before you get all preachy about it. Have you talked to your attorney yet about infringement being a strict liability offense and that there is no such thing as a minimum damages level necessary before suit can be brought? You seem really confused on that point.

        Also, If you are shelling out $30,000 a month for something you think is trivial, wouldn’t the smartest (and cheapest) thing to do is simply stop infringing? For that amount, you can hire someone to actually invent your way around and stop the QQ fest about things you apparently do not know anything about.

        (and the “piss up a rope” strategy for someone (anyone) willing to give you a heads up about how messed up you are in this legal world really really won’t work well for you – I suggest a different tactic)

        1. We stopped “infringing” on our “invention” as soon as we were sued. That is supposed to have what effect on the litigation?

          Sure they have a legal right to bring this case. It’s a moral abomination on every other level.

          They could not get a patent on extraction, but from anything I understand about it, what at they patented is actually extraction. Most of the other defendants could not even figure out what the patent is about, which is a feature, not a bug when you are trying to carve rents out of an industry full of small players.

          Compare the patent to this description of extraction. If you can’t verify extracted text, why even extract- its not only obvious, its universal…the whole thing is disgusting..

          link to en.wikipedia.org

          1. Sure they have a legal right to bring this case. It’s a moral abomination on every other level.

            LOL – so says every other person guilty of breaking the law – wah wah wah.

          2. Marty reminds me of:

            Me? My lawyer f@#ked me. Everybody’s innocent in here. Didn’t you know that?

            Said in the best Andy Dufresne tones.

            .

            Or the exchange between Red and Heywood:

            R: “You’re gonna fit right in. Everyone in here is innocent, you know that? Heywood, what you in here for?”

            H:” Didn’t do it. Lawyer f@#ked me.

            1. “breaking the law” what sad little lady you are anon.

              Its the people who prosecuted that patent, and now seek to enforce it, who broke laws. Maybe some codified, certainly some moral.

              But bootlicking failures only like to recognize the former….

            2. LOL – the sad sack here Marty is you. I have already told you that I am a male and that you need to understand what the law is.

              Your mewling QQ of “it’s broken” just because you don’t like the fact that you may be guilty of violating the law only shows that you need to wake up and join the real world.

              Your accusation of immorality-based-on-your-view and “bootlicking” is meaningless dross. All that will happen with your continued penchant for not understanding what the law is and feeling sorry for yourself is that you will just get more and more bitter and detached from reality.

  6. Given that a claim can be simultaneously definite yet not definite, I’m curious what “definite” means. No help in Europe, because in the EPC there is no requirement that the claim be particular or distinct or definite. Instead, before the claim can issue, the EPO has to be satisfied that it is “clear”. That’s it.

    Until 1978, it was a ground of invalidity in the UK, that a claim was “ambiguous”. But this ground of invalidity never made it into the 1973 EPC. Can we say that for the Federal Circuit an indefinite claim is ambiguous while a definite claim is unambiguous? Is that it?

    1. Max: I like the EPO’s “clear” bar. Many Specs & claims could be written better and more clearly, but as long as a reasonable person should understand the invention and the metes & bounds (and it is inventive), then I don’t think it is just to punish the inventor for mediocre language.
      I think the USPTO should amend their law. The definite vs legally definite discussion would be moot.
      I think “definite” is definitely not clear :-)

      1. One (major) problem that you will have, Non-US practitioner, with

        but as long as a reasonable person should understand the invention

        is that there are forces with vested interests who will not be reasonable in understanding the invention.

        Claims are supposed to be understood by the ordinary person having skill in the art, and yet telephones are no longer machines, and to some (yes, this was a volunteered admission), machines think.

        The “unclear” or “indefinite” arguments are merely the latest smokescreen being puffed, the latest dustcloud being kicked. Look carefully at the words chosen, the types of inventions being targeted: the common denominator is a clear fingerprint to the Crusade afoot.

        Just as the phrase “with a mind open to understanding” is often bandied about by those with minds so tightly closed as to be impenetrable to reason, “reason” will always be a casualty to those who refuse to be intellectually honest (for WHATEVER reason).

      2. To wit, let me use this opportunity to share (again) one of my favorite words: anthropomorphication.

        Machines really do not think.

        It should be readily understandable by anyone approaching claims in the software arts with any sense of reason that any language in claims that would require a machine to think is an obfuscation. And yet, some cling tightly (and blindly) to some notion of the Mental Steps doctrine in the modern world. We constantly see strawmen of claims totally in the mind being brought forth in discussions of machines and manufactures that are machine components – discussions of the types of inventions that we are told “that copyright is enough” without ANY reconciliation with the fact that to even have a copyright, the item must be fixed in tangible media and thus CANNOT be something “totally in the mind.”

        You ASSume that the other side is being reasonable.

        They are not.

        1. any language in claims that would require a machine to think is an obfuscation.

          So why do the softie woftie types engage in so much obfuscation when they draft claims?

          1. They do not. No more so than any other art field in a fully legitimate manner to obtain the maximum coverage under the law.

            Simple answer to a dishonest question.

            1. They do not. No more so than any other art field in a fully legitimate manner

              That’s plainly false. Any other lies you wish to engage in while you stoop down to defend the Lowest Form of Patenting?

            2. ” No more so than any other art field”

              In my art field we don’t have any language that would require a machine to think in the claims. Except that rare occasion where they try to patent some software that would be used in my field.

            3. (sigh)

              would require a machine to think

              NO art field requires such, 6.

              Machines do not think. If you think that they do, that is a you problem and you do not understand the art field.

            4. “NO art field requires such, 6.”

              Um, that was the subject of all this discussion. That the softiewaftie field does and others don’t. Of course you’re so bad at reading you didn’t know that was what was under discussion. We could all tell you were clueless though since you were posting as if softiewaftie apps did without even challenging that they did. And we all know you want to challenge that. Because to you, in your ta rdbrain, requiring in a claim that a compooter “determine whether a is greater than b” etc. etc. isn’t “thinking”.

              But you’re so dmb it’s hard to even discuss things with you. You don’t even know when to spring into action with your dmbness.

            5. LOL – 6 at least can identify the “subject” with “Um, that was the subject of all this discussion.

              To bad that 6 does not recognize the meaning of the word: anthropomorphication.

              At least it provides me with another opportunity to use the word.

            1. “What a person does”

              See, anon just excludes what computers do by his own made up definition. Of course the actual definition is not so limited. Animals think also. In fact I was watching a program on Antarctica the other day and they have some special microscopic organisms down there that apparently fall under all scientific attempts to define “intelligent” life. There’s no reason to define compooters out of the definition.

              Of course, in 40 years when cybernetic people are commonplace (my mom is literally a cyborg already, and there will be many many more shortly) and actual robots in the form of humans are also commonplace, his definition will look hopelessly outdated. As he does already really. Still stuck in the iron age. That’s anon.

            2. “(you know, the parts of being human that are tried to free will and the soul – the basis of why there is a mental steps doctrine).”

              In other words, a religious definition. “free will” and “soul” both being inextricably bound up in religious “beliefs”.

              The very foundation of his patent religion.

              Good that you’ve helped to expose this MM. He may not have even realized this little tidbit himself.

            3. It is quite funny to watch you parade your ignorance of the law and its historical meanings, 6. No difference at all to you between machine and human…

              But please continue to post that non-human things are the ‘equal’ of humans. Your energy-drawing battery pod has been upgraded to level 1.56.7.345 (you have a whole .25 cubic centimeters more room and your nutrient bath replacement cycle has been shortened .00125 milliseconds.

