Federal Circuit: Testing Vehicle Operators for Impairment is an Unpatentable Abstract Idea

Vehicle Intelligence v. Mercedes-Benz (Fed. Cir. 2015) (Non-precedential opinion)

Vehicle Intelligence and Safety LLC is the owner of United States Patent Number 7,394,392 vehicle safety improvements. In particular, the patent claims systems and methods for testing vehicle operators and then taking control of the vehicle if the operator is deemed impaired. Senior Judge Hart of the Northern District of Illinois ruled on the pleadings (12(c)) that the asserted claims were invalid as being drawn to patent-ineligible subject matter under Section 101 of the Patent Act. On appeal, the Federal Circuit here affirms – holding that “the disputed claims cover only abstract ideas coupled with routine data-gathering steps and conventional computer activity.” An early potential strike against the patent that the inventor, Kevin Roe, is also the patent attorney who prosecuted the case and the litigator who filed the appellate briefs.

Claim 16 reads as follows:

A system to screen an equipment operator, comprising:

a screening module to screen and selectively test an equipment operator when said screening indicates potential impairment of said equipment operator, wherein said screening module utilizes one or more expert system modules in screening said equipment operator; and

a control module to control operation of said equipment if said selective testing of said equipment operator indicates said impairment of said equipment operator, wherein said screening module includes one or more expert system modules that utilize at least a portion of one or more equipment modules selected from the group of equipment modules consisting of: an operations module, an audio module, a navigation module, an anti-theft module, and a climate control module.

In applying Alice Corp., Federal Circuit began with step one – is the claim drawn to ineligible subject matter? Answer: Yes. Here, the court found the claims directed toward “the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment.”

Although the court did not explain particularly how the testing of operators for impairment fits within the definition of an abstract idea, the court made clear that one element of its decision was based upon the fact that the claims were broadly written and not limited to particular impairments, particular screening or testing methods, the method of programming the claimed “expert system,” or the “nature” of the control.

[C]ritically absent from the entire patent is how the existing vehicle equipment can be used to measure these characteristics; assuming these measurements can be made, how the decision module determines if an operator is impaired based on these measurements; assuming this determination can be made, how the decision module decides which control response to make; and assuming the control response decision can be made, how the “expert system” effectuates the chosen control response. At best, the ‘392 patent answers the question of how to provide faster, more accurate and reliable impairment testing by simply stating “use an expert system.” Thus, in the absence of any details about how the “expert system” works, the claims at issue are drawn to a patent ineligible abstract idea, satisfying Mayo/Alice step one.

An important take-away from this analysis is that the concept of an abstract-idea is closely tied-in with the novelty of the claims themselves – even at step-one of Alice. Thus, contrary to what many patent attorneys continue to believe, whether a concept is an “abstract idea” will depend upon the invention’s priority dates. However, on that same point, the Court rejected Vehicle Intelligence’s argument that its claim did not embody that broad concept of “testing-operators and taking control” since prior patents held by other companies already disclosed and claimed other methods of achieving those same results. The court rejected that notion since full-preemption is not a requirement of the Alice test.

Readers will also notice the linkage between the court’s analysis for eligibility and the doctrines of written description and indefiniteness. The suggestion in this case appears to be that the same claim could have been eligible if the patentee had provided (in the specification) a full explanation of how to implement its system.

On step two of Alice, the court found that “nothing” in the claims disclosed “any inventive concept sufficient to transform the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment into a patent-eligible application of that idea.” On this point, the patentee argued that its claims were tied to particular device (one of “an operations module, an audio module, a navigation module, an anti-theft module, and a climate control module.”). However, the court found that the patent did not include enough of an explanation of “how the methods at issue can be embedded into these existing modules.”

The court also notes that being “tied to particular machines” is not “sufficient to confer eligibility.”

Although non-precedential, the case will certainly reverberate – especially the court’s refusal to limit the definition of ‘abstract idea’ and its continued acceptance of judgment-on-the-pleadings as the proper method for dismissing cases on Section 101.

Joe Herndon at Patent Docs has more.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

196 thoughts on “Federal Circuit: Testing Vehicle Operators for Impairment is an Unpatentable Abstract Idea

  1. With echoes of “politeness” being neither hot nor cold, we have here a prime example of a “bubble chamber” effect of confusing (and conflating) several critical aspects of the conversation and the resulting v0m1tfest:

    Useful Arts versus Non-Useful Arts
    (including the absolutely horrible and illogical attempt at analogizing stories to a book as some type of “same relation” of software to a machine – missing the critical aspect that software is a Set C printed matter, while a story is a Set B printed matter.

    Entirely mucking up the differences of the single pre-1952 paragraph and the change in law as enacted in 1952 that broke apart that single paragraph into separate sections of 101/102/103/112.

    Misapplying “terms sounding in function” with pure functional claiming (and attempts to simply disregard the Vast Middle Ground based on nothing but a lack of understanding of what that term means (the “feeling” that such is not good law…) – further conflated with a wrong view of the optionality of 112(f) and the FACT that terms sounding in function were permitted – by Congress through the Act of 1952 – to be used, even outside of 112(f).

    A fundamental lack of understanding on the Ladders of Abstraction concept – exhibited both in not recognizing that easily over 95% of worthwhile claims – in ALL art units – use this technique AND not recognizing that the ladder has more than two rungs. Random confuses himself with my reference of equivalence as the use here that I reference was explicitly the MathS philosophy concept and not the hardware/software concept. This goes hand in hand with Random’s long mistaken belief as to “code” level claiming and his bizarre refusal to understand the Art view as deeply explained by POiR.

    The immediate case may indeed F A I L – but the means to that Ends are critical to understand and “get right.” Problems of obviousness, possession, breadth, are NOT the domain of the law of 101: the broken scoreboard IS an issue when the Supreme Court attempt to hold onto a power that was removed by Congress, and the resultant free-for-all (e.g. the limitless “Gist/Abstract sword) simply is NOT the “right balance” that Random wishes to present.

