Indefiniteness “Can Be” Difficult under Nautilus

Ex parte Breed, Appeal No. 2012-003990 (PTAB 2014)

On June 2, 2014, the Supreme Court decided Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014) lowering the standard for negating patentability due to indefiniteness. The new test requires that the claim scope be “reasonably certain” to one skilled in the art at the time of the patent.

On June 4, 2014, the Patent Trial and Appeal Board (PTAB) issued its first decision interpreting Nautilus. David Breed is a prolific inventor and is named on more than 300 patents and is one of the inventors of the airbag. More recently, Breed has collaborated with Acacia Research Corp to enforce his patents.

The application at issue in this case is part of a large family of at least seven issued patents that claim priority back to a 2000 provisional application and is directed to a highway monitoring system that provides reports and information on road conditions. Application No. 12/020,684.

Claim 1 is a system claim that includes a whereby clause indicating that “whereby roadway conditions from multiple roadways can be obtained and processed at the remote facility.” The examiner rejected the claim as indefinite based upon the “can be” limitation and the PTAB has now affirmed that finding:

Patent applicants face powerful incentives to inject ambiguity into their claims, a temptation that needs to be mitigated by the courts. See Nautilus, Inc. v. Biosig Instr., Inc., 2014 WL 2440536 at *7, __ U.S. __ (June 2, 2014). Patent drafters are in the best position to resolve ambiguities in their claims. See Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). Section 112 places the burden of precise claim drafting on the applicant. See In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997).

. . .

Claim 1 recites that roadway conditions from multiple roadways “can be” obtained and processed at the remote facility and “can be” directed from the remote facility to other vehicles. The Examiner rejected claim 1 as indefinite. The Examiner stated that it is not clear if Appellants intended the “can be” claim limitation to be optional or that the phrase should be interpreted as a definite statement. . . .

Appellants now argue that the features following the “can be” phrases should be interpreted as optional and, as such, the claim is not indefinite. The verb form of the word “can” carries multiple meanings in the English language. It can be used to indicate a physical ability or some other specified capability. It can also be used to indicate a possibility or probability.

During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the instant case, Appellants have not directed us to any language in the Specification that supports a construction of “can be” that yields a particular and distinct meaning in claim 1. Instead, Appellants merely urge us to adopt one of two plausible interpretations. . . .

We agree with the Examiner that “can be” is indefinite, because it is susceptible to more than one plausible construction. It is unclear whether the limitation refers to a capability that is required to be present in the invention or whether it refers to a system capability that is a mere possibility that is not required. In other words, it is unclear whether a vehicle monitoring system can practice the invention of claim 1 by satisfying all of the other limitations of claim 1, without necessarily being required to possess the capability to obtain and process roadway conditions at a remote facility or to direct information from a remote facility to other vehicles on a roadway.

During prosecution, a claim is properly rejected as indefinite if it is “amenable to two or more plausible claim constructions.” Ex parte Miyazaki, 2008 WL 5105055 at *5 (BPAI Nov. 19, 2008) (precedential). The Miyazaki standard for indefinite rejection is justified, at least in part, because the applicant has the opportunity and the obligation to define his or her invention precisely during prosecution before the PTO.

Here, Appellants’ use of the phrase “can be” renders claim 1 indefinite and we sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 112(b).

The PTAB also quoted the Supreme Court’s nose-of-wax statement from its 1886 decision:

Some persons seem to suppose that a claim in a patent is like a nose of wax which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. The context may, undoubtedly, be resorted to, and often is resorted to, for the purpose of better understanding the meaning of the claim; but not for the purpose of changing it, and making it different from what it is. The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is; and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms. This has been so often expressed in the opinions of this court that it is unnecessary to pursue the subject further.

White v. Dunbar, 119 U.S. 47, 51-52 (1886) (emphasis added by PTAB).

I think that the decision here is correct and the USPTO is right to force the patent applicant to nail-down the particular scope of the invention being claimed. One interesting counter-point comes from the Supreme Court’s notion that definiteness requires examination of the prosecution history – here Breed argued that the term meant “optional,” but the PTAB here indicates that it is not sufficient to merely indicate which of two possible interpretations is the correct – rather a claim amendment is in order to solidify and provide express notice of that applicant decision.

110 thoughts on “Indefiniteness “Can Be” Difficult under Nautilus

  1. Can be is strange phrase to use. You don’t really get anything by using it. You should just put in their “configured to” and remove the “can be.” Can anyone think of any claim that has a different scope? I think this opinion is bogus. “Can be” is sloppy, but it is definite. If it “can be” in a claim, then is “is”.

