Struggling with Nautilus: Patent Claims Through the Eyes of Non-Lawyer Technologists

By Dennis Crouch

This post goes on a tangent from the recent decision in Q.I. Press Controls v. Michelle K. Lee, USPTO Chief (Fed. Cir. 2014).

Quad/Tech’s Patent No. 6,867,423 covers a visual inspection system for identifying errors in printing press operation – such as paper misalignment or poor color. The invention basically has a digital camera with a ring non-strobe LED’s surrounding the lens. The camera is pointed toward the printing press operation. The prior art included cameras with ring-LED lighting as well as the use of cameras to monitor printing press activity. However, none of the prior art references combine both of these features. In the bulk of the claims, the “printing press” element is found only something akin to a field-of-use limitation found in the claim preamble. Thus, claim 1 is directed to “[a] visual inspection system configured to be in optical communication with a substrate of a printing press, said visual inspection system comprising: . . .” However, claims 61-72 refer more expressly to the printing press linkage within the body of the claim.

The court’s opinion (as we cover in a separate post) focuses on obviousness and written description. Here, I write about indefiniteness as it relates to these preamble limitations.

Is it a Technical or a Legal Document?: A usual rule of patent claim construction is that limitations found in the preamble of a claim – especially field-of-use limitations – do not limit claim scope. However, sometimes preamble terms are limiting as the Court explained in Pitney Bowes:

If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.

Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999); M.P.E.P. 2111.02. Many claim construction questions involve drawing quite fine-lines of involving coverage scope. Preamble-limitations are different because we are often talking about importing an entire limitation into the coverage that was not previously there. By examining the body of court decisions, it is possible to elucidate a set of factors helpful in determining whether a particular preamble-limitation should be scope-limiting. But this is a pretty tricky issue and I don’t think that we should assume that inventors and technology developers would understand the particular circumstances of when certain preamble-limitations are limiting. Rather, those legal-technicality questions are typically the province of patent attorneys who work with the substance of the law on a daily basis.

It turns out this is important following the Supreme Court’s recent indefiniteness decision in Nautilus. In Nautilus, the Supreme Court provided a clear statement that patent claims are technical-in-nature and designed to be read by persons-having-ordinary-skill-in-the-art. For camera technology, someone of skill in the art might be a camera designer and in the indefiniteness context the indefiniteness question is whether the claim scope would be reasonably certain to the camera designer (after considering the intrinsic evidence).

Tying this back to the issue of preamble-limitations: An ordinary camera designer would not be familiar with the law of preamble-limitations and how they would apply in this case. And, this leaves us with a several of potential results. Perhaps (1) a claim is invalid as indefinite when its scope depends upon and substantially changes according to the particularities of the preamble-limitation doctrine. (2) An alternative tact is to assume that the Supreme Court’s PHOSITA has been advised by a skilled patent attorney and thus understands the law.

123 thoughts on “Struggling with Nautilus: Patent Claims Through the Eyes of Non-Lawyer Technologists

  1. arrrgggghhh, patent “law” is ridiculous.

    PREABLE ALWAYS LIMITING.

    Easy. Rational. Applicant in complete control. Consistent.

    I have been repeating this mantra for years, and it is just as valuable now, as it was then.

  2. Another OT, but intersects with several patent themes:

    link to finance.yahoo.com

    - wanting to be freeeee!
    - transience what?
    - binary (and Benson) to be rethunk
    – finally plainly teleportation is just too cool – even as it is being applied to NWPA’s conservation of information theories (fold in quantum computing and a recent view as expressed by Neil DeGrasse Tyson in that a mere 3% jump in thinking ability on intelligence and computing capability renders much of what is quibbled about moot…

    1. Indeed that happens to yo a lot anon, especially when scientry is involved. Take for instance you post about teleporting. I’ll respond and simply say that if you think the subject of the article is relevant to something being “free”, nuijten/benson or conservation of info ur both crazy and not smart enough to know why you’d be crazy in that fashion.

      1. lol – “happens to yo” – lovely AOOTWMD ( sorry 6 – wrong again, as it does NOT happen to me a lot.

        But thanks for your concern.

      2. listen again to the link I previously supplied (the Neil DeGrasse Tyson link). Let it run and listen to like three stories. In there there is a lesson as to how much above you I am with these legal and technical concepts – how much you evidently struggle on basic notions.

        1. Ok Mr. Psychopath, if I see a video by Mr. Tyson then I’ll be sure to watch it and see how grate you r. I don’t see any in these two links tho.

          1. Mr. Psychopath” – lol that passive aggressive nature of yours has swung to the aggressive side I see.

            The Tyson link was shared yesterday (and you mentioned that you “had seen it” – although that now appears to be doubtful.

  3. Dennis: if PHOSITA, working with her patent attorney, is not reasonably certain of the scope then the claim is invalid.

    Put another way: the attorney attempting to enforce the claim with the help of a PHOSITA or inventor must be reasonable certain of the scope of their asserted claim or else the claim is invalid.

    For this reason (among others), patentees should be required to provide their construction of all relevant terms with their complaints or immediately thereafter. Similarly, well before any Markman hearing, the failure of a patentee to respond directly (yes or no) to clear interrogatories about whether a hypothetical embodiment falls within the scope of the claim terms should be construed as an admission that the claims are indefinite.

    1. “Put another way: the attorney attempting to enforce the claim with the help of a PHOSITA or inventor must be reasonable certain of the scope of their asserted claim or else the claim is invalid.

      For this reason (among others), patentees should be required to provide their construction of all relevant terms with their complaints or immediately thereafter. Similarly, well before any Markman hearing, the failure of a patentee to respond directly (yes or no) to clear interrogatories about whether a hypothetical embodiment falls within the scope of the claim terms should be construed as an admission that the claims are indefinite.”

      Frankly I have to agree with that. If the patentee himself doesn’t know, or won’t say, what his claim covers and doesn’t cover there is a problem.

    2. “the failure of a patentee to respond directly (yes or no) to clear interrogatories about whether a hypothetical embodiment falls within the scope of the claim terms should be construed as an admission that the claims are indefinite.”

      Why exactly wouldn’t it mean that the hypothetical was indefinite?

      1. Why exactly wouldn’t it mean that the hypothetical was indefinite?

        I anticipated this “objection” which is why I required that the interrogatory be “clear” in my original comment.

        1. You said the interrogatory was clear, not the hypothetical.

          Q: Would a Sony X-35 mounted to a printing press infringe your claim?

          A: I don’t know.

          MM: Ah HA! Your claim is indefinite!

          Me: No, I just don’t know what a Sony X-35 is.

            1. Point is: Clarity is in the eye of the beholder. My hypothetical questioner thought the hypothetical was clear. Since I didn’t have all the information she had, it was not clear to me.

              The same problem occurs in claim construction and specification drafting.

              You should ease up a bit on inventors and their representatives if what was clear to them is not clear to you, the fault dear Brutus may be in you.

    1. (sigh)

      context really does matter 6 – just because the same word is used, doe not mean that the word has the same legal meaning.

      1. “doe not mean that the word has the same legal meaning.”

        Don’t get your panties in a bunch being all impatient. That’ll come shortly.

        1. My “panties” are not “in a bunch.”

          I merely point out that you are in error. Whether you want to correct that error or not is fully up to you.

          1. “My “panties” are not “in a bunch.””

            Well you say that but they appear to be.

            “I merely point out that you are in error. ”

            Then you should go ahead and “point out” how I’m supposedly “in error”.

            1. you should go ahead and “point out” how I’m supposedly “in error”.

              That’s not part of TB’s playbook. It’s so much easier to just fling the insult and scamper away. Besides, if he spends all his time explaining stuff here then how will he know when Big G’s boots need polishing?