  2. With echoes of the endless haranguing between MM and Night Writer, we have at 9.1.1.1.1.1.2 the very articulate Random Guy, a self-confessed PTO Examiner in the computer program arts and well able to express himself clearly, writing this:

    “I’ve said – I claim a system comprising a book and a new story. The book is clearly within the useful arts. Nobody is suggesting that when the book was invented it was ineligible subject matter for a patent. I think we all agree that a story, in and of itself, is not useful. But that’s just one aspect of the system as a whole. Many of the 101 cases do this as well – in Mayo there was certainly treatment of a disease utility, but the novelty lay in the ineligible aspect which in and of itself was not useful.

    So do we ignore the non-functional aspects altogether? Do we count them for some things and not others?

    If I have a book with a novel story in it, is it anticipated by another book because the story is given no weight at all? Is it obvious over another book with words in it? Or does it surpass the prior art rejections and fail for some other reason?”

    I like Random’s questions. I know how they are answered in the established caselaw of the EPO (and hence throughout Europe). But I don’t know how in the USA.

    I know that Night constantly reminds us that software is a machine component whereas MM likens it to text in a recipe book. It pleases me to think that the SCOTUS justices have by now worked out how to decide what patentable weight to give to software features in a claim, even if they haven’t yet effectively communicated their current thinking to the world outside their four walls.

    Or have they? If so, somebody should tell the commentators on this blog.

    1. Max, indeed, the Supreme Court has struggled with claims that include both eligible and ineligible subject matter. The lower courts have kept it simple by giving no weight to the ineligible in any patentability analysis. But the Supreme Court has never yet spoken of “weight.”

    2. I’m not surprised Ned that they “struggle”. I know that at the EPO the issue whether a non-technical feature in the claim can endow the claim with patentable novelty awaits ultimate resolution. One day soon, the question will be referred up to the ultimate authority, the Enlarged Board of Appeal, as soon as a case comes along that forces the question to be addressed and answered. Up till now though, the Boards of Appeal have always found a judicially economical way to resolve cases rigorously under the other provisions of the EPC that determine patentability, mainly Art 56 EPC obviousness.

      But sooner or later Art 54(3) EPC will be determinative, and then there’s no Art 56 escape route.

      Why the extreme reticence at the EPO? Because now that the Art 84 (clarity) issue has been sorted (G3/14) it’s the last remaining “hard problem” under the EPC, and the EPO wants to be as prepared as it possibly can be, when the time comes that the question can no longer remain unanswered.

      I guess it’s similar in the USA.

  3. Regarding abstract ideas and their “pre-emption” Random Guy writes at 16.2.1.1 a post that I think deserves wider attention so I reply to it here rather than directly below it. Sorry, Random, that I didn’t see it and reply to it straightaway when you posted it.

    I think that “freeze branding” (when it was invented) was a brilliant invention, exactly what the patent system should protect. And I think that my claim is commensurate in scope with the valuable insight, the flash of inspiration, the invention which has so usefully contributed to the art. I think my broad claim is enabled over its full scope, is definite and clear, and does admirably the job of stimulating designs around. What’s not to like?

    But Random doesn’t like it at all. Nor does MM. They have a slew of objections but note, readers, they are not the same ones. Random majors on his “scope not enabled” and indefiniteness points whereas MM thinks the claimed subject matter was all egregiously obvious. Me, I think the current hubbub about pushing the eligibility/patentability envelope in computer/internet commerce and pharma fields has obfuscated consideration of the basics of a properly functioning patent system. Bad cases make bad law: that sort of thing. I should welcome Ned’s rubber-tipped pencil jottings on the matter, as well as constructive thoughtful comment from others because, if MM and Random are right then I want to be convinced, so I can write in future claims to a great new invention that are of a scope which is proper to issue. So far though, I am not at all convinced by any of their assaults on the validity of my claim. I think they simply see its scope as somehow a threat, and dangerous to the system. Especially for MM, a defender of “absolut Stoffschutz” ie claims to “Molecule X” I find that a bit rich. See, readers, MM and I do not always agree. Sometimes we hold opposed positions. I thought I had better add that, in case any regular readers had not noticed yet.

    1. It might help MaxDrei if you were to better explicate what it is about each of Random’s and Malcolm’s views that do not convince you.

      As it is, you have been polite, but ineffective in your responses to either. I am not calling for you to be disrespectful, but I am calling on you to differentiate your position and make a case as to why their views do not (actually) convince you – and more than just a “feeling” why they do not, if you please.

    2. ..and did you bother to read (at all) the post from outside of your “bubble chamber”…?

      That post was direct, and even polite (and objectively more polite than the response at 16.3.1.1), and yet, not a word or comment, but merely – and only – more fawning from you to those whom you share a “larger view” of the patent system – (the bubble).

    3. Max, the combination of known branding by applying heated brand and known whitening by freezing at the temps of liquid nitrogen renders “freeze branding” obvious. Where is the new functionality? I would think that to get a patent one here must at least develop some new technology rather than “combine” two existing technologies without changing either them any way.

      For example, if there was a problem in branding with liquid nitrogen that was overcome by some technique that the inventor had discovered, that is where invention begins.

      1. Ned,

        One (rather important) wrinkle that you need to weave in to your conclusary finding: POS I T A.

        Be aware of – and beware of – the tendency to expand “the universe” of 103 art into “the universe” of 102 art. The mere fact that you are combining items pre-existing does NOT necessarily create the (de facto) finding of obviousness.

        1. Yes it does, anon, unless there are unexpected problems in the combination.

          Hotchkiss set the standard. In Hotchkiss, there was a known doorknob configuration and the use of Clay for doorknobs was known. The combination of the known doorknob configuration with the known utility of clay for doorknobs rendered a combination the work of one of ordinary skill in the art.

          The same can be said here the combination of the known branding technique with known utility of freezing at the temperature of nitrogen for marking animal hides. The combination brought nothing to the table that was not known.

          1. The same can be said here the combination of the known branding technique with known utility of freezing at the temperature of nitrogen for marking animal hides.

            That’s just it, Ned – you are doing what you “just” cannot do: merely “say.”

            You have to “show.”

            The point here is that such may be obvious – or it may not be obvious, and the exercise of determining that is NOT a merely “say.” You have to show – in the art. Otherwise what you are doing is falling to a de facto expansion of the 103 world into a 102 world. You are “saying” obvious on nothing more than mere existence – as opposed to that existence being within the art.

