Federal Circuit: To Satisfy the Written Description Requirement, a patent “must at least describe some species representative” of the accused product.

By Dennis Crouch

AbbVie v. Janssen Biotech and Centocor Biologics (Fed. Cir. 2014)

This decision is important in the way that it confirms a strong Post-Ariad Written Description requirement – especially with regard to genus-species claim situations. The decision also includes a key (but preliminary) discussion on the preclusive effect of PTAB decisions and also attempts to justify Federal Circuit decisions that extend beyond questions necessary for the judgment. Hal Wegner has already classified this opinion – written by Judge Lourie – as “unnecessary judicial activism.”

In 2013, Abbot Labs spun-off AbbVie as a separate company with a focus on biopharmaceutical research and a current Market Cap of $90 Billion US (ABBV). In the split, AbbVie obtained ownership of a number of valuable patents. In this case, AbbVie asserted various claims of U.S. Patent Nos. 6,914,128 and 7,504,485. These patents broadly cover antibodies that can bind to and neutralize activity of human interleukin 12 (IL-12). These antibodies have been found useful in the treatment of autoimmune disorders, including psoriasis and rheumatoid arthritis.

A key asserted claim is listed as follows:

29. A neutralizing isolated human antibody, or antigen-binding portion thereof that binds to human IL-12 and disassociates from human IL-12 with a Koff rate constant of 1×10−2s−1 or less, as determined by surface plasmon resonance.

A jury found the claim invalid for lacking a sufficient written description, lacking enablement, and also for obviousness. AbbVie appealed the §112(a) claims (WD & enablement) and, as for obviousness, AbbVie argued that that issue should never have been decided by the district court since it had already been fully litigated during the prior interference contest. On appeal, the court affirmed – agreeing that the patent was properly held invalid for lack of written description and that the collateral estoppel did not apply to the obviousness question because the interference proceeding was not sufficiently “final” at the time of the complaint filing.

Written Description: In Ariad, the Federal Circuit confirmed that the written description requirement is separate and distinct from that of enablement and that it serves an important role of ensuring that the patent is based upon an actual describable invention and that the patent scope does not overreach beyond the scope of the inventor’s contribution.

Written Description
– Genus-Species: By design, patent claims generally cover a set of a variety of potential embodiments. Likely, most claims cover an infinite variety of potential embodiments each involving a minor tweak in one way or another. The courts have never required that all potential embodiments be disclosed – however, the written description doctrine has been applied to invalidate patent claims that do not disclose a sufficient representative sample of embodiments. This is generally known as part of a genus-species problem – with the operative question here being how many different species (embodiments) of an invention must be described in a patent document before the applicant can properly claim rights to the genus of all related species. A key case on point is Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559 (Fed. Cir. 1997) (Lourie, J.) that was also affirmed in Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1355 (Fed. Cir. 2010) (en banc; Lourie, J.) (“[No] bright-line rules govern[] the number of species that must be disclosed to describe a genus claim, as this number necessarily changes with each invention, and it changes with progress in a field.”). Rather than simply listing various embodiments, the usual approach is to also describe common structural features of the species.

Here, AbbVie’s generic claim can be classified as a set of human antibodies defined functionally by their high affinity and neutralizing activity to the human IL-12 antigen. However, AbbVie did not disclose any structural features common to the members of the genus. Rather, AbbVie’s patent described only one type of structurally similar antibodies rather than antibies representative of the full scope of the genus.

In the decision, Judge Lourie focuses particularly on the alleged infringing antibodies and notes that:

[While] AbbVie’s patents need not describe the allegedly infringing [compound] in exact terms . . . [t]he patents must at least describe some species representative of antibodies that are structurally similar to [the accused compound].

Because the patent document lacked any such structural description, the court confirmed that the corresponding claims were invalid under 112(a).

Functional Patent Claims Are Inherently Vulnerable: In discussing the case, Judge Lourie was clear that one problem here is that the invention was described in terms of its function rather than its structure. Lourie writes:

Functionally defined genus claims can be inherently vulnerable to invalidity challenge for lack of written description support, especially in technology fields that are highly unpredictable, where it is difficult to establish a correlation between structure and function for the whole genus or to predict what would be covered by the functionally claimed genus.

With functional claims, the patentee must establish “a reasonable structure-function correlation” either within the specification or by reference to the knowledge of one skilled in the art. Of importance, the court is clear that functional claim limitations are patentable, but, in order to be patentable, they must be linkable to structure by PHOSITA. An interesting distinction though is that, unlike many written description issues, the linkage between the function and structure need not necessarily be found in the patent document itself.

Patent attorneys will also note that Judge Lourie’s reference to “highly unpredictable” arts is designed to refer primarily to bio-related sciences. We shall see whether the subsequent case law is so limited.

= = = =

Collateral Estoppel applies to preclude a court from re-deciding issues. Generally collateral estoppel only applies when the same issue was actually litigated and decided by a final and binding judgment in a way that was essential to the judgment. It is also generally true that collateral estoppel applies even when the first case is still pending on appeal – so long as the original court’s judgment was a final judgment being appealed.

Here, a prior interference proceeding between the parties had resulted in a determination that the AbbVie claims were not-obvious. Following the PTAB interference decision, Centocor filed a civil action under 35 U.S.C. § 146 that was pending at the time the present infringement litigation began. In the present appeal, the Federal Circuit held that the PTO decision should not be considered a “final judgment for the purposed of collateral estoppel” since the district court decision was still pending and during that case the parties have the opportunity to expand the factual record. The court left open the possibility that collateral estoppel would apply once the decision is final and that collateral estoppel may have applied if Centocor had appealed directly under § 141 instead of filing a civil action.

= = = =

Because AbbVie did not appeal the substance of the obviousness question, the collateral estoppel question fully decided the case. However, in its decision, the court offered an explanation for its reasons for going ahead and deciding the written description question.

AbbVie did not substantively challenge the district court’s holding of obviousness of the asserted claims. It might therefore be concluded that we could affirm that court’s obviousness holding and proceed no further. However, as an “inferior” court, we are well-advised to review more than one issue raised before us on appeal, lest higher authority find error in any basis for a more limited review. Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 97–98 (1993) (“[T]he Federal Circuit is not a court of last resort. . . . [Its] decision to rely on one of two possible alternative grounds (noninfringement rather than invalidity) did not strip it of power to decide the second question, particularly when its decree was subject to review by this Court.” (emphasis in original)); see also Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356 (Fed. Cir. 2012) (affirming invalidity based on anticipation and obviousness); Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325 (Fed. Cir. 2010) (same); Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684 (Fed. Cir. 2001) (affirming invalidity based on indefiniteness and lack of enablement). Because the written description issue constituted the principal basis of AbbVie’s appeal to this court, we proceed to consider the written description issue rather than affirm merely on any procedural defect or omission relating to the obviousness issue.

In her concurring opinion, Judge O’Malley did not sign-on to the “thoughtful written description analysis” of the majority – finding it not “necessary or dispositive ot the outcome of the case.”

458 thoughts on “Federal Circuit: To Satisfy the Written Description Requirement, a patent “must at least describe some species representative” of the accused product.

  1. Something Ned wrote above set me thinking.

    I want to compare in this thread the +ve US requirement for WD with the -ve EPC requirement for “no added matter”. From what I have learned last week, here and in Munich, these two are now converging. And anyway, drafters have to draft now for what the courts will be holding, 15 years into the future.

    Let’s take a real example for discussion (because I find Ned’s “genus” and “species” terminology not particularly helpful).

    Your Client B supplies GM with aluminium alloy sheet with which GM makes car body panels. It press forms them soft, then paint bakes them. Precipitation hardening (as a result of diffusion of the alloying elements through the crystal lattice ) initiated by the paint bake, makes the panels hard. Beautiful!

    B finds out that a particular range of alloy composition works best, but if discovers more. If you take care to arrange a particular stoichimetric ratio of the Mg and the Si content, you get an optimal paint bake response. It so claims and files.

    Unbeknown to your client, competitor A had already filed. But A has not spotted the ratio invention and none of his Examples lies inside the range claimed by your client B in its dependent Claim 3.

    Unbeknown to both A and B, but found by the EPO search, a Research Paper “RP” read to an earlier conference in Japan destroys the patentability of A’s claims as filed (and B’s claims 1 and 2) . But, again, it did not spot the ratio point and none of its Examples lie inside B’s Claim 3.

    OK. B can get Claim 3. But what can A get a) at the EPO and b) at the USPTO?

    Specifically, can A get through to issue with a claim narrow enough to be patentable over RP while still wide enough to cover some or all of the useful ground where the ratio is satisfied. Would it make a difference if A, accidentally, has a worked example that falls within B’s Claim 3?

    This is one reason why the EPO is so strict about what it calls “undisclosed intermediate limitations”. The application by A presented all its Examples as equally good. B. by contrast, told us that examples within its Claim 3 perform better than examples within the wider range of its widest claim, Claim 1. B now covets the narrower better range and wants a claim to that range. Can it get there?

    Is the USPTO going to get increasingly strict with prosecution amendments to undisclosed intermediate limitations? Or is it perhaps already as strict as the EPO in this regard?

    1. Seems like you are aiming for a new use of an old disclosed item with your initial setup for B and claim 3.

      I am confused though as to why you would ask: “Would it make a difference if A, accidentally, has a worked example that falls within B’s Claim 3?

      First, the adjective of “accidentally,” not sure what meaning you are aiming for by so describing A’s conscience choice of the inclusion. Second, are you trying to say that an applicant does not possess all that is inherently present in a possessed item?

      1. I’m talking about so-called “selection inventions”. Meat and drink for any patent attorney at all familiar with the chem/bio space.

        That you are “confused” by this chemical example speaks volumes, anon.

        1. Interesting.

          Smarmy disdain from you on a simple clarifying point (while you bend over [figuratively] for your pals Malcolm and Ned when they point out even more egregious problems with your hypo setup).

          Clear case of charging at the red cape of “anon said.”

          Please focus less on the messenger and more on the message. In no way have you “earned” the ability to be smarmy to anyone, given your own extensive faux pas.

        2. Secondly, you have addressed none of my questions.

          Try not to be so easily distracted. If you don’t know the answers to my questions, it is OK to merely say so. Feigning greater expertise (“meat and drink”) while not actually answering the points raised paints you as a rather pompous @$$.

    2. Quick tip, MD, when presenting a hypo: try to present the relevant facts before your asking your question. Here you asked “what can A get a) at the EPO and b) at the USPTO?” without telling us anything about what A described in its application!

      If you have a question about “selection inventions”, set up the hypothetical with the essential facts and then ask the question.

      Is the USPTO going to get increasingly strict with prosecution amendments to undisclosed intermediate limitations?

      Many Examiners are already appropriately strict on this point — just as strict as the EPO. One’s mileage varies depending on any number of random factors. The ultimate question is whether one’s reliance on an “undisclosed intermediate limitation” in a claim is misplaced such that one ends up spending a lot of money to obtain and enforce a patent claim that blows up in one’s face when challenged by the defendant or some other third party.

    3. Max, if you don’t disclose a sub-range at all, there is no possibility of claiming it in United States.

      Secondly, even if you have an example with in a sub range with unexpected results disclosed by someone’s later application, you have to disclose that the criticality otherwise all examples would be deemed equivalent and obvious.

      But you never know whether you can use A’s later application disclosing criticality as evidence in your own application/patent. This seems to be a growing practicing United States to allow post-filing expert affidavits to support patentability/validity.

      Malcolm?

      1. you never know whether you can use A’s later application disclosing criticality as evidence in your own application/patent. This seems to be a growing practicing United States to allow post-filing expert affidavits to support patentability/validity.

        My hope is that the “right case” is going to come along soon and expose the CAFC’s shallow and, frankly, bizarre position on the submission of post-filing evidence of previously undisclosed unexpected results to support the non-obviousness of a claim. Until then, applicants will undoubtedly take advantage of the absurd opportunity, even if enforcement against a competent defendant willing to go to the mat is virtually impossible.

        1. Malcolm well said. As to the bizarre position on:

          “post-filing evidence of previously undisclosed unexpected results to support the non-obviousness of a claim”

          is it that of the CAFC en banc, or is it just one particular panel within the CAFC?

          just in case anybody points out in response that the EPO does allow post-filing evidence and expert affidavits, I should say that it does that only in support of effects announced in the application as filed. Effects announced by Applicant for the first time after filing and after seeing from the EPO search report that the prior art is closer than he had hitherto supposed cannot contribute to patentability, and post-filed evidence of their existence is not admitted.

  2. Reading only the title, and sure that the (currently available) 355 odd comments have likely already thrashed this out, it sounds like this should pretty much kill most software/app patents, assuming it holds.

  3. >To be clear, having one guy dismiss the consensus of hundreds of the world’s top >climate scientists as “hocus-pocus science” wasn’t the “balanced” thing to do, >and the only reason why people like Carter continue to be taken seriously is >because news networks continue to suggest they should be.

    We need to treat Lemley and company the same way. Stop letting the academics voice their judicial activist views as if they are actually fair interpretations of the law and not law deniers.

  4. Plurality of TU: Functional recitation in computer-based claims are really just method claims in disguise, and the species are really just routine ways in which any ordinary programmer would choose to write the needed code.

    They aren’t “just method claims in disguise”.

    The claims you refer to protect not only the nearly infinite number of “routine ways” of writing the code that “configures” the “new” computing machine, but also every one of the equally vast “non-routine” ways of writing that code, for all computing platforms, for the next 20 years. In this sense, these faux-method claims are indistinguishable from a claim that most applicants would rather not file as it would expose the farce: “I claim all methods of configuring a computing machine to achieve the functionality recited in claim 1, without describing a single specific example of such a machine in any terms except functional terms.”

    Now, the s0ftie w0ftie types will whine that any composition claim protects all methods of making it, so what is the problem? The problem, of course, is that in the grown-up arts these composition claims recite structure that distinguishes them from the prior art or else they fail the written description test and, in most every case, some evidence of unexpected results must be provided. For years the most glaring exception to these requirement was the so-called “antibody exception” (the term “exception” being somewhat important as it recognizes that a general rule is being broken). How’s that “exception” doing these days?

  5. My comment #20 set off an interesting discussion about 35 USC 112 and 132.

    To stimulate the discussion further, I would like to point out that those who draft have to anticipate what the courts will be saying about validity fifteen years (or so) into the future. We get paid for divining as best we can, out of inter alia current caselaw, what the courts will make of our drafting, 15 years on from now.

    You can say that no jurisdiction pays any attention to any other jurisdiction but it is my experience over 40 years that there is an accelerating trend for judges to be influenced by forceful legal thinking in other jurisdictions. Why, Randy Rader was always over here in Europe, telling us how to do (and how not to do) patent law. Presumably he thought the effort worthwhile.

    So, with the shift to First to File, which dictates that priority is decided exclusively on the content of the appln as filed, and with the increasing prevalance of priority contests between rival corporate filers who independently file on much the same matter at much the same time, I do foresee an increasing emphasis on the importance of a written description, in the application, as filed, of the precise subject matter of the specific claim at bar. Otherwise,the patent goes not to the first filer but to the later filer, who learns from the earlier filer’s 18 month A publication what he should have claimed, and then claims it himself, during his own prosecution.

    In other words, convergence of WD law with EPO practice, that often finds claim amendments made during prosecution, ones that lack written description support, to be not in conformity with the European statute.

    It’s beyond dispute, my forecast, isn’t it? If so, for the good of your clients 15 years down the line, think about drafting European-style. You can do it, even without profanity.

    1. Max, since you do not have a 103 operating from the moment of filing of a patent application reference, you have to do this “priority” dance. That cannot happen in the US given 103.

      A second filer cannot claim subject matter disclosed in the first filer’s application, or even obvious variations of it. There really cannot be a priority contest in the US that is at all like what appears to be going on in Europe.

      1. Ned you make a good point, that US patent law allows obviousness attacks based on the disclosure content of patent applications filed before the claim but not published till after the date of the claim, whereas the EPC doesn’t. It makes a difference, sure.

        But we need to distinguish between what an application discloses and what a claim covers. I am envisaging the first filer realising for the first time when he sees 2nd filer’s A publication what his claim ought to have covered, and then in prosecution striving by claim amendment to get to a claim, even a narrow one, that includes within its ambit that non-obvious and commercially valuable subject matter.

        Such an amended claim will likely be quite a bit narrower than the as-filed claims, because first filer wants a claim that covers the competitor but is robust against attacks both novelty and obviousness. The situation I envisage is when first filer lacks a “written description” of the subject matter of that narrow claim and, for that reason, ought to be prevented from getting behind the later filer, with a valid claim which covers that commercially important invention.

        Is this making sense to you?

        1. First

          It makes a difference, sure.

          Since PHOSITA (to which you are measuring) is a construct anyway, how does the non-construct actual second inventor not seeing the filed but not published work change the “state of the art” for obviousness purposes?

          Does this not mirror the existing notion that PHOSITA has god-like access and memory of all prior art?

          Second

          Does not your response of “realising for the first time when he sees 2nd filer’s A publication what his claim ought to have covered, and then in prosecution striving by claim amendment to get to a claim, even a narrow one, that includes within its ambit that non-obvious and commercially valuable subject matter.” contradict your own posts in relation to another’s ABCDE//ABCD and N-1 conversation?

          Of course, careful drafting includes drafting with fall back positions (with the specification mirroring the claim construction of with fallback claim structure in the proper dependent claims), so for already careful drafters, does your concern add anything not already known?

    2. You can say that no jurisdiction pays any attention to any other jurisdiction

      I am aware of no one that says such.

      I am very much aware of people intimate with the law, with an understanding of sovereignty, that say that judicial activism that goes beyond one country’s laws and “borrows” from another’s is ultras vires. The difference between “does” and “should do” is rather important. At least in the states, the one branch (the only branch) of government delegated to have authority to write patent law is not the judiciary.

      Otherwise,the patent goes not to the first filer but to the later filer, who learns from the earlier filer’s 18 month A publication what he should have claimed, and then claims it himself, during his own prosecution.

      Hmm, not so much. At least in the U.S. Here, given the exceedingly thin protection afforded by the new 102, neither party likely gets the “should have claimed.”

      In fact, for those unfortunate to depend on ANY publication prior to filing to afford protection, any publication of obvious variant – or attempted filing of such – also results in neither party obtaining patent coverage – of the as claimed or even the “should have claimed.”

      It’s beyond dispute, my forecast, isn’t it?

      A broken analog clock is right twice a day – don’t strain yourself attempting to pat yourself on the back.

      even without profanity

      Would that be “blog profanity” or “patent profanity,” as there is an appreciable difference, and the latter is a moving target based on the court’s disdain for “scriviner’s” and their addiction to 101-nose-of-wax-like patent law writing. The earlier category should not serve as a distraction and is certainly not advantageous to the distinction between actual conversation and the ability tto post whatever in a noncritical soapbox style.

      1. A further thought to “Otherwise,the patent goes not to the first filer but to the later filer, who learns from the earlier filer’s 18 month A publication what he should have claimed, and then claims it himself, during his own prosecution.”

        That which is not prevented a patent under the law (under obviousness) is fully and rightfully an invention of another – deserving to go to whomever files on the improvement thusly invented. MaxDrei (as typical) posts with an assumption in mind without really thinking through what he is trying to say.

        The more interesting question is what is the dividing line of protection for earlier patents against later improvements that do not rise above the “obviousness” bar.

        Again, I refer readers to the words of the KSR decision:
        Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.” 550 U. S. ____ (2007) at 15

        Ask yourselves, what exactly is meant by depriving prior inventions of their value?

        This little phrase is often simple overlooked by those with an anti-patent world view. An objective view would not so easily dismiss the comment, and a wise and counter-intuitive reading would reveal that with a mindset of strengthening patent rights (instead of attempting to weaken them), this phrase would lessen the impact of “too easily granted” patents in view of prior granted patents (but one would necessarily have to have a view of a stronger doctrine of equivalents – a view the anti-patentists seem to choke on).

        1. I find it interesting that no one seems eager to contemplate the patent-strengthening aspect of the KSR decision that I point out.

          Of course, there is another “strengthening” aspect that accompanies the decision, that likewise, anti-patentists desire to ignore as to its inconvenient truth: KSR directly leads to a shallowing of patent applications and a proliferation of functional claiming being legitimate.

          How can that be? One may wonder. Ah, the wonderful world of unintended consequences. Remember my friends, the double edged sword of PHOSITA. Remember as well, that a patent applicant does NOT have to include in the application that which is known to PHOSITA.

          I have written previously how the holding of Alappat (stipulated to by both parties in the Alice case, btw, and thus beyond the effects of the decision in that case) provide that software as a machine component does create a new machine that satisfies the category portion of 35 USC 101 – it is afact of the Alice case that the machine category requirement was PROPERLY met (and before anyone gets their undies in a bunch, yes one does have to satisfy more than just the category portion, as the takeaway from Alice show that the Judicial Exceptions apply regardless of category – much to the chagrin of the likes of Ned and Malcolm).

          Given that the TYPE of change that software imbues is understood by PHOSITA, applicants simply need not repeat (nor depend upon to satisfy 112) the understood TYPE of change in their applications.

          This can be reflected in the improper understanding of the exceptions to the judicial doctrine of printed matter than both DanH/Leopold and Malcolm exhibited in their past discussions of the matter: the functional relationship itself (of the exception) NEED NOT be inventive in its own right to allow for use of the patentable weight of the printed matter as part of a typical claim – a claim which MUST be read in the shoes of a Person Having Ordinary Skill In The Art to which the invention pertains, that person having been informed by the specification.

          You see, the PHOSITA already recognizes – and accepts – the patentable weight based on the TYPE of functional relationship. That’s the true beauty of recognizing the difference between Set C printed matter that has the functional relationship (the function existing outside of the human mind – See anthropomorphication) and Set B printed matter that lacks such outside-the-mind functional relationship. Unfortunately, there are those who wish to dissemble and clench tight their eyes to this very real legal difference. Some regular posters pursuing their agendas will refuse to recognize (or comment upon directly) the clear Set Theory based explanation of the judicially created doctrine of printed matter and the realization and correction of that judicially created doctrine, pretending that the judicially created doctrine is actually found in the words of the statute (when clearly no such words are present).

          Another way to put this, is to put it colloquially: software works. Software is NOT something JUST in the mind, as software works to effectuate an actual physical change outside of the mind – a change in the machine (an appropriate tie-in to anthropomorphication fits here) really does happen. If software were ONLY something purely in the mind, we would need telekinesis (or magic) to make software work. We do not, so no matter how much dust is attempted to be kicked up, one only needs to point to the reality of this physical world and note that software does NOT work by telekinesis or magic. Something very physical does happen.

          Returning from the wetting down of the dust to prevent dust-kicking, and back to the strengthening aspect and unintended consequences: The Justices are known to have anti-patent tendencies (history repeats and we do see repetition of the pre-1952 judicially active waywardness). In their decision to strengthen PHOSITA in KSR, the justices may have inadvertently strengthened the ability of scriviners to provide thinner and less robust applications. This is because a stronger PHOSITA NEEDS less to understand the claims, and applicants mirror this strengthening of PHOSITA with an EQUAL lessened NEED to include material in the application.

