Examples of Nautilus Impact

In Nautilus, the Supreme Court made it easier to void a patent claim based upon its ambiguity.

I’m looking for a few real examples of cases where the standard makes a difference — claims that do not fail the ‘insolubly ambiguous’ test but that do fail the ‘reasonably certain’ test.

– Dennis

112 thoughts on “Examples of Nautilus Impact

  1. Scanning through these comments, I do not see a single example offered by the posters (who seem to be distracted into simply attacking each other) that would fit your question. In my view, it is manifestly clear that in this Nautilus case the CAFC analysis of the facts (read the CAFC opinion) would satisfy both standards.

  2. IP maximalization comes home to roost:

    “Our intellectual property is the training and fostering of our counselors, which makes for our unique environment,”

    link to finance.yahoo.com

    I wonder if they’ve filed for a patent on their ground breaking training and fostering or if they’re simply keeping that a “trade” sercrit?

    1. misfire – noncompete is not an IP (or “patent maximalist” item)

      in fact 6 – such flows from the anti-patent world view.

      1. I know a “noncompete” is not IP. I’m talking about what the camp person said about his camp’s “IP” re re. It’s simply another example of how “IP” (patents and trade secrits at least, set trademarks to the side) is entering into fields where it simply has no place. Or at least the people in those fields think it is in their fields.

    1. 6, regarding GMO, one really has to read the Hugo-Award winning the Windup Girl to see what the world will be like when all food plants are GMO, and all of them have the “sterility” gene.

      Anon, I note that Salmon in the see have now been modified to have Eel genes, for what purpose, I do not know.

      But it would be interesting to see if the Salmon modification were patented.

    1. 6, thanks. But perhaps we should give Dennis some compliments as well because a lot of people read this site.

      1. Patent licensing company eCharge Licensing LLC and an inventor on Thursday launched a suit claiming that the U.S. Patent and Trademark Office’s inter partes review process is unconstitutional because it denies patent holders of their right to a jury trial in infringement proceedings.

        LOL. That is pretty funny.

  3. I thought I had an example, but after consideration, I was not happy with its implications. Anyway, my example was a claim that would have a finite (2) number of possible interpretations, with no way to pick one interpretation over the others. I though such a claim would pass the “not insolubly ambiguous” test, because the claim has at least one plausible interpretation. But one may argue that having more than one interpretation is not enough to pass the “reasonable certainty” test. I felt happy with myself for a while, until I realized that with this logic, a “means plus function” claim may fail the “reasonable certainty” test if more than one embodiment are disclosed. Same thing could happen with a Markush type claim. That would not make sense…

    1. I think with MPF that the office can demand that the corresponding structure be identified with certainty if the MPF clause is relied upon to distinguish the prior art. In this way, that structure is effectively amended into the claim.

      If it were not for Donaldson, the Office could demand that the structure be amended into the claim.

      1. office can demand that the corresponding structure be identified with certainty

        Does not make sense in context.

        There is no “demand,” as MPF requires that the corresponding structure be contained in the specification.

        Further, the doctrine of equivalents still applies (providing no prosecution events curtails the doctrine).

        Period. There is NO “point of novelty” aspect invoked, and this goes to show Ned’s propensity for using PON as a canard.

    2. “Anyway, my example was a claim that would have a finite (2) number of possible interpretations, with no way to pick one interpretation over the others. ”

      O look a miyazaki situation.

      “But one may argue that having more than one interpretation is not enough to pass the “reasonable certainty” test.”

      Actually you don’t even need to “argue” that.

      “I felt happy with myself for a while, until I realized that with this logic, a “means plus function” claim may fail the “reasonable certainty” test if more than one embodiment are disclosed. ”

      Ur dum bro. If more than one embodiment is disclosed then more than one embodiment is covered.

      1. And, 6, if water one embodiment is disclosed and covert, just what is “the” corresponding structure? Shouldn’t the applicant be required to clearly identify what it is among the embodiments that is common such that one might know with some certainty, some reasonable certainty, without any substantial guesswork, what that subject matter is that is being claimed?

        1. I think you have a typo in your first sentence there ned, but sure, if they didn’t say what does the function and it isn’t readily ascertainable then sure there may be a problem.

        2. Ned, that’s what independent claims do, they cover plural embodiments. Why can’t I claim a device that does a function that has at its heart a computational element, be it a microprocessor, micro-controller, digital signal processor, ASIC or what have you?

      2. have a finite (2) number of possible interpretations, with no way to pick one interpretation over the others. ”

        O look a miyazaki situation.

        LOL – wherefore does thou go, oh Markush?

      3. ” If more than one embodiment is disclosed then more than one embodiment is covered.”