            1. ..so, no, Ned, you are just not correct to say “yes, they can be combined = de facto obvious”

              That is legal error.

              You need more – and just cannot take that short cut that you want to take.

                1. As I plainly and directly stated Ned: your post is in error because you attempt a short cut.

                  You just cannot do that.

                  As I also stated, the hypothetical may – or may not be – obvious based on the “I T A portion of PHOSITA.

                  If you are changing your position to match mine, simply say so.

                2. Ned, sorry for not making myself clear. The 20 year old Paper in The Lancet that notes the permanent whitening effect on hairs growing from skin subject to a short sharp freeze was not in any field of technology, just in scientific research. How the Inuit survive, their genetic development, whatever. Of course, if it had been in an Inuit Manual of tattooing techniques to prettify their bodies I grant you, that might make freeze branding obvious to the person of skill in the skin marking/decorating arts.

                3. Max, I think the answer depends upon whether one in the tattooing art would even look or be aware of the freeze/whitening paper. It does seem, on reflection, a bit farfetched.

      2. Ned said: ” I would think that to get a patent one here must at least develop some new technology rather than “combine” two existing technologies without changing either them any way.”

        So then Ned, what say you of the cotton gin? A box, a comb, a hopper, a crank handle. Is this the mere combination of existing technologies not worthy of a patent or does the crank handle perhaps represent a satisfactory new technology?

        1. (likewise with Diehr… unless Ned wants to again confuse the issue and ig nore that a single instance of rubber is somehow not cured but once)

        2. Les, I am not so certain about the cotton gin, but a claim to a new structure which combines elements all of which are old in a unique way is in fact new technology. That is why I think one cannot simply say that I claim “freeze branding.” But I need to do is describe something unique that did not exist before in either the traditional branding technologies or in the prior art nitrogen marking technique.

    4. MD: I think the current hubbub about pushing the eligibility/patentability envelope in computer/internet commerce and pharma fields has obfuscated consideration of the basics of a properly functioning patent system.

      That’s ridiculous, MD, because the “hubbub” is all about what kinds of patents a “properly functioning patent system” should be granting, and what such a system needs to do in order to grant them.

      Random doesn’t like it at all. Nor does MM. They have a slew of objections but note, readers, they are not the same ones. Random majors on his “scope not enabled” and indefiniteness points whereas MM thinks the claimed subject matter was all egregiously obvious

      So what? Broadly written claims fail for multiple reasons all the time.

      I think they simply see its scope as somehow a threat, and dangerous to the system.

      *sigh*

      All I said is that your claim seemed incredibly obvious in view of the prior art that you provided us with. Just my opinion. Your claim doesn’t represent any “threat” to the system and if it was just that one claim being granted I don’t think anyone would care one way or the other about it, except maybe some hide-branders.

      What concerns me (and many other people, I think) is the idea you appeared to be pushing with your hypothetical, i.e., if someone publishes a paper about discovery X then it’s proper for a thousand lawyers in a thousand different “arts” (defined by you, of course) to run to the PTO and file a hundred thousand patents on the use of X in each of those arts. And none of those claims are obvious, according to your theory, because the publication in question “wasn’t relevant to the art.” That doesn’t sound like a working patent system to me. I do, of course, recognize its strong resemblance to the system favored by the lovers of software patents.

      1. Thanks MM. You see the interface with software patents and I see (in particular because of the recent English Eli Lilly v Activis case I cited to) an interface with the patenting efforts of innovative pharma.

        I’m spoiled, I suppose, by my practice before the EPO. I’m just looking elsewhere, for a consistent objective standard of patentability in all of the useful arts (and non-patentability for innovation outside the useful arts).

        1. ^^^ for all the politeness here, MaxDrei, I cannot tell if you are satisfied with Malcolm’s position or if you still find it not convincing – or why (either way).

          Such lukewarm position shall be spit from my mouth. (Revelation 3:16 – and for you, it continues into verse 17)

    5. I take no position on obviousness. My problem with your response Max is that it consists of “I don’t like it” rather than combating the logic which applies to any scope in any field.

      There is one thing which you definitely have considered and definitely works – your example embodiment. On this we have no disagreement. Logically, I think you would agree, that its not feasible for your claim scope to always convey your example embodiment even if you wanted to, and reasonable leeway is made. But beyond that there is what we all know are “intentional” vagueries and removals of limitations. Choosing to claim a functional result rather than the posited step which achieves the result is an intentional vaguery, for example. Not all intentional vagueries are fatal, nor are all of them bad. Instead, what they are is an avenue by which the claim is attacked.

      For each vaguery that occurs in the claim, the drafter should be able to point to something in the specification or the art which makes the leap from the particular posited embodiment to the broader genus. The writer should also be careful that knowledge of “something in the art” is extremely curtailed when the thing being talked about is considered to be a novel feature or combination. In software (where I play) the “leap” consists of adding the phrase “For example” or “in one embodiment” to the example and then stating the functional result that one desires a claim for. This, in my mind, is per se insufficient.

      Apply basic logic here. I am (despite what some of my detractors may say) capable of functioning as a patent examiner. A patent examiner is a job. A basketball player is also a job. Nobody would suggest that it follows that because I can be a good patent examiner that I am also be a good basketball player. A patent agent is also a job. It does not necessarily follow that because I am a good examiner I would be a good agent, but at least there are relationships between the two jobs where we can make the leap.

      What maximizes support for any particular scope is for the specification to make the tying-similarity explicit: “I am a good examiner, the role of examiner requires engineering knowledge and non-fictional analytical writing skills. A patent agent also relies upon those skills, therefore I would be a good patent agent.” That’s a bottom-up approach which works in general. Instead, it’s clear from the writing that most lawyers are thinking top-down. “The job one can be good at is any job. For example, a patent examiner is a job.” In the latter case, even if a fact-finder assumes that the species is sufficient, they have no support language by which I can say that the genus is similarly sufficient.

      What actually happens in the real world in the second case (at the PTO at least) is that the examiner is not trained to recognize that the species fails to support the genus. Instead most Examiners accept as fact that the genus is true too. Then the claim issues and now by law there is an assumption that the genus is true. This continues until you run into a real-world defendant that causes an Abbvie or Lizardtech like situation – where they are falling under the genus using a completely different species, and then a fact-finder can look the claim scope, look at the specification and say “This spec never considers the defendant’s species but claims a genus that encompasses it.” Then the claim fails under either 112a or b.

