Senators to Pritzker: Patent System Needs More Clarity and Transparency

Patent

In a letter last week to Secretary Pritzker (DOC), a group of five Democratic Senators have urged for administrative patent reforms to “prevent[] low-quality, vague patents from entering the market.” The group include Senators Jeff Merkley, Tom Udall, Martin Heinrich, Mark Begich and Mark Warner.

Although the letter does not provide direct policy plans, it does provide a set of guidance that should be well taken by the Patent Office:

(1) Take steps to incentivize examination quality over quantity.

(2) Direct Examiners to ensure that the patent file history is complete and resolves any ambiguities with clarified patent terms prior to issuance.

(3) Assess whether the PTO’s steps to “address functional claiming concerns . . . are sufficient to address concerns that functional claiming provides a loophole from definite, precise claims.”

(4) Expand crowdsourcing and public data analysis as a mechanism to identify problematic patents and categories of patents — then target those areas for more thorough examination.

(5) Ensure public access to information about patents and the file histories.

Read the Letter

The suggestions by the Senators are all helpful and are directed to an area of patent law ripe for reform. Lets hope that the USPTO can take these suggestions and create sensible policy.

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223 thoughts on “Senators to Pritzker: Patent System Needs More Clarity and Transparency”

  2. 17

    Random, re: Halliburton and its holding, you need to read Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 18 S. Ct. 707, 42 L. Ed. 1136 (1898). The PON of the improved brake (Claim2) was claimed functionally and means plus function was not used. The SC held that the claim would be invalid unless construed to covert the corresponding structure and equivalents.

    From that time, it was thought permissible to claim all elements functionally in a combination claim due to the court construction imposed by Westinghouse.

    Halliburton in fact implicitly overturned Westinghouse because the court held that the apparent breadth of the claim was as much of a problem as its real scope after construction.

  3. 16

    Random, I don’t like 112(b) because while there may be a notice issue about whether a given item falls into the scope, the scope is usually definite. That’s a substantially weaker argument than saying that the applicant has disclosed X, claimed Y, and hasn’t shown that X=Y.

    There is also the issue with whether the functional element is at the exact point of novelty as required by Supreme Court case law. But when it is, by definition, the patentee is not “particularly” claiming his invention even though the scope of this claim might be clear.

    Given Nautilus, it might be difficult now to state that a claim functional at the point of novelty is invalid under §112(b) regardless of Perkins Glue, Wabash Appliance and Halliburton if the only question the courts allow to be determined is whether the scope is clear. This essentially reads out of the statute the requirements that the claim be particular.

    1. 16.1

      “s at the exact point of novelty as required by Supreme Court case law”

      Cite please. (and try to make it a pertinent, post-1952 citation, thanks)

      1. 16.1.1

        “The record, briefs and arguments of counsel lead us to the view that Halliburton, supra, is inapposite. We there 268*268 held the patent invalid because its language was too broad at the precise point of novelty. In the instant case, the patent has been sustained because of the fact of combination rather than the novelty of any particular element.”
        Faulkner v. Gibbs, 338 U.S. 267, 70 S. Ct. 25, 94 L. Ed. 62 (1949).

          1. 16.1.1.1.1

            The “point” anon is that “we” are talking about claims functional at the PON. We do not have any objection to functionally claiming elements that are old.

            That you do not limit your remonstrations to the arguments we make is the problem.

            1. 16.1.1.1.1.1

              It is not a problem, because your PON use is ultra vires, whereas my arguments are soundly based on the law as written and understood – see Frederico.

              1. 16.1.1.1.1.1.1

                Again, anon, I really like how you get from here to there by pretending the CCPA and the Federal Circuit can overrule the Supreme Court.

              2. 16.1.1.1.1.1.2

                I am here because of Congress Ned – not any court.

                Tell me again which branch of the government has the authority to write patent law?

              3. 16.1.1.1.1.1.3

                anon, and congress did not change the text of 111(a) or (b), but still you ignore cases prior to ’52? Where do you get off?

                Ditto 101 who text has not changed materially since 1793.

                You live in some sort of fantasy land, anon.

                (What did change was 282 that seemingly carved out 101 from validity.)

              4. 16.1.1.1.1.1.4

                Ditto 101…

                You are fond of not seeing the big picture and what was carved out of what became 101, are you not?

        1. 16.2.1.1

          Not at all.

          If you are unclear, you are necessarily not particular.

          Why do you take that as “being cute?”

          1. 16.2.1.1.1

            The point I am making is that the SC required the claims to be clear in scope, understood by one or ordinary skill at the time of grant.

            Particularity is entirely different concept not addressed in Nautilus. But it is at the heart of the functionally claimed problem.

            So the real question you should as is how can claims be clear but not particular.

            1. 16.2.1.1.1.1

              “So the real question you should as[k]”

              LOL – no – mine is better – and I asked first.

  4. 15

    The interesting aspect of 3) is the very meaning of “loophole.”

    For this to be true, functional claiming MUST be permissible under the law.

    If, as several of the anti-patent or examiner (or both) types continue to insist – notwithstanding the actual law of the Act of 1952, the Congressional record related to such or Frederico’s commentaries – that such functional claiming is NOT permissible under the law, then no such “loophole” can be said to exist.

    This is very much like the point offered to Ned (that Ned has yet to even attempt to respond to) in regards to the action of Congress to offer a limited defense to business method patents, if on its face the law had already made such business method patents not patent eligible. One does not NEED a defense to something that is not statutorily eligible in the first place.

    Why is simple logic so hard for some to grasp?

    1. 15.1

      An interesting aspect of 4) is that it appears that a less thorough examination is allowed for any patents outside of the zone of “problematic patents and categories of patents.”

      Are these senators really implying different levels of examination based on enforcement/whining levels?

    2. 15.2

      An interesting aspect of 2) is that this appears to be already part of the job that examiners are supposed to do. To the extent then that the senators are saying: “Do your Fn job” I agree.

    3. 15.3

      As to 5), it might be nice if the good senators were more particular about what data they think is not accessible to the public and how that data is related to the Quid Pro Quo that has long been established under the law.

    4. 15.4

      “For this to be true, functional claiming MUST be permissible under the law.”

      Just under one interpretation of the lawl.

          1. 15.4.1.1.1

            Anon, the strawman is talking about claiming elements functionally while we are talking about claiming inventions functionally.

              1. 15.4.1.1.1.1.1

                Anon, while for one thing, the only thing I complain about our claims functional at the point of novelty and it every time I say that you say that “point of novelty” is a canard.

                However, outside the context of “point of novelty,” I tend to agree with you that functional claiming is quite permissible because one necessarily is claiming old elements. One might also be claiming a method.

              2. 15.4.1.1.1.1.2

                It is how you attempt to use “point of novelty” that is the canard, Ned.

                Again – your version is what I question.

              3. 15.4.1.1.1.1.3

                “because one necessarily is claiming old elements.”

                LOL – you mean like in Nazomi?

                (oh wait, you still think have not personally come to understand that case…)

                Maybe like electrons, protons and neutrons, then. Those are some pretty old elements, and yet, configurations of such are no problemo.

    5. 15.5

      Anon, stop it with your strawman arguments. Of course functional claiming is entirely permissible except in one circumstance. This is the very circumstance you say is a canard.

      1. 15.5.1

        Ned – there is no strawman in my post. Have you read the thread here? Several advance the notion that functional claiming is NOT permissible.

        1. 15.5.1.1

          Anon, while functional claiming is permissible functional claiming of the invention is not, and there is a distinction to be made.

          In combination claims, some elements might be old and they might permissibly be functionally claimed. As well, all elements of a new combination might be functionally claimed. (This is where Random and I might have a point of disagreement.)

          But when the invention is functionally claimed in a combination claim, the combination itself typically is old and the one element improved, but that element is claimed functionally.

          1. 15.5.1.1.1

            You seem to think that you have uncovered a “new wrinkle” in your “attack” on functional claiming.

            You have not.

            Please establish properly – with pertinent citations to post-1952 law if available your seeming new distinction between “functional claiming of the invention” and “functional claiming is permissible.”

            You seem to want to somehow avoid our earlier conversation about Frederico and single means claiming wherein I corrected your version of what Frederico had to say on the subject, and you also seem to want to conflate 112(a), 112(b) and 112(f) – yet again.

            1. 15.5.1.1.1.1

              Faulkner v. Gibbs, 338 U.S. 267, 70 S. Ct. 25, 94 L. Ed. 62 (1949).

              “The record, briefs and arguments of counsel lead us to the view that Halliburton, supra, is inapposite. We there 268*268 held the patent invalid because its language was too broad at the precise point of novelty. In the instant case, the patent has been sustained because of the fact of combination rather than the novelty of any particular element.”

  5. 14

    My advice to the Senators is to educate yourself regarding patents. Your list illustrates that you are ignorant and not qualified to be commenting. Recognize that patents have become politicized and that the best thing to do is get everyone out of patents that does not have a background in science and patent law.

    And, recognize that Lemley’s paper on functional claiming was published in a vanity press and holds NO water. (And, for anyone who understands patents at all, his paper hurts prosecution by encouraging the application to include more than what is new, but to include everything so as to be able to claim what they invented.)

    1. 14.1

      As for Number 1: figure out senators that the SCOTUS does not understand patent law for 600,000 applications. The Fed. Cir. had 103 right. TSM is the way to go. It provides an objective measure of 103 and can be used to rate examination.

      Alice is another nightmare as it just provides more jibberish to be argued about rather than actual issues.

  6. 13

    Re: quantity v quality. Id like to point out that the baseline hours for examination were established in 1976
    In that year, patent no. 4000000 was issued. Sometime in the last 5 years, I forget when exactly, the first change in hours since 76 was made by adding 2.5 hours across the board. Mind you, the baseline hours varies by art from 15 to 30 some. In 2011, patent no. 8000000 was issued. Which means (in an oversimplified way) that while the knowledge available to PHOSITAS can be said to have doubled, the time for an examiner to consider this knowledge for what it teaches, has increased by less than 25%. Furthermore. I believe that mr. Crouch has shown some charts on this blog that demonstrate that the length of applications and the resulting publications have increased dramatically during the same time period.

    1. 13.1

      edstirling,

      The point to consider is not the sum total of knowledge in any one art field per se, but rather the edge of knowledge of the particular art field.

      Think of a three dimensional bubble** as opposed to a two dimensional (filled in) circle.

      Also, the tools and efficiency of examination is not something that is to be expected to remain static. Yes, the best innovation in this age of information is information processing. To ignore this is to see (and allow) inefficiency where we should EXPECT higher efficiency. Of course, what we should be looking at is whether the examination process itself – as a process – has been keeping up with the best innovations in that field.