              So happy you choose the blue pill.

            4. “Understanding law and reality is not stuck in the iron age, 6.”

              You mean like cybersource? That “law”? You understand that “law” now? How about Nuijten? You understand that “law” now?

              You’re stuck in the iron age brosefus.

            5. I fully understand that Nuitjen is controlling law and have never posted to the contrary. Quite the opposite of several poor quality bloggers, I fully admit to the controlling nature and I discuss why that decision is so horrendous.

              As to cybersource, that is a rouge decision made by a panel that did not respect previous controlling en banc or previous panel decisions, engaging in a pin-pong battle of nonsense. Further, that entire mess is now before the Supreme Court (with the hope that the Court will clean up their own mess).

              Your attempt to paint me as stuck in the iron age is just another character suicide of yours 6.

      3. Thanks non-US. Of course, no patent can ever be 100% “clear”. That is why the EPC list of grounds for disputing validity, post-issue, does not include lack of “clarity”. It is down to the EPO to police on clarity, prior to grant.

        Upon issue of the European patent, the debate is closed. It can open again, in post-issue proceedings, only when an amendment is put forward. Then (of course) the amendment needs to be checked for clarity at the door, before it is allowed in.

        The EPC scheme on clarity seems to work, at least to this practitioner.

        1. Hmmm, it seems that closing the debate is an even higher ‘standard’ than clear and convincing could ever reach…

          Another of the oddities that come from MaxDrei when one carefully tracks his words.

        2. Hi Max, thx for the info.
          BTW1, I’ve noticed that the “definiteness” issue in Office Actions is almost always related to antecedent issues. I’d say that was the same in this case as “the account” does not have a known antecedent as there are 2 possibilities.
          BTW2: the term “the rounding determinant” seems to lack antecedent basis. No one seemed to comment on that. Apparently too busy writing nasty remarks about each other.

          1. No thanks needed, non-US.

            Lack of antecedent is a classic reason for an EPO Examiner to object to clarity. But they don’t get excessively anal about it because they know that claims can never be 100% clear and anyway, clarity can suffer more from other things than want of a perfect antecedent.

            Clear enough to be fit for purpose is the watchword. What is the purpose of a claim? To inform readers unambiguously, what would fall within the scope of protection and what would not. For that purpose, additional formal wording, just to set up an evident “antecedent”, often adds nothing to the “clarity” of the claim. As an example, is it implicit, or do you need formally to recite it explicitly, that a finger biscuit has ends, as in:

            A chocolate-coated finger biscuit, characterized in that the chocolate coating stops short of a zone contiguous with one of the ends of the finger.

            To put it another way, does that claim take the biscuit? Is it”definite” enough for the Federal Circuit?

            1. MaxDrei, A chocolate-coated finger biscuit, characterized in that the chocolate coating stops short of a zone contiguous with one of the ends of the finger.

              Max, this seems entirely structural. While we try something different and and see how it works in Europe.

              1. A chocolate-coated finger biscuit wherein the chocolate is characterized such that it does not adhere to a finger at body temperature.

              The specification discloses one chocolate formula, but only one formula, for achieving the claimed functionality. Obviously the claim covers all chocolate formulations. There is a discrepancy between the scope of the claim and the scope of disclosure. The Federal Circuit might hold the claim non-enabled, but would not hold it indefinite. In contrast, controlling Supreme Court authority would hold the claim indefinite because it described the composition not in terms of what it is but in terms of what it does.

              How do you handle this in Europe?

    2. MaxDrei, given that a claim can be simultaneously definite yet not definite, I am curious what “definite” means…

      Max, you wouldn’t be poking a little bit of fun at the quality of jurisprudence coming from the Federal Circuit? I think the good judge in this case was making exactly that point himself. In fact I think, if I might be so bold, that there exists a widespread lack of respect for the Federal Circuit held by federal judges who are not on the Federal Circuit.

      1. Me, poking fun? Ned how could you come to that idea?

        My point is nothing more than that the word “definite” is not a happy one.

        A patent is to protect an inventive concept. The claim is to define the scope of protection. So any claim defines. So to that extent, any claim is “definite”.

        A concept is an abstract thing, so any claim directed to a concept is, in a sense, also abstract.

        I think the 1973 EPC does substantive patent law better than 35 USC 101-112 because its Articles 52-57, 83, 84 and 123 use words (like “clear” and “obvious”) that are at least fit for purpose and are at the irreducible minimum of difficulty whereby they need no further definition.

        1. the word “definite” is not a happy one.

          There are no happy words. “Clear” is likewise not a ‘happy’ word.

          “Fit for purpose” is not a ‘happy’ phrase. There is no such thing as “irreducible minimum of difficulty whereby they need no further definition.”

          Sorry MaxDrei, but you spin in hopeless pandering of but a different system, a system not built to the US Sovereignty and our Constitution. I wish you well with your chosen law and there are plenty of good things about it to be sure. But please, spare all of us your notion of ‘superiority’ that simply is not there.

  7. anon, you are going to love this from Amazon’s brief:

    “”The court’s decision in Halliburton, although it remains good law, not having been overturned or questioned by the Court or altered by Congress has (with but rare exceptions) not been followed by the lower courts ever since the decision by the Federal Circuit’s predecessor, the Court of Customs and Patent Appeals, in In re Swinehart, 439 F.2d 210 (CCPA 1971). In Swinehart, the Patent Office had rejected a patent as indefinite “‘failing to particular point out and distinctly claimed invention as required in 35 USC 112′” because the claim defined the invention by the results it achieves as opposed to what it is. ID at 211-12) quoting PTO decision). The CCPA overturned the rejection, holding that purely functional claiming was a permitted convenience or even “practical necessity”:

    “We take the characterization ‘functional’, as used by the Patent Office and argued by the parties, to indicate nothing more than the fact that an attempt is being made to define something (in this case, a composition) by what it does rather than by what it is (as evidenced by the specific structure or material, for example). In our view, there is nothing intrinsically wrong with the use of such a technique in drafting patent claims. Indeed we have even recognized in the past the practical necessity for the use of functional language.”
    Id. at 212 (footnote omitted; emphasis added). To eliminate any doubt, the CCPA further overruled in a footnote its own earlier decision in In re Fisher, 307 F.2d 948 (CCPA 1962). See 439 F.2d at 212 & n.4. Swinehart did not cite this Court’s decision in Halliburton and only gave a glancing “cf.” nod to this Court’s earlier decision and General Electric, limiting that precedent to claims whose “potential scope of protection [goes] beyond that which is justified by the specification disclosure.” Id. at 213. By contrast, the decision that Swinehart overruled, Fisher, had applied this Court’s decision in General Electric in rejecting the “‘vice'” of “‘us [ing] conveniently functional language at the exact point of novelty.'” 307 F.2d at 952-53 (quoting 304 US at 371).
    3. The claim construction the Federal Circuit majority adopted produces the very type of functional language that this Court condemned in Halliburton. The construction depended on describing a problem or a result, as opposed to describing a particular way to achieve the result. The “space relationship” of the claim was defined by majority to mean whatever spacing works to remove the electrical signal from the muscles that is interfering with the desired electrical signal from the heart.… In other words, the court held the claim definite because it could discern the function that the claimed “spaced relationship” was intended to perform – even though the patent was agnostic about how to perform it. In the absence of a definite solution to the “which way” problem, the patent should never have issued.