        Oh oh….6 said something that I agree with…. I’m pretty sure that’s the breaking of the sixth seal…beware the Apocalypse.

      1. Les, and example:

        claim: means for encoding and decoding.

        This is the novelty.

        The specification discloses to different codes.

        The question becomes, what among these codes is common, or does the analysis look at equivalents of each in isolation?

        What if one of the codes is old, and the other novel?

  4. What about chemical patents – for example the use of fluorescent dyes in diagnostics? Of course the final product is ambiguous and may be a unique entity not thought of in the construction of the patent. However, everyone in the field knows how to attach the new dye to a protein of interest (expressed in the patent) and commonly use these dyes for detection or localization of the attached molecule. Does such a chemical moiety used in a diagnostic fail the ‘reasonably certain’ test?

    If so, we are in big trouble.

    1. Does such a chemical moiety used in a diagnostic fail the ‘reasonably certain’ test?

      Can you be a bit more specific about the claim you have in mind? I can’t even tell if you are talking about a composition or a method.

      1. It appears that he is talking of both compositions and methods, as he references “patent” which typically may have both, and he offers an example indicating “use” (that would be method) and also indicates “final product,” (that would be composition).

        Come man, those vaunted English as a First Language skills surely has reading as a skill, right?

          1. lo…

            No wait,

            Lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol

            ah…. Malcolm at his Vinnie Barabarino best.

    2. Stephen,

      I believe you are referring to a 112, first issue. See, In re Cohn, 169 USPQ 95 (CCPA 1971), for a somewhat chemical case on 112, second. In this case the term “opaque” appearance of a coating on an aluminium substrate is held to be ambiguous. The law on 112, second was always there, and admittedly, the Court could have selected a better case on the facts.

      The claim is ambiguous and invalid becasue there is no disclosure on how to determine when a coating is opaque. How much of a selected wavelength of light does the coating reflect? Please give me a test so I known if my product infringes or not. That is what P2 is all about.

  5. Dennis, on the main topic may I suggest that any claim that is functional at the point of novelty, including any means plus function claim claiming novel structure, inherently is indefinite.

    Regarding means plus function, if the claimed element is claiming old and well-known structure, the functional definition in the claim itself should be sufficient to clarify the scope because one is claiming old and well-known structure. The functional definition is explanatory as much as a noun is explanatory if the structure is well-known.

    However if novel structure is being claimed functionally, the scope of the claim is indefinite – even if one suggests that the claim covers the corresponding structure recited in the specification and equivalents. The reason is that is often unclear exactly what that structure is, and how much detail must be incorporated. In court, there are often battles over what the corresponding structure is. The defendant always wants to incorporate a lot more detail than the patent owner. The answer to this particular question is never clear. Because of that, the scope of even a means plus function claim claiming structure at the point of novelty is indefinite.

    Because of this, the patent office should use Nautilus to impose a ban on claims that a functional at the point of novelty even if they are expressed in means plus function terms. What this means in practice is that an applicant cannot distinguish an apparatus claim or a composition claim or a claim to a manufacture in terms of its results, it’s functions, or its properties.

    1. inherently…?

      LOL not so given 112(a), 112(b), and 112(f).

      Ned – call your congressman if you want a change to the law.

    2. the patent office should use Nautilus to impose a ban on claims that a functional at the point of novelty

      EXCESSIVELY bad legal advice.

      Are you an attorney Ned? That suggestion is so far beyond preposterous.

      1. anon, we have the SC decision and 112(2). Claims have to be reasonably certain in scope – and this has nothing to do with enablement.

        1. Ned,

          This has every thing to do with in the art to which the invention pertains.

          You seem to want to white-wash that part out of existence.

    3. may I suggest that any claim that is functional at the point of novelty, including any means plus function claim claiming novel structure, inherently is indefinite
      Again confusing what is enabled versus what is (in)definite.

      Depending upon the point in the process, claim language is either compared with the prior art or a potentially infringing product. I claim “a process configured to display 5 parallel lines on the screen.” You cannot argue (with any credibility) that this is inherently indefinite (even if it is the “point of novelty”). On the contrary, determining whether or not a product infringes (or anticipates) is incredibly easy. Hence, the scope is reasonably certain.

      The claim, however, does not disclose the different number (perhaps hundreds) of ways that this is accomplished. This is a question enablement — not definiteness. You look to the specification to see whether or not this function is enabled to one skilled in the art.

      The reason is that is often unclear exactly what that structure is, and how much detail must be incorporated.
      I feel sad for your clients — you clearly don’t understand the distinction between claims and the specification — or the purpose of claims. As a result, there is a good chance that your claims are bloated g-a-r-b-a-g-e that include far more limitations in them than necessary. Claims only need to distinguish the invention from the prior art and encircle the scope of the claimed subject matter — no need to have a description of the invention.

