Even under BRI, A Wired-Connection is not “Wireless”

by Dennis Crouch

In re Imes (Fed. Cir. 2015)

The Federal Circuit has again rejected USPTO’s broadest reasonable claim construction as unduly broad.  The Federal Circuit here maintains the BRI standard, but suggests that more emphasis should be placed on the ‘reasonable’ prong and less on ‘broadest.’

More formal claim construction is becoming a common aspect of ordinary patent prosecution. However, rather than applying the “correct” claim construction that would be applied to an issued patent, the USPTO examiners are tasked with construing pending patent claims according to their Broadest Reasonable Interpretation (BRI).  By design, BRI is intended to be broader than the interpretation given by a court. The purpose of this approach is to offer an additional buffer zone between the prior art and the issued patent and to give the USPTO stronger tools to ensure that claims are not ambiguously written.

In the present case, Imes is attempting to patent a device for certain types of wireless communication and the applied-for claim includes a “wireless communication module.”  Imes argues that that term should be construed as a module that communicates without wires using electromagnetic waves.  The claim construction debate over that term stems from the USPTO’s position that the broadest reasonable construction of “wireless communication” includes communication with wires. In particular, the PTO argued that “wireless communication” between two devices could be accomplished with a removable flash-drive — i.e., by saving information from a first computer on a flash drive then physically moving the flash drive to the second computer. Boom!

Siding with Imes, the Federal Circuit writes:

The Patent Office’s construction of “wireless” to include communications along metal contacts of the removable memory card and the computer system is inconsistent with the broadest reasonable interpretation in view of the specification. The construction of “wireless” is straightforward. The ’423 application expressly and unambiguously defines wireless: “[w]ireless refers to a communications, monitoring, or control system[] in which electromagnetic or acoustic waves carry a signal through atmospheric space rather than along a wire.” ’423 application. The ’423 application consistently uses the term “wireless” to refer to methods and devices that carry waves through atmospheric space, such as Bluetooth and various cellular protocols. The metal contacts of a removable memory card do not carry a signal through atmospheric space using electromagnetic or acoustic waves, and thus removable memory card 35 is not a wireless communication module under the broadest reasonable interpretation of that term in view of the specification.

USPTO Solicitor had identified the error in the PTAB ruling and attempted to shift the argument on appeal.  However, the Federal Circuit refused to hear the new theory as not properly on appeal.

= = = = = =

Imes’ pending application also requires streaming video. In its rejection of the claims, the USPTO concluded that one of the references taught streaming video by teaching the ability to send a series of emails that each include an image attachment.  The USPTO determination here looks like a factual conclusion regarding the scope-and-content-of-the-prior-art — the type of determination that is generally given substantial deference on appeal.  On appeal, the Federal Circuit gave that deference, but found the conclusion still unreasonable:

Sending a series of e-mails with attached still images is not the same as streaming video. Such a construction is unreasonable as it comports with neither the plain meaning of the term nor the specification. Streaming video is the continuous transmission of video. A series of e-mails with attachments does not meet the definition of “streaming” and still images do not meet the definition of “video.”

On remand, the USPTO’s solution will likely be to search for better prior art.

159 thoughts on “Even under BRI, A Wired-Connection is not “Wireless”

  1. 19

    Just another example of an attorney wasting his client’s money challenging something that, while technically an error, could never be a valid basis for an allowance. I’m sure the client will be just thrilled to have spent so much time and money challenging a holding only to have one of a literal millions of references cited to clean it up.

    1. 19.1

      What does it say about the quality of the PTO’s work product if, when able to choose from over “a literal millions” of applicable references, they choose *none of them* and instead erroneously argue that a term of art means something it doesn’t?

      1. 19.1.1

        It speaks poorly of it. I’m not condoning what the examiner did. I would have taken official notice that wireless communication existed, though not everyone’s SPEs would let them do that. I can 100% tell you why it happened: There was either a 102 rejection or a lot of 103 rejections and the examiner didn’t want to take the extra half hour to do secretarial work of changing all of his headers and adding in the motivation over such pointless thing. Then the applicant went and made a point of it, which is fine, but somewhat expensive for my tastes.

        If everyone knows what the guy meant, and everyone knows the guy didn’t invent it, it seems to me the more ridiculous position is the one who spends a lot of time and effort over it. Two wrongs don’t make a right here.

        1. 19.1.1.1

          I’m not condoning

          Actually, in a very real sense that is exactly what you are doing.

          By making and excuse and playing the “blame the applicant’s attorney for wasting money” line of B$, you are skirting what the real issue is here: poor examination.

          This is just another symptom of a rampant problem. That you refuse to see this AS a problem is in fact PART of the problem.

          1. 19.1.1.1.1

            “Actually, in a very real sense that is exactly what you are doing.”

            I will agree with you there.

            “By making and excuse and playing the “blame the applicant’s attorney for wasting money” line of B$, you are skirting what the real issue is here: poor examination.”

            I will disagree with you there. “poor examination” is a symptom, not the disease. The disease is fundamentally people not wanting to pay, in either time or money, for examination and the people in charge not wanting them to pay for examination. You could also toss in lack of management into that disease.

            1. 19.1.1.1.1.1

              Your ability to prognosticate diseases and symptoms – or rather, your inability to do so, is well displayed here.

        2. 19.1.1.2

          Ridiculing someone for spending time and money chasing after a patent he didn’t invent is fine, that’s your prerogative, but frankly it’s also his prerogative to spend his money on that in the first place. People can spend their money however they want — on appeals for rejections on sketchy patents, on sound-activated dancing Santa dolls, or on life-sized Yeti sculptures (but not for much longer). To each his own.

          I think it’s a bigger issue that the quality of examination has gotten so bad that something like this even comes out of the PTO and needs to get sent up in front of a judge to get it right. That cost doesn’t come out of the filer’s pocket, it comes out of yours and mine, and it’s a failure in regulation if we’re just talking about an examiner being too lazy to write a good rejection.

          I’m glad that you’re not suggesting, as MM did, that the PTO was right. I agree that two wrongs don’t make a right, but that doesn’t absolve the PTO from doing its job properly in the first place. To suggest otherwise is like suggesting it’s okay that the Patriots deflated footballs because they were going to beat the Colts anyway.

          1. 19.1.1.2.1

            “if we’re just talking about an examiner being too lazy to write a good rejection.”

            He didn’t say lazy. He said he didn’t want to take the time. There’s a very large difference.

            1. 19.1.1.2.1.1

              Because not wanting to take the time to do the job right the first time is SOOOO much better, right?

              /face palm

                1. Wrong 6.

                  Just because you can make an excuse that seems to justify behavior from your own selfish vantage point does NOT mean that such behavior is backed by “rational reasoning.”

                  To reach that level, one must look at both the pros and cons of the reasoning, must look at both the benefits and the drawbacks, must look at the reasoning as a whole – not just the one-sided “gee, it’s easier for me if I do this” rationing (that is called deluded self-justification).

          2. 19.1.1.2.2

            Slotguy: I’m glad that you’re not suggesting, as MM did, that the PTO was right.

            I don’t recall suggesting that the PTO was right here. I’m not sure how you arrived at that conclusion. On the contrary, I recognized that the PTO has made mistakes and will continue to make mistakes when applying BRI. That’s because (wait for it): human beings.

            I also recognized that the number of mistaken rejections made by the PTO is dwarfed by the number of correct rejections made by applicants who should know better (and surely do know better in most instances) and the number of missed rejections that favor applicants (at least those applicants who are looking for some broad, invalid claims to wave around to “investors” and would-be licensors).

            1. 19.1.1.2.2.1

              I don’t recall suggesting

              Time for that spin spin spin game…

              number of correct rejections made by applicants who should know better

              Huh?

              Since when are applicants in the business of making rejections?

              You do know whose job it is I examine, right? Do you need a refresher on the Tafas case?

              1. 19.1.1.2.2.1.1

                “number of correct rejections made by applicants who should know better”

                Huh?

                Should be “number of correct rejections of mistakenly filed or drafted claims made by applicants who should know better”.

                Time for that spin spin spin game…

                No idea what you’re talking about. But go ahead and pretend that I said something that I never said. You impress everyone when you do that.

                1. you are on record as not believing that honesty here on the blog is required,

                  I’m on record as observing that you’re commenting here and, if honesty was “required”, that couldn’t be happening.

                  In any event, please keep digging! It’s super fun to watch.

                2. Your “keep digging” exhortations – while it is you grasping the shovel – are legendary.

                  @tta b0y.