      This is where the focus should be at.

      Instead, we continue to entertain the politics of the Left and the Right trying to shape policy of what should be even allowed into the system.

      .

      **and yes, the bubble popping is a humorous take-away. Humorous, but off point and unhelpful for this discussion.

  7. 12

    It’s very unfortunate that more hasn’t been done in this area. For someone who has legal training and works with examination daily the problem is very clear. You could take an attorney and stick him with the examiners for a week and he’d get the right answer.

    The problem is that the office views the sole means of policing the substantive scope of a claim to be 103, as if searching and finding prior art is all that matters. At some point (and the line is crossed daily) you have to tell the Applicants they are not allowed to have the scope they are claiming because they simply didn’t invent that much.

    The applicant cannot posit one way of doing something, describe the effect of the act (i.e. claim functionally) and then argue that the art would fill in every other way of doing it. This is pretty simple logic since Morse, but the office has done such a poor job of using it that applicants use this overbroad language all the time, to the point of not even disclosing the one way to begin with.

    Someone get me in front of these Senators, I’ll bring charts and everything.

    1. 12.1

      At some point (and the line is crossed daily) you have to tell the Applicants they are not allowed to have the scope they are claiming because they simply didn’t invent that much.

      Yeah, we tried that once:

      link to en.wikipedia.org

      And it was a disaster, for the simple reason that a system of law can’t be based on a totally subjective “smell test” – which, as we learned, completely destabilized the patent system.

      Abandoning “merit” as a condition of patentability was one of the central purposes for the Patent Act of 1952. A direct quote from the legislative history:

      SECTION 103-NEW SECTION

      There is no provision corresponding to the first sentence explicitly stated in the present statutes, 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.

      The second sentence states that patentability as to this requirement is not to be negatived by the manner in which the invention was made, that is, it is immaterial whether it resulted from long toil and experimentation or from a flash of genius.

      And here are some comments from P.J. Federico, the most respected historian of U.S. patent law, that accompanied the passage of the 1952 Patent Act (on which our current act is based):

      Despite the fact that the requirement had been part of the law for at least nearly a century, the patentee in The Cuno Engineering Corp. v. The Automatic Devices Corp., 62 S-Ct. 37,314 U.S. 84, 86 L.Ed. 58 (1941), urged before the Supreme Court that it was unwarranted. This explains the concluding paragraph of the decision, “Such considerations prevent any relaxation of the rule of the Hotchkiss case as respondent would seem to desire.” The Court’s conclusion in first stated “It is our opinion that the Mead device was not the result on invention but a ‘mere exercise of the skill of the calling,’ an advance ‘plainly indicated by the prior art’ “, but the following discussion and the language used, particularly in referring to a “flash of creative genius” (which may have been a rhetorical flourish rather than anything else), produced a flood of commentary concerning a new and stricter standard of invention announced by the Supreme Court, and likewise (perhaps the commentaries more than the decisions itself) produced considerable effect on the lower courts.

      There has been some discussion as to whether section 103 modifies the so-called standard of invention (which itself is an unmeasurable quantity having different meanings for different persons) in the courts and it may be correct to state that the printed record does not show an explicit positive command to the courts. While it is not believed that Congress intended any radical change in the level of invention or patentable novelty, nevertheless, it is believed that some modification was intended in the direction of moderating the extreme degrees of strictness exhibited by a number of judicial opinions over the past dozen or more years; that is, that some change of attitude more favorable to patents was hoped for. … The Committee Report, in the general part, states that the section “should have a stabilizing effect and minimize great departures which have appeared in some cases”; the departures of which complaint has been made in the recent past are all departures in the direction of greater strictness and hence these would be what the report indicates should be minimized.

      …much like the current “departures” from our currently growing set of subjective tests (e.g., combining references, and “abstract” inventions) is destabilizing our current patent system and should also be minimized.

      2. 12.1.2

        (lol, one only has to be on the watch for the Royal Nine’s own slippery scrivining, as they remain addicted to their finger in the wax nose of 101)

        2. 12.1.3.2

          Can you explain the difference between:

          You are not entitled to a patent because your invention does not have enough merit, as it did not require a ‘flash of creative genius’ to invent.

          and:

          You are not entitled to a patent because you simply didn’t invent that much.

          and:

          You are not entitled to a patent because your specification does not satisfy the written description requirement of an actual invention.

          They are all the same conclusion: a determination of whether the disclosed and claimed invention has enough “worth” or “value” to enable patent protection. And all of them are completely subjective judgments, based on the eye of the beholder.

          1. 12.1.3.2.1

            They are all the same conclusion: a determination of whether the disclosed and claimed invention has enough “worth” or “value” to enable patent protection. And all of them are completely subjective judgments, based on the eye of the beholder.

            Hardly. Lets say that I develop a new information processing program. My program opens a Microsoft Word file, calls the “search” function, searches for the word “fact”, and if found, adds “Report” to the top of the page in size 24 bold font and saves the file to a new folder entitled “Reports”. Not only does it do completely obvious acts which the base program already does, but it has virtually no value to anyone.

            But when I write my patent, rather than explaining my algorithm, I choose to explain it using functional language similar to this:

            A device comprising: a processor; code which, when executed by the processor, causes the processor to: accept an input, wherein the input is text, analyze the input to determine whether the input contains objective fact or not; if the text constitutes objective fact, modifying the text to generate a report, wherein the report comprises the fact described in the input; and outputting the report to a database of information, wherein the database comprises a hierarchical ordered system of storage and wherein the fact is stored in a position within the hierarchy determined to be contextually accurate.

            This claim reads on a program which actually does something useful and has commercial value, because one can think of any number of institutions which would enjoy a program that automatically determines fact from opinion, and which catalogs fact. For example, one could imagine such a program being used for automatically cataloging new books into the dewey decimal system of a library.

            What the applicant is attempting to capitalize on is the misunderstanding that many attorneys and examiners have that the claim language constitutes a valid description of the invention. If the applicant were forced to describe his invention with particularity (which he is) then it would become clear that his invention represents the worst possible means of expression of an exceptionally large scope. That’s why he doesn’t do it – he knows what he actually created is worthless. If what he invented was actually good he wouldn’t need to intentionally be vague to expand the scope.

            I’ll go one step further: Some applicants, realizing that if they disclosed that all they were doing was running the standard Word functions, would hide that fact by never describing even the means of achievement at all. Instead, in their spec they simply describe functional results of unexplained actions, and they say that describing the actions are irrelevant because “the art knows of ways to achieve this” which is technically true, but not descriptive in the least.

            The Applicant won’t remove that functional language, instead he will try adding other meaningless limitations until he can convince an examiner to give up on 103. The solution to this that is contemplated by the law is that the examiner would make a 112, 1st or 112, 2nd rejection and tell the applicant that regardless of what the prior art is, what you are claiming simply does not describe what you invented. Because the office never makes that rejection, the 103 eventually falls and the broad functional language remains.

            This is not only common but intended in virtually all software processing applications. The applicant thinks up one way of doing something, but knows that a patent on that one way is commercially meaningless, so rather than describe WHAT HE DOES he describes THE EFFECT OF HIS ACTIONS, as the effect encompasses not only the way he thinks of but every other way as well. This causes the result that applicant is not claiming his solution to a problem, but claiming solving the problem itself (which is why the supreme court finds a 101 issue, another thing the office does poorly).

            If you have cancer in your arm I can kill that cancer with 100% certainty: I can cut your arm off. That does not support a claim to “curing cancer” because curing cancer encompasses methods that I don’t know, can’t enable, and haven’t invented, many of which I assume would let you get to keep your arm (a not unimportant fact from your point of view). The fact that I can describe actions in a way that gets around 103 is not the sole reason a patent should issue. The fact that I posit one means of achievement does not give rise to a claim on a vague scope that covers any untold number of means I probably didn’t consider.

            This test is neither improper, nor subjective. If your spec contemplates doing X, but your claim is directed toward scope Y, you have to show that X fills the scope of Y. By necessity, this requires you to make a statement that we currently know all about Y we will ever know, which as a practical matter never happens. That’s why I can tell you right now that functional claims are almost always overbroad.

            Morse claimed any machine that prints at a distance because he had a telegraph. The only way that claim would issue, given the benefit of our hindsight, is if we could say that Morse had possessed and enabled the tv, the cell phone text, the fax machine and the internet capable computer. We know now that it was smart to deny that claim, because there’s no way Morse had those things (and that’s even with the telegraph being a great machine in its own right). But the same is true for any other functional effect: Prove to me that your claim won’t read on something completely different in terms of structure and method of working and you can have your scope. Till then I’m going to tell you that you are not entitled to a patent because you simply didn’t invent that much.

              1. 12.1.3.2.1.1.1

                Night, do you agree or disagree that having invented one way of curing cancer one can claim “the” cure for cancer thereby making all subsequent cures by different means or methods infringements?

              2. 12.1.3.2.1.1.2

                Sort of like thinking that ‘oldbox’ precludes all improvements to ‘oldbox’ through the creation and use of the machine component of software, eh Ned?

                How is your personal understanding of the Nazomi case coming along?

            2. 12.1.3.2.1.2

              “By necessity, this requires you to make a statement that we currently know all about Y we will ever know, which as a practical matter never happens”

              How very Duell of you.

            3. 12.1.3.2.1.3

              Not only does it do completely obvious acts which the base program already does, but it has virtually no value to anyone.

              Well, clearly it has value to the applicant, who chose to file a patent application for it at predictably high costs.

              And this is exactly what you’re missing, RandomGuy. The Patent Act of 1952 – specifically, 103 – dispensed with the examiner’s subjective judgment about the value of the invention as a requirement of patentability. Rather, the threshold for deciding whether an invention was worth patenting was relegated to the applicant, in the form of a cost threshold. The theory is that with patents currently costing at least $20k to file and prosecute through issuance (scaling up to ridiculous fees for work from white-shoe firms), applicants have to choose their patents carefully. The costs should weed out “worthless” patents.

              Of course, in reality, there are huge inequalities in this system. Thanks to ridiculous market concentration in our business landscape, megacorporations can use their war chests to crush smaller competitors in a dozen different ways, and patents are only one of them. And the ever-rising bar of patent enforcement is squeezing small businesses and startups out of the enforcement game, while not stopping NPEs from taking advantage of potentially enormous infringement damage awards (NTP vs. RIM is the gift that keeps on giving for these firms).

              So, yes, I agree that the system needs work. But scrapping it for the hopelessly unworkable pre-1952 system would be a failure to learn from history.