            2. your error is (obviously) in ignoring the context of the use of the word “think.”

              Come man, THINK (used in an obviously different context).

              (as to Malcolm – yet another typical FAIL reflex moment)

            3. “in ignoring the context of the use of the word “think.””

              I ignored the context of the article (aka the context of “a newly constructed computer thinking”) in the making of my comment regarding computers thinking? Nah brosef, I was well aware of it and kept it in mind when I made my comment. In fact the context of the article was a chief reason why I posted it and made a comment.

            4. Thanks for admitting that you are just brain dead.

              I tried to give you an out, but your choosing to say “I did not ignore” only goes to how clueless you are – you did not ignore and yet made the error you did…

              /face palm

            5. “you did not ignore and yet made the error you did…”

              Ok, so you accept that I did not ignore the context. However you just said that you allege that the ignoring was the supposed “error”. Now that we’ve established that I did no such “ignoring”, then do you have some other “error” I supposedly am “guilty” of making?

              No. You do not. But you are a tard that talks in circles.

            6. No circles 6. Just read 16.1.1.1.1.4 again.

              Ignoring context is NOT the only possible error. You got it wrong even as you admit to knowing the context.

              It’s even more egregious an error if you know the context and went ahead anyway in being a bonehead.

            7. “Ignoring context is NOT the only possible error. ”

              Ahhh, so you think it isn’t the only “possible” error. That technically true, I could have made an infinite number of errors I suppose. Though you have yet to point any out.

              “It’s even more egregious an error if you know the context and went ahead anyway in being a bonehead.”

              Ahhh, “it’s” a more egregious error. Though what “it” is has yet to be specified.

              Are you planning to tell us what “it” is at some point or are you just going to continue to troll me all day long?

            8. Do you really need to be explicitly told that a machine is not a person to understand that a machine is not a person 6?

              Have I not stated this many times over and in the delightfully succinct term of anthropomorphication?

              And you want me to hold your hand (yet again) and tell you what “it” is that you have in error?

              If you don’t already understand, one may seriously question your ability to understand, and no amount of telling you will make a difference.

              Your Malcolm-like AOOTWMD use of “tro11ing” notwithstanding, it is clear exactly who is tro11ing here (and that be you).

              101 expressly uses the term ‘machine’ and there is no caveat indicating that a machine does not mean machine.

            9. Oh so all this time you were just meaning to restate your dogma and ignore the newly presented evidence that is quite clear on the topic. My bad.

              Well yes, if I accepted your dogma then sure I would have made an “error”. But since I don’t, nah, no error. I simply presented some evidence against your dogma and noted what the evidence indicates.

            10. First my stance is not dogma, but mere fact.

              Second the evidence you purport is not evidence of what you think but is in fact an example of my stance.

              Your indications are wrong on their face. I attempted to give you an out of why you were so blatantly wrong – the allowance that you had merely mistook the context of use (btw, context still is important). However, you rejected my generosity and claimed that you understood that the context was in fact different, but that you still wanted to state that you believed that what you posted was “evidence,” not understanding that your evidence is – in fact – evidence of my stance.

              Are you capable of understanding what the word anthropomorphication means?

              While I play with the spelling, the word existed before I came along and will exist after I am gone. You continue to make the mistake to think that I speak and what I speak only comes from within me, neglecting the fact that the facts and meaning exist outside of me and regardless of whether it is I that speak them.

              I suggest that you seek to understand first and foremost that a machine is not a person – no matter what “test” you think proves otherwise.

              Start with that little bit of reality.

            11. You continue to make the mistake to think that I speak and what I speak only comes from within me

              Golly, I wonder why anyone would ever make that “mistake.”

            12. Golly, because my detractors seem to endlessly spin that mistake (no quote marks needed).

              Then again, you are well aware of this dissembling, as you are a chief culprit.

              Here’s a hint Malcolm: post with intellectual honesty.

            13. Ok nutcase.

              I still don’t see you pointing out any “error” that I actually made. The “mistake” you now accuse me of making I literally wasn’t even capable of making in my first comment that kicked all this off since you hadn’t said anything prior to my making the initial statement for me to mistake in that fashion.

              In any event, you’re getting super defensive about your dogma. And you’re turning the whole conversation into something it was never meant to be, a big rant about your dogma and how anyone that doesn’t accept it as TRUTH is making mistakes or errors or whatever. We were just talking about my comment and the article. I decline to suffer your attempts at inter-personal control in this inter-personal interaction so I’m just going to let you sit there and stew k?

              Have a nice day nutcase.

            14. “Golly, because my detractors seem to endlessly spin that mistake”

              Your detractors “endlessly spin” a “mistake” (a mistake that they supposedly are making). Mhmm. I see. Do you even hear yourself speaking? I mean seriously. Step back for a second and read your comments as if someone else made them about a totally unrelated topic to yourself or anything having to do with you. Don’t you get that “crazy person” vibe just from the mannerism? You’re a bright guy even setting your craziness aside, so if you could look at what you’re doing from a viewpoint outside yourself perhaps that would help you get a good feeling of how others might be perceiving you.

              In any event, yeah MM I wonder how they’d make that “mistake” indeed.

            15. 6,

              Your empty name-calling won’t change the fact that a machine is not a person.

              That’s your error – It really is that simple.

              I am not “getting defensive” at all. It’s just amazing how very hard you are trying to NOT understand something so very simple.

              A machine is not a person.

              A person is not a machine.

              The use of ANY word in the context of a person and that person’s mental activities and the use of the same or similar words in the context of a machine are necessarily different. You act like this is some great mystery or needs some elaborate explanation. It does not.

              The effort you are expending in order to not admit that your post was pure error is what is “super defensive.” You make the mistake and then call others who correct you names and deny the reality that is simply there on its face. You then project some type of “control” issue when I have already stated that I merely point out that you are in error, and that whether you want to correct that error or not is fully up to you.

            16. You just never will stop in your attempts to control the interpersonal interaction will you? I mean, it’s an outright compulsion you have isn’t it?

              Fine, jeb us, let’s talk about what you want to talk about for a second you big baby.

              “calling won’t change the fact that a machine is not a person.”

              anon that’s a fact that we both agree is a fact.

              “The use of ANY word in the context of a person and that person’s mental activities and the use of the same or similar words in the context of a machine are necessarily different.”

              I ‘ll agree that there is a difference. Np. But see this is the point where your subjective opinion as to what the “word” means comes in. And mine and yours subjective opinions differ at this juncture. My subjective opinion just so happens to have the backing of imaginary people called people of ordinary skill in this art as evidenced by this article, and many many others (in fact that’s where I got my opinion from, I didn’t bother to make my opinion here up like you did to reach a certain conclusion). Yours is just your subjective opinion that you know you need to take in order to maintain eligibility of some “inventionlols”. It is based on the traditional definition of “thinking” and “thought” from the ancient days when the only things capable of processing input information into output information were, you guessed it, brains. And that’s fine. I understand your position entirely and why you cling to it so tightly. Hopefully by this point you have some tiny inkling as to why people of ordinary skill, and myself, following them, have a different view. But I kind of doubt it.

              “You act like this is some great mystery or needs some elaborate explanation. It does not.”

              Nah brosef. I fully concede that the “USE” of the word is different because they are different situations and contexts. It is no big mystery and does not require exposition.

              But the question that then follows from all this is: How much significance, if any, should (is a judge/examiner obliged to) be attributed to those differences during legal considerations of “thinking” and the different ways that word is used in the patent context?

              This is where you and I part ways. And you have your arguments (reasons why it should be one way) and I have my arguments (reasons why it should be another way). And for that matter, the courts are starting to develop their own arguments for why it should be one way or another. The courts have been putting those reasons in opinions which you and NWPA disagree with.