          3. 19.1.1.2.3

            I think it’s a bigger issue that the quality of examination has gotten so bad that something like this even comes out of the PTO and needs to get sent up in front of a judge to get it right.

            See here is where you and I differ. While I agree it was a poor examination job and the examiner did fail in their job, the “failure” in the system was not of the examiner’s making. I don’t see this as indicative of a poor quality of examination (though that is fact here), I see this as poor procedures that allow such a large amount of everyone’s time to be taken up because an applicant has money.

            You’re not reading about this case because the examiner made a mistake, you’re reading about this case because the examiner made a mistake and the procedures of the office allowed the applicant to argue an ancillary issue as if it were material.

            Here would be a very simple way to solve the issue: Allow the examiner to add, without causing a second non-final, an enablement/WD rejection to any claim limitation applicant argues the references do not teach. The Applicant knows he didn’t invent wireless communication, and you can tell he didn’t because he made no effort to convey its enablement. That would force the applicant to only argue about things he arguably, you know, invented, and consequently you would not have taken up the board’s, the attorneys’, or the court’s time when the examiner fails.

            1. 19.1.1.2.3.1

              You are most definitely missing the point here.

              Not only was the mistake made, the mistake was pursued by the Office up until that level, and this was NOT a case that the applicant had money so the applicant could “take it there” as much as it was a case that the applicant was forced to spend the money unnecessarily along all those steps.

              You keep on ig noring the fact that you ARE defending a mistake as somehow not a mistake and missing the point that it was defending the mistake that was ALSO a mistake.

              Wake up.

              1. 19.1.1.2.3.1.1

                Not only was the mistake made, the mistake was pursued by the Office up until that level,

                The original mistake was the examiner’s. Once an argument erupted about it the mistake became both sides’, because if the applicant got what he wanted (a finding that the record does not support a conclusion that the art could perform wireless communication prior to his filing) his claim would STILL be rejectable under 112, 1st, because I’m certain he didn’t enable wireless communication in his spec. And in fact he makes it worse, because if he just comments on the issue and leaves it he could argue the issue in post-allowance proceedings. If the examiner were to make a 112 rejection he would have to prove the art could do it himself to defeat the rejection, which would be an admission against him if it came up later. It was wrong for the office to pursue it because the 103 rejection was wrong, and it was wrong for the applicant to pursue it because he knew he didn’t invent wireless communication.

                This isn’t a contest for the applicant – there’s no trophy for winning an argument just to win it. The applicant wants a patent, he should probably confine his argument to those material to getting him there.

                and this was NOT a case that the applicant had money so the applicant could “take it there” as much as it was a case that the applicant was forced to spend the money unnecessarily along all those steps.

                Its never necessary for an applicant to perform a step that won’t lead toward an allowance. Nobody forced him to raise the issue.

                that you ARE defending a mistake as somehow not a mistake and missing the point that it was defending the mistake that was ALSO a mistake.

                ^Just the opposite. There’s more than one person making a mistake here, and you’re the one defending it as a valid act. This goes into the general lawyering knowledge you seem to lack – but there is a difference between arguing liability and arguing remedy. I’m not defending the examiner – I find the examiner is liable, I just suggest a de minimus remedy is the best result for all involved. You don’t even recognize the applicant is also liable.

                1. the mistake became both sides’

                  Absolutely and irrevocably wrong.

                  Full stop.

                  It is simply a matter of kicking dust to hide the wrongness of trying to defend a known error by saying “well, there was something else wrong.”

                  You just don’t get to go there. And by your constant insistence, you continue to show that you just don’t understand the issue – that you are part of the problem of bad examination because you don’t see why the issue is SOLELY the onus of the examiner, trying as you are to kick dust and play the “blame the applicant” game.

                  You should note that NO ONE is saying that the applicant is going to have a patent for inventing wireless communication. NO ONE. Stop with the misdirections already.

                  Stop kicking dust.

                2. “his claim would STILL be rejectable under 112, 1st, because I’m certain he didn’t enable wireless communication in his spec.”

                  omg

                  /facepalm.

                3. Far too many people in this thread are hung up on the alleged crappiness of the applicant’s patent, and far too few on the abysmal examining practice followed by the PTO. Here’s the real issue: the PTO examiner and the applicant are not on equal footing. They are not equivalent parties in a transaction, they are applicant and gatekeeper, with very different rights and responsibilities.

                  One of the rights an applicant has is to file whatever the hell he wants with the PTO (except for a very small number of precluded items, like a perpetual motion machine). That patent application process comes with very few preliminary requirements except those that form the bases of rejections under 35 USC 101, 102, 103, 112, etc. I’d assume there would be a preliminary rejection if, for example, an applicant attempted to file a patent application by audiocassette tape or a series of 3-panel comics. (Just wait, now someone will try.)

                  The point is that the MPEP sets forth the procedure for making a considered evaluation of any application for patent – that’s *any,* not just the well-written ones. The process is simple: applicant writes it up, files, pays the fee, and the examiner gets to work. It’s a straightforward transaction.

                  There is *nothing* in that process that says a patent application must be “probably patentable.” That’s the whole point of the examination process — to make that determination. Obviously there are caveats for when the applicant himself knows (and doesn’t disclose) something relevant to the examination, but if the applicant thinks they’ve invented X, it’s up to the examiner to provide a considered examination of X in view of the prior art. Not take the prior art, invoke all sorts of bizarro hindsight and lexical machination like “walking a flash drive across the room is wireless,” and issue a rejection like the case at hand. There is very little daylight between that logic and the logic that says “everything that is a machine is made from the same star stuff that our solar system was created from, so everything’s obvious in view of the Big Bang theory.”

                  From a policy standpoint, the Constitution and the US Code are very clear on which side of the patent fence they sit. Both are pro-patent and that means examination policy should be geared toward minimizing false negatives (fewer rejected but allowable patents) rather than minimizing false positives (fewer allowed but rejectable patents).

                  But if the PTO is as overzealous as they were in this case (a fact that is universally recognized by everyone here, apparently), it leads to the opposite: far more rejections of allowable material than allowances of rejectable material. That’s bad — that PTO mismanagement increases the cost not just on applicants but on taxpayers overall. You and I just had to pay a federal judge to issue a ruling on this PTO illogic about “wireless”, reasoning that even the most virulent anti-patent crusader would agree was incorrect.

                  In this particular case, if there is (as 6 indicated above) some rational reasoning behind why an examiner would intentionally make the rejection presented *rather than* do a proper analysis, I’d suggest that’s a systemic problem that needs to be addressed in the MPEP somehow. A workflow bug with an unintended perverse incentive, as it were. But it’s a workflow bug that’s costing *all of us* money, not just the applicants.

  2. 18

    If I pick up my land-line phone and call you on your land-line phone number, that’s still a “wireless” communication because the sound waves coming from my vocal cords traveled through atmospheric space before hitting the handset, and again from the earpiece to your ear on the other end of the line. Boom!

    There are lots of other broad and unreasonable constructions for “wireless” if the PTO wants to ignore what the term of art actually means. If I print off a paper copy of a document, put it in an envelope and FedEx it overnight to your office where you scan it into your PC, that’s also a transmission that happened “through atmospheric space.” Nobody in their right mind would consider that “wireless communications” except where it’s acceptable to broaden the definition to include “anything that doesn’t actually involve a wire for 100% of the communication.”

    If that’s the new status quo at the PTO, then the costs to obtain a computer technology patent now include filing a CAFC appeal to argue against nonsense like this. That adds what, 500% to the cost of a patent? I don’t actually know but I’m sure someone can look at fees and billings and figure it out (that might make a good paper going forward — average cost of a patent over time per art unit). In any event, it seems that such a dramatic increase in the cost of a patent wouldn’t exactly promote the progress of the useful arts. That’s only a good result if you think all technology was invented in the 1950s and everything is old hat by now.

    1. 18.1

      If I pick up my land-line phone and call you on your land-line phone number, that’s still a “wireless” communication because the sound waves coming from my vocal cords traveled through atmospheric space before hitting the handset, and again from the earpiece to your ear on the other end of the line. Boom!

      There are lots of other broad and unreasonable constructions for “wireless”

      There’s nothing unreasonable about your analysis. The activity you described falls squarely within the definition given by the applicant. An acoustic wave is a sound wave. If I talk to you face to face, that’s a “wireless” communication according to the applicant’s express definition. It’s also a “wireless” communication according to the plain meaning of the term “wireless.”

      The reason these complaints from computer-implementers continually crop up is because the computer-implementers are not developing new technology but simply applying existing in old, obvious contexts.

