By Dennis Crouch
Nautilus v. Biosig (Supreme Court 2014) [Transcript of Oral Arguments]
On April 28, 2014, the Supreme Court heard oral arguments in the important indefiniteness case concerning a fitness monitor patent. In my estimation, most issued patents have claim terms that are arguably indefinite. The usual litigation resolution of that problem is through the process of claim construction. The patent statute requires A patent can be held invalid as indefinite under 35 U.S.C. §112(b) for failing to “particularly point[] out and distinctly claim[]” the invention. However, the Federal Circuit has repeatedly found that the invalid-as-indefinite doctrine is quite narrow and only applies when a term is “insolubly ambiguous” and when “reasonable efforts at claim construction result in a definition that does not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim.”
The result of this policy is that it provides patentees an incentive to seek a claimset that includes some “solubly” ambiguous terms that create colorable infringement argument and whose scope retains malleability. We only learn the true scope of a claim once it is interpreted in court – an often only after an appeal to the Federal Circuit. One approach to push against this downward spiral would be to follow the contract canon of construing claims against the drafter. Another approach is what Nautilus suggests – make it easier to invalidate claims on indefiniteness grounds. At the same time, lowering the standard could open the door to a new intensity of linguistic-noodling by accused infringers.
In this case, two questions are presented:
1. Does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations—so long as the ambiguity is not “insoluble” by a court—defeat the statutory requirement of particular and distinct patent claiming?
2. Does the presumption of validity dilute the requirement of particular and distinct patent claiming?
Claim construction is an issue in the vast majority of patent infringement lawsuits and, over the years, the Federal Circuit has altered a district court’s claim construction in hundreds of different cases. In many of those, the district court’s opinion was a reasonable interpretation of the claim scope even if not what the Federal Circuit saw as the very best interpretation. In that framework, it is easy to see how the Nautilus focus on “multiple reasonable interpretations” could have a dramatic impact on the validity since all of those claims would seemingly be invalidated based upon the existence of multiple reasonable interpretations.
Predicting Outcome: The oral arguments suggest that the Federal Circuit’s “insolubly ambiguous” test will be thrown out as too strict. However, none of the Justices appeared interested in the seemingly too loose rule that would invalidate claims that are open to multiple reasonable interpretations. The middle ground of requiring claim scope be of “reasonable certainty” seems to be the likely course.
The claim term at issue in this case involves two electrodes of a heart monitor being in a “spaced relationship” with each other. The district court held that term indefinite because the patent did not include any parameters as to the scope of that space. On appeal, the Federal Circuit reversed, determining that the term was amenable to construction since the purpose of the space was recited in a whereby clause (to help remove EMG signals coming from a single hand). In particular, the court held that the term had an upper and lower bound: each half must be held within a hand and it cannot physically be infinitesimally small. Now, one interesting aspect that relates to prior functional-claim cases is that on reexamination, the examiner found that the functional whereby clause to be the crucial limitation that made the claim patentable. Federal Circuit cited and discussed Halliburton. However, the court did not address the Taboo against functional element at the point of novelty but instead cited to a list of Federal Circuit decisions holding that functional claim limitations are just fine.
The arguments: Patent litigator John Vandenberg argued on behalf of the petitioner Nautilus while appellate specialist Mark Harris argued for the patentee Biosig. Harris shared time with US Assistant Solicitor Curtis Gannon as amicus. Overall, the oral arguments were not highly elucidating the one major area of new ground covered was an analogy to Chevron analysis whose first step is to determine whether a statute is ambiguous (or silent) as to a particular issue. In Chevron, statutory ambiguity allows government agencies more leeway in interpreting the law. In this context, the ambiguity would lead to a patent being held invalid. However, the court was clearly not comfortable with that test essentially because it is too loose for the resulting reaction (patent invalidity). Of course, invalidating a patent claim does not involve the same level of drama as invalidating a congressionally mandated statute. Apart from the constitutional-political issues, the patent claim being invalidated is typically one of many claims within the patent and that patent is one of many covering the accused activity. In addition, unlike statutes, the party benefiting most from the patent has full control of the language used in the patent grant.
In the oral arguments, Vandenberg makes two compelling points: (1) that ambiguity in the patents is intentional but not justified; and (2) that its requested rule is parallel to that already applied by the USPTO:
MR. VANDENBERG: I think it’s important to remember here that there is no legitimate need or excuse for ambiguity in patent claims. Once the applicant has satisfied paragraph one [of section 112] and its strict requirements for describing the invention, it is easy to claim the invention particularly and distinctly. The only reason that there are so many ambiguous claims out there today is that patent attorneys are trained to deliberately include ambiguous claims. Ambiguous claims make the patent monopoly more valuable. Every patent attorney knows that. . . .
There is no legitimate need for ambiguous claims. There is a strong economic incentive for patent attorneys to draft ambiguous claims, not to put all their eggs in that basket. They want some clear claims in case some copyist comes along, but they want ambiguous claims so they can their client can treat it as a nose of wax later, as happened here. That is well established in the patent bar, that there is this strong economic incentive. But patent attorneys have ample tools to avoid ambiguous claims if this Court tells them that it will no longer be permitted. That that is the key here, is that there’s a strong economic incentive. The patent attorney and the inventor are in the best position to avoid the ambiguity that Congress prohibits and therefore, the problem is, the Federal Circuit has blessed ambiguity with its test. And in order to stop all of the problems that the amici have pointed out that are caused by ambiguous claims, we submit this Court needs to be clear and go back to United Carbon and General Electric and to the statutory text and be clear that ambiguity is simply not permitted.
After a bit of dancing, Vandenberg began to hit his stride in a discussion with Justice Kennedy:
JUSTICE KENNEDY: Do you agree that the standard at the PTO, and let’s say that it’s whether or not the claim is definite if a person skilled in the art would be reasonably certain of its scope. Is the standard used by the PTO the same standard that the CA Fed ought to use?
MR. VANDENBERG: Yes, it is, Your Honor.
JUSTICE KENNEDY: All right, that’s a sensible answer, I think. Now, how does the presumption of validity bear on the application of that same standard in the court of appeals?
MR. VANDENBERG: The presumption of validity certain applies to this defense. It requires the challenger to raise the defense, to preserve the defense, plead it as affirmative defense, to make the initial argument as to why the claim is
JUSTICE KENNEDY: Doesn’t that imply some deference on findings of fact?
MR. VANDENBERG: Your Honor, it would be rare for there to be, in an indefiniteness case, to be any underlying finding of fact. The the issue of indefiniteness is really subsidiary.