    1. “Well, that depends on what the definition of ‘is’ is.”

      In the best Clinton tones. ;-)

      (and another indication that the ‘glossary’ movement is utterly asinine)

  2. I find the PTAB decision to be persuasive.

    I also think it is important that a patent claim apprise the public of what does not infringe. The use of what is argued by the applicant to be “optional” language makes the “what does not infringe” analysis most problematic.

  3. Les, can you explain just how the PTO could issue the Nautilus patent over structure that is identical to the claimed structural elements where the only difference alleged in is a whereby, so-that clause?

    The Feds are going to have fun with that on remand.

        1. Which leads directly to the heart of the software issue that Malcolm has refused to face: how does ‘oldbox’ – without change – come to have a new capability as demonstrated with the new machine created when the machine component and manufacture in its own right of software is added and the machine configured? See Diehr, Alappat, and Nazomi.

          The answer: It doesn’t. Thus, the “House” paradigm is debunked. To “get” there, you have to expand the invention of ‘oldbox’ to include ALL future inventions as exemplified by software – items not there inherently in ‘oldbox.’ You cannot do this. See Morse.

          Hence the “House/Morse” defeat of the anti-software patentists.

            1. It would be more awesome if you deigned to actually address the points that I have raised, instead of doing your usual CRP-run away-CRP again routine.

              Come man, ENGAGE – and please do so with intellectual honesty.

      1. Anon, I agree. The apparatus claimed, the circuits claimed, the heart rate method claimed are all identical with the prior art. The whereby clause is the only distinction. Thus one would ask what is it about the prior art that I cannot do?

        Justice Scalia made this point during oral argument – that the claim does not require any adjustment in anything in order to achieve claimed result in the whereby clauses. The claim is structured such that if one does what is in the claim structurally, then one simply gets the result claim in the whereby clauses.

        So if there’s something that has to be adjusted in order to achieve the result claimed in the whereby clauses, it is not specified in the claim – and neither is it specified in the written description. The claim itself doesn’t tell you enough for you to build the prior art and avoid infringement.

        1. it is not specified in the claim

          There is your error – 1) it IS in the claim, and 2) your use of the term “specified” is revealing more than you might think. Remember, claims need not be technical blueprints and are to be read and understood by a person having ordinary skill in the art to which the invention pertains, having been informed by the specification.

          No **sniff** tests allowed.

          And most definitely, no **sniff** test and ad hominem short-script posts have any credibility.

          1. claims need not be technical blueprints

            Looks like another new “talking point” is making the rounds.

            Of course, nobody is asking for a “technical blueprint”. All we’re asking for is one novel structure recited in structural terms.

            But apparently that’s too much to ask of The Most Important Innovators in the Universe.

            Anyways, I look forward to this silly new script of yours being recited mindlessly by the usual sycophants.

            1. Structure alone is not required – novelty can be captured in many ways.

              Of course, you already knew (or should have known) this legal point, right?

              You are not trying to obfuscate a material point of law, are you?

      1. Les, the only novelty claimed was the “fact” that the signal due to the unwanted signals were balanced. Everything else read on the prior art.

          1. You know anon, this was claim construction. But the district court was well aware of what went on in prosecutions such that “any spacing” would render the patent valid.

            The construction of a linkage between spacing and the result is what allegedly saves the patent. But this really is not the way the claim reads.

  4. DanH I note that the applicant in this case argued to the Board that certain parts of the claim were optional, which I take to be mean that they’re not limiting. It seems to me that the PTO ought to, as a general rule, require claim elements that are truly optional to be stricken from the claim.

    Indeed. The same considerations apply to functional “if — then” language in information-processing claims. Ignoring the eligibility issues (which are nearly always present) for the moment, such claims need to be examined in view of prior art methods which describe the recited logical pathway with the least steps.

    For example, a medical treatment method which teaches “administering decreased amount of drug B if X is between Y and Z” is corectly read to cover doing nothing (and everything else!) when X falls outside of the recited range. Those actions are in the prior art (inherently, at least) and should properly tank the claim as anticipated or obvious.

    The PTO should be using this same logic to tank a lot of the computer-implemented jnk out there.

    1. What if your hypothetical claim got rid of the conditional by saying “determining that Y<X<Z, and administering less B"? Would that make a difference?