      Any digital information can be communicated wirelessly. It doesn’t matter if the information is image information or information about the smell of your grandma’s purse. It doesn’t matter if the information is communicated from a Martian rover or from your Smart NoseRing (TM). Wireless communication — acoustic or electromagnetic — is very, very, very old and there is nothing “non-obvious” about using it any context where information communication is desirable. And that’s *always* been the case since wireless communication was first invented.

      Why is that so hard for the USPTO to figure out? We know why certain applicants can’t figure it out. But what’s the PTO’s problem? Same with “mobile” or “portable” devices and “computers” generally. When does the art grow up?

      Describing these obvious applications of old technology is not patent-worthy innovation. Far from it. It’s free riding and bottom-feeding at the expense of the patent system and the public and people who skilled people who actually work hard to develop technology that actually works (as opposed to legal documents describing a fantasy that a skilled person will need to trouble-shoot and implement).

      1. 18.1.1

        While you are at it, how about applying the same reasoning to mechanical inventions. They all employ the same cogs, gears, screws, etc. as eachother, so they are all obvious.

        1. 18.1.1.2

          Alun: While you are at it, how about applying the same reasoning to mechanical inventions. They all employ the same cogs, gears, screws, etc. as eachother, so they are all obvious.

          The reasoning here is not “the claim recites an old component so therefore it’s obvious.”

          The reasoning is “the claim recites the use of old components for their well-known purposes without any unexpected results therefore the claim is obvious.”

          There’s a huge and important difference between the two.

          1. 18.1.1.2.1

            You seem to want to make an inherency doctrine argument, yet you fail to do more than merely state a bland and unsupported conclusion.

            Try again Malcolm – this time with some substantive merit.

            (and remember that you cannot “just use” the new machine until that machine has been changed by adding the software component that provides the capability that you want to use – you seem to gloss over that very important point on a consistent basis).

            1. 18.1.1.2.1.1

              You seem to want to make an inherency doctrine argument

              It’s not an inherency doctrine argument.

              1. 18.1.1.2.1.1.1

                Whew, that’s a good thing then (for you), eh?

                Still, you seem stuck on making an actual argument instead of merely proclaiming a conclusion.

                You might want to work on that.

                1. you seem stuck on making an actual argument instead of merely proclaiming a conclusion. You might want to work on that.

                  Huh?

      2. 18.1.2

        It’s free riding and bottom-feeding at the expense of the patent system and the public and people who skilled people who actually work hard to develop technology that actually works

        Shallow and even duplicitous words coming from the person who has stated that NO software patent should ever issue.

      3. 18.1.3

        MM opines: There’s nothing unreasonable about your analysis. The activity you described falls squarely within the definition given by the applicant. An acoustic wave is a sound wave. If I talk to you face to face, that’s a “wireless” communication according to the applicant’s express definition. It’s also a “wireless” communication according to the plain meaning of the term “wireless.”

        This is why we can’t have nice things. “Wireless” is a term of art — it means something specific to the technologists who implement the gadgets you take for granted. Specifically, it means transmission of data using electromagnetic frequencies. That’s what PHOSITA would understand from a specification directed toward wireless communications technology.

        But you’re not PHOSITA, are you? You think audio — talking to someone face to face — falls within what “wireless” means. “Wireless audio” is therefore a redundant phrase, no? See http://www.sonos.com for why it’s not, and if you need a physics refresher, “vibrating air” is not part of the EM spectrum.

        Your reasoning exhibits the same casual, breezy, anti-intellectual “common sense” that makes parents skip vaccinations and leads to measles at Disneyland. Why on earth would you intentionally inject your child with a deadly disease? You should choose to believe Jenny McCarthy over the thousands of doctors who have dedicated their lives to improving the health of humankind because she speaks “common sense” and those over-educated doctors are too durned scientifical.

        If the PTO wants to argue that wireless and wired communication are interchangeable under 35 USC 103 for the purpose set forth in the patent, they should marshal the prior art and make that argument. But that’s not what they did – they argued, as you do, that the term “wireless” itself means something far broader than it does. It doesn’t, and saying so doesn’t even come close to passing the smell test. Such transparently flawed reasoning might not trouble you, but it bothers me when it’s promulgated by my government.

        1. 18.1.3.1

          It should bother anyone – and everyone – looking for a legal discussion on “America’s leading patent law source.”

          Downright painful even.

          Eight years and running…

          1. 18.1.3.1.1

            That’s a separate issue. I agree that MM’s sophistry is painful, and while I question the wisdom of Prof. Crouch in tolerating it for eight years, this is his website and he’s footing the bill. I’m not, so if he wants to let anyone into his living room, it’s his prerogative. It’s why, despite having discovered this blog years ago, I rarely interact here. Too much invective, not enough substantive or productive discussion. Moderating a healthy online discussion forum with anonymous participants is *really hard* and doesn’t often overlap with the traits that make a successful legal scholar. You’ll notice that most blogs with comment sections don’t even try because the cost/benefit doesn’t add up. Just look at ESPN — if anyone’s got the funds to hire full-time comment moderators, it’s Disney, yet they don’t bother with one of their premier brands.

            Point is, the PTO’s quality control in this case is abhorrent, and that’s irrespective of whether you think the application itself is patent-worthy. My gripe is with the PTO’s quality of examination, not the patent application itself.

            1. 18.1.3.1.1.1

              Absolutely correct – but one important item to distinguish: when you “cry” about the ecosystem and it is pointed out that a certain blight exists – and has existed the ought multiple repetitions of “ecosystem controls” and you STILL allow the blight, well, that pain you feel belongs to the blog master.

              You are right – it is his choice.

            2. 18.1.3.1.1.2

              For the reasons you’ve brought up, personally I’d not have a comment section. The amount of good conversation is vastly outweighed by the people espousing singular, never-changing viewpoints.

              1. 18.1.3.1.1.2.1

                I think that you and I (at least) are in agreement of a fundamental flaw here.

                Notwithstanding that understanding, the desire to have an “ecosystem” here for dialogue necessitates the understanding that a mere Drive-By Monologue model is simply incompatible with promoting true dialogue.

                If one professes to want the one (Dialogue), but does nothing about the blight of the other (Drive-By Monologue), then the (repeated) calls for “everyone doing their part” sound in the classic definition of insanity – expecting a different result when doing the same thing over again and again.

            3. 18.1.3.1.1.3

              sites without comments are BORING.

              doubtless MM does not really believe that “wireless” in a patent claim means anything but that which we all accept it to mean- rather, he is demonstrating as usual the idiotic scholasticism that has enveloped the patent system around the subject of computers/software.

              No statue can be written to demand common sense among a community that has shunned it….and apparently patent examiners can’t use it either.

              Because software models the world, every single implicit fact about the world will have to be written, or it will be in danger of being patented. Since making explicit everything on Earth that is implicit is impossible, we have the mess we have…..

              1. 18.1.3.1.1.3.1

                Sorry Mr. Snyder, but your supposition of “doubtless MM does not really believe” just is NOT supported by the record here (or on the other recent BRI thread dealing with lamination.

                Further, it is NOT the modeling of any certain fact that is at issue with software, but rather, it is the attempt to foreclose a certain type if innovation and use (think about the difference between math and applied math) of facts (as merely sub parts of any particular claim) and the legal effects (as allowed unconstained by the law as written) with claims as a whole in a well recognized art field that is the single largest art field of modern innovation.

                Like it or not, this field of innovation TOO is meant to be covered by patent law. You simply cannot arrive at your philosophical end point without recognizing that your drive to that end point is based on your mere philosophical beliefs. You have provided NO path to the legal conclusion that you merely wish to have.

                Tenacity alone just does not suffice here.

                1. the single largest art field of modern innovation

                  “Innovating” “new” facts and logical methods for dealing with those facts has always been the largest field of human endeavor.

                  What’s unprecedented is the abuse of the patent system to protect those activities.

                  But you knew this already.

                2. Yet another “with friends like this, who needs enem1es” and Malcolm and his alternate reality view of “abuse”…

                  (Yes, folks – this is the same guy who has stated that ALL software patents are de facto invalid, yet won’t put his money where his mouth is and abstain from those innovations that he would deny patent protection to)

        2. 18.1.3.2

          SlotGuy: “Wireless” is a term of art — it means something specific to the technologists who implement the gadgets you take for granted.

          Tell everyone exactly what this “specific meaning” is. Then compare the meaning to the express definition provided by the applicant. As a reminder, that definition includes the following: “[w]ireless refers to a communications … in which … acoustic waves carry a signal through atmospheric space rather than along a wire.