      Read the first and second paragraphs of 112 … say … about a hundred times and focus on the different words they use.

      What this means in practice is that an applicant cannot distinguish an apparatus claim or a composition claim or a claim to a manufacture in terms of its results, it’s functions, or its properties.
      Which is a useless aspiration since I can claim the same thing as a method claim <– you never respond to that point. Why is that?

      1. Oh No, do not confuse, as you do, process and system claims with claims to apparatus, manufactures or compositions. Of course processes and systems are functional by definition.

        And do not talk about old elements that are claimed functionally.

        And do not talk about enablement.

        When claiming structure, functional at the point of novelty does not tell us what that structure is. Ditto a manufacture or a composition. That much is plain and simple, self-evident.

        Now try again. I give you the better mouse trap were the novelty is a coil spring.

        Claim it so that we have reasonable certainty.

          1. From Graham:

            Let us first return to the fundamental disagreement between the parties. Cook Chemical, as we noted at the outset, urges that the invention must be viewed as the overall combination, or—putting it in the language of the statute—that we must consider the subject matter sought to be patented taken as a whole. With this position, taken in the abstract, there is, of course, no quibble. But the history of the prosecution of the Scoggin application in the Patent Office reveals a substantial divergence in respondent’s present position.

            As originally submitted, the Scoggin application contained 15 claims which in very broad terms claimed the entire combination of spray pump and overcap. No mention of, or claim for, the sealing features was made. All 15 claims were rejected by the Examiner because (1) the applicant was vague and indefinite as to what the invention was, and (2) the claims were met by Lohse. Scoggin canceled these claims and submitted new ones. Upon a further series of rejections and new submissions, the Patent Office Examiner, after an office interview, at last relented. It is crystal clear that after the first rejection, Scoggin relied entirely upon the sealing arrangement as the exclusive patentable difference in his combination. It is likewise clear that it was on that feature that the Examiner allowed the claims. In fact, in a letter accompanying the final submission of claims, Scoggin, through his attorney, stated that “agreement was reached between the Honorable Examiner and applicant’s attorney relative to limitations which must be in the claims in 33*33 order to define novelty over the previously applied disclosure of Lohse when considered in view of the newly cited patents of Mellon and Darley, Jr.”

            Moreover, those limitations were specifically spelled out as (1) the use of a rib seal and (2) an overcap whose lower edge did not contact the container cap. Mellon was distinguished, as was the Darley patent, infra, n. 18, on the basis that although it disclosed a hold-down cap with a seal located above the threads, it did not disclose a rib seal disposed in such position as to cause the lower peripheral edge of the overcap “to be maintained out of contacting relationship with [the container] cap . . . when . . . [the overcap] was screwed [on] tightly . . . .” Scoggin maintained that the “obvious modification” of Lohse in view of Mellon would be merely to place the Lohse gasket above the threads with the lower edge of the overcap remaining in tight contact with the container cap or neck of the container itself. In other words, the Scoggin invention was limited to the use of a rib—rather than a washer or gasket—and the existence of a slight space between the overcap and the container cap.

            Here, the patentee obtained his patent only by accepting the limitations imposed by the Examiner. The claims were carefully drafted to reflect these limitations and Cook Chemical is not now free to assert a broader view of Scoggin’s invention. The subject matter as a whole reduces, then, to the distinguishing features clearly incorporated into the claims.

            383 US 1 at 32-34

            1. Was Graham about novelty or nonobviousness – or about 112?

              In other words Ned – what point are you trying to make with your comments at 7.3.1.1.1?

            2. Claim as a whole is bogus concept, anon, just as Graham aptly illustrated. Who can up with that phrase and why should be studied, as, in the end, it is a meaningless concept.

            3. Is this where you run and hide if I were to point you to the Diehr decision? It seems awfully convenient to want to use “claims as a whole” when a situation in which to NOT have such would point out that a “Point of Novelty” of a mere software program has the imprimatur of the Royal Nine…

              By the way, how is your personal lack of understanding of the Nazomi case coming along? Still trying to paint that case as a “hardware only” case? Or is that another case where you would reverse yourself and somehow “claims as a whole” would “magically” NOT be the bogus concept you claim it to be?

              Not so meaningless when you “need it”, huh?

            4. Anon, I hardly run and hide from the Diehr decision. It is you who refused to answer the question: “Where in the statute is ‘claim as a whole’ required?” We all seem to agree that any requirements imposed upon patentable subject matter have to be based in the statutes. So where in the statute is the requirement that section 101 must view the claim as a whole. Is it in section 101 or is it elsewhere?

              And if it is elsewhere, why are we debating whether the requirements of section 103 should be imported into section 101?