              When I write my patent, rather than explaining my algorithm, I choose to explain it using functional language similar to this:

              A device comprising: a processor; code which, when executed by the processor, causes the processor to: accept an input, wherein the input is text, analyze the input to determine whether the input contains objective fact or not; if the text constitutes objective fact, modifying the text to generate a report, wherein the report comprises the fact described in the input; and outputting the report to a database of information, wherein the database comprises a hierarchical ordered system of storage and wherein the fact is stored in a position within the hierarchy determined to be contextually accurate.

              Do you have any idea how fast that type of claim will be rejected under 103? An examiner will divide it into three or four pieces, find a very simple reference that plainly teaches each piece, and issue a 103.

              Done. Easy. No need to invoke any subjective standard of how “much” the applicant invented.

              While KSR is often used by examiners in really lame and unfair ways, this isn’t one of them.

              The Applicant won’t remove that functional language, instead he will try adding other meaningless limitations until he can convince an examiner to give up on 103.

              And if the allowed patent claim recites only rudimentary steps but is six pages long, and so limited that no one infringes it, then exactly what harm does that patent cause to the public?

              If your spec contemplates doing X, but your claim is directed toward scope Y, you have to show that X fills the scope of Y. By necessity, this requires you to make a statement that we currently know all about Y we will ever know, which as a practical matter never happens.

              You do realize that every field of engineering is constantly evolving field, right? We don’t know “all that we will ever know” about anything.

              Let’s apply your concept to an example in mechanical mechanical engineering.

              Engineer A identifies an aspect of steam engines that provides some groundbreaking advantage, like tremendously better efficiency. The patent claims this new advantage, but the invention has to start with boiling water to form steam. How the steam is formed is irrelevant, so long as it is formed.

              By your rationale, if Engineer B manages to make steam in some way that Engineer A didn’t imagine, or that even didn’t exist before – then Engineer A’s patent is now invalid, because the part of Engineer A’s claim reciting “make steam” didn’t satisfy the written description requirement for every possible way to make steam.

              Do you see this as a fair result?

              2. 12.1.3.2.1.3.2

                David, do you agree or disagree that having invented one way of curing cancer one can claim “the” cure for cancer thereby making all subsequent cures by different means or methods infringements?

              4. 12.1.3.2.1.3.4

                ..and funy it is when you lose the ability to comment on ‘oldbox’ and changes to ‘oldbox’ that provide new capabilities that were not there prior to the changes.

              5. 12.1.3.2.1.3.5

                anon, Random and I do not agree on software having a per se problem under Perkins Glue, Wabash Appliance, etc.

                But we do agree that on the principles involved: that one cannot claim the cure for cancer having invented one cure.

                That is what we are talking about when we are talking about functionally claiming THE invention. We have to talk about cure for cancer example just to focus the attention on our position.

      4. 12.1.4

        And it was a disaster, for the simple reason that a system of law can’t be based on a totally subjective “smell test” – which, as we learned, completely destabilized the patent system.

        I was referring to the times that the Supreme Court has told an applicant that one not even need consider prior art, as the document fails on its face for lack of description. One cannot invent a single way of achieving a result and claim the result. Or is 112, 1st just a subjective means of rejection too?

        I can’t imagine how you would view “combining references” as subjective by the way.

        1. 12.1.4.1

          was referring to the times that the Supreme Court has told an applicant that one not even need consider prior art, as the document fails on its face for lack of description.

          What “times” are you referring to?

          The only recent Supreme Court case that even tangentially involved 35 USC 112p1 or 112p2 is Nauilus v. Biosig, which did not involve a lack of description, but rather ambiguity, i.e., PHOSITA could reasonably interpret a claim limitation in two completely different ways.

          Or do you mean Bilski, Alice, etc., where the Court characterized the applicant’s invention as “abstract” under 101? But those issues have nothing to do with written description, or “how much the applicant invented,” as you put it.

          For example, if Svante Arrhenius were alive today and had filed an application for the Arrhenius equation to inform rubber-curing processes, the Court would not tell him that “he had not invented very much,” or that his application exhibited a “lack of description.” Rather, the Court would state that his claimed invention is a law of nature, i.e. abstract, and therefore does not satisfy the statutory requirements of 35 USC 101.

          2. 12.1.4.1.2

            What “times” are you referring to?

            Morse, General Electric v. Wabash, Perkins Glue, Halliburton v. Walker. Didn’t I post this exact list in this thread? I know I’ve done it recently.

            You seem to be drawing this connection to the flash of brilliance test. That is incorrect. It is rooted in enablement, written description and indefiniteness, with a small sojourn into 101 if it gets truly out of hand. I care not a lick about brilliance/obviousness, as that is something the office does decently well. The question is what rejections should be made when we’re past 103.

            I’ll make it simpler for you, look at the engine example at the end of Lizardtech, or the Lizardtech decision in general, and you will see why you cannot simply strip limitations that describe an invention out of the invention and expect it to be upheld, because with greater scope comes greater descriptive responsibility. Inventing one thing that happens to fall within a broad group does not give one a right to claim the whole group.

            1. 12.1.4.1.2.1

              Random, you are ridiculous. Please read more cases and learn patent law.

      5. 12.1.5

        David, “flash of genius” was addressed in the second sentence of 103.

        The Supreme Court in Graham held that 103 was a codification of Hotchkiss and that there had been no change in the law.

        Cuno and A&P were about combination claims, where the alleged novelty was in a combination of old elements. All the Supreme Court held was that the sum must be more than the parts. That notion continued after ’52, and is expressed again in KSR.

        But functional claiming was also a big problem prior to ’52. Congress and Rich really screwed the pouch when they enacted 112(f), which Rich interpreted as carte blanche endorsement of functional claiming.

        1. 12.1.5.1

          Ned,

          You STILL are ignoring the larger context of why 103 was created in the first place (not JUST the last sentence of 103).

          By “no change in the law” – you STILL must recognize that the courts were NOT applying the law correctly (there were errant and wayward cases).

          You continue to pretend that ALL cases pre-1952 were “OK.” Such is simply NOT a valid conclusion. If that were so, then Congress would not have done what they did.

          Wake up son.

          1. 12.1.5.1.1

            And, you anon, are trying to overrule Graham.

            The changes wrought by 103 were noted in that case.

            1. 12.1.5.1.1.1

              I am not trying to overrule Graham at all.

              On the contrary, it is very evident that there is plenty of illicit dicta in Graham as far as 101 goes.

              Do you need me to remind you of the very source warning of dicta in court cases? Yes Ned – that warning is especially pertinent in the dicta of Supreme Court cases.

              1. 12.1.5.1.1.1.1

                Anon, you are aware that judicial dicta by the Supreme Court is binding on the lower courts, but not necessarily on itself?

                The issues you advocate have been decided by the Supreme Court.

                Also, when the Supreme Court interprets a statute, such as 112(b) or its analog prior to ’52, its holdings are not overruled by the ’52 Act where there was no change whatsoever in the text of the statute. Your constant harping about Halliburton being overruled is just that, noise. It was not overruled except that MPF claim elements may be employed in combination claims.

                There is nothing in the statute that defines combination claims.

                Frederico was careful to point out that single means claims were not permitted, and this include where one added “nominal” elements.

                If there is one thing about the Supreme Court is that they do not like the games patent attorneys play — adding a bunch of conventional elements to a single means claim is probably one of them.

              2. 12.1.5.1.1.1.2

                LOL – nice goalpost moving between judicial dicta and orbitor dicta

                Ned, orbitor dicta is NOT binding on a lower court.

                And it is not an absolute htat judicial dicta be binding.

                See link to lacba.org

                Come man – you yourself provided a source on not letting dicta be mistaken for binding law.

              3. 12.1.5.1.1.1.3

                “adding a bunch of conventional elements to a single means claim is probably one of them.”

                New Ned law?

        2. 12.1.5.2

          functional claiming was also a big problem prior to ’52. Congress and Rich really screwed the pouch when they enacted 112(f), which Rich interpreted as carte blanche endorsement of functional claiming

          And the other major failure was Rich’s failure to understand how the analysis of the relationship of the claim to the prior art can not be left out of the determination of subject matter eligibility. That was a major blunder and most rational people (the 99.9999% of people in the country who aren’t deeply and personally invested in trying to protect ineligible subject matter with patents) are grateful to the Supreme Court for chucking Rich’s pronouncements into the t oi let and flushing it with extreme prejudice.

          1. 12.1.5.2.1

            In some alternative universe that might actually be true.

            This one…

            Um, that would be no.

      6. 12.1.6

        David Stein’s problem is that he doesn’t appreciate the difference between abstractions and physical reality, or he chooses to ignore those differences because he lurves those darn innovators so much (why can’t we just give them the patents they deserve snifffle sniffle?).

        The empty aphoristic b.s. about “history repeats” is just the patent t e a b a g g e r s pitiful attempt to kick up dust and pretend that everything that’s happened to the patent system over the past 25 years is “normal.” But it’s not. There was no explosion in information processing claims and claims trying to protect “correlations” and “databases” and “methods of recommending stuff” back in 1952. There’s not even any remotely serious discussion of such “inventions” being patent-worthy anywhere in the Congressional record.

        And David Stein knows this.

        And we all know that he knows this. And we all know why he doesn’t talk about it.

        “History repeats.” What a sad joke that is.

        1. 12.1.6.1

          You quite miss the point of what history is repeating.

          Reading a map is simply not the same thing as writing a map.

      7. 12.1.7

        the extreme degrees of strictness exhibited by a number of judicial opinions over the past dozen or more years

        Anybody who believes we are presently seeing “an extreme degree of strictness” being applied to patent claims in the United States is invariably involved in trying to obtain patents most people would consider to be complete j nk.

        1. 12.1.7.1

          …or simply realizing excessive judicial activism regarding patent law and a violation of the separation of powers doctrine.

    2. 12.2

      “ For someone who has legal training and works with examination daily the problem is very clear. ”

      LOL – it sure is (just not the same thing that you are thinking of, Random Examiner who clearly lacks a full legal training).

      1. 12.2.1

        Let me know when either the Supreme Court or Congress come around to your way of thinking. It sure seems like they keep agreeing with me 9-0 and writing letters tending toward my viewpoint rather than yours.

        1. 12.2.1.1

          “There is no way that anon will ever be Random. Call me when anon has six championships.”

          “Is that your only argument??”

          “That’s the only argument I NEED, Shawn.”

          Scoreboard.

          1. 12.2.1.1.1

            Scoreboard?

            What 112 cases do you see up there on your side of the scoreboard?