JUSTICE KENNEDY: That is, the presumption of validity, does that accord some deference to the PTO? And how would that apply or not apply here?
MR. VANDENBERG: It would apply it does not apply in this case. There are no fact findings out of the Patent Office regarding indefiniteness. But if there was the same indefiniteness issue came up and the Patent Office found, for instance, that a term of art, let’s say nanotechnology, biotechnology term of art had a particular meaning, then that factfinding may be entitled to deference by the trial court.
However, indefiniteness itself is a legal determination. The Federal Circuit said that.
JUSTICE KENNEDY: So there’s no deference to the PTO as to that legal interpretation.
MR. VANDENBERG: No, Your Honor, no more than there’d be deference to the Patent Office claim construction or any other legal decision.
Mr. Harris began his argument defending the Federal Circuit, but immediately ran from the insolubly ambiguous language of that decision.
MR. HARRIS: The decision of the Federal Circuit should be affirmed for two reasons: First, that court correctly held that the test for definiteness is whether a claim puts a skilled artisan on reasonable notice of the boundaries of the invention, and secondly, whatever
JUSTICE SCALIA: If that’s what it held we wouldn’t have taken this case. I thought we took it because [the Federal Circuit used] some really extravagant language.
I mean, it’s one thing to run away from that language, as your brief does. It’s another thing to deny that it exists.
MR. HARRIS: Justice Scalia, we are not denying that those words exist, “insolubly ambiguous,” but what I think this court below, the Federal Circuit, in this case explained, and it’s explained consistently, is that that those two words are not the test all by themselves.
CHIEF JUSTICE ROBERTS: So it was fair, as I suggested earlier, nobody agrees with that formulation [of insolubly ambiguous]?
MR. HARRIS: Yes, I guess so, Your Honor. . . .
Beyond the particular quibble over language, Harris seems to provide a convincing case that, even under a lower standard, the Biosig claims are still definite because of the uncontroverted evidence provided that one skilled in the art at the time would have been able to understand the meaning of the claim.
The role of the US Government in this case is interesting because it is in some tension with President Obama’s ongoing initiatives to push for clarity in claim scope. However, Gannon (from USDOJ) did argue that the presumption of validity should not play a role in the claim construction process. And rather that the resulting validity of a claim should not impact which construction is chosen.
The oral hearing comments by Mr. Vandenburg castigating patent prosecution attorneys were fascinating. I saw two bases for his attack on prosecution attorneys as scurrilous masters of deceit and chicanery preying on defenseless multi-billion dollar multinational corporations.
First if Mr. Vandenburg has prepared and prosecuted patent applications (I didn’t bother to check), his argument was confessional. And I would agree that he came to the right court to receive exculpation and redemption. That said, however, unless my recollection of the law surrounding the McCarthy hearings is rusty, guilt by association has never been recognized as a proper basis for culpability. So it is possible he is the only, if not one of a select few, that are sufficiently amoral as to consciously conjure patent claims that are used to practice extortion.
Conversely, if he has never prepared and prosecuted patent applications, given his strident statements about how these patent prosecution brigands are all gaming the system by intentionally writing vague claims seems to lack evidence. One would think that he would have at least offered some sociological surveys in the tradition of Brown v. Board of Education. Surely that repository of anti-patent policy, Harvard, would have provided some sociology professors, who would share corporate sponsorship with congressional lobbyists, and establish that patent application prosecutors have formed a conspiracy to fleece putative patent infringers.
Having many years ago been a patent prosecution attorney, I can testify to the fact that I have met many colleagues, who by all outward appearances, seemed to be honest upright citizens, though I confess I had no idea what they may have done in the late hours of night. Having struggled to find words to express many an invention, I am led to suggest that the indefiniteness problem may be a matter of intellectual challenge, rather than chicanery. And I suspect that Mr. Vandenburg, having never drafted a claim, may not have the intellectual capacity to successfully confront the challenge, and thus panders to a court with no objectivity as to patents by an attack on those prosecution attorney rascals. Better to bamboozle the Supreme Court with rhetorical flourishes as an appellate lawyer than to engage in assisting inventors in procuring their right to intellectual property. But that is where, I suppose, the money is.
Paul, this is not a new problem. Let’s quote some ancient sources, first Curtis. beginning at Section 229:
§229. To describe the subject-matter, or what the patentee claims to have invented, so as to enable the public to know what his claim is.
Whether the patentee has done this, in a given case, is, as we
have seen, generally a question of law for the court, on the construction
of the patent. It is not necessary that the language employed should be technical, or scientifically accurate, although at
the same time it must not mislead. If the terms made use of
will enable the court to ascertain clearly, by fair interpretation,
what the party intends to claim, an inaccuracy or imperfection in
the language will not vitiate the specification. But it must appear
with reasonable certainty what the party intends to claim; for it is not to be left to minute references and conjectures, as to
what was previously known or unknown; since the question is
not what was before known, but what the patentee claims as new.
If the patentee has left it wholly ambiguous and uncertain, s0
loosely defined, and so inaccurately expressed, that the court cannot,
upon fair interpretation of the words, and without resorting
to mere vague conjecture of invention, gather what the invention
is, then the patent is void for this defect. But if the court can
clearly see what is the nature and extent of the claim, by a reasonable
use of the means of interpretation of the language used, then,
it is said, the patentee is entitled to the benefit of it, however imperfectly and inartificially he may have expressed himself. For
this purpose, phrases standing alone are not to be singled out, but
the whole is to be taken in connection.
…
§234. “…if the patentee states the substances which be makes use of himself, and there are still other substances which will produce the effect, and he claims them, by a generic description, as comprehended within his invention, his claim will not be void for ambiguity, or too broad for his invention, provided the combination is new in respect to all the substances thus referred to.
…
§242. “The duty of determining what the claim of the patentee
is involves the necessity of determining whether the description in
the specification discloses a patentable subject. The real invention
may be a patentable subject; but at the same time it may be
claimed in such a way as to appear to be a mere function, or abstract
principle, which it will be the duty of the court to declare is
not patentable; whereas” if it had been described differently, it
would have been seen to be a claim for a principle or function embodied in a particular organization of matter for a particular purpose, which is patentable.”
Next, Walker on Patents, §116: “It is a practice of many solicitors of patents to write claims in vague phraseology, with an idea that vagueness is elasticity, and that elasticity is excellence. Such a practice is neither honest nor expedient. It is not honest, because it is often intended, and always adapted to deceive the public, and to lead individuals into unintended infringement. It is not expedient, because dishonesty is bad policy and matters of patents, as in all other human affairs, and because vagueness of claims may make a patent void which would otherwise be valid.