            5. You run and hide Ned, because it is you that displays the duplicity of falling back on the “claim as a whole” when I ask you what is your vaunted “Point of Novelty” in Diehr.

              You are the one who does not answer that question – and we both know why. It is the same reason why you engage in a course of purposeful and deliberate ignorance concerning the Nazomi case.

              You would be forced to concede – on the record – that software (and software alone) creates an acceptable “Point of Novelty.”

              Your third party interests force you into either stunning silence or violent dust-kicking, but neither one avails you shelter from the obvious conclusion that you cannot win this point.

            6. Your confusion, anon, or better, your intentional confusion, is that claims must necessarily have a point of novelty. They do not. But when they do, the law commands that the claim not be functional at that point of novelty.

              Your constant refrain to show us the point of novelty in Diehr is a little bit ridiculous because nobody ever asserted that Diehr had point of novelty. It has novel subject matter, but may be and is in more than one element.

            7. Not at all Ned – I am merely pointing out your inconsistent use of (and dependence on) the cannard of PON.

              The problem my friend is all you.

              As to intentional and deliberate confusion, tell me all about the Nazomi case, or the Grand Hall experiment, or the exceptions to the judicial doctrine of printed matter, or to the notion that copyright can be had by software and copyright demands a structure in that copyright must be in a fixed media, or… (shall we continue to count the number of points that you have run away from in our discussions, only to proselytize with your CRP on yet another thread?

              As to Diehr each of the elements (except that which you fear to mention) were all old in the art. Of course, you already know this.

        1. Of course processes and systems are functional by definition
          Really, why is a system claim “functional by definition”?

        2. When claiming structure, functional at the point of novelty does not tell us what that structure is
          You seem to forget (AS ALWAYS) that the description requirement is in 112, 1st — not 112, 2nd.

          1. Oh No, the structure illustrated in the spec is only an example of the structure being claimed — unless the it becomes the law that all functional claim shall be interpreted as MPF claims.

            The problem is that the structure being claimed is not definite — any structure that performs the recited function is covered.

        3. Now try again. I give you the better mouse trap were the novelty is a coil spring.

          Claim it so that we have reasonable certainty.

          A mousetrap, comprising
          a first member;
          a second member; and
          a coil spring operatively connected between the first member and the second member, wherein
          the coil spring movable between a first configuration and a second configuration.

          I could have just claimed the coil spring in isolation but the remaining limitations shouldn’t substantively narrow the scope. Of course, the claim doesn’t say what the first or second member is, what the coil spring does (exactly), or what the first and second configurations are. However, the claim doesn’t need to. Your problem is that you want the claim to spell out all these things — not a requirement.

          Whether or not prior art (or an infringing product) is covered by the claims is reasonably certain. Start with the product (or prior art) and see whether or not all the elements are present.

      2. Also, Oh no, your discussion of 112(f) and your failure to appreciate the inherent problems one faces in litigation in identifying corresponding structure clearly marks you a practitioner of very little practical experience. You’ve clearly never dealt with MPF in litigation, nor have you had your own patents litigated.

        1. LOL – Ned, kindly refrain from lecturing others about 112 discussions and “failures” when you seek to insert your own “philosophies” as law when such are NOT law.

          Such marks you as intellectually dishonest.

          If you want the law to be different, plainly state so. Then you can inject your concerns based on philosophy or pragmatism or whatever. But to hide behind such and pretend that the law is something other than what it is and attempt a de facto change in the law is plain error at best and scurrilous at worst.

          1. no, anon, what I say is borne from a lot of actual experience.

            MPF at the point of novelty are as inherently indefinite as any functional claim unless one, on the record, identifies the structure that is corresponding. One must just as well write it into the claim — as one should. The ONLY thing blocking the PTO from actually requiring that is

            Donaldson.

            That case needs to be reversed.

          2. born of experience?

            No Ned – it is as I submit to you: bias and intellectual dishonesty.

            Separate what you want from what is, recognize what is, and then put forth a cogent position to change from what is to what you want.

            Anything less is easily seen through as a parlor trick.

            The ONLY thing blocking the PTO from actually requiring that is

            the law.

            Sorry Ned, but I am right on the law and you are dead wrong here. We have discussed this before and I have used your own supplied reference of Frederico to show you that you were dead wrong.

            All we have here is yet again you jumping on your merry-go-round of CRP – ignore the valid points raised – and CRP again.

            Your schtick is rather old.

            1. The PTO can require clear and definite claims. The only think blocking actually putting the novel structure into the claim to make them definite is the Federal Circuit. (Donaldson.)

            2. …and the fact that the Office cannot disregard the law (Ned needs a little lesson on 112(f) and the inability of the Office to disregard the law).