          Are you going to argue now that “acoustic waves” has some special definition, too? That’s a typical low-level dust-kicking applicant maneuver that we see all the time.

          In fact, as everybody knows, acoustic waves are sound waves. Acoustic waves travelling through atmospheric space includes waves emanating from a loudspeaker or someone’s mouth.

          “Wireless audio” is therefore a redundant phrase, no?

          No, it’s not. Acoustic waves (or adio) can be propagated on a wire or any other non-atmospheric medium, as everybody knows.

          If the PTO wants to argue that wireless and wired communication are interchangeable under 35 USC 103 for the purpose set forth in the patent, they should marshal the prior art and make that argument.

          Or the applicant can learn how to use the English language to describe his invention. Preferably that occurs after the applicant learns what an invention is, something this particular applicant seems deeply confused about.

          1. 18.1.3.2.1

            “rather than along a wire” is sufficient to demonstrate that the PTO got it wrong. Do you actually disagree with the CAFC decision?

            Would you argue that a laptop’s keyboard is a “wireless” input device because your fingers travel through atmospheric space to reach the keys? Do you truly believe that two people speaking on landline telephones are using “wireless communications” because atmospheric sound is transduced to and from the handsets into electrical signals?

            And please don’t pretend that pressure waves travelling through matter are equivalent to electricity travelling through a circuit. Telephone wires don’t carry (or generate) acoustic waves the way piano wires do, they carry electricity.

            It should be plain that methods of communication that predate the invention of wires, like talking, smoke signals, or hand gestures, are not “wireless communications” within the meaning of the term in a patent directed to “a device for communicating digital camera image and video information over a network”. If you get cut off in traffic and you flip the other driver the bird, you are not using a “wireless communications network.”

            1. 18.1.3.2.1.1

              MM Do you actually disagree with the CAFC decision?

              No.

              I do disagree with your analysis at 18 and I’ve already explained why. And I did so nicely, by the way, without personal insults. You were the one who couldn’t help yourself in that regard.

              Anyone surprised? I’m not.

              1. 18.1.3.2.1.1.2

                MM, Jan 31st: “I do disagree with your analysis.”

                MM, Jan 30th: “There’s nothing unreasonable about your analysis.”

                Anyone surprised? I’m not.

                1. MM, Jan 31st: “I do disagree with your analysis.”

                  MM, Jan 30th: “There’s nothing unreasonable about your analysis.”

                  Anyone surprised? I’m not.

                  I’m certainly not surprised that you can pull quotes out of context in what appears to be an intentional effort to create confusion about what I’ve been saying.

                  I’m not impressed, either.

                  But I bet you that “anon” is.

                  Keep up the great work, “SlotGuy”. You guys are cute together.

                2. Out of context…?

                  Seems like he got the context right.

                  Then again, you falsely accused me of taking your absymal mantra of incorrectly portraying the option of writing claims in “objective physical structure” as somehow being the only proper lega way to write claims.

                  Don’t you get tired of being so wrong so often?

            2. 18.1.3.2.1.2

              lease don’t pretend that pressure waves travelling through matter are equivalent to electricity travelling through a circuit.

              Please don’t beat on strawman and attack arguments I never made.

              Telephone wires don’t carry (or generate) acoustic waves the way piano wires do, they carry electricity.

              That’s nice. I never claimed otherwise.

              It should be plain that methods of communication that predate the invention of wires, like talking, smoke signals, or hand gestures, are not “wireless communications” within the meaning of the term in a patent directed to “a device for communicating digital camera image and video information over a network”.

              That depends on how the term is defined.

              You see, SlotGuy, there are a lot of patent attorneys out there who arent very clever. Or worse. There are even some out there who can’t tell the difference between a definition someone actually wrote and a fantasy about something that wasn’t written. Even worse, these patent attorneys can’t tell the difference between an argument that is actually written down in plain English and some imaginary argument that nobody is making.

              Go ahead and ask me how I know this.

              1. 18.1.3.2.1.2.1

                Maybe I’m giving you too much credit. When you wrote, “acoustic waves (or adio) can be propagated on a wire or any other non-atmospheric medium, as everybody knows,” I thought you were part of “everybody” and were being pedantic. Perhaps you don’t understand the difference between how sound travels through air vs. how it travels over a phone line. Here’s a quick physics lesson:

                The way acoustic waves are propagated over non-atmospheric media is the same as it is through air: by vibration. That’s how the children’s telephone toy works (two tin cans and a string or a wire). If you pinch the string in the middle, it can’t vibrate and doesn’t work anymore. It’s also why you can hear an inaudibly ringing tuning fork if you hold it to your temple — the sound travels directly through your bones to your inner ear, bypassing the eardrum, as the fork vibrates your skull. But over a telephone wire, sound is transduced by the microphone into electric signals, and the wire doesn’t vibrate at all (at least not relative to the sound being transmitted) — it’s just an electric circuit. The same is true for headphone wires and the 1/8″ jack on your smartphone. They don’t vibrate – that signal doesn’t turn into acoustic waves until the circuit triggers the magnets in your earbuds to vibrate.

                If you already knew all that, then you’ve being intentionally obfuscatory and my prior critique was well-founded. If you didn’t, it’s further evidence that you’re suffering from the delusion that you already know everything about science and technology and therefore believe everything is necessarily obvious. Which is it?

                Because to your point, one thing that’s worse than a patent attorney who isn’t very clever is one who is ignorant but believes himself otherwise, and then goes on a fervent, prolonged crusade about how everyone’s constitutional rights should be abridged because he can’t comprehend why one technology is different than another and therefore believes everything is obvious in view of technology developed 60 years ago. One of my concerns is that, with the growing anti-science movement in this country, Congress may soon agree with you.

    2. 18.2

      the costs to obtain a computer technology patent now include filing a CAFC appeal to argue against nonsense like this. That adds what, 500% to the cost of a patent?

      So what? Given that computer “technology” as it is presently understood by the patent system requires precisely zero cost to “innovate” there should be lots and lots of money left over.

      “A computer configured to receive information about how a user prefers eggs to be prepared for consumption, wherein said computer is operably connected to one or more cameras that monitor all household activity, wherein said computer comprises a determination module for determining when eggs are ready for said user to consume, wherein said computer comprises a communication module, wherein said module wirelessly alerts said user upon receipt of a signal from said determination module.”

      Can I haz patent now? I’ve invested soooooooooo much time in this. It would be unfair to charge me more than a few hundred dollars for the right to sue deep pocketed IntelliKitchen (TM) after all that “innovation.”

      1. 18.2.1

        required precisely zero cost

        And then there’s the canard that the patent system exists ONLY for those types of things that have a “but for” cost element…

        Just more of the same stale rhetoric…

        1. 18.2.1.1

          the patent system exists ONLY for those types of things that have a “but for” cost element…

          I never stated otherwise.

          Keep beating on that strawman! It doesn’t change the facts but it sure makes you feel good about yourself. And that’s what really matters, right, “anon”? Kiss your bicep again and tell everyone about how you “devastated” all your critics. That’s always fun.

          1. 18.2.1.1.1

            LOL – so which is it Malcolm, you were just bl0wing wind and not saying ANYTHING, or I correctly deduced your implict meaning and identified one of your short script memes?

            What did you mean by:

            required precisely zero cost

            Why did you include that particular phrase?

            Perhaps you might explain yourself instead of kicking up dust…

            (And maybe we will see one of those classic non-responsive *click* responses that highlight Malcolm’s dialogue skills)

            1. 18.2.1.1.1.1

              Malcolm, Oh Malcolm, where did you run off too?

              Questions about the point that you attempted to make need answers.

              I found some “advice” that you might think about following to help you “make your point:”

              If you have a point to make, try typing it out in declarative sentences

              (guffaw)

    3. 18.3

      If that’s the new status quo at the PTO, then the costs to obtain a computer technology patent now include filing a CAFC appeal to argue against nonsense like this. That adds what, 500% to the cost of a patent?

      Lots of procedures would be vexed if you argued every issue. How about not appealing the clearly old limitation simply because the particular citation was in error?

  3. 17

    OT but certainly IP-related and perhaps worthy of a few moments of “Friday Time”:

    link to bigstory.ap.org

    PHOENIX (AP) — It is the game that must not be named — at least not without permission.

    For most people, the game Sunday between the New England Patriots and Seattle Seahawks is the Super Bowl. But for many business owners, it’s simply the “big game” or “game day.”

