Has there been a switch to the use of ‘wherein’ instead?
7.1
Good call on this comment. See the following chart:
7.1.1
I wonder if there is an understanding if this stark contrast from one if those specializing in ‘epistomology.’
7.1.1.1
or episiotomies?
6
This clause is limiting when such limitation will harm the patentee, such as by allowing a copier to avoid infringement – and not limiting where such limitation would help the patentee, such as by distinguishing unrelated references.
Small wonder that it’s fallen into disuse.
6.1
“whereby this thing isn’t like that thing in the unrelated reference because of this clause.”
Dennis, can you explain what the dots represent? Are those different technology centers?
4.1
Each dot represents all the utility patents issued in the given week along the timeline.
3
I’ll have to go back to my Landis for the authority, but I was trained 30 years ago that the proper punctuation for a “whereby” clause is to put a period in front of it. The thought is that “whereby” is only proper if the object necessarily occurs from the previously recited claim elements, which means that it adds nothing of patentable significance and will only get in the way in enforcing the claim.
3.1
I find it difficult to believe that you were trained to have more than one period in a claim.
3.2
30 years ago, pikku. there were indeed still trainers around, who enjoyed dry humour.
I too was taught that a whereby clause will complicate enforcement but that it will occasionally be indicated, in special cases, where it decisively improves the ability of the claim to see off an attack on ist validity. Sometimes (where I come from) a whereby clause (even today) really does narrow the scope of the claim.
The exception “proves” the “rule” perhaps?
3.3
pikku, I agree. “Whereby” does nothing but make infringement proofs difficult, as does a lot of explanatory language in claims.
2
The “whereby clause” has always served the same useful purpose. So what causes its use to dwindle, in just 30 years, from 1 in 5 claims to 1 in 50?
Was some landmark case responsible, like State Street, Bilski. or Alice?
From the shape of the plot, apparently not.
What else then, is it, that has made them more or less extinct?
It can’t be just “fashion” can it? Can it really be so, that there are “fashions” in claim drafting style, in the USA?
What do the claim-drafting textbooks teach? What does Landis, Faber or Ron Slusky advise?
2.1
The demise of the “whereby” clause coincides with the rise of the reflexive “intended use” arguments from the examiner, whereby the examiner ignores the limitation. It’s easier to shift to different language than to respond over and over to rejections where this argument is misplaced. See MPEP 2111.04.
2.1.1
How very interesting. Thank you Dan.
Nice parallel with the EPO, which set up shop in 1978 and has since then beeen ever more strict about functional limitations in claims.
Reminds me of the use of “for” in claims. When judging the scope of protection it can mean “intended for” even while, for novelty, it can mean “suitable for”.
So best not to use it at all.
2.1.1.1
Let’s not forget “adapted to.” My guess is that the plot for “adapted to” versus “configured to” would like very similar.
2.1.2
good observation, DanH. I agree
2.1.3
My main problem with whereby clauses is one never knew whether they were limiting or not. Sort of like preambles, it’s unknown whether they limit the claims or not.
Also, whereby clauses lend themselves more to mechanical inventions than computer-implemented inventions.
2.1.3.1
whereby clauses lend themselves more to mechanical inventions than computer-implemented inventions.
No, they absolutely do not. In part that’s because computers are — wait for it — a type of machine.
Your assertion is especially odd given that most computer-implemented inventions are described functionally which, in the absence of any recited new objective physical structure, is no different than simply stating “whereby said computer is used to automatically perform task X.”
To put it more bluntly, “A computer, whereby said computer is used to automatically perform new task X” isn’t meaningfully distinguishable from “A computer, wherein said computer is configured to automatically perform new task X” in the usual case where there is no description of the objective structural distinction between the “new” computer and the reams of old ones.
2.1.3.1.1
Why do you keep on trying to make one option of claim writing technique be such a critical issue?
Do you realize that your preferred claim writing methodology is ONLY one option?
If you want this single option to be an actual legal requirement, I suggest that you contact your congressmen and ask them to re-write the law.
Until then, can you at least write comments so that it is clear that you are not saying that the law requires what you want?
Thanks.
2.1.3.1.1.1
“Until then, can you at least write comments so that it is clear that you are not saying that the law requires what you want?”
I appreciate that you’re starting to ask people nicely to do this anon. I really do. However I think you’re likely asking too much of him because he is likely far from sure that such is indeed the case. “The law” may in fact require “what he ‘wants'”. We haven’t heard from the supremes on this in quite some time, and last peep out of them on the issue a few years ago made tangentially did not seem to be especially good for your view. He may be willing to grant you though that the federal circuit’s view on “the law” does not require such.