              Note that I understand your reasons. Imo you don’t really understand my reasons (or the court’s reasons) and merely dismiss them out of hand as being “wrong” (because you’re OCPD) and/or leading to the “wrong” conclusion. And that’s fine. Note though that there are no “errors” in my reasoning, it is simply approaching the topic from another point of view, specifically that of the person of ordinary skill.

              Now that we’re both up to speed on where we’ve left off in previous discussions, are you happy you big baby?

              “The effort you are expending in order to not admit that your post was pure error is what is “super defensive.””

              The effort I’m expending is to try to appease the big baby on this website. I probably shouldn’t do it though to be honest because it encourages you to engage in this infantile behavior.

            17. A whole lot of misplaced angst and QQ starting with yet another accusation (falsely) of me wanting “control.”

              You talk to your shrink about this obsession and projection thing you got going on, 6?

            18. Touchy on the psychological points when you don’t have anything else to say eh anon?

              Well that’s fine. I’m just glad you’re finally ready to stfu about all the “errors” and “mistakes” you perceive.

              Anyhow, check this out, you (and NWPA as well) may find this of interest. I’d been meaning to looking into the “turning test” lately since I read the article. I vaguely remembered it from school but couldn’t remember the particulars. You’ll like this.

              Mr. Turing starts his paper that introduces the test to the world thus:

              “I propose to consider the question, “Can machines think?””

              He goes on to discuss definitions and how defining the relevant terms “machine” and “think” by gallup poll is dangerous. Then he decides to replace the question by another, more easily tackled, question. Specifically: “Are there imaginable digital computers which would do well in the imitation game”. He figures that he could answer that question. After deciding that question in the affirmative then he goes on to argue specifically against your position where you raise objections to the proposition that “machines can think”.

              Check his old article out.

              link to loebner.net

              link to en.wikipedia.org

              Hilarious that the father of modern computing stands firmly on my side isn’t it? Also hilarious that he doesn’t even bother with the objection you raise: “but but but it r a machine and not a human!” That isn’t even one of his listed chief arguments against the proposition.

              I guess from now on when you come to me asking, or telling me all about how machines can or cannot think I can just point you to Mr. Turing on the subject.

            19. Touchy on the psychological points when you don’t have anything else to say eh anon?

              Well that’s fine. I’m just glad you’re finally ready to stfu about all the “errors” and “mistakes” you perceive.

              Anyhow, check this out, you (and NWPA as well) may find this of interest. I’d been meaning to looking into the “turning test” lately since I read the article. I vaguely remembered it from school but couldn’t remember the particulars. You’ll like this.

              Mr. Turing starts his paper that introduces the test to the world thus:

              “I propose to consider the question, “Can machines think?””

              He goes on to discuss definitions and how defining the relevant terms “machine” and “think” by gallup poll is dangerous. Then he decides to replace the question by another, more easily tackled, question. Specifically: “Are there imaginable digital computers which would do well in the imitation game”. He figures that he could answer that question. After deciding that question in the affirmative then he goes on to argue specifically against your position where you raise objections to the proposition that “machines can think”.

              Check his old article out:

              Link to the actual Turing article available from the turing test wiki removed due to the filter.

              Hilarious that the father of modern computing stands firmly on my side isn’t it? Also hilarious that he doesn’t even bother with the objection you raise: “but but but it r a machine and not a human!” That isn’t even one of his listed chief arguments against the proposition.

              I guess from now on when you come to me asking, or telling me all about how machines can or cannot think I can just point you to Mr. Turing on the subject.

            20. You continue to make mistakes 6, including the insertion of your view of something being “subjective” when no such subjectivity is called for.

              The legal connotations of “think,” human and machine are not a subjective thing that you can make up whatever you feel.

              You are doing that projecting thing again with the “touchy,” just like with the “control.” I am neither touchy nor controlling – you are more than free to be as wrong as you want to be. The point though is that you are not free to call being wrong as you are the same as subjectively being right or even being an option. You are wrong no matter how you want to pretend otherwise. I am not trying any type of control by merely pointing out reality to you. In fact, your desire to have your subjectiveness be considered reality is a mistaken form of control that you are attempting to exercise. You are trying way too hard to have your being wrong labeled as something as ‘subjective’ and not be capable of being wrong (like merely an opinion). The problem – your problem – is that this is just not one of those things, and clenching tight your eyes to that reality will not change that reality.

            21. “You continue to make mistakes 6, including the insertion of your view of something being “subjective” when no such subjectivity is called for.”

              Brosef, right now we are, and let us continue, discussing what imaginary men think. And we’re discussing it ivo the words of the father of digital compooting. Let’s set aside what “I think” ok? Can you do that? Or are you completely stuck thinking “but but but 6 only wants to talk about what he thinks hur hur hur” all day? I can set aside what I subjectively think, can you also?

              ~~~~~~~~~~~~~~~~~~~~~~

              But here, fine fine, let’s talk about me for one sec before we get back to talking about imaginary men.

              “The point though is that you are not free to call being wrong as you are the same as subjectively being right or even being an option. ”

              Well you say that, but whom is going to stop me? Recall whom has the powaz brosefus. Here’s a hint: it ain’t u.

              ~~~~~~~~~~~~~~~~~

              ” I am not trying any type of control by merely pointing out reality to you.”

              Alright I can tell you’re actually paying attention to me when I tell you that you’re trying to control me in our interpersonal interactions. That I can appreciate. I’m glad that I at least have your attention on that front and that you’re intrigued enough to give it a second though. However, here’s the thing brosef, you, the person attempting control, don’t even recognize what you’re doing when you’re doing it. That’s part of the malady of OCPD. If you did, you probably wouldn’t do it because you’re not just trying to be an arse.

              But here, let me give you an example. K? Here’s an example of interpersonal control.

              Alan: Hi Bob, how’s it going, how about them cubs eh?

              Bob: Hi Alan, man I hate those Cubs, they sux at baseball, but hey how about them Blue Jays?

              Alan: Meh, I don’t much like em. Let’s talk about the Dodgers!

              Bob: But Alan, the blue jays are the best thing evar! Blah blah blah blah blah blah blah blah.

              Alan: Yeah, I don’t really want to talk about the blue jays.

              Bob: But alan, like I said, they’re the best thing evar, we SHOULD talk about them. Blah blah blah blah blue jays blah blah blah blue jays blah blah.

              Alan: Again, I don’t really want to talk about the blue jays, k?

              Bob: NO SERIOUSLY ALAN, WE SHOULD TALK ABOUT THE BLUE JAYS. (I, Bob, will force you to talk about the blue jays even though you don’t want to through the mechanism of my continued speech about the blue jays and your social grace, i.e. you not telling me to f off and leaving the conversation)

              Alan: Gd it bob I said I didn’t want to talk about that, why’re you insisting?

              Bob: Because we SHOULD talk about the blue jays.

              ^Like bob is above, that’s how you’re controlling not only myself, but others on here anon. Routinely. Note that Bob is in fact trying to control alan (maybe unbeknownst to Bob’s conscious self) even if the Blue Jays are in fact, in reality, the best thing evar, and Bob is simply pointing out “reality” to Alan. Forcing the other person to talk about what you want to talk about through the combo of continued talking about it yourself, and their social grace not telling you to f right off is interpersonal control brosef.

              That’s just a quick example of how people use inter-personal control of interpersonal interactions. You can do it many other ways as well, and in many other contexts. You, anon, do it several other ways beyond simply trying to get me, or others to “admit our mistakes” or “talk about x subject anon really really wants to talk about” or whatever other thing you want us to do on a daily basis.