          Team Inventor (Yay Lemley) may DE FACTO include PHOSITA in the software arts that know and understand the TYPE of purely legally accepted functionally-related printed matter that allows patentable weight to software, and such NEED not be re-presented in applications in the art to which such inventions pertain. Team Inventor already possesses this aspect of the invention, and because the Court was so gracious as to expand the power of PHOSITA, Team Inventor needs less in his ongoing applications to meet the legal requirements. This does create a mirage that “functional claiming” is getting out of control, but any mirage is simply dissipated by a recognition of how to properly read claims, and the critical importance of the legal requirement to so read claims “in the art to which the invention pertains.”

          Thanks Court. Your intended actions to weaken patents have had a deliciously ironic effect of permitting “weaker” patents to more easily meet the legal requirements. Just as would a decision being more forthright pro-patent and directly strengthening the effect of the doctrine of equivalents to weed out later possibly equivalent patents, so too, a Court decision constraining the power of PHOSITA would have had less of a “deleterious” effect of shallowing out what Team Inventor needs to actually include in patent applications and would have (possibly) stemmed the acceleration of (proper under the law) use of functional descriptions in claims.

          1. Thanks Court. Your intended actions to weaken patents have had a deliciously ironic effect of permitting “weaker” patents to more easily meet the legal requirements.

            Looks like Billy stumbled into some extraordinarly strong drugs over the weekend.

            1. Looks like Malcolm is up to his usual vap1d posts with nothing (at all) present except ad hominem.

              At least try to address a legal point Malcolm.

            2. I know right? I mean his newest fantastic story is hilarious and all but I mean, come on. Trying to pull all this supposedly “pro-patent” stuff out of his quote from KSR is just coo koo. Set all the rest of the whoppers aside and you still have plenty of funny left in there.

              1. I notice that neither Malcolm or 6 even bother to wonder about the question I asked:

                Ask yourselves, what exactly is meant by depriving prior inventions of their value?

              2. Run with that, Billy.

                While adding to your short script is in someway, um, “nice,” the buzzy catchphrase is rather vap1d.

                Try to add something substantive, of merit, to the conversation rather than empty ad hominem, ok pumpkin?

              3. “Ask yourselves, what exactly is meant by depriving prior inventions of their value?”

                Oh, I didn’t realize that was the only “question” that you were attempting to address in your short story.

                Sure I’ll “address” that. The question is easy. When you allow party B a patent on a obvious advance over party A’s previously patented invention you sometimes decrease the value of A’s patent since anyone looking to license his will likely also wish to keep up with the latest obvious advances in tech and want to license B’s as well. That is a more expensive proposition and thus the person looking to license will be less likely to do the whole shebang, thus party A gets squat. Or, party B may well simply refuse the license where A would still go ahead with granting one, and thus the whole project may well get killed by B’s obvious patent thus, again, A gets squat.

                And even the least harmful situation may see the value of A’s patent reduced by B’s because one looking to license A’s patent is not allowed free use of all the obvious variants of A’s invention since B has a patent on some of them. Thus the person looking to license knows they may well have to deal with party B in a separate transaction.

                I thought you were supposed to be dat expert about these sorts of matters.

              4. And before you ask anon, no I don’t want to sit around and argue about some passage in KSR that you’ve taken a shine to. I’ve answered your question, that is my view, so take it or leave it.

                Note that since you usually have a hard time understanding when I’m providing my view, rather than an objective fact/truth from god I’m explicitly pointing out for you that the above was my view.

              5. no I don’t want to sit around and argue

                6, your propensity for wanting to be able to climb up on soapbox and say WHATEVER with no one taking any sense of critical evaluation of the content is well known.

                If all you want to do is stick your fingers in your ears and clench tight your eyes while you chant the same mantra over and over again, you simply are not looking to engage in a conversation or discussion.

                And your view on the value of the patent is more than just a little off.

              6. “6, your propensity for wanting to be able to climb up on soapbox and say WHATEVER with no one taking any sense of critical evaluation of the content is well known.”

                Anon you can feel free to have your say brosef. Whatever say you may have beyond the small book you just wrote. I’m just not going to sit and argue about it.

                “If all you want to do is stick your fingers in your ears ”

                I’ll listen. I’m just not going to argue. Go ahead. Have your say brosef.

                “you simply are not looking to engage in a conversation or discussion.”

                You are correct, I’m not looking to engage in a conversation or discussion on this matter you randomly drummed up out of the blue. I simply gave you my viewpoint because you egged me on, and to help a blatant ignoramus out. Why you have such trouble grasping this I cannot fathom.

                “And your view on the value of the patent is more than just a little off.”

                Well of course it is Mr. OCPD! I’m entirely wrong! Don’t shy away from saying it outright! No need to beat around the bush. If you want to say “6 you’re wrong” don’t try to disguise it. You’ll be owning the truth in your mind regardless. And though it is good that you’re attempting to modify your behavior and stop outright saying “you’re wrong” and making what you say slightly more socially acceptable it is easy to see you’re still feeling the OCPD in your mind, owning that truth like a boss! And the overall effect, even with the different words, is the same in everyday convo.

                But here’s one thing to consider, what I said isn’t really “my view” it’s just the viewpoint I’ve picked up from other USSC cases that is the USSC’s view on this subject, so tell them about it, not me ok? I did not mean to relay my views on the effects of patenting obvious stuff, I meant to relay my views on what the USSC was talking about when they made their comment. So there is no need to bother me about it. Your argument is with the people at the horse’s mouth that made the comment. I don’t necessarily think that issuing obvious patents diminishes the value of the earlier patent all that much myself in real life situations. It can, surely, but it prob doesn’t irl like 99% of the time. And it no doubt would if we went patenting crazy on obvious stuff (which I think is what their comment is about, a hypo where everyone is patenting obvious stuff all the time). But today we don’t really have that problem irl due to examination.

                In any event, their comment really was a simple throw away line it did not have some profound “elephant hiding in a mousehole” meaning.

              7. That’s some pretty nifty dancing that you are doing there 6.

                It’s a pretty soapbox that you have. Too bad you don’t want to discuss this (and yes, I understand that you are “sensitive” to have your views shown for the lack of critically thinking hot mess that they are – as you only wish to post in your widdle world of “lawl as subjective in the mind anything goes” so you won’t have to face the fact of how very often your spouting on law is simply – and objectively – wrong. I get that you are afraid of any substantive “convo” on the merits, and only wish to run away in abject denial.

              8. Right, I don’t want to talk to Mr. OCPD about his pet topic of the day where he’s already signaled that he’s looking for a confrontation with his right/wronging and it’s all because I’m sooooo afeared of being shown to be wrong via Mr. owner of all Truth bringing “critical analysis” and “objective facts/reasoning” to the table! I’m soooo afeared!

                LOLOLOL!

                Do you even hear yourself talking?

                How many people do you know that really want to have a “conversation” i.e. “conflict”, with someone actively looking for a conflict, and who already pretty much started one, over some throw away line in a court case?

                Seriously. How many? Like 50? 100? One? ZERO? Oh wait, yes! ZERO!

                “Social t ard” doesn’t even begin to capture the sheer social re ta rdation on display brosef so I won’t even bother to call you that.

                It is amazing how you’ve convinced yourself that people not wanting to talk to you is because they’re afraid of all the truth that you own. Nah brosef. It’s because you’re owning the truth in the first place. Not because of the truth that you own.

                Newsflash! Determining whether or not we want to talk to you is a social matter, not a matter of some intellectual topic.

                And besides that we could give two shts less about the content of the truth that you own, for the purposes of determining whether or not to talk to you. And that’s because unlike you we can correctly determine that the vast vast vast majority of the truth that you own is simply your opinion on “OCPD steroids”. And even if your opinion is on steroids, it’s still just an opinion and everyone’s got one.

              9. You are doing that projecting thing again.

                Perhaps you could save your doctor some time and forward the posts where you are attempting to play doctor so much and doing all this projecting stuff.

                Just a helpful suggestion.

          2. anon, it is shocking that this whole rant of yours mightily exhibits your profound lack of understanding of the cases behind the printed matter doctrine. That doctrine looks to the novel aspects of the claim to see if such is statutory.

            We all know that software is functional. The question is whether the novel aspects of the new software are functional to produce an improved computer or larger process or machine.

            If not, the novel aspects of the claimed subject matter is non statutory.

            1. For all of your protests Ned, you have yet to this day provided any reasoning to back up your VERSION of the case law you so badly mangle, nor do you address ANY of the simple Set theory explanation that I provided. Instead you merely mouth an empty conclusory statement of yours with no regard to the counterpoints put before you.

              1. anon, only a person that is studiously ignorant can refuse to learn.

                I can rub your nose in the case law all day long, and you will not budge.

                One cannot educate the uneducatable. It is useless to even try.

                The Supreme Court cart went off the rails with the Diehr dicta about novelty. It stayed there big time in Bilski when it ignored Stevens.

                But with Prometheus/Alice, the Diehr dicta is dead. The analysis of Hotel Security and its progeny is restored.

                One looks to the novel aspects of a claim to determine eligibility. The Supreme Court has only to go the last step and actually look at the statutory language itself to complete its journey back from the wilderness. It uses the term “abstract” to describe that which is “non statutory.” But that is a distinction without a difference.

                Your problem is that you have dedicated your life to support nominalism as enunciated by Rich in cases such as Benson, Bergy, the Alappat dicta, and profoundly in State Street Bank. Nominalism is not the law and has never been the law.

                Get with the program.

              2. Billy: you have yet to this day provided any reasoning to back up your VERSION of the case law you so badly mangle,

                As far as I can tell, Ned (like most people) seems to understand the reasoning behind Prometheus and similar decisions quite well. You can’t protect ineligible subject matter by dressing up your claims reciting ineligible subject matter with old, conventional steps or ancient information-processing apparati. The reason is that such claims still protect the ineligible subject matter. The fact that the protection is relevant to a diminished class of potential defendants is beside the point.

                Thanks for playing, Billy.

              3. UM,

                nice non-sequitur Malcolm, but we are not talking about Prometheus here, nor your little pet theory and its boatload of holes.

                We are talking about the exceptions to the judicial doctrine of printed matter. You know the one, the one you volunteered an admissions against interests as to knowing what the controlling law is and what that law means.

                Try to stay on point.

              4. But if you want to talk about your little pet theory,why do you run away (with that, Billy?) from the comments I have provided you?

                Last time with the aspect of granularized steps: link to patentlyo.com

                Your pet theory [oldstep] can be granularized into multiple [oldsteps]…

                Your FAILURE to account for the fact that multiple [oldsteps] and a [newthought] can be both patent eligible and patentable (since, as you yourself have volunteered an admission that mental steps – as part of a claim – are fully allowed under the law.

                You know, this is just one of the several things with your zombie pet theory that you ignore in raising your zombie.

                As can be seen at link to link to patentlyo.com

                …highlight the fact that your pet theory uses a de facto assumption that the claim elements are not integrated.

                Also lost in your rants being expunged was the reply highlighting three or four other major faults with your zombie pet theory that you never seem to want to clarify. What remains of your pet theory is an excessively banal proposition of a mere appended thought, non-integrated and tacked onto a claim resulting in a claim being not eligible. But even a claim element, completely claimed in structural terms merely tacked on and not integrated also fails (such as a claim to a bicycle and a goldfish in a copper bowl) – thus the crux of your little pet theory and your advocacy falsely centers around the mental step portion.

                Your pet theory does not handle or address the fact that perfectly patent eligible and patentable claims can have elements in the claim that are mental steps, and such steps can carry patentable weight. This has been highlighted many times when you strawman a discussion and move the goalpost to talking only about claims completely in the mind and never get back to discussing claims not completely in the mind, but having only a portion completed in the mind.

                Your pet theory does not handle or address the fact that perfectly patent eligible and patentable claims can have [oldstep]+[oldstep] configurations, let alone [oldstep]+[newthought]+[oldstep] configurations. This highlights the failure of your logic wanting to hold that “doing what is already allowed” is made infringement with but a thought, as clearly there are cases (with NO thought added) that doing a combination of things – already fully allowed – is NOT allowed.

                You seem unable to comprehend these things, and you continue to advocate even when these things are brought to your attention. Your “pet theory” is shown to be nothing more than a zombie and you just don’t care.

              5. In moderation for “double links,” here is the post with the first link active:

                But if you want to talk about your little pet theory,why do you run away (with that, Billy?) from the comments I have provided you?

                Last time with the aspect of granularized steps: link to patentlyo.com

                Your pet theory [oldstep] can be granularized into multiple [oldsteps]…

                Your FAILURE to account for the fact that multiple [oldsteps] and a [newthought] can be both patent eligible and patentable (since, as you yourself have volunteered an admission that mental steps – as part of a claim – are fully allowed under the law.

                You know, this is just one of the several things with your zombie pet theory that you ignore in raising your zombie.

                As can be seen at link to [second link to follow]

                …highlight the fact that your pet theory uses a de facto assumption that the claim elements are not integrated.

                Also lost in your rants being expunged was the reply highlighting three or four other major faults with your zombie pet theory that you never seem to want to clarify. What remains of your pet theory is an excessively banal proposition of a mere appended thought, non-integrated and tacked onto a claim resulting in a claim being not eligible. But even a claim element, completely claimed in structural terms merely tacked on and not integrated also fails (such as a claim to a bicycle and a goldfish in a copper bowl) – thus the crux of your little pet theory and your advocacy falsely centers around the mental step portion.

                Your pet theory does not handle or address the fact that perfectly patent eligible and patentable claims can have elements in the claim that are mental steps, and such steps can carry patentable weight. This has been highlighted many times when you strawman a discussion and move the goalpost to talking only about claims completely in the mind and never get back to discussing claims not completely in the mind, but having only a portion completed in the mind.

                Your pet theory does not handle or address the fact that perfectly patent eligible and patentable claims can have [oldstep]+[oldstep] configurations, let alone [oldstep]+[newthought]+[oldstep] configurations. This highlights the failure of your logic wanting to hold that “doing what is already allowed” is made infringement with but a thought, as clearly there are cases (with NO thought added) that doing a combination of things – already fully allowed – is NOT allowed.

                You seem unable to comprehend these things, and you continue to advocate even when these things are brought to your attention. Your “pet theory” is shown to be nothing more than a zombie and you just don’t care.

              6. Well at least you’re getting to the point that you recognize that his “pet theory” is a rather banal point, and yes, maybe it goes a tad overboard (though prob not irl).

                Congrats to you, it only took you like 5 years of babbling about this nonsense to come to that conclusion. Horay!

              7. Wrong focus 6.
                my recognition has NEVER been at issue. The vap1dness of Malcolm’s pet theory on the other hand has ALWAYS been at issue.

                Pay attention.

              8. Your pet theory does not handle or address the fact that perfectly patent eligible and patentable claims can have [oldstep]+[oldstep] configurations, let alone [oldstep]+[newthought]+[oldstep] configurations.

                I’ve explicitly responded to this b.s. from you so many times already it makes me f ing puke.

                Get some medical help, you ps y ch 0 pat h0 l0 gi cal l y in g t 0 0 l.

              9. Your semantics of “I’ve responded” does not mean that you have intelligently (or in any sense of intellectual honesty) integrated the valid points raised into your “mantra.”

                Your “response” has been – and continues to be – an absolute FAIL.

                Try again – aim for “responding” that contains at least some modicum of merit.

            2. What remains of your pet theory is an excessively banal proposition of a mere appended thought, non-integrated and tacked onto a claim resulting in a claim being not eligible.

              Since you still seem to be struggling a bit, I’ll just note that there are no examples of “new thoughts” that “integrate” with an old data gathering step such as to result in an eligible claim that legally prevents data gatherers using that old step from thinking the new thought. Whatever additional limitations are necessary to achieve such an “integration” of ineligible thoughts with old data gathering steps, we can all rest assured that they aren’t going to be additional “new thoughts” or additional “data gathering steps.”

              If you think this proposition is “banal”, well, you’ve just finally acknowledged what I’ve been asking you to acknowledge for 4 or 5 years now. Now, apparently, you can easily understand why Prometheus was a tight 9-0 case and why it will never, ever be overturned.

              I’m not sure if I should light some fireworks to celebrate just yet as I’m pretty sure you’re going to retreat from your admission about the banality of my “theory” (again: just a basic, banal fact) back into your sad fantasy world where your zombie Diehrbot dreams remain uncrushed. You’ll recall you spent countless paragraphs whining about how my now admittedly “banal” “theory” was somehow precluded by an alleged prohibition against “claim dissection” in Diehr.

              And, yes, I’ve already archived your comment so have fun back-tracking, Billy.

    3. Oops Readers (Ned, anon). Sorry about that. In the above, I wrote it the wrong way round. I corrected the priority contest situation in my later reply to Ned.

      What happens is that first filer realises belatedly, from the later-filer’s 18 month A publication, what was not obvious to him and what he should have claimed, and then claims it for the first time during prosecution.

      His belated claims, if OK, are entitled to his filing date, earlier than the other guy’s. But the other guy, the later filer, was actually the “First to File” on that particular novel and inventive subject matter, and so he should get the patent.

      How to stop such mischief? The EPO uses the “new matter” Provision. The USPTO would have to use the “no WD” mechanism. It will. Increasingly. Mark my words.

      1. Is there an assumption in your Hypo MaxDrei that the first filer, amending later does NOT have proper support (whatever that means ;-) ) for his later amendment, AND that the second filer (first claimer) has a claim that does pass the obviousness test over the first filer?

        Are you assuming “mischief” where perhaps there is none (depending on the level of deference that could be given to the first filer)?

        In the instance where second filer’s later first claimed item is NOT above the obviousness hurdle, are you assuming an absence of the typical boilerplate in patent applications that seeks to capture such obvious variants?

        In the instance where the second filer’s later first claimed item IS above the obviousness hurdle are you neglecting that such a finding necessarily means that applicant one must add verboten new matter ( and clearly, new matter of a substantial level) in order to attempt to later claim the non-obvious advance?

        In other words, have we circled around and come back to the exact same point that it is the new matter rule that governs, as opposed to the WD mechanism? (I am still waiting on word from Ned to verify where exactly in 112 the power to object to new matter and force the rescission of such new matter can be found. Surely, an examiner demanding an action under 112 that 112 does not provide for will not have his rejection sustained – the application of the proper point of law will triumph (even if that means Ned Heller has to eat crow).

        1. The hypo requires that the A publication of the 2nd filer reveals to the world (including 1st filer) for the first time the commercially valuable embodiment X of inventive concept C (which at that level of generality turns out to lack patentability), and that 1st filer on concept C did not conceive, and so did not “possess”, when he himself filed for C at the PTO, earlier than 2nd filer. There is no disclosure of embodiment X in the specification of 1st filer, as filed.

          Whether 2nd filer can get to issue with a not invalid claim directed to his embodiment X depends on the prior art, including the A publication of 1st filer.

          Whether 1st filer can get to issue with a not invalid claim directed to X depends on the admissibility to the pending application of a claim specifically directed to X. Let’s talk with Ned, about the rules governing admissibility of such a claim to the pending application of 1st filer and whether any such claim, after admission, is still vulnerable to future attacks on it, commenced after issue, and concerning the legitimacy of its pre-issue admission to the proceedings.

        2. This is a 2nd attempt, after the first was trapped by the filter:

          The hypo requires that the A publication of the 2nd filer reveals to the world (including 1st filer) for the first time the commercially valuable embodiment X of inventive concept C (which at that level of specificity turns out to lack patentability), and that 1st filer on concept C did not conceive, and so did not “possess”, when he himself filed for C at the PTO, earlier than 2nd filer. There is no disclosure of embodiment X in the specification of 1st filer, as filed.

          Whether 2nd filer can get to issue with a not invalid claim directed to his embodiment X depends on the prior art, including the A publication of 1st filer.

          Whether 1st filer can get to issue with a not invalid claim directed to X depends on the admissibility to the pending application of a claim specifically directed to X. Let’s talk with Ned, about the rules governing admissibility of such a claim to the pending application of 1st filer and whether any such claim, after admission, is still vulnerable to future attacks on it, commenced after issue, and concerning the legitimacy of its pre-issue admission to the proceedings.

          1. Max, one cannot add an new embodiment to an existing application. One has to file a CIP. The effective filing date of a claim to the new embodiment is the date of filing of the CIP.

            1. Sorry Ned, but without more, your statement is too broad and not correct.

              A new embodiment may be added without a CIP if the embodiment merely reflects items already captured (and an appropriately written scriviner notification exists in the as-filed application noting that obvious variants are covered – fairly standard stuff, even for “amateurs”).

              Of course, this does assume a point that I have asked MaxDrei to clarify: that X is below the bar of obviousness, or not.

              In essence (still) the situation comes back full circle to my point of added matter.

              And yes, you STILL have failed to back up your “professional” position on exactly where in 112 you are basing your examiner’s authority to request the change in the specification to be rejected.

              1. Your comment is awaiting moderation.

                July 6, 2014 at 4:46 am

                Yes Ned, I appreciate that point. But that’s not what I’m driving at. Sorry I am not making myself clear.

                What I envisage (and it happens more often than you might imagine) is an amendment only of the claim (not the specification) during prosecution.

                Applicant (A) finds out during prosecution that his wide claims as filed are not viable, but such of his narrower claims that do survive the patentability search are no good because they don’t cover what the competitor (B) is doing.

                He has also found out in the meantime what his competitor B is doing, namely “X”. He finds out either in the marketplace or by reading the A publication of B’s patent application, which was filed shortly after A’s own application. B’s patent application includes something on which A’s application is totally silent, namely cute and clever X, an embodiment of the common inventive concept C (to which broad concept both A and B have laid claim). Subject matter X is illustrated and individualized by B, in B’s specification, but is nowhere to be found in A’s earlier patent application.

                So A sets about writing a claim (which would necessarily be entitled to A’s filing date) that is i) narrow enough to be patentable over the prior art yet ii) wide enough to embrace X.

                In EPO terminology, such a claim, by A, to cover subject matter X, being patentable subject matter which A did not disclose, is an “undisclosed intermediate generalisation” and is found to offend Art 123(2) EPC.

                In my experience, this very situation occurs not infrequently.

                Question for you: Who should be able to get an effective (enforceable) patent for X? Should it be A, should it rather be B, should it be both of A and B or should it be neither of A and B? Which result best promotes progress in useful arts? Which result would it be at the EPO and which in the USA?

            2. Yes Ned, I appreciate that point. But that’s not what I’m driving at. Sorry I am not making myself clear.

              What I envisage (and it happens more often than you might imagine) is an amendment only of the claim (not the specification) during prosecution.

              Applicant (A) finds out during prosecution that his wide claims as filed are not viable, but such of his narrower claims that do survive the patentability search are no good because they don’t cover what the competitor (B) is doing.

              He has also found out in the meantime what his competitor B is doing, namely “X”. He finds out either in the marketplace or by reading the A publication of B’s patent application, which was filed shortly after A’s own application. B’s patent application includes something on which A’s application is totally silent, namely ingenious, cute and clever X, an embodiment of the common inventive concept C (to which broad concept both A and B have laid claim). Subject matter X is illustrated and individualized by B, in B’s specification, but is nowhere to be found in A’s earlier patent application.

              So A sets about writing a claim (which would necessarily be entitled to A’s filing date) that is i) narrow enough to be patentable over the prior art yet ii) wide enough to embrace X.