It is the practice of many other solicitors the patents to write claims and loose phraseology, because they do not know how to write precise sentences. By multiplying words, they hope to hit the mark, on the same principle that the user of a shotgun hopes to hit a solitary bird. But the principles that apply to shotguns do not apply to rhetoric. The true rhetorician uses a rifle, not a blunderbuss. With him every word hits its target, because it is adapted to do so, and because he knows how to aim it.”
Dennis, “Federal Circuit cited and discussed Halliburton. However, the court did not address the Taboo against functional element at the point of novelty but instead cited to a list of Federal Circuit decisions holding that functional claim limitations are just fine.”
Dennis you might want to revise your remarks because what you say here is a complete embarrassment. The Federal Circuit did cite Halliburton, but not the famous Supreme Court case, Halliburton Oil Well Cementing Co. v. Walker , 329 U.S. 1, 67 S. Ct. 6, 91 L. Ed. 3 (1946), but one of its own cases Halliburton Energy Services, Inc. v. M-I LLC , 514 F.3d 1244, 1249 (Fed. Cir. 2008).
And I might also suggest you review the prosecution history in the re-examination: 90/010366. If you are like me, you will be enraged. Just for example, expert opinion reports were filed stating the invention worked as claimed without any description of the test procedures used so that one could verify the test results. I would suggest that such an affidavit is borderline fraud on the patent office.
When this case is remanded back to the District Court, this is one case I would hope where the District Court would award attorney’s fees to the defendant because of all the sharp practices exhibited by the patent owner.
The patent owner does not have a case and why he is even arguing at the Supreme Court, not having settled, is beyond imagining.
“without any description of the test procedures used so that one could verify the test results”
Hmmm, would a person having ordinary skill in the art to which the invention pertains readily know such tests..?
…and if so, I think the only problem that might arise with leaving out such tests is if a number of different tests exist that would give contradictory results.
(witness the trailing edge of super-empowering PHOSITA that the KSR decision created)
Anon, the affidavit cited by the examiner that persuaded him was the affidavit of the inventor/president of the patent owner. He testified that the EMG signals from each hand were different, and that the shape, size, materials and spacing of the electrodes all had to be adjusted to remove EMG signals.
The prior art disclosed a pair of spaced electrodes, electrically connected in the very same way to a difference amplifier as claimed. Thus the only difference between the claim and the prior art was the requirement that the EMG signals of the left and right hand be balanced such that when they are fed to a difference amplifier they cancel out.
However, the patent does not even say that anything has to be adjusted to achieve balanced EMG signals, let alone what is important to adjust to balance signals. Furthermore, spacing is not the only factor that must be adjusted according to the affidavit filed in the patent office, and it seems that the spacing from each hand must be different.
Neither the specification nor the claimed invention discuss that the EMG signals of each hand are different, nor what must be adjusted to remove EMG signals, nor give any examples of how to do it. One is left only to reverse engineer one of BioSig’s commercial apparatus to determine what they actually did to remove the signals, and what was most critical and important. Spacing alone though is insufficient.
What we’re left with is a disclosure and a claimed invention that squarely reads on the prior art and if there’s any novelty in making adjustments of the apparatus to remove EMG signals, there is not a hint of that in the specification, and certainly that subject matter is not claimed.
Even if the subject matter were otherwise enabled, there simply is no written description that one has to adjust anything to achieve balanced EMG signals. The argument made in the patent office is far beyond the disclosure of the specification, and should never have been allowed to persuade the examiner. One should not be able to distinguished prior art based solely on properties or functions that are otherwise inherent in the prior art given that structure claimed is the same.
Sounds like you did your homework, Ned! Thanks for this info.
“The prior art disclosed a pair of spaced electrodes, electrically connected in the very same way to a difference amplifier as claimed”
If that is indeed the only difference, then the examiner muffed it on inherency.
This though does not change a thing as far as any absence of a test.
I have not checked, but what did the claims as filed indicate? If in addition to the inherency problem (which speaks against any added matter problem, by the way), or perhaps more appropriately, in place of an inherency problem, there is added matter, then that too is an examiner muff.
Someone will have to explain to me why the patentee gets the benefit of the ambiguity. They had an opportunity to say what their invention is. And then it is strict liability for the infringer who had no say in the original drafting.
I am glad that Court seem ready to toss the Fed. Cir.’s insolubly ambiguous. But disputes among experts with seemingly reasonable constructions that affect validity or infringement should be construed against the patentee in each and every case.
I just think the facts of this case don’t make good law. I do think that “spaced relationship” is indefinite because it could encompass both valid and invalid embodiments. The inventors knew what they had, they could have claimed it. They didn’t. They claimed something more by trying to be sneaky with words. They shouldn’t get the benefit of that.
I do think that “spaced relationship” is indefinite because it could encompass both valid and invalid embodiments.
When you phrase it that way, it sounds like you are confusing indefiniteness with enablement (and maybe you are).
I might put it a different way (although I’m not entirely convinced that it’s winning argument here): the term “spaced relationship” is indefinite in the context of the claimed invention because (and particularly where the term was expressly relied on to overcome the prior art) the critical parameters for determining the reasonable bounds of the “spaced relationship” were not recited in the application as filed.
The lesson for application drafters being: if there’s any chance (and there is an ever-increasing likelihood) for a functional term to be challenged as indefinite, have some support in the specification explaining the purpose of the claim element and, in as much detail as seems necessary given the criticality of the element to claim validity, how to determine whether a particular result of a test for functionalty does or does not satisfy the stated functionality. Provide multiple likely contexts for performing any necessary experiments (especially if the claim is open-ended and different contexts are readily envisionable).
As I’ve noted already, the claim at issue in this case seems relatively “definite” compared to some of the worst regular offenders out there (e.g., highly subjective terms relating to “user satisfaction”, “relevance”, “appropriate” and the like. <— guess which art unit?
It could be an enablement issue, but that puts form over substance. The result of picking the language is two plausible readings: one that covers working embodiments and one that covers working and non-working embodiments. The result of one reading is that the patentee wrote the claim in such a way that he or she gets the maximum benefit.
I’d argue that the trade off for that is that the claims are construed against him or her. In this case, I think there’s a decent argument that it should result in an invalid claim because the inventor failed to enable it.
I think this case doesn’t present super great facts because I’ve seen a lot of closer calls where the courts work to PRESERVE the validity in the face of competing claim constructions.
mmm,
The phrase “puts form over substance” is not one I trust from an apparent neophyte to the law.