              Seriously Ned – you huff and puff about “naïveté” and then act as if the Office need not follow what 112(f) allows.

              Are you trying to ruin your credibility?

            3. anon, the very idea that Congress intended to allow the new clause regarding means plus function to trump the requirement that claims be clear indefinite is ludicrous. Frederico commented that the new statute but have little or nothing to do with the PTO because the PTO could not allow claims that literally read on the prior art. The new statute provided a claim construction using courts to preserve the validity of functional claims by construing them to cover corresponding structure recited in the specification and equivalents – refer to Westinghouse v. Boyden Power Break, a case that announced a rule in order to preserve the validity of the claim that was functional at the point of novelty.

              Now you tell me that Congress intended to allow indefinite claims when it passed section 112 paragraph 6? I tell you that they had no such intention and that In re Donaldson was completely wrong.

            4. Nice strawman Ned. You are assuming your own conclusion and I call you out for the obvious B$.

              NO ONE is saying that claims are not to be clear and definite.

              What IS being said is that your version of what that means is unfounded and that you do not get to assume the conclusion that you would need to prove.

              I have shown you this directly already with Fredrico’s own words. The archives have this of record.

              Stop kicking up dust and misrepresenting both what I and Congress (as reflected directly by Frederico) have said.

            5. Anon, claims a functional at the point of novelty are inherently indefinite – that is a given. Just look at the Supreme Court cases from Perkins Glue, Wabash Appliance and United Carbon, to Halliburton. Means plus function claims do not become definite because of the construction clause. They become enabled. Only when the corresponding structure is identified in the patent specification or in the prosecution history or in court can one know what the claim covers.

            6. Anon, claims a functional at the point of novelty are inherently indefinite – that is a given.

              No Ned- that is precisely NOT a given – that is your conclusion that you insist on masquerading around as a given.

              You are simply wrong on this point of law – and I have shown you why with the words of Congress in the 1952 Act and your own favorite source on those words: Frederico.

              And Haliburton is still abrogated.

        2. You’ve clearly never dealt with MPF in litigation, nor have you had your own patents litigated.
          Why would anybody have MPF claims these days? Why would somebody want to litigate those?

          Oh no, your discussion of 112(f)
          I made no mention of 112(f).

          failure to appreciate the inherent problems one faces in litigation in identifying corresponding structure
          Yawn. I don’t care about “corresponding structure.” I care whether or not the product infringes the claim.

          1. Oh No, but you were responding to my post that was in part about MPF and was discussing its limitation that the claim cover the corresponding structure. The problem identified was that one still did no know what that structure was with any precision.

            I think this is where you might have become confused between 112, p.1 “support” and 112(f) “cover.”

    4. Ned, I think you make an excellent point. I was recently reviewing some mechanical patents to devices (just as an initial screen; not my area of expertise) and some of them seemed completely unclear. The claims did not refer to particular drawings or drawing numbers or part numbers and did not use “means for” language. So what do they actually cover? I guess this might actually be good for an accused infringer after Nautilus, but you make a great point that the scope of the claims should be clear from the record and not need to be determined or resolved through litigation. Thanks for your post.

      1. Coaxial,

        You appear not to understand what claims are, nor understand what is required for claims from a legal perspective.

        Not meant as a denigration, but Coaxial, you are not an attorney, nor familiar with patent law, are you?

        What exactly is your “area of expertise?” – perhaps technical only?

        1. anon, since you are against clear and definite claims, it appears you have no place lecturing anyone on your views.

          1. Ned,

            Once again you are wrong. I am merely against your version of clear and definite claims.

            There is a HUGE difference.

            As to lectures, I suggest you stick to lectures based on real law – not on Ned-IMHO-law.

  6. STC.UNM v. INTEL CORPORATION
    link to cafc.uscourts.gov

    Rader & Dyk, Newman dissent.

    Holding: the right of a co-owner of a patent to refuse to join in a lawsuit is a substantive right.

    This overrides the mandatory nature of rule 19 that and indispensable party might be involuntarily joined. The procedural rule cannot override a substantive right.

    Newman’s dissent said that this sets up a conflict of circuits, citing another circuit that held to the contrary that a patent co-owner could be involuntarily joined under rule 19. Also, She noted, the Federal Circuit had previously held that whether a party is indispensable and may be joined is determined under regional circuit law. Under the 10th circuit law, the regional circuit involved here, an indispensable party may be involuntarily joined.

    1. The purpose of the PTO is to examine patents and to issue valid patents.

      The question on the table is how to motivate examiners to do a better job – and by doing a better job I do not mean complying with the MPEP, producing to a quota, or other such irrelevancies. I mean, producing patents that are valid.