    Inventions are not wish lists. Nor are they recitations of desired results that, if achieved, would be useful, even commercially valuable. Inventions are particular ways of achieving results. In patents are intended to incentivize, by protecting, investments in new and useful ways of achieving results, leading to future innovators the motive and the freedom to invent different, and often better, ways to achieve the same results. Claims that recite only a desired result, but fail to describe particular ways to achieve those results, are indefinite under Halliburton. The Federal Circuit’s attempt to avoid insoluble ambiguity by giving an ambiguous claim a purely functional interpretation is accordingly also contrary to Halliburton. That error should be corrected to ensure that purely functional claiming limitations do not undermine the important notice requirements of the Patent Act.

    1. Again, Ned, briefs that simply do not get things right are not very impressive.

      You seem to be thinking that a brief is somehow a court-approved statement of law.

      Not sure why you appear to think that way.

      1. anon, when are you going to file your brief to tell the Supreme Court that Rich abrogated Halliburton when he got congress to pass 112(f)?

        Are you still convinced that “functional at the point of novelty” is a canard? It seems central to every brief, and not a one, not one, thinks that Rich overruled the Supreme Court.

        1. (sigh)

          It was not Rich, Ned – it was Congress.

          Pay attention.

          And yes, PON is still a canard.
          112(f) is still written in the permissive.

          1. Tour, sure it can.

            Now about 112(f), just what did it overrule given the functional at the point of novelty language appears across 4 or 5 cases, and goes back to Morse?

            MPF and STEP plus function combination claims are authorized. Functionality is not otherwise authorized, so one has to look at the cases.

            Now, Westinghouse construed a functional element in a combination claim to include the corresponding structure, but did not find the claims indefinite. That was in 1898. Perkins Glue, Wabash Appliance, United Carbon and Halliburton all occurred after. The latter cases held functional language at the point of novelty to be indefinite.

            In passing 112(f), why is it reasonable to conclude that functional claims are valid? And, if valid, are they interpreted under Westinghouse.

            None of the briefs I’ve read so far argues fn. 11 of Fuetterer. I wonder why?

            1. You said Congress “abrogated” Halliburton. And so it did, and you admitted that this is proper. End of report.

              A footling footnote from Feutterer fails to fix the fatal flaw in your philosophy.

            2. Functionality is not otherwise authorized

              WRONG Ned

              As I have explained, for this to be the proper read of the 1952 Act of Congress, 112(f) would have had to have been in a ‘must’ mode and not a permissive ‘may’ mode.

              You have come close to the Congressional record, but you have not appreciated that record.

              Read History. Understand History. Or (painfully) repeat History.

            3. Tour, I never said 112(f) abrogated Halliburton. 112(f) authorizes MPF and SPF elements in combination claims. But see below where Rich disagrees. It says nothing about 112(b). It says nothing about claims that are not combination claims, such as claims to compositions or articles. Again, see below where Rich disagrees.

              If you read Halliburton, the court also condemned the use of MPF in connection with old elements. Now that could have set the bar off, as it was widely thought that using functional claiming to describe the old and convention elements of a combination was preferred and necessary. Note, there is nothing in 112(f) to authorize the use of MPF for new elements of an “old” combination — where the function would be expected to distinguish over the art. Rich makes this distinction in Fuetterer, below:

              Fuetterer did not involve MPF, but a claim to a compositon that described one element in terms of its effect:

              “The recitation `inorganic salt that is capable of holding a mixture of said protein and/or carbohydrate in colloidal suspension’ is unduly broad and functional. `Inorganic salt’ reads on literally thousands of materials, many of which would not be operative for applicant’s purpose. For example, some salts could readily react with the other ingredients in the composition while other salts could be corrosive or destructive of the rubber. This recitation is functional since it merely describes how the salt functions as the surface of the tire wears away. It is well established that claims should set out what the materials are and not by what they do.”

              Rich responded:

              “‘Functional’ language in claims is not expressly condemned by the patent statutes. On the contrary, the only portion of Title 35, U.S.C., which makes any reference to the use of statements of function specifically authorizes such use.[8] If 263*263 we are to affirm the Patent Office rejection based on “functionality,” therefore, we must do so on the basis that (1) the type of “functionality” involved here is neither comprehended nor authorized by the third paragraph of 35 U.S.C. § 112 and (2) there exists a body of extra-statutory case law which specifically condemns the type of “functionality” involved in the instant claims.”

              “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;…’

              “The desired result of appellant’s invention is limiting the skidding of a tire tread stock on a wet surface. Appellant, in the claims before us, is not claiming this result. A myriad of alternative means for achieving this result can be easily thought of which would not require the particular combination of substances claimed by appellant. Insofar, therefore, as a “functional” claim may mean one which covers all means of arriving at the desired result, although the means by which such result is obtained is entirely different from that disclosed by the applicant, it is apparent that appellant’s claims are not ‘functional.” [Note, this is whole cloth and without support in the case law, and amounts to a straw man argument.]

              “In the instant case appellant’s “exact point of novelty” is a new combination 264*264 of substances constituting a rubber tire tread stock. ”

              “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.

              “Furthermore, we are also unable to agree with the solicitor when he states that “the last paragraph of 35 U.S.C. § 112 is by its very language limited to claimed combinations involving mechanical structures or apparatus and methods.” 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.”

              “Inasmuch as it is our opinion (1) that there is no statutory ban on the use of the “functional” language employed in the instant claims by appellant; (2) that cases cited in support of the Patent Office’s condemnation of the statements of function used in the instant claims are inapplicable to the situation here; (3) that the use of such functional statements as here appear is specifically sanctioned by the third paragraph of 35 U. S.C. § 112; and (4) that no objection has been made to the sufficiency of appellant’s invention description to support in nonfunctional terms the functional statements made in the claims, we reverse the rejection of the instant claims as functional.”

              The bottom line: If the novelty is in a combination, elements may be expressed functionally. The critical finding here was that the combination was new.

            4. For all your grandstanding here Ned, you fail to address key issues involved in the Congressional record as reflected in the In re Fuetterer case.

              Let’s start with an easy one: the permissive language of 112(f) as opposed to a required language. I have made this point several times now and you remain silent to the fact that your view would necessitate a mandatory “shall” where the Congress chose otherwise with a permissive “may.”

              The words of Congress simply do not support what you want those words to say.

              You are wrong and you need to come to grips with that.

            5. anon at 13.1.1.2.1.4: “For all your grandstanding here Ned, you fail to address key issues involved in the Congressional record as reflected in the In re Fuetterer case…

              The words of Congress simply do not support what you want those words to say.”

              Careful with your citations anon, Fuetterer support’s Ned’s view, not yours.

              Fuetterer says that functional claiming is not per se invalid, which is correct. Fuetterer then went on to say that if the functional language was to be found improper it would have to fit into some legal reasoning against it.

              Fuetterer then went on to find that because a piece of the combination was being described by it’s inherent functional characteristics, and the Supreme Court has specifically considered this as a valid use of functional language (in Wabash, a case you probably find to be abrograted) that there was no issue with the functional language in that case.

              “Let’s start with an easy one: the permissive language of 112(f) as opposed to a required language. I have made this point several times now and you remain silent to the fact that your view would necessitate a mandatory “shall” where the Congress chose otherwise with a permissive “may.””