      1. Clearly no, as Malcolm is only pounding tables here (and will continue to pound the table as he has no law to pound, nor any facts to pound).

      2. I’m with you, Tino. I try to write my claims in more or less the manner you suggest (although I suggest tying the administering step to the determining), for the reasons that MM gives. That does seem like a form-over-substance approach, but I think it’s a better claim.

        1. DanH/Leopold, your “cheerleading” of the vap1d one remains…

          Clearly, Malcolm is doing more (and attempting to do more) than the mere suggestion that you allude to here.

          Your fawning over him and unseemly support is more than a bit bizarre.

      3. What if your hypothetical claim got rid of the conditional by saying “determining that Y<X<Z, and administering less B"? Would that make a difference?

        That seems to be moving in the right direction but “less B” includes “zero B” so you may again run into prior art problems.

        Remember: people administer different amounts of drugs to others or to themslves for all kinds of reasons. Unless you’re step of “determining” is a novel physical step, you’re going to have difficulty relying on it to obtain or enforce a broad claim to “administering less” or “administering more” of a drug whose identity and utility are well-known in the prior art.

        This is as it should be, of course, unless we want to create a risk of patent infringement every time you or a doctor adjusts the dosage of a well-known drug. There are, after all, an infinite number of overlapping reasons for adjusting dosages at any time. People all over the world “innovate” “new” reasons every day as they self-medicate using various drugs in their own medicine cabinet.

        The lowest form of innovation in the medical treatment field is (surprise!) the same as that in the “computer-implemented” field: attempts to protect information that is useful for diagnosis and treatment without discovering or disclosing any new structures or new physical transformations.

    2. “For example, a medical treatment method which teaches “administering decreased amount of drug B if X is between Y and Z” is corectly read to cover doing nothing (and everything else!) when X falls outside of the recited range. Those actions are in the prior art (inherently, at least) and should properly tank the claim as anticipated or obvious.”

      Your assertion is very very wrong. What such a claim claims is the doing of the action if the condition is met. What happens if the condition is not met is not being claimed.

      1. What such a claim claims is the doing of the action if the condition is met. What happens if the condition is not met is not being claimed.

        At best, that’s a claim construction issue and you are taking a chance with indefiniteness.

        Just claim your “innovative” action straight up, assuming that there is one. That’s what a skilled patent attorney would do when presented with a patent-worthy invention.

  5. Really? Regardless of where the blame lies, you mean to tell me that everyone went through all this work and expense … when the inventor and his counsel apparently (I haven’t reviewed the file history) could have received all the patentable scope they feel they’re entitled to … with a simple amendment … and a handful of additional claims? Sheesh.

    1. Steve, what you said is what the Plager said in In re Morris 1056-1057, the portion of the case cited by the Supreme Court. But from the prosecution history of Morris discussed the in portion of Morris the Supreme Court cited, you might see just why case was there was an appeal – the examiner rejected over Brown, the applicant added “integrally formed,” the examiner then cited a different reference, the applicant added more limitations, then the examiner once again rejected over Brown. How in the world?

      Yet now the Supreme Court gives its opinion that Morris was really about 112(b) – the obligation to precisely claim, although that rejection was never made by the PTO in Morris.

    2. when the inventor and his counsel apparently (I haven’t reviewed the file history) could have received all the patentable scope they feel they’re entitled to … with a simple amendment … and a handful of additional claims
      I’m not defending the claim language here. It is sloppy. Why put “optional” language into a claim? There is ZERO need for it.

      That being said, there are good reasons not to amend claims. Any amendment will allow an examiner to go final in the next response. Any amendment invokes Festo. Sometimes you have to draw a line in the sand and say “this is what X means, and I don’t need to further ‘clarify’ it.”

      1. Oh no,

        Are you assuming that you are discussing this with someone who cares about such real-world practice considerations?

      2. Sometimes you have to draw a line in the sand and say “this is what X means, and I don’t need to further ‘clarify’ it.”

        And sometimes you end up with a worthless piece of paper because (1) there wasn’t any “invention” to begin with; and/or (2) you let your Big Talkin’ “We’ll Appeal Everything” Patent Attorney blow a lot of sunshine up your butt while your wallet was being picked.

        1. get into a line of work in which you can believe in the work product.

          Your self h@ te and such for “attorneys” is clearly creating a schism in your psyche.