              In EPO terminology, such a claim, by A, to cover subject matter X, being patentable subject matter which A did not disclose, is an “undisclosed intermediate generalisation” and is found to offend Art 123(2) EPC.

              In my experience, this very situation occurs not infrequently.

              Question for you: Who should be able to get an effective (enforceable) patent for X? Should it be A, should it rather be B, should it be both of A and B or should it be neither of A and B? Which result best promotes progress in useful arts? Which result would it be at the EPO and which in the USA?

              1. So here’s Part I. Again. To see if it gets through:

                Yes Ned, I appreciate that point. But that’s not what I’m driving at. Sorry I am not making myself clear.

                What I envisage (and it happens more often than you might imagine) is an amendment only of the claim (not the specification) during prosecution.

                Applicant (A) finds out during prosecution that his wide claims as filed are not viable, but such of his narrower claims that do survive the patentability search are no good because they don’t cover what the competitor (B) is doing.

                He has also found out in the meantime what his competitor B is doing, namely “X”. He finds out either in the marketplace or by reading the A publication of B’s patent application, which was filed shortly after A’s own application. B’s patent application includes something on which A’s application is totally silent, namely cute and clever X, an embodiment of the common inventive concept C (to which broad concept both A and B have laid claim). Subject matter X is illustrated and individualized by B, in B’s specification, but is nowhere to be found in A’s earlier patent application.

              2. And now here’s Part II:

                So A sets about writing a claim (which would necessarily be entitled to A’s filing date) that is i) narrow enough to be patentable over the prior art yet ii) wide enough to embrace X.

                In EPO terminology, such a claim, by A, to cover subject matter X, being patentable subject matter which A did not disclose, is an “undisclosed intermediate generalisation” and is found to offend Art 123(2) EPC.

                In my experience, this very situation occurs not infrequently.

                Question for you: Who should be able to get an effective (enforceable) patent for X? Should it be A, should it rather be B, should it be both of A and B or should it be neither of A and B? Which result best promotes progress in useful arts? Which result would it be at the EPO and which in the USA?
                :

              3. MaxDrei,

                Are you referencing the different treatment between US and EP on ipsis verbis?

                (note that the filter is exceptionally virulent against words that start with “gen”).

              4. Max, A discloses Y, and Z, B discloses X, where X is a member of the Y – Z genus.

                Since A cannot claim X, he has to claim Y-Z, a genus that includes X.

                I think a late claim to Y-Z might be possible in the US given a supporting expert affidavit. I am pretty sure it is not in Europe.

    4. Interesting point Ned. And WD isn’t all bad. The problem I have is with the Laurie bird removing the PHOSITA.

  6. In this thread there is an observation from 6 about the WD requirement having got more onerous in recent years. I predict that, with First to File, the trend will continue. That is because, when priority between rival independent Inventors is decided exclusively on the disclosure content of their respective filings at the PTO, a written description in their appln as filed, of what they respectively end up claiming, will become ever more vital to success in the priority contest.

    Not so different from how the EPO treats “added matter”, and for the very same reason.

    Thoughts?

    1. MaxDrei,

      If you think 112 is the analogous section to the EPO’s treatment of “added matter,” what do you do with the existing US’s treatment of “added matter” – that is, the actual section outside of 112?

        1. Ned I will ignore anon when he phones in merely to call me names.

          But when he asks a question that sets me thinking, I will assume it sets others thinking too. In that case, I want to keep those others (you, for example) engaged. It might result in my learning something.

          So in that situation, I might well make an exception, and respond to his atypical post. It is not going to dilute the thread much, if at all.

          1. and respond to his atypical post

            Bite me.

            My “atypical post” is one of insightful (and perhaps inciting as well) critical analysis and scrutiny, and is on target and well-informed.

            That my “atypical post” also makes you uncomfortable is more a reflection of your rather atypical half-baked offerings.

            Stop being such a wuss.

      1. Well anon, 35 USC 112 isn’t enough on its own, is it.

        If you find out, down the line, during examination on the merits, that your application as filed lacks (to the new raised standard of rigour)a “written description” of the subject matter you now want to claim, how does the USPTO stop you adding (by amendment) such a complementary beefed-up written description into the pending application?

        What else but 35 USC 132?

        1. Max, but what anon does not seem to recognize is that there is no rejection based upon §132. §132 is not a condition of patentability. Neither is it a statute the violation of which is mentioned in §282 that will lead to invalidity.

          Anon is a pure amateur, and the more he talks here the more he demonstrates that he doesn’t know what he’s talking about.

          1. Ah so! Thanks Ned. So what exactly is it that prevents Applicant adding matter (or absent but necessary “written description”) during prosecution?

            If Section 132 bites only after issue, its counterpart in the EPC might be Article 123(3), the provision which forbids any and all post-issue claim broadening

              1. Yes Ned. That at least I know. But did you know that, depending what you’ve got in your “written description”, under the EPC and up until issue, you can broaden your pending claims without offending the “no added matter” provision of the EPC?

            1. The examiner requires one to remove new matter from the specification, and rejects claims under 112, p.1, for lack of written description support.

              After the patent issues, it really depends on whether the claims at issue are supported in the application as filed before the entry of new matter into the specification. If not, they are invalid, again, under 112, p.1.

              1. Thanks Ned. Now I see why:

                1. at the USPTO, applicants do not try to amend the specification

                2. why 6 might be excited about a beefed-up WD standard available to him, to apply during his bouts of examination

                3. why 35 USC 112 WD has the potential to equate in severity to the EPC’s Art 123(2).

              2. Amendments to the specification do happen in the US.

                For example, content of figures can be added to the specification, and (while rare), material in original claims can also be added to the specification.

              3. Be careful about that, anon. Recall what happened in Muncie Gear when the applicant described the shape of the motor’s hull in the spec.

                MUNCIE GEAR INC. v. Outboard Co., 315 U.S. 759, 62 S. Ct. 865, 86 L. Ed. 1171 (1942).

              4. Of course, care should be taken.

                Care should always be taken.

                Not sure you can use the Muncie case for any point here – you have – once again – chosen a Supreme Court case of questionable vintage, from an era of “the only valid patent is one that has not yet appeared before us = and further, the Court there did not give credit to the drawings as filed for the asserted claims – which was my point.

                In fact the case is rather odd for doing so, as in essence, the Court seemingly allows an unsupported invention to stand and then decided that the late invention failed the public use or sale bar. Most odd, don’t you think to not give credit to the actual material available at file date – including the drawings (which is the focus of my post) on which to fix a date for the asserted claims. Almost as if the Court treated the asserted 1929 invention as a Continuation-In-Part separate from the as-filed application.

                Just goes to show that the Court messed up patent law back then (of course we both already knew that, given the Congressional record of 1952, right?)

              5. Ned, what is the specific statutory authority for removing the material you reference with your comment of “The examiner requires one to remove new matter from the specification“, given as you attempt to do that 132 does not serve as a rejection.

                112 does not serve to remove, does it? If you think so, kindly show where. I see no words of authority whatsoever to remove.

                Help this “amateur” out – if you can first bother to remove your foot from your mouth.

              6. Well, the added matter was not actually disclosed in the drawings. That was the point.

                Back at the time, they did not have formal continuation rules that we have today. So, they did treat the addition of new matter as a CIP.

              7. Well, the added matter was not actually disclosed in the drawings. That was the point.

                That’s not what the decisions says Ned.

                At all:

                Harry L. Johnson, an experienced engineer and manufacturer of outboard motors, filed his application for the patent on August 25, 1926, but it in no way suggested the combination now asserted as his invention. The single sheet of drawing accompanying the application was not changed during the prosecution of the application, and is the same as the drawing of the issued patent

                Fn amateur.

              8. I was looking in your answer anything related to my question to you about the 112 and removal bit – didn’t see it and missed the “not” so, mea culpa for coming down so hard on you when what you are actually doing is agreeing with what I said in the first place.

                No CIP, so the Justices were writing patent law to allow such…?

              9. Ned, what is the specific statutory authority for removing the material you reference with your comment of “The examiner requires one to remove new matter from the specification“, given as you attempt to do that 132 does not serve as a rejection.

                112 is the rejection on the claims. There is an objection to removing new matter from the spec.

              10. anon, there are some, such as now yourself, that interpret Muncie Gear as a late claiming case.

                Rich and crew interpreted it as a simple new matter case.

                I am amazed, anon, that you have never heard of Muncie Gear. One more example of your “education.”

              11. (sigh)

                I have heard of the case Ned – once again, it is not the case itself that drives an issue between us – it is your version of the case.

                Look again at our dialogue here: it is you (again) that offers up a CRP first version, changes what you are saying in response to my comments, and then you attempt to malign my (correct) views.

                This little dance of yours is transparent Ned. And, to borrow an adjective, rather amateurish.

                Late claiming (with proper antecedent basis) is quite different from (late) claiming based on the insertion of new matter.

                (and btw, you STILL have not shown me the authority in 112 you say is there to remove added matter – even Random Examiner is in line with the proper protocol there, and your “professional” view is still wrong and still twisting in the wind)

                Your plate of crow grows cold. If you do not have it now for dinner, it will be waiting for you for breakfast.

              12. One more example of your ‘education.’

                Come teacher Ned, where are the ‘snide comments’ when it is you that is being schooled, and having yet another “version” of your case law renditions wrecked?

                Another example of you leaving a conversation prematurely, boasting of your own prowess when that prowess quite disappears when the curtain is pulled aside, in an Oz-like manner.

                Your breakfast crow awaits.

      1. Ned, nothing complicated. Just when there are rival independent (ie NOT one derived from the other) filings at the EPO, on overlapping subject matter. It happens a lot.

        When it does, we have to sort out who gets what, and we do it exclusively on a First to File basis. Decisive to the “priority contest” is the written description each of the rival filers put on file at the EPO, and the dates on which they did it.

  7. The likes of IBM, and many here, routinely talk about the software industry as the beneficiaries of software patents. May I suggest that we put this to a test.

    Require a rule that when a programmed computer or the equivalent is claimed, that the covered software be both registered in the Copyright office, and filed in confidence with the patent application.

      1. actual reduction to practice is NOT a requirement?

        Whether actual reduction to practice is required or not depends on what is being claimed.

        There is no law I’m aware of saying “thou shalt not ever hinge patentability on an actual reduction to practice at the time of filing.” It might be perfectly reasonable in certain instances to deny a patent on, e.g., an apparatus described only in terms of its functionality that was never made by the patentee and which, when first manufactured by an accused infringer, required a great deal of effort and troubleshooting.

            1. Outside of the banal (and captured in the statute) example of perpetual motion machines, sure.

              Or did you think that playing coy would allow you to make a statement well beyond its measure and by implication allow you to dissemble?

              1. Outside of the banal (and captured in the statute) example of perpetual motion machines, sure.

                So if an Examiner demands to see a working embodiment of a machine or a composition that you’ve described only in terms of its new functionality, you just tell the Examiner to stuff it because “it’s not a perpetual motion machine.”

                That’s your argument?

                Fascinating.

              2. Please provide a cite for this authority of yours that you would use to deny based on lack of working model.

                You are aware that working models have not been a requirement for many many many many many many decades, right?

                Not sure why you would find this state of actual law “fascinating.”

              3. working model

                I didn’t say anything about a “working model requirement” for patents generally, Billy.

                Do you want to put the goalpost back or are you still busy trying to hump it?

              4. Please show even one example of this type of “legitimate” rejection of a patent application for not having a working model, Malcolm.

                Even a single one.

                Your coy “no law I am aware of” is not a statement of positive law, and you dissemble and seek to invite a proving of a negative. A logical fallacy is what you spin.

                But you first made a positive statement. Back that up, please.

              5. working model

                I didn’t say anything about a “working model requirement” for patents, Billy.

                I said “Whether actual reduction to practice is required or not depends on what is being claimed.”

                And that is surely the case.

                Consider a claim: “A chemical, wherein said chemical permanantly cures baldness when rubbed on a scalp.”

                If you think you can get a patent on that claim without an actual reduction to practice, then by all means throw your money down the t–let. [shrugs]

              6. Contrast “I didn’t say anything about a “working model requirement” for patents, Billy.” and “actual reduction to practice” with the understanding that the actual legal requirement is constructive reduction to practice.

                Can you at least get the basics down Malcolm?

                You are embarrassing yourself.

              7. Further note that you STILL have not supplied an actual example of a proper examiner rejection to back up your affirmative statement (while noting your gamesmanship and spin attempt to require the opposing view to prove a negative).

                Come man – stop playing games, stop your vapid [shrugs], and step up to the plate.

              8. an actual example of a proper examiner rejection

                Apparently in Billy’s world if you can’t show him “an actual example of a proper examiner rejection” of a claim to “X” than you might as file the claim to “X”. As long as X isn’t a perpetual motion machine, you can just claim the desired function and voila! “constructive reduction to practice”.

                What a fun, free-wheeling world Billy lives in. His imaginary clients must love him. Until they get the bill for that expensive piece of t—let paper.

              9. Nice fallacy with the “if you can’t show,” and attempted dust kicking, but since you cannot show (or refuse to show), why not just admit that you pulled your position out of your arse?

                (your additional mischaracterization and attempted obfuscation between “claimed desired functions” and “constructive reduction to practice” is noted. You, um, do know what constructive reduction to practice means, right?)

            2. Bets on that?

              How about bets on whether Malcolm steps up to the plate and backs up his affirmative statement with a real example?

              1. a real example

                LOL. Nice try, Billy.

                I made a simple, non-controversial claim. Here it is again: Whether actual reduction to practice is required or not depends on what is being claimed.

                You said that was “completely false.” Of course you’re wrong about that so in response you move the goalpost. Keep digging, Billy. Your pig lover is down there waiting for you.

              2. LOL – nice try?

                Try to have you actually support your position?

                What’s the matter pumpkin? Cannot support your vap1d posts with anything other than your typical short script?

                Is anyone really all that surprised?

                I moved no goalposts – I simply clarified for the single exception already captured in the statutes and rules to minimize your tendency to spin and point out to you exactly what type of counter presentation would suffice for you to support YOUR affirmative (and incorrect) statement. The ball is (and remains) in your court to back up what you say.

                Come on pumpkin, put up or shut up, eh?

    1. No. You can patent something with only a constructive reduction to practice. You don’t have to build one. If you invent a submarine, you don’t have to build one. You need only explain how to build one.

      Same with software.

      1. Les, true.

        But if the PTO were to adopt a rule that such a disclosure of actual software would support claim that would OTHERWISE be unpatentable as abstract, it might be a valid rule.

        But I would predict that there would be very, very, very few software patents actually filed as we all know that most alleged software patents are not about the software.

      2. If you invent a submarine, you don’t have to build one. You need only explain how to build one.

        In fact, if you want a patent that protects your new submarine you also need to describe the new submarine in objective structural terms that distinguish your new submarine from old submarines.

        1. So, MM. Lets say I claim this:

          A composition for curing prostate cancer comprising:
          A; and
          B; and
          a functional group for binding to receptor C.

          I disclose such a composition that binds to C and indeed cures prostate cancer. Afterwards you find a new chemical that also binds to C, which also has A and B.

          Result?

          1. al, I think it would depend on whether the novelty in the claim had to do with the combination of chemical A with chemical B, with a functional group being any known way of attaching one thing to another, and whether invention was in the particular composition that bound chemicals A and B to C.

            Functionally claiming old and well-known structure should be given a liberal construction.

        2. The submarine is new because it has new software to carry out a better sonar signal processing that provides data in a 3D renderable form at at least a 100Hz update rate, thereby allowing the Captain and others to “see” the underwater environment around the boat in all directions. The spec includes a flow chart outlining the new processing and a block diagram showing a processor, data memory, and program memory that holds instructions for carrying out the method outlined in the flow chart.

  8. Dennis: Patent attorneys will also note that Judge Lourie’s reference to “highly unpredictable” arts is designed to refer primarily to bio-related sciences. We shall see whether the subsequent case law is so limited.

    It’s important to remember that even in the “highly unpredictable” “bio arts” there are many, many areas where the effect of a given structural change on the function of a molecule is readily predictable. It’s not 1950 anymore! It’s 2014. People know a lot more than they used to.

    I believe the Federal Circuit understands that the focus should not be on the overall relative “predictability” of the broadly defined “art” but rather on the “predictability” of structures that correlate with the specific functionality recited in the claim. As the CAFC recognized, functional claiming presents serious problems in every case “where it is difficult to establish a correlation between structure and [the recited] function”. That’s because where there is no predictable correlation between the recited function and the specific structures necessary to achieve that function, the applicant is effectively claiming the functionality itself. And that is a problem. It’s a written description problem and it’s also a 101 problem.

    1. MM, I don’t know if the common sense of Lourie can be attributed to the Federal Circuit as a whole. There were a lot of “dissenting” opinions in CLS Bank that demonstrate to me that there are a whole lot of judges on that court who would eagerly grant claims to business methods that have nothing to do with advancing the progress in the useful arts, that are clearly non statutory, just because they believe that anything and everything should be patentable without any limits whatsoever save obviousness.

        1. Actually Night, the position I describe of those certain judges on the Federal Circuit in CLS Bank is a position you have often expressed here yourself. If you think that position is off the charts, so to speak, then you are talking about yourself as well.

    2. Well, MM, if you read what I wrote, then the problem with what Laurie did is take out the PHOSITA.

      The following should depend on a PHOSITA. Not a Laurie bird.
      “where it is difficult to establish a correlation between structure and [the recited] function”.

        1. And the scary part of this is we can see the arrogant Laurie bird and easily imagine that he is going to remove the PHOSITA from electrical claims.

    3. I believe the Federal Circuit understands that the focus should not be on the overall relative “predictability” of the broadly defined “art” but rather on the “predictability” of structures that correlate with the specific functionality recited in the claim

      That’s some seriously misdirected spin there.

      1. No spin. Just a common sense reading of the principle underlying this decision and others. But keep sticking your head in your sand. It suits you.

        1. Lovely AOOTWMD.

          Of course, to you all others have their heads in the sand and it is you that has the common sense.

          But it’s the opposite here on planet Earth.

          Join us sometime.

    4. Malcolm, I think you have something here about predictability. Part of the doctrine of equivalents analysis is whether one of ordinary skill in the art would know to substitute the one for the other.

      1. …sort of like in the art, it is known for a fact that software is equivalent to hardware and is equivalent to firmware.

        Ned, you are on to something here (of course, one does have to read the claim as understood by a person having ordinary skill in the art to which the invention pertains, having been informed by the specification.

        1. anon, if the invention is a algorithm, why limit it to computers? When you do, you allow circuits to get off scot free.

  9. What’s interesting to me is that the case concerns antibodies, which I’ve noted for many years were an infamous and ripe-for-the-axing “exception” to the general prohibitions against functional claiming at the point of novelty. The Federal Circuit just stuck another big nail in that coffin.

    Functionally defined genus claims can be inherently vulnerable to invalidity challenge for lack of written description support, especially in technology fields … where it is difficult to establish a correlation between structure and function for the whole genus or to predict what would be covered by the functionally claimed genus.

    Of course, there is another technology field where it is incredibly difficult if not impossible to establish a correlation between the described function (“configured to provide an advertisement”) and the novel structural features necessary for that described function….

    the ’128 and ’485 patents do not describe any common structural features of the claimed computers. The asserted claims attempt to claim every configured computer that would achieve a desired result, i.e., providing an ad to a user who desires to see copyrighted content, and covers admittedly very different software programs that run on completely different platforms, whereas the patent does not describe a single representative example of working software for any platform.

    The preceding paragraph is paraphrased from a paragraph on page 26 of the CAFC’s opinion. Someday soon (hopefully) we’ll see something similar written by a judge on the Federal Circuit or Supreme Court ….

    Like I said, folks: there is more to come!

  10. Dennis: a fascinating element of this case is that the WD decision asks us to look at the accused product and see whether that product was sufficiently described.

    This seemed to me to be just a run-of-the-mill case of “be careful what you wish for.” The patentee made the decision to go after an infringer whose antibodies were markedly different from those taught by the patentee. That required that the claims be construed very broadly, which in turn meant that the patentee needed to have disclosed a suitable number of diverse species falling within that vast genus.

    1. Sometimes MM (as here) writes an observation that reduces the legal puzzle to something very simple. That observation leads me to think that we have here what English litigators (US ones too?) would call a “squeeze”, that is, the claim at bar is either narrow (and so not infringed) or wide (and so likely to be found invalid). The “squeeze” on the patent owner is to find a claim construction that keeps the claim wide enough to catch the target but not so wide as to fall to a validitry challenge. In England, the squeeze is often fatal. Good to see that it can work too in the USA, despite the Presumption of Validity.

  11. The correct outcome, in my opinion. The problem with this functional language is that it sees the structural differences as completely irrelevant, but the differences are not irrelevant. If the functional language had described the structure as well as the binding site, then the claims wouldn’t be invalidated. Of course, it wouldn’t have covered the accused infringer’s invention…

    I disagree with the overarching “functional claims are vulnerable.” The way some functional language is treated is too harsh.

    1. Indeed, imagine if the Morse patent had gone through, it’s a claim that would read on the modern day computer. The idea that one could not practice the modern computer without the consent of the Morse patent holder is ridiculous.

      1. Surely the nuance and irony of your statement is lost on you Random Examiner, as ‘old box’ without more is being attempted to cover changes to ‘old box’ with a waive of a ‘magic wand’

        (new capabilities simply are not already ‘in there’)

        1. Factually true but irrelevant Dennis. If Morse’s patent came along and someone invented the modern day computer 5 years later, the legal standpoint would be the same – the issue would still be did Morse posit the computer when the only proof of what he has was the telegraph.

          This is not just an academic viewpoint, as for current day software claims, 20 years is an eternity.

          1. Lots of things “seem” irrelevant to you Random Examiner…

            (hint: that’s a pretty pathet1c way of dealing with on point comments)

          2. What is with you n$t jobs that you think a preclusion must never occur? You act as if there is no nexus between what Morse did and modern computer, and if Morse’s claims did read on a new invention that the part that reads on it wasn’t invented by Morse.

            Just bizarre wrong thinking.

          3. (hint: that’s a pretty pathet1c way of dealing with on point comments)

            His comment isn’t on point at all, and it was poor thinking on his part to raise it. 112 is a statutory requirement of obtaining the patent. When the argument is “You did not meet a statutory requirement” the response cannot be “That’s okay, because it’s for a limited time anyway”. If you respect patents I would think you would be intellectually honest enough to admit that. Why not just have a registration system at that point and be done with it?

            The difference in time is completely irrelevant – either Morse posited the means or he didn’t. If he didn’t posit the means and yet the claim covers the means, it is evidence that the claim is overbroad and violative of WD. That’s true whether it happens 1 year, 10 years or 100 years from the date of filing.

            You act as if there is no nexus between what Morse did and modern computer

            You have a terrible concept of what constitutes invention. The means Morse invented (a machine that allows a user to interrupt electrical flow manually to create a series of dots and dashes that can be translated into words, again, manually) bears zero relation to logging onto a website and pressing buttons to make legible letters appear via tcp/ip. There’s nexus between what Morse did and the modern computer in the sense that they both involve communication and both rely on electricity, but that’s about it.

            and if Morse’s claims did read on a new invention that the part that reads on it wasn’t invented by Morse.