      See, the statement that is sometimes bandied about in CAFC decisions is “The patentee need not anticipate the infringer’s machine” which is a true-but-very-misleading statement. Instead the actual law is much closer to what Prof. Crouch explained the Abbvie holding was on this blog: “To Satisfy the Written Description Requirement, a patent “must at least describe some species representative” of the accused product.” If you are claiming a genus that has a swath of undescribed species in it, that scope is invalid. It’s invalid regardless of who your defendant is (which is why the first statement is true-but-misleading) but when your defendant is an Abbvie defendant the truth of the overbroad scope is much more apparent. Better courts have recognized the overbreadth is fatal even without a competing example (see, e.g. Morse, Perkin’s Glue, Wabash, all finding claims invalid on their face absent discussion of the infringer by positing hypotheticals) but the CAFC as currently constituted is rarely a better court, and needs to have the overbreadth shoved in their faces.

      Lawyers have apparently been taught as a matter of routine to take a particular example and immediately go as broad and vague as possible with it, then work back down to the example. That necessarily ignores divergent species within their broad genuses (genusi?) and invites…poor litigation attorneys to highlight the issue by suing people who achieve the genus through different species.

      All of this is generically true. Turning now to your particular example, it’s clear you’ve posited using liquid nitrogen to chill a brand to cause white hairs. Does the fact that you’re using liquid nitrogen to chill the brand make a difference? Probably not. It’s sufficient to say that there known ways to chill a brand and the only relevant feature of the brand for the use in the system is that it be chilled. Is a chilled brand the only way to cause white hairs? Here I suspect the answer is no, or at least you haven’t given me a reason to think that. I suspect there are multiple, divergent means of producing the white hairs, of which chilling the hide is one of them. This is not a good place for you to be vague in your claim, because you haven’t shown me (and in fact you don’t know) if there are other ways to make the hairs white. So can you be vague about the cooling agent, safely? Probably. About the cold brand causing the white hairs? Probably not. Is a claim to freeze branding (assume we define this as “branding without using bonfire temperatures”) vague about the cause of the white hairs? Yep. It’s a dangerous claim to rely upon. Perhaps suitable for an independent, but you would want most of your claim tree dependent upon a more detailed claim. Is it possible your scope is valid? Sure, but prove it up.

      This notion that you “feel” that the “contribution” “warrants” the scope is irrelevant. You contributed a means to achieve the end. Either the means is the only way of achieving the end or it isn’t. If it isn’t, you shouldn’t be given the scope of the end, you should be given the scope of the means. If it is, it’s irrelevant whether you’re given the means or the end. The thing to do is teach the means, and teach as much as you can to expand the means outward, but it’s extremely unsafe to rely upon a claim directed to the ends, because rarely can we say with any certainty that the described means are the only ways of achieving the end.

      Again, like I said, if you claim only the end result of branding at low temperatures, and the only way you posit is to use a cold brand, you better not sue someone who used agitating chemicals, because even this CAFC can figure out that scope is overbroad, but *historically* it is the fact that you have failed to foreclose the hypothetical of other means of achieving the end (of which agitating chemicals can be one example) which is the fatal flaw.

      1. “Lawyers have apparently been taught as a matter of routine to take a particular example and immediately go as broad and vague as possible…”

        They would not do this if doing reliably resulted in their claims being held invalid.

        1. To the contrary, it’s been reliably happening for about 2 years now, and instead the refrain is that they themselves are right and that the law is messed up.

            1. Morse is an extremely interesting case to me which is why I quote it so often. Morse is a case that was essentially rejected as being “overbroad” without confining the discussion to any of the rubrics that we define today. The language of Morse sounds in what today we would call enablement, WD, indefiniteness and judicial exceptions.

              No court has ever said this, but I feel very strongly that the case law supports the conclusion that a valid defense tactic is to compare the novelty embodiments of the patentee with the infringer and decide the case based on a finding of “difference.” If a PHOSITA would conclude that what the inventor considered and with the infringer did are different, neither a properly-considered statutory scheme nor the constitutional grant would allow liability to attach.

              The question becomes what constitutes “difference” and I have said before the lack of equivalency is it.

              I think (Scoreboard, for all it matters) that if the novel feature of an invention is disclosed as caused by Element or Combination A, and the infringer does B instead, a statement by patentee’s expert that A and B would not be considered equivalent is sufficient for a summary judgement in favor of the defendant. Notice that in no part of that equation do we actually consider the claim.

              1. Random, as you say:

                “..in no part of that equation do we actually consider the claim.”

                There was a time, a hundred years ago, when nobody included claims. But then it was thought that in the interests of legal certainty there ought to be in the patent a definition of the invention which the patent is seeking to protect. Surely neither you nor the US courts want to go back to those ancient days? Or do you?

                1. Max, the Halliburton court was faced with a claim* where the lower court had construed the claim to cover the disclosed mechanical tuner and had determined that the accused electronic tuner was an equivalent. The Supreme Court did not overturn this conclusion but held the claims invalid nevertheless because of their apparent scope.

                  Broad claims put everybody on notice of the outer limit of what the inventor regards as his invention. Claim construction often limits the invention to the corresponding structure and equivalents pretty much along the lines of what Random is talking about. But I agree with the Supreme Court that the broad functional claim is inherently a violation of the patent law because such breath intimidates those who enter at their peril and thus retards the progress of the useful arts. While the statutory reason for holding a claim invalid in that case was “112,” the real reason was that allowing such a claim scope was unconstitutional in their view.

                  The Supreme Court has never addressed the Congressional response to Halliburton which essentially says it was okay to claim an invention functionally because one only receive that which was disclosed and equivalents. Still, the apparent breath of the claim remains a problem in my opinion and eventually the Supreme Court should take up an appropriately argued case.

                  But it comes as a somewhat shock that the Federal Circuit is now holding such broad claims invalid under 101 if they have no corresponding disclosure that even describes a single embodiment within the claimed scope. Here there is no possibility of a narrowing construction. The claims simply are invalid under any number of theories.