            On point ones only please – leave out the fantasy ones in your head (you know, post-1952 law to be used – you might want to refresh yourself with Frederico’s views on 112)

        2. 12.2.1.2

          Congress is already there – what you don’t seem to realize is that the Court I its adictive craze simply refuses to acknowledge what Congress has laid out.

          1. 12.2.1.2.1

            “craze simply refuses to acknowledge what Congress has laid out.”

            Meanwhile in the actual congress we have congress critters declaring that the PTO is issuing too many “ridiculous” patents.

    3. 12.3

      Random, the problem is not congress or with congress. It is with the CCPA and with the Federal Circuit. It is also with the Supreme Court that has shied away from the topic of functional claiming since Halliburton.

      The PTO also has let us down when it did not even attempt to appeal its loss in Donaldson.

      Regardless, rather than fighting the good fight on functional claiming, the Office simply gave up.

      1. 12.3.1

        Maybe (heaven forbid) someone at the Office read Frederico and recognized that Halliburton was abrogated.

      2. 12.3.2

        The Supreme Court hasn’t shied away from it, as near as I can tell there have been no cases asking the court to take up squarely the issue of functional claiming, even though questions by the court made it pretty clear of how it would go in Biosig and Alice.

        1. 12.3.2.1

          Random, there was a case not long ago that was petitioned. The claims were functional at the PON. The claim was held indefinite by the district court, and not by the Feds.

          The government said the Feds were right on the law and the appeal should be denied.

          What does this tell you? The PTO does not think that functional claiming is a problem under 112(b).

          As such, the PTO itself has become a major part of THE problem.

          1. 12.3.2.1.1

            “THE problem”

            – according to the royal jihad of Ned-IMHO-law – not to be mistaken with the law actually passed by Congress in 1952, as noted by Frederico.

            1. 12.3.2.1.1.1

              anon, you problem is that you ignore the Supreme Court, rely on Rich, and do not actually read the statute.

              1. 12.3.2.1.1.1.1

                Wrong on every point Ned.

                The difference is that I am very much aware of the proper authority to give to the Court and its legal decisions. I know and recognize – as did Judge Rich – what the authority of the Court really is.

                Why do you think that the dicta in Benson (or Graham for that matter) could so easily be cast aside?

                Far from ignoring the Supreme Court, you should realize that I pay attention to every word. I know the decisions – and the appropriate contexts of those decisions better than anyone that posts here.

                As to “relying on Rich” – again you ere. I rely on the same basis that Rich relied on: that statutes as written by Congress. Your jihad against Rich suffers (continuously) from a single fatal flaw: no judge (or justice) better understood the words of Congress as enacted into law as did Judge Rich. You continuously let your own animosity color your legal understanding and you continuously choose to ignore the proper understanding of the 1952 Act in your pursuit of Ned-IMHO-Law.

                I have no such bias getting in my way.

                I have read the statutes, the congressional record and Frederico’s commentary and understand them all far better than you. That is why I can bring out points from them that you absolutely refuse to address.

                You think that somehow your silence wins the day? That you are able to run away from our discussions?

                Get serious Ned.

                Please. If you took the time to actually address the points I put in front of you directly, cogently and in an intellectually honest manner, (without regards to the impacts to your represented third party interests) our discussions would be far richer, and would reach their logical conclusions – and thus be of immense benefit to all readers.

              2. 12.3.2.1.1.1.2

                seriously, anon, you live in some alternate reality where Rich/Rader’s ideas are right and the Supreme Court’s ideas are wrong.

              3. 12.3.2.1.1.1.3

                I live in a world where the authority to write patent law has been given to only one branch of the government (and it was not the judicial branch).

          2. 12.3.2.1.2

            What does this tell you? The PTO does not think that functional claiming is a problem under 112(b).

            What’s the case name? Biosig was functional language in 112(b) and the court indicated a test. I’m talking about functional language creating an overbroad scope under 112(a).

            If someone claims they crossed the atlantic, there is no vaguery in my head as to what had been accomplished (no 112b issue). There’s also no doubt that one of ordinary skill could do it, as people cross the atlantic every day (no enablement issue). There is, however, a missing description as to HOW this person did it. The means by which they do it is certainly important, since by plane would be entirely obvious, while swimming would be a completely different kettle of fish. Someone who crosses the atlantic on a plane isn’t to be granted a scope that would cause the swimmer to infringe, since that swimmer is performing the function in a substantially different way.

            1. 12.3.2.1.2.1

              the point Random, is, what you are talking about here – was that the point under discussion in the Biosig case, or are you chasing a tangent?

            2. 12.3.2.1.2.2

              I have discussed with your previously (although you are quick to ignore the point that I bring): doctrine of equivalents and the three way test is fully part of my position.

              1. 12.3.2.1.2.2.1

                doctrine of equivalents… is fully part of my position.

                I know, just another reason you’re wrong. DoE places the burden on the patentee, not the infringer. DoE requires the action be done with a similar structure in a similar way. DoE determinations are infringer-specific. Functional claiming is an attempt by the Applicant to avoid the REQUIRED provings of DoE by summarily claiming the broader scope beforehand, thereby swapping the burden from patentee to infringer, ignoring the similarity requirement and applying it to all people, thereby chilling innovation which is the exact issue the court cites (and one Congress cannot legislate around, whether it intends to or not) in multiple functional claiming cases.

                DoE would not allow the inventor of a slingshot (a machine that functionally fires projectiles) to hold liable an “infringer” with a gun. Functional claiming does. The existence of DoE supports my conclusion, not yours.

                P.S. – Scoreboard.

              2. 12.3.2.1.2.2.2

                lol- you say “scoreboard” but I do not think you know what that means.

                (hint: you are way behind)

                You are not evaluating the functional claiming appropriately. Let me give you another hint: Claims are read through the eyes of a person having ordinary skill in the art to which the invention pertains having been informed by the specification.

                This does NOT mean that DoE only applies to a picture-claim level.

                Sorry, but you just don’t seem to get it.

            3. 12.3.2.1.2.3

              Random, I don’t recall, but I can find it. The claim had to do with a marker flag that was functionally claimed.

              2. 12.3.2.1.2.3.2

                Random, Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325 (Fed. Cir. 2010).

                Even the PTO rejected the claim as indefinite.

                From the case:

                On appeal, Enzo first argues that the district court incorrectly determined that the “not interfering substantially” language in the ‘824, ‘767, and ‘928 patents is indefinite. In Enzo’s view, the specifications provide specific examples of linkage groups that do not substantially interfere with hybridization and detection, as well as general criteria for selecting suitable linkage groups. Moreover, Enzo asserts that the specification provides a test for measuring the degree of interference, namely, comparing the thermal denaturation profile (i.e., melting temperature) of a modified polynucleotide with that of an unmodified polynucleotide.

                Applera responds that the district court correctly determined that the “not interfering substantially” language is indefinite, arguing that nothing in the patents explains how to measure “interference” or how to determine whether it is “substantial.” Because even a minor alteration of a single nucleotide may have profound effects on the ability of a DNA strand to hybridize, depending on the length and sequence of the strand, Applera argues that identical linkage groups may cause interference in some strands but not in others, thus rendering the claims hopelessly ambiguous.”

                In other words, anything that you discover that works is covered by the claim. That sir is claiming a result.

              3. 12.3.2.1.2.3.3

                Random, Enzo Biochem.

                Here is a link to the SCOTUSBlog on the cert. link to scotusblog.com

                I do not see the government brief listed. Perhaps I am confusing this case with some other where the SC recommended denial of cert.

              4. 12.3.2.1.2.3.4

                Ned – this is a 112(b) case. The court took a 112(b) case in Biosig. The question is how does 112(a) work with it.

                What actually needs to happen is someone needs to argue that functional language is improper under 112(a), 112(b) and 101 and let the court decide if any/all of them apply.

                I don’t like 112(b) because while there may be a notice issue about whether a given item falls into the scope, the scope is usually definite. That’s a substantially weaker argument than saying that the applicant has disclosed X, claimed Y, and hasn’t shown that X=Y.

              5. 12.3.2.1.2.3.5

                “What actually needs to happen is someone needs to argue that functional language is improper under 112(a), 112(b) and 101 and let the court decide if any/all of them apply”

                LOL – good luck with that.

    4. 12.4

      RG, if you “work with examination daily”, you, sir, are likely to be corrupt. What you say is to be accorded weight in proportion.

      Sorry brosefus, but there it is.

  8. 11

    It is almost as if congress has finally started paying attention. I have been harping for a very long time now on functional and indefinite claiming as the greatest single problem of patent law. The CCPA, until the Rich era, had clear law that one could not distinguish the prior art based on a function (in case of apparatus, manufacture or composition) or result (method). That era ended with a pair of cases: In re Swinehart and In re Donaldson, overruling such cases as In re Arbeit.

    Note, I do not agree with the Federal Circuit jurisprudence that would simply construe functional claims under 112(f). That does not solve the problem of apparent breadth and indefinite scope, the very problem the Halliburton Supreme Court identified with functional claiming, and which the Supreme Court has again stated to be the problem with all forms of indefinite claims in Nautilus.

    Note: Lane’s concurring opinion in Swinehart demonstrates that he, for one, simply did not get it. First he set up a strawman: old elements defined functionally — and went on to knock that strawman down. He seem to suggest that the doctrine of functional claiming as enunciated by the Supreme Court had to do with something other than claims functional at the exact point of novelty.

    To be clear, defining an old element in terms of nouns, generic terms, or even functionally, is gen erally permissible and even encouraged. Lane’s strawman argument seem to suggest there was no difference between defining well know structure functionally and defining the point of novelty functionally. This kind if purposeful not getting it pervades the CCPA and the Federal Circuit in its jurisprudence surrounding functional claiming.

    The PTO needs focus on Halliburton and Faulkner v. Gibbs, and the cases overruled by Donaldson – particularly, In re Arbeit.

    Moreover, MPF can only be claimed in combination claims. Combination claims were claims well understood at the time of the ’52 Act to be claims where the novelty is in the combination, such that each of the elements is old.

    When, however, the claim represents an old combination … the novelty cannot be in the combination and the use of MPF should not be allowed to define the one element that is improved.

    1. 11.1

      Halliburton and Faulkner were pre-1952.

      You continue to try to use abrogated case law and ignore the Act of 1952 (and then turn and try to blame – incorrectly – Judge Rich).

      This is objective history you keep on trying to twist Ned – see Frederico.

    2. 11.2

      Ned, six democrat senators as a cabal throwing a slow fat pitch down the middle of the plate is NOT Congress.

      Instead what we have here is political gamesmanship. See post 5.

      1. 11.2.1

        I applaud the six. They are naturally responding to their constituents who are complaining, and rightly so.