            Not only am I saying that, that’s what the Morse court said: If we let this claim issue, it’d allow you to read on things that weren’t invented by you. That’s the very definition of an overbroad claim.

            1. You have a terrible concept of what constitutes invention.

              You put up a CRP analogy, and then seek to blame others for having a “terrible concept?”

              Look in the mirror pal. There is your problem.

            2. …and you still do not get the irony of your little circle of friends and their wanting to use the “House” paradigm that “oldbox” contains all future inventions and improvements to “oldbox” by way of component changes called software.

              Clench tight those eyes while you run with those scissors – that’ll protect you…

              /eye roll

              1. Anon,

                Old data processing machine processes data. Giving it data to process does not improve it. (Remember those meat grinders I sneaked into your Grand Hall?)

                Keep standing there rolling your eyes, anon. Mind you don’t end up in the path of a very big pendulum swinging your direction. (Hint: data is abstract. And if you’re going to cry about “What does abstract mean?”, pick up a dictionary already: “Existing solely in the mind.”)

                And I would still love to see a link, cite, or exact quote for what you’re repeatedly alleging the television character “Dr. House” said about computer patents. My google-foo is proving to not be up to the challenge (and your typical cheap-shot response to that confession is anticipated).

                Kindest regards,
                Dobu

              2. Dobu,

                Your “meatgrinders” were caught at the door and did not make into the Grand Hall.

                Sorry, you seem to want to re-animate an argument that you never won with and try again with no change (your “it’s just data” line of CRP was a FAIL.

                Your “existing solely in the mind” is already a FAIL given the fact that you can obtain copyright for software, but cannot obtain copyright for anything “solely in the mind.”

              3. Anon,

                Yeah, you never addressed the loaded/empty meat grinders at our earlier discussions, either. That’s okay, I wasn’t expecting much this time, either.

                “. . . re-animate an argument that you never won . . . .”
                Yeah, you hit my threshold with your oft-repeated oldbox-improvement silliness, and finally goaded me into re-posting that old argument that I never lost.

                You can get a copyright on an expression of software or data, sure. But any meaning assigned to it is “solely in the mind”. Abstract. Like math. (Which, in the form of expression, can also enjoy copyright.)

              4. The form of expression – as you put it, is an aspect of the software that must be NOT in the mind. Not sure where you get off jumping to “meaning” and ignoring critical aspects, but such is not any way to attempt a legal position.

                You lose.

                You blanding mouthing “I never lost” when in fact you did lose does not change the fact from you did lose to you “never lost”

                You lose.

                Your meat-grinder analogy was a fail the first time around. You have done nothing to change that.

                You lose.

                Three strikes. Kindly return to the bench at techdirt.

                Thanks.

              5. Anon,

                Not sure where you get off jumping to “meaning” and ignoring critical aspects . . . .

                Because some folks of a patent-expansionist mindset have been trying to claim “My computer-stored data means such-and-such, can I has my patent now?”. Many software patents are of this nature. We were talking about software patents, were we not?

                You lose.
                You lose.
                You lose.
                Your meat-grinder analogy was a fail the first time around. You have done nothing to change that.

                Nor have you done anything to refute it, beyond childishly throwing around grade-school-worthy expressions, such as “lose[r]” and “fail[ure]“. The anon “modus operandi”, as it were.

                Computer software is abstract, anon. You can keep playing games with copyright on an expression of software, or software on a storage medium, or configuration of microscopic logic gates, but the USSC is finally wising up and knocking out these patents that fail to “promote science and the useful arts”.

                Best wishes,
                Dobu

                Beware the pendulum. Tick. Tock.

              6. fail to promote…?

                LOL – you can stop the lemming march or put your money where your mouth and take up the invitation to join the Amish and not partake of innovation that you would deny protection to which has been extended to you.

                (btw, the refuting was already done – I need do no more)

              7. The modus operandi of legal cases is beyond your ken.

                I speak at a level you just might understand – on your good days, with the help of your mommy.

              8. Anon,

                LOL – you can stop the lemming march or put your money where your mouth and take up the invitation to join the Amish and not partake of innovation that you would deny protection to which has been extended to you.

                I design computers and software for a living, so my money is already where my mouth is, thankyouverymuch. I can only guess this Amish silliness comes from the fallacy that software wouldn’t advance without patent “protection” (which has been disproven so, SO many times).

                (btw, the refuting was already done – I need do no more)

                Typical. Allege having provided answers when you posted nothing but misdirection and insults. The anon M.O. at work.

                The modus operandi of legal cases is beyond your ken.

                Which is why I visit sights like Patently O, with helpful articles on important cases, and friendly people who help me understand the less obvious aspects of such cases. (And then there’s anon. =] )

                I speak at a level you just might understand – on your good days, with the help of your mommy.

                Wow. Not just childish, but infantile. Sad, really. I hope you’re feeling better soon.

                Best wishes,
                Dobu

                Beware the pendulum. Tick. Tock.

              9. I design computers and software for a living, so my money is already where my mouth is, thankyouverymuch

                LOL – you miss the meaning of the statement.

                Much like you miss most everything else in your lemming march.

                Whiff.

                (the techdirt comment, on the other hand, hits the mark nicely, n’cest-ce pa?)

                I can only guess this Amish silliness comes from the fallacy that software wouldn’t advance without patent “protection”

                LOL – the limited mind application of “but-for” as to why patents exists. Your “only guess” is only wrong.

                Whiff.

                Allege having provided answers when you posted nothing but misdirection and insults.

                Nope, answers have been provided – they only look like misdirections to you because your “directions” are already locked into marching up that hill of yours. The insults? Well, you have earned those my friend.

                Whiff.

                why I visit sights like Patently O

                LOL – then that too is a fail, as you show no appreciation of the legal aspects involved. You do not even show appreciation of the factual aspects involved. All you show is the lemming regurge.

                Whiff.

                Sad, really.

                Yes, but the sadness is you ad the fact that you just cannot appreciate that.

                Whiff.

                Beware the pendulum. Tick. Tock.

                LOL – you need a new signature line, as you apparently do not realize that a pendulum swings BOTH ways while you crow on and on about only one of the two directions.

                Sad, really.

                LOL NOT – as you cannot see your own repetitive FAIL is somewhat amusing.

                Whiff.

                (um, you do know that you are trying to hit the ball with that thing, right?)

              10. Dobu,

                If you can muster up the courage (and marshal some basic understanding of legal principles), I invite you to join the conversation at subthread 21, where I repost several legal points addressing the so-called “never addressed-done nothing” mantra that you so eagerly mouth.

                In direct contrast to your accusations, I have – in great detail – pointed out the legal and factual basis of my position, properly using case law (such as Alappat) and simplified explanations with Set Theory (so those without legal skills can appreciate the governing legal framework).

                Your drive-by (and rather vap1d) comments notwithstanding, I invite you to add something meaningful to the conversation.

                That is, if you are not too busy merely thinking of aspects of software completely in your mind and doing the lemming march of ignoring the fact that software is MORE than your thinking about software. Surely, you are paid to do more than just think, and your work product is more than just thinking. Surely, your work product is not based on telekinesis or magic, and you MUST interact with the real world in order to get paid for the actual creation of the work product you call software (even if you still fail to appreciate what that work product actually is).

              11. Also worth repeating is the notion that EXACTLY as a chemist can think about reactions in completely in his mind, and map out a newly configured molecule, as engage in a constructive reduction to practice and the object of his invention is NOT something completely in the mind, so too with software.

                Thus, the tie-in to the analogy of my big box of electrons, protons, and neutrons suffices to easily quell the arguments against those who would ignore the fact that a newly configured machine is in real physical fact a different machine. The legal notions of Alappat are based on sound true physical facts – and those facts exist objectively and not merely because it is I that reference them.

                Accepting reality will set you free Dobu – choose the red pill. Shuck off the allure of the matrix, of the world pulled over your eyes to blind you.

                link to en.wikipedia.org

                The bondage is the lemming march.

              12. …and you still do not get the irony of your little circle of friends and their wanting to use the “House” paradigm that “oldbox” contains all future inventions and improvements to “oldbox” by way of component changes called software.

                You’re thinking of someone else you apparently lump me in with, as I have always said that software makes a difference. Now I’ve always said that a functional recitation doesn’t accurately convey the change, but you know that as well.

                Is a computer without Microsoft Word the same as the computer with Microsoft Word? No, of course not. Can you claim Microsoft Word by saying “code configured to perform word processing?” or some similar statment? No.

                Since you mention “the irony” I assume you get that I’m pointing out that the former oldbox does not encompass the latter right? But I fail to see how that’s ironic, as even if you thought that destroys a 103 argument against the claims (of which I never had one), it creates a 112 argument, and the claims are invalid either way.

        2. And just so we’re clear – is your viewpoint that the thing that stopped Morse’s claim was the enablement issue, or does it ring in modern day description? I would read some of the language again, you’ll see that Morse’s claim was overbroad due to description as well as enablement.

          Also not an academic viewpoint, because the common refrain is that all software coding is merely a clerical translation and thus is always enabled. But enablement and description are not coextensive and are separate requirements.

      2. The idea that one could not practice the modern computer without the consent of the Morse patent holder is ridiculous.

        It’s ridiculous all right. The term of a patent has never been longer than 20 years or so.

        1. But if the computer was invented within 20 years of the telegraph, you’d be comfortable with a patent claim scope that allowed the telegraph inventor to curtail the computer?

          1. That’s a silly hypothetical, since nobody is asserting that Morse’s “telegraph” claim was valid then or would be now. Yes, I’m perfectly comfortable with the idea that definite claims to apparatus will “curtail” infringing devices for 20 years. That’s how it’s supposed to work.

            1. “That’s how it’s supposed to work.”

              That’s your opinion. Others of us would like to see a description req with teeth because we’d like to actually get a fair description of what we’re giving a right to exclude for. Otherwise we’re just handing out free lunches to some folks through our entitlement program. And while I know you might like free lunches, whether or not that is how the entitlement program is “supposed” to work or not is a political question.

              And actually it isn’t all that silly of a hypo. It wasn’t but just the other day that someone with a patent on some caller ID system from the 1980′s was cease and desisting an Iphone app developer. It was plain to see that they had not described anything even remotely like an iphone app (the only thing this guy made at all).

              1. Are you talking about this?
                link to techdirt.com

                The infringement allegations may well have been bogus (and probably were, judging from a 30-second look at the claims), but I don’t know what that has to do with written description or even with functional claim limitations.

              2. That’s your opinion. Others of us would like to see a description req with teeth because we’d like to actually get a fair description of what we’re giving a right to exclude for.

                What did I say that was to the contrary? I thought that what I said was rather unremarkable – a definite claim to an apparatus will “curtail” devices that infringe that claim. I’m pretty certain that’s what the Patent Act says.

              3. “Others of us would like to see a description req with teeth because we’d like to actually get a fair description of what we’re giving a right to exclude for.”

                And what is it exactly that you need? Under the law, if the examiner establishes by a preponderance of the evidence that the applicant was not in possession of the claimed subject matter as of the filing date, the claim is not patentable under 112, 1st. So what more “teeth” do you need than that?

                My guess is that you have no idea. You’re doing your usual blowing sh!t out of your arse without having any idea what you’re talking about routine as far as anybody can tell.

              4. “And actually it isn’t all that silly of a hypo. It wasn’t but just the other day that someone with a patent on some caller ID system from the 1980′s was cease and desisting an Iphone app developer. It was plain to see that they had not described anything even remotely like an iphone app (the only thing this guy made at all).”

                So what’s the problem? You yourself noted below that the issue of whether the claim is described sufficiently for 112, 1st purposes is determined at the time the claim is presented for examination, not when it’s asserted years later.

                Are you suggesting that examiners should be given the authority to reject claims because they have a “feeling” or some “hunch” that years later some technology may be developed that falls within the literal scope of the claims but was not actually described or possessed or contemplated or envisioned by the applicant?

                Good luck with that.

                Keep dreaming.

              5. “What did I say that was to the contrary?”

                You said: “That’s how it’s supposed to work.” That’s what you said.

                “a definite claim to an apparatus will “curtail” devices that infringe that claim”

                Sure it will. The question is the depth of the description we require to consider the WD req satisfied. In other words, shall we have a toothless WD req or shall we have a WD req that has some teeth re functional terms? In some arts there seems to be overall agreement that there should be teeth in the separate WD req . But then, based on little more than enablement arguments, in other arts there is agreement amongst still others that there should be practically no teeth.

              6. “Are you talking about this?
                link to techdirt.com

                The infringement allegations may well have been bogus (and probably were, judging from a 30-second look at the claims), but I don’t know what that has to do with written description or even with functional claim limitations.”

                That was indeed the instance. It was all over the interbuts. As to what it has to do with functional limitations take a look at the claims and their functional limitations. Then consider that if we had a strong WD req re functional limitations then those claims may well have not issued in the first instance and we’d still have that app.

              7. “So what’s the problem? You yourself noted below that the issue of whether the claim is described sufficiently for 112, 1st purposes is determined at the time the claim is presented for examination, not when it’s asserted years later.”

                I did indeed. Take a look at their claims and then recall that if we had a strong WD req for such claims at the time of filing then those claims would not have issued in the first place. And then the app would not have been shut down.

                But of course the guy that examined this examined them under the weak to nonexistent WD req that we had at the time (and for all intents and purposes still have) in such “arts”.

              8. “And what is it exactly that you need? Under the law, if the examiner establishes by a preponderance of the evidence that the applicant was not in possession of the claimed subject matter as of the filing date, the claim is not patentable under 112, 1st. So what more “teeth” do you need than that?”

                And why don’t you tell us just how we’re supposed to “establish under a preponderance of the evidence” that the applicant was not in possession of the claimed subject matter as of the filing date when the “policy” (aka administrative say so that is supposedly justified from Fed. Circ. decisions) is to turn a blind eye to the whole shebang when it is a “programmed computer” that an imaginary person could program up?

                Mind explaining that? How does one establish that by a preponderance of the evidence when the administrators say “turn a blind eye because we said so”?

              9. Are you suggesting that examiners should be given the authority to reject claims because they have a “feeling” or some “hunch” that years later some technology may be developed that falls within the literal scope of the claims but was not actually described or possessed or contemplated or envisioned by the applicant?

                Good luck with that.

                Keep dreaming.

                I personally am suggesting that you apply this case. The claim was invalid at the time of filing, there just wasn’t proof of it until years later. Yet a) the Examiner has the ability at the time of filing to force more limitations to be added to claims with 112 rejections, b) the Examiner’s job is to protect the public, including possible future inventors and c) there is certainly supreme court precedent suggesting that one cant claim functionally or abstractly.

              10. The claim was invalid at the time of filing, there just wasn’t proof of it until years later.

                Do you mean that there was not proof, or that the proof was not found until years later?

                (be careful here, from the product of nature/warehouse of men/universe is not actually static law/fact angle)

              11. Do you mean that there was not proof, or that the proof was not found until years later?

                I mean there was logical proof, which I have cited to you several times in Supreme Court cases. The logic is simple: A claim to the functional result is a claim to every way of doing something. The most a specification can describe is every way known to the inventor. The inventor cannot prove that his knowledge is coextensive with all knowledge that ever will be in existence on the issue. Because there is no way to judge the coextensiveness, the applicant has not shown he is in possession of the scope.

                You’ll note that post-Halliburton, Congress fixed this logical chain by starting with the premise: 112, 6th is not a claim to “every way of doing something”, it’s limited to the particular structure described in the spec. The fact that Congress gave a particular path to avoid this chain of logic doesn’t change the fact that once one ignores that path and starts down the chain, the logic follows.

                The existence of a particular embodiment from another, such as in this case, does nothing more than provide concrete evidence for the logical proof that one could have done at the time of filing. So there was proof at the time of filing, with further evidence (which itself is proof) appearing later on.

              12. As noted to Ned elsewhere in this thread, Random Examiner, the use of functional language in claims is NOT limited to ONLY being used in 112(f). See In re Orthokinetics

                This point has been presented to you previously.

                Please take note.

            2. I’m perfectly comfortable with the idea that definite claims to apparatus

              That depends on if you’re defining “definite” to include particular description or not. Morse claimed any machine that performs the function of printing at a distance – that’s certainly definite. You can operate a device and determine if it prints at a distance. But it’s not a particular description of his machine.

              Nobody has a problem with valid claims being enforceable for the life of the patent. It’s clear though that there’s a problem with people attempting to invent one means but claim substantially more means than that.

              When Morse invents the telegraph, you give Morse the telegraph. When Morse invents the computer, you give Morse the computer. When Morse invents the telegraph, you don’t give him the computer just because the computer accomplishes the same result in a completely different manner. That is the opposite of promoting invention.

              1. You still do not get the ladders of abstraction, do you?

                Let me guess: your art field is one of those (rare) ones that eschews only picture claim drafting, right?

              2. Your point isn’t even worth arguing about – go ahead, try and reach a computer with description of a telegraph, let me know how it turns out for your abstraction.

              3. LOL – my point controls.

                If you “feel” that such is not worth arguing about, I will take your capitulation as a surrender, and that you simply do not have a point that would prevail against my superior position.

        2. I know that when I go over to a friend’s house and see his fancy new computer I just scoff and say “well I have a telegraph, so really we possess the same thing”

          1. You’d probably sound like an idi0t if you said that. But if you’re content with simply being a bore, it would be completely reasonable to tell your friend that certain aspects of Internet-based computing are descended from Morse’s invention of the telegraph. So what?

            1. certain aspects of Internet-based computing are descended from Morse’s invention of the telegraph

              If only written description allowed one to claim anything tangentially related to a descendant of what one has possession of, rather than what one has possession of.

              I think if you look at the standard for written description and read what you just wrote there, you’d see that there’s no way that Morse could have written a claim that would allow him to call the computer infringing.

      3. Except that is how patents are supposed to work. I invent and patent the wheel, you develop a better wheel and patent it (or a device that requires wheels in some way) to practice the latter invention you infringe the former. There are millions of long expired patents whose claims cover products being marketed. And many of the inventors would not recognize the products that hypothetically would infringe those patents (if terms were ridiculously long like copyright).

        1. “Except that is how patents are supposed to work.”

          That’s how a bunch of patent attorneys think they’re “supposed” to work.

          We keep running into the nonsense mindset from patent attorneys re 101 as well.

          Attorney: “But but but all patents preempt things and that’s how they’re supposed to work, HUR!”

          Attorney: “But but but all patents just describe what was invented and claim whatever the applicant feels like claiming no matter how far beyond what was invented the claims go and then anything that falls into the words they used infringes and that’s how they’re supposed to work!”

          Absolute nonsense. I blame the federal circuit for fostering this sort of thinking.

          1. 6, Attorney: “But but but all patents just describe what was invented and claim whatever the applicant feels like claiming no matter how far beyond what was invented the claims go and then anything that falls into the words they used infringes and that’s how they’re supposed to work!”

            Absolute nonsense. I blame the federal circuit for fostering this sort of thinking.

            Could not have said it better, 6.

          2. You are just describing incompetent claim construction in infringement proceedings.

            Which is rampant, I think we all know that.

            Also I think we are getting our wires crossed on two different situations:

            The first (yours) is a 112 issue. This is where you disclose a specific embodiment or species and claim a genus.

            The second (mine) is where an inventor invents a constituent part that is used in a fundamentally new way by a successor. Which is infringement, and does not raise 112 issues.

    2. J, “I disagree with the overarching “functional claims are vulnerable.” The way some functional language is treated is too harsh.”

      Functionally claiming old elements with well known structure is to be encouraged as the structure is well known.

      But the Federal Circuit does not seem have fully recognized the difference between known and new structure in their “diagnosis.” The difference was well understood at the time of Halliburton and was discussed in that case. But, of course, no one cites to Halliburton or its clarification, Faulkner v. Gibbs.

      So I fundamentally agree that some functionally express claim elements have been given too harsh a treatment. And, may I suggest, the source of the problem is one Randall Rader and his opinion in Valmont Industries Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 25 U.S.P.Q.2d 1451 (Fed. Cir. 1993).

      1. Ned,

        You continue to cite pre-1952 law.

        Even Frederico noted that the 1952 law changed this particular aspect.

        Need I again cite the very reference you brought to the table to shove your own errant views back down your intellectually dishonest throat?

        1. Find the post here where I cite to Halliburton Energy Services, Inc. v. MI LLC, 514 F.3d 1244 (Fed. Cir. 2008).

          What does it say about functional claiming?

          Do you still believe these Supreme Court cases are not good law?

          1. Now move the goalpost back Ned – in your post at 15.2, you reference the Faulkner case as clarifying the Halliburton case – and then you post a citation to a different Halliburton case.

            Oops. How does the Faulkner case clarify a case coming some several centuries later?

            Then re-read my post.

              1. anon, you have a keeping your excuses straight, which is typical of somebody running from the truth.

                He constantly say that Halliburton v. Walker has been abrogated, but when I cite you a 2008 Federal Circuit case that also cites to Wabash Appliance and United Carbon for the proposition that a claim functional at the point of novelty is indefinite, you refuse to address the question presented to you but instead point out that the 2000 a case also involves a company by the name of Halliburton, and you wish to divert attention accusing me of a mistake when it is you that has failed to address your errors.

              2. Ned,

                I am not the one needing – nor making – excuses.

                You on the other hand always seem to be doing so. What again – here you are making comments by email? You are not recognizing which strand of the conversation you are actually in?

                I love the fact that you look like a doofus trying to correct me and it is you making the errors that you are trying to correct me on.

                And then you get upset about it! That takes a special kind of arrogance. Or haven’t you noticed YET that my comments here were not to your latter day Halliburton cite, because that latter day cite is NOT in this comment string?

                What were you saying about errors, my friend? Perhaps you should figure out who exactly is making the errors before you launch into a self-righteous , self-absorbed (and self-FAIL) mode.

              3. You might want to do that so as to not be shown up by any “amateurs.” Heaven forbid, that “amateurs” make you look far worse than they.

          2. Your cite to the 2008 case is inapposite to “functional claiming.” “Fragile gel” was not a functional claim issue. It is a relative term/bounded definiteness issue.

            Once again, Ned, the problem is not with the case law, it is with your version of the case law.

            Tell me again, which of us is more like an “amateur?”

    3. J, as I observed elsewhere, the Supreme Court has been clear that one can only claim what one discloses, and can only cover that and equivalents. This idea is endorsed by Congress in 112(f), that construes functional claims to cover the corresponding structure and equivalents.

      A claim that finds structure irrelevant is a process, and it must comprise at least one act that produces a new or improved, physical result. While the Supreme Court has not yet enunciated that physicality as an absolute requirement, it suggested as much in Benson, and has found everything that does not produce a new or improved physical result abstract.

      The claiming of computer programs as apparatus configured to perform a process has corrupted claiming, such that we now claim new structure functionally as a matter of habit. But where the invention is the new structure and not a new process, we must claim that structure according to the present case, and not the results obtained by that structure or all structure that produces a particular result.

      It is remarkable what the court did here. Presented with a functional claim to a composition, rather than construe it to be a means plus function claim, it properly found the claim invalid. The court should learn from this case and apply it to every kind of claim, particularly combination claims. After all, 112(f) is optionally employed by the applicant. If they do not choose its protection, the claim must disclose the entire gamut of structure claimed.