        2. you let your Big Talkin’ “We’ll Appeal Everything” Patent Attorney blow a lot of sunshine up your butt while your wallet was being picked.
          A successful appeal on good technology is worth, at a bare minimum, 100X the amount the client paid for the appeal.

          Bad attorneys, such as yourself, are likely to draw out prosecution with amendment after amendment, RCE after RCE, and estoppel followed by more estoppel — all to produce bloated claims.

          Appeal is oftentimes the cheaper route.

          (1) there wasn’t any “invention” to begin with
          Oh yes … another version of the “all inventions other than biotech are c r a p” refrain from you. While you get low marks for sophistication, your message certainly is consistent.

          1. are likely to draw out prosecution with amendment after amendment, RCE after RCE, and estoppel followed by more estoppel — all to produce bloated claims.

            You overestimate Malcolm’s ability as a lawyer. He heads straight for the bloated and worthless picture claim right from the start (he was completely unaffected by the factual historical record of the patent allowance cliff during the Dudas administration, don’tcha know?).

            That’s his bio-chem background colored glasses speaking – he has ZERO appreciation for other art fields and ZERO appreciation of the application of the ladders of abstraction used in 98% of worthwhile claims.

            1. That’s his bio-chem background colored glasses speaking – he has ZERO appreciation for other art fields and ZERO appreciation of the application of the ladders of abstraction used in 98% of worthwhile claims.
              You pretty much nailed it.

      3. Any amendment invokes Festo.

        Even when the amendment is to strike language that is non-limiting? What range of equivalents are you entitled to for an optional feature?

        1. Clench tight those eyes Leopold.

          Amendments will be argued to effect the loss of the doctrine of equivalents universally – not just in the immediate focus of the amendment.

          Wake up man.

        2. What range of equivalents are you entitled to for an optional feature
          What do you think opposing counsel is going to argue? You don’t amend, and they are going to argue that it isn’t an optional feature. You amend, and then they are going to argue some type of estoppel.

          Regardless, as I mentioned earlier, there is no need for “optional” language in claims — its sloppy. I’m sure their attorney decided it was optional after putting it in.

          As an aside, I h a t e the use of “can” within claims or the specification. I’ve seen too many attorneys trained to use it EVERYWHERE in the specification. As the Board noted, “can” has the meaning of “capability of” or “optionality.” If your intent is to have one meaning to the exclusion of the other meaning, then don’t use “can.” An examiner or opposing counsel won’t hesitate to argue that it means differently than what you intended if it suits their purpose.

  6. a temptation that needs to be mitigated by the courts.

    One word: Officious.

    (Lady Justice has a blindfold for a reason)

  7. Compare the claim in Nautilus:

    1. A heart rate monitor … comprising:

    8 recited apparatus and circuits elements;

    a wherein clause where the users hands are required to contact electrodes;

    and then this:

    “whereby, a first electromyogram signal will be detected between said first live electrode and said first common electrode, and a second electromyogram signal, of substantially equal magnitude and phase to said first electromyogram signal will be detected between said second live electrode and said second common electrode;

    so that, when said first electromyogram signal is applied to said first terminal and said second electromyogram signal is applied to said second terminal, the first and second electromyogram signals will be subtracted from each other to produce a substantially zero electromyogram signal at the output of said difference amplifier;

    and whereby a first electrocardiograph signal will be detected between said first live electrode and said first common electrode and a second electrocardiograph signal, of substantially equal magnitude but of opposite phase to said first electrocardiograph signal will be detected between said second live electrode and said second common electrode;

    so that, when said first electrocardiograph signal is applied to said first terminal and said second electrocardiograph signal is applied to said second terminal, the first and second electrocardiograph signals will be added to each other to produce a non-zero electrocardiograph signal at the output of said difference amplifier;

    there following three means plus function clauses related to measuring heart pulses, etc.; and a final

    whereby, the heart rate of said user is displayed on said display device.

    The sole novelty in the claim, as argued, in the reexamination was in the “whereby – so-that” clauses. The prior art had everything else, including the spaced electrodes, circuits and heart rate measurement apparatus.

    Nothing in the specification told one what of the claimed structure was responsible for the results claimed by the whereby clauses. Yet it was claimed that the prior art did not achieve the result claimed.

    Now, you tell me, what is it about the prior art that I cannot do and why?

          1. anon, you do know that Nautilus is on remand from the Supreme Court and the “whereby” clause raises somewhat the same issue as in the case at bar?