          1. 11.2.1.1.1

            (and yes, this does fall into the Ned blinders-on zone of “6-must-be-a-genius-because-he-agrees-with-me” mindset)

            Ned, just because a point of view aligns with your agenda, does not mean that you should turn off the critical thinking part of your brain.

            1. 11.2.1.1.1.1

              “Ned, just because a point of view aligns with your agenda, does not mean that you should turn off the critical thinking part of your brain.”

              Nor does it mean that he should engage an overdeveloped coping mechanism like you do when you “critically analyze” everything in sight. He doesn’t even have OCPD, so why would he need to?

              1. 11.2.1.1.1.1.1

                LOL – “overdeveloped coping mechanism”

                Because having an intelligent conversation is equated by you with mental illness….

                Way, way way too funny (but not in a good way for you 6).

              2. 11.2.1.1.1.1.2

                “Because having an intelligent conversation is equated by you with mental illness….”

                I just said that critically analyzing everything in sight is equated by me (and the good doctor analysing a dentist we read about the other day) with an overdeveloped coping mechanism that people coping with OCPD employ.

                Ned need not critically analyze anything he doesn’t feel like analyzing.

              3. 11.2.1.1.1.1.3

                Um,… sure… let’s go with that, because you don’t need to analyze anything you don’t want to in order to be informed because (according to 6), this lawl stuff is all made up, subjective in the mind anything goes stuff anyway…

                /eye roll

              4. 11.2.1.1.1.1.4

                “because …”

                No, simply because there is nothing obliging Ned to do so. For instance, Ned does not have OCPD and has not developed a coping mechanism that involves critically analyzing everything he can get his hands on that would compel him to do so.

                Note also anon that the coping mechanism itself is not a mental illness. It is a way of coping with the effects of a disorder. I would go into detail but we already did that in another thread and it is long.

                But besides that…

                ” let’s go with that, because you don’t need to analyze anything you don’t want to in order to be informed”

                You seem to be telling us that analyzing things (*all* the things in your case mind you), and sometimes perhaps to the nth degree, leads to you being more “informed”? Seriously? I mean, that is an interesting way of thinking, though absurd. I guess as far as excuses go it’s a pretty good excuse you to use to justify using the coping mechanism to yourself.

                Here’s how to stay informed brosefus. It doesn’t involve any analyzing, or any critical analyzing.

                link to theguardian.com

                I’ll tell you one thing anon, peeling back the coo-coo bird thinking that is you is entertaining if nothing else.

                One last thing, Ned is quite informed already, he’s cool at his current informed level.

                In any case, been fun anon, I’ll give you the final word. I doubt you’ll manage to trip/trick/beg Ned into critically analyzing this with you.

      2. 11.2.2

        what we have here is political gamesmanship

        But in Billy’s world it’s never “political gamemanship” when the patent t e a b a g g er agenda is promoted against the interests of the public.

        Go figure.

  9. 10

    Most of patent application examination quality issues boil down to how many application claims would have been rejected if the examiner had found better, more applicable, patent or publication prior art and applied it to those claims.
    We alread have a quality measurment system for that, in place, at no cost to the taxpayer or the applicant. Namely, the results of all the reexaminations and IPRs in which much better patent or publication prior art was found and applied to those same claims. Why is no one tracking and reporting it?

    1. 10.1

      I would suspect that the reason most of patents are are noticed in the first place has to do with functional claims.

      1. 10.1.1

        …much like the “Tr011” boogeyman – a topic drummed up out of the aether in a thinly veiled attempt to inject judicial (or here, executive) branch control on something that should be handled by Congress directly (and not a small cabal, serving up softballs).

        1. 10.1.1.1

          Huh?

          Are you suggesting we need to reenact 112(b), but this time say that we mean it?

          1. 10.1.1.1.1

            Quite the opposite Ned – the use of functional terms in claims was liberated in 1952 (see Frederico), and I merely call for the law as is to be properly recognized.

    2. 10.2

      …no cost?

      I know that you really like the option paul, but you overlook (drastically) the cost of certainty of a granted patent pulled back (possibly endlessly) into examination mode.

  10. 9

    What #2 really comes down to is implementation of Nautilus v. Biosig and its reasonable clarity standard. To date, I have yet to see anything coming down from the top about that, despite it being a tremendously powerful tool that examiners could and likely should make use of on a daily basis.

    1. 9.1

      Good point, PTU. For patent attorneys in Europe, satisfying the EPO on “clarity” can be a nightmare. Give a PTO Examiner any encouragement to explore what is “indefinite” and there’ll be no stopping them. No string of words was ever free of ambiguity. You only have to reflect on what the broadest “reasonable” interpretation is, to be worried about what a PTO Examiner thinks is “reasonable” certainty.

      I wonder how many US attorneys realise what a prfound sea change Nautilus has brought. Just you wait!

      1. 9.1.1

        I wonder how many US attorneys realise what a prfound sea change Nautilus has brought. Just you wait!

        They don’t. That being said, you don’t need 112, 2nd for anything you couldn’t do with 112, 1st beforehand. It’s just another tool.

        1. 9.1.1.1

          “That being said, you don’t need 112, 2nd for anything you couldn’t do with 112, 1st beforehand”

          The analog clock syndrome strikes!

          See In re Orthokinetics and the use of terms with functional language being fully allowed under the law outside of 112(f).

          Yes, such use is sanctioned by Congress in 112(a) and 112(b) – even as the naysayers attempt to confuse and conflate law and history in attempts to arrive at their magical pre-1952 the Court can do “WHATEVER” treatment of writing new patent common law.

          1. 9.1.1.1.1

            You’ve toyed with this before. 112(a) wasn’t even before the court. Note that even if 112(a) was before the court, that was back during the time when the only recognized requirement in (a) by the CAFC was enablement. 112(b) was before the court, and the Supreme Court just spoke on that standard in Biosig, so I don’t know why you’re trotting out an old case from an inferior court. The facts in this case seem to mirror Biosig, btw, (an undisclosed measurement amount) and the court specifically did not uphold that situation as being a reasonably tight claim language, choosing instead to send it back down. In other words, the one piece of logic this case still reasonably imparts is called into question.

            So you got me, the case about 112(b) didn’t say that functional claiming was overbroad under 112(a), all it did was highlight that the CAFC was doing 112(b) wrong 25 years ago.

            Scoreboard.

            2. 9.1.1.1.1.2

              You keep on saying “Scoreboard” and the scoreboard does not display the score that you think it does.

              Sadly, this only reiterates your lack of legal training and understanding.

              (the phrase “keep digging” is apropos)

            3. 9.1.1.1.1.3

              Random, ask anon whether the point of novelty in In re Orthokinetics was the functionally claimed element.

  11. 8

    (1) Take steps to incentivize examination quality over quantity.

    Of course, the devil is in the details – both in terms of how one measures “quality,” and in terms of how one achieves it.

    The PTO’s current metrics of “quality” are almost entirely focused on procedure (timeliness, using appropriate boilerplate, not citing references that don’t qualify as prior art), and almost entirely NOT focused on substance.

    Substantive review is primarily limited to allowed applications. And even in the rare case where substantive review of in-process applications is performed, it is typically limited to the office action – with almost no review of arguments presented by the applicant. The PTO is simply not set up to catch situations like (1) an examiner is totally, hopelessly wrong about the teaching of the reference, or (2) the examiner is totally ignoring the applicant’s arguments… which is why those situations are persistent and endemic.

    But there is a silver lining here: this statement isn’t just an empty call for “better patent quality,” but implicitly recognizes the tradeoff between quality and quantity. The PTO’s focus on quantity, i.e. production hours, as both a significant goal and a measurable property, is understandable – except that the PTO has pushed this agenda too far, and at the expense of quality, which is both difficult to measure, and a mutually exclusive tradeoff with quantity.

    (2a) Direct Examiners to ensure that the patent file history is complete.

    In what manner are current patent file histories “incomplete?” Public PAIR will give you the entire file wrapper.

    If this is directed to the substance of off-the-record interviews – guess what? If interviews are made part of the public record, applicants won’t hold them any more.

    The whole point of holding an interview off the record is that the applicant and examiner can talk more freely about what’s important in the case and where the examiner’s position is flawed (since examiners hate admitting that they were wrong on the record).

    Shutting down this aspect of prosecution will take another step back to the “bad old days” of churn, and an exacerbation of the nearly crushing docket of the PTAB.

    (2b) Direct Examiners to resolve any ambiguities with clarified patent terms prior to issuance.

    Examiners are already being asked / directed to apply 35 USC 112 more rigorously to compel clearer claims. They don’t need further “direction” in this realm.

    (3) Assess whether the PTO’s steps to “address functional claiming concerns . . . are sufficient to address concerns that functional claiming provides a loophole from definite, precise claims.”

    Totally nebulous. No mention of whose “concerns” are being addressed, why they believe that current claims are not “definite” and “precise,” or why “functional claiming” is the culprit.

    This is patent-policy pandering – much like politicians proclaiming themselves as “tough on crime.” The litany of meaningless “whip the applicants harder so they’ll shape up” drivel continues.

    (4) Expand crowdsourcing and public data analysis as a mechanism to identify problematic patents and categories of patents — then target those areas for more thorough examination.

    The public already has Peer-to-Patent, AskPatents, inter-partes review, and inter-partes reexamination requests. How much more “expansion” is needed?

    Also – why is there no appreciation that “expanding” the public’s right to challenge invalid patents also “expands” the public’s right to throw unsubstantiated roadblocks in the way of perfectly valid patents? There is not even a recognition of the mutual exclusivity of these goals.

    (5) Ensure public access to information about patents and the file histories.

    How is this different from (2a) above? Or is this recommendation so poorly written that the authors don’t even recognize that they’re asking for the same thing twice?

    1. 8.1

      As to using validity challenges to attack solid patents, does this happen or is it a “sky is falling” fear? I ask because at the EPO the logic of “what doesn’t k111 you makes you stronger” obtains. Filing an Opposition would be a serious error, if it fails to knock out the EPO patent. Does not the same logic apply, at the USPTO?

      1. 8.1.1

        As to using validity challenges to attack solid patents, does this happen or is it a “sky is falling” fear?
        You really have to ask this question? An extremely common litigation defense is increase the costs of the other side so that they cannot afford to continue (or initiate) litigation. The more roadblocks one throws up, the more expensive it gets for the other side and the less likely it will be that they can fully litigate the patent.

        Filing an Opposition would be a serious error, if it fails to knock out the EPO patent.
        They must be pretty weak at strategy over there. You don’t have to play your strongest hand to tie up a lot of resources and time (and time is money) of your opponent.