    Radio hosts are tripping over their tongues and airport signs are carefully worded to keep from referring to it as the Super Bowl, a trademarked name the NFL strictly polices….

    “Like any brand, we work to protect our valuable intellectual property and the rights we extend to our partners,” NFL spokesman Brian McCarthy said…. McCarthy said if a potential infringement is discovered, the league will notify the party involved. If nothing changes, then a cease-and-desist letter follows. McCarthy declined to discuss how many companies have received letters in recent months.

    This is just one of many examples of how trademark laws have been warped and abused. The NFL spends hundreds of millions of dollars shouting and shoving “Super Bowl” into everybody’s face so that we all know what the term refers to. But when people use the term to refer to (wait for it) the Super Bowl (TM <– lol) in contexts that have precisely zero chance of confusing any consumer about who is selling what, get ready for an NFL lawyer to start harassing you.

  4. 16

    Nobody could have predicted that the tightening of the patent laws would lead to reflexive, hyperbolic PTO bashing on the patent blogs (e.g., “the whole function of the PTO’s is to make repeated unfair and ridiculous rejections”).

    Meanwhile, thousands of invalid and ineligible applications continue to sail through the USPTO to the delight of its “stakeholders” and the number of patents granted remains at or near an all-time high. And every week there are fresh examples of patent applicants making arguments that are so desperate the Federal Circuit doesn’t even bother writing an opinion about them.

    1. 16.1

      Ooh, there are some good ones this week.

      Check out 8939768. Truly shocking that this could issue. Decided not to post the independent claim because…well, you’ll see.

      1. 16.1.2

        link to patft1.uspto.gov

        Unbelievable.

        Sample claim elements:

        “wherein the at least one first employer requires references from a plurality of reference providers to be received for each job candidate before the at least one first employer decides whether or not to conduct a job interview”

        “wherein the statistical scores of the first job candidate are benchmarked against statistical scores of other job candidates who applied to a specific position that is at least similar to the at least one first position”

        Never underestimate the extent to which the US patent system has been turned into a complete joke by the lowest form of innovators.

        1. 16.1.2.1

          “the improved computer system programmed for reference checking”

          NEW MACHINE !!!!!!!!

          This is gonna cost some poor sap(s) a million bucks to invalidate, or they are gonna simply be extorted for somewhat less cash by the thrilled new patentee.

          If anyone thinks this kind of BS is good for the software business, they are a patent lawyer or VC, because any reasonable person would be appalled.

          It costs real jobs for real people and does nothing else for anyone but transfer wealth from honest people tying to make good in the software business to patent lawyers and/or parasites.

          There will be a price to pay. Theft on this scale cannot go on forever.

          1. 16.1.2.1.1

            I don’t know, Martin. I think with a reasonably intelligent district judge and defense attorney, you could invalidate this before discovery for <$100k. Still, though…

          2. 16.1.2.1.2

            That’s a might long (read narrow) claim Martin. Are you worried about a poor sap that is already doing this very specific thing that the Examiner could not find evidence of

            OR

            are you worried about a poor sap that wants to do it after she sees how beneficial the claimed methods and systems are and how successful the inventor and his assigns are?

            1. 16.1.2.1.2.1

              I’m in the HR software business Les and I know damn well that people have been doing it for years- and just because nobody patented it, it will now be an albatross.

              IBM Kenexa has been hounding my company for getting on three years for a similar set of claims- something me and my brother wrote, from scratch, in our mom’s family room well before the priority date- and something the dozen odd defendants likely all did without reference to the stupid patent too. Its 5999939 if you care to see the same old same old.

              Their high powered lawyers gets up and argues that using the Internet to submit and verify a resume is a radical innovation- so I have to hire fewer people and burn hard-earned cash into the wind to (eventually) put the patent out of its misery. Oh yea, reasonable settlement is out of the question because they demand more money than we earned in the six year span. And the “value” of the great feature? We took it out and nobody noticed. Not one customer even missed it.

              The system is a joke. People know it. The results will be ugly. And the sad part is I am a huge believer in the importance of patents- to real innovation. It’s literal cancer: what was healthy and useful now overrunning and destroying.

              1. 16.1.2.1.2.1.1

                Part of your problem Mr. Snyder is that you believe (inappropriately) that since you did not directly copy the particular code – whether or not your timing is much earlier) that the one fact alone that you did not copy should be enough to win the day.

                That just is not so. Your attorney really does need to have your informed consent – and you continue to post thoughts that show that she cannot have that because you exhibit such uninformed views.

                Further, you exhibit a lack of understanding the requirements of prior art and the baseline of why there are such objective measures of prior-ness.

                There is very much a philosophical strand in patent law that those hiding their admittedly PRIOR work under a bushel very much run the risk that a LATER person who decides NOT to hide that invention but instead opts for the patent route can displace the earlier person and – this is critical that you understand this – rightfully and legally can be awarded the right to exclude even your prior independent use.

                This is true (objectively) for ALL art fields – and not just your own (rather biased and anti-software patent) art field.

                There is a very good reason your counsel is likely mad at you for your continued postings. If I were your adversary on this matter, I would love nothing more than to be able to get you on the stand and expose your lack of understanding at the fundamental levels that you (continue to) display.

                1. Our work was in use by customers long before the priority date, so that’s “hardly under a bushel”.

                  Software is expression in a language- a form of art to describe a part of the world.

                  Whose limited belief system is systematically undoing the patent system? Yours and your fellow travelers. If software is hardware, why not just implement in hardware and avoid the controversy? |

                  Oh, because there are huge differences between software and hardware.

                  If I use my pitchfork to perforate a local tyrant, instead of using it to pitch hay it must be a NEW MACHINE !

                  There is a reason you can’t patent a work of literature- even a purely utilitarian one. Why do you think that is anon?

                  THE LAW THE LAW THE LAW!

                2. Mr. Snyder,

                  You are embarrassing yourself.

                  If software is hardware

                  “Is”…?

                  What part of my calling you to pay attention to the difference between equivalence and “exactly the same as” did you not understand?

                  Software is an expression in a language

                  What part if the foundational aspect of software is defined to be a machine component and a manufacture in its own right do you not understand?

                  Previously, I asked that you made sure your counsel had informed consent by having her explain to you the exceptions to the judicial doctrine of printed matter. At that time (begrudgingly), you appeared to recognize that your philosophical desire was in fact different than the reality that your counsel described to you. (Your “new machine” squawking shows a severe lack of understanding as to the aspect of functional relatedness)

                  You are backsliding here.

                  As for the plainly v@pid comparison to a work of literature, that too has been explained over and over and over again – and that too, should be a point of understanding between you and your counsel.

                  You tread on very thin ice here by displaying such a deep non-understanding of law.

                  If I were your counsel, I would have serious trepidations – and not just from a tactical perspective – but from an ethical representational perspective.

                3. “If I use my pitchfork to perforate a local tyrant, instead of using it to pitch hay it must be a NEW MACHINE !”

                  No. But that might be a new use of a old machine.

                  What makes the “new machine” I think you are referring to is the new software. That is, the new machine is a combination of components. One component might be an old computation device. However, the other component is NEW software that configures the old component so that it does a new task or performs a new function.

                  The Wright Bros used fasteners (e.g., nails or screws or dove tail joints) to configure old components (e.g., lumber, cloth, rope, etc) in a new way and made a new machine.

                  Likewise software can be used to configure old components (e.g., microprocessors) to be new machines.

              2. 16.1.2.1.2.1.2

                …as to “the sad part is I am a huge believer in the importance of patents- to real innovation

                Quite frankly, and quite simply, you do not get to define what that term “real innovation” means.

                Software is defined as a machine component and manufacture in its own right. It is equivalent (and please please please note that this is expressly different than “exactly the same as”) to hardware and is equivalent to firmware.

                These are basic and fundamental facts that you must accept in any conversation on the merits.

                To the extent that you do not, to the extent that your philosophical belief system prevents you from doing so, you will be so limited – and so exposed in your legal battles.

                Continue riding Rocinante at your own peril.

                1. Continue riding Rocinante at your own peril.

                  Yes, be very careful Martin or “anon” will “devastate” you with his self-serving baloney about “software is equivalent to hardware”. I think it may have already happened! We’ll find out soon enough, I’m sure.

    2. 16.2

      MM, the problem mainly is with computer programming and business method patents, and the widespread use of functional claiming.

      The PTO needs to tighten up there.

      But they also cause a lot of havoc to ordinary folk who do not have a lot of money to deal with the nonsense coming out of the PTO with their wild and woolly claim constructions.