      The whip?

      Or, the reward?

      May I suggest that rewards always work better, but reward that I have in mind must be specifically tied to whether the patent office produces valid patents.

      Therefore I suggest that we provide by statute that the entire patent examining Corps be given a sizable bonus in any year that the overall rate that patents are held valid (as opposed to having any claim held invalid in either a court or in the patent office in an IPR), measured year-to-year, increases. I would include in the category of valid patents, patents that are infringement suits but whose validity is not even challenged.

      1. Unworkable.

        Hint: look at the delay between prosecution and enforcement, then add in the FACT that far less than 2% – far far less – of active patents are actually involved in the mechanism for which you want to base a productivity measure.

        The idea is (and should be) DOA.

        1. anon, its a bonus for the entire examining corps. The people who are there for years can expect the bonus if they do the job right and the validity rate begins to increase.

          This is the problem we always have for giving bonuses for short term performance — meeting quotas and the like. You do not get behavior that focuses on that which is important.

          Also, the bonuses could be adjusted by number of years of service. The longer the service, the greater the bonus. This would have an effect of retaining experienced examiners who would be working hard to increase the rate that patents were valid.

            1. A bonus unconnected is a bonus wasted.
              Bingo. Why give a bonus based upon work done right (or wrong) 5-10 years ago? I suggest that Ned needs to read some books on business management.

              Ned is in rare form with his suggestions. Check that … Ned is holding to form.

            2. A lack of a different mechanism does NOT make your suggestions any less DOA.

              I have provided suggestions previously.

              My suggestions do not include any bogus bonus mechanisms. However, they do focus on eliminating the widget mentality and apply flexibility to the applications to be examined.

            3. Let’s do an analogy.

              You are Caesar and want to win the war in Gaul against a very determined foe. How do you motivate the troops?

              Punish minor infractions?

              Reward keeping your armor polished, your swords sharp?

              Or by promising a very large share in the booty when you win?

            4. Let’s do an analogy that is at least remotely connected with the conversation.

              A bonus unconnected is a bonus wasted.

              still

              Your analogy utterly fails because it is unconnected – at all – with our discussion. In your analogy the options are not mutually exclusive. It can be easily seen that “motivation” may very well include all of the items – punishing minor infractions may be desirable to instill a quick response to orders given; rewarding those actions that promote effectiveness and battle readiness may also be undertaken; and motivating by extrinsic reward (booty) may be one of several appealing motivations.

              I would take from your attempt here that you not only lack real world management experience, but that you also lack real world military experience, as your”analogy” exhibits barely a skin-deep (and altogether academic) view of military action.

              I suggest that you limit your analogies to those items you understand.

            5. anon, stop it.

              The only thing that really matters in the long term is that the PTO produce patents that are valid. People are not perfect, mistakes will be made. But the focus on the goal must be constant. Everyone needs to keep the eye on the ball, what the objective is. Losing sight of the goal is a sure way to lose the battle and the war.

              I have been in companies who have lost focus. I have see the confusion, waste and ultimate failure caused by even not knowing what the goal was.

              But now let us put it in perspective. If the overall performance of the group determines the bonus, everyone will be motivated, and slackards or incompetence will not be tolerated. Everyone works and works hard, and with a goal.

              Job number one is a valid patent.

            6. lol – you ask me to stop when it is you that should stop – or at least try to argue in a reasonable manner.

              Your proposition here should be shunned for the reasons given. You get NO PASS just because an end to which you may want to apply your proposition to is a noble one.

              The ends do not justify the means – ESPECIALLY means as ill-founded as the ones you have advanced.

              Your platitudes are meaningless in the real world. You mistake my replies to you as not wanting to share valid goals when you SHOULD be taking me replies to you as pointing out that the means you have presented won’t reach those goals.

              Pay attention.

            7. anon, your resistance to the idea tells me it is a good one. You really do not argue that it would be a waste of money. You seem to be actually concerned that it might work.

              Companies that put out a low-quality product soon go out of business. Government agencies that put out low-quality product are criticized but otherwise stay in business.

              I have been there when factory bosses harangue the factory workers that job number one is quality. How can we say that it is not job number one for the patent office? It is.

            8. anon, your resistance to the idea tells me it is a good one.

              It’s opposite day in the land of Ned-IMHO-law…

              You still miss the point of the matter that an ends might be worthwhile while the means to that ends may be total B$.

              You kick up a lot of dust by pretending that anyone is saying that quality is not job one – while ignoring the points being made that your version of how to get there has NO MERIT.

              Wake up Ned. Pay Attention.

            9. anon, and to you come up with a better plan, and stop kicking dust in a plan that would work, you are obviously not trying to improve the quality of patents coming from the patent office, but are trying to stop the patent office from examining for quality where quality is measured in whether the patents are valid.