                  * “means associated with said pressure responsive device for tuning said receiving means to the frequency of echoes from the tubing collars of said tubing sections to clearly distinguish the echoes from said couplings from each other.”

                2. Surely neither you nor the US courts want to go back to those ancient days? Or do you?

                  Of course not, but summary judgement doesn’t mean there’s no issues of fact, it means there’s no material issues of fact. If we reach a conclusion that liability would not attach under any circumstances then we need not consider further facts. Generally, you must consider claims because you need to consider scope for infringement and invalidity purposes, but if we can get to a situation where its irrelevant, then it’s irrelevant.

                  Suppose you had a case where prior to walking into court the patentee said “This patent was procured through fraud” and the court believes him. You’re not suggesting we have to go through claim construction then, are you?

      2. Thanks for all that Random. Of course I accept your point about the mischief of over-broad claims. The textbook case when I was a student in England was one involving regulating the growth of seedlings by imposing on them a specified chilling temperature at various stages of growth, thereby to increase ultimate crop yield when the seedlings have become harvestable plant matter. The worked Example was peas. The claim failed because i) it was unspecific as to which plant and ii) there was no reason to suppose that other plants would respond like pea seedlings.

        Freeze branding is different, because there is good reason to suppose that the hair whitening effect of an ultra-cold branding iron works not only with cattle hides but with other hides too.

        I concede that my claim might have to run for more than one line, to replace the shorthand “freeze” with a specified temperature range for at least a specified minimum period of time, and the shorthand “branding” with explicit recitation of a branding iron tool. My mistake was to suppose that readers here would find all that implicit. Instead, I find them construing the imaginary claim to include in “freeze branding” such non-freezing and non-branding procedures like spraying with an aerosol can of spray substance in a highly volatile solvent.

        All in all, this discussion is valuable to me for its revelation of the importance in US jurisprudence of the comfort blanket, the universal wrench, of magic words. Of course I have a “feeling” as to what scope is commensurate. It comes from more than 40 years of practice drafting patent claims that do justice to the inventions my clients make. Of course the independent claim has to be supported by a nicely graded sequence of ever-narrower dependent claims. This goes without saying in Europe but sometimes in the US jurisdiction I have the feeling that the vital skill of laying down serious fall-back positions in high quality dependent claims is an under-appreciated facet of the basic skills of a competent patent draughtsperson. But when a dependent claim merely recites explicit what is already implicit in the independent claim, I’m going to fight for allowance of that independent claim as very definitely not “over-broad”. US claims strike me very often as being unnecessarily verbose. US patent specifications are invariably much more lengthy and repetitive than those optimised for Europe.

        Thanks for the time you are giving me.

        1. because there is good reason to suppose that the hair whitening effect of an ultra-cold branding iron works not only with cattle hides but with other hides too.

          Let’s assume that’s true – it certainly wasn’t known at the time, after all the hair whitening effect on cattle hides is what you’re claiming the novelty is. So there has to be evidence that your inventor knew or had reason to believe it would work on other hides too. You can’t just simply say “It worked with this species, therefore its going to work with the genus” its the same problem as my jobs example.

          Instead, I find them construing the imaginary claim to include in “freeze branding” such non-freezing and non-branding procedures like spraying with an aerosol can of spray substance in a highly volatile solvent.

          Well it was you yourself that defined freeze as not bonfire temperatures. And to me branding is simply the act of placing a mark of ownership upon something. But we’re in agreement on the underlying concept I think, which is when the claim is a smaller scope it is easier to find it valid, and larger scopes are easier to find invalid, and it’s context specific how much.

          This goes without saying in Europe but sometimes in the US jurisdiction I have the feeling that the vital skill of laying down serious fall-back positions in high quality dependent claims is an under-appreciated facet of the basic skills of a competent patent draughtsperson.

          Would that this be our only problem because I, as an examiner, don’t much care if the scope is ultimately a smart litigation tactic. My problem arises from people who put forward broad scopes supported by the faintest most common acts, then redirect attention elsewhere.

          I was just watching an episode of House, MD where the doctors are all about to break into their boss’ place. House approaches the door, pulls out his credit card, moves to jimmy the lock and says “I’ll bet you guys $100 I can open this door in under 20 seconds.”

          “You’re on” they say and look at their watches. House proceeds to put his credit card back, pick up a flower pot, retrieve the spare key under it, and unlock the door. His coworkers reach for their wallets.

          In my experience (and again I work in software, which is relevant here), a lot of inventors are trying to pretend they’re expert lock pickers before opening the door with a key. There’s nothing more frustrating than seeing a broad scope which covers all sort of fantastical means which is “supported” by a mundane, nearly useless disclosed embodiment, followed by an argument directed to it being a non-obvious combination. It’s a constant fight to explain to people they can’t have anything close to this scope while they make minor changes in an effort to get out of a 103 so they can appeal their 101/112s. Some days I wish I could just step outside of the office for a second to point and make fun of them here in the hopes that other people might wise up.

          But when a dependent claim merely recites explicit what is already implicit in the independent claim, I’m going to fight for allowance of that independent claim as very definitely not “over-broad”.

          See I don’t understand how this can be right. If there is no leap between the explicit/implicit boundary – i.e. if the set of embodiments under the implicit language and the set of embodiments under the explicit language is the same set – then what have you lost by acquiesing to the explicit language? The point of you not wanting to give in is that you know or you suspect that the sets are not the same. So you want to obtain something which you might not even know what it is and why? Because you could conjure fancy language? That’s not the inventor inventing something that great, thats the inventor inventing something small (relatively) and his lawyer trying to make a mountain out of a molehill.

          1. ” There’s nothing more frustrating than seeing a broad scope which covers all sort of fantastical means which is “supported” by a mundane, nearly useless disclosed embodiment, followed by an argument directed to it being a non-obvious combination. It’s a constant fight to explain to people they can’t have anything close to this scope while they make minor changes….”

            Again, I think this is a problem caused primarily by the enactment of 112(6), and by numbers of CCPA and Federal Circuit cases that seemed to endorse functional claiming. The Feds are now reading functional claims as all being governed by 112(6), but that, in turn, makes there real scope indefinite — which is the real problem identified by Halliburton.