      1. 112(f) is neither mandatory, nor is the only section that covers use of claims with terms using functional language. See In re Orthokinetics.

        The Ned CRP-Run Away-CRP again merry go round is in full motion.

        it suggested as much in Benson,

        What was that quote again? – “We do not so hold

  12. If:

    ” Of importance, the court is clear that functional claim limitations are patentable, but, in order to be patentable, they must be linkable to structure by PHOSITA.”

    Was there any evidence presented on what bonita Phosita would have understood here?

    1. Structural similarity? But, this question needs to be answered. If a PHOSITA can without invention take the functional specification and easily determine a molecule that is not structurally similar to the disclosed embodiments. That is the question that I think Laurie begs. If the answer is yes, then it shows the folly of switching out of the PHOSITA hat and into a judge hat to try and cripple the patent system. (I think the problem with dealing with people like Laurie is that he appears to have an malice in him. Integrity and the application of the law do not trump his desire to shape the patent system into his image.)

      1. “That is the question that I think Laurie begs.”

        Of course you do, because your bread and butter relies entirely on that “question”.

        “If the answer is yes, then it shows the folly of switching out of the PHOSITA hat and into a judge hat to try and cripple the patent system.”

        I personally don’t think that question is relevant but who knows what the answer is? Nobody ever bothers to present “evidence” along these lines because nobody alive knows jack squat about that aspect of imaginary men. All you ever hear is arguments.

        “I think the problem with dealing with people like Laurie is that he appears to have an malice in him. Integrity and the application of the law do not trump his desire to shape the patent system into his image.”

        Right because demanding a decent disclosure in return for a legal right to exclude is “malice”.

        1. 6, why do you always hound me on this board?

          It is, of course, a relevant question. You are supposed to get scope of enablement–not scope of judge made law based on what the judge wants.

          Simple. I would bet that we have just seen the first blow of the rein of terror of Laurie. Without Rader, Laurie is going to pull some wild stuff. We see that in this opinion where he substitutes his judgment for a PHOSITA and derives a new law that is counter to the established interpretation of claims.

          1. “You are supposed to get scope of enablement”

            Who told you that nonsense? That is only talking about the enablement req brosefus. You still can’t “get” that which you haven’t adequately described, or is not novel or is obvious etc. Here we’re talking WD req.

            “We see that in this opinion where he substitutes his judgment for a PHOSITA and derives a new law that is counter to the established interpretation of claims.”

            Nonsense, there was likely no evidence on the record for him to mull over as to what the imaginary man’s “judgement” would be. All they were determining was whether or not the jury done fed up.

            “And, 6, this is about what feels right, but about applying the law. ”

            WD is a factual inquiry brosefus.

            “Removing the PHOSITA is very wrong ”

            He hasn’t been removed. All we want to know from the imaginary man is what he would have understood directly from the application as filed. What all is ENABLED to him is entirely irrelevant to the SEPARATE question of WD. How many times must a court repeat itself regarding this simple simple concept before you’ll accept it?

            I’ll tell you why I hound you, especially on this issue. You, and some other ta rds like yourself, have managed to dream up a tomschemery wherein the enablement req is blended into the WD req (and thus the WD inquiry as a whole). WD is a matter of fact. Pure and simple. You guys constantly trying to inject “legal” aspects into this purely factual question leads to nonsensical results and allows for preposterous patenting. And you even persist after Ariad settled the question very cleanly. That is why I’m hounding you on this topic.

            The question is rather, why can’t you accept what the law is regarding the WD req and insist on keeping your old school blended view after your own vaunted courts have just spent several years clarifying the matter?

            1. “WD is a matter of fact. Pure and simple. You guys constantly trying to inject ‘legal’ aspects into this purely factual question leads to nonsensical results and allows for preposterous patenting.”

              WTF are you talking about? Who is trying to inject “legal aspects” into the question of WD, and what are these “legal aspects” they are trying to inject?

              1. “Who is trying to inject “legal aspects” into the question of WD, and what are these “legal aspects” they are trying to inject?”

                NWPA and many many other attorneys I run into. They’re trying to inject “enablement” into the factual issue of WD. Enablement of course being an issue of law.

              1. “6, I am not talking about WD”

                You responded to Les’s question on an aspect of WD. You mention Lourie’s reasoning supposedly begging a question where his reasoning was related to WD. So I presume(d) you’re at least somewhat responding to something regarding WD. If you’ve changed the whole topic of conversation then fine. Be a little more clear about that. It looked to me like you were just doing your standard “toss WD to the four winds and rely on enablement only to determine what you’re ‘supposed’ to get” or “hey let’s consider what is enabled to determine what they had WD for!”

          2. …I wonder what ever happened to his “facts and lawl” are all in the mind subjective anything goes mindset (you know, the mindset that he applies to any facts and law that happen to be inconvenient to his lemming march)

              1. Cite a case properly?

                An odd request in this position, as my comment to which you append this comment is dealing with the misanthrope 6 – who cited no case at all.

                Care to elaborate?

                (odd too, given that you yourself just butchered the Halliburton case cite… still throwing stones from the pile of your glass shards, eh?)

              2. “An odd request in this position, as my comment to which you append this comment is dealing with the misanthrope 6 – who cited no case at all.”

                What would you like a case cite for? I cite the instant case (or the slew that came before this case) for my proposal of extending the same criteria applied here to all cases in all arts.

                MM just got done modifying the wording of the instant bio decision for a potential factual finding in a software case for you. That is precisely how I would have the same facts found in a software case.

                And they’re rather simple facts to find. Let’s set the “cite” aside for a second and review the state of affairs “on the ground”.

                I’m going to go out on a limb here and suggest that the reason that juries aren’t finding those facts left and right are hilariously skewed jury instructions+lay juries+(maybe the req for c+c evidence).

                And examiners don’t find those facts due to administrative say so and a general dearth of evidence on the record (nobody goes out of their way). When examiners do gather a bit o evidence and attempt to find these sort of facts an extra-statutorily procured super examiner will generally say “awwww shucks but if we found that fact then we’d shut down all software patenting (or a big chunk of it) and the policy is to not do that so we can’t find that fact” or else they might recite the old school lawl (pre ariad) that as long as the subject matter is enabled then you’re all cool for WD and tell us that is “policy” also. The examiner might insist that our role is a fact finder, not a maker of the lawl (via policy or not) that requires us to find facts, and that Ariad already settled the later protest by clearly separating the WD req from enablement. The super examiner will then insist the examiners need a better case that hits this issue straight-forwardly on the nose in order to send this to the board. In other words, they’ll pass until they have C+C evidence (though only a preponderance should be reqd), their arm is sufficiently twisted by someone aggressively pursuing a rejection, and they have the perfect vehicle that lays the issue bare for all to see. Otherwise, they’ll just let someone else do it for them in the DC.

                The federal circuit on the other hand generally doesn’t want to act as a fact finder in the first instance anyway, and generally doesn’t have evidence in front of them to make this decision and overturn a jury’s findings as being clear error that no reasonable jury could find. They’re also generally not inclined to make factual findings that would kill an entire art field that they took time out of their busy generations to create out of whole legal cloth.

                And as for the patent bar, generally speaking, they don’t even know about the issue and/or doesn’t even bring this issue up for clients to consider (thus the clients remain in the dark and so cannot press for the gathering of evidence) and/or isn’t psyched about killing a whole art field off and thus limiting their own power/moneymaking ability.

                I don’t know how much more clear the situation could be made, or what additional “citations” you might like.

              3. “An odd request in this position, as my comment to which you append this comment is dealing with the misanthrope 6 – who cited no case at all.”

                What would you like a case cite for? I cite the instant case (or the slew that came before this case) for my proposal of extending the same criteria applied here to all cases in all arts.

                MM just got done modifying the wording of the instant bio decision for a potential factual finding in a software case for you. That is precisely how I would have the same facts found in a software case.

                And they’re rather simple facts to find. Let’s set the “cite” aside for a second and review the state of affairs “on the ground”.

                I’m going to go out on a limb here and suggest that the reason that juries aren’t finding those facts left and right are hilariously skewed jury instructions+lay juries+(maybe the req for c+c evidence).

                And examiners don’t find those facts due to administrative say so and a g e n e r a l dearth of evidence on the record (nobody goes out of their way). When examiners do gather a bit o evidence and attempt to find these sort of facts an extra-statutorily procured super examiner will g e n e r a l l y say “awwww shucks but if we found that fact then we’d shut down all software patenting (or a big chunk of it) and the policy is to not do that so we can’t find that fact” or else they might recite the old school lawl (pre ariad) that as long as the subject matter is enabled then you’re all cool for WD and tell us that is “policy” also. The examiner might insist that our role is a fact finder, not a maker of the lawl (via policy or not) that requires us to find facts, and that Ariad already settled the later protest by clearly separating the WD req from enablement. The super examiner will then insist the examiners need a better case that hits this issue straight-forwardly on the nose in order to send this to the board. In other words, they’ll pass until they have C+C evidence (though only a preponderance should be reqd), their arm is sufficiently twisted by someone aggressively pursuing a rejection, and they have the perfect vehicle that lays the issue bare for all to see. Otherwise, they’ll just let someone else do it for them in the DC.

                The federal circuit on the other hand g e n e r a l l y doesn’t want to act as a fact finder in the first instance anyway, and g e n e r a l l y doesn’t have evidence in front of them to make this decision and overturn a jury’s findings as being clear error that no reasonable jury could find. They’re also g e n e r a l l y not inclined to make factual findings that would kill an entire art field that they took time out of their busy g e n e r a t i o n s to create out of whole legal cloth.

                And as for the patent bar, g e n e r a l l y speaking, they don’t even know about the issue and/or doesn’t even bring this issue up for clients to consider (thus the clients remain in the dark and so cannot press for the gathering of evidence) and/or isn’t psyched about killing a whole art field off and thus limiting their own power/moneymaking ability.

                I don’t know how much more clear the situation could be made, or what additional “citations” you might like.

              4. not inclined to make factual findings that would kill an entire art field that they took time out of their busy g e n e r a t i o n s to create out of whole legal cloth.

                Sounds like you are trying to control the content of others and inject your fallacy as a fact there 6 – lovely AOOTWMD.

              5. “Sounds like you are trying to control the content of others and inject your fallacy as a fact there 6″

                Control what content of others re re? And what “fallacy” do you think I want to “inject” as “fact”?

              6. “not inclined to make factual findings that would kill an entire art field that they took time out of their busy g e n e r a t i o n s to create out of whole legal cloth”

                If you think the above is an attempt to control the content of others then you are a fcking re ta rd. Of course, if I ask you who you think it is an attempt to control you’ll of course demure, because you don’t know who that might be, and that of course is because there is nobody that would be the subject of this imaginary attempt to control. Likewise, if you think it is a “fallacy”, then you need to reread the cases where they did just exactly what I just said.

                Either way I’m not going to sit round and discuss this little sub-point with you in your little “I’m going to say something mysterious without explaining myself at all” manner. If you think I’m mistaken then simply say so re re. Maybe tell me why.

              7. LOL – the switch from passive to aggressive with “ then you are a fcking re ta rd. is not unexpected.

                Way too obvious 6 – you accuse others of actions you yourself engage in, and when busted, respond angrily with nothing bu ad hominem.

                Nothing ‘demure’ or ‘mysterious’ about it – you seek to control any and everyone who does not think as you think regarding the law and factual history: the “whole cloth” thing quite evidently carries that connotation.

                You speak as if your view is objectively factual, and that “of course” the courts “made this up completely,” when that is the mere conclusion of your view – and not the factual predicate that would lead to such a conclusion.

                Look at how angry you get when this little fallacy of yours is exposed.

                You may want to discuss this with your doctor.

              8. Either way I’m not going to sit round and discuss this

                Getting mad and running away – sounds like a symptom from your little Psych book that you posted just a little while back.

                You may want to make a note of this behavior of yours and discuss it as well with your doctor.

              9. “LOL – the switch from passive to aggressive with “ then you are a fcking re ta rd. is not unexpected.

                Way too obvious 6 – you accuse others of actions you yourself engage in, and when busted, respond angrily with nothing bu ad hominem.

                Nothing ‘demure’ or ‘mysterious’ about it – you seek to control any and everyone who does not think as you think regarding the law and factual history: the “whole cloth” thing quite evidently carries that connotation.

                You speak as if your view is objectively factual, and that “of course” the courts “made this up completely,” when that is the mere conclusion of your view – and not the factual predicate that would lead to such a conclusion.

                Look at how angry you get when this little fallacy of yours is exposed.

                You may want to discuss this with your doctor.”

                ^This is why you need a real therapist brosefus. And this also highlights how I’m not as good as a real therapist. I tell you something about control and you start going wild with it thinking everyone is doing it since I’m not presenting it to you in a way that is kindergarten level enough for you to grasp. Never mind of course that I’ve specifically told you that when I’m discussing you, and the topic of “control”, I’m talking about a very specific type of control. Inter-personal control. And you seem to always forget this, or you still don’t know what that is. Because let’s be clear, we’re all trying to “control” and “influence” those around us all the time. However, not all of us attempt to control people inter-personally. And there is a distinction there. It is clear that you as yet cannot see it but I guess that’s ok for now since you’re at least trying to think about stuff related to this. Problem is, you get all wild with it and don’t focus on the specifics. OCPD is a very specific problem brosef you’ve got to focus.

                Either way I’m certainly not mad that you’ve “exposed a fallacy” in so far as whatever you think you did “exposed a fallacy” or “exposed what anon regards as a fallacy”. And yes, I’ve “ad homined” you for your tar dation. I’m not a trained professional that is trained to put up with this nonsensical “you’re totally doing that which you say I’m doing so neyah, and better tell your doc about that, so neyah!” stuff you get back from the mentally ill when you try to help them. That’s why they’re trained professionals and I’m not. They get paid big dollars to put up with the same sht you’re doing now, and successfully pull you through it.

                And yes I’m annoyed at your continued inability to distinguish between inter-personal control and simply presenting your views and attempting to persuade others (even if that means “controlling” others on some level, say via persuasion). I get that you’re mentally ill and all, but it’s a pretty easy distinction to see.

                On a kindergarten level even let’s make an example. You should at least be able to distinguish between a. presenting your views solely as your views (not the god’s honest TRUTH) and attempting to persuade people of them or discuss them with others and b. Presenting your views as the TRUTH handed down from the lord god almighty and then demanding that others accept that view while perhaps threatening them with unending trolling forever. A is tots acceptable. B is what OCPD folks do and often leads to endless and unresolvable conflict. If you could stick with A then we wouldn’t be having this conversation.

                “You speak as if your view is objectively factual, and that “of course” the courts “made this up completely,” when that is the mere conclusion of your view – and not the factual predicate that would lead to such a conclusion”

                ^See you’re mistaken there. I’m “speaking as if “this is my view. Not that it is “objectively factual” or is “the TRUTH handed down from the almighty” or anything of that sort. You always think that others around you are like you. You think that others are talking as if what they say is “objectively true” all the time or “truth” or whatever. For god’s sakes man, stop thinking I or anyone else is doing this nonsense like you and other OCPDers aspire to do. Us normals simply present our views as our views. Not “objective facts” or whatever else, unless specifically stated. You get on here and tell us about “the truth” and what you regard as “objective facts”.

                This inability to determine how others around you are speaking (probably due to a tad of psychopathy peaking in here) is what leads to a lot of the dysfunctional behavior of yours I know. But I don’t know how to resolve that other than for you to simply stop thinking that you’re right how someone else is speaking everytime you judge how someone is speaking. And you can’t overcome that before you stop “truth owning”. But perhaps it might be a start if you wrote yourself a note on your monitor that says “when reading PO comments FIRST presume other commentators are presenting solely their views and not objective facts or truths”. Because guess wut? That’s what most commentators do here. Maybe that might help you in understanding what other people are saying.

                And look, I hope that helps, but you’re not entitled to me playing your therapist 24/7. I’ll say you’re a ta rd when I feel like it. Sure sure, I try to cut you a break since I know about your conditions. But you don’t automatically get a special pass just because you happen to actually be mentally ill. If you want to pay me then I’ll consider it I suppose.

                If you want to discuss this supposed “fallacy” then by all means tell us how your views differ. But don’t just sit there and be like “you’re wrong, you’re wrong, you’re wrong” (i.e. your view is a fallacy, your view is a fallacy, your view is a fallacy). I’m surely not “running away” if you want to actually discuss what your opinion on the matter is. You simply want to keep that a secrit and just tell us all how it is a “fallacy”. “Oh it r a fallacy!” Oooo that tells us all a whole lot and really spurs great discussion! Again, if you’re just going to be mysterious I’m not going to sit around and here how much of a fallacy it is (aka how “wrong” I am) from Mr. truth owning OCPD.

              10. You think that my ability to recognize your habit of projecting and that it is you that has serious psychological issues is a reason why I need a therapist…?

                That makes no sense 6.

                Full stop. Do not pass go.

              11. “You think that my ability to recognize your habit of projecting and that it is you that has serious psychological issues is a reason why I need a therapist…?”

                What you call your “ability” to “recognize” my “projecting” and that it is me that has “serious psychological”, though as yet unspecified, “issues” is a reason why you need a professional, rather than an amateur, therapist. Yes. Quite so. You need a professional that is trained to not respond negatively when you do that. I think they usually just let you act out a bit and work through your “reactance” and continue. I’m just an amateur brosef, I’m going to likely cuss you etc. They’re trained to deal with this “ability” of yours. And all the rest of your “abilities” or “super powers”, whatever you want to call them, that come along with your illness.

                Though tbh technically for me it is less your “ability to recognize” and more your “vocalization” of what you think you’ve recognized that annoys me or is an indication you need a professional. Though I’m sure it will annoy a professional as well, they’re trained to deal with that vocalization. In fact, they may even be able to use it because it gives an insight into why you are the way you are right now. That insight is that you’re thinking that other people are doing exactly what you do so you’re totally in the clear and are “normal” so you perceive no need to change your behavior. Since you’re almost certainly going to have to work through those thoughts and see the difference in behavior before you can get to the point of being well then such vocalizations could be helpful to the professional. To me they’re just fin annoying.

                Just get a professional brosef. They know w t f they’re doing. One hour ffs. There are plenty of perfectly nice ones. And if you find out you have something it isn’t the worst thing of the evar.

                And to be clear, for the millionth time, I’m not saying that I do not have serious psychological issues. He ck, a lot of people around me have actual diagnosed issues. It would not surprise me in the least if I have one. Though you’re going to need to be able to put a name to it before I’m going to jump on board.

                I’d even make you a deal, I’ll totally go to a therapist for a hour and tell them all about my “projection” (and whatever else you can make up until I depart) if you’ll go and describe for them your online activities, let them review your posts for the last month, and the assertions by others that you are likely a sociopath and have OCPD. Maybe tell them how “true” what you say always is, and how false what others say is. Maybe tell them how much truth you personally own the f out of. Maybe tell them what you threatened folks to do if they didn’t adopt (and maybe ‘integrate’) your views. And maybe tell them all the rest of the stuff too.

                He ck I bet MM might be willing to do the same. All for you brosef.

                Sound like a good deal or do you just ha te therapists?

                You don’t even have to tell us what the result is, just show a note that you went. You can even sit there and con the therapist for the whole hour like psychopaths like to do. That’s cool. It isn’t even a problem. Just show that you got your foot in the door.

              12. “I’m sure it has a name.

                Ask me if I care enough to research it for you.”

                I see. So then you’re just making it up for an lol, like pathological liars do.

                It’s alright brosef. We understand. You like to tell stories. It’s ok.

                Well, either way my offer stands. You set foot in the therapists office for an hour and let them in our topics of conversation of late on these subjects and I’ll totally go to one myself. And I’ll mention to them that someone thinks I have a mysterious “projection illness” and see what they can think of. I’ll let you know the results. You let me know. Both of us brings a note.

                Sound good?

              13. “I’m sure it has a name.

                Ask me if I care enough to research it for you.”

                I see. So then you’re just making it up for an lol, like pathological liars do.

                It’s alright brosef. We understand. You like to tell stories. It’s ok.

                Well, either way my offer stands.

                Sound good?

              14. Ok so then you’re just making it up.

                It’s alright brosef, I know you like to tell fantastical stories.

                My offer stands. I’ll see a “doc” about this mysterious “illness” and you see a therapist about psychopathy and OCPD. Deal? Just one hour!

        2. And, 6, this is about what feels right, but about applying the law. Removing the PHOSITA is very wrong and doing so when the 112 issue should not have been reached is very, very wrong.

          I think we see what to expect from Laurie.

  13. I’m interested in hearing from those readers who have experience of prosecution at the EPO and of what the EPO thinks is “added matter”. In the USA, what constitutes “added matter” is a different concept. However, EPC and USC law adverts to the same fundamental principle of patent law, yet uses different terminology. another example would be indefiniteness vs lack of clarity, or enablement vs sufficiency.

    For me, the EPO prohibition on adding matter fits with the US notion of “possession” of the claimed subject matter already when the application was filed at the PTO ie that there needs to be a “written description” in the appln as filed of what the inventor now for the first time claims.

    I have yet to read the new AbbVie Decision but would somebody like anyway to inform me: does it put more, or less, distance between the USC’s “written description” jurisprudence and the EPC’s “added matter” jurisprudence?

    1. I believe what the EPO thinks is “added matter” is absurd.

      I had an instance where we disclosed and claimed A, B C and D. No disclosed embodiment included E. They cited a document that they twisted words around to allege included A, B, C and D. However it also required E.

      We amended to claim A, B, C and D without E, as our arrangement of got the job done and did not require E.

      While none of our disclosed embodiments included E, the EPO and the appeal board maintained that explicitly stating –without E– “extended beyond the application as filed”.

      We pointed out that requiring applications to explicitly mention everything that was NOT needed in ones invention would make applications quite long. They did not care.

      Absurd.

      1. Les I loved your comment that including in an EP application everything that the invention does NOT include would result in an inordinately long text. I agree but I’m not surprised it cut no ice with the tribunal.

        But, in your case, it is not “everything” is it? It is the selection of “E” out of the set of “everything”. Given the prior art, you are telling the Office that your new and not obvious contribution to the art lies precisely in the Flash of Genius that, of all things, actually, an E is superfluous.

        One problem with your selection invention is, you failed to announce it in the application as filed. You omitted to include a written description of “devoid of E” in the appln as filed.

        Why not claim “consisting of ” ABCD? Too easy to design around? Hence (the next problem) your chosen “n – 1″ claim (everything under the sun except E). Everybody knows that an n – 1 claim stinks.

        I’m sorry you got refused but, fie on your patent lawyers. There must have been a more effective way to claim your deserving contribution to the art. Why not, for example, recite your new and non-obvious feature combination positively rather than negatively? Did you lack a written description of the positive combination that distinguishes from the prior art disclosures that comprise ABCD and so destroy the novelty of your claimed ABCD?

        1. Max -

          The invention was made independent of knowledge of the prior art. It never occurred to anyone to declare that E was not needed because it never occurred to anyone that anyone would make one that required E.

          I don’t think one should be required to know the entire prior art in order to be awarded a patent.

          What say you?