              The use of the words “may” disprove your point though, and it’s why Halliburton was not abrogated. Congress provided an optional method for claiming that was specifically sanctioned. The previous method was not found to be improper in all cases (which is why you mininterpret the need for ‘shall’ there) but was found to be highly suspect and often improper. It is improper in the way it is being used in software claiming today.

              If Congress had made a mandatory shall, at least you could argue that to the extent you had to ignore 112, 1st and 2nd in order to implement 112,6th you’d have a statutory basis to do so, but instead it made it optional, which means the previous 112 1st and 2nd analysis is still good law.

              These large coporations with their multimillion dollar law firms aren’t submitting briefs based on abrogated law. I don’t give lawyers a lot of credit, but I think they’d maybe know better than that. But maybe I’m wrong, everybody’s wrong. But you. You’re right of course.

            6. Try again, Random – read In re Fuetterer carefully – it does not support Ned’s view at all.

              As I mentioned previously, Ned does not appreciate what In re Fuetterer actually says, nor the Congressional record to which it points.

              Since Ned seems afraid to touch it, perhaps you want to address the fact that 112(f) is written in permissive “may” language instead of mandatory “must” language.

            7. And yes, that record clearly indicates that Halliburton was abrogated.

              As I also said, I am not impressed with briefs that do not get the basics correct – no matter who writes them.

              Or do you think that EVERY argument put forth by “multimillion dollar law firms” is automatically correct? If so, I have a few friends at i4i that would love to beg to differ.

            8. Anon, you do know that fn. 11 of Fuetterer is dicta? It is simply the CCPA’s opinion, and not the law.

              Moreover, 112(f) itself does not say anything like fn. 11, does it. It does not say that functional claims are now allowed — subject to Westinghouse. It says MPF and STEP plus function claims are allowed.

              The singular question is that has not been answered since ’52 is whether claims, functional at the point of novelty within the meaning of Perkins Glue, Wabash Appliance, United Carbon and Halliburton, but which do not employ the magical words provided by the statute are invalid.

            9. Ned, You do know that I use that dicta to ask you to appreciate the actual law – the law you refuse to appreciate in the Act of 1952, right?

              The case has breadcrumbs for you to follow. Follow them.

              Then will you (finally) address the permissive language of 112(f) and the lack of mandatory language, which your view would necessitate (even as Random is yet again wrong in his understanding)?

              You need to realize that with the avowed abrogation of Halliburton AND the permissive nature of the language actually chosen by Congress, that OTHER ways of using fucntional language are freely open.

              Sorry Ned – Congress is the one that did this – not the Federal Circuit. Congress in 1952.

              That is just the way it is – sad for you, but nonetheless, you must accept this fact.

            10. anon, quote me the language then from the statute that says what you say it says. Quote me the language that says that functional claiming is authorized generally and only means plus function or plus function have to be construed to cover corresponding structure, etc. Because that is your position.

          2. Tourbillion,

            Regardless of what Ned may say, it is common knowledge that such a situation has in fact happened (think Flash of Genius, think common law power to set invention, think Halliburton).

            The better question – and one I have not seen debated by any academics or other pundits – is should such happen – but my ‘should’ includes a twist.

            In my opinion, such should NOT happen – but for a different reason than one that at first blush would meet the eye.

            It is my belief that the ONLY time that the Supreme Court should hear a patent case is when a TRUE constitutional question is in play. A question that would take a constitutional amendment to overturn the Court’s decision.

            Of course, such should be extremely rare – if ever- in occurrence.

            All other cases – and I do mean all other cases should be left at the body of the court that Congress has designated as THE court to bring order to patent law.

            But since we all know that power is addiction and that the Court is highly addicted to its patent power, what are the odds that such would ever happen?

            1. Odds? Lemme see, multiply the odds of Haley’s comet hitting Toledo tomorrow times the odds of “6” ever learning anything times the odds that someday MM will not use vulgar ad hominem attacks, and there it is: the same odds that ObamaCare will “fix” health care. I declare this with 90% confidence. Also I have just filed a patent application on it in connection with zebra fish, in case you were feeling tempted.

              But why do you want to remove patent law from the tender embrace of the Harvard English graduates? Think of all the good the barons have done for us poor serfs in the field. Why, for starters, I present the salubrious doctrine of “abstract idea”, which as everyone knows has provided a model of clarity to know what can even be patented at the outset. And that is even before we talk about the dazzlingly crystalline doctrine of “common sense” when analyzing obviousness.

            2. It is my belief that the ONLY time that the Supreme Court should hear a patent case is when a TRUE constitutional question is in play.

              Pretty sure that 99,999% of the rest of the country would disagree with you about that but thanks for sharing your fantasies with everyone.

              Maybe you can tell everyone why you believe this should be the case? I mean, what policy goal are you hoping to achieve and who will benefit from that? I’m pretty sure we all know the answer already but go ahead and tell everyone about the imaginary sooper dooper important “principle” that you believe is involved in removing the Supreme Court from interpreting Federal statutes when the statutes involve patents.

            3. Maybe you can tell everyone why you believe this should be the case?

              Sure: to keep the nose-of-wax power addicted fingers out of messing up patent law – as they so clearly have.

              Just ask Alice.

              As to who will benefit, that also has an easy answer to your dishonest question. Everyone now who benefits from the patent system and the Quid Pro Quo.

              The interpretation aspect – in line with the authority granted by the Constitution to lie with Congress – has been designated to a particular (independent Article III) court especially geared to bring clarity to patent law. You should note that my suggestion does not remove the Supreme Court from a valid role of adjudicating any true Constitutional questions, thus their appropriate oversight is fully retained. You should also note that the power to set up such inferior courts is also covered by Constitutional authority.

              But please – anytime you want to join the conversation with anything of substantive merit, by all means – please do so.

    2. There is little wonder now with Halliburton back on the table and with the wholesale abandonment by practitioners of “means plus function” in favor of “configured to” and other forms of functional claiming that Hal Wegner puts Nautilus v. Biosig at the very top of his lists of most important patent cases.

      Wow.

      I was not around when Swinehart came down, but some must have wondered then just how the CCPA could overrule the Supreme Court. But, nothing happened and 40 years went bye. People got comfortable. Forgot or never knew about Swinehart. But now the Supreme Court has the case and the Federal Circuit is in deep do-do, and so is everyone else who simply ignored Halliburton or United Carbon or Perkins Glue or Wabash Appliance.

      I had the same gut feeling when State Street Bank came down that the Federal Circuit had gone a step too far. “How can they overrule the Supreme Court?” I asked myself. Well, I was right, they cannot, and it is just a matter of time until they get taken to the woodshed.

      1. (sigh)

        but some must have wondered then just how the CCPA could overrule the Supreme Court.

        Not the case, Ned, It was Congress that did the overruling.

        Pay attention.

    3. The CCPA overturned the rejection, holding that purely functional claiming was a permitted convenience or even “practical necessity”:

      Remember when Newman relied on this alleged “practical necessity” to justify claiming products using product-by-process language?

      How’d that argument turn out?

  8. Could someone tell me what the priority date of this patent is?

    The front of the patent lists 2006 as the earliest priority date. But the first paragraph of the specification seems to go much earlier.

  9. I would think that Wells Fargo should fair well if they file a motion to dismiss because the claimed invention is non statutory.