            Perhaps during prosecution you could say that claims that are essentially functional are either to be construed under 112(6) or they are invalid. If they are to be construed under 112(6), perhaps you could ask them to amend them to provide the “means for” or “step for” signals for clarity purposes. That would really get their attention.

            1. Ned – please refrain from your attempts to portray this as ONLY a 112(f) issue – as has been made perfectly clear by me and well as by Prof. Crouch (and his coined phrase of Vast Middle Ground is in part applicable outside of 112(f) and that (tiny and optional) section that deals with claims TOTALLY functional.

          1. LOL – no Random, I meant a real definition – not your “version” of what “may” happen from Nautilus (which you used to like totally “wipe out” the coined term of Prof. Crouch’s Vast Middle Ground) – as my friends from Montgomery say, “That dog won’t hunt.”

            1. What is reasonable is context specific and a component that is normally considered in reasonableness is the difficulty in being more reasonable. The most well-known (so well known its often overlooked) mechanism is to look to other claims. This was done in Lizardtech, where one set of claims contained a limitation and the other set of claims did not – there the removal of the limitation became a focal point for determining if the non-limited claimset had support over its entire scope.

              Another easy mechanism for this is to look into the examples in the specification itself. If the specification includes an embodiment discussing Feature X with some level of particularity, and the claim lacks facets of that particularity, we naturally have to conclude that the failure to include is intentional, because clearly it was possible to convey it – the spec just did so.

              There are also a few general rules. For example, Wabash makes clear that novelty can never be described in purely functional terms. We can’t “save” a claim whose novelty is claimed functionally outside of 112f by trying to construe the language to be something from the spec.

              Beyond that, it’s a PHOSITA question – if a PHOSITA would find that detail in a particular piece of the invention is necessary then a failure to include that detail will render a scope both overbroad under 112a and indefinite under 112b.

              1. “We can’t “save” a claim whose novelty is claimed functionally outside of 112f by trying to construe the language to be something from the spec.”

                But the Feds do it all the time now because they are construing ever functionally defined element of a combination to be covered by 112(f).

                The only exception to 112(f) today is where the claim is not to a combination, but when is that ever the case?

              2. First point here:

                What is reasonable is context specific and a component that is normally considered in reasonableness is the difficulty in being more reasonable.

                Very much so – and this is at the “heart” of what is wrong with the current broken scoreboard attempts to take what is in fact an INDIVIDUAL case/application/claim investigation and mash the nose of wax of the law of 101 by attempting to ig nore what Congress did in 1952 by expanding what was a single paragraph into the several sections of law of 101/102/103/112.

                Combine this too with the allowance BY Congress to permit terms of function (not ONLY in 112(f)) in any combination claims – the Vast Middle Ground that you for some inexplicable reason refuse to understand as being the law – regardless of what happens in your Supreme Court case of choice, and once you realize what exactly the section of law in 112 – different than that of the single pre-1952 paragraph and any case law from pre-1952, then the light of understanding may (admittedly painfully for you) dawn upon you.

                Second point here of course is that the Supreme Court itself greatly lessened what must be shared in the spec by its attempts to hyper empower PHOSITA. Your statement of “we naturally have to conclude that the failure to include is intentional, because clearly it was possible to convey it – the spec just did so misunderstands and misstates exactly what must be included in an application.

          2. and as for your continued assertions that you are in the software arts – I find it incredulous that you have such a background and still have not checked out the MathS philosophy and the writings of POiR at slashdot/techdirt on what equivalence entails.

            1. You’re not discussing the equivalence I care about. You are talking about hardware/software equivalence, which has always been irrelevant to me and ought to be irrelevant to you in a post-Alice world. Had the claims in Alice been to a physical circuit that performed the function it still would have been invalid.

              I don’t have a problem with “math” or its implementation like MM does. I have a problem with the difference between talented and untalented speakers. Some people can write beautiful, elegant algorithms which achieve results with a minimum of work. Others may achieve even better or more accurate results with significantly more work, and those people have their place too. But most achieve pedantic results with poor work, and then try and use functional vagueries to elevate themselves to parity with people who are decidedly greater than they.

              Take any functional result that end users use on a daily basis – my example du jour is driving directions. There are as many ways to write algorithms that give driving directions as there are books in a bookstore. But bad writers, afraid that their book isn’t special and wont sell, try and steal the entire store for themselves rather than merely occupy their spot on the shelf. My concern is simply to keep every book in its place. The fact that this results in bad writers being limited to something that lacks commercial value is nobody’s fault but the writer’s.

              We’re going through a period now where recent 101 and 112 developments in the law are just starting to confine bad inventors to their marginal inventions rather than give them an overbroad scope. It’s a good thing for everyone but those inventors. It’s not the end of the world or the collapse of the US patent system. It’s healthy to have properly sized scopes.

              1. Random, it is not the inventors that have the problem of claiming the world but disclosing only an island. It is the patent bar that has the problem. This has been a problem with this group since claims were birthed. See, Morse as a good first example.

                1. Random, it is not the inventors that have the problem of claiming the world but disclosing only an island. It is the patent bar

                  It’s both in concert. The attorney charges a fee and has to justify the fee and the client wants bang for his buck – a commercially valuable scope for the cost. The situation (in software) does not ordinarily justify a commercially valuable scope – it prevents to copying of his algorithm, but his algorithm is one of many that achieve a result. Consequently they’re both trying to justify spending too much for too little and too often the office wants to throw them a bone to make our “customers” happy.

                2. Random, the patent bar will always try for broad scope and it is true the inventor as well has an interest. It is job number 1 of the PTO to limit claim scope to the scope of the disclosure.

                  But with 112(f) in the mix, it makes literally no difference how broadly worded a claim is. I daresay, the PTO has no effective means of limiting apparent scope. This is a problem.

                3. Random confounds his apparent ig norance be merely mouthing a repeat of the misunderstandings of what the different IP laws protect.

                  Very much in echo of the poor misunderstandings as “voiced” by Malcolm and Ned.

                  Gee, what a surprise.

                  Great ec(h)0system here….

              2. I very much AM discussing the equivalence that you care about.

                You are the one refusing to understand what that equivalence means when it comes to NOT having the explicit “code-level” claiming that has LONG permeated your “notions.”