    1. Ned, you contradicted yourself within the same post.

      You said the claim recited:

      a wherein clause where the users hands are required to contact electrodes;

      That’s wherein, not whereby.

      I have never received a rejection that said a wherein clause was not given weight. I don’t think I have ever received a rejection of a claim with a whereby clause that did not say a whereby clause was not given weight.

      I haven’t studied the claims, but my understanding is you can’t make an exercise device with hand grips, each hand grip having two cardiac electrodes located where the users palm would go, the electrodes on any one grip being spaced from about 1 mm to about 30 mm as that spacing would meet the requirement, even for the smallest/youngest intended user of allowing the hand to contact both electrodes.

      1. Les, just to make it clear everything in the claim is old except for the whereby clauses, and the whereby clauses were relied upon in the re-examination to distinguish the prior art. Thus the prior art showed an exercise apparatus with two handheld cylinders upon which there were spaced electrodes to be grasped by the hands. The circuits were the same. In the heart rate method was same. There was a simply no difference at all between the claimed subject matter and the prior art except in the whereby clauses.

        You might want to listen to the oral argument in Nautilus where Scalia made the point that nothing in the claim requires any adjustment for any purpose. It simply says if you do what is instructed in the claim in terms of structure it yields the result of the whereby clause. But, since all that structure is old, where does that leave us?

        Again I ask, what is it about the prior art that I cannot do because of this claim?

        1. just to make it clear everything in the claim is old

          UM, just a reminder, claims are fully patent eligible and may be patentable with ALL elements being nothing more than old elements.

          Only God works from scratch.

        2. (sigh)

          Ned I have the structure of three resistors.

          In A) I configure the resistors to be in parallel.
          In B) I configure the resistors to be in series.

          Is A) fundamentally different than B)?

          Now magnify this a million fold.

        3. My recollection of the part of a summary of Nautilus that I started to read online was that the spacing was argued as the distinguishing aspect. You indicated previously that the spacing was recited in a wherein.

          Shrug…

          Whereas if nothing was new but for what was recited in a whereby as outlined by Scalia, then in this particular case, and only is this particular case for a long time, I would have to agree with him however if as you previously stated, the distinguishing feature was in a wherein I don’t see the controversy is.

  8. Re: “..that claim priority back to a 2000 provisional application”

    An application already kept pending 14 years in the PTO from its actual [original] filing date, as here, and now presumably taking several more years to issue? Also that gross pendency is not even noted in this Board decision. Both are inexcusable, and publicly dangerous.
    Among other problems, it enables certain applicants to file divisionals and continuations many years after the specification filing date with new and different claims written “from the catbird seat” to cover major public work of others since then, even if not actually supported by that specification. The reduced patent term from original filing date of the current statute is no deterrent when such delay opportunities [provided by the PTO] can provide patent claims that can be lucratively asserted for even a few remaining years of patent term .
    When will the PTO ever start dealing with its pending applications on a proper priority date basis?

    1. Paul, “new and different” claims does not necessarily mean “new and different” inventions.

      Most patent attorneys take allowed, narrow claims and continue to prosecute the disallowed broader claims in continuations — perhaps even removing from them unnecessary limitations. I perceive nothing wrong in this.

      I find it remarkable the attitude of some that they can spot an unnecessary limitation in a claim, avoid it, and think they are home free. Now that kind of attitude is what I call a real problem.

    2. Paul,

      Your warnings are overblown.

      Term tied to earliest priority date and no new matter added take care of your concerns – no need to kick up dust.

      Thanks.

  9. my Maserati “can be” driven at 185 MPH, would the meaning of that sentence be mysterious? Would any of you think I meant it must be driven at 185?

    How fast do I need to drive it to infringe your claim, Les?

    Oh right: you didn’t even bother to present us with an actual claim.

    C’mon, man. Step it up a little bit.

    1. The issue was “the plain import” of “can be”.

      That has nothing to do with claims. Why should I present it in a claim?

    2. A Maserati comprising:
      A really big engine;
      A really robust transmission made with a list of particular components arranged just so, an output of which is cooperatively coupled to;
      4 kicka$$ Perellis, whereby said Maserati CAN BE driven at 185.

      The answer to your question is now: infringement is determined independent of speed. The whereby clause is not limiting and is given no patentable weight.

      1. 1. Maseratti having X, Y and Z whereby it can be driven at 185 up a 30 degree grade, gravel road, in a poring rail.