              It is a symptom of OCPD brosef. It really isn’t that hard to recognize when someone is doing it to you and once you know what to look for. Really, it isn’t. It sticks out like a sore thumb.

              Needless to say, it is very annoying and tends to provoke people.

              That said, I’m glad to see that you’re at least starting to understand the basics and now feel that it is appropriate to “allow” me to not correct myself, as opposed to “shoving my little nose in it”. That’s great! Step 1 of a million step journey you need to go on.

              But hey, again, we can set that stuff to the side, you can think about it on your own time ok? Talk to a professional person that knows all about this stuff. You don’t have to get all defensive on here. I’ve accepted it about you already. Other posters can judge whether they think you’re OCPD or not. Surely they know you’ll deny it, as always, you don’t even need to waste time typing out a denial. Denying it, usually simply as a result of not recognizing it, is part of the condition, because if you recognized it, you probably wouldn’t do it because you’d realize what an ar se you make of yourself when you do it.

              But hey, I typed this out so that maybe, maybe, you’ll take step 2 of a million and from now on we’ll here from you: “Ok guy X, we can talk about what you want to talk about instead of what I want to talk about for awhile”. More often.

              ~~~~~~~~~~~~~~~~~

              So hey, let’s talk mainly about imaginary men ivo that paper k? Let me know if you can’t find the paper. It’s linked to in the wiki but I can’t post the link because of the filter.

              I mean, unless you insist on talking about the blue jays…

              ~~~~~~~~~~~~~~~~

              “In fact, your desire to have your subjectiveness be considered reality is a mistaken form of control that you are attempting to exercise.”

              This is very much an aside:

              In a way. You’re starting to catch on, slowly. Although it isn’t my “desire” that is a form of control. Guess again! And it isn’t interpersonal control. Take a guess as to what form of “control” it is, or maybe consider if instead of “control” it might be “power”!

            22. Concepts of law continue to elude you 6.

              Until you come to grips with your lack of understanding, you just will not appreciate the black and white fact that you are wrong.

              You continue to hide in your belief system that law – all law – is this magical subjective totally in the mind thus make up anything you want and you cannot be wrong thing.

              You are – in fact – wrong.

              Further, this has absolutely nothing to do with the fact that I am the one telling you that you are wrong. I just happen to be the one telling you that you are wrong. You seem to not grasp the overt nature of a fact existing outside of who is remarking upon that fact.

              As far as having “my attention” on the controlling front, another oddity of yours in trying to turn yet another thing you are wrong about into some positive spin for your belief system. Very very very odd indeed. Indeed you slip back into your own obsession over “control” my asking who has the power to stop you – as if stopping you from continuing to be wrong was countenanced by anyone – right after I just got done telling you that you can be as wrong as you want to be. Somehow even now my express statements disclaiming control are though – be you – to be aspects of control. The illness is within you my friend, and you are doing that projection thing yet again.

              Thou doth protest too much on this “power” and “control” thing. Clearly your psychoanalytical readings should first focus on just why you do this. Once you understand that, you might stop projecting so much.

            23. “right after I just got done telling you that you can be as wrong as you want to be.”

              I already said that you’re doing better on that front anon. And that’s great. Step 1 of a million.

              And that’s totally great. I mean it. I really do. I wasn’t going to bring this part up, but since I have your attention on this part, I guess I may as well. Perhaps give a thought to whether your explicitly disclaiming attempting control necessarily stops you from attempting other, more subtle, forms of inter-personal control (even unconsciously). Such as, oh, for instance, repeating over, and over and over and over, and over again that I’m wrong. I it appears that your disclaimer did not stop you from making an attempt at that.

              But let’s set that aside for you to think about later.

              For now, let’s concentrate on step 2. Where you’re subtly trying to control me (and others) into talking about what you want to talk about and nothing else.

              Just kind of think about it, to yourself. If nothing else, some good could come from this conversation if you just so much as give er a good mulling over.

              “Somehow even now my express statements disclaiming control are though – be you – to be aspects of control.”

              Nah brosef, your disclaimer itself is not an aspect of control. Far from it, your disclaimer is you trying to alleviate yourself of feeling bad for carrying on this behavior that you’re starting to recognize in your own actions by trying to assure yourself and those around you that you’re not in fact trying to control them. As a matter of fact I give you kudos for the attempt, and for recognizing what is going on well enough to assure us that you’re not doing it. You’ll work through it. I have confidence you’ll get there if you put effort in. Eventually though I think you’ll find that the final solution is to simply consciously stop yourself from engaging in the initial behavior, not assure others that you’re not trying to control them while subtly employing mechanisms (even unconsciously) to try to control them.

              I know, it’s hard brosef. It’s like learning to be a jerk to girls to get pudus when you were raised the opposite. Except kind of in reverse.

              “Clearly your psychoanalytical readings should first focus on just why you do this.”

              I agree entirely. But fair warning, this could get boring really fast. If you really want to know why I’ll tell you.

            24. I already said

              LOL – and as I already said: you are attempting to spin your error into a positive statement – thanks for the “congrats” anyway, but you were wrong in your first post. Correcting that error means that you stop making that error (and stop trying to spin that error into a non-error) – Let’s see you take a “Step 1 of a million.

              attempting control necessarily stops you from attempting other, more subtle, forms of inter-personal control (even unconsciously). Such as, oh, for instance, repeating over, and over and over and over, and over again”

              LOL – there you go projecting again. First, repeating that you are wrong is not a form of control. It is a factual observation and applies even if you do not want to face the reality that you are wrong. Second, the “subtle control of repeating” is a projection of your attempted control by labeling any post by me as “psychopathic.” Not only did that get old a long time ago, it too is simply wrong.

              step 2. Where you’re subtly trying to control me (and others) into talking about what you want to talk about and nothing else.

              Lol – um, no attempt at control 6 – it’s called a discussion of law, and my points of view directly affecting the discussion. Your “anon red cape” syndrome is in full bloom here. You seek (incorrectly) to label me when your erstwhile companion Malcolm violates this “step 2” more than anyone else with his thread hijacks and odd obsession with Big G. And yet you remain stone silent on the much more pervasive s1ckness abounding in that one. Hmmm, I wonder why? Could it be that your lemming march is in step with Malcolm’s mantra?

              If nothing else, some good could come from this conversation if you just so much as give er a good mulling over.

              Lol – lovely AOOTWMD. mote. log. you first.

              your disclaimer is you trying to alleviate yourself of feeling bad for carrying on this behavior that you’re starting to recognize in your own actions by trying to assure yourself and those around you that you’re not in fact trying to control them.

              That’s some serious chubby checker action you got going on there. You should check into (again) what my pal Occam would say about such convolutions.

              It’s like learning to be a jerk to girls to get pudus when you were raised the opposite. Except kind of in reverse.

              Kindly leave out and NOT project your misogynic tendencies.

              Thanks.

              I agree entirely [first focus on 6 himself]. But fair warning, this could get boring really fast.

              Lol – do it first and remove that log from your own eye even before you think you know the answer without doing so (hint: your current answer is, well, likely completely wrong because you show no signs of even understanding your projection problem)

            25. ^textbook OCPD :/

              But here, I’ll tell you what anon, maybe try reading this.

              link to ocdonline.com

              See if some of the things don’t strike you as familiar.

              Like o say:

              “It would not be unusual for an OCPD sufferer to literally take delight in being wronged, since it affords them, what they perceive, as the justified opportunity to deliver a steep punishment. The term “righteous indignation” was probably conceived with this perspective in mind. Crossing a person with OCPD provides her the license to hold a grudge and forever hold your mistake over your head.”

              MM makes a mistake in typing one day and forevermore he is supposedly “making admissions against interest”.