        1. 8.1.1.1

          Look, I’m not saying that when threatened with infringement proceedings you don’t fight back by putting validity in issue. Of course you do, that’s a no brainer. No, I’m referring to the doom merchants who suppose that Goliath will oppose every one of David’s issuing patents, willy-nilly. It might occasionally happen, I admit, but if it does, what more does David want, as proof to his investors that his technology is a threat to Big Corp Goliath, and therefore worth backing?

          2. 8.1.1.1.2

            Your comments did not explicitly refer to preemptive strikes against issued (but not yet asserted) patents.

            1. 8.1.1.1.2.1

              Sorry, caught in filter. Once more:

              Indeed. But why was that necessary, Oh? Only a tiny proportion of patents that issue are aserted. Stein (and the 6 Senators) were surely not talking about any mischief when those tiny numbers, against whom a patent is asserted, fight back by putting validity in issue. What more widespread and general mischief were they adverting to, do you suppose?

    2. 8.2

      Nice post David. To my view, if you want to improve prosecution, go back to TSM and machine or transformation. The more objective the measure, the more one can measure the quality of the examination.

      Now we have ’cause, ’cause, and more ’cause. KSR disaster. Alice disaster.

    4. 8.4

      In what manner are current patent file histories “incomplete?”

      Transcripts of Examiner-Applicant interviews are unavailable.

          1. 8.4.1.1.1

            You are kidding right, Malcolm?

            Try to add something intelligent to the conversation and at least pretend that you are here to do more than soapbox for your short script.

        2. 8.4.1.2

          In fact, I posted about that, above, exactly one sentence after the part that MM quoted:

          “If this is directed to the substance of off-the-record interviews…”

          1. 8.4.1.2.1

            I have noticed that Malcolm has long had a very serious difficulty in holding a conversation with you, Mr. Stein.

          2. 8.4.1.2.2

            So awesome.

            Again: who cares? Is there some contest to see who can post the most “points of interest” first? And then everyone who repeats a point made in that comment is disparaged because … why?

            Billy and David, sitting in a tree. Get over yourselves already.

            1. 8.4.1.2.2.1

              “Disparaged because… why?”

              LOL – seriously you have to ask? I already told you: try to add something intelligent. You mouthed something completely banal and unsupported after it was just discussed.

              Get a clue.

    5. 8.5

      why is there no appreciation that “expanding” the public’s right to challenge invalid patents also “expands” the public’s right to throw unsubstantiated roadblocks in the way of perfectly valid patents

      I don’t think that’s unappreciated. I think what you’re failing to appreciate, David, is that from the perspective of the public — nearly all of whom do not own patents and never will — it’s far, far better for the patentee to bear the burden of dealing with an occasional “unsubstantiated roadbloack” than for the public to pay the price of a bunch of tr 0lls running around threatening people with invalid j nk.

        1. 8.5.1.1

          do the Fn job right the first time through.

          And what if they don’t? Because nobody’s perfect.

          So what if they don’t “get it right the first time through”? The public just has to live with it? Nope. That’s not how it works. And it’s never going to work that way. Not even close, Billy. Those days are over.

          1. 8.5.1.1.1

            The gulf between “nobody’s perfect” and what is going on should be clear to even you , Malcolm.

            And no, we do have mechanisms in case they “don’t get it right the first time through>”

            But if you were paying attention to the conversation (or to reality), you might notice this little deck chair on the Titanic problem, backlogs, and Office worker shenanigans going on.

            Maybe.

      2. 8.5.2

        (and you might want to check out what Congress has said on the record.

        It’s located at 35 USC 282.

        You know, if you want to have a discussion with the real law in mind.

    6. 8.6

      Examiners are already being asked / directed to apply 35 USC 112 more rigorously to compel clearer claims. They don’t need further “direction” in this realm.

      They are?

      (3) Assess whether the PTO’s steps to “address functional claiming concerns . . . are sufficient to address concerns that functional claiming provides a loophole from definite, precise claims.”

      They are not.

      Totally nebulous. No mention of whose “concerns” are being addressed, why they believe that current claims are not “definite” and “precise,” or why “functional claiming” is the culprit.

      There’s a whole line of Supreme Court cases on the subject. The problem with functional language to describe novelty is that it’s being used and not being stopped.

      You must describe the novelty of your invention by its structure, not its function. Full stop.

      2. 8.6.2

        You must describe the novelty of your invention by its structure, not its function.
        Must? Must be an examiner to make up a statement about the law.

        Also, explain how method claims to me then. Method claims are about steps (just a different way of saying function). Unless you ban method claims, just about anything that I can claim “functionally,” I can also claim using a method claim.

        1. 8.6.2.1

          Must? Must be an examiner to make up a statement about the law.

          Or Supreme Court precedent. Morse v. O’Reilly (113), Holland Furniture v. Perkins Glue (256-257), General Electric v. Wabash (368-373), Halliburton Oil Well v. Walker (8-13). Lizardtech is one of the rare CAFC cases that also gets it right. The engine example at 1346 is probably something even lawyers could use to understand the principle.

          Halliburton, dealing with “means” in the pre-means-plus scheme (where it was directed to the full functional scope) uses particularly choice language about situations we constantly deal with today.

          I can see it’s time to teach another one.

          Also, explain how method claims to me then. Method claims are about steps (just a different way of saying function). Unless you ban method claims, just about anything that I can claim “functionally,” I can also claim using a method claim.

          Sure, I’ll explain how method claims to you. A step describes an action. That action is a structure. When the step only provides a description of the effect of the action, rather than the action itself, the step is functional, and is similarly banned. If the inventor contemplates eating a burger to sate his hunger, he must claim eating a burger, not sating hunger, even if a PHOSITA knows about the burger-hunger connection. If the applicant wants to express that he contemplates other things which also sate hunger (and thus expand his scope) he can express those things through a description of them, but he can never reach the end scope of sating hunger, because a claim to the functional result is a statement under 112, 1st that the applicant believes he is in possession of EVERY means of achieving the result.

          There’s case law on this in the computer context – the applicant must disclose an algorithm. One would describe how they get the inputs, how the inputs were modified, and what the result is. What one cannot do is simply claiming “getting the result” which happens to be exactly what’s done 90% of the time.

          The trick that is often cited to today (and I think even by you?) was that an enabled PHOSITA fills in the gap, but that was never a sufficient argument (see Wabash, Halliburton) and it’s pretty clear that the court was wise to do so. If it didn’t limit Morse to his actual machine (the telegraph), and instead allowed him to claim the functional end that his telegraph means achieved (“printing at a distance”), even though his machine enabled one way of achieving that scope, that claim would read on the tv broadcast, the cell phone text, the fax machine, the computer with the internet, none of which Morse possessed.

          Here I’ll cut out a bit of Halliburton for you (12-13) and swap in some computer phrases (“code” for “device” and so on) so you can see what the court would say:

          “Under these circumstances the broadness, ambiguity, and overhanging threat of the functional claim of [the applicant] become apparent. What he claimed in the court below and what he claims here is that his patent bars anyone from using in an [computer] any [code] heretofore or hereafter invented which combined with the [general purpose computer] performs the function of [insert functional claim language du jour here]. Just how many different [codes] there are of various kinds and characters which would serve to [do the function], we do not know…In this age of technological development there may be many other devices beyond our present information or indeed our imagination which will perform that function and yet fit these claims. And unless frightened from the course of experimentation by broad functional claims like these, inventive genius may evolve many more devices to accomplish the same purpose. Yet if [applicant]’s blanket claims be valid, no [code] to [do the function], now known or hereafter invented, whether the [code] be an actual equivalent of [applicant]’s ingredient or not, could be used in a combination such as this, during the life of [applicant]’s patent.

          Had [applicant] accurately described the machine he claims to have invented, he would have had no such broad rights to bar the use of all devices now or hereafter known which could [do the function] …Certainly, if we are to be consistent with [112, 1st], a patentee cannot obtain greater coverage by failing to describe his invention than by describing it as the statute commands.”

          Gee, sure sounds like using functional language creates a vaguery exploitable by the patent holder to expand his scope and create a patent thicket, just like the “loophole” that Senators worry about. There is no loophole, as there is no hole. There’s just a wall that the office continually, improperly, shoves applicants past.

          1. 8.6.2.1.1

            Morse (allowed) claim 5 does not have a machine.

            You continue to preach with something you just do not fully understand.

          2. 8.6.2.1.2

            Random, you fully understand the policy.

            It is time, high time, for the PTO to again take up the fight with the Federal Circuit and the patent bar. Rich and Rader are gone.

            1. 8.6.2.1.2.1

              “fully understand the policy”

              Take it up in the correct process, Ned. Recognize that the the Congressional letter is aimed at the wrong branch, and that if real change to patent law is desired, then the good senators need to be talking to the other senators and changing the law appropriately – not in the other branches that lack authority to write patent law and to so implement “policy” through the backdoor.

            2. 8.6.2.1.2.2

              Funny the juxtaposition and choice of words of Ned at post 8.6.2.1.2, given as Ned as consistently run away from addressing Morse claim 5 (in contrast to Morse claim 6).

              Full understanding…? LOL, more like f001 understanding.

          3. 8.6.2.1.3

            I see you’ve been drinking Ned’s Kool-Aid too long. Anon has beaten up Ned on some of the old cases you cited for so long that I do see any need for an encore .

            Let me provide you a quote from Bilski v. Kappos that you, Ned, and the rest of your ilk should memorize:
            This Court has “more than once cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’”

            Gee, sure sounds like using functional language creates a vaguery exploitable by the patent holder to expand his scope and create a patent thicket
            Nothing that cannot be done with structural language as well. As already noted (probably many times already), structural language can be extremely broad as well. Moreover, structural language is frequently just a rewriting of functional language.

            just like the “loophole” that Senators worry about
            Let’s be real, the Senators likely neither understand the loophole nor really worry about it. However, they do worry about the campaign contributions from people who asked the Senators to put their name on that document.

            even though his machine enabled one way of achieving that scope, that claim would read on the tv broadcast, the cell phone text, the fax machine, the computer with the internet, none of which Morse possessed
            Many/most(??) claims read on improvements to the claimed invention (i.e., subject matter not possessed by the inventor). Are you saying that all of these claims should be disallowed?

            1. 8.6.2.1.3.1

              Many/most(??) claims read on improvements to the claimed invention (i.e., subject matter not possessed by the inventor). Are you saying that all of these claims should be disallowed?