          1. What do I say?

            First, I say that it is irrelevant how much of the state of the art was known to the named Inventor. Why? Because patentability is judged objectively, relative to that artificial construct, the PHOSITA. Subjectively, the inventor contributed an invention that was novel over, say, a PhD thesis in the library of the University of Ulan Bator, written in Mongolian. But so what?Objectively, the claim lacks novelty. Sorry.

            Second. you report that it never occurred to anybody (despite what you told us earlier about Prior art ABCDE) that E was needed and it never occurred to anybody (not even you) that E was NOT needed. The name of the game is the claim. The closest art taught combinations including E. By your chosen claim, you announce to the PHOSITA (who knows about E) the contrary, that your invention is the insight that things go better if you leave E out. Now simplification is the hardest thing to do, and therefore the best invention but, sorry, for your chosen invention, you do need a written description. Why didn’t you write in your app as filed that your contribution was to teach the world positively to omit E? In future, Les, I suggest you claim subject matter for which you do have written description.

            1. In future, Les, I suggest you claim subject matter for which you do have written description.

              You quite miss the point MaxDrei, that the written description of leaving out an item is an endless task – and an unnecessary one for describing the items that you DO have. You are relying too heavily on your old-school bias of an incremental invention with a known best prior art item. You probably (and Les can correct me if I am misinterpreted) should take Les’s comment about the invention being made without looking at the prior art NOT in the way that you have (of course, to earn a patent, you must have novelty), but rather, in the way that the inventor may have been unaware of the prior art – and thus not aware that a different and extra-step type of thing was out there, and thus not NEEDING to spell out that “E” was omitted, since the inventor may not actually have invented by starting with the larger set and omitting “E.” The invention may have been an independent getting to the claimed item without ever approaching the prior art with “E” there.

              Your view of written description – showing your bias – is thus simply not correct.

              1. “Your view of written description – showing your bias – is thus simply not correct.”

                If only that were true. Alas, Max’s view aligns quite nicely with that of the EPO.

            2. Max -

              When I said “it never occurred to anybody” (despite what you told us earlier about Prior art ABCDE), I meant it never occurred to anyone associated with preparation of the application.

              That doesn’t mean the inventor didn’t have the invention. Remember, all the disclosed embodiments to not have E.

              I didn’t draft the application. I merely inherited the prosecution.

        2. Everybody knows that an n – 1 claim stinks.

          Reduction of components and achieving the same or better result hardly stinks.

          Yet another “gem” from our M0R0N from over the pond.

  14. Disturbing that the test is not scope of enablement, but scope of structural similarity. Moreover, note that for 102/103 purposes the test is scope of the claims, but for infringement it is only scope of structural similarity.

    Laurie is a judicial activist to say the least and without Rader to rein him in we are in for a quite a ride. We can only hope that his limited intellect will mitigate the harm he is causing the law.

    1. For client purposes, we should think of Laurie as Congress and him passing amendments to the 1952 Patent Act. He will be on a tear after the SCOTUS affirmed his Alice reasoning. Hold on. If you have ever listened to Laurie in oral arguments, you know he is virulently against patents. He is by and large ignorant of anything outside his chambers and borders on psychotic in his reasoning. (Rader: If you were still with us, Laurie would not be able to run rough shot over us.)

    2. Think about the consequences of this decision to patent applications and infringement analysis. Now, structural similarity will be the order of the day. Goodness, hold on for when this old Turk gets his hands on the electrical and computer arts.

      1. O’Malley is right. Laurie is a not a jurist, but a legislator. O’Malley has been one of the few bright spots at the Federal Circuit. She seems to have integrity and intelligence, and she works hard. If only Obama would appoint judges with those three attributes in his next appointments. Integrity appears to be a short suit at the Federal Circuit.

        1. “O’Malley has been one of the few bright spots at the Federal Circuit.”

          You must not have talked to her in awhile. Last I spoke to her she was owning up to their “some of their more something something” precedents having perhaps gone a little overboard.

    3. Moreover, note that for 102/103 purposes the test is scope of the claims, but for infringement it is only scope of structural similarity.

      Just the opposite, the court found that the defendant’s article was infringing because it determined it fell within the 102/103 scope. But 102/103 is not the only test for VALIDITY which was the issue in the case. In reviewing 112, 1st (the actual issue) the court considered the structural similarity to prove that applicant had not described the full scope of the structures he was seeking to claim. Defendant would have infringed had the claims been valid.

  15. As Dennis brings up in 1.1, the majority uses the fact that the infringing article falls within the scope, yet is substantially structurally different from the disclosed species. I have used such a tactic before and it makes a lot of sense, but it is largely irrelevant from the my point of view, since if you can name the other species you already have them under 102/103.

    What I find more interesting, and which I have personally gone back and forth on, is the question of who has the burden if one can posit a plausible solution that falls within the scope and is undescribed by the applicant.

    In other words, Patentee fails to describe infringer’s structure: Evidence that Patentee’s scope is overbroad. It stands to reason then that if an applicant fails to describe a plausible but unproven-to-exist structure within the scope, that is also evidence of overbreadth.

    I submit that the burden is on the applicant to prove there’s no “there” there – once the scope admits of a plausible species that the applicant clearly isn’t in possession of, the Applicant has the burden of showing that he fills his genus scope and does so by showing that the species is in fact impossible. But what manner of proof is acceptable – must the applicant point only to his original disclosure (lest anything else be windfall by new matter) or may the applicant cite more?

    One has to engage in the “what if” analysis, especially in fast moving arts like software, yet its entirely unclear what that means for the applicant.

    1. You see even the Random people on this blog have decided that there is no law. What you do is fabricate a reality in your head and then you make factual finding to support your psychotic reality. Then you just pretend there is no law and make up how things should be according to what you think.

      I am pretty sure that the 1952 Patent Act means that common law development of the law should stop.

      1. From the Cornell Law website, notes on 103:

        but the refusal of patents by the Patent Office, and the holding of patents invalid by the courts, on the ground of lack of invention or lack of patentable novelty has been followed since at least as early as 1850. This paragraph is added with the view that an explicit statement in the statute may have some stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be worked out.

        That “at a later time” is NOT to the courts, since Congress was explicitly taking its action to remove from that body the power of common law development (basic statutory construction – you don’t give a power back when you are removing that power).

        1. You keep quoting from 103, and you even acknowledge that it is regarding 103.

          What does that have to do with 112?

          “That “at a later time” is NOT to the courts”

          Interesting assertion, but I don’t think the courts see it that way.

      2. There’s only a handful of people who decide to ignore the law here NWPA and I am not one of them. You have routinely chosen to ignore the description requirement, instead saying the only thing that matters is if it is enabled. This case, like many before it, proves you wrong again.

        A patent applicant must show he is in possession of the full breadth of the scope. Another product within the scope and not described by the specification calls into question whether applicant has the entire scope. It only seems logical that a product that probably would be possible but hasn’t yet been demonstrated would do the same, because the applicant must show he is actually in possession of his full scope.

        1. RandomGuy, most patent attorneys seem confused on this topic. When they have a claim that broadly covers a result, they think that disclosing one embodiment that is covered by the claim is sufficient to show written description support.

          Generally speaking as well, patent attorneys like to cover all possible equivalents with their claims. The Supreme Court even seems to a problem even with claims like this in cases like Morse and Halliburton because proof of equivalents of the disclosed structure is the burden of the patent owner, and cannot the obviated by a functional claim.

          1. It is possible to cover most if not all possible (I wont use equivilents since that has a special meaning) means of achieving a result, but that is a) a herculean task and b) impossible to do with a few short sentences.

            The problem is not that attorneys are confused, they could easily cover their bases if they so wished. The problem is attorneys are lazy. That’s fine when you want a small scope, but you can’t be lazy and claim the moon.

        2. RandomGuy, most patent attorneys seem confused on this topic. When they have a claim that broadly covers a result, they think that disclosing one embodiment that is covered by the claim is sufficient to show written description support.

          Patent attorneys like to cover all possible equivalents with their claims. The Supreme Court even seems to a problem even with claims like this in cases like Morse and Halliburton because proof of equivalents of the disclosed structure is the burden of the patent owner, and cannot the obviated by a functional claim

        3. I am OK with the WD. I do have a problem with the Laurie bird substituting his judgment for a PHOSITA. At the core of the anti-patent movement judicial tools is to remove the PHOSITA.

    2. What I find more interesting, and which I have personally gone back and forth on, is the question of who has the burden if one can posit a plausible solution that falls within the scope and is undescribed by the applicant.

      Your previous weakness with the doctrine of equivalents has already been noted.

      1. It has nothing to do with equivalents. As I said in a comment still “awaiting moderation” – assume an applicant invents a new gas engine, and it provides the best mpg ever invented, and applicant makes a functional claim with respect to the mpg (i.e. gets over Xmpg for a given chassis).

        The existence of an electric engine which gets over Xmpg, existing at the time of filing, anticipates the claim under 102.

        The existence of an electric engine AFTER the filing of the claim (and even after issuance) most likely renders the claim invalid under 112, 1st because there is no evidence that applicant was in possession of the completely different structure and function of the electric engine, yet it falls within the breadth of the claim scope. This is not a DoE issue, because the electric engine is neither obvious nor performs in substantially the same manner as the gas engine.

        That much, whether people want to admit it or not, is legally clear.

        The interesting question is whether the claim can be rejected under 112, 1st because one posits AFTER the filing and during either prosecution or infringement, that an electric engine is a plausible thing. To me, the law is that once it becomes possible by a preponderance of the evidence that an electric engine that meets the scope can be made, it becomes incumbent on the applicant to rebut the prima facie case by either showing that the engine is not possible or that applicant possessed it at the time of filing.

        The question then becomes what type of proof suffices for rebuttal?

        Must it be what the applicant knew at the time that the engine was impossible (i.e. if the applicant thought at the time that an electric engine was possible, does that defeat his claim to the broader scope?). This has a basis in the fact that applicant must have posited his invention at the time of filing. Or can the applicant introduce later-existing evidence to show that electric engines are implausible? This has basis in the logic that the scope is the scope and either something is possible or it isn’t, that is not a time-dependent fact and thus there is no harm by allowing the post-filing data. The latter view has logical symmetry, the former has textual support.

        1. As I said in a comment still “awaiting moderation” – assume an applicant invents a new gas engine, and it provides the best mpg ever invented, and applicant makes a functional claim with respect to the mpg (i.e. gets over Xmpg for a given chassis).

          Yawn. If your “functional claim” does nothing more than recite an intended result, it’s indefinite out of the gate, since it doesn’t recite and limit structural features to accomplish the intended result. This is nothing new, and it doesn’t require fortune-telling or the invocation of the written description doctrine.

          1. Is an engine not structure? Are there not at least some common features between a gas and electric engine that would render the claim applicable to both, even though they later wildly diverge?

            1. An engine might be structure, but a claim to “an engine configured to get at least X mpg” is invalid out of the gate because the “configured to” clause doesn’t put any definite limitations on any structural feature of any engine. You can’t simply claim an intended outcome – there have to be structural features that are limited in some definite way to achieve that outcome. MPEP 2173.05 has this all correct.

              To be honest, I don’t even know what we’re arguing about. You seem to be concerned about claims of a type that should never be allowed. I suggest that you simply reject them, and point to MPEP 2173.05(g) when you do so. But I also suggest that you read all of that section before you do so. Because I’ve not yet seen one of those In re Swinehart, “an apparatus is defined by what it is, not what it does” rejections that could survive even past a pre-appeal review.

              1. But I also suggest that you read all of that section before you do so.

                LOL – sage advice (seeing as I slammed him with his own reference not once but twice today).

                I wonder if he will next whine about lawyers knowing the law better than examiners (his snippet and headline cite mannerisms showing the ‘examiner’ approach to (mis)understanding the law)…

              2. is invalid out of the gate because the “configured to” clause doesn’t put any definite limitations on any structural feature of any engine.

                Ah, now here’s an anti-software person.

                Show me a claim that does not claim software functionally by using hardware configured to, or some equivilent thereof, do what its code says.

                You seem to be concerned about claims of a type that should never be allowed. I suggest that you simply reject them, and point to MPEP 2173.05(g) when you do so….I’ve not yet seen one of those In re Swinehart, “an apparatus is defined by what it is, not what it does” rejections that could survive even past a pre-appeal review.

                So you want me to make a rejection that will do nothing but result in a second non final?

                To be honest, I don’t even know what we’re arguing about.

                Read this case. Note how it uses a post-filing invention by another in a 112, 1st rejection. Then note that rejection was as equally valid during prosection.

                Takeaway #1: WD scope rejections, unlike 103, is not limited to “prior art” but simply “art”. Agree? If not, why not?

                Takeaway #2: WD scope rejections are simply limited to “art”, and a rejection is proper if it reaches a preponderance. Then you ask: must there be actual “art” at all, or must there only be the preponderance that “art” is possible? Agree or why not?

                Takeaway #3: If #2 is correct, what evidence may applicant submit to rebut your prima facie WD rejection? This is my question.

        2. “The existence of an electric engine which gets over Xmpg, existing at the time of filing, anticipates the claim under 102.”

          An electric engine that gets X miles per gallon? Gallon of what?

          Your Office Actions must be a hoot to read.

          1. In the interest of helping out: Random is obviously referring to so-called “hybrids”, or “HEV’s”. More specifically, gasoline-electric or diesel-electric hybrid vehicles, wherein the electricity that powers the electrical motor(s) is produced by an internal combustion engine that runs on conventional automotive fuel, commonly measured in gallons.

            So, in answer to your question, “Gallon of what?”: Gasoline or diesel, typically.

        3. RandomGuy, DanH is right about being indefinite. But now, since the Supreme Court has changed that law, the problem is really written description because the scope of a functional claim is reasonably certain.

          Your example about the car is very similar to the Selden patent fiasco. Selden invented a particular gasoline engine for a car. Then he claimed, in a combination claim, all the standard features of every car, with the novel element comprising a gasoline engine (paraphrasing). The claim literally covered every gasoline engine made, yet he had only invented one engine.

          Rather than hold the patent invalid, the 2nd Circuit limited the claim by construction to the particular engine.

          The Selden patent is one example of a functional claim that nominally claims structure, but using terms that are functional.

          But, the claim at bar in the present case only seems to claim results, and is far, far worse than the Selden patent case. It is remarkable that decent folk like Hal Wegner would complain.

          1. It is remarkable that decent folk like Hal Wegner would complain.

            (sigh) – yet another sign of the (in)famous “6 is a genius because he agrees with me” syndrome.

          2. But now, since the Supreme Court has changed that law

            Changed….?

            As in re-written….?

            (careful with your answer Ned – as you sometimes purport to have respect for the separation of powers doctrine and all)

          3. But now, since the Supreme Court has changed that law,

            I don’t recall them writing written description. In fact, I don’t recall the Supreme Court coming up with WD as being separate from enablement either.

            Rather than hold the patent invalid, the 2nd Circuit limited the claim by construction to the particular engine.

            Well they certainly have no power to do that, unless you mean they construed it as being in means plus, which would have that effect. For my purposes, unless the applicant uses the phrase “means for” I find that any argument by me that it is in means-plus will be met with the strongest rebuke.

            Is not the only response then to reject in WD?

            1. No power? Check Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 18 S. Ct. 707, 42 L. Ed. 1136 (1898). link to scholar.google.com

              There, in connection with claim 2, you will find the language that is now the construction clause of 112(f).

              What Rich was trying to do with 112(f) was to impose the rule of construction used since Westinghouse for functional claims on all functionally defined elements — or at least, those that used the MPF form. See, fn. 11, of Application of Fuetterer, 319 F.2d 259 (C.C.P.A. 1963). link to scholar.google.com

              1. Um, Ned, Footnote 11 does not say what you think it says.

                In pertinent part:

                This provision in reality will give statutory sanction to combination claiming as it was understood before the Halliburton decision. All the elements of a combination now will be able to be claimed in terms of what they do as well as in terms of what they are.”

                In other words, Halliburton is abrogated.

                And specifically all elements of a combination claim can be claimed in terms of what they do.

                That you are confused and somehow seek to constrain the use of functional terms to ONLY the 112(f) situation of a claim with ALL elements in terms if “what they do” and IGNORE the fact that claim elements with functional terms are allowed OUTSIDE OF 112(f) is downright peculiar.

              2. anon, your problem is that you do not know what the practice was before Halliburton. Take a look at the claim in Halliburton. All elements were in terms of means plus function. Take a look at a random sample of claims in that era. Every claim element was in terms of means plus function. Take a look at cases from that era. They applied Westinghouse to construe means plus function terms.

                Do you happen to know what the Westinghouse rule of construction was?

                Do you actually believe that 112(f) was intended to apply to a functional claim element where the means plus function was not employed given that the language of the statute does not state that functional claim elements shall be construed in a manner provided by the statute. It says that means plus function may be optionally used, and if so, you get the construction. It would frustrate the statutory language entirely if the optional choice were not optional.

              3. Do you actually believe that 112(f) was intended to apply to

                Your myopia continues and you seem unable (or unwilling) to grasp the larger picture that claim terms – written in functional language – exist – and are sanctioned to exist – OUTSIDE OF the confines of 112(f).

    3. Filling the genus scope has never been a matter of “filling the scope completely”

      You seem to not understand this.

      At all.

    4. If it falls within the scope, then it was described and contemplated and the inventor had it. That’s why the scope was expressed broadly.

      In any event, if it falls within the scope of the claim, it is clearly at least “an equivalent thereof”.

      1. If it falls within the scope, then it was described and contemplated and the inventor had it. That’s why the scope was expressed broadly.

        Hardly. To give the most famous example, Morse was in possession of one manner of printing at a distance. Morse claimed the functionality of printing at a distance.

        Another machine that prints at a distance: A modern day computer that is connected to the internet.

        Was Morse in possession of a modern day computer that is connected to the internet?

        To use the court’s example: I occupy space and am a person in America. I can describe the boundaries of America. But I do not have knowledge of, nor is it obvious, that I know every piece of land within America nor every American.

        One drop of water in the ocean suffices for anticipation, one point does not suffice for description.

        In any event, if it falls within the scope of the claim, it is clearly at least “an equivalent thereof”.

        It should be clear that the modern day computer is not an equivalent of the telegraph. Moreover, equivalence requires it occur in “substantially the same manner” which on it’s face is directed to the MEANS while the only thing that necessarily falls within the scope is the ENDS.

        1. “Was Morse in possession of a modern day computer that is connected to the internet?”

          Morse was in possession of the technology that allows a modern day computer to print at a distance, yes.

          Ethernet stands on Morse’s shoulders. You wanna sell Ethernet within 17 years of Morse, you owe him a royalty, yes.

          Does Ethernet add to Morse, sure. Is the addition patentable, sure. But it reads on Morse, so send him a coupla bucks.

          1. Morse was in possession of the technology that allows a modern day computer to print at a distance, yes.

            haha, oh really? I think what you really mean is that Morse was in possession of one means of achieving a functional result, and the modern day computer is in possession of a completely different means. But that’s like saying a candle and a lightbulb both provide light so there’s no real distinction between them, except when there’s, you know, wind.

            Ethernet stands on Morse’s shoulders. You wanna sell Ethernet within 17 years of Morse, you owe him a royalty, yes.

            No, ethernet stands on the same principle that Morse stands upon. Morse is not entitled to the principle, he’s entitled to his structure. If your computer had a telegraph in there, well then we’d have a different story. The fact that your computer and the telegraph both exploit the concept of electrical currents matters not one bit.

            Does Ethernet add to Morse, sure. Is the addition patentable, sure. But it reads on Morse, so send him a coupla bucks.

            What does “reads on Morse” mean? Does it read on his claims? Sure. But that’s begging the question. The question is if one read’s Morse’s specification, would one believe that Morse was in possession not of the telegraph’s way of printing at a distance, but of the internet’s. That’s how you know whether his claim is a valid claim. Then you can ask whether the computer reads on Morse’s valid claims.

            There are cases where it might be a close question as to whether something is its own invention or whether it is merely just an obvious improvement of a previous one (where DoE or claim scope might allow the previous patentee to capture it). This is not one of those cases. It’s miles to being in the ballpark of being one of those close cases. There’s not a single rational person that would look at the structure of the telegraph and the structure of the internet and think that the person who had the former must have known of the latter.

            1. RandomGuy, I don’t know whether these folks are serious or not, but what they are saying is certainly strange.

              The bottom line is this: the scope of one’s patent is commensurate with the scope of one’s disclosure. That scope can never extend beyond the equivalents of the disclosure. If it does, one has a written description problem.

              1. …and Ned strikes one back at the Random Examiner (doctrine of equivalents).

                Hmm, I recall someone else pointing out Random Examiner’s flaw in this area. Why, that was me :-)

              2. “The bottom line is this: the scope of one’s patent is commensurate with the scope of one’s disclosure. ”

                Ned, the requirement is that one disclose the preferred embodiment, NOT EVERY embodiment.

            2. Les, there is little doubt that one should receive a broad range of equivalents to the point that anything that can perform the function claimed should be covered when claiming old elements in a combination. But if one is claiming new structure, one has to actually describe that new structure in the claim and cannot simply claim all structure that accomplishes the results one achieves when one uses that new structure.

              I hope you can see the distinction here.

        2. “It should be clear that the modern day computer is not an equivalent of the telegraph. Moreover, equivalence requires it occur in “substantially the same manner”

          Yeah, signals on wires. Substantially the same.

          1. haha, if you think “signals on wires” constitutes “substantially the same manner” you need to read some DoE cases.

  16. Hm, the real problem here is the obvious one: claim number 29 (there are 74 total in this one).

    I understand the desire to get as much as you can for your client, but reality dictates that you need to clean that up a bit. First it means you probably don’t know what your client invented, and second you are not going to get competent examination of that many claims. That is just the unfortunate reality of the quota system there, and it is kind of the responsibility of a practitioner to know that.

    1. you are not going to get competent examination of that many claims

      B$

      Sorry, but that is a lousy rationale for deciding on claim set size.

      A better one is that you draft the claim set size to match the invention. If the invention is one where 50 claims are required, you go with fifty claims (after discussing with client and obtaining informed consent, of course). If your invention dictates that you go with five claims, that then is what you go with (same caveat).

  17. Lourie has been at the forefront of pushing 112, written description to where it was in the 60′s and early 70′s, See, Ruschig, and he is correct in doing so. He started with Regents/Calif. in 1997, dissented in Unocal, Rochester, Carnegie-Mellon ? For the mechanical folks, see Century Gallery. Moore is right behind him on this stand.

    Its based in a policy that you can claim only what you invent. Pretty simple. I agree with Dennis’s statement below.

    In Ariad, the Federal Circuit confirmed that the written description requirement is separate and distinct from that of enablement and that it serves an important role of ensuring that the patent is based upon an actual describable invention and that the patent scope does not overreach beyond the scope of the inventor’s contribution.

    The one disappointment with the opinion is the reference to the allegedly infringing product having some structural similarity to what is disclosed. That is a very bad path to follow, and makes very bad law. Whether a claim is invalid has absolutely nothing to do with a defendant’s allegedly infringing product. There was no need to go there.

    This opinion takes Rochester to a new level!!

    1. “ensuring that the patent is based upon an actual describable invention and that the patent scope does not overreach beyond the scope of the inventor’s contribution.”