        I don’t think such a claim is indefinite. The problem is that it brags.

      2. Your claim is indefinite. What if I build a Maserati comprising: a really big engine; a really robust transmission made with a list of particular components arranged just so, an output of which is cooperatively coupled to; 4 kicka$$ Pirellis; and
        a governor arranged to limit the output of said transmission so that the Maserati’s top speed is 184 mph.

        Does my Maserati infringe your claim? It’s got all the structural limitations of yours, but the “intended result” of mine is that it can’t be driven at 185.

        If a “whereby” clause recites a necessary outcome of a recited structure, then it’s simply an intended result and can be ignored. Otherwise, it raises questions as to whether the whereby clause is limiting – if it’s not clear, it should be stricken.

        1. – if it’s not clear, it should be stricken.

          To whom ?

          Someone in litigation? (always unclear)
          The patentee? (always clear)
          A person having ordinary skill in the art to which the invention pertains? (guess the answer that will invoke the typical **sniff** and ad hominem reply)

        2. Your claim is indefinite. What if I build a Maserati comprising: a really big engine; a really robust transmission made with a list of particular components arranged just so, an output of which is cooperatively coupled to; 4 kicka$$ Pirellis; and
          a governor arranged to limit the output of said transmission so that the Maserati’s top speed is 184 mph.

          Does my Maserati infringe your claim? It’s got all the structural limitations of yours, but the “intended result” of mine is that it can’t be driven at 185.

          Yes. As I previously indicated, its a whereby clause and is not given patentable weight and is therefore not limiting.

          Moreover, even if the clause were considered relevant, the word whereBY refers to the listed components and their interconnection. The matching subset of components in your car could be driven at 185. The fact that you choose to add a trailer hitch and a mobile home, or a governor does not alter the fact that BY the claimed combination, the car CAN do 185.

          If Marconi claimed a radio receiver and concluded the claim with : whereby information can be received from a remote transmitting station, would you say that a radio doesn’t infringe if it isn’t turned on? Would you say that there must be a transmitter to infringe?

          Plain meaning people…

          Paleeeze

          1. Plain meaning people…

            The “plain meaning” to any ordinary person of your Maserati claim is “a Maserati comprising [a parts list], whereby said Maserati CAN BE driven at 185.” And yet you say it covers a Maserati that can’t be driven at 185. Apparently your definition of “plain meaning” is different than mine.

            1. Your car includes the listed combination. Therefore, it infringes.
              As a side note. If it includes the listed combination it CAN be driven at 185. Your adding additional components does not alter the fact of the infringement.

              If you like, you can think of your car as comprising an infringing copy of my Maserati as a sub-component.

              Of course, you could buy the sub-component from me, and we’d be good.

              1. Do you have the House/Morse-style ‘oldbox’ that magically has “already in there” inherently all future software?

                Can I have one of those please?

  10. I note that the applicant in this case argued to the Board that certain parts of the claim were optional, which I take to be mean that they’re not limiting. It seems to me that the PTO ought to, as a general rule, require claim elements that are truly optional to be stricken from the claim. If the language is not limiting, it’s potentially misleading – isn’t that a violation of 112’s requirement to “particularly point out and distinctly claim” the invention?

    1. It seems to me that the PTO ought to, as a general rule, require claim elements that are truly optional to be stricken from the claim.
      See MPEP 2111.04 — although many examiners take it to the extreme.

  11. What in the world is the point of reciting an “optional” element in a claim?

    Put the “optional” element in the dependent claim and use clear language like “wherein said roadway condition is obtained….”

    In any event, even without seeing the claim we can all be 99.99% certain that it’s obvious jnk. I was stuck in a traffic jam yesterday and thought about how “in the future” our cars will be “so smart” that they will alert drives of sporting, entertaining and other events will predictable start and end times that will likely create increased traffic on a particular route (and therefore recommend another route).

    Of course, people are smart enough to do that for themselves now. At least I am. And I’m also smart enough to know that a computer can process such information now even more quickly than I can. If I was grifting bttmfeeder I might have rushed to the PTO to file my patent and come here and accused all you good folks of being jealous of my awesomeness. Instead, I donate my “innovation” to the public.

    Congrats to the PTO on their new tool and using it wisely to get rid of the jnk that pervades our patent system.

    1. What in the world is the point of reciting an “optional” element in a claim?

      Agreed. I’ve got a comment on the same point stuck in moderation.