              Given that there is a statutory requirement to posses the invention, yes. Moreover, the court has spoken several times that if the patent covers that material, it not only chills the commerce but the invention in the area. If you claim not only an invention, but “any possible improvement” and that claim is upheld you wholesale remove the desire to research in that area. Assuming Morse’s telegraph claim 8 were still in effect, why would anyone spend money to create the tv, when they know they couldn’t practice it commercially nor receive their own patent? And what of the public, should they be robbed of the tv because Morse subjectively thought that the tv was close enough to his invention to not constitute a difference?

              But lets be honest here – nobody can reasonably say that the tv, SMS text and internet are mere improvements to the telegraph. They are wholly new inventions. You don’t want to say that though, because that admits the whole functional claiming argument is wrong, and the evidence is right in front of you.

              This Court has “more than once cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’”

              I agree, and that is why I have said before that not all functional claims are invalid, but functional claiming, as it is used today, is invalid, because both the purpose and the effect of it is to give the inventor more than what he has in an attempt to make what is actually a non-commercially-viable patent into a commercially-viable patent. You’re entitled to protection over what you make, not a guarantee of commercial value.

              This is never more clear but in the context of computers, where the underlying machine, which now belongs to the general public, allows people hundreds, even thousands of completely different paths to a similar end result. Applicant cannot posit one way of achieving the result and claim all of them, yet that is what is necessary to make the patent commercially worthwhile. The fact that you want a commercially worthwhile patent does not remove you from the requirements of the law – you must still show possession of your algorithm by describing it, and you cannot lay claim to algorithms which you assume are out there but you haven’t shown you have.

              Anon has beaten up Ned on some of the old cases you cited for so long that I do see any need for an encore .

              Anon has cited to no case that overturns those, as he knows the Supreme Court hasn’t spoken on the issue. What anon HOPES is that somehow the 1952 act changed that. It did not. The 1952 act overruled the claim construction part of Halliburton. Prior to Halliburton, “means” was construed in the way it is construed under 112, 6th today – the structure in the spec. The Halliburton court construed it as “every means.”

              Then the Halliburton court went on to use the same logic it had in all the other cases I cited: That overbroad functional claiming creates a vaguery (in Biosig parlance, it would be unreasonable level of particularity), and it seeks to claim a scope the full breadth of which the applicant neither enables nor possesses (because, as the court says, the most an applicant can describe is every method of achievement known to him, while the claim is directed to every method), and it chills innovation (possibly creating a 101 issue). This logic existed before Halliburton.

              After Halliburton, the 1952 created 112, 6th which overruled the claim construction part of Halliburton. There is nothing in 6th which even remotely touches the logic that if a claim is functionally directed to “all ways of doing something” (which is what functional claiming today outside of 112, 6th does) then the claim is invalid. When the court speaks, and congress acts but does not act to invalidate what the court has done, that is construed as an acceptance that the court is correct. The court was wrong about claim construction and right about the logic of general functional claiming. This is further helped by Fedrico’s comments that the act would “Put that law back to before Halliburton”. Not back to before Wabash, or back to before Perkin’s Glue, but back to before Halliburton. That statement on its face does not touch the Wabash logic, which is just as damaging to your argument as Halliburton is.

              How about you beat up on my logic for me?

              As already noted (probably many times already), structural language can be extremely broad as well. Moreover, structural language is frequently just a rewriting of functional language.

              Regardless of how broad it is, structural language always conveys a structure. Functional language does not. If your machine comprises “a stick” that’s a wide range of structures, if your machine comprises the functionality of “firing a projectile” that could be anything. If you describe your new slingshot by saying it comprises a stick, it won’t read on a gun, or even a bow. If you describe it functionally it reads on the bow, the gun, the rocket launcher and any other number of machines that may be invented in the future.

              If you use structure, the court can compare the structure of your invention with the structure of the infringed invention and come to a reasonable conclusion about similarity, which is the underlying basis of infringement. If you claim functionally, there is no reasonable conclusion you can come to. A gun is nothing like a slingshot, other than they are both projectile firers. I suppose one could argue that a gun is just an improved slingshot, but that argument wouldn’t get very far.

              There is a duty to particularly describe your invention. If the description of your invention encompasses both the structure of a gun and the structure of a slingshot, you haven’t particularly described it. There is a duty to enable the full scope of your claim. Someone who has been taught to tie a stretchy substance to a stick could not work gunpowder. There is a duty to possess your scope. Not only does the person with the slingshot not know every way of making a projectile, the person with the gun doesn’t know every way of making a projectile. In fact, you can never reasonably prove to me that you are the last word in projectile-making, so why should you be granted that scope? Why would society give you a scope that would chill research into undiscovered areas? For funsies? May I suggest to you that the only reason you think you can is because you try to get your client the largest scope possible, and the office has never told you No. But just because the office never disciplines you doesn’t mean what you’re doing isn’t wrong.

              The sky won’t fall if an invention is limited to its proper scope. It just means that some applications will be abandoned because they won’t be commercially viable. Lizardtech has it right – You can’t develop one fuel-efficient engine and use that as a support to a claim to EVERY fuel-efficient engine, no matter the structure or way it works.

              1. 8.6.2.1.3.1.1

                Given that there is a statutory requirement to posses the invention, yes.
                Sad … so sad

                Assuming Morse’s telegraph claim 8 were still in effect, why would anyone spend money to create the tv, when they know they couldn’t practice it commercially nor receive their own patent?
                Your complete ignorance of the real world is astounding.

                because both the purpose and the effect of it is to give the inventor more than what he has in an attempt to make what is actually a non-commercially-viable patent into a commercially-viable patent
                The same issue arises with structural language. You proposing to ban that too?

                Anon has cited to no case that overturns those
                You fail (yet again and like Ned) to recognize the primacy of statutory law.

                How about you beat up on my logic for me?
                The Federal Circuit and the MPEP ignore your logic all the time. Why should I bother?

                Regardless of how broad it is, structural language always conveys a structure.
                Really? I’m claiming “a light connected, via a pivot, to a support upon which is disposed an energy source.” What specific “structure” have I conveyed?

                If the description of your invention encompasses both the structure of a gun and the structure of a slingshot, you haven’t particularly described it.
                If I’m claiming a missile projector, I’ve described it with particularity. The law doesn’t require one to describe EVERY EMBODIMENT. Such a requirement would result in 1000 page specifications that could still be easily designed around. You seem to completely forget (or perhaps willfully ignore) that such a requirement would eviscerate the value of patents — I know, I know … this is why your are probably for it. However, where there is little value in obtaining a patent, people will stop attempting to obtain them, which is against the pro-patent policy enshrined in our US Constitution.

                You can’t develop one fuel-efficient engine and use that as a support to a claim to EVERY fuel-efficient engine, no matter the structure or way it works.
                Finishing up with a straw man — how appropriate.

              2. 8.6.2.1.3.1.2

                You can’t develop one fuel-efficient engine and use that as a support to a claim to EVERY fuel-efficient engine, no matter the structure or way it works.
                Finishing up with a straw man — how appropriate.

                That’s not a strawman, that’s an exact quote from Lizardtech.

              4. 8.6.2.1.3.1.4

                That’s not a strawman, that’s an exact quote from Lizardtech.
                Methinks you do not know what a straw man is. The fact that it is the Federal Circuit’s straw man (Lizardtech had nothing to do with fuel-efficient engines) does not change its identity.

              5. 8.6.2.1.3.1.5

                Methinks you do not know what a straw man is. The fact that it is the Federal Circuit’s straw man (Lizardtech had nothing to do with fuel-efficient engines) does not change its identity.

                For it to be a strawman, it would have to be an argument. It is not, as it is not an attempt to change the law, it is an example to explain what the law is. The word you’re looking for is dicta. Because Lizardtech had nothing to do with engines it is dicta. Its dicta directly related to its actual holding, and its easier to understand, which seems to be the problem on that side of the table, which is why I cited it instead of the particular transform language. Citation to controlling authority is not a strawman, it’s just argument.

            2. 8.6.2.1.3.2

              Oh no, the fact that anon disagrees with me does not mean that anon is right and I am wrong. More than likely it is the other way around.

              2. 8.6.2.1.3.2.2

                More than likely it is the other way around.
                After reading your stuff for quite awhile, its safe to say that anything your write (whether or not Anon agrees with it) is likely to be wrong.

                We all get that you’ve got an agenda to push. However, your agenda is not the law.

              3. 8.6.2.1.3.2.3

                Oh No, I really like it how you pretend that the Federal Circuit can overrule the Supreme Court.

        2. 8.6.2.2

          Must? Must be an examiner to make up a statement about the law.

          Or Supreme Court precedent. Morse v. O’Reilly (113), Holland Furniture v. Perkins Glue (256-257), Ge neral Electric v. Wabash (368-373), Halliburton Oil Well v. Walker (8-13). Lizardtech is one of the rare CAFC cases that also gets it right. The engine example at 1346 is probably something even lawyers could use to understand the principle.

          Halliburton, dealing with “means” in the pre-means-plus scheme (where it was directed to the full functional scope) uses particularly choice language about situations we constantly deal with today.

          I can see it’s time to teach another one.

          Also, explain how method claims to me then. Method claims are about steps (just a different way of saying function). Unless you ban method claims, just about anything that I can claim “functionally,” I can also claim using a method claim.

          Sure, I’ll explain how method claims to you. A step describes an action. That action is a structure. When the step only provides a description of the effect of the action, rather than the action itself, the step is functional, and is similarly banned. If the inventor contemplates eating a burger to sate his hunger, he must claim eating a burger, not sating hunger, even if a PHOSITA knows about the burger-hunger connection. If the applicant wants to express that he contemplates other things which also sate hunger (and thus expand his scope) he can express those things through a description of them, but he can never reach the end scope of sating hunger, because a claim to the functional result is a statement under 112, 1st that the applicant believes he is in possession of EVERY means of achieving the result.

          There’s case law on this in the computer context – the applicant must disclose an algorithm. One would describe how they get the inputs, how the inputs were modified, and what the result is. What one cannot do is simply claiming “getting the result” which happens to be exactly what’s done 90% of the time.

          The trick that is often cited to today (and I think even by you?) was that an enabled PHOSITA fills in the gap, but that was never a sufficient argument (see Wabash, Halliburton) and it’s pretty clear that the court was wise to do so. If it didn’t limit Morse to his actual machine (the telegraph), and instead allowed him to claim the functional end that his telegraph means achieved (“printing at a distance”), even though his machine enabled one way of achieving that scope, that claim would read on the tv broadcast, the cell phone text, the fax machine, the computer with the internet, none of which Morse possessed.