      1. 16.2.1

        “Ordinary folk” file very, very, very, very few patent applications. And when they do, they are almost always treated fairly and professionally.

        There is simply no evidence that the PTO is “out of control” with respect to its use of BRI or any other form of rejection.

          1. 16.2.1.2.1

            Come to think of it, using Malcolm’s “logic” of his eyes composed of layers including the lens, the iris, the aqueous humor, the cornea and the eyelid, one can say that his eyes are laminated shut.

            Explains a lot actually…

      2. 16.2.2

        But they also cause a lot of havoc to ordinary folk who do not have a lot of money to deal with the nonsense coming out of the PTO with their wild and woolly claim constructions.

        If this art unit is anything like mine, try going to appeal just on 101 and 112 and see how far it gets you.

  5. 15

    Does the PTO have any tools to argue obviousness when there is no exact prior art on record? Is there not a large body of knowledge that is so well known that nobody ever bothered to write it down?

    Surely everything written or combined for the first time cannot be an “invention”….

    1. 15.1

      ” Is there not a large body of knowledge that is so well known that nobody ever bothered to write it down? ”

      There are a number of primitive cultures with strictly oral traditions. But the assumption is for modern methods and devices, if it exists it is written about. It is recognized that secretes exist. But, secretes do not prevent someone from patenting something. That is the cost of secrecy and one way the patent system encourages disclosure and promotion of the useful arts.

      1. 15.1.1

        Les, do you think that the patent office should be able to declare your claim unpatentable over common sense without citing any references?

      2. 15.1.2

        But the assumption is for modern methods and devices, if it exists it is written about.

        Find me a date cited reference that describes the method of waiting for a table in a crowded restaurant that a) takes reservations and b) can have cancellations.

        That only happens what? Hundreds of thousands of times a week? Find the method written down.

        1. 15.1.2.1

          Why, right here: US 13/494,861.

          The file history on this one is ludicrous.

          First, to overcome a 101 rejection the applicant added “via a processor” to the claim. Very clever…

          They also noted that because all the dependent claims depend from a claim with a processor, they’re also statutory.

          Impressively, the Examiner didn’t buy it and offered a final under 101. Maybe the USPTO is starting to make some progress…

          1. 15.1.2.1.1

            That doesn’t have anything about reservations and cancellations, nor of wait times of people who walk in. That’s just calculating how long one table might be, not a group of restaurant’s worth of tables, nor does it take into account the different wait times for different size parties (what if a two person table opens up, but you’re a group of three? what if two two person tables next to each other open up).

            This is exactly my point – there’s a ton of obvious stuff that gets done without anyone writing down how to do it.

            Let’s agree that there is partial, similar art from 6/12/2012. Did we not have restaurants with limited seating before then?

            1. 15.1.2.1.1.1

              I agree with you that a lot of stuff doesn’t get written down. I posted the application just because I thought it was hilarious.

              But, as you noted, there is (sadly) enough art out there related to reservations that one should probably be able to cobble a 103 together. But they shouldn’t have to. That’s where 101 comes in.

                1. Eh facepalm yourself unless you can argue with a straight face that the claims in 13/494,861 are patent eligible!

                2. Go,

                  Oddly, my previous response to you has been cen sored (not sure why, as it was certainly polite enough).

                  Anywho, wading into the minutia even just a little reveals that your ploy here is unfounded.

                  You want make it like it was the applicant “playing games” with the “but we have a processor involved” limitation.

                  Sorry – but if you review the file wrapper you would see that such was merely the applicant attempting to comply with the what the Office was asking for: see at least the Office Action dated 05/09/2014:

                  Although Applicant has amended the preamble (an amendment no doubt that certain “advocates” here would say ‘why not just amend and move forward’), of the claim to recite ‘a computer implemented’ method, this amendment is merely a nominal recitation of a computer. it [sic] is still unclear which parts of the method are performed by the apparatus. The Examiner suggests amending the body of the claims to specify the apparatus performing the method.” (emphasis added).

                  Here’s a suggestion: spend less time cheerleading based on your belieb system and more time analyzing the underlying law. If you want to dive into the minutia (or ask others to do so), then you take that dive first and make sure that your “point” is actually reached.

                3. Anon,

                  The Examiner rejected the claims again after the change, properly finding all the claims still invalid under 101. See the office action 8/27/2014.

                4. go,

                  You remain clueless, mired in soundbyte shallow “it must be proper” lack of understanding.

                  You quite miss the point of my post, of the actual file wrapper history, and just why your posts are so laughably, so woefully indicative of your lack of understanding of patent law issues – which not incoincidentally match your cheerleading of Malcolm.

                  Get
                  A
                  Clue

                  (hint: the examiner ASKED for that which he then rejected with a cut and paste statement from a court case that came AFTER the examiner made the request that the applicant complied with).

                5. A couple of points:

                  1. The Examiner asked for the applicant to amend the claim. That’s not the same thing as the Examiner asking the applicant to toss in a generic computer. However, I can’t speak to what the Examiner would or would not have allowed without Alice.

                  2. On July 18, 2014 (Alice was decided June 19), the Applicant argued that because the claims included statutory subject matter, they passed 101. Not a winning argument at all.

                  3. Alice was at least somewhat predictable. Well in advance of Alice I advised a client to abandon an application because I thought this, or a similar, clarification of the law was coming.

        2. 15.1.2.3

          What you described is provided in a Seinfeld episode. Here is a clip:

          link to youtube.com

          This which provides date documentation.

          link to en.wikipedia.org

          The reservation book is shown in the clip, while reservation taking and cancellation are not, but they are in the episode.

          A similar process is illustrated in Ferris Bueller’s Day Off and in the Blues Brother’s.

          1. 15.1.2.3.1

            What you described is provided in a Seinfeld episode

            The joke of that episode is specifically that its not what normally happens (“he always here”), but putting that to the side, you make the same problem most computer applicants do: Disclosure of the result of an undescribed algorithm (“should be 5-10 minutes”) is not disclosure of the algorithm itself (i.e. what steps did he take to get to that result?). In fact, the smaller joke right there is precisely that – the host doesn’t apply an algorithm, he just blindly says 5-10 minutes every time they ask.

            And I love Ferris Bueller, and iirc, all that did was show someone accepting a reservation (with some identity theft going on) right?

            1. 15.1.2.3.1.1

              My recollection is that, in the Seinfeld episode, the process IS shown. That is, one can see the “host” talking on the phone and writing in the book. If nowhere else, the cancellation process is illustrated when our trio leaves, hungers unsatisfied and the “host” calls, “Seinfeld Four” as the door closes behind them.

              My recollection of Ferris and the Bros is foggier. But my point is, documentation can be found. I’m sure reservations get canceled in some movie or work of literature.

              I think Victor Lazlo had reservations (party of two), if you need an earlier date.

              1. 15.1.2.3.1.1.2

                I guess I’ll explain like this.

                When you walk into a restaurant that is full and ask how long it will be until you get a table, the host/hostess performs an algorithm in their head. That algorithm takes in the following inputs: The number of tables in the restaurant, the number and size of parties in line ahead of you, the number and time of reservations around the current time, the chance of cancellation of any of those, the particular seating size of each table, the number and size of parties who will likely be leaving shortly, etc.

                Those inputs are taken and “something” is done in the host’s head to convert those inputs into a time value. The host then responds with the time value. Show me a disclosure of the “something.” Not a disclosure of the fact that reservations are made (i.e. an input) or a disclosure of the “5-10 minutes” statement (i.e. the result). Show me the something. Show me the calculation that occurs that allows the host to take the inputs and estimate the time based upon them. In claim parlance, you have failed to prove the “determination” step has all of the qualities required. Surely you don’t need obviousness for this, right?

                Its 7pm, I have a twenty table restaurant of which four seat two people and ten seat four people, the remaining six tables are for parties of 6 or more. The length of time for which each table has been occupied is as follows: 2seater – 10, 18, 40, 55 minutes. 4seater – 3, 17, 22, 25, 30, 44, 47, 50, 60, 78. There are two reservations for 715 – a party of 2 and a party of 4. A party of 3 walks in and asks how long till they will be seated. Prove prior art disclosure of the algorithm that converts the values into a number, and tell me what the number would be.

                I find it surprising people are resorting to video evidence, as the initial statement Les put forward is “But the assumption is for modern methods and devices, if it exists it is written about.”

                1. First of all what you asked for was:

                  Find me a date cited reference that describes the method of waiting for a table in a crowded restaurant that a) takes reservations and b) can have cancellations.