  12. OMG the more I look into this, the more outraged I get. The remote facility is mentioned 4 times in the spec. Each time after “and/or.” What could be more clearly optional than that?

    link to google.com

    1. Have you looked at the claim under appeal, Les? I’ve reproduced it below, and it’s definitely problematic. A bigger problem than the “can be” language is that the last clause describes operations at the remote facility (which you say is optional), but it’s not clear that the remote facility is part of the claimed system. The listed elements include “sensors,” “at least one interrogator,” and “a communication device,” while the “whereby” clause at the end seems to recite an anticipated outcome of deploying the system. Furthermore, the “wherein” clause near the end of the claim recites an operation, rather than even describing a function of the interrogator. The claim is definitely indefinite.

      All that said, I’m not sure I understand why the PTAB felt it necessary to include the editorial comments about those wicked patent applicants. The PTAB’s role is to apply the law, not to wax philosophical about it.

      1. A driving condition monitoring system for a vehicle on a roadway, comprising:
      sensors located on or in a vicinity of the roadway, said sensors being structured and arranged to provide information about the roadway, travel conditions relating to the roadway and external objects on or in the vicinity of the roadway; and
      at least one interrogator arranged on the vehicle that receives the information obtained by said sensors and transmitted by said sensors using a wireless radio frequency mechanism; and
      a communications device arranged on the vehicle and coupled to said at least one interrogator, said communications device being arranged to transmit the information received by said at least one interrogator from said sensors to a remote location separate and apart from the vehicle
      and the roadway,
      wherein the information received by said at least one interrogator is provided to an operator of the vehicle; and
      whereby roadway conditions from multiple roadways can be obtained and processed at the remote facility via multiple vehicles travelling on different roadways or different portions of the same roadway and can be directed from the remote facility to other vehicles on the roadway or roadways from which the information is obtained.

      1. The listed elements include “sensors,” “at least one interrogator,” and “a communication device,”

        WOW! Sooper dooper advanced technology!!!!!

        1. WOW! Sooper dooper advanced technology!!!!!
          That is likely true. Of course, you wouldn’t know that because you appear to be willfully ignorant of the details of most technology. Instead, you would rather denigrate any technology that isn’t biotech as being junk.

          1. the details of most technology

            Like the technology “details” in this claim?

            LOL. Keep diggin’, Big Talkin’ Patent Attorney. You’re a load of laughs.

            1. Like the technology “details” in this claim?
              Another so-called “patent practitioner” who doesn’t understand the difference between the 1st and 2nd paragraphs of 35 USC 112.

              Claims are not a technical document.

      2. There is absolutely nothing at all worthy of patent protection here. It’s nothing more than the use of old information processing technology to process information that everybody knows that computers can process and people have been processing themselves since pretty much forever.

        David Breed is a prolific inventor

        He’s prolific at something else, too, apparently.

      3. 1) The last clause is a whereby clause, which I’m pretty sure gets no patentable weight (or did I miss a memo?), so why does it get unpatentable weight?

        2)If the problem in clarity is somewhere other that the “can be” that was referenced in the rejection, then issue a new non-final with that new ground of rejection and give me an opportunity to amend. Who would imagine that supervisory, and then the PTAB personnel would dig in on an assertion that “can be” might be a requirement, especially in a whereby clause that is the equivalent of dicta.

        1. 1) The last clause is a whereby clause, which I’m pretty sure gets no patentable weight (or did I miss a memo?), so why does it get unpatentable weight?

          Now you sound like an examiner, Les. There’s no rule that says that “whereby” clauses never get patentable weight. It gets “unpatentable weight” because the reader can’t tell whether it is meant to limit the claim or not.

          In any case, if it’s superfluous, the applicant should have no problem with deleting it, right?

          1. I mean, it gets “unpatentable weight” in this case because the reader can’t tell whether it is meant to limit the claim or not.

            The MPEP is correct on this topic – the use of “whereby” language may raise a question about whether the language is limiting, but it ultimately depends on the specifics of the case.

            1. lets have a look at the whole relevant section of the MPEP, shall we:

              2111.04 “Adapted to,” “Adapted for,” “Wherein,” and “Whereby” Clauses [R-08.2012]

              Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are:

              (A) “adapted to” or “adapted for” clauses;
              (B) “wherein” clauses; and
              (C) “whereby” clauses.