You are aware of course that a claim is still valid even if it reads on some non-working embodiments, right?
The phrase “puts form over substance” is not one I trust from an apparent neophyte to the law
But everybody should trust comments from a nxtcase like Tr00lboy.
Most assuredly. For one, unlike you, I think that intellectual honesty is required for blog posts on a social media mechanism that is used for legal advocacy.
How’s that intellectual dishonesty plank of yours working for you Malcolm?
(hint: not very well)
Seems you’ve put your words in the wrong order Dennis, let me straighten them out for you:
1 – “Now, one interesting aspect that relates to prior functional-claim cases is that on reexamination, the examiner found that the functional whereby clause to be the crucial limitation that made the claim patentable. Federal Circuit cited and discussed Halliburton. However, the court did not address the Taboo against functional element at the point of novelty but instead cited to a list of Federal Circuit decisions holding that functional claim limitations are just fine.”
2 – “The claim term at issue in this case involves two electrodes of a heart monitor being in a “spaced relationship” with each other…On appeal, the Federal Circuit reversed, determining that the term was amenable to construction since the purpose of the space was recited in a [functional language] whereby clause (to help remove EMG signals coming from a single hand).”
3 – “JUSTICE KENNEDY: Doesn’t that imply some deference on findings of fact?
MR. VANDENBERG: Your Honor, it would be rare for there to be, in an indefiniteness case, to be any underlying finding of fact. The the issue of indefiniteness is really subsidiary.
JUSTICE KENNEDY: That is, the presumption of validity, does that accord some deference to the PTO? And how would that apply or not apply here?
MR. VANDENBERG: It would apply it does not apply in this case. There are no fact findings out of the Patent Office regarding indefiniteness. But if there was the same indefiniteness issue came up and the Patent Office found, for instance, that a term of art, let’s say nanotechnology, biotechnology term of art had a particular meaning, then that factfinding may be entitled to deference by the trial court.”
In a play that will certainly make all the highlight reels, Vanderberg was lobbed a softball and managed to whiff so completely that he stumbled around all the bases to land butt-first at home for the game-winning run.
This case presents what happens what a legally untrained examiner, followed by the FC (similarly situated, apparently) finds functional (and thus structurally vague) language at the exact point of novelty and the problem that ensues for all involved.
“legally untrained examiner”
LOL – do you realize the problems with that statement…?
I do, how unfortunate for you guys.
Your reply is a bit cryptic – care to explain what you mean?
After all, your Fn job is do examine applications according to the law and it sounds like one giant excuse from you at 8 with this “untrained” quip. You do not have qualms cashing your paycheck, right?
Your mantra against functional language is just not supported by the changes in law that happened in 1952. Your desire for pure structural descriptions is just NOT going to be met.
I should point out (surprised it wasn’t quoted) that Scalia’s back and forth with Harris also nails the point. Harris attempts to argue that the functional language is not necessary to define the structure being claimed. Scalia comes back at him:
“JUSTICE SCALIA: Yes, I understand that, but that’s not what it says. It doesn’t say space the electrodes in such a manner that the signals coming from each side will be equal and you’ll have to do this by trial and error. That’s not what it says.”
This would make it an enablement issue. Harris mistakenly starts arguing about it later.
“It just says, you know, keep the electrodes apart. They have to be apart so that the hands don’t touch, and on the other hand they can’t be outside the scope of what the hands grip. That’s all it says. Whereby, if you do that, the signals will be equalized. That’s that’s how I would read it. It wouldn’t work that way, would it?”
Here he makes clear that the functional limitation places some further boundary on the spacing. What is that spatial boundary? We don’t know. We only know that it’s a boundary that will provide a result.
Breyer and Roberts pile on and Harris responds that the spacing can be determined very quickly, but Sotomayor drives home what Scalia started with – “That’s what I think Justice Scalia is saying and Justice Breyer is saying, that if we don’t understand what the purpose is, how can that spacing be definite enough to make this thing work.”
There simply is no way to find it definite without the functional language, and the use of the functional language isn’t going to help.
RG – Can you explain your point a bit more? I don’t think I understand what you are trying to say.
There are two possible constructions as to structure:
1. a spacing less than hand-width and more than zero.
2. a spacing less than hand-width, more than zero and further limited to particular spacing whatever is necessary to meet the functional requirement.
The majority of the questions that referred to the case itself, rather than an overall test, all focused around whether (1) was really a valid construction. And it appears from all the questions that a variety of members (Scalia, Roberts, Breyer, Kennedy, Sotomayor) are all dubious of (1) resulting in an enabled invention. There is high skepticism that (1) is the actual scope.
That’s key, because if (1) is a possible scope, the case needs to be remanded so that the district court or FC can apply the test the Supremes will come up with to decide if (1) or (2) is the right construction and whether the existence of both renders the claim indefinite.
If (1) is not valid though, as the court seems to think, then (2) must be the construction, and the issue becomes if the functional requirement (which, contrary to Harris’ statement is not any more structural than the functional requirement in GE v. Wabash) renders the spacing indefinite.
If (2) is the proper construction, we have a textbook functional at the point of novelty situation and it the court must overrule the FC for exactly the reasons you suggest – They did not apply the Halliburton (and it’s parentage) rule.
As I said in the parent posting: This is a perfect example of the problems warned of in functional claiming in Wabash, Perkin’s Glue, Halliburton, etc. The patent describes well the non-novel parts and then is totally vague right at the novel part of the claim. Kennedy’s question shows he understands the issue even when Vandenberg didn’t: Vandenberg says there is no office FACTUAL determination with respect to indefiniteness, but Kennedy knows that the PTO’s determination that the functional limitation is the novel part DOES bear on indefiniteness – it’s showing that there’s no structural explanation of the novelty (which is arguably the one fact that would need a remand if (2) is selected as the scope). Deference prevents the remand. Scalia confirms that the functional limitation is necessary for the invention with Harris (i.e. (2) must be the scope), and then Breyer points out that the functional limitation allows for a wide range of unknown structures. (i.e. the fact situation is analygous to Wabash) The conclusion from there is pretty simple.
This discussion would be better if the claims were presented, or at least the patent number were identified somewhere.
That said, why is it you believe one of ordinary skill in the art would not understand the “and further limited to particular spacing whatever is necessary to meet the functional requirement” part of the claim? Why exactly is that indefinite?
Conditions change. You can’t always specify an electrode spacing by distance.
Sometimes you have to use functional language to describe how to cook something. You say bring to a boil, not raise the temperature of the water to 212 F. Water boils at different temperatures depending on atmospheric pressure and based on what ever impurities there might be. If boiling is necessary (for mixing, lets say) then you have to specify it functionally.