                  That was satisfied by the Seinfeld episode. The method of waiting was shown. Additionally, the restaurant took reservations (the reservation book is shown) and could have cancellations (how could it not?).

                  If you want to hold me to “written” evidence, then here is the script for the episode:

                  link to seinfeldscripts.com

                  complete with a reference to the reservation book :

                  (Elaine puts the bill on the open reservations book)

                  And the publication date information:

                  Episode no. 16
                  pc: 206, season 2, episode 6
                  Broadcast date: 23 May 1991

                  The wait time estimation algorithm you ask for now is a moved goal post.

                  Furthermore, one of ordinary skill in the art would understand that there is no algorithm per se. The estimates are made by a neural network based on prior experience/training.

  6. 14

    This case is a great example of why I refer to the rule as the Broadest unReasonable Interpretation (BuRI). Defining “wireless communication” to include flash drives or “streaming video” as including a multitude of single file still shots isn’t remotely reasonable. If a client asked me to do that, I’d refuse. I couldn’t argue it with a straight face. I don’t understand how this rejection made it to the CFAC. Even the USPTO Solicitor admitted it was BolShevik (BS).

    The BuRI rule needs to be applied in light of the Specification. In this case, it appears that the Specification pretty clearly defined the term “wireless communication.” The Examiner’s imagination should be limited by the Specification and any evidence presented during prosecution. If the Examiner had been a little reasonable, this ridiculous rejection and appeal would have never happened. And if the Examiner’s boss had done his job right, he would never have let this rejection leave his art unit.

    1. 14.1

      The BuRI rule needs to be applied in light of the Specification. In this case, it appears that the Specification pretty clearly defined the term “wireless communication.” The Examiner’s imagination should be limited by the Specification and any evidence presented during prosecution. If the Examiner had been a little reasonable, this ridiculous rejection and appeal would have never happened. And if the Examiner’s boss had done his job right, he would never have let this rejection leave his art unit.

      I largely agree.

      I would say this

      1. If the claim term is defined in the specification, the definition controls.

      2. If the construction of the Office is inconsistent with the specification, the construction is unreasonable.

      3. Any clear disclaimers found in the specification should also be taken into account.

      In In re Morris, we said that the claim term at issue was a different, and improved by way of reducing motor vibration as illustrated by a certain reference. Clearly a construction that would read the claim term on that reference is per se unreasonable. Yet we lost the case, and I do not understand how we lost.

  7. 13

    Seems like a lot of expense for very little or perhaps nothing. Could this whole conflict have been avoided if the applicant merely amended the claim to include the definition from the spec for “wireless” that they argued should be applied? Does that not overcome the examiner’s rejection and give the applicant exactly the scope they argued for on appeal and FedCir review? I think we practitioners sometimes lose sight of practicality just for the sake of argument.

    Something like “wireless communication module configured to communicate by electromagnetic or acoustic waves carrying a signal through atmospheric space rather than along a wire.” Something similar for streaming video. Rejection withdrawn.

    1. 13.1

      Seems like a lot of expense for very little or perhaps nothing. Could this whole conflict have been avoided if the applicant merely amended the claim to include the definition from the spec for “wireless” that they argued should be applied?

      Yes.

  8. 12

    This is going to be one expensive patent once it issues.

    I’m so tired of the PTO making it so expensive to prosecute cases with repeated unfair and often ridiculous rejections.

    1. 12.3

      There should be a penalty against the USPTO for making such frivolous rejections and forcing an appeal. The entire cost of filing and arguing the appeal should be compensated and the entire delay should be restored to the patent term. Unfortunately, the Examiner will just come up with new grounds of rejection that may or may not be any better than these and the whole ridiculous fiasco will go on sucking up money and time.

      1. 12.3.1

        Unfortunately, the Examiner will just come up with new grounds of rejection that may or may not be any better than these

        Why is that unfortunate?

        1. 12.3.1.1

          Why do you continually harass anyone that is not anti-patent like you?

          Your homework MM is to write a 5,000 word essay on why it is unfortunate. I bet if you applied your nasty little brain to it that you could get it done in a fortnight.

          Why is it unfortunate. Take a guess, troll boy.

    2. 12.4

      This is going to be one expensive patent once it issues.

      It’s also going to be expensive to enforce given that there doesn’t appear to be a valid, eligible invention disclosed anywhere in the application.

      But I doubt it was a very expensive application to draft. And it couldn’t have cost much to “develop” since there are no unexpected results. It’s just a collection of old functionalities, doing exactly what they prior teaches they should do in the context of (whoopee!) a digital camera. So shiny! So exciting!

  9. 11

    Given the combination of “animosity” of claims passed to issue that have passed BRI (the current attack on breadth), and the apparent animosity of improper use of BRI on claims that should pass to issue but are held back by examiners,…

    Should BRI be retired as an examination tool by the Office?

    Would not a TRUE on-the-record claim construction – like an actual court claim construction – be a better tool for passing claims to issue that are more in line with what will be the clear limits of patent claim (e.g., notice)?

    One possible impediment: the possibly unforseeable multitude of nuances (each and every word, every comma – or lack of comma – every ‘wherein’) that may play out in one challenge (but perhaps not in another) over the course of a patent’s enforceable lifespan. There is a fair argument that such an unknown (and unknowable) factor imbues a type of Heisenberg uncertainty (ambiguity) factor that will forever deny the best attempts by either the patentee or the Office from reaching absolutely nonambiguous claims (I am reminded of Lemley’s paper concerning the fact that we cannot obtain perfect examination).

    1. 11.1

      Anon, as you know, I was counsel on In re Morris. What you don’t know is that I was chief patent counsel of the company who’s patent application was involved in that case. I brought the issue of broadest reasonable interpretation to the Federal Circuit because I thought the patent office construction of the claim term at issue in Morris was beyond unreasonable, and entirely inconsistent with the specification.

      Even though we lost the case on the merits, and we should not have lost the case, we still won because Morris help to define the methodology the patent office must go through to justify its construction under broadest reasonable interpretation. In the final analysis, the PTO’s claim construction must the understand of one of ordinary skill in the art, and may not be inconsistent with the usage of the term in the specification.

      The only difference between broadest reasonable interpretation and traditional claim construction, if properly applied, is that if there are two possible constructions, equally reasonable, one chooses the broader construction in the patent office. But reasonable is not completely inconsistent with the specification.

      1. 11.1.1

        With all due respect Ned (and granted, with the benefit of years of hindsight), I am underwhelmed with the In re Morris case from reading the decision.

        I will grant that perhaps the write-up of the decision does not do your efforts “justice,” but that decision renders a rather unkind view of the attempted argument used.

        (It may well be a case of “bad facts make bad law”)

        1. 11.1.1.1

          anon, if you read the spec., it clearly defines the claim term at issue, and distinguishes that term with the prior art which art the PTO construed the claim term to cover.

          One stepping back would ask, how could we lose?

          Well, at oral argument, the Solicitor kicked a lot of mud at us, impugning our motives, etc. I think that is why we lost.

          Richard Stern, our lead counsel, might chip in here to help explain. But we should not have lost.

  10. 10

    I thought footnote 1 was interesting: “Nothing in this case implicates the deference to fact findings contemplated by the recent decision in Teva . . . .” Kind of a short-hand way of dispensing with controlling authority. Going forward, I wonder if this is how the Federal Circuit will treat the standard of review for claim construction issues in PTO appeals, at least in ex parte cases.

    1. 10.1

      I do not think the footnote is to be taken in a “dispensing” matter at all.

      Note the caption and posture of the case : “In re” and from the board.

      As such, there can be no matter of extrinsic fact development here that would implicate the Teva holding.

      1. 10.1.1

        Note the caption and posture of the case : “In re” and from the board. As such, there can be no matter of extrinsic fact development here that would implicate the Teva holding.

        Are you suggesting that an examiner cannot make a finding of fact as to what the standard meaning of a phrase in the art is? If so, you’ve just rewritten just about everything with respect to affidavits as well.

        1. 10.1.1.1

          Not at all.

          All I am doing is drawing the distinction made in the Teva case concerning explicit and implicit (on the record) facts / note that part of the Teva case when you read it (for the first time?)

    2. 10.2

      In general, under what standard are the PTAB findings involving questions of fact reviewed by the CAFC? Are they reviewed like a JMOL by a district court, or with deference to the PTAB?

      1. 10.2.1

        Findings of fact made by the PTO are reviewed for substantial evidence – the same standard used to review jury verdicts based on fact findings.