2.1.3.1.1.1.1
6,
You should be aware that it does NOT take probouncents from the Supremes to know what is and what is not the law.
Thanks.
…
You should be aware that it does NOT take probouncents from the Supremes to know what is and what is not the law.
Whatever that means.
…
You get flustered with such a simple typo…?
That’s pretty sad.
(Talk about losing focus on what is important…)
…
I think it does take a pronouncement from the court to know what is not the law.
…
I’m not “flustered” and the typo was not the source of any confusion.
…
So your feigned ignorance Vinnie Barbarino schtick was just you “tr011ing,” eh Malcolm?
Try to post instead to further the dialogue, if you don’t mind.
2.1.3.1.1.2
Do you realize that your preferred claim writing methodology is ONLY one option?
You are free to draft unenforceable claims if that’s what your imaginary clients want you to do.
Go ahead. Try to protect information with a patent claim, too. Why not? Just take the cash and run, baby.
[shrugs]
2.1.3.1.1.3
Do you realize that your preferred claim writing methodology is ONLY one option?
You are free to draft unenforceable claims if that’s what your imaginary clients want you to do. There are many available options should you wish to pursue that strategy.
Go ahead.
Try to protect information with a patent claim, too. Why not? Just take the cash and run, baby! Because freedom.
[shrugs]
2.1.3.1.1.3.1
Quite the non sequitur Malcolm.
Let’s try to stay focused on what I stated.
2.1.3.1.1.4
I suggest that you contact your congressmen and ask them to re-write the law.
Ah, yes: because that’s the “principled” thing to do, right?
LOL.
No thanks, “anon.” The courts created this mess because they wanted to please folks like you.
Now that they’ve seen what folks like you will do with a overly generous, short-sighted, court-manufactured handout, the courts are going to “uncreate” the mess.
What did you think was happening anyway? Oh right: some sort of “Constitutional crisis.”
As if.
2.1.3.1.1.4.1
Please refer (again) to my explanation regarding the differences between Set B printed matter and Set C printed matter to recognize that Set C printed matter has always been allowed – per Congress and not the courts.
Please pay attention in our discussions so that I do not have to remind you of these things.
(In other words, your mischaracterization of this as some type of ‘judicial gift’ has been shown to be baseless)
…
Set C printed matter has always been allowed
Whatever that means.
…
Malcolm, your tr011 comments are not appreciated.
Please stop.
1
Apparently they got left behind with automobile fins, leisure suits and quaaludes.
1.1
I thought it interesting that the curve resembled the inverse of the rise of computer patents shown earlier.
Has there been a switch to the use of ‘wherein’ instead?
Good call on this comment. See the following chart:
I wonder if there is an understanding if this stark contrast from one if those specializing in ‘epistomology.’
or episiotomies?
This clause is limiting when such limitation will harm the patentee, such as by allowing a copier to avoid infringement – and not limiting where such limitation would help the patentee, such as by distinguishing unrelated references.
Small wonder that it’s fallen into disuse.
“whereby this thing isn’t like that thing in the unrelated reference because of this clause.”
Small wonder, indeed.
See:
link to patentlyo.com
Dennis, can you explain what the dots represent? Are those different technology centers?
Each dot represents all the utility patents issued in the given week along the timeline.
I’ll have to go back to my Landis for the authority, but I was trained 30 years ago that the proper punctuation for a “whereby” clause is to put a period in front of it. The thought is that “whereby” is only proper if the object necessarily occurs from the previously recited claim elements, which means that it adds nothing of patentable significance and will only get in the way in enforcing the claim.
I find it difficult to believe that you were trained to have more than one period in a claim.
30 years ago, pikku. there were indeed still trainers around, who enjoyed dry humour.
I too was taught that a whereby clause will complicate enforcement but that it will occasionally be indicated, in special cases, where it decisively improves the ability of the claim to see off an attack on ist validity. Sometimes (where I come from) a whereby clause (even today) really does narrow the scope of the claim.
The exception “proves” the “rule” perhaps?
pikku, I agree. “Whereby” does nothing but make infringement proofs difficult, as does a lot of explanatory language in claims.
The “whereby clause” has always served the same useful purpose. So what causes its use to dwindle, in just 30 years, from 1 in 5 claims to 1 in 50?
Was some landmark case responsible, like State Street, Bilski. or Alice?
From the shape of the plot, apparently not.
What else then, is it, that has made them more or less extinct?
It can’t be just “fashion” can it? Can it really be so, that there are “fashions” in claim drafting style, in the USA?
What do the claim-drafting textbooks teach? What does Landis, Faber or Ron Slusky advise?