      1. It reads very close to what was rejected in Bilski and Alice. Same field, same nature of claim, same level of vagueness, broadness, and abstraction.

        Maybe Wells Fargo’s lawyers need a new Cadillac before disposing of the case.

        1. Maybe Wells Fargo’s lawyers need a new Cadillac before disposing of the case.

          Or maybe Wells Fargo needs better lawyers. They do have a bad habit of licensing some of the worst junk that’s out there.

    1. Non statutory? How so? It claims a system that includes a processor and a data store. Sounds like a machine to me.

      Riddle me this Batman, when is a machine not a machine?

          1. it reacts with zebra fish (plagiarizing Night, but that’s just too good not to steal).

            It certainly does illustrate the ignorance and desperation of the pro-softie woftie crowd.

            “Zebra fish!” Yes, please run with that. And when asked to explain what the eff you’re talking about, be sure to simply accuse the questioner of being a communist or “the devil incarnate.” That sort of deep, thoughtful analysis has been working great for you guys so far.

            How are the impeachment proceedings going, by the way? Have any of you managed to remove any judges yet for using the term “monopoly” in a patent decision?

            1. That sort of deep, thoughtful analysis

              LOL – that is definitely deeper and more thoughtful than ANY analysis by Malcolm in which Malcolm does not believe that mere blogging should be intellectually honest as would be necessary in a court.

              Zero credibility for you Malcolm – still.

            2. ANY analysis by Malcolm in which Malcolm does not believe that mere blogging should be intellectually honest as would be necessary in a court.

              Ignoring the word salad and lack of basic writing skills for the moment, does anyone know what the blogtroll is referring to here? It seems to have latched onto another one of those imaginary “admissions” that it habitually twists into a big fat self-serving lie.

              Likewise, does anyone here think that the blogtroll “anon” is capable of identifying exactly what comment it’s referring to and the context in which that comment was made?

              I didn’t think so.

            3. So very AOOTWMDs of you Malcolm.

              A brilliant if not tired and trite rendition of the Vinnie Barbarino “Huh, what?” routine. One of your ‘best’ rhetorical tools.

      1. Les, the form of the claim is irrelevant when the claim is attempting to claim ineligible subject matter.

        So, what is ineligible about a business method?

        At some time, the Supremes are going to have to come to grips with whether a business method ineligible such that the form of the claim is unimportant.

        1. Wrong Ned – the call is not up to the Supremes and they have already said that the view as WRITTEN by Congress is allowed.

          See Pre-Bilksi Congress-written law.
          See Bilski, wherein Stevens attempt to explicitly rewrite the words of Congress FAILED.
          See Post-Bilski, in the AIA, wherein Congress tamper-proofed the approval of business methods as a category.

          You have not addressed any of these points – because you cannot.

          You lose.

          1. anon, gobbledygook. The SC declared the claims in Bilski ineligible. Whatever label you place on those claims, claims of that ilk are ineligible.

            1. The reply of “gobbledygook” is rejected as unresponsive.

              Clearly, what I have posted is true.

              We covered your merry-go-round in great detail, with you finally relenting that the holding of the case was not to business methods.

              This is in the archives my friend.

              Your attempted slide back here and now to go against your own admissions is an instant FAIL.

            2. Clearly, what I have posted is true.

              Bow down, everyone.

              Congress tamper-proofed the approval of business methods as a category.

              LOL. Tell everyone exactly what “business methods” were deemed per se eligible for patenting by Congress and how you know that.

            3. exactly what “business methods” were deemed per se eligible

              Business methods as a category – as I have always stated.

              That is exactly what, Malcolm.

              Man, it really does svck to be you.

            4. Business methods as a category

              Ah, so if the blogtroll can characterize something as a “business method,” then it’s per se eligible.

              Congress does indeed work in mysterious ways.

            5. then it’s per se eligible.

              LOL – nice strawman. No one is saying anything about “per se.”

              What is being said is that the attempt to deny patent eligibility under the 101 category aspect is a Fail.

              Pay attention.

        2. “Les, the form of the claim is irrelevant when the claim is attempting to claim ineligible subject matter.”

          I suppose that statement is true, by definition.

          However, the subject claim is attempting to claim a machine. So, the statement is irrelevant. Machines are eligible subject matter.

          1. Clarity under the law should be the first aim.

            101 has different aspects.

            One of those aspects is the statutory category requirement. As explicitly written (and there is no ambiguity there), the category requirement is an EASY requirement to meet.

            We also have the utility aspect of 101.

            This is separate from the category aspect.

            It is when conflation and obscuring takes place that the ‘implicit’ and ever-changeable policy machinations of an (overly) activist Court are set into play.

            Has anyone really noticed that the entire “abstract” argument is NOT a category argument….?

            Hello? Hello? Anybody home? Huh? Think, McFly! Think!

            (said in the best Old Biff tones)

            1. Les,

              I am saying that the question of a claim to a machine is an easy question – one that hardly even needs to be asked.

              Utility (in most all cases) will likewise be an easy question.

              Where we have ‘policy’ run amuck is in the purposeful conflation and obscuring that goes on in order to try to reach a particular end that has nothing to do with the law as written.

              Clearly, machines are not abstract ideas (not even the specific machine known as a phone).

              Clearly, most machines will be found to be useful (hint, that is why machines are made).

              My post is not critical of you – it is critical of those who would delight in the loss of clarity in order to pursue an agenda.

              It is amazing the lengths some people will go to to have their eyes clenched tight no matter what.

  10. “Now, here’s the trick – after finding that the phrase lacks definiteness, the court next went on to hold that the phrase is not legally indefinite. Rather, there exist a spectrum of definiteness levels, and the forfeiture of patent rights due to indefiniteness (currently) requires extreme indefiniteness”

    Which helps to explain why different people are constantly making different determinations regarding indefiniteness leading to the invalidity of a certain claim. I think we ought to lower that down to one “level” and if you’re in it you get busted. If for no other reason, the simple ability to consistently apply it should be enough.

    1. 6, I think the court was referring to the fact that the inability to construe the claim still is not enough because one must, according to the Federal Circuit, prove that the claim is indefinite by “clear and convincing evidence” without ever really specifying what that means.

      1. Well if they’re buying into that nonsense fine with me. As has been pointed out, indefiniteness is a question of lawlin’s not facts. That means the judge has to lawl, not find on himself some facts such that the evidence for the facts can then be subjected to the C and C standard.

        The courts will eventually find their way through that nonsense. I’m more concerned with the “levels of indefiniteness” and how that sort of helps to make clear why different people so often come to different conclusions of indefiniteness even if they are in fact applying the same standard as another person that came to a different conclusion.

    2. I think we ought to lower that down to one “level”

      All of the ladders in the 6 world of innovation have no rungs.

  11. 1. A system for accumulating credits from a customer account belonging to the customer and managed by an institution and placing the credits into a provider account, comprising:

    a secretary; said secretary with access to including a database accessibly by said secretary, wherein said database includes data identifying the customer, the rounding determinant, the managed institution, and the account;

    said database including instructions authorizing the secretary to access and read the customer account;

    said database including instructions to calculate rounders after receiving a plurality of payment transactions from the customer account and to calculate an excess based on the rounders;

    said database including instructions to withdraw the excess from the customer account;

    said database including instructions to transfer the withdrawn excess to the provider account.

    Pure garbage, of course. Should salting the claim with reference to an old machine (e.g., a typewriter or a computer) make any difference whatsoever? Of course not.