      And what if the only “contribution” the “inventor” made was to dream up a new function he’d really like to have?

      1. That’s Rochester. You have to admit Abbott did something a lot more than Rochester. You have to believe that the U.S. patent system is designed “to promote”, science and technology, and not hinder it’s further development.

        That’s what 112, P1 is all about, Charlie Brown.

    2. “The one disappointment with the opinion is the reference to the allegedly infringing product having some structural similarity to what is disclosed. That is a very bad path to follow, and makes very bad law. ”

      Yeah that is kind of preposterous.

      If they had said “hey you know what? They didn’t even describe anything remotely close to what these other guys are doing, and such is an indication that they did not in fact have a handle on the whole genus” then I could live with it but they’re sort of saying something slightly different it appears.

    3. Whether a claim is invalid has absolutely nothing to do with a defendant’s allegedly infringing product.

      I disagree.

      Let’s take a stark example here: Applicant invents a new internal combustion engine that is gas-based. He then functionally claims “a car engine capable of getting over 50mpg when placed inside chassis X”. That claim issues.

      Alleged infringer comes along with an electrical engine. It infringes the genus claim (it falls within the category of engines capable of getting 50mpg), but is completely structurally different from anything described in patentee’s claim. Yet had patentee properly described his invention with particularlity (which are requirements for having the patent) there is no way the gas patent would read on the electric engine.

      Looking now at infringer’s engine, it has become clear that patentee never filled the scope which may have originally appeared (based upon knowledge at the time) to have been filled. The mere existence of the infringing product is proof the original scope was too broad.

      The principle is actually easy to lay out from a general standpoint: If the infringing device would have been non-obvious to one of ordinary skill given knowledge of the prior patent, it must not be infringing. The conclusion is: If the patent system worked perfectly, there would never be a situation where one could infringe some other patent by practicing one’s own.

      1. “Alleged infringer comes along with an electrical engine. It infringes the genus claim (it falls within the category of engines capable of getting 50mpg)…”

        How does an electric engine infringe a claim to an engine that gets 5o mpg?

        I’ve dealt with examiners like you before. The type that like to read a claim and then worry and fret about how “broad” it is and then invent all types of fantastical hypothetical scenarios about what might infringe it if it were granted. Completely irrelevant to the determination of patentability. And so annoying.

        “The conclusion is: If the patent system worked perfectly, there would never be a situation where one could infringe some other patent by practicing one’s own.”

        Wow. That’s probably the single silliest and most delusional thing any examiner has ever posted here. And that’s saying a lot given 6′s years long residency here.

        A patent that covers an apparatus comprising A, B, C, and D can certainly issue over a patent to an apparatus comprising A, B, and C. Just because the patentee of A, B, C, and D can’t “practice” his/her own patent without infringing the patent on A, B, and C doesn’t mean the patent system isn’t working “perfectly.” It means it’s working pretty much as intended.

        You must be a real prize to deal with. My sympathy to all the applicants who find themselves in the unfortunate position of landing on your docket.

        1. A patent that covers an apparatus comprising A, B, C, and D can certainly issue over a patent to an apparatus comprising A, B, and C. Just because the patentee of A, B, C, and D can’t “practice” his/her own patent without infringing the patent on A, B, and C doesn’t mean the patent system isn’t working “perfectly.” It means it’s working pretty much as intended.

          Bingo – the explicit words of Congress reflect this – and also reflect that the notion of imposing a “working requirement” in the US is just plain ludicrous.

        2. Don’t we all love strawmen?

          AAA JJ: A patent that covers an apparatus comprising A, B, C, and D can certainly issue over a patent to an apparatus comprising A, B, and C. Just because the patentee of A, B, C, and D can’t “practice” his/her own patent without infringing the patent on A, B, and C doesn’t mean the patent system isn’t working “perfectly.” It means it’s working pretty much as intended.

          What we are talking about is A, B, and C where C is the sole novelty and where C functional. Such covers all forms of C in combination with A and B.

          From Halliburton Energy Services, Inc. v. MI LLC, 514 F.3d 1244 (Fed. Cir. 2008).

          “Supreme Court in two early cases identified the dangers of using only functional claim limitations to distinguish the claimed invention from the prior art. In General Electric, the Court held that a vice of functional claiming occurs. “when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.” General Electric, 304 U.S. at 371, 58 S.Ct. 899 (holding claims invalid where the grains of the claimed lighting filament were distinguished from the prior art only because they were “of such size and contour as to prevent substantial sagging and offsetting” of the filament during the commercially useful life of the lamp). Likewise, in United Carbon, the Court held indefinite claims that recited only “inaccurate suggestions of the functions of the product.” United Carbon, 317 U.S. at 234, 63 S.Ct. 165 (holding indefinite, patent claims that recited, for example, “sustantially (sic) pure carbon black in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior”).”

          1. (sigh)

            The zombie return of “Point of Novelty,” (and once again Ned ignores the words of the Court with the Diehrism that the claim as a whole is what novelty is measured against.

          2. “What we are talking about is A, B, and C where C is the sole novelty and where C functional. Such covers all forms of C in combination with A and B.”

            That wasn’t what RandomExaminer and I were talking about, Ned. But nice strawman.

        3. I’ve dealt with examiners like you before. The type that like to read a claim and then worry and fret about how “broad” it is and then invent all types of fantastical hypothetical scenarios about what might infringe it if it were granted. Completely irrelevant to the determination of patentability. And so annoying.

          This case seems to completely prove you wrong. It’s clearly within 112.

          A patent that covers an apparatus comprising A, B, C, and D can certainly issue over a patent to an apparatus comprising A, B, and C. Just because the patentee of A, B, C, and D can’t “practice” his/her own patent without infringing the patent on A, B, and C doesn’t mean the patent system isn’t working “perfectly.” It means it’s working pretty much as intended.

          Yes, my problem was using the word “never”, I miswrote and you’re right. Obviously if someone invents a widget and you use a widget in something, you can’t practice. What I meant to say, using the court’s land example, is that patent property would function just like real property – if the system was perfect the broadest scope one could obtain would be a scope nobody else could reach, i.e. each piece of land would have only one possible owner.

          1. I miswrote and you’re right

            Happens.

            A lot.

            For instance in the immediate post, you totally forgot about the concept of improvement patents.

        4. May I say, AAA JJ, that I agree with RandomGuy on most things. Moreover, I find your “attitude” towards him as an examiner both repulsive and bullying.

          No wonder you do not post under your real name. There would be severe consequences for all your clients if you did.

          1. “attitude…..”

            Bite me Ned – your attitude of indignant righteousness coupled with an absolute refusal to accept points that “transgress” your desired aims is what is truly repulsive.

            That you then seek to hide in the “anonymity/pseudonymity” fallacy is beyond repulsive.

            Treat the content – stop focusing on the “who.”

            1. Treat the content – stop focusing on the “who.”

              From the man who calls me Random Examiner.

              But while we’re at it:

              your attitude of indignant righteousness coupled with an absolute refusal to accept points

              Some of us are empowered by Congress to make judgments by dismissing arguments as wanting. You are not one of those people.

              1. LOL- and neither are you – you as an examiner do not get to make up the law, but merely are charged with following the law.

                Is this where you break out your usual whine about how unfair it is that examiners are not trained in the law and are at a disadvantage because lawyers trained in the law use the law during prosecution?

                And my labeling of you as examiner in no way touches the point I made about extraneous information backing up a post with non-evident (hence the authority-fallacy) worth. You rather badly miss the point there.

                That’s not all that shocking though.

            2. “indignant righteousness”

              I see you read the article I posted about OCPD the other day and it has got you to thinking. I’m glad :)

              However you will note that Ned is not stating that he is morally right or justifiable in this instance. Nor do I see him particularly implying such. He is simply stating the opposite about AAA JJ, and doing so in an indignant manner.

              I know, I know, it is tough to grasp just what “righteousness” actually is.

              1. Nor do I see him particularly implying such.

                LOL – what you “see” has already been noted as sub-par.

                To then go ahead and base further, um, “reasoning” (an extremely [magnanimous] label) on a known sub-par foundation is reckless.

            3. “May I say, AAA JJ,”

              “Bite me Ned ”

              Anon = AAA JJ? Who’d have guessed it?

              Actually I guessed that it might be the case awhile back. Anon’s proclivity for sockpuppetry being well documented and all it just stands to reason.

              And then below we see AAA JJ using the tired old:

              “BTW, loved the (non)answers to my questions.”

              That anon <3's so much.

          2. Not sure what “attitude” you’re referring to.

            But you don’t seem to have any problem with RandomExaminer posting, at 11.1.2.1.1 that “The problem is attorneys are lazy.”

            You’re okay with that I guess. You’re also okay with RandomExaminer not posting under his real name I guess.

            You’re a f#cking hypocrite, Ned. So f#ck you.

            “No wonder you do not post under your real name. There would be severe consequences for all your clients if you did.”

            Really? Why is that? And what would those consequences be?

            1. AAA JJ, When you treat people like you treat people they tend to respond in some fashion. Just a note in case you don’t understand.

              1. This is a blog, Ned. Not a patent application. I’m well aware of the requirements of Rule 3. My clients are well served by the responses I file in every case I’m handling. That’s why they continue to ask me to handle their matters.

                But if they ever need anybody to roll over and play dead for the examiner, I’ll be sure to give them your contact info.

                Your whining about anonymity is hypocritical given that you have no issues with the examiners (e.g. Mooney, RandomExaminer, 6) who post here anonymously. And the irrelevance of anonymity to the actual content of the post has been demonstrated here time and time again. Your insistence on dragging it up yet again just proves that you’re just full of sh!t.

                BTW, loved the (non)answers to my questions.

            2. And we have AAA JJ using the same ol’ cite to a “11.1.2.1.1.1.1.1.12.123.14.235.235.25″ post and then leveling an accusation of hypocrisy in standard anon fashion.

              Anon and AAA JJ. Two personalities, same person.

              1. It’s not really that hard to believe that two or more people would point out Ned’s blatant hypocrisy. Unless you’re an examinertard I guess.

              2. “It’s not really that hard to believe that two or more people would point out Ned’s blatant hypocrisy.”

                Of course it isn’t. But to use the same mannerisms and all that along with it, as well as responding to Ned as “anon” when Ned was explicitly talking to aaa jj? Pshaw. You simply forgot to change your moniker before responding.

                I mean, you know, it could be that you’re just having an “aaa jj wants to copy ta rd anon day”.

                But I say ya done screwed this pooch brosef. I like how you snuck in the “this is a blog” bit that you’ve had MM repeating to you for the last few years. Guess it finally stuck. And, you know, you share the same nonsensical tagging of MM as “an examiner” when he has already plainly been IDed as a specific irl attorney in bio. Then you get into the “irrelevance of anonymity to the “actual content”” and how this has been “demonstrated” “time and again” and all that hoo haa. Irrelevant! Demonstrations! It’s what it’s all about! amirite? Demonstrations I say!

                lol. Same ol anon.

                It’s ok, I’d noticed several similarities already, I just figured they were coincidental. I was however intrigued by the number of times good ol AAA JJ got on my for being “wrong” though. It was almost as if he shared a certain quality with someone else. Almost as if he owned some of the truth.

                Maybe we should just ask D? Lol. We already know what he’d say.

              3. For the record 6, I have never posted as AAA JJ and we are in fact two distinct individuals.

                Just goes to show how faulty your “analysis” continue to be.

                No real surprise there.

              4. And 6 – you being wrong is so very often an objective fact. If you want to call it truth, go ahead. But whatever you want to call it, the status of “it” is in fact a fact – no matter who points it out.

                I know that goes against the grain of your politically correct “everyone’s a winner so we don’t keep score when we play baseball” upbringing, but you should know by now that the real world just does not operate like that.

              5. “For the record 6, I have never posted as AAA JJ and we are in fact two distinct individuals.

                Just goes to show how faulty your “analysis” continue to be.

                No real surprise there.”

                Sure sure. I’ll belieb it when D tells me Mr. Pseudologia fantastica. Look, you like to make up stories about yourself. It’s ok brosef. That’s tots fine. That’s the least of the sociopathic stuff you do tbh.

                “And 6 – you being wrong is so very often an objective fact. If you want to call it truth, go ahead. But whatever you want to call it, the status of “it” is in fact a fact – no matter who points it out.”

                OK Mr. OCPD np.

                “I know that goes against the grain of your politically correct “everyone’s a winner so we don’t keep score when we play baseball” upbringing, but you should know by now that the real world just does not operate like that.”

                Nah the “real world” operates in shades of gray, even you yourself just said that the other day! But anon, apart from “the real world”, deals exclusively with “objective facts” and “truth”. Because he has OCPD. And that’s ok but it is a for srs condition.

              6. Nice passive side 6 – sounding in agreement and all, coupled with the aggressive med-control line still.

                You do know that your continued attempts only show you to be the f001, right?

              7. “Nice passive side 6 – sounding in agreement and all, coupled with the aggressive med-control line still.”

                Well w t f do you want me to say to a man with OCPD? Tell him “awwww, it’ll be ok” or “yo ta rd, you ta rded”? Or should I just sit and say “neyah, no I’m not wrong, YOU’RE wrong!”? I mean, the later pretty blatantly plays into his stup id as fck ability (super power) to start some sht. That’s the kind of conflict the OCPDer usually starts with his initial right/wronging behavior. Or maybe you think I should just ignore you?

                I don’t fcking know what to say to help you more, I’m not a trained professional therapist!

                This is why you need a professional. Je sus fcking chr ist sakes.

                But go ahead! Make a suggestion as to what is proper to say to a man with OCPD! Be my fcking guest!

                “You do know that your continued attempts only show you to be the f001, right?”

                Idk about that, you show signs of improvement sometimes. If not for your recent “reactance” we’d still be making good progress. But I’m not a trained professional so I didn’t see that coming.

                Again, this is just one more thing a professional would know that I don’t. Just how do you avoid that reactance when trying to help a person with OCPD? Once they figure out that their free will to behave as an arse is being taken away and their behavior controlled so that they no longer right/wrong and own them up some truth etc how do you avoid the reactance that then follows? I don’t know! This is for professionals!

      2. “It infringes the genus claim (it falls within the category of engines capable of getting 50mpg), ”

        No it doesn’t. There are no “g”. Unless you are measuring the g going through the power plant at Niagara, in which case it takes way more that 50g to provide enough energy to go 1 mile.

        1. lol – when Random Examiner wanted a stark example, he got one (but pretty sure that he wanted it for something other than a stark example of his own ineptitude)

        2. Hybrids, amigo.

          H.E.V. Hybrid Electric Vehicle. Internal combustion engine produces electricity for electrical motors. Been on the market for years. Fuel efficiently measured in “miles per gallon” of fuel consumed by the I.C.E..

  18. From my words to the federal circuit after only a year and a half. Well played boys. Well played.

    the written description doctrine has been applied to invalidate patent claims that do not disclose a sufficient representative sample of embodiments

    Donde esta anon and NWPA?

    Functionally defined genus claims can be inherently vulnerable to invalidity challenge for lack of written description support, especially in technology fields that are highly unpredictable, where it is difficult to establish a correlation between structure and function for the whole genus or to predict what would be covered by the functionally claimed genus.

    It’s okay, you can just say Wabash and Halliburton.

    1. Just to be clear here, it is the viewpoint of the Supreme Court, when last they spoke, that in fact functional claims are de facto invalid but for a particularly carved out set.

      Over the past 50 years the refrain that functional language is not inherently improper (a true statement) has allowed the confused to find the exception swallowing the rule.

      When the Applicant asserts his structure is novel, 112 6th is the only means by which it can be functionally described, and that requires tying it to a structure anyway. There are no valid means by which one can claim novel functionality qua function.

    2. The fact that you do not recognize key limitations present and wish to “crow” about your “victory” only cements the fact that you do not know what you are talking about.

      The nuances are surely lost on you.

      Remember: Person Having Skill In The Art To Which The Invention Pertains

      1. “Remember: Person Having Skill In The Art To Which The Invention Pertains”

        Remember: Imaginary man makes all the claims ok!

      2. Your point is true but irrelevant, our discussion has always been you putting forth the notion that ladders of abstraction allowed you to describe the invention in any manner you see fit, allowing you to reach any scope of claim you wish.

        Not only does the supreme’s 101 jurisprudence lower the ceiling on your ladder, but this case (which says no more than what I have been saying) cuts the bottom out from under you: You cannot start on at rung you wish, you must start at the bottom with an actual species and expand outward from there.

        You would do well to recognize that the days of placing abstraction on top of abstraction to create the appearance of description are gone (and in truth never existed) and that one must make an attempt to fill the full scope one wishes to claim, not simply find some non-obvious feature and abstract it to make it as broad as possible.

        1. Not only does the supreme’s 101 jurisprudence lower the ceiling on your ladder,

          Define “abstract” please.

  19. Unnecessary to reach the 112 and 103 issues at all. The claim FAILS the threshold 101 test as being directed to the abstract idea of antibodies that bind to human interleuken to neutralize it, for well-known therapeutic purposes. As we now know, the abstract idea exception to patentability applies across the board to all statutory categories, not just to methods.

    1. Tourbillon, I hope you were not serious.

      If you were poking fun, and I think you were, I fully agree that the Supreme Court’s jurisprudence has run off the rails since Bilski. Under Hotel Security and its progeny, cited and relied on in Stevens concurring opinion, business methods were non statutory — not being an Art, machine, composition or manufacture. So, when the novel part of the claim is non statutory, and the eligible part old, the claim is not patentable.

      Here the abstract idea of using antibodies, etc., is clearly statutory. The problem is in 112.

      1. Hmm,

        Seems to fail 101 fro other reasons as well: mere isolation may not be enough, and appears to be “directed to” human tissue.

        ;-)

      2. “Here the abstract idea of using antibodies, etc., is clearly statutory. ”

        Say what now?

        Some abstract ideas are statutory?

        I thought any abstractly expressed invention was non-statutory.

        That is truly an un-Neddly thing to say.

        1. Perhaps he meant “statutory category,” as both Ned and Malcolm have evidenced considerable confusion on the fact the the Royal Nine really are using the “abstract/gist” sword to say that physical machines are ‘abstract.’

        2. Les, you do not seem to have been following my harsh criticism of Bilski.

          The problem with business method claims as they are’s nonstatutory, meaning nhat they are neither an Art, machine, composition of matter or manufacture. Look at the the cases that Rich overruled in State Street Bank, and the same decisions summarized in Stevens’ concurring opinion in Bilski, particularly Hotel Security and Guthrie v. Curlett.

          Abstract, per Morse, is not a problem with statutory subject matter, but a problem with breath. The claim is so broadly written as to cover an idea. Morse identified the problem to be a section 112 problem, and particularly a written description problem. Abstractness has nothing to do with section 101.

          An abstract idea may relate to machine, a manufacturer or a composition and would otherwise be statutory if its scope were confined to a particular application. But business methods are hardly abstract in the sense that Morse defined them to be. They are simply nonstatutory.

          Thus even though Bilski got the result correct, the way the majority did it through a monkey wrench to the law. This is why I say that when one drives the train off the tracks, and goes off an entirely new direction, one can expect the period of chaos. That is where we are today.

          1. More errant CRP from Ned who gets all upset when someone else does not pay his ideas attention, but then insists on ignoring vlaid points raised against his views.

            Tell me again Ned why Congress created a limited defense to something that you claim NEEDS NO defense as it is not even statutory to begin with…..

            Oh wait, you have not told me yet a first time…

            Why is that?

            1. Errant, anon?

              I cite Morse, the 2d Circuit, In re Patton from the CCPA, and Stevens of the Supreme Court, and you say “errant?”

              No one agrees that Kennedy’s majority opinion in Bilski makes any sense whatsoever. Stevens, even though you might disagree with what he said in terms of business methods, was highly critical of the majority for not explaining what abstract meant. It seemed more like the Kennedy was pulling things out of you know where and throwing it up against the wall, and then saying to all of us, “I did that. Is not it beautiful?”

              And we are all supposed to applaud the Emperor even though he has no clothes.

              1. I cite… Stevens of the Supreme Court

                Too Fn funny – you MIS cite Stevens – 3, the new four is not 5.

                You lost a vote with your attempt to back the Royal Nine disregarding the explicit words of Congress.

          2. Art? Why are you bringing art into it. The statute no longer says “Art”. It says process. Why are you trying to read that word out of the statute? Doesn’t 35 usc 100 define processes clearly?

            1. Les, the statute does say “Art.” Check §100(b).

              Moreover, the switch from Art to “process” was not intended to change law, as the two had been considered the equivalent for a very, very long time.

              1. Les, the ’52 Act merely substituted process for art with no intent to change anything substantive.

                Here is a partial quote from Frederico

                “Section 101 provides that “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this
                title.”

                “This language (other than the terminal phrase) closely follows the wording of the corresponding part of the old statute, with the exceptions that the reference to plant patents has been omitted for inclusion in another section, and the word “process” is used in place of the word “art” which appeared in the old statute. The word “art” in the corresponding section of the old statute had been interpreted by the courts as being practically synonymous with process or method, and the same word also appeared in several other sections of the statute but with somewhat different connotations (it still appears in two other sections of the new code, with different meanings). The word “process” has been used in section 101 as its meaning is more rapidly grasped than “art” which would here require some interpretation. The first part of the definition of process in section 100(b) states that the word “process” means process or method, as these words have long been interchangeably used in patent law, and through same superabundance of caution by someone who feared that there might possibly be some loss of a shade of meaning in dropping the word “art”, it was restored in the definition so that it reads “The term ‘process’ means process, art or method . . . .”

                Also pertinent to whether the new use of an old computer is patentable as a new machine, consider this:

                “The definition does not modify in any way the statement in section 101 that a new machine, a new manufacture, or a new composition of matter, can be patented; if a machine is not new, if a manufacture or composition of matter is not new, it still cannot be patented. The decision of the Court of Customs and Patent Appeals in In re Thuau, 135 F.2d 344, has not been overruled by the statute. The holding of this decision is simply that an old material cannot be patented as a composition of matter, because it is an old material, and the fact that the inventor or discoverer may have discovered a new use for the old material does not make the material patentable. To this extent the decision is affirmed by the statute…”

              2. Nice strawman Ned. No one is arguing about inherency.

                I notice you only partially quote Frederico. Where’s the other part of the quote (you know, the one that vouches for my statement…)

      3. “the abstract idea of using antibodies is clearly statutory.”

        Ned, I hope you are not serious. No abstract idea is statutory. None. Once you admit that the use of antibodies is abstract, you lose your case.

        1. Tour, I was confining my remarks to 101. The identified problem with abstract ideas in Morse was 112.

          In THAT sense, abstract ideas are non statutory.

          But a claim to a business method, especially one fully implemented on a computer, is hardly abstract in the Morse sense. A business method is non statutory under 101. Just read Hotel Security and the other cases cited by Stevens in Bilski.

          Bilski should have been a simple overrule of State Street Bank, and perhaps declaring the MOT non exclusive. But declaring the claims in that case abstract was simply without support in the law.

          1. Do you know why, Ned?

            Has to do with explicit re-writing of the words of Congress. You know, the point that I have shared with you that you refuse to acknowledge.