      3. This notion that you “feel” that the “contribution” “warrants” the scope is irrelevant

        So too, Random, many of your own “notions” are also irrelevant.

        Your views specifically on code level claiming and lack of understanding of the Ladders of Abstraction are your downfall.

  4. I’m interested in how the scope of a claim that is considered commensurate with the contribution to the art varies with the art. That is why I wrote my 1.2.1 below.

    I see that, overnight, I have attracted a good solid response to my 1.2.1 but all it does is to increase my level of interest in the question.

    Suppose you find out that novel Molecule X cures disease Y. You write it up and file on it. Claim 1 though, you direct to useful new molecule X, per se.

    I think that scope is too wide. I think your claim should be purpose-limited, commensurate with your contribution to the art of treating disease Y. But I’m a lone voice against the might of Big Pharma.

    Suppose instead I am a tanner and frustrated by the blemishes on my hides caused by red hot branding irons. By chance I come across technical literature that teaches that liquid nitrogen leaves hide undamaged but permanently bleaches to pure white any hair (coat/pelt) growing out of that area of the hide. So I file on my new method of branding hides, at temperatures around that of liquid nitrogen rather than bonfire temperature. I call my process “Freeze Branding”. It leaves no wound and is atraumatic to the animal too.

    Commentators here (see below) shrink from letting me have my claim. Intuitively, they think it too wide. I find their arguments less than convincing. As a matter of fairness and common sense, and fitting to my dramatic new contribution to the age-old arts of branding hides, isn’t my claim scope OK?

    Reverting to Kevin Roe, who had an idea, wrote it down, and got to issue, I suggested below (at 10) that Eli Lilly did more than that, and at 10.2 MM agreed. But actually, what I wrote was slightly tongue in cheek. How much more than did did the ELI Lilly inventor actually do, before Lilly filed on it? One criticism of First to File is that it rewards those (like Kevin Roe) who are still mere speculators at the time they file. The Lilly case is on the border, but there is no speculation in my freeze branding claim. If mine is not a patently good claim, what is? Let’s not suppose that throwing more detail into the claim is the Cure-All for every bad claim. Sometimes a seemingly broad claim is sound and fair and best promotes the progress.

    1. I think your claim should be purpose-limited,

      In our sovereign, a claim to an item covers the item and not a particular use of the item.

      Your view just is not in accord with our sovereign.

        1. The distinction is in the statutory category: Thing (itself) versus a use of (or perhaps “method involving”) that item.

          As a (very limited) example, let’s say that I invent a thing – let’s say the very first hammer. It just does not matter what you use that hammer for, if you do so, you infringe the item itself, and there is NO call for a specification to include the entire possible breadth of use of the thing.

          MaxDrei here appears to want to limit the scope of the “thing” invention to the explicit uses (utility ) shared in the application.

          That is just not how our sovereign has created our patent system. Yes, you do need utility, but once obtained, that utility is not a limit on the patent right.

            1. LOL – happy new year Random (that pain you feel just might be from the use of the “muscle” of critical thinking – don’t worry, it gets easier and less painful the more you use it.

              😉

            2. Next step – if you are ready, my young padawan – is to grasp the “item” that is software versus the “method” of executing software – and ALL that that distinction entails.

            3. Here too, young padawan, your penchant for “all species” falls when (if) you are ready to accept what is known in the art of software (the POir equivalence point).

              Sufficient species – not ALL species – is why the “code-level” claiming underlying view of yours is simply – but critically – flawed.

              Once you accept that – then we can next move on to your waywardness with the ladders of abstraction and your rather odd desire to not see the multiplicity of rungs on a ladder and your ever present “notion” to want to grasp the top rung as if ANY use of the ladders of abstraction “dooms” you to do so.

    2. It’s not clear what your statement here is. Let’s make some claims:

      1. A method of branding comprising: coating a brand in liquid nitrogen; and pressing the brand against cattle.

      2. A method of branding comprising: acquiring cattle; and branding the cattle at temperatures at or about that of liquid nitrogen.

      1 is valid and not overbroad based on the disclosure you discuss in 16. 2 is invalid for two reasons – it’s a single means claim and your disclosure fails to show that coating the brand with liquid nitrogen is the only manner in which to achieve branding at temperatures of liquid nitrogen.

      2 should never be granted, but lets assume 2 is granted. Then two alleged infringers come along. Alleged Infringer A coats their brand in liquid nitrogen. Alleged Infringer B utilizes a new organic paste which marks the cattle, but because of the chemistry of the paste it can only be applied at very low temperatures (after which point it heats up and hardens to the hide or something). B does not infringe Claim 1. Asserting Claim 2 against Infringer B is a Lizardtech or Abbvie situation – it technically meets the words of a claim that will be declared invalid because there is no proof the patentee posited this means (and therefore his scope was overbroad). You can’t catch Infringer B no matter what you do, because there is no valid claim scope that would reach him based upon your disclosure. The added danger is that Infringer A asserts that the existence of Infringer B proves your claim fails 112, 1st and Infringer A gets off as well.

      There’s no benefit to trying to get the additional scope of Claim 2, but there is additional cost. Therefore, given the choice of Claim 1 or Claim 2 you should always right Claim 1. Of course, claiming lets you have your cake and eat it too – you can get both Claims 1 and 2 in independent forms or make 1 a dependent of 2, which is why dependency is an important thing to take advantage of – It will let you try (but probably fail) to go after the Infringer Bs of the world while still having a dependent claim to protect against the Infringer As.

      Sometimes a seemingly broad claim is sound and fair and best promotes the progress.

      This is an issue less often than you seem to think. If you describe a single species and the single species is the only way to achieve the genus you are claiming, there IS NO species/genus problem. Ex: Assume that applying liquid nitrogen to the brand is, in fact, the only way possible of branding at low temperatures. Then it doesn’t matter whether you claim “applying nitrogen to the brand” (species) or “branding at low temperatures” (functionally-defined genus) because the set of infringers that can infringe the latter without infringing the former is a null set.

      On the other hand, assume that there ARE different methods. Then a claim to the species accurately describes your contribution, while a claim to the genus does not, because nothing in your disclosure suggests the different methods.