That is NOT indefinite.
The right electrode spacing might depend on the amount and age of the electrolyte gel used, the metal uses in the electrodes, the amount of hair and sweat on the patient, the percentage body fat of the patient, the cotton content of the sheets the patient is lying on….if the underlying table is wood or stainless steal…yadda yadda yadda.
Space the electrodes apart from each other , whereby the unwanted signal is minimized is not indefinite.
Les, assume that the prior art disclosed spaced electrodes connected in to a difference amplifier exactly as claimed – in it did in this case. Assume further that the patent did not suggest that anything had to be done to adjust the spacing, materials, size or anything else regarding the electrodes, or that the signals from the left and right hands are different. One could build the structure described and it would not work. In fact, one would compare the structure disclosed in the specification with this structure disclosed the prior art and find no material differences.
The inventor filed an affidavit in the re-examination where he described that one had to adjust the materials, the spacing and the size of the electrodes for each hand individually, and for each of his commercial apparatus, in order to eliminate the EMG signals. But none of that was disclosed in the specification or that anything was necessary to adjust in order to a eliminate EMG signals. There is simply no disclosure.
The conclusion that one of ordinary skill in the art could easily figure out how to adjust anything to reduce the EMG signals to zero is completely unsupported in the record. It merely as an assertion of counsel.
Anyway, during oral argument at the Supreme Court, one of the justices, I believe Breyer, gave several examples of what he thought the varying spaces could be and asked counsel if that would work, and counsel said no. And the reason counsel said no is that spacing is insufficient by itself to reduce the EMG signals to zero.
Ned –
My post was directed at the general assertion that “functional language “at the point of novelty”” is some how a problem.
Since the article is indefinite as it refers to the patent and claims in question only functionally, without specification of a patent number or claim number and without providing even the text of the claim in question, expect for one phrase presented out of context, I can’t really comment on the merits of the particular case.
If, as you indicate, the claims do not define over the prior art, then the claims are not valid under 102. Why are we talking about indefiniteness?
Les, the patent is 5337753, link to google.com
From public pair, one can find the three reexamines filed against this patent. The first on the list contains the affidavits and argument.
Regarding functionality, so long as the functionality refers to specific steps or structure defined in the spec in some fashion and does not cover the independent inventions of others that accomplish the same result through different means, then I am OK with a functional definition.
But where, as here, one could not carry out the claimed invention except through trial and error, and I think the applicant has not done enough under 112(b). That one of ordinary skill in the art can figure how to achieve the result claimed is not sufficient. Patents are granted for disclosure of how to achieve the result, and the claims are required by law to claim no more than what is disclosed and equivalents, not the result achieved.
” and the claims are required by law to claim no more than what is disclosed and equivalents, not the result achieved.”
Say what now? A spec has to explain how to make and use the invention and to disclose a preferred embodiment. I’m not aware that the spec has to describe every embodiment.
So, to what law are you referring?
I’m not aware that the spec has to describe every embodiment.
That’s not what Ned is saying. Why must you always beat the strawman?
The set-up here is that the recited functionality was asserted to be a non-obvious distinction over the prior art. If that’s the case, then the applicant must describe the structural features responsible for that functionality. If the applicant can’t or won’t do that, then the applicant is only entitled to the embodiment that is disclosed. Why should the applicant get more than that? Why should the public be forced to do the applicant’s work, or be forced to haul the applicant into the PTO so the applicant can provide the explanation that should have shown up in the application in the first place?
“The set-up here is that the recited functionality was asserted to be a non-obvious distinction over the prior art. ”
The applicant does not have to show non-obviousness. The Office has to show obviousness in order to reject. So, it is not likely that anyone asserted non-obviousness. Instead, what was likely shown was that the Office did not show obviousness.
Mlcolm quips “Why must you always beat the strawman?”
KA-BLOOEY from the (red) queen of the strawmen.
Random, for some reason, Dennis seems oblivious to the facts in this case. He never posted on it when it came out, and only referenced it when cert. was filed. Now today, he again exhibits total ignorance of the facts, otherwise he would not have said nice things at all about Harris’s almost ludicrous argument trying to justify his client’s patent.
The Supreme noted he ran from supporting the Federal Circuit’s test. Then they reacted in open hostility when he denied in argument that it did not exist.
I daresay, though, that Vandenberg did not focus well on the functional-at-the point of novelty argument and got lost in irrelevancies such that there were two reasonable constructions of the term. Huh? What? As you say, the sole novelty was in the functional limitation as argued in reexamination. Eliminating that from the construction would have erased the sole novelty over the prior art. Why didn’t someone say that?
“Why didn’t someone say that?”
Maybe because they could not find a case quote from after the change in law with the 1952 Act.
Ned: the sole novelty was in the functional limitation as argued in reexamination.
Just to be clear, Ned: the prior art devices taught the use of a spaced relationship between the same sorts of electrodes recited in the claim?
And the only difference is that the prior art devices (as alleged by the patentee during re-exam) weren’t capable of “removing EMG signals”?
MM, The ONLY difference argued was the selection of the electrode configuration such that the EMG signals were equal. Amd. 3/31/10 at 2. But the only “configuration” claimed was that electrodes be spaced. Other than that, there was no structure claimed relevant to the electrodes.
The NIRC focused solely on the functional limitation. Concluding that “this claim limitation requires that the EMG signals (noise), which are detected through the same electrodes that the tech ECG (heart rate) signals, be of substantially equal magnitude and phase so they cancel each other out when fed through a difference amplifier. … In the current response, patent owner (PO) argues that configuring the electrodes to substantially minimize the detected EMG from both hands on an exercise machine is not taught by the prior art, and that one of ordinary skill would adjust for noise downstream of the difference amplifier.… Examiner agrees that De Vel does not teach exactly how to adjust the geometric properties and locations of ECG electrodes to cancel out EMG using a difference amplifier… Therefore, in light of patent owner’s argument filed 4/5/10, as well as a declaration of Gregory Lekhtman filed June 15, 09, examiner withdraws previous rejections.”
However, the claim did not call for adjusting the configuration, nor did the specification teach adjusting the configuration in any way. That argument was beyond the scope of the claims and of the disclosure and it won allowance.
It was, as I stated, whole cloth.
Had the claim called for and the specification demonstrated adjusting the configuration, I think we might have a different case. But, in truth, we have a case of new matter and a very disingenuous argument.
Thanks, Ned.