              “For persons with OCPD (here ANON), facts and confidence are all too often turned into “I’m RIGHT and your WRONG.” “The way I see it represents the way it is, end of story”. For others (here 6), refusing to yield to the “correct perspective” often entails encountering tension and discord. This manifestation of OCPD entails one’s (ANON) adamantly guarding his dogmatic beliefs to such a degree that casual conversation (talking about an article) often converts minor disagreements into heated debates (this huge thread). ”

              link to ocdonline.com

              The really fun part about these sorts of conditions is that the person that is suffering from them is blissfully unaware anything is occurring out of the ordinary.

              Another fun tidbit folks like you bail from therapy prematurely like half the time:

              “In all honesty, approximately 50% of OCPD clients remain on board for the long haul. Rather than seeing the actual conflict within the therapeutic relationship as the unavoidable manifestation of why they came into therapy in the first place, many bail prematurely due to the overwhelming sense of outrage that the doctor has made a mistake.”

              “Malcolm violates this “step 2” more than anyone else with his thread hijacks and odd obsession with Big G. And yet you remain stone silent on the much more pervasive s1ckness abounding in that one.”

              Brosef, number one what you’re talking about isn’t a matter of “violating” anything (though I know your preoccupation with rules makes you think it is). Step 2 is “overcoming” something. Specifically the urge to control people into talking only about what you want to talk about.

              And number two, MM has been more than generous with you over the years. As he sees the effects of your condition more and more he is less and less generous. I don’t fault him for that. Such is exactly one of the main reasons why I endeavored to make a complete investigation into your conditions to inform others. They can adjust their behaviors and interactions with you accordingly. MM was the first to figure out the psychopathy and it was around that time that he first started becoming less generous. I commend him for figuring that out, and also for modifying his behavior around you and interactions with you. Note though how generous he still is with other posters in discussing topics they wish to discuss.

              Though I can assure you that if you are polite, and ask nicely, he will likely engage you in limited discussion of any topic of your choosing. YOU then need to repay his generosity by being willing to agree to disagree AND to end the conversation, even without continuing your assertion of “correctness”. If you attempt to widen the original disagreement, or continue to try to control him into talking about only that topic forever and ever, perhaps while all the while telling him how “wrong” he is (or do anything else that OCPD people tend to do), I do not think he should be above terminating the conversation. In fact, I encourage him to do so.

              “do it first and remove that log from your own eye”

              Already did. But if I attempt to remove that “log” from my own eye then I won’t be being nice to you anymore.

            26. It would not be unusual for an OCPD sufferer to literally take delight in being wronged”,

              You misapply the ”take delight in being wronged” statement, as clearly I do NOT delight in BEING wronged. There is nothing anywhere that would give that indication.

              The term “righteous indignation” was probably conceived with this perspective in mind.

              Again – you err, as the “Take Umbrage” tactic belongs to those such as Ned and Leopold. And perhaps you, when you swing from passive to aggressive. Not I.

              MM makes a mistake in typing one day and forevermore he is supposedly “making admissions against interest”.

              LOL – not at all – it was no “mistake in typing.” Nice try to repaint history but that dog won’t hunt.

              facts and confidence are all too often turned into “I’m RIGHT and your WRONG.”

              You neglect to mention that such is TYPICAL of non-psychochotic debates and other competitions of all nature. Are you saying that those desiring to win therefore must be psychotic?

              Really?

              That’s great for a loser like you, I guess. Do you think that EVERY type A personality is psychotic? This anti-competition thing probably comes from your childhood, right? You might want to talk to your doctor about it. Competition is a good thing. It really is.

              adamantly guarding his dogmatic beliefs to such a degree that casual conversation (talking about an article) often converts minor disagreements into heated debates (this huge thread).

              LOL – again – you misrepresent the thread and exactly whom is getting testy. That would be your projecting thingie coming into play again.

              The really fun part about these sorts of conditions is that the person that is suffering from them is blissfully unaware anything is occurring out of the ordinary.

              Sort of like you…

              Another fun tidbit folks like you bail from therapy prematurely like half the time:

              Odd, since I never “bailed” from anything, but others (hint hint, grab a mirror) bail all the time – how is that promise regarding ladders of abstraction that you made? Oh, that’s right – you bailed.

              due to the overwhelming sense of outrage that the doctor has made a mistake.

              Again – I am not the one that plays the Umbrage card – I am the one typically trying to chase down those who have bailed and are running away. You don’t see that, do you? Oh, that’s right, you have this odd “control” issue of your own and you are too busy projecting a “control” issue to bother recognizing who is actually bailing.

              though I know your preoccupation with rules makes you think it is

              LOL – it’s not a preoccupation. Maybe you don’t seem to understand or even care to understand what “it” is, but “it” is merely not accepting the flimsy WHATEVER subjectiveness that you wish “it” were so that you can say WHATEVER you want to say without FEAR of being wrong. You seem to try an awful lot at this type of deflection. Perhaps you should try just as hard as understanding what law is and how it works – and that your “subjective, totally in the mind, anything goes CRP does not – in fact – go.

              Specifically the urge to control people into talking only about what you want to talk about.

              Yawn – you are doing that rambling and projecting thing again.

              MM has been more than generous with you over the years

              I cannot even guess what you are trying to say with that sentence. I think you have that “bailing” situation all messed up in your head, and you think Malcolm running away is somehow being nice.

              why I endeavored to make a complete investigation into your conditions to inform others.

              LOL – your sojourn into control by labeling everything “psycho?” – That’s not working out to well for you.

              Note though how generous he still is with other posters in discussing topics they wish to discuss.

              LOL – Lovely AOOTWMD. Quite in error, as Malcolm “discusses topics” with absolutely no one. He provide NO actual discussion. You need to recognize that his (very) short script is nothing but anti-patent B$ and that it is only on the rare occasions that he even ATTEMPTS discussions is when he does – as you attempt to label, make his “mistake in typing.” Your spin is even worse than his.

              Though I can assure you that if you are polite, and ask nicely, he will likely engage you in limited discussion of any topic of your choosing.

              Been there – done that – and you are (again) dead wrong. In fact, I continuously ask him to forego his posting style in order to be polite and post nicely, with intellectual honesty – he does not because he cannot.

              YOU then need to repay his generosity by being willing to agree to disagree AND to end the conversation, even without continuing your assertion of “correctness”.

              Sounds like a heavy dose of control to me – in other words, you do not want an actual discussion – an EXCHANGE – you want Malcolm to be able to mount his soapbox and spew his rhetoric and have NO ONE say boo. That’s pathetic that you attempt to control this in this way. What are you really afraid of 6? Why are you so afraid of an EXCHANGE based in intellectual honesty and what the law is and what facts really are? I have said many times, that obtaining a pleasant and polite EXCHANGE – even of alternate views of desired law – is well within the grasp of the likes of Malcolm. He stops his B$ and he won’t have any issue at all talking about the subject he wants to talk about (no control from me whatsoever). But see here what you want – you want NOT to have an exchange – you want control over content. You don’t want anyone talking back and bringing up those bits of inconvenience like what the law is or what facts are. You want that “pleasant” state that you can get away with saying ANYTHING because ANYTHING goes. Sorry 6 – this is reality and not ANYTHING goes in reality.

              If you attempt to widen… I do not think he should be above terminating the conversation.

              Nice strawman – except for the point that the points I bring up go to the heart of the conversation – not widen them. Pay attention.

              “do it first and remove that log from your own eye”
              Already did. But if I attempt to remove that “log” from my own eye then I won’t be being nice to you anymore.

              First, you clearly have not done so as you continue to try to project. Second, WTF is this “being nice”? Are you thinking of your own passive/aggressive tendencies? I am not asking for “being nice” – I am merely asking to be intellectually honest, to know and understand the law and how it works, and to recognize actual facts from this reality. “Being nice?” – what does that even mean in regards to what I ask?