          Here I’ll cut out a bit of Halliburton for you (12-13) and swap in some computer phrases (“code” for “device” and so on) so you can see what the court would say:

          “Under these circumstances the broadness, ambiguity, and overhanging threat of the functional claim of [the applicant] become apparent. What he claimed in the court below and what he claims here is that his patent bars anyone from using in an [computer] any [code] heretofore or hereafter invented which combined with the [ge neral purpose computer] performs the function of [insert functional claim language du jour here]. Just how many different [codes] there are of various kinds and characters which would serve to [do the function], we do not know…In this age of technological development there may be many other devices beyond our present information or indeed our imagination which will perform that function and yet fit these claims. And unless frightened from the course of experimentation by broad functional claims like these, inventive genius may evolve many more devices to accomplish the same purpose. Yet if [applicant]’s blanket claims be valid, no [code] to [do the function], now known or hereafter invented, whether the [code] be an actual equivalent of [applicant]’s ingredient or not, could be used in a combination such as this, during the life of [applicant]’s patent.

          Had [applicant] accurately described the machine he claims to have invented, he would have had no such broad rights to bar the use of all devices now or hereafter known which could [do the function] …Certainly, if we are to be consistent with [112, 1st], a patentee cannot obtain greater coverage by failing to describe his invention than by describing it as the statute commands.”

          Gee, sure sounds like using functional language creates a vaguery exploitable by the patent holder to expand his scope and create a patent thicket, just like the “loophole” that Senators worry about. There is no loophole, as there is no hole. There’s just a wall that the office continually, improperly, shoves applicants past.

            1. 8.6.2.2.1.1

              You remain massively confused

              Billy’s got his insult machine up and running again.

              I don’t see any “confusion” in RandomEx’s post. I see someone using his/her brain and trying to educate you in well-written, plain English. We all know that it’s impossible for you to learn, Billy, but why not at least just shut your trap and listen?

              1. 8.6.2.2.1.1.1

                Awwwww Is Malcolm feeling jealous because I am lambasting some Office stooge?

                You want that attention, don’tcha pumpkin.?

          2. 8.6.2.2.2

            Random, of course your logic is impeccable, your citations to case authority spot on, and your policy considerations in line with the purposes expressed in the Constitution for providing patents. The gainsayers who oppose us always try to change the topic and set up strawman by not focusing on what we are talking about, “functional language at the point of novelty , thereby diverting the attention away from the real issue. Just read, for example, Lane’s concurring opinion in In re Swinehart where he defends functional claiming by bringing up examples of old elements that are functionally claimed where, of course, there is no vice and in fact such functional claiming should be encouraged and which was encouraged prior to Halliburton.

            Our opponents, refuse to recognize the issue by refusing to recognize that when a claim is functional at the point of novelty , it is not claiming the invention, but a result.

        3. 8.6.2.3

          Must be an examiner to make up a statement about the law.

          Right. And it was the same group of shriekers who told us that we were “making up the law” when we told you that you that a claim in the form [oldstep]+[newthought] was ineligible, and why.

          Here’s a clue for you: patent law changes all the time. We’re trying to teach you about what’s about to happen so you don’t end up looking like an ignorant blind-sided bx tthole again.

          1. 8.6.2.3.1

            LOL – the return of the lame pet theory.

            Still waiting for that simple yes/no question from you Malcolm.

            Or are you late fo rhte CRP/runaway/CRP again merry go round ride?

          2. 8.6.2.3.2

            And it was the same group of shriekers who told us that we were “making up the law” when we told you that you that a claim in the form [oldstep]+[newthought] was ineligible, and why
            Frankly, I don’t care about that case. Only a biotech attorney would come up with a lousy claim that allegedly involved little more than your “[oldstep] + [newthought].” I worry about real claims written by real attorneys.

            Here’s a clue for you: patent law changes all the time. We’re trying to teach you about what’s about to happen so you don’t end up looking like an ignorant blind-sided bx tthole again.
            Anon writes “You remain massively confused Random Examiner” and you respond “Billy’s got his insult machine up and running again.” However, you have no compunction calling somebody “an ignorant blind-sided bx tthole.” What is that Anon always state that you do ? … hmmm … let me think … isn’t it MM accuses someone else of something that he does?

            BTW … I’m still making beaucoup $$$ practicing law in the practices areas you despise. Let me clue you into something — CLS bank hasn’t changed anything.

  12. 7

    Awesome to see that folks are still paying attention. Keep the spotlight on the broken patent system until it’s closer to being fixed.

    Dennis noted the following below:

    (1) PAIR files are difficult to obtain and impossible to search; (2) Provisional application documents are difficult to obtain and impossible to search; (3) The USPTO lacks a coherent system to link family-member patents and applications despite repeated court decisions indicating that the relationship is important; (4) it remains quite difficult to view patent documents via the USPTO site; (5) there is no searchable mechanism to determine whether published applications have been abandoned or are still pending . . .

    None of this should be particularly difficult to implement in 2014. Of course, it will cost require some computer programming by skilled people. I’m pretty sure such skilled people exist. Find them and pay them to do the job right.

    In addiiton, the electronic version of the Official Gazette should be far easier to navigate. For starters, let’s make it easy (one click) to view the patents granted each week and each month by each art unit.

    1. 7.1

      As to transparency, looking at the Dennis List, repeated above by MM at 7, I think the EPO meets all those criteria (and has done so for decades). So is there any good reason why the USPTO can’t do it too?

      Bad reasons might include: 1) complacency 2) no money 3) nobody available with the skills to do the job.

      Good reasons might include: 1) simply too difficult, even with unlimited funds, given the starting point today, and the law of today that has to be accommodated, and 2) it is perceived to be in the national interest, to keep legal status as opaque as possible.

      As to raising Quality, I put it too you (based on 30+ years of experience at the EPO) that in the USA the single most effective measure has been taken, but only just recently. That means, nobody has yet given it a chance to work through. I refer of course to post-issue validity challenges that succeed (like at the EPO) when a simple preponderance of evidence is adduced.

      Applicant behaviour at the EPO is self-policing. Going to issue with dodgy claims is simply not in the interests of the client.

      At the USPTO, for as long as the rewards are in direct proportion to how cleverly you can bamboozle your dodgy claims past the Examiner, there will be problems with “Quality”.

      I predict a busy future for those at the USPTO who have to deal with post-issue validity challenges.

      1. 7.1.1

        Max –

        One can search for all abandoned applications between January 2002 and December 2012 on the EPO site? Idonthinso Lucy.

      2. 7.1.2

        Max –

        One can search all published cases for applications processed by Examiner Hide? I don’t think so.

    2. 7.2

      “Keep the spotlight on the broken patent system until it’s closer to being fixed.”

      Interesting statement, but arguably the work of the six senators is NOT keeping the spotlight on the most important problem to be fixed (if at all, when one understands real law and the Act of 1952) – in fact, given the spate of recent revelations on Examine malfeasance, the spotlight has finally shifted onto the area that needs the most light (see the cockroaches scatter).

      Get Orkin on the line.

    3. 7.3

      “None of this should be particularly difficult to implement in 2014. Of course, it will cost require some computer programming by skilled people. I’m pretty sure such skilled people exist. Find them and pay them to do the job right.”

      One thing is certain, the current IT personnel at the PTO are not going to solve any of the PTO’s IT problems. They have spent billions, literally billions, and have not solved any of the problems.

      Time to clean house.

  13. 6

    EAST could probably be made easier to access, plus EDAN for all published apps. That would be a doable, sensible, option. Not the mindless baying of hounds we usually get.

    1. 6.1

      It’s bizarre to me that EAST is (1) only available on premises, and (2) very tightly restricted based on user IDs and photographic credentials. The hoops that I had to jump through, just to access the “public search facility,” were surprisingly extensive.

      2. 6.1.2

        The real answer is the servers are already too burdened. They just need to set up a second system in Chicago or something that is accessible online and sync overnight.

        1. 6.1.2.1

          Or they could just do what everyone else is doing: turn the whole mess over to AWS, eliminate all of their server costs / uptime responsibility, etc.

  14. 5

    …a big fat lazy lob from a handful of democrats to President Obama…

    Perhaps the senators were busy drinking koolaid while they penned the wide-spread “Tr011” rhetoric and missed the report from last summer (even using the Lemley-owned data that largely debunked the hysteria of “Tr011s” running amuck). I see they got the White House propaganda piece though.

    I do wonder who was supposed to sign on the three empty signature lines…

  16. 3

    Lulz, re 3 nothing the PTO can do can fix that loophole. It was closed by the courts, then reopened by the courts. If the congress wants it closed they should do it themselves since the courts themselves are relying wholly on the congress’s actions to have reopened the loophole anyway.

    But at least my man Mark Warner is up ins of the hizzouse!

    1. 1.1

      Some examples: (1) PAIR files are difficult to obtain and impossible to search; (2) Provisional application documents are difficult to obtain and impossible to search; (3) The USPTO lacks a coherent system to link family-member patents and applications despite repeated court decisions indicating that the relationship is important; (4) it remains quite difficult to view patent documents via the USPTO site; (5) there is no searchable mechanism to determine whether published applications have been abandoned or are still pending . . .

      1. 1.1.1

        #3 is actually solved. All patent documents have a “family member” ID number associated with them, and all documents within a patent family will have the same family member ID number. You can even search that field on the USPTO web site’s patent search page (the field code is “fmid”).

      2. 1.1.2

        All true and important limitations of the PTO’s IT. Both facts been a thorn in my side for my entire time as a practitioner.

        But I really don’t think that the senators’ letter has anything to do with the PTO’s IT capabilities. Seems like small potatoes for congressional attention.

        Every year at the PTO’s Partnering in Patents session, I talk to Tim Callahan about the PTO’s latest efforts to improve its IT. (I’ve broached this topic with him annually for at least four years now.) The truth is that the PTO wants to bring its IT up to date, and is typically cooking up some projects… most of which are eventually axed due to lack of budget. Last year’s sequester 86’ed a large range of such projects.

        1. 1.1.2.1

          Maybe they should try awarding the contract to someone competent instead of connected. You can cut that billion dollar upgrade budget to about 50k that way.

      3. 1.1.3

        1) PAIR files are fairly easy to obtain. Not sure why you say they are not.
        2) Provisional application documents are just as easy to obtain. The problem is that Examiner’s don’t obtain them, even when they are relying on the provisional date.
        3)Not sure what this is referring to. I find it rather simple to click on the “continuity tab” of PAIR to get family member info.
        4)You are correct. But, Google has made it simple, so…why spend the money…

        You are right about search ability… but you can use PAIR to check the status, including abandonment, pending or issued status of any application. Why would that have to be searchable? Searchable in what sense? Give me a list of all abandoned applications?

        1. 1.1.3.1

          Prof. Crouch has in the past conflated “nice to have” type of information with “need to have” information.

          I suspect that his comment here continues that conflation.

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