    We have a broken patent system. This is just another poster child.

    Who owns this junk patent anyway, who wrote it in the first place and where was the suit filed?

    1. You got it right, MM. And as Night would say, we just do not understand — that any claim to processing information by anyone is or should be eligible.

      But then he begins to make exceptions.

      First the says that he did not intend to include Music. But he objects to any inquiry that would look at whether the claimed subject matter was within the useful Arts.

      Next he said he did not intend to include pure thought such that we could not sue someone from doing arithmetic in their heads.

      And the beat goes on. He insists that his indefinite definition is not a problem. It is our problem. And if we do not grant every patent he files, he is going to start calling everyone involved an incompetent.

      Night must get on well with examiners.

      1. More Ned-sense (or nonsense).

        I have no problem with a useful inquiry. Go at it.

        Pure thought? What? We are talking about machines processing information. Machines. Processing. Information. Space. Time. Energy. A transformation. Conservation of information is the MOST important law in physics.

        Just to make all my arguments valid:

        “wherein all my arguments are stuck in a ROM.”

        1. Machines. Processing. Information.

          Such machines are ancient. But wait — you want to continue to grant patents on these old machines when they are “instructed” to process data that is no different from any other data except for some arbitrary label assigned to the data by the so-called “inventor”?

          LOL. What a joke. It’s a broken system. And it’s guys like you who broke it.

          Thanks, man. Thanks a lot.

          1. So, there is no difference between detecting a tumor and driving a car?

            What a broken mind you have. You forgot, “wherein my argument is stuck into a ROM.”

            1. So, there is no difference between detecting a tumor and driving a car?

              If you say so. Go ahead and run with that, whatever the heck it means to you. Give the “argument” a fancy name and that’ll make it more persuasive. Call it the “Grand Detection Experiment” or some such nonsense.

              You forgot, “wherein my argument is stuck into a ROM.”

              That’s not my argument. Keep trying, gramps.

            2. Night, are you conceding your argument that information processing is statutory. You seem to when you limit your argument to DOING something useful.

            3. is that the same type of nonsense that since this is a blog and not a court that intellectual honesty is not required?

              Maybe you can tell us when you come down off your drugs.

            4. the “you-are-on-drugs-but-no-actual-response” meme.

              You think you deserve better, TB? Consider getting off the drugs, get some treatment for your pathological lying and other sociopath behavior and maybe those “actual responses” will turn up. They key for you is to learn to consistently write comments that “actually” make sense and can be addressed.

              Of course, you might learn that you are often wrong about most things. That could be awkward. But all you need to do is keep your b.s. over at the echo chamber where you are deeply adored by Uncle Gene.

            5. No one deserves better than Malcolm’s intellectual dishonesty is OK because this is a blog while he accuses others of lying.

              LOL

              AOOTWMDs – always in style with Malcolm.

            6. Malcolm quips “That’s not my argument.

              LOL – as if that matters to you? How many times have your vomited the “repeal judge” line to people completely not associated with any such comment?

              Lovely AOOTWMDs you have.

          2. Lot’s of things are ancient – electrons, protons, neutrons, nearly all elements….

            LOL – that line of “machines are ancient.” (and yet, machines are still a statutory category of invention.

            Go figure.

            1. machines are still a statutory category of invention.

              So are “processes”, as long as you want to play Kindergarten Patent Games. What’s the point, though?

              Can I patent a new method of thinking about how to round up a price and determining what to do with the excess?

              Of course not. But somehow it makes soooooo much difference to the patent teabaggers if we throw in some garbage about automating that process with an old computer.

              I wonder why? Just kidding. We all know why. It’s so otherwise skill-less bottom-feeders who love to grift can continue to grift. You know the kind of people I’m talking about, don’t you “anon”? Of course you do. After all, you’re one of them and so are most of your “friends”.

              Lot’s of things are ancient – electrons, protons, neutrons, nearly all elements

              Everyone loves to laugh at your deep, spiteful retardation, anon. Please keep it up! You do a wonderful job at distilling all the incredible stoopity that is the lifeblood of the ever-grifting Quinnbots.

            2. a strawman of a claim completely in the mind.

              It’s not a strawman, Johnny McPatentfluffer.

              It’s a direct response to your b.s. “argument” that any claim which recites a “machine” is eligible for patenting. Is that too difficult for you to follow?

              I’d draw you a map but you’d just smear some paste on it and try to eat it. Remember what your nurse told you: give the medication some time to work before getting on the computer.

            3. LOL – um for some reason a claim to a machine somehow does not satisfy the statutory requirement element of 101 for ‘machine’ according to the flailings of Malcolm.

              Go figure.

            4. um for some reason a claim to a machine somehow does not satisfy the statutory requirement element of 101 for ‘machine’

              um for some reason the resident blogtroll “anon” is incapable of learning. Is it the drugs? Probably.

            5. Well, I have learned that Malcolm believes that intellectual honesty is not required on blogs, because, well, they are not courts.

              As they say, Malcolm, svcks to be you.

            6. Another falsehood buried in a Malcolm rant: “automating that process with an old computer.” (emphasis added).

              I have asked a simple question that goes to the heart of Malcolm’s nonsense dissembling ‘argument.’ A simple question that he has refused to answer.

              How does an ‘old computer’ – without any change gather a new capability that it never had?

              No straight forward honest answer has EVER been put forward to this simple and to-the-heart-of-the-issue question.

              Malcolm’s “old computer” line is a cornerstone of the “House” fallacy – a fallacy critically debunked.

              The law (see 35 USC 101) clearly allows for improvements to machines. Software that is a machine component, that when added to a machine and provides a new machine with its configuration, a configuration that adds a new capability that is CLEARLY not present in an ‘old computer’ is something that clearly merits patent eligibility. See Nazomi.

              And all the while Malcolm refuses to answer this simple question, he repeatedly trots out a bogus question – a question he knows to be bogus. And he does so because he wears that certain badge of dishonor so proudly – the badge that he believes that intellectual honesty is simply not required for blog posts. He really believes that it is ‘ok’ to dissemble and spin false positions and spurious arguments, knowing that he has refused to account for the fact that the arguments he puts forth have been debunked.

              So what will Malcolm do? Clearly, he will not engage with a simple, straight forward, or honest answer. No, he will either ignore this point (and use the same CRP again), or employ one of his vacuous nonsense rhetorical tools of *click*, meds, “Kenneth,” what the Sam Hill-Vinnie Barbarino “Huh, what?”, run-away techniques.

              So transparent, so trite, so banal, so Malcolm.

          1. Totally at random: art unit 2193: “ELECTRICAL COMPUTERS: ARITHMETIC PROCESSING AND CALCULATING”

            Many more similarly named art units. PTO, what do they know, right Ned?

            You pre-industrial troglodytes really need to get a clue.

            1. PTO, what do they know

              Not much if the granted a patent on the junk claim at issue in this case.

              pre-industrial troglodytes

              LOL. Because rounding up numbers is sooper dooper hi tech! “Call the rocket scientists, mommy! My pencil is flying to the moon — wheeeee!!!! Look at it go!”

            2. Tour, just because the PTO has got is wrong, doesn’t mean that you are right.

              Just recall what happed to he PTO in Myriad.

              And, sir, granting patents on information processing per se has not been statutory since Benson. Merely reciting the claims of Benson as a programmed computer would not ipso factor convert such claims into statutory subject matter.