            10. and stop kicking dust in a plan that would work

              That’s just it Ned – your plan is doomed to failure.

              Have you no real world management experience at all?

              but are trying to stop the patent office from examining for quality

              Complete and utter B$ – please substantiate EXACTLY how you think that I am trying to stop the patent office from examining for quality. (hint: quality does NOT mean that which merely follows the Ned-IMHO-law model – that is not quality, that is Ned Crusade claptrap)

            11. Further Ned, I have provided suggestions for better examination.

              My suggestions different from yours in that I actually address the examination process, rather than attempt to provide a post facto “reward” for the flea on the tail that wags the dog. Those suggestions focus on how examination is currently done in a ‘widget’ mindset, measuring and rewarding an “activity” basis without regard to actual quality output. The adage “you get what you measure” applies fully to the current system. This was understood by the last actual director we had: Kappos. One step he took was to try to diminish the gravy-train effect of the rewarding-RCE methodology inherent in the examination-of-widgets-measuring-activity system.

              You want better examination? Then you need to take a modern “business methods are treated in scientific manner” Deming-like approach to examination.

              It is no surprise – given your typical crusades against business methods – to see how little you appreciate that the examination problem is a business method problem.

              You may not be able to unlearn your anti-method bias and appreciate the way forward. Identifying valid ends is simply not enough. You think that closing your eyes and blindly accepting whatever means to get tot hose ends is good enough. It is not.

              Instead of empty platitudes and DOA suggestions and banal attempts at creating analogies to support those DOA suggestions with metaphors that you clearly do not understand, I suggest that you pause and contemplate your limitations and your biases against methods in gener@1 and business methods in particular. You have created for yourself a massive blind spot, and your preaching to others to remove their mote from their eyes is just not effective given the log in your own eye.

            12. Further Ned, I have provided suggestions for better examination.

              My suggestions different from yours in that I actually address the examination process, rather than attempt to provide a post facto “reward” for the flea on the tail that wags the dog. Those suggestions focus on how examination is currently done in a ‘widget’ mindset, measuring and rewarding an “activity” basis without regard to actual quality output. The adage “you get what you measure” applies fully to the current system. This was understood by the last actual director we had: Kappos. One step he took was to try to diminish the gravy-train effect of the rewarding-RCE methodology inherent in the examination-of-widgets-measuring-activity system.

              You want better examination? Then you need to take a modern “business methods are treated in scientific manner” Deming-like approach to examination.

              It is no surprise – given your typical crusades against business methods – to see how little you appreciate that the examination problem is a business method problem.

              You may not be able to unlearn your anti-method bias and appreciate the way forward. Identifying valid ends is simply not enough. You think that closing your eyes and blindly accepting whatever means to get tot hose ends is good enough. It is not.

              Instead of empty platitudes and DOA suggestions and banal attempts at creating analogies to support those DOA suggestions with metaphors that you clearly do not understand, I suggest that you pause and contemplate your limitations and your biases against methods in [typical]** and business methods in particular. You have created for yourself a massive blind spot, and your preaching to others to remove their mote from their eyes is just not effective given the log in your own eye.

              ** The word choice for the moderation filter needs to be adjusted.

            13. The only thing that really matters in the long term is that the PTO produce patents that are valid.
              Wrong again — the only thing that really matters is the promotion of science and the useful arts.

              You need to be introduced to the general concept (expressed in many different ways) that at some point, the incremental cost of quality steadily increases to the point that you have to spend $$$$$ to get just a minor increase in quality.

              While there is a societal cost for invalid patents, there is also a societal cost for ideas that aren’t patented because it costs too much to get a patent. There is a balance that needs to be made (hmmm, where I have seen the term “balance” recently?) and this balance between cost and quality recognizes that invalid patents will slip through.

              The system, however, provides mechanisms to address those invalid patents. They are expensive, but they are undertaken only when the stakes are high. Sure …. we could get (mostly) perfect patents if we endeavor to spend $10M per patent, but that doesn’t promote science and the useful arts.

              BTW — your suggestion also fails as the reward is not tied to an examiner’s self interest. Since your proposal would reward examiners, as a whole, then self-interested examiners would rely upon everybody else to do a good job and would focus on meeting their quota (or some other measurement more directly tied to their self-interest).

          1. anon, I give you chapter and verse on how you try to oppose clear claims, but it is self-evident to anyone reading this blog for any number years that you deny that there is a definiteness problem with claims functional at the point of novelty.

            1. What I deny Ned is your conclusory and self-serving edicts of what the law is – especially as I have proven you wrong with the words of the source that you first provided.

              There is a huge difference.