              All in all 6, your post here is just textbook CRP from you – more of the same attempt at control and projecting thingie. You really don’t f00l anyone.

      2. just because the same word is used, doe not mean that the word has the same legal meaning.

        Because ordinary people skilled in the art of computing never use the word “think” when they really mean “determine” or “identify”, which is like a totally different thing. Right? Just ask the computer.

        And people don’t “process information”, either. Nobody would ever suggest otherwise because “processing information” is what sooper dooper newfangled compooter machines do.

        Things are so simple in anon’s simple world. Except when he needs them to be complicated, of course.

          1. “Check into Malcolm – machines really do not think.”

            It’s only those darned people of ordinary skill that belieb that they think! Drat them all!

  4. If the lower courts interpret the supreme court decision as meaning that some of the rules of claim interpretation should be dropped, and instead the information that the claim provides to the phosita about claim scope should be used more often, then the “reasonable clarity” test may prove less strict than the “unsolubly ambiguous” test in many cases.
    Take Datamize v. Plumtress for example. “Aesthetically pleasing” is ambiguous, and I agree that one would need some sort of test to sort out variations that are aesthetically pleasing from the ones that are not. Here the claim interpretation rule was that this limitation could not be read out of the claim. However, prosecution history in this case suggested that this language has little meaning and should be considered to be redundant with the rest of the claims (the variations are limited to the ones pre-selected?).

      1. Those skilled in the art may well be able to identify aesthetically pleasing portions of a design with reasonable certainty.

        Clearly you’ve never seen the episode of The Office where they spent all day arguing over whether Hilary Swank is hot.

    1. PiKa the “reasonable clarity” test may prove less strict than the “unsolubly ambiguous” test in many cases.

      I don’t see how that’s possible unless the “reasonable clarity” test is being applied incorrectly. I’m pretty sure the “insolubly ambiguous” test was the most permissive test imaginable to the extent it could be fairly characterized as a “test” at all.

      I also don’t see where the Supreme Court in Nautilis changed much except to put the indefinite goalpost back to where it was before the Federal Circuit mucked it up. The viewpoint of the person of ordinary skill in the art was always relevant and remains relevant to claim construction generally.

      Completely subjective terms like “aesthetically pleasing” have no place in patent law. It’s safe and reasonable to conclude that there are exactly zero valid patent claims whose patentability hinges on that term. Why is that the case? Because it’s a purely functional term without linkage to any objective physical structure. In that sense it’s no different than terms like “intuitive” or “appropriate” or “desirable.”

      Those skilled in the art may well be able to identify aesthetically pleasing portions of a design with reasonable certainty.

      We are talking about utility patents here, aren’t we? It’s difficult to imagine why such an identification would ever be relevant in a patent case, at least not one involving an enforceable patent. Then again, the system has gone off the rails, hasn’t it?

      What’s “aesthetically pleasing” to X is never necessarily going to be “aesthetically pleasing” to Y. In fact, the opposite might be true. When a term can mean the opposite things to skilled people, you do not have “reasonable certainty.” That’s not true of terms like “transparent” or “corrugated” or “parallel” which may or may not have some fuzziness at the boundaries or the microscopic level (fuzziness that is nearly impossible to avoid, as the Supreme Court recognizes).

      Recognizing these fundamental differences between various types of terms is critical if we ever hope to arrive at a working set of rules for determining indefiniteness. Equally critical is distinguishing between recitations of “intended use” in composition/apparatus claims (meaningless) and bona fide structural limitations.

      The PTO, of course, should be taking the lead on this. It’s really not that hard. Yes, the usual people will complain (as they always do) that it’s harder for them to obtain “valuable” patents if they can’t use hand-wavey terms that are inherently subjective and ambiguous. Forget about those people. Many of those same people also think that “correlations” are eligible subject matter. Those people need to become accustomed to being ignored (or laughed at outright, preferably).

      1. Once again, structure alone is just not required under law.

        And once again you know (or should know) this.

        And once again misrepresenting a material fact of law is an ethical breach – and you know (or should know) this.

        The interesting question comes into play as to the reportability of a known, habitual transgression in the advocacy in the use of a modern social media per the comments of the ABA model rules -comment 2 rule 8.4…

      2. I agree with you that “aesthetically pleasing” is not wording that I would use in a claim. But based on the prosecution history of the application related to the patent in question, it seems to me that the inventor (or his/her attorney) indicated that that term was not intended to have much weight. I understand it to mean that the variations that were available were limited to the one pre-selected because there had been deemed “aesthetically pleasing”. And while I am ready to recognize that that term is ambiguous, I still the scope of the claim was reasonably certain to a phosita.

      3. Let me put this a bit more directly:

        If you are an attorney as you purport to be, then your continual misrepresentations on this blog constitute an ongoing series of ethical violations per comment 2 of ABA Rule 8.4. Clearly this modern social media device is being used as a form of advocacy, and just as clearly you are making consistent and habitual material misrepresentations (knowingly and purposefully) in order to advocate your position.

        A pattern of repeated offenses, even ones of minor significance when considered separately, can indicate indifference to legal obligation

        You have shown a complete and utter disregard for your legal obligation to NOT engage in conduct involving dishonesty, fraud, deceit or mispresentation. Rule 8.4(c)

        If Prof. Crouch still operates under Rule 8.3, notwithstanding his role as moderator of the blog and mere desire to maintain anonymity of blog posters, and is aware of your continuous ethical violations (and how can he not be), he has an ethical duty to report you.

        That is the interesting question that comes into play.

        See Comment [1] of Rule 8.3.

        It is one thing to have an opinion and express that opinion properly. It is altogether another thing to misrepresent the law, misrepresent facts and misrepresent what others post.

        It is not (necessarily) that I disagree with your view that draws my ire. It is how you go about expressing your view with such disregard for our profession that draws my ire. You have an ethical violation – as an attorney – that trumps your ability under the First Amendment to say whatever the H you want to say in whatever the H way you want to say it. I merely want you to take you ethical duty seriously so that discussions of important legal topics (and the advocacy of positions engendered by these discussions) have merit and comply with standards we have (supposedly) sworn to.

        You can have a soapboax. You just cannot have any soapbox.

  5. When I have asked engineers, 9 out of 10 want to limit the claims using the preamble, or at least want to read the preamble as part of the claim. I need to explain that this is not how the law typically views the claim. But, the skilled artisan wants to read the preamble as part of the claim, in my not so scientific sampling, 9 out of 10 times. Does this mean it is part of the claim under Crouch’s analysis? Not sure, but think probably not.

    1. Brian, I’ve had patent attorneys drafting claim charts do the same thing: include a proof of the preamble.

      Whether a preamble is limiting is not clear even to the skilled professional. Almost all people of ordinary skill would assume the preamble is limiting.

      If it is not limiting, then the scope of the claim cannot be clear to one of ordinary skill.

  6. 1) I think in the example, one of ordinary skill in the art has skill in the art of printing presses, not cameras. You indicated there was nothing new about the camera. It was the use of the particular kind of camera in the art of printing presses that was new….

    2) One of ordinary skill in most arts would understand the preamble to be limiting. Its just another result oriented judicial pronouncement that calls that into question.

    1. Les, in the case of claims 1-60, the body of the claim did in fact refer back to the preamble so that it was limited to printing presses under any standard.

      Claims 61-72 included the printing press limitations in the body of the claim.

  7. (2) is the only interpretation that makes any sense, i.e. what would PHOSITA understand if they knew how to construct the claim. They wouldn’t, of course, but PHOSITA is not a real person anyway,

    1. (2) is the only interpretation that makes any sense,

      Well, yeah. Otherwise, the rule becomes “how would the claim be construed by someone who doesn’t know or follow the established rules of claim construction?”