  20. The reasoning of the majority points the way forward on all functional claims. If the functional claim does not define particular, disclosed embodiments or otherwise known structure, and/or covers subject matter not supported, it fails the written description requirement.

    The requirements for support for a genus in chemical cases is well known. In the mechanical and electrical, if the claims cover subject matter not the equivalent of the disclosed embodiments, the claim should also fail the written description requirement.

      1. I would recommend RandomGuy.

        I understand from his posts, he is member of the Board. But he fundamentally agrees that the real problem with functional claims that do not define known or definite structure is that they claim results and violate 112(a) written description/enablement per O’Reilly v. Morse.

      2. You actually don’t need one Dennis. It’s right there in 2161. It’s just nobody bothers to read it. I had to make my own form paragraph.

        Anyone with any kind of experience at the Office who gives a half second thought to how the system works knows why 112, 1st seems to be something that is 1) in every case and 2) a possible reason for invalidity.

          1. lol – you mean “Computer-implemented inventions are often disclosed and claimed in terms of their functionality. This is because writing computer programming code for software to perform specific functions is normally within the skill of the art once those functions have been adequately disclosed. Fonar Corp. v. General Elec. Co., 107 F.3d 1543, 1549, 41 USPQ2d 1801, 1805 (Fed. Cir. 1997). Nevertheless, for computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into both the sufficiency of the disclosed hardware as well as the disclosed software due to the interrelationship and interdependence of computer hardware and software.

            1. writing computer programming code for software to perform specific functions is normally within the skill of the art once those functions have been adequately disclosed.

              I’ve quoted that chain of cases to you before. The original link in that chain was a statement that best mode can be portrayed once the functions are described. It has since grown into “enablement occurs automatically once there is description” because computer programming is translation that is “merely clerical.”

              It is a conditional statement of enablement (“if description then enablement”) not description. The latter half of the quote makes that clear.

          2. also:
            When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described in the specification to achieve the claimed function and the inventor was in possession of that knowledge, the written description requirement would be satisfied. Id.

            Hmm – that sure as CRP is not calling out for code (as you have in the past demanded) – is not claling out for species of Basic, Pascal, Cobalt, C#, or any of the l o n g ( v e r y v e r y l o n g ) list, such as at link to en.wikipedia.org

            or

            link to en.wikipedia.org

            or

            link to en.wikipedia.org

            (how does that crow taste, my friend?)

    1. Ned,

      Do you remember the name of the reference that you brought to the table explaining the difference between holding and dicta and warning of the DANGER of running amuck with dicta?

    2. The reasoning of the majority points the way forward on all functional claims. If the functional claim does not define particular, disclosed embodiments or otherwise known structure, and/or covers subject matter not supported, it fails the written description requirement.

      That’s the way backwards, too – what you’ve stated is nothing new. There’s nothing magic about functional limitations (I don’t know what a functional claim is) – if a functional limitation limits the claimed apparatus in a clear, definite way, then there’s no problem with it. As pointed out by anon, this is judged from the perspective of the person skilled in the art.

      People (especially examiners) tend to look for easy rules like “functional limitations can be ignored” or “every ‘the x’ that is not preceded by ‘an x’ triggers a 112 indefiniteness rejection,” but there truly is no substitute for reading the claim with common sense, a proper appreciation for the rules of grammar, and a basic understanding of the subject matter.

      1. DanH, What a functional claim is excludes is clear – anything that achieves the claimed result. Uncertainty about what the claim covers is typically not a the problem with functional claims. Note, you might want to go back and read O’Reilly v. Morse for what the problem really is with functional claims.

        Note, I still exclude functionally claimed elements where the structure is well-known are otherwise definite. There is no vice in claiming old elements functionally.

  21. Dennis: ” In the present appeal, the Federal Circuit held that the PTO decision should not be considered a “final judgment for the purposed of collateral estoppel” since the district court decision was still pending and during that case the parties have the opportunity to expand the factual record. The court left open the possibility that collateral estoppel would apply once the decision is final and that collateral estoppel may have applied if Centocor had appealed directly under § 141 instead of filing a civil action.”

    Stern v. Marshall, 131 S. Ct. 2594, 564 U.S. 2, 180 L. Ed. 2d 475 (2011) also made clear that the final judgment must be one from an Art. III court, not one made by Art. I “judges.” That was the whole point of Stern.

    I find it interesting that no one appraised the Federal Circuit of Stern v. Marshall. Further, I am surprised, Dennis, that you did no mention it, as I have referenced the case to you before, but on a different issue, and I mentioned this failure to reference Stern in my report of the present case yesterday on your blog.

    1. Ned, While I do think that Stern could have interesting implications when applied to PTO decisions – especially regarding revocation of issued patents — Stern does not go as far as you suggest here.

      1. Dennis, you may be right.

        However, Stern did cite to Crowell v. Benson, a case where the Crowell Court approved of findings of fact by administrative agencies in disputes regarding statutorily created private rights, but only where the agency decision was subject to a trial de novo by a district court. See also Scalia’s concurring opinion that would cap legislative courts jurisdiction right there and no further, meaning that the ability to conduct a trial de novo in an Art. III court is critical to the constitutionality of the findings of fact by an Art. I court or tribunal where private rights are involved.

        It is worthy of note that an interference is subject to a trial de novo under 35 USC 146. So, to the extent that such an appeal remains, the jurisdiction of the Board may be constitutional and collateral estoppel may apply.

        Point to you, Dennis.

        1. But there is still the point may by Stern about Crowell. A district court had to issue the final order. If the interference goes directly to the Federal Circuit, that does not happen.

        2. Ah, if it only were so easy as to merely state: Ned, Case [ _____ ] does not go that far – and nothing more – to earn that point….!

          ;-)

          1. anon, cite 1 case where the Supreme Court has found collateral estoppel to apply to a decision by an Art. I court.

            Just 1.

            1. You quite miss the point of the comment Ned – you have ascribed “authority” to a mere comment – without regard to the content of the comment, and (apparently) solely on who the comment came from; hence, the authority fallacy.

      2. Dennis, might I add that collateral estoppel can never apply to strip a party of constitutionally protected rights.

        In the present case, an issued patent was involved in the interference. With respect to issued patents, there is a constitutional right (held by at least the patent owner) to have disputed facts tried to a jury.

        One might argue that the losing application owner may have waived his right to have the facts of validity determined by a court, but since he was forced to litigate in the PTO because he had only an application, I would think that he has not waived any constitutionally protected rights.

        This does suggest, though, that an infringer who brings an IPR, loses, and is bound by statutory estoppel may be deemed to have waived his constitutional rights.

        I searched and cannot find a single case where a federal court was estopped by the findings of an non Art. III court. Not one.

        This raises an interesting issue not only involving the PTAB, but also the non-Art. III Federal Court of Claims. I could not find a single case where collateral estoppel has even been asserted with respect to an adverse finding of that court.

        1. but since he was forced to litigate in the PTO because he had only an application, I would think that he has not waived any constitutionally protected rights.

          UM, Ned, do I need to give you a re-learning of what the word “inchoate” means?

    2. Ned,

      You are not getting upset because someone ignored a point that you were trying to make, are you?

      ;-)

  22. I am not sure that things can get worse with Judge Lourie acting as the intellectual leader of the Fed. Cir.

  23. Who wrote this claim? A 10-yr-old?

    It doesn’t even come close to meeting a minimum standard of competent professional conduct.

    Nor does the examination thereof, which allowed the claim and granted the patent.

    Of course there will be no consequences for either of these incompetencies, and the minimum standard therefore ratchets down yet further.

    I will say it again: the patent system sucks, big-time. It’s not just broken, it’s completely transformed into something unrecognizable.

    1. Who wrote this claim? A 10-yr-old? It doesn’t even come close to meeting a minimum standard of competent professional conduct.
      All fingers point to MM there.

      1. Have to disagree – by all indications, Malcolm’s claims are excessively detailed (and thus equally excessively worthless) picture claims.

        That he likes to tout that as being related to the “grown up arts” is just his typical flair at making conflagrations of irony factories.

  24. Federal Circuit: To Satisfy the Written Description Requirement, a patent “must at least describe some species representative” of the accused product.”

    Unless of course the claim in some way utilizes a computer. In which case all bets are off as to how many species within your functionally defined genus must be disclosed.

    Usually these days you can simply not show any.

    Also I think you may have a typo at the end of the title, it isn’t “accused product” it is “disclosed/claimed product”.

    1. and anon, yes the word “g e n e r a l l y” triggered the filter so it is the “g e n” prefix at least.

    2. I think there’s a difference between the functional claims we usually see in the computer-based arts and the “desired property” claims such as the one at issue here. Functional recitation in computer-based claims are really just method claims in disguise, and the species are really just routine ways in which any ordinary programmer would choose to write the needed code.

      On rare occasions, I’ll get a claim that specifies some desired property of the output instead of actually telling me what step they perform to obtain such an output, and most of the time, those kinds of claims have problems. It would probably be possible to reject those under “scope of enablement” but it usually also works to just use the full reasonable breadth that such claims provide, and nail them down with prior art.

      1. I think you are right that the use of functional claim limitations is somewhat different depending upon the art. Of course, the function in this case seems to be similarly method-focused in that the we are looking for a compound that binds and neutralizes the antigen.

        1. I think you are right that the use of functional claim limitations is somewhat different depending upon the art.
          71 comments so far and nobody has picked up on the key distinction made by the Federal Circuit. The difference between the arts lies in their respective level of predictability. Whereas there is a high level of predictability in the mechanical/electrical/computer arts, the chemical and biotech arts are known to be unpredictable.

          This is why a claim to “a chemical compound having X property” is treated differently, for 112, 1st purposes, than a claim to a “machine configured to perform Y.”

      2. APoTU, I have long argued the same about programmed computer claims that recite a method. They ARE methods, and should be construed that way for most purposes, although the sale of a device that embodies the software would be a direct infringement. I am still on the fence about CRM claims.

      3. Functional recitation in computer-based claims are really just method claims in disguise,

        Which is why when the claim says “code that causes function X” the specification cannot say “the machine is programmed to cause function X”. The specification must describe the species – the steps the applicant applies to achieve X.

        Applicants rarely do so.

        and the species are really just routine ways in which any ordinary programmer would choose to write the needed code.

        That’s a statement that goes to enablement, not written description.

        On rare occasions, I’ll get a claim that specifies some desired property of the output instead of actually telling me what step they perform to obtain such an output,

        Really? Because I’ll see functional limitations that merely describe the output rather than the means by which it achieves the output every single day.

        1. Random, you and I know the invention is not really about the software, nor is the software even important. It is the business method, and business methods historically were non statutory until good old Judge Rich decided to ignore that line of authority by misrepresenting holding in Hotel Security, and In re Patton, to name two cases. Stevens, in Bilski, cited the same cases Rich had discarded, and cited them for their actually holdings, adding Guthrie v. Curlett that clearly held business methods non statutory. This only goes to show just how d*amn deceitful Rich was. One could rely on a thing he said as being the truth. (Rich was much more of a litigator than a judge.)

          (Stevens also has some choice words about Rich’s jurisprudence in his dissent in Diehr as well when he cited the CCPA’s trashing of a number of historically important lines of authority such as the function of a machine doctrine.)

          How do we get the Supreme Court back on track? It is making the right decisions, but not in a very coherent fashion. It’s reliance on “abstract” instead of the statute is the problem. Clearly what the should be saying is “non statutory.”

          1. the drumbeat of bad caselaw analysis continues unabated…

            (combined with the typical perverse adulation of Supreme Court dissents (or concurrences dressed as dissents) by Stevenes – flat out known to be wrong in his views (3, the new 4 is not 5) and the typical venomous attack on the man who was best positioned to understand the intent of (and thus the best to provide a proper interpretation of) the words of Congress.

            How Fn pathet1c.

            1. Tha thump, tha thump, tha thump, drums down deepity bump!

              Tha thump, tha thump, tha thump, drums down deepity bump!

              What do you think? Good for a chorus?

          2. I haven’t much considered whether software or business patents as a class are statutory, as from my job’s point of view it’s rather irrelevant.

            There are far too many patents that are written so broadly and abstractly that they claim ends rather than means, and speak function to forego providing the quid for the quo.

            To me it’s not such a deal as to whether we allow software or business methods as a class, so long as people actually follow the other rules for the granting of a patent. If software claims were given their proper scope (rather than just being a monopoly-granting brainstorming session) you’d see many fewer software patents, because the vast majority of them would be commercially inviable (a fair response to the fact that they disclose nothing more than an idea anyway). Then it wouldn’t be an issue if you allowed software patents, as they would not be such an oversized problem as a class.

        2. Which is why when the claim says “code that causes function X” the specification cannot say “the machine is programmed to cause function X”. The specification must describe the species – the steps the applicant applies to achieve X.

          And how many steps does it take before those steps are no longer functions? Two? Ten? 1000?

          1. And how many steps does it take before those steps are no longer functions? Two? Ten? 1000?

            You act like this is a surprising issue. How many steps adequately describe any method? It’s fact specific for each method. What’s not sufficient to describe a method? Simply stating “A method for achieving X” with no limitations thereafter.

        3. Which is why when the claim says “code that causes function X” the specification cannot say “the machine is programmed to cause function X”. The specification must describe the species – the steps the applicant applies to achieve X.
          Perhaps you don’t understand what the “invention” is, and what is required for a written description of the invention. In many instances, the high-level steps being claimed are the invention (not to say that some of the more specific implementations of those steps are also not inventive).

          Consistent with Anon’s levels of abstraction, when I look at an invention disclosure, there are oftentimes multiple levels by which an invention can be disclosed. Typically, what the inventor provides (as the preferred embodiment) is at one level. I then look to identify, with the help of the inventor, what portions of the embodiment can be modified/deleted/swapped out and still obtain the desired result (whatever that is) — this is a higher level of abstraction. After that, I try to identify some overarching concept and see if that same concept can be applied to a different field/problem — yet another higher level of abstraction. Going the other way, I look at the specific embodiment and see if any of the specific implementations of the broad concept are inventive in themselves.

          In doing all of this, I try to understand what the invention does — i.e., how it functions. In the predictable arts, if you can identify a particular function, those skilled in the art are very likely capable of achieving that function. As such, I prefer to use functional language in my high-level claims since it better covers the inventive concept.

          1. Thank you Oh no, but the ladders of abstraction concept is not mine.

            Just ask DanH/Leopold who learned the hard way when he smarmily asked for references and I supplied them to him pronto (which reminds me, DanH/Leopold, I am STILL waiting for your response of references to support your counter-view).

          2. Perhaps you don’t understand what the “invention” is, and what is required for a written description of the invention. In many instances, the high-level steps being claimed are the invention (not to say that some of the more specific implementations of those steps are also not inventive).

            Except in order to properly claim the high level steps, you need to possess all (or at least a significant portion to show you fill the scope) of the ways of doing the lower level steps. It’s this kind of thinking that will get you into trouble on 101 grounds. The idea that you can do certain things to result in benefits is not the same thing as descriptions of YOUR way of doing something.

            Typically, what the inventor provides (as the preferred embodiment) is at one level.

            Good so far.

            I then look to identify, with the help of the inventor, what portions of the embodiment can be modified/deleted/swapped out and still obtain the desired result (whatever that is) — this is a higher level of abstraction.

            Still good, so long as you disclose the things they can be swapped out for. Possible 112 issue that can be avoided with good disclosure.

            After that, I try to identify some overarching concept and see if that same concept can be applied to a different field/problem — yet another higher level of abstraction.

            Nope. You’ve crossed both the 112 and 101 boundaries now. Now you’re just “printing at a distance” as Morse tried to claim. The fact that you have a particular way of doing something doesn’t entitle you to the functional benefit. You might want to see the car example at the end of Lizardtech on this one.

            In the predictable arts, if you can identify a particular function, those skilled in the art are very likely capable of achieving that function. As such, I prefer to use functional language in my high-level claims since it better covers the inventive concept.

            You’re using “inventive” wrong here, as the functional result has never been something that patent law has protected (it may be inventive in the common parlance of the term). You can’t build a means of doing X and then claim the function of X, for precisely the scope reasons identified in this case.

            I don’t understand how people can have a course of action, be shown a case that will completely destroy that course of action, and make no course corrections. Lets say you do exactly what you say here, when you go to sue an infringer they’re just going to be in the exact same factual situation as this case.

            Perhaps you’re relying upon the “in the predictable arts” qualifier. But that’s just a statement as to enablement. You’ll certainly have no scope of enablement issues in something like computer software. But you’re still going to have scope of description issues, because you still have to describe your species and other species to justify the genus, just as this case says. Enablement is an objective standard, WD has a subjective component.

              1. “You’re using “inventive” wrong here… You can’t build a means of doing X and then claim the function of X, for precisely the scope reasons identified in this case.”

                Tell us how this is legally wrong?

                Thanks.

            1. Nope. You’ve crossed both the 112 and 101 boundaries now. Now you’re just “printing at a distance” as Morse tried to claim.
              Oh really? I see that you don’t have a clue about claim drafting or inventions for that matter. Please, if you ever leave the PTO as a patent agent, NEVER draft original claims for a client. You will be doing them a grave disservice.

              you need to possess all (or at least a significant portion to show you fill the scope) of the ways of doing the lower level steps
              No. Let me repeat that … No. I claim a wood fastener … a device that connects one piece of wood to the next. I don’t have to “possess” all of the ways of doing it if I’m the first person who have come up with a “nail” and nothing else falls within the broad language of a “wood fastener.”

              If you drafted claims for a living, you would recognize how silly your statement sounds.

              1. Oh no, you are right to the extent you claim a method where the structure is irrelevant.

                Regarding wood fastener, it depends on the invention.

                I will agree with you that if the invention has NOTHING TO DO with the structure of the wood fastener, but with a larger combination such as a picture frame such that one could have claimed the pieces fastened together without more, then claiming a wood fastener is supported by showing any fastener.

                HOWEVER, if wood fasteners are old, and the structure of the wood fastener is the invention, one cannot claim a wood fastener, and neither can one claim a wood fastener in combination with other old elements. One can hold the claim invalid under either 102/103, or under 112.

                Novelty was the real problem with the claims in the Selden patent case and in Halliburton. In both cases, the entire combination claimed was old, and the sole novelty was in the structural details of the one element, and that element was claimed functionally.

                In the Selden patent case, the land locomotive was long desired, even land locomotives with gasoline engines. Selden invented a particular engine, but then claimed every land locomotive with a gasoline engine. The 2nd Circuit construed the claim to cover the particular engine Selden invented to save the claim.

                In Halliburton, everything was old in the claim, from the apparatus for inducing sound waves, the apparatus for drawing the received waves on a charts whereby the tubing collars could be counted, to resonance adjusters that could enhance the echoes from the tubing collars. The only thing new was the particular mechanical apparatus for enhancing tubing collar echoes that Walker had invented.

                The Supreme Court did not, as did the 2d Circuit in Walker, construe the claim narrowly to preserve its validity, but simply held it invalid under the then 112 for not claiming what was invented. The court could have invalidated the claim under “102/103″ as well, given what it said about the prior art.

              2. Since functional at the point of novelty has not been abrogated, that being common to early cases such as United Carbon and Wabash Appliance, just what about Halliburton was abrogated?

              3. Anon, when asked what aspect of Halliburton was abrogated, anon responds, “PON is a canard.”

                But, since PON is the rule from cases such as Perkins Glue, Wabash Appliance, and United Carbon, Anon picks one aspect of the case that was not overruled.

                Try again, anon.

              4. No need to try again. I have the words of Congress, the words of Frederico and other bodies of commentary on the Act of 1952 on my side.

                You? All you have is twisted Ned-IMHO-Law that mangles case cites and ignores the words of Congress.

                Thanks, but I like my position far better.

              5. anon, “on your side?” The casual reader would assume there is a direct quote from Federico about “abrogation” and what was abrogated. No such quotation exists.

                In fact, since you do not have even the slightest clue as to what Halliburton was about, let alone Perkins Glue, Wabash Appliance, or United Carbon, your statements about abrogation stand there whole cloth.

                But you are right that MPF claims are optional per the statute and that if one does not employ the statutory language, there is no statutory authority to apply 112(f)’s construction clause to a functional element.

                Talk about making up statutory patent law that does not exist, look to the Federal Circuit as the prime villain here.

              6. …and I will also remind you that you still owe me an answer to the simple question as to the reason Congress would add a limited defense to business methods, IF (as you would have it) they are not statutory to begin with, and all Congress need do is simply state three little words: “no business methods.”

              7. Further still, I have shown you the quote in Frederico.

                I have also shown you legislative history and the Cornell Law background to 103 as well – each serves as a piece in the story.

                Your plea to “the casual reader” sounds in a plea to the uninformed masses.

              8. Oh really? I see that you don’t have a clue about claim drafting or inventions for that matter.

                Odd that the federal circuit and supreme court keep coming to the same conclusions I do. They must also be terrible about such things.

                No. Let me repeat that … No. I claim a wood fastener … a device that connects one piece of wood to the next. I don’t have to “possess” all of the ways of doing it if I’m the first person who have come up with a “nail” and nothing else falls within the broad language of a “wood fastener.”

                This case is, to use your language, a direct example of someone coming up with a nail and attempting to sue someone who has glue, and the court found the wood fastener language invalid.

                If you’re the first to come up with a nail you get a nail. You don’t get all wood fasteners just because you were the first to come up with a nail. Glue is nothing like a nail, and the fact that your claim language covers glue when you didn’t posit it shows your claims are too broad. I can’t imagine why you think you should be given a scope that encompasses all means of fastening wood when you just admitted that you only know of one.

                If you drafted claims for a living, you would recognize how silly your statement sounds.

                Anyone can put pen to paper. If you want the claims to be valid you might want to try reading some cases.

  25. “Federal Circuit: To Satisfy the Written Description Requirement, a patent “must at least describe some species representative” of the accused product.”

    Unless of course the claim in some way utilizes a computer. In which case all bets are off as to how many species within your functionally defined genus must be disclosed.

    Generally you can simply not show any.

    Also I think you may have a typo at the end of the title, it isn’t “accused product” it is “disclosed/claimed product”.

    1. No – a fascinating element of this case is that the WD decision asks us to look at the accused product and see whether that product was sufficiently described.

      Dennis

      1. “No – a fascinating element of this case is that the WD decision asks us to look at the accused product and see whether that product was sufficiently described.”

        Well that is just weird. One cannot base the factual matter of whether or not they showed possession of x at date of filing y on whether or not they disclosed z that is accused at a later date. Preposterous nonsense.

        1. “Well that is just weird. One cannot base the factual matter of whether or not they showed possession of x at date of filing y on whether or not they disclosed z that is accused at a later date. Preposterous nonsense.”

          It appears that the blind squirrel has found a nut.

          Of course the idea that you would determine whether a claim satisfies the written description requirement of section 112 at the time the patentee accuses an alleged infringer is pretty ludicrous. If the preponderance of the evidence establishes that the patentee had possession of the claimed subject matter as of the filing date of the application, the claim is valid. The allegedly infringing device/method/whatever may not actually be infringing, for whatever reason (e.g. reverse doctrine of equivalents), but that doesn’t make the claim invalid. I guess Libel-Flarsheim says differently, but it strikes me as odd that a court can invalidate the claim based on the device that is accused of infringing.

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