  7. “Let’s try to avoid that diversion on this thread…”

    NO!

    Do.

    Or do not.

    There is no try.

  8. claims that do not fail the ‘insolubly ambiguous’ test but that do fail the ‘reasonably certain’ test
    You first need to define “insolubly ambiguous” and “reasonably certain.”

    I suspect that I’ll get a reasonably certain answer on those definitions … say … in about 4 or 5 years.

    1. One potential guide for the meaning of ‘reasonable certainty’ is ‘reasonable doubt’. Arguably, it would be difficult to have both ‘ reasonable certainty and reasonable doubt about the proper interpretation of a patent.

      This suggests anything that meets a ‘no reasonable doubt’ standard would probably provide ‘reasonable certainty’, though this is obviously not an irrefutable argument. Ultimately, we’ll need to await clarification from the Supreme Court.

      1. Not true robert – as arguably reasonable people may disagree on something reasonably, and thus, it would be easy to have both reasonable certainty and reasonable doubt.

        Your premise is off, although I see where you want to go with that premise.

        Ultimately, I would shun relying on the Court and would prefer that if we want better law we go to the only approved source of that law: Congress.

  9. DC I’m looking for a few real examples of cases where the standard makes a difference — claims that do not fail the ‘insolubly ambiguous’ test but that do fail the ‘reasonably certain’ test.

    I think the quintessential example would be a claim which recites an intended function/result to be achieved but the critical parameters for achieving that result are either (i) not recited or (ii) the recited range is vast and highly dependent on other variables. In cases like this, it’s almost always going to be theoretically possible to “solve” the riddle of what falls within the scope of the claim (it’s not “insoluble”) but there can be no “reasonable certainty” of the actual values of those parameters (particularly true where the claim is written in open-ended language such that other unspecified variables further complicate the analysis).

    We discussed a claim like this here not too long ago in the Braintree case:

    link to patentlyo.com

    15. A composition for inducing purgation of the colon of a patient, the composition comprising from about 100 mL to about 500 mL of an aqueous hypertonic solution comprising an effective amount of Na2SO4, an effective amount of MgSO4, and an effective amount of K2SO4, wherein the composition does not produce any clinically significant electrolyte shifts and does not include phosphate.

    We also recently discussed a district court case with a computer-implemented claim that seems like it would fit the bill:

    link to patentlyo.com

    In that case, the problem arose from poor draftsmanship and a specification riddled with internal inconsistencies.

    I might also add that if a judge is determined to “solve” the ambiguity, then the ambiguity isn’t insoluble. That’s the major problem with the Federal Circuit’s rejected “standard” — it wasn’t really a “standard” at all.

    I wonder: has the Supreme Court’s decision in Nautilis called into question all or some of the Federal Circuit’s dicta/holdings regarding “construing a claim to preserve its validity”? For example, if a claim term is so intractable that no evidence tips the scale in favor of a particular construction, is it legally permissible to “resolve the ambiguity” merely because one of the two constructions allows the claim to survive a validity attack based on a defendant’s previously unconsidered prior art?

        1. Not sure. It was mentioned in Philips:

          “That is the rationale that gave rise to the maxim in the first place,” said the court, citing an 1873 Supreme Court case.

  10. Well, I’m sure if you searched claims for the word “spaced” you would find plenty. You would probably find plenty of claims with the word “spaced relation”. Maybe, in someones view, some of those would fall in the range you are looking for.

    1. Previous discussions have touched upon other examples of terms that on a sniff test would fail, but upon a reading of the claims as is required (according to a person having ordinary skill in the art to which the invention pertains, read in light of the specification) would pass.

      Examples such as “effective to” and “dimensioned so as to”

      This implicitly ties into the fact that the English language used in claims is necessarily not perfect, and that the use of the English language is NOT constrained to exclude types of use such as words of functional description – OUTSIDE of 112(f).

      We have been on this merry-go-round before, and it is clear that such use within a claim of such language (including functional descriptions) passes 112 under the 112(a) and 112(b) sections IN ADDITION TO the option to use 112(f).

      Let’s try to avoid that diversion on this thread…

      1. ^states completely wrong view of law

        ^further screws up by claiming that previous rulings have made something “clear” to a requirement that has just been given a different test two weeks ago

        ^suggests “diversion” be ignored

        You’re entirely wrong. Everyone would do well to ignore you.

        1. Everyone has a right to an opinion. However, when all you do is say that the other guy’s opinion is wrong … without explanation … all you are doing is wasting everybody’s time.

          You think is anon is wrong … explain why.

          1. Everyone has a right to an opinion.

            So very true.

            Some of us though have opinions vested in knowledge of the law and its history, and understand the facts of this world.

            Tends to make a huge difference. :-)

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