“I daresay, though, that Vandenberg did not focus well on the functional-at-the point of novelty argument”
Well he did make a large point of saying that applicants are intentionally vague to grab more than what they invented, and he said it several times. As I said in the first post, I don’t think Vandenberg actually understands why his argument is correct (He seems to simply have a vague notion that it shouldn’t be done, rather than understanding that the court has already reasoned out why it can’t be done) but Kennedy’s question shows he understands.
Vandenberg is confused as to why Kennedy would ask about factual PTO determinations when there were none. But there was – that the functional limitation is the novelty. Vandenberg just doesn’t see how it fits. Now, either Kennedy is being daft, or he understands that fact is necessary to decide this case rather than remand it. If there’s no deference, you have to remand. If there’s deference, you can use the functional at the point of novelty jurisprudence to decide the case yourself. If that is Kennedy’s thinking, Vandenberg already won without knowing it. If it’s not I don’t think Vandenberg arguing it would make a difference. That’s why he stumbled into a win.
I’ll let RG attempt to clarify but I think the point being made by the Justices is similar to that which was made by the concurring judge in the Federal Circuit’s opinion.
Specifically, “My concern with the balance of the court’s analysis is that it presumes a functional linkage between the “spaced relationship” limitation and the removal of EMG signals. In other words, the analysis proceeds as if the “spaced relationship” limitation itself—rather than other limitations of claim 1—included a functional requirement to remove EMG signals.
It’s worth remembering that this business about “removing EMG signals” appears in another section of the claim; it’s not immediately following nor even in the same paragraph as the “spaced relationship” limitation. Thus, (the argument goes) it is not “reasonably clear” what the function of the “spaced relationship” is or what amount of spacing (if there is any such amount) is necessary for the overall device to achieve “EMG signal removal”. The term is not defined in the spec, of course, link to google.com although from the drawings it might be possible to get some idea of what sort of spacing falls within the scope of the claim.
The counter-argument is that the correct construction of the term is reasonably certain when read in context of the claim and specification. Any spacing will suffice — the key is simply to have some space between the electrodes, period. The problem with that argument is that it doesn’t appear to be true. You have to experiment to find the spacing that will work for your particular embodiment of the device, and possibly for particular users.
At the end of the day, I’ve certainly seen claims that seem far more indefinite. I admit to not having a complete handle on the relationship of these claims to the prior art, however, and I’ve read some comments suggesting that amendments and arguments were made during re-exam that seem somewhat “removed” from the original disclosure. I don’t see any discussion about these alleged problems in the Federal Circuit’s opinion, however (the re-exams are acknowledged but it sounds as if no amendments were made during re-exam; the patentee made arguments and submitted declarations instead).
“At the end of the day, I’ve certainly seen claims that seem far more indefinite.”
Comment rejected as indefinite – the use of a relative term with no test or even an art field (in the useful arts) recognized for Malcolm’s glib smell test pronouncements.
Try again.
The arguments were interesting and also somewhat disappointing. I’m glad that they “insolubly ambiguous” test for indefiniteness is being chucked as it was right up there with the very worst of the many poorly conceived patentee-coddling tests that the Federal Circuit has concocted over the years (next up: the CAFC’s ridiculously strict standard for finding inequitable conduct).
For better or worse, the claim at issue in this case was probably not the best claim around which to argue the global “test” for indefiniteness. The statute says that claims must “particularly point out and distinctly” claim the subject matter of the invention. Note: it’s the claims that must be “particular” and “distinct”, not the construction of the claims ultimately provided by the court.
There are at least three different categories of claims which typically fail the particularity and distinctness requirements. The first is the claim that, on its face, contains an error (e.g., a reference to a term without antecedent basis, or internally contradictory elements). Those are easy to identify as indefinite and it’s the court’s business to rewrite them (or “solve” them, to use the language of the CAFC’s dead test).
The second is the case is where there are multiple “reasonable” constructions of a given term (e.g., as a result of waffling or lack of clarity in the usage of a given term in the specification). If those competing constructions are equally or nearly equally “reasonable”, the claim is nevertheless indefinite and should be invalidated on those ground. It should only very rarely be the case that the choice of one of those otherwise equally reasonable constructions will determine the outcome of a validity analysis under one of the other statutes (primarily because competent reasonable applicants make an effort to distinguish their inventions from the prior art and make sure that their invention is enabled). For that reason, I’d recommend chucking the “doctrine” that purports to “fix” the indefiniteness of the claim by “picking” the valid construction.
The third category is our old friend the “functional claim,” which is the type of claim that was at issue in Nautilis. Functional claims themselves come in a range of different flavors but two issues seem to present themselves most often. First, there is the issue of distinguishing the invention from the prior art on the basis of a newly recited function (sometimes referred to as “functional claiming at the point of novelty). This should never be permitted and claims suffering from this defect should be found indefinite per se. Second, there is the issue (sometimes inseparable from the first issue) of how much testing the public is required to engage in to determine the scope of a claim with functional elements. It must be recognized that this is not an enablement analysis. It is not simply a question of how easy it is to make or use the invention. In the context of a claimed composition or apparatus, the question should be: is it reasonable for the public to be forced to engage in such testing to determine the scope of this particular claim? Factors to consider in the analysis should include whether the claim is written in closed or open format (the latter case making it much less reasonable in most cases given the infinite number of variables that can enter into the testing) and whether the claimed invention is something that implicates a broader spectrum of arts such that the “testing” of the recited function is something that affected members of the public would never otherwise engage in.
I’ll be shocked if any of these important details are addressed by the Supreme Court in their Nautilis decision. But they do need to be addressed, and for everyone’s sake they should be addressed quickly.
LOL – you almost made a decent post.
Kudos on the efforts.
Note: it’s the claims that must be “particular” and “distinct”, not the construction of the claims ultimately provided by the court.
How do you separate one (i.e., the construction) from the other (i.e., the claims)? A claim construction is just a description of what the claim means — shouldn’t they be equivalent?
The first is the claim that, on its face, contains an error (e.g., a reference to a term without antecedent basis, or internally contradictory elements). Those are easy to identify as indefinite
FYI — Lack of antecedent basis is not a sufficient basis for rejecting a claim as indefinite unless one of ordinary skill in the art would not understand the bounds of the claim as whole when read in light of the Specification. Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006).
is it reasonable for the public to be forced to engage in such testing to determine the scope of this particular claim?
How is that a definiteness issue? Assuming that the identity of the function being claimed is clear, then it passes 112, 2nd. You may argue that it doesn’t pass 112, 1st, but that is a different issue. Testing is enablement — not definiteness.
lol – the return of whatever
Oh, how so critically minded…
/eye roll
A claim construction is just a description of what the claim means — shouldn’t they be equivalent?