  11. 9

    This application was filed in 2000. Streaming video was old. Wireless technology is old. How on earth could these functionalities even be relied on for patentability over the prior art?

    Check out this line from the specification: According to one aspect of the invention, image information may be recorded using a digital image capturing device (digital camera) and communicated to a network for processing.

    These guys honestly believed they invented the method of recording information digitally and communicating it to a network? Really? In 2000?

    Oh wait. Somehow the content of the information is supposed to matter. In this case it would be “image” information. But communicating digital information about an image was also older than the hills when this application was filed. Nobody ever believed that “image” information was incapable of being transmitted wirelessly (indeed, there are zero types of digitial information that are incapable of being transmitted wirelessly) so that can’t possibly be inventive.

    The next sentence in the specification: An identifier may be associated with the image information for processing the image information.

    Wow! An “identifier”. Because nobody ever thought of including “identifiers” when transmitting information before.

    It’s ridiculous that the PTO, much less Federal court, is forced to waste it’s limited time and resources on this functionally claimed information processing junk.

    1. 9.1

      Y a w n…

      A part of a claim was old…

      Big box of electrons, protons, and neutrons rebuttal.

      Can we just dispense with the canards, Malcolm?

    2. 9.2

      Then the examiner should have been able to come up with relevant prior art instead of reading “wireless” out of the claim with BuRI.

      1. 9.2.1

        Scott: Then the examiner should have been able to come up with relevant prior art instead of reading “wireless” out of the claim with BuRI.

        Nothing the examiner said or will say changes the fact that the applicant seems to have been born one day before the application was filed or completely misunderstands what an “invention” is.

  12. 8

    “the Federal Circuit refused to hear the new theory as not properly on appeal.” Why is the Solicitor wasting valuable time?

    1. 8.1

      Perhaps the solicitor could have (upon seeing the errors while reading the CAFC appeal brief), instructed the examining unit involved to withdraw their rejection and issue a new rejection based on the soliciter’s new theory. Then the solicitor could move to dismiss the appeal as moot, and save their time, the CAFC’s time and about half of the applicant’s counsel’s time, and put it back on the examiner. The applicant would get patent term adjustment, and the USPTO avoids embarrassment. On the other hand, even if non-precedential, I’m glad for the CAFC guidance and examiner and PTAB rebuke. Also, counsel and applicant got an easy (if pyrrhic) winner at the CAFC.

      Regarding the future of this case, the MPEP has strong words regarding further rejections after an appeal result favouring the applicant. IIRC, something about having to already have knowledge of the pertinent reference, rather than license to “do over” the whole examination.

      1. 8.1.1

        Brad,

        While I believe that you are correct with the pyrrhic nature of the victory here, the notion of the MPEP “being strong” against any type of post-appeal complete do-over is equally pyrrhic, as there is no “punishment mechanism” for examiners who so do engage in such actions (and quite arguably with SAWS, every impetus to so engage in such actions). That such new fishing expeditions occur can be easy to spot, since sometimes the dates (and search parameters) of post-appeal searches fall into the public record.

        There is no option to “undo” such a search, and applicants must respond to the results no matter how badly or unreasonably those results are construed in a post-decision Office Action.

        When you have no mechanism to stop the action (and hidden unknown internal mechanisms prompting the action), what do you think will realistically happen (and continue to happen)?

      2. 8.1.2

        I’m with you, Brad. It seems to me that the solicitor ought to be able to “settle” cases like this. There can’t have been any serious doubt regarding the outcome of this one.

          1. 8.1.2.1.1

            Perhaps better, the Solicitor should file his brief as an amicus of the patent applicant, supporting his appeal.

            It makes no sense to waste the Federal Circuits time on unjustifiable positions taken by the Board.

          2. 8.1.2.1.2

            Presumably, Ned. But that approach would cause unnecessary delays and unnecessary work for at least the clerk’s office at the court.

      3. 8.1.3

        Regarding the future of this case, the MPEP has strong words regarding further rejections after an appeal result favouring the applicant. IIRC, something about having to already have knowledge of the pertinent reference, rather than license to “do over” the whole examination.

        Sure, let the claim issue for the sole reason that wireless communication wasn’t taught, see how far that gets you with a presumption of validity.

  13. 7

    Many of us have been complaining for sometime that BRI can be abused because there is no clear definition of what it is. As a result, examiners at time come up with some wild and wholly constructions.

    This may not have been a problem historically with BRI only used in the original ex parte prosecution, but it is clear that BRI has no place in determining the validity of the original claims in issued patents.

    None at all.

    The procedure, sanctioned by the Federal Circuit, borders on a lack of due process if nothing else. It is high time that the Federal Circuit limits the doctrine post-grant to only proposed amendments and new claims.

    1. 7.1

      Ned,

      As discussed previously, the AIA has removed the “none-at-all” notion now that at least one post grant mechanism covers more than just prior art.

  14. 6

    I have on more than one occasion put forward the concept of broadest unreasonable interpretation, which sometimes characterizes the approach of the USPTO and other patent offices.

    In KSR, the Supreme Court adopted a common sense standard. I cannot help feeling that the more appropriate approach is “common sense up, common sense down”, analogously to “loyalty up, loyalty down.” If our clients’ submissions are to meet a common sense standard, then our clients have a right to expect common sense from those who rule on them. The USPTO approach here exuberantly falls short of the common sense standard.

    1. 6.1

      Paul: If our clients’ submissions are to meet a common sense standard,

      Did this applicant’s submission meet a common sense standard?

      This applicant wrote: According to one aspect of the invention, image information may be recorded using a digital image capturing device (digital camera) and communicated to a network for processing.

      Common sense tells me that this applicant has no clue about what an invention is or isn’t.

      1. 6.1.1

        What an invention is…?

        Coming from the Red Queen who has preemptively declared that all software patents are de facto invalid, yet refuses to put his money where his mouth is and abstain from all innovation related to software, I am reminded of that old empty wagon clanging noisily down the sidewalk.

        Where are you in a rush to, oh child with the empty wagon? Off to the edge of the field of rye to protect all those other children running through the field?

  15. 5

    ” the term “wireless” to refer to methods and devices that carry waves through
    atmospheric space”

    Kewl… so, if I operate in the vacuum of space, I’m not infringing.

    In space: NO ONE CAN HEAR YOU STREAM

    1. 5.1

      “In space: NO ONE CAN HEAR YOU STREAM”.

      Now that right there’s FUNNY; I don’t care who y’are, I tell you what.

      Also pretty clever.

  16. 4

    Obviously, the sample size is too small to draw any big picture conclusions but my hope is that the CAFC continues down this path of reversing the PTO/PTAB on claim constructions that result in claims being found invalid. That may (and I say “may” because I’m not sure the PTO really cares what the CAFC does) curb the PTAB’s enthusiasm to continue to invalidate patent claims at current levels.

  17. 3

    I’d like to see for myself just how unreasonable the PTO was in applying the BRI, but apparently this application hasn’t published so the file history is unavailable. That, or PAIR is just acting up right now. I feel sorry for whoever is footing bill for this application, because Dennis is right – after this rebuke from the CAFC, the PTO is just going to go and find some other publication to cite (perhaps correctly, but then why couldn’t it have cited that publication earlier instead of standing on some half-baked assertion that’s the logical equivalent of “day is night”?) And we’re still going to see BRI rejections that ignore the “reasonable” component.

      1. 3.2.1

        What then, Ned, when the Court re-adopts a pre-1952 “the only valid claim is one that has not appeared before us” and IS the particular branch that is not according due respect to the separation of powers and the allocation to write statutory law (sans implicit or explicit common law additions such as some sort of “technological arts” requirement)?

        I hear your protests in the executive/judicial branches tussle, but still remember your lack of conviction in the legislative/judicial branch tussle.

        May I remind you that the separation if powers doctrine exists so that NO single branch (not even the judiciary and the accounting-to-no-one-nose-of-wax mashers) had undue power.

        May I also remind you that patent law is purposefully and expressly statutory law. That power can be shared with another branch – I have cited sections of 35 USC that use such indicated language – but note that 101 simply does not have that language.

    1. 3.3

      I believe the issue is the filing date. As I recall (from my own attempts at accessing the file wrapper), the filing date was sometime in 1999. That date (what ever it was) predates PAIR, which I think began operation sometime after the turn of the century (2001 or so?). So, there is no “image file wrapper”.

  18. 2

    The USPTO’s solution ought to be firing the examiner and the PTAB judges advancing these nonsensical claim constructions.

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