              The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case. See, e.g., Griffin v. Bertina, 283 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002) (finding that a “wherein” clause limited a process claim where the clause gave “meaning and purpose to the manipulative steps”). In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), the court held that when a “‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. However, the court noted (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) that a “‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’” Id.

              “The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case. ”

              Which particular facts of this case leads one to believe this particular whereby clause is limiting?

            2. Which particular facts of this case leads one to believe this particular whereby clause is limiting?

              1) The fact that the drafter put 51 words into a claim, which 51 words he now asserts are “not limiting.” The only reason for including 51 non-limiting words in a claim that I can think of is to confuse the reader.

              2) The fact that the rest of the claim doesn’t recite enough structure to allow conditions from “multiple roadways” to be “obtained and processed via multiple vehicles.” If the structure in the system claim is not sufficient to carry out the alleged “intended result,” then it’s a fair question as to whether the “intended result” requires the system to include additional features.

              I’m more than a little surprised that you’re defending this claim so vigorously. It’s a very badly drafted claim.

              1. “The only reason for including 51 non-limiting words in a claim that I can think of is to confuse the reader.”

                I sometimes include non-limiting words to clarify what the limiting words mean.

            3. Been there? Done that?

              Who cares! We have am Article I Court drunk on its new power to set those ‘evi1′ grifters straight

              /off sardonic bemusement

            4. The only reason for including 51 non-limiting words in a claim that I can think of is to confuse the reader.
              Applying Occam’s razor, I would attribute that language to incompetence more than some nefarious intent of the claim drafter.

            5. I’m more than a little surprised that you’re defending this claim so vigorously.

              Take a step back. Most defenses on these boards are not necessarily to a particular claim, but rather to the legal battles that the claim is placed in. This is an old tendency of yours Leopold, and directly leads to that just-tell-the-wrong-people-to-just-shut-up thingie of yours.

            6. “1) The fact that the drafter put 51 words into a claim, which 51 words he now asserts are “not limiting.” The only reason for including 51 non-limiting words in a claim that I can think of is to confuse the reader.”

              The words were added by amendment. Faced with a rejection, and perhaps a looming deadline, the “drafter” reached into the spec for a limitation that was not in the prior art and found it in the –remote facility– or what ever it was. But the drafter was concerned that the term used in the spec, by itself was not terribly meaningful so he made an effort to define remote facility by lifting descriptive text from the spec and including it “safely, he thought ” in a meaningless whereby clause.

          2. I’m sure if it wasn’t presented in a Final Office Action, the ridiculous rejection would have resulted in an amendment of some sort.

            However, at some point, one must say no to rewarding examiners for nonsense with additional points by filing RCEs and hope for sanity at the board.

            1. I haven’t checked the status of this particular case, but if it was after final, they could most certainly have filed an after final amendment to resolve the 112(b) issue before filing the appeal. Just look at the four boxes in section 3 of the advisory action form, make sure your amendment doesn’t run afoul of any of those, and the examiner then has no reason to deny entry of the amendment.

            2. But there was not 112(b) issue, there was only a ridiculous assertion.

              And I believe you are mistaken. Since the examiner latched on to the alleged issue as a reason for rejection, the examiner did not do a further search and would have asserted that the “correction” raised new issues and would refuse the amendment entry without an RCE.

  13. ” and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms. ”

    Then why is the court construing the claim in a manner different from the plain import of its terms.

    If I said my Maserati “can be” driven at 185 MPH, would the meaning of that sentence be mysterious? Would any of you think I meant it must be driven at 185?

    Paleeeeze.

    1. Joe Walsh’s Masarati does 185 …

      No wording or limitations in a claim should ever be construed as optional. If the words are there, the limitations are there, and the limitations are mandatory.

    2. If your Masarai “can be” driven at 185, then it must have the inherent capability to be driven 185. That is not optional.

      1. Yes, the capability is there. But a copy does not have to be driven at that speed in order to infringe.

        The capability to send the info to the remote facility is required. But information does not have to be sent to infringe.

        1. The capability to send the info to the remote facility is required. But information does not have to be sent to infringe.

          That’s not the issue with the present case. The issue is whether there has to be a remote facility at all and, if so, whether the remote facility has to be capable of doing certain things. The claim doesn’t make that clear, and is indefinite.

          1. But the opinion seems to say that “can be” is *always* indefinite. This seems tough to argue, because “can be” simply means “able to be,” and it’s well-settled that many adjectives ending in the suffix “-able/-ible” are not automatically indefinite.

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