In the ideal world there is no need for a judge to construe the claims because it’s all crystal clear to everybody. But where the scope of the claim isn’t clear on its face — e.g., exactly what range of additional salt is “effective to induce orgasm in a turkey treated with drug X” — the construction (a statement describing range of salt using objective physical terms) is far more particular and distinct than the claim language.
Lack of antecedent basis is not a sufficient basis for rejecting a claim as indefinite unless one of ordinary skill in the art would not understand the bounds of the claim as whole when read in light of the Specification
Right. There may be instances of lack of antecedent basis in a granted patent that don’t render the claim indefinite. During prosecution, however, I don’t believe applicants should be able to argue away a claim term with a lack of antecedent basis by citing Energizer Holdings and some passage in their spec.
How is that a definiteness issue? Assuming that the identity of the function being claimed is clear, then it passes 112, 2nd. You may argue that it doesn’t pass 112, 1st, but that is a different issue. Testing is enablement — not definiteness.
Let me try to explain why you’re wrong with an example.
I claim “A 0.1 L to 1 L solution, wherein said solution comprises the salts NaCl and NaHCO3, wherein said salts are present in amounts effective to induce orgasm in a coatimundi.”
First, keep in mind that this is a composition claim. It’s not a method claim. Second, those salts are very common. A solution with those salts is very easy to make. And I teach how to feed a coatimundi in my specification and identify when the coatimundi is having an orgasm. So the claim is enabled (I’ll set aside for the moment that functional claims like this are typically “self-enabling” because, as long as you give the claimed result patentable weight, the non-working embodiments are disclaimed — that’s one way that a lot of these elements end up in claims in the first place).
The indefiniteness problem arises from the fact that there are millions of different uses for the claimed solution other than inducing orgasm in coatimundi. You may not even know what a turkey is but you could easily be infringing this claim. Remember: it’s a composition claim, not a method claim. But you’re not able to be “reasonably certain” of the scope of the claim unless you carry out some arbitrary task set forth by the patentee. Such claims should be invalid as indefinite. The patentee should be required to identify the ranges of salts in objective, physical terms. If the patentee is incapable of doing that or is unwilling to do that, then the patentee doesn’t deserve a patent on the composition.
“doesn’t deserve”
Because the Red Queen / Humpty Dumpty so declares !
(never mind the actual law, you’all)
In the ideal world there is no need for a judge to construe the claims because it’s all crystal clear to everybody.
We don’t exist in an ideal world. We exist with an adversarial judicial system where it is the job of one of the attorneys to argue that the language isn’t crystal clear (no matter how crystal clear the language actually is). Attorneys are more likely to cut off their left big toe than to concede a point to an adversary.
I don’t believe applicants should be able to argue away a claim term with a lack of antecedent basis by citing Energizer Holdings and some passage in their spec.
I have done so. I’ll amend the claim later that is the only amendment I need to make to an independent claim. Never amend an independent claim unless you absolutely have to — no matter how minor the amendment.
The indefiniteness problem arises from the fact that there are millions of different uses for the claimed solution other than inducing orgasm in coatimundi
I don’t see the problem. The scope of what is covered by the claim is clear. If it induces the big O, then covered. If not, then not covered. The other million different uses are not relevant with regard to what is being claimed.
But you’re not able to be “reasonably certain” of the scope of the claim unless you carry out some arbitrary task set forth by the patentee.
You are reasonably apprised — if it induces the big O, then within the scope of the claim.
The patentee should be required to identify the ranges of salts in objective, physical terms
That is enablement — if undue experimentation is required to identify the ranges of salts, then not enabled. If your specification doesn’t provide one example of the amount of salts, and in reality, there is a very tiny range in which the salts are effective in inducing the big O, then perhaps not enabled.
I’ll grant that there is a fine line, at times, between 112 1st and 112 2nd. However, there is a difference between knowing what is within the circle (i.e., all of what is covered) versus knowing what the line is that separates covered from not covered.
“How is that a definiteness issue?”
Part of definiteness is notifying the public of what will infringe. If determining what will infringe will necessarily require testing by the public then the claim, by itself, did not put the public on notice. Thus in such instances courts/the office needs to look to the reasonableness of requiring the public to engage in the required testing to simply know what will infringe.
“ necessarily require testing”
LOL – you are forgetting what the law actually requires 6 (or maybe you don’t care or don’t understand or perhaps even a little of all these symptoms are afflicting you)
you are forgetting what the law actually requires 6
Apparently TB also forgot or maybe he’s just incapable of typing out his thoughts in plain English like the rest of us.
Lol – funny how much trouble you have with that English thing.
If determining what will infringe will necessarily require testing by the public then the claim, by itself, did not put the public on notice. Thus in such instances courts/the office needs to look to the reasonableness of requiring the public to engage in the required testing to simply know what will infringe.
Agreed, 6. Well put.
Funny how you have yet found your, um, English skills and answered the questions I asked of you after giving you what you asked.
“Assuming that the identity of the function being claimed is clear, then it passes 112, 2nd.”
Do you have a Supreme Court citation that says that? It seems like you think that is “definite” because it defines a boundary and one can test whether something falls into the boundary. But the statute on it’s face requires more – it requires that boundary be particular to what the applicant invented. How can that be the case when it’s clear the applicant doesn’t know the structures that fall within the boundary. I’ll go back to Morse here. Morse certainly had one example of a function, but he didn’t have all the ways, and the court pointed to that in saying he couldn’t have the function. What about Ariad? Eli Lily? Since when does the proof of invention of a species entitle one to say that the genus particularly identifies the invention? I agree this may be a 112, 1st issue, but it’s not like 112, 2nd isn’t in it as well.
I guess the questions are: If I write a specification about apples, can I claim oranges and not get a 112, 2nd? I think the answer is no. If I write a specification about apples, can I claim all fruits and not get a 112, 2nd? I think the answer is no, though this is a closer call to being a scope of 112, 1st issue.
Random Examiner – perhaps you need to spend a little time with the doctrine of equivalents. It appears that you want something, a level of specificity that simply is not required.
You never worked in the real world, did you? You never innovated, did you? You never managed innovation, did you? Your grasp of innovation is paper thin, and legally frail. Are you by chance aiming for a position in academia? You have that gurge-back-what-the-professor-wants reflex down pretty good.
MM, regarding distinguishing the prior art based upon functional definition, I think that issue should be raised by the patent office ASAP. It be interesting to see what the Federal Circuit does after the Supreme Court comes down with this ruling in this case.