The demise of the “whereby” clause coincides with the rise of the reflexive “intended use” arguments from the examiner, whereby the examiner ignores the limitation. It’s easier to shift to different language than to respond over and over to rejections where this argument is misplaced. See MPEP 2111.04.
How very interesting. Thank you Dan.
Nice parallel with the EPO, which set up shop in 1978 and has since then beeen ever more strict about functional limitations in claims.
Reminds me of the use of “for” in claims. When judging the scope of protection it can mean “intended for” even while, for novelty, it can mean “suitable for”.
So best not to use it at all.
Let’s not forget “adapted to.” My guess is that the plot for “adapted to” versus “configured to” would like very similar.
good observation, DanH. I agree
My main problem with whereby clauses is one never knew whether they were limiting or not. Sort of like preambles, it’s unknown whether they limit the claims or not.
Also, whereby clauses lend themselves more to mechanical inventions than computer-implemented inventions.
whereby clauses lend themselves more to mechanical inventions than computer-implemented inventions.
No, they absolutely do not. In part that’s because computers are — wait for it — a type of machine.
Your assertion is especially odd given that most computer-implemented inventions are described functionally which, in the absence of any recited new objective physical structure, is no different than simply stating “whereby said computer is used to automatically perform task X.”
To put it more bluntly, “A computer, whereby said computer is used to automatically perform new task X” isn’t meaningfully distinguishable from “A computer, wherein said computer is configured to automatically perform new task X” in the usual case where there is no description of the objective structural distinction between the “new” computer and the reams of old ones.
Why do you keep on trying to make one option of claim writing technique be such a critical issue?
Do you realize that your preferred claim writing methodology is ONLY one option?
If you want this single option to be an actual legal requirement, I suggest that you contact your congressmen and ask them to re-write the law.
Until then, can you at least write comments so that it is clear that you are not saying that the law requires what you want?
Thanks.
“Until then, can you at least write comments so that it is clear that you are not saying that the law requires what you want?”
I appreciate that you’re starting to ask people nicely to do this anon. I really do. However I think you’re likely asking too much of him because he is likely far from sure that such is indeed the case. “The law” may in fact require “what he ‘wants'”. We haven’t heard from the supremes on this in quite some time, and last peep out of them on the issue a few years ago made tangentially did not seem to be especially good for your view. He may be willing to grant you though that the federal circuit’s view on “the law” does not require such.
6,
You should be aware that it does NOT take probouncents from the Supremes to know what is and what is not the law.
Thanks.
You should be aware that it does NOT take probouncents from the Supremes to know what is and what is not the law.
Whatever that means.
You get flustered with such a simple typo…?
That’s pretty sad.
(Talk about losing focus on what is important…)
I think it does take a pronouncement from the court to know what is not the law.
I’m not “flustered” and the typo was not the source of any confusion.
So your feigned ignorance Vinnie Barbarino schtick was just you “tr011ing,” eh Malcolm?
Try to post instead to further the dialogue, if you don’t mind.
Do you realize that your preferred claim writing methodology is ONLY one option?
You are free to draft unenforceable claims if that’s what your imaginary clients want you to do.
Go ahead. Try to protect information with a patent claim, too. Why not? Just take the cash and run, baby.
[shrugs]
Do you realize that your preferred claim writing methodology is ONLY one option?
You are free to draft unenforceable claims if that’s what your imaginary clients want you to do. There are many available options should you wish to pursue that strategy.
Go ahead.
Try to protect information with a patent claim, too. Why not? Just take the cash and run, baby! Because freedom.
[shrugs]
Quite the non sequitur Malcolm.
Let’s try to stay focused on what I stated.
I suggest that you contact your congressmen and ask them to re-write the law.
Ah, yes: because that’s the “principled” thing to do, right?
LOL.
No thanks, “anon.” The courts created this mess because they wanted to please folks like you.
Now that they’ve seen what folks like you will do with a overly generous, short-sighted, court-manufactured handout, the courts are going to “uncreate” the mess.
What did you think was happening anyway? Oh right: some sort of “Constitutional crisis.”
As if.
Please refer (again) to my explanation regarding the differences between Set B printed matter and Set C printed matter to recognize that Set C printed matter has always been allowed – per Congress and not the courts.
Please pay attention in our discussions so that I do not have to remind you of these things.
(In other words, your mischaracterization of this as some type of ‘judicial gift’ has been shown to be baseless)
Set C printed matter has always been allowed
Whatever that means.
Malcolm, your tr011 comments are not appreciated.
Please stop.
Apparently they got left behind with automobile fins, leisure suits and quaaludes.
I thought it interesting that the curve resembled the inverse of the rise of computer patents shown earlier.
Comments are closed.