              I recall the Solicitor General making THAT argument (as well as the argument that Beauregard claims were pe se statutory) to the Supreme Court in Bilski, and almost being laughed off the stage by Roberts.

              The theories of Rich and of IBM, so eagerly adopted by the PTO, are a major problem in patent law. They elevate form over substance and do not even come close to passing a smell test. Their reek is legendary.

            3. Ned, just because you say so, the PTO is not wrong. As much as I esteem and respect your remaining acuity, and at the risk of being beastly conventional, until Congress or the Court says otherwise, I’m going with the PTO. Not you.

      2. Pretty darn sure that “ But he objects to any inquiry that would look at whether the claimed subject matter was within the useful Arts.” is a complete fabrication.

        Ned, you are aware that business method patents have been approved by each and every branch of the government, right? That clearly business methods are within the Useful Arts, right?

        1. anon, 4 out of 9 would have held business methods non statutory as not within the useful Arts. But a final decision on this issue has never been made by the Supreme Court and you know it.

          1. And again Ned – Stevens lost his position as writing the majority position because he would have had to explicitly rewrite the words of Congress.

            Your “final decision” comment is vapid and meaningless – is there ever a “final decision” on anything?

        2. Your comment recalls a scene in House of Cards where the tribal chief visits capitol hill and they have to turn the portrait of Andrew Jackson to face the wall.

          Yes the days of Andy Jackson invading Spanish Florida to wipe out every living native American and fled slave are recalled with fondness by all blacks and native Americans.

          1. For some reason, I find myself completely unsurprised at your reference to early 19th century history. It is, after all, where you and your splenetic allies still live, isn’t it?

            But on a positive note, at least the knee britches-and-weskit crowd appear to have mastered enough familiarity with the information age that they are able to contrive a way to enter comments, however obtuse and benighted, onto these new-fangled “Internet” “blogs”. So well done and good show, and as a reward I’ll pass along a nifty tidbit you’ll enjoy: at “www.amazon.com” you can all buy mashies, niblets, and baffing spoons for your next round of golf. Assuming the entire foursome is still sentient. You might hurry.

        3. Sounds like an out of bounds comment to me.

          LOL. Yes, it must hurt you and “anon” deeply when you’re “it’s always been this way” table-pounding b.s. is called out for the ten thousandth time.

          Sorry for the interruption, folks. We now return you to the regular scheduled child-approved programming where NWPA and anon will debate whether Professor Mark Lemley is in fact “the devil incarnate”.

          1. When you have the law, pound the law.
            When you have the facts, pound the facts.

            When you have neither, you pound the table.

            Lovely AOOTWMD with the table pounding reference.

            Go figure.

          2. ” NWPA and anon will debate whether Professor Mark Lemley is in fact “the devil incarnate”.”

            I can settle that debate. Lemley is no Walter White and he never will be.

          3. How about a more realistic debate:

            Has Lemley violated ethical standards of Stanford and state bars by not citing cases and articles that are directly contradictory to his stated opinions.

            Are Lemley’s articles academic or polemics written by a person that is cashing in big time by taking his positions?

            In other words is there anything that Lemley says or publishes that should be trusted?

            1. Night, I think the problem with Lemley’s articles start with the fact that they are advocacy articles and not purely academic. He has a point of view and whether that is his own or whether it is inspired by his clients, it is irrelevant. People should take his writings with a grain of salt because they are advocacy pieces as opposed to being academic pieces.

            2. As long as the topic of ethics is on the table, I will reiterate my position that academics that practice have a higher – even doubly higher – standard of ethics to maintain.

              They are both advocating AND taking an ‘objective’ academic view. Normal ethical considerations of the appearance of impropriety are almost necessarily implicated, and the inevitable – even desired effect of the writings being used in court demand a treatment of intellectual honesty (including recognition of controlling law) that exceeds either writing in court alone, or writing that is used to teach nascent would-be attorneys of tomorrow.

              I begrudge no one the availability (or capacity) of working in both academia and in the non-ivory tower world. I do begrudge the apparent taint of unethical advocating under cloak of academic posturing. Yes, a higher standard is more demanding – but it is a choice of influence in being in both worlds that should come with a more exacting premium.

  12. If they had only put in a claim to a ROM, then the whole thing would be fine. You just need that ROM.

    1. I am now putting in a dependent claim “wherein the whole darn thing is stuck in a ROM to make it physical.”

      1. I am now putting in a dependent claim “wherein the whole darn thing is stuck in a ROM to make it physical.”

        That’s pretty much how you guys roll. Super technical stuff. It’s like rocket science, where your pencil is a rocket. “Look, mommy! It’s taking off!” And the PTO pats you on the head and you go out and sue people.

        1. Opposed to you guys that randomly make new molecules and then run them through aquariums to see if they react with zebra fish.

          Information processing is hard stuff MM. Hard. Tough. Way above your IQ level. But, don’t worry just put it in a ROM and you’re good.

          1. Opposed to you guys that randomly make new molecules and then run them through aquariums to see if they react with zebra fish.

            LOL. Where’s your li’l buddy “anon” to weep and cry about the 1952 patent act now?

        2. MM, I too am about fed up to here with the likes of Night who is a one-trick pony, and as phony as all get out.

          The frightening thing is, there are a lot of the bar who think just as he — and that is scary.

          1. One trick pony? I think what you are fed up with is being called out on making absurd arguments that are an offense to our civilization.

            Just stick it in a ROM! Man, that is such nonsense that no one should have to endure it. Offensive.

            1. Night, let me say it one more time.

              “Information processing” is non statutory.

              You argue here constantly that it is; and never once engage anyone in any real conversation about the topic. If they disagree with you, you begin to call them names.

            2. Prof Crouch,

              My guess is the dull repetitious of a pointless statement repeated ad vomitum.

              You know, pretty much trying to fit in with Ned and Malcolm.

            3. Professor DC,

              It is offensive for Ned to say that information processing machines are eligible under 101 as long as they include a ROM with all the functionality. It insults our intelligence and has nothing to do with the state of the art. It is a insult that is meant to play to the ignorant masses. Here judges you can say this and the ignorant masses will buy it and you can build a wall around it. Let those with an education scream as they will the ignorant masses will come after them. (Like 6.)

            4. Night, you will note that that I did not say that “information processing machines” are not eligible under section 101. I did not discuss machines at all.

              My position is that if a computer is modified with new programming that becomes part of the machine such that the machine with the new programming actually is doing something internally different, then machine in fact is a new machine. Take Benson for example, had the claims been limited to a computer having embedded within it the capability defined by the mathematics since that the calculations were automatic when certain instructions were issued, I would think that a new machine would’ve been defined.

              In contrast, simply using a generic computer to calculate the math is not enough. There is no new machine there. The machine is not modified. The machine is simply used.

            5. Ned,

              I do notice that you also do not discuss manufactures – completely eligible in their own right.

              I do notice that you also do not discuss the required change in machine that must happen prior to any use – again, all of the points that I provide to you and that you constantly run away from.

              Please stop running away.

            6. Ned, what it comes down to is you are not intellectually honest. You are running games. I don’t trust any of your posts because I cannot be sure if you have left out an important case or intentionally misrepresented an important case.

              Whatever else I am, I still have my integrity.

          2. Ned,

            Do you get fed up with the phoniness of those who say they answer questions but do not?