Correction. I wrote: Those are easy to identify as indefinite and it’s the court’s business to rewrite them (or “solve” them, to use the language of the CAFC’s dead test).
Should be “not the court’s business.”
MM- Thanks for this post.
Your welcome, D. It’s definitely useful to try and think in general terms about the types of issues that arise before settling on a single over-arching test. Sometimes separate distinct tests (within the same statutory category) to be applied to separate distinct categories of claims are better than an “overarching test.” But anything is better than the Federal Circuit’s “insolubly ambiguous” business.
I guess I could be on board with the reasonable certainty standard. I’d probably prefer the two or more interpretations ambiguity, but either way will do I suppose.
“but either way will do I suppose”
You do realize that Miyazaki bites the dust with a reasonable certainty standard, right 6?
Not necessarily. Miyazaki was in the context of a patent application during prosecution. As Mr. Gannon noted at the tail end of his arguments in Nautilus, there should be a different standard for ambiguity leading to indefiniteness during prosecution because of “the different record, the different burden of proof, the lack of adversarial presentation there, and mostly critically, the fact that it’s easier to amend the claims before the patent has been issued.” (p. 53) Gannon was basically arguing that where the courts might save a claim by picking the most reasonably certain construction, the PTO might still reject the claim to ensure that the question of ambiguity doesn’t arise later in court.
See my post at 4.1.1. Until the examiner is actually required to provide and explain the BRI they are using, this whole fantasy of “there should be a different standard for ambiguity leading to indefiniteness during prosecution because of ‘the different record, the different burden of proof, the lack of adversarial presentation there, and mostly critically, the fact that it’s easier to amend the claims before the patent has been issued'” will remain exactly that, a fantasy.
-US Assistant Solicitor Curtis Gannon as amicus.
Lulz. How many patent applications do you think Mr. Gannon has ever prosecuted? I’m thinking of a big round number…
lol – literally !
Of course the icing on the cake of all this, “Well, during prosecution applicants are free to amend their claims to remove any ambiguity” horseshirt is whenever applicant does amend the claims, the examiner gets to say, “Oh, you amended the claims, so now I have to give a BRI to your amended claims. But I’m not going to tell applicant what that BRI is either. And because the claims are amended, my new grounds of rejection was necessitated by the amendment and all of applicant’s arguments are moot. Please buy the examiner’s RCE ticket to Bonusville and report to the end of the line.”
What a fuggin joke these judges and assistant deputy associate solicitors are. Get a clue.
AAA JJ, you seem to really not like our procedure for further considering amendments. Sup with that brosef? What would you prefer? What procedure do you suppose would be reasonable for you to ask for?
“AAA JJ, you seem to really not like our procedure for further considering amendments. Sup with that brosef? What would you prefer? What procedure do you suppose would be reasonable for you to ask for?”
It would be reasonable for the examiner to explain whatever BRI they are using. Of course, most examiners don’t want to do that because they are not using BRI, they are using BUI in order to reject the claim, force applicant to amend, change the grounds of rejection, declare the arguments moot, and then sit back and refuse to consider any arguments and/or amendments until applicant files an RCE.
Keep in mind, I don’t engage in this nonsense. I don’t amend when the claims are allowable and the examiner hasn’t met his/her burden. I don’t try to “work with”/placate/cajole/”wear down”/throw a bone to the examiner. If I feel the applied art is close, I will interview the examiner and ask what interpretation is being given to the claims, and if it’s necessary and appropriate I will propose an amendment. And I don’t expect the examiner to agree that my amendment overcomes all the rejections, but I do ask, and expect, the examiner to be forthcoming on whether the amendment(s) at least overcome the interpretation that is being given to the claims. If the examiner says it does not, I ask for an explanation. And/or I will offer alternative amendments, and if those don’t register I’ll ask the examiner point blank what amendment would overcome the interpretation. If the examiner still won’t give an answer, I’ll generally leave that claim unamended and add a new claim with different language. If I make it clear on the record that I’m trying to determine the BRI being applied and address it (either through amendment and/or argument) and it’s clear from the record that the examiner is being uncooperative, it makes my position on appeal that much more persuasive.
So keep holding out your hand for your RCE payments. You’re not getting any from me. You can explain your “broadest reasonable interpretation” in a pre-appeal or appeal conference with your SPE, QAS, other know-nothing-do-nothing GS-15, or you can explain it, or not, to the Board in your answer.
“Sup with that brosef? ”
6, your inability to understand is mos perplexing.
Do you just not care?
“in a pre-appeal or appeal conference with your SPE, QAS, other know-nothing-do-nothing GS-15”
But why is none of this on the record…?
“It would be reasonable for the examiner to explain whatever BRI they are using. Of course, most examiners don’t want to do that because they are not using BRI, they are using BUI in order to reject the claim, force applicant to amend, change the grounds of rejection, declare the arguments moot, and then sit back and refuse to consider any arguments and/or amendments until applicant files an RCE.
Keep in mind, I don’t engage in this nonsense. I don’t amend when the claims are allowable and the examiner hasn’t met his/her burden. I don’t try to “work with”/placate/cajole/”wear down”/throw a bone to the examiner. If I feel the applied art is close, I will interview the examiner and ask what interpretation is being given to the claims, and if it’s necessary and appropriate I will propose an amendment. And I don’t expect the examiner to agree that my amendment overcomes all the rejections, but I do ask, and expect, the examiner to be forthcoming on whether the amendment(s) at least overcome the interpretation that is being given to the claims. If the examiner says it does not, I ask for an explanation. And/or I will offer alternative amendments, and if those don’t register I’ll ask the examiner point blank what amendment would overcome the interpretation. If the examiner still won’t give an answer, I’ll generally leave that claim unamended and add a new claim with different language. If I make it clear on the record that I’m trying to determine the BRI being applied and address it (either through amendment and/or argument) and it’s clear from the record that the examiner is being uncooperative, it makes my position on appeal that much more persuasive.
So keep holding out your hand for your RCE payments. You’re not getting any from me. You can explain your “broadest reasonable interpretation” in a pre-appeal or appeal conference with your SPE, QAS, other know-nothing-do-nothing GS-15, or you can explain it, or not, to the Board in your answer.”
K so you don’t actually have any problem with RCE’s being the procedure to consider amendments after the first then?
K, AAA JJ so you don’t actually have any problem with RCE’s being the procedure to consider amendments after the first then?
“You’re not getting any from me. ”
How you do not understand what he is saying and thinking that he is ‘ok’ with RCE’s is very odd.
Do you just not care enough to try to understand him?