      Questions of fact in claim construction (e.g., what a term means) are for a person skilled in the art. Questions of law (e.g., whether a particular recitation is limiting at all) are decided according to the law.

      When did this become controversial?

      1. When did this become controversial?

        When the koolaid drinking from the flotsam and jetsam sites such as techdirt and slashdot replaced critical legal thinking.

        But according to some (well, one) regular poster here, there is no war against patents…

        /eye roll

  8. PHOSITA = FAUXSITA? Why is that? I can read § 112 a, b, c, d, e, and it makes sense. And in my unqualified opinion f makes practical sense when read in light of a and b and the logic of c (“if the nature of the case admits”) but somehow what is clear is supposed to be unclear because its a nuanced legal doc. Explain this. The Supreme Court makes sense in what is said above in Nautilus as it reads nothing into the law; it just reads it.

    In light of this discussion I decided to look up a few of “my” patents. I have been a career consultant product designer, and in the firms I worked for IP always was assigned to clients. We are innovation and invention for hire (depending on when you define invention).

    The first patent listing me as inventor issued about 30 years ago; my first professional project, a unique electro-mechanical device for a client. I reread and found that easy to read patent clear as day. I still occasionally discover that product in use somewhere and know of no infringers (doesn’t mean there weren’t any, but none of note). It held several unarguably novel points and was inventive at many levels. I think now they could have gotten much more milage out of it too, but the system worked exactly like it should. This product built a sustainable business based on an idea (initial invention concept) brought to us by a fresh out of school engineer, but was refined to a complete invention only in actual product development and required much more non-routine creative work to broaden the invention as was covered by that patent.

    I looked at my second long ago issued utility patent directed to a different product category for a very large established company; mechanical and useful with some fluid dynamics and hands on R and D in the inventive process. In rereading that patent, it too is clear (written with a little more”said” old school lingo) but again it did what it was supposed to and indeed one could learn the invention from the patent. It was a design around product too, so the patent I avoided made sense to this then entry level ordinary artisan. The process worked without grief, protecting a product life about equal to the term of the patent and eventually was obsoleted by market changes. The patent adequately taught what it held.

    Then I looked at the most recent, issued a month ago, totally different small market category, very much an apparatus. A little harder to read and maybe write, but succinct and to the point. Again the ordinary artisan could and would be able to understand the actual device by this patent. Strangely I only spoke to the drafting patent lawyer on the third one, but that was only to address redesign to avoid an old and obvious feature (grrrrrr) of a competitors patent.

    Suffice it to say that I absolutely could explain these inventions and it would match the patent scope, as reflected in the body/specification and the particular claims (though there were a few too many trivial claims on that second one IMHO). So I know it can be done, at least with inventions that are expected to be tangible. There are plenty out there that make sense to no one, its just that some are obligated to advocate, even if contrived, some sort of justifiable meaning. In media res.

  9. The preamble case law can be summarized as “the preamble has no patentable weight, except when it does.”

  10. Recitations of “fields of use” should generally not be considered limiting for apparatus and composition claims. Why? Because both old compositions and apparati and new compositions and apparati may have different uses. In the United States, new uses are protected with method claims. Generally speaking, absent some unexpected results, broad methods directed towards using an old apparatus in a new field of use will be difficult to obtain and enforce.

    A camera with ring LED lighting is useful for monitoring just about anything when good lighting and close-up detail is important. That has been very well known since the invention of the camera with ring LED lighting.

    Dennis: I don’t think that we should assume that inventors and technology developers would understand the particular circumstances of when certain preamble-limitations are limiting.

    How about patent attorneys? I bet a lot of them are confused too. There’s a great way to avoid the confusion: don’t load the claim preamble up with a lot of excess verbiage that you intend to rely on later.

    Note that moving a “field of use” “limitation” outside of the preamble is no guarantee that the element will be given weight in a composition or apparatus claim. If there is some new structural change being made to an old composition or apparatus that renders that composition or apparatus more useful in your new context, then your best bet is to describe that structural change in structural terms. Otherwise expect to be challenged during examination or, if you escape from the PTO, when you try to enforce the patent.

    1. MM, see 3.1 for more, but in claims 1-60, the body references the preamble, which limited the claims to a printing press. In claims 61-72, they did not. But the body was limited to a printing press.

      The examiner references against 1-60 were directed to a laser printer. Against 61-72, they showed a printing press.

      In both cases, the secondary reference showed the ring of LEDs.

      The Board sustained the claim 1-60 because the preamble was limited to a printing press which was not shown in the references.

      The Federal Circuit told the board they should have use the same references in rejecting claims 61-72, but as this was a new ground, they should have remanded back to the examiner so patent owner could respond.

      1. Ned: The Board sustained the claim 1-60 because the preamble was limited to a printing press which was not shown in the references.

        But printing presses are physical objects which can be observed in close-up detail with a camera and proper lighting, just like everything else. Or does the Examiner need to provide a reference stating that fact before he makes the rejection? After he notes that “water is wet” and “cameras take pictures”, of course.

        I just invented a system for collecting money by holding a lottery wherein the winner gets a [insert your fashionable but unpatentable technology here]. If nobody has previously given this [insert your fashionable but unpatentable technology here] away in a lottery before, do I get my patent? Apparently that’s a real possibility in our sad broken patent system.

  11. Pleasing to to see here a part of this Board inter partes reexamination decision bounced back to the Board by the Fed. Cir. for the Board to reconsider a new rejection to correct an inconsistent decision on some of the claims. This is the kind of helpful Fed. Cir. review one can hope to see in IPR appeals?

    1. Paul, except there is no examiner in an IPR and the petitioner has the burden of proof. If he does not carry that burden, he loses, just like in court.

      1. Ned, the claims I was referring to that were sent back to the Board by the CAFC were claims that were re-allowed by the Board, not Board rejected claims.

        1. Paul, when there is an examiner, and the Board cannot sustain his rejection on the grounds stated but as the Federal Circuit described in this case changes the references are to theory, the Board must remand back to the examiner to reopen prosecution. Any other procedure would violate due process.

          That is what happened in this case. The remand is for the board remand to the examiner. The board simply cannot decide the case on a different grounds presented to him by the examiner because that would not allow the patent owner a right to reply, to make amendments or introduce evidence in rebuttal.

          When there is no examiner there can be no remand to an examiner. That is a point I am trying to make here. IPRs are different from re-examinations. I simply do not understand how this case could apply to IPRs.

  12. Re: “An alternative tack is to assume that the Supreme Court’s PHOSITA has been advised by a skilled patent attorney and thus understands the law.”

    Presumably an expert testifying as to a PHOSITA understanding of a claim will have been educated on the law on an issue like that? But, in any case, is that not a valid legal fiction one has to live with, no different from the legal fictions that examiners and lay jurors understood all the subject claim limitations and claim scopes in both utility and design patents, and understood the subject technology and the prior art? [From the trial testimony and the judge's jury instructions, in the case of the jurors.]

  13. “An alternative tact is to assume that the Supreme Court’s PHOSITA has been advised by a skilled patent attorney and thus understands the law.”

    April Fools Day isn’t for another 10 months …

  14. If patent is a technical document and not a legal document then maybe it should not be interpreted by judges but rather by engineers, scientists, etc. ????

    1. Fish Sticks, see my post below at 2.1.1 for more, but there is a lot to be said about asking one of ordinary skill in the art their whether they would understand a claim. Conduct a survey.