            Do you get fed up with the phoniness of those who try to make abrogated case law controlling law?

            Do you get fed up with the phoniness of those who are on constant Crusades against business methods and software patents?

            Do you get fed up with the phoniness of those who Accuse Others Of That Which (M)They Do?

            Do you get fed up with the phoniness of those who refuse to post in intellectually honest manners because they believe that such is not required on blogs (because a blog is not a court)?

  13. I understand that there is new patent application drafting software available. First it takes every claim term comprising a noun and its adjectives and allows the patent attorney to enter a definition. It then scrambles the terms and definitions, and rewrites the claims and specification accordingly.

      1. No, Night, the purpose to show the craziness of that recent case that used a claim term ‘non volatile” that had a well known meaning in a completely different way from its ordinary meaning in the spec.

        Then we get the Federal Circuit saying that the claim was not indefinite because the term nonvolatile had a well-defined meaning, somewhat ignoring the fact that meaning was not used in the specification.

        Thus if we first make a list terms and their corresponding definitions, and then scramble the terms and definitions so that the terms are defined but not in any way related to their ordinary meaning, the court would necessarily find that the claim is definite because the claim terms have an ordinary meaning, and yet the claims (and specification) will be all but completely incomprehensible because they will be effectively written in a sui-generis language.

        1. Or if we take a list of your arguments and scramble them up to make new words, then we may (1 in trillion trillion shot) have an argument that isn’t an insult to our intelligence.

        2. Ned, frankly, you are offensive to society. An offensive to our intelligence. My only comment to your is f*** off d***.

          1. Night, obviously you have a hard time dealing with people who disagree with you. You might want to see some professional about this.

            1. I have a hard time dealing with people that pollute our discussions. You are not intellectually honest. If you said, those things shouldn’t be eligible and made your best arguments, and were intellectually honest about the technology and law, I’d respect you.

            2. “intellectually honest”

              NWPA, why do you suppose a non-academic would strive to use an academic method of problem solving like “intellectual honesty”?

            3. 6 is merely kicking up dust from his own ‘search’ and redefining ‘intellectual honesty’ to somehow only apply to the academic world (thus buying into Malcolm’s master self-FAIL tactic of destroying credibility by wanting to post WHATEVER with no relation to any need for veracity or other ethical considerations).

            4. “It has to do with that thing called being an attorney and professional ethics and various duties we have to the court.”

              Attorneys are not necessarily academics. So why would attorneys utilize an academic “applied method of problem solving” (what “intellectual honesty” is by definition) just because they are attorneys and have professional ethical duties to a court? Applied methods of problem solving don’t seem to have anything to do with the current topic, or generally to non-academic discussions re patent law in general.

              Or are you just using the term wrong because you don’t know what it actually means/is?

              link to en.wikipedia.org

            5. “6 is merely kicking up dust from his own ‘search’”

              Anon, you can feel free to do your own search and/or tell us what you and other tards have as a definition for the term you bandy about. Feel free brosef. If you guys were to, I don’t know, speak English when you talk rather than making up your own terminology, or misusing known terminology from arts that aren’t your own, on the fly then we could all communicate much better and easier. I mean, I’m all ears, you guys can go ahead and help us out as to what you consider “intellectual honesty” to be and why it is so important that all of us display it in our posts.

  14. Here’s the opinion for those who’d like to read it before commenting.

    If the true test of definiteness is whether the claim is so insolubly indefinite that it is not amenable to claim construction, then for a claim that is not indefinite, the district court should be able to tell us what that construction is. Instead, they get right up to the very end of their analysis, and they punt instead.

    1. Whichever (of the many) elements “the account” denotes is inconsequential. A reader of the patent – using the claim and the specification, the parts cited above and others – is able to adequately understand the contents of the data store and the claim as a whole.

      LOL. The magistrate’s overriding message seems to be “this claim is about using a computer to round numbers up and manipulate a database so why are we quibbling about claim terms?”

      The discussion about whether a bank is a “managed institution” as opposed to a “managing institution” is also fascinating.

      Chef America weeps for the broken U.S. patent system.

    2. APoTU, When the court says that one must prove indefinites by “clear and convincing evidence,” what do you think it means by “evidence?”

      1. Ned, you well know that this issue is highly confused. The clear and convincing evidence requirement is a standard associated with making factual determinations. However, as I mentioned above, indefiniteness is a question of law. In that sense, any underlying factual determinations favoring a finding of indefiniteness should be built on C&C evidence. This issue becomes even more confused if we truly consider the indefiniteness decision to be a part of claim construction.

        1. The fact thing is confusing. I find Reference 1 disclosing X. An example of a finding of fact. I find expert Ned is unreliable because he is not contained in a ROM.

          What other findings of facts have you seen?

        2. That hearkens back to Justice Breyer’s concurrence in Microsoft v. i4i (joined by Scalia and Alito) that the clear and convincing evidence standard of proof “applies to questions of fact and not to questions of law,” such as indefiniteness.

          I wonder if this will come out in the Nautilus decision. Was it discussed in the briefs; I haven’t followed.

            1. You obviously have a wide knowledge of patent law, but who can trust anyone that comes up with the everything is fine as long as you put it in a ROM.

  15. EPC’s invention is software for rounding-up credit and debit transactions to the nearest dollar and then putting the extra money to a special use. See U.S. Patent 8,025,217.

    We have a broken patent system.

    These errors – which say nothing of the drafter’s grammatical and syntactical incompetence and bemusing judgment – confirm that “account” lacking an “s” by mistake accords with the level of compositional adroitness and dexterity that pervades the patent.

    Good lord what a sad pathetic joke this is.

  16. I must say that when I saw the post title my knee-jerk reaction was “what the…”, but after reading it I agree with the conclusions of the judge to the extent that despite the lack of clarity of the term, it is still possible to construe the claim easily.

    Although the outcome of two cases may be linked, I find the situation here quite different from Nautilus: instead of defining a result to be achieved, “account” is merely a broad term, which can be interpreted in many possible – but definite – ways. However, it is also true that not all claim ambiguities are so amenable to resolution, so the standard for indefiniteness should allow at least this amount of “cleaning up”.

    As an aside, when I read the sentence “software for rounding-up credit and debit transactions to the nearest dollar and then putting the extra money to a special use” I could not help but recall this 1983 prior art:
    link to youtu.be

    1. the standard for indefiniteness should allow at least this amount of “cleaning up”.

      Is this the sort of error that can be corrected with a Certificate of Correction? Or do you have to sue somebody first?

  17. I disagree with the legal standard. However, the result here was correct. The “account” information of the data store does not appear to be used later in the claim for anything. It is thus just a “label” of sorts that serves to identify the claimed data store.

    Regarding the legal standard, what is the “evidence” that must be adduced to prove indefiniteness. None, I suggest. It is just a slogan the Federal Circuit uses essentially take indefiniteness out of the law.

    1. Ned The “account” information of the data store does not appear to be used later in the claim for anything.

      That’s the problem. What is this “account”? How do I know if I’m infringing?

      It is thus just a “label” of sorts that serves to identify the claimed data store.

      Of course it’s “just a label”, like everything else in this total cr*p claim. The only structure in the claim is an old computer. Everything else is just data with “new” labels.

      Yes, folks, computers will process information that you program them to process. It’s really hard to believe, I know, given that computers were invented just yesterday, or so the Federal Circuit and the PTO would have you believe.

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