      Historically, I have advised engineers that worked for us to simply ignore claims in patents, but come to us (the patent department) if they wanted to use what was described in the specification — to see if we had a license or needed to get one. But now? Perhaps if we asked our engineers whether they knew what was covered by the claims and simply recorded their answers without coaching, we could build a case for indefiniteness.

      1. Ned,

        Please put in your survey a question to ascertain the actual scope of knowledge of all prior art.

        Oops.

  15. I think the question can be boiled done to this:

    If one of ordinary skill reading the preamble limiting the claims to a particular apparatus, system, composition, etc., would be surprised to find the claim could be applied beyond that particular apparatus or system, composition, etc., the claims have to be limited to that apparatus or system or else the claims are indefinite.

    This would seem to suggest that all preambles beyond simple phrases like “apparatus” or “method” or “composition” must be limiting.

    1. Claim 1 referenced the preamble’s “substrate” which was the substrate of a printing press.

      Claim 61 made no reference at all back to the preamble, but nevertheless, the body of the claim set forth “substrate on a printing press.”

      I would think that one of ordinary skill would treat both these claims as directed to a visual inspection system for a printing press.

  16. I’m being a little bit tongue-in-cheek here, but if we’re taking things to the extreme of saying that claims are 100% a technical document and 0% a legal one, then most claims will end up falling afoul of 112(b) because they don’t reflect what the inventor regards as their invention. In talking to various engineer friends who are named inventors on patents, they invariably say that their patents read like legal mumbo jumbo in which their invention is unrecognizable. If that’s truly the case, then their patent claims couldn’t possibly satisfy 112(b).

    That result is, of course, preposterous, so I would say it’s necessary to regard the claims as being at least somewhat legalistic rather than wholly technological. This can be achieved by remembering that we’re looking for “reasonable clarity” to one of ordinary skill in the art, and then disposing of legal complexities like the patentable weight of claim preambles into the void between reasonable and unreasonable.

    1. “because they don’t reflect what the inventor regards as their invention. ”

      The single biggest problem in the modern patent world imo.

      “In talking to various engineer friends who are named inventors on patents, they invariably say that their patents read like legal mumbo jumbo in which their invention is unrecognizable. If that’s truly the case, then their patent claims couldn’t possibly satisfy 112(b).”

      Get that in evidence and bye bye patent.

      “That result is, of course, preposterous”

      Nah, it isn’t preposterous at all. It is simply the best kept and best buried secrit in all of modern patent jurisprudence.

      1. 6, can you imagine asking the inventor in court whether he understands the claims and whether he would know what they cover with reasonable certainty?

        Can you imagine it?

        Most inventors I’ve worked with never read the claims for precisely the reason stated by APoTU. There are some more sophisticated.

        Then there is the average engineer. How do you prove what an average engineer believes about a set of claims?

        Ask them. Conduct a survey. See what they say. Something like we do with trademarks when looking for secondary meaning.

        1. “Can you imagine it?”

          Sure. I can also imagine the lols that come from the judge/jury when he doesn’t know his arse from the claims.

        2. Most inventors I’ve worked with never read the claims for precisely the reason stated by APoTU. There are some more sophisticated.

          If you can’t explain (and are not explaining) your claims to the inventors in such a way that they understand what the claims do and do not cover and why you structured them in the way you did, then you’re not doing it right.

          1. I agree – also consider that there still is a requirement that the inventor attest to the veracity of the application.

            If there is a mass of applications out there that have not been properly signed as to the oath requirement, there is a bigger problem than just the legal/technical faux distinction being chummed here.

            1. “If there is a mass of applications out there that have not been properly signed as to the oath requirement, there is a bigger problem”

              Yeah but nobody cares.

            2. “lol, so typical of you 6 – care about the banal stuff and not care about something that carries actual legal impact.”

              This has nothing to do with me as an individual re re.

      2. The single biggest problem in the modern patent world imo.
        Inventors don’t understand the difference between 112 1st and 112 2nd (neither does Ned, but that is a different story).

        Many inventors think that claims should describe the invention — not needed (not desirable) — and this is where the confusion lies.

        Nah, it isn’t preposterous at all. It is simply the best kept and best buried secrit in all of modern patent jurisprudence.
        Patent applications are not blueprints or process operations sheets — this was what typical inventors understand. Patent applications are legal documents — there is a reason why you need to pass the patent bar to prepare them.

        1. “Many inventors think that claims should describe the invention — not needed (not desirable) — and this is where the confusion lies.”

          Also this body called “congress” thinks that. They even took the trouble to write a command along those lines into the statute itself. Funny how that happened.

            1. Pretty d@mm funny with 6 showing his ignorance on the topic (again).
              Life would be a lot easier if the antis (including those in the judiciary) would just read the statutes, e.g., 35 USC 101, 112. If they would just apply the law — as written — we could focus on other things.

          1. Also this body called “congress” thinks that. They even took the trouble to write a command along those lines into the statute itself. Funny how that happened.

            From 112, 1st paragraph: “The specification shall contain a written description of the invention.” With that in mind, see if you can find that language in 112, 2nd. You cannot? What does that mean then about the need for claims to describe the invention.

            I know the USPTO doesn’t get much into statutory construction in their examiner training classes. However, the fact that the “written description of the invention” language is in the 1st paragraph but not in the 2nd paragraph of 35 USC 112 is very telling about what “Congress” thinks about that.

        2. I think if the Supreme Court doesn’t understand the difference between 101 and 103, Inventors can be forgiven for not understanding the difference between 112(a) and 112(b).

      3. 6 stumbles with “The single biggest problem in the modern patent world imo.

        It is no wonder, given your inability to grasp the ladders of abstraction and the reality that a patent application is a legal document and not a technical manual.

        The document is drafted to maximize legal protection for 17 – 20 years into the future (counting typical PTA). Your ‘IMO’ is one of the reasons you routinely are on the wrong side of legal reasoning on this blog.

        1. “The document is drafted to maximize legal protection for 17 – 20 years into the future ”

          I do not deny that the documents of today are so drafted. I simply deny that documents drafted in such a way, and which also set aside the explicit command of 112, are valid. You may feel free to disagree and carry on beliebing that setting aside the explicit command of 112 is a totally ok thing to do. Plenty of people do.

          All of that is why I said it is the biggest problem in the modern patent world.

            1. Thanks for the clarification 6 – your post is a FAIL and shows that you don’t have a clue, else wise you would realize that what you seek to deny is untethered to the actual law.

            2. lol, there you go again, confusing what I post as fact with the notion that it is I that is making the post.

              You really need to learn how to read and distinguish what is being said from the person saying what is being said.

              I thought they taught that in the second grade…

      4. By the way, its all the jurisprudence that causes patents to read like mumbo jumbo.

        We can’t use the word “invention” in patent applications anymore because someone used the word causally in a patent application to refer to a particular embodiment and some court limited the claims to that embodiment based on that use…

        Likewise we can’t use the word step or steps, because some judge somewhere said “step” implies a particular order and unduly limited a claim to a particular order of steps….

        so… Karma man, karma…

        1. LOL – Les, your post reminds me of the phrase “patent profanity.”

          It is ironic that the profanity arises because of the judiciary…

    2. because 112 is a technical consideration…
      Um, wait, it’s not.

      D’Oh ! (said in the best Homer Simpson tones)

  17. I feel like the substance of your post is getting a little “too clever” but I for one would be very happy to have the preamble nonsense that has been going on for years sorted out by this recent 112 decision.

    “(2) An alternative tact is to assume that the Supreme Court’s PHOSITA has been advised by a skilled patent attorney and thus understands the law.”

    Yeah lol. Not. My imaginary person has never even met an imaginary lawyer. I keep him in his imaginary laboratory, locked away from the rest of the world lol. He only gets to go out to the imaginary outside when there are no lawyers around to influence him.

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