      1. Random, I’m delighted that you take so much time and trouble to reply so thoughtfully. Thank you. What is nice is that my mindset to a claim to “freeze branding” is “Why not” but yours is more negative, to recoil in horror muttering the age-old incantation “Singe Means. Single Means”. I strongly get the feeling that yours is a PTO “If in doubt, say No” mindset.

        First, a preliminary point of clarity. The liquid N2 serves only to chill the iron, prior to branding. You take the iron out of its Dewar flask of N2 and apply it, dry, to the hide. No N2 contacts any hide. You could have something else in your Dewar, but N2 is cheapest.

        Don’t get me wrong. I am a fierce supporter of the EPO’s stalwart fight against over-broad claims. In general, single means claims are too broad. The incantation is proper, nearly always. Perhaps because I operate in polyglot Europe, in a patent system with 38 Member States all using the same Patent Convention and substantive law of patentability, I really do not like “magic words”, like “single means”. We can serve deserving inventors better than that.

        My hypothetical has it that the hair whitening effect of freezing the underlying hide of a living beast has long been part of the state of the art. The invention is lies in the insight to utilise that effect in branding.

        The problems with conventional branding (and solved by freeze branding) are permanent hide damage and temporary beast trauma. But there are known alternatives. You don’t have to use freeze branding if you want undamaged pelts and trauma free animals. Aerosol paint sprays, ear tags, neck collars: there are a host of good alternatives. But none of them is good against loss or theft (rustlers!) during the full life of the animal. Only freeze branding ticks all the boxes. But it doesn’t pre-empt other methods of tagging your bovine property. I still think its inventor is entitled to a claim that pre-empts “freeze branding”. I agree with you, that the specification needs to be enabling, so it should cite to the learned Paper that teaches the hair-whitening effect of chilling, and needs to say quite a lot about the thermal capacity of the iron, how long you need to hold it against the hide (shaggy Scottish Highland cattle longer than a chihuahua dog, I suppose), what constraints there are on the design detain of the brand, alternatives to liquid nitrogen etc etc but quite why a competitor who chills the iron using some other coolant in the Dewar should escape infringement is beyond me.

        Now to your organic paste. A much-cited benefit of the patent system is that it forces design arounds (or is that “designs around”?). Your chemical branding is a case in point. By “freeze branding” I mean “branding by freezing” and not “branding living hide by procuring a chemical reaction between the hide and a paste applied to it”. I think your claim 2 is unfair to my inventor. It is not that we are branding (by whatever means) at a particular ambient temperature. Rather, it is that we are branding by chilling the hide locally, in the pattern of the brand, long enough that the hide is transformed (as known) by the local chilling, thereafter to grow only white hairs. If you like, it is a Chef America point. The claim needs to recite “by” rather than “at” liquid nitrogen temperatures.

        That’s enough for now, I should think. Any thoughts in reply?

        1. I still think its inventor is entitled to a claim that pre-empts “freeze branding”.

          But that still begs the question of what constitutes freeze branding (which I know you answer, but go with me here). Your post, for example, is replete with other, similar methods of branding (in that they all form sort form of brand without using heat) that have positives and negatives. Aerosol paint, for example, must certainly be cheaper that liquid nitrogen, simply not as effective for branding over the course of the life.

          That statement, right there, is evidence that the art draws a distinction between the two acts. The art clearly does not believe that aerosol paint and liquid nitrogen are the same acts (at least, not according to you, or your inventor’s “testimony”). So under what basis would the art say that all forms of freezing are the same? You say that freeze branding “checks all the boxes” but those are YOUR boxes of what YOU find important. What if someone else comes along with other boxes and says “liquid nitrogen checks this box, but my invention checks some other box”

          There is one sentence which may lead us to some agreement:

          I agree with you, that the specification needs to be enabling, so it should cite to the learned Paper that teaches…alternatives to liquid nitrogen etc etc

          This is a long list sentence which glosses over the primary point. Of key importance for your claim scope to “all freeze branding” would necessarily require enablement of the alternatives to liquid nitrogen.

          My problem with functional scopes like “all freeze branding” is that for the fact finder to conclude that you have enabled the scope you necessarily have to know what the scope is. I’m not talking about an indefiniteness question here, I’m talking about a breadth question. Let’s say your treatise lists 6 alternatives for liquid nitrogen (so 7 in total). Each of these 7 items will chill the hide locally to only grow white hairs. How does the fact finder know those seven fill the scope of the claim? How do we know that there aren’t 100 different alternatives, or a thousand? How do we know that while your 7 may function in a generally similar manner, there aren’t 100 different ways which function completely differently to yours which still achieve the result? (I’m not sure what your claim is, are you claiming a method that grows white hairs?)

          You would, necessarily, have to prove a negative. You would have to say “Here are my 7 examples, and we know no other examples exist because ____” And while that may sometimes work in deductive areas of math, it generally does not work in inductive areas of physical science. So if you can make it work, great, but you probably can’t. Since you can’t prove a proper fit, the only reason I could see for giving you the scope is to say “But there’s no better way to describe what I’ve contributed.” But that clearly isn’t true, as we’ve just pointed out you have posited 7 possible avenues and it isn’t difficult to convey that list of 7 items.

          If you’re not limiting it to the list of 7, all you are doing is relying upon the fact that you can distinguish between characteristics of things – “lifetime marking” is a quality that exists in this technique and this one but not that one, and I think lifetime marking is good. Well lifetime marking as a quality isn’t something you invented. Lifetime marking is a fact of the world, and you discovered a means of creating it, but not all the means of creating it (at least, we don’t know there aren’t other ways if you can’t prove the negative). So if you didn’t create the characteristic, nor all ways of making the characteristic, why should you be getting an exclusionary right to it?

          1. Max invented branding at cold temperatures. The paste branding is a particular flavor of cold temperature branding and may be patentable in its own right.

            Nevertheless, Max’s claims (your 1 or 2) are legitimately open ended and encompass methods with or without paste. To make or use the paste brand requires a license from Max.

            To argue otherwise is to argue that “comprises” means “consists of” or that any claim that includes the word comprises is invalid.

            1. Les, in both hot iron and freeze branding, it is the thermal capacity of the iron that achieves the desired effect. An aerosol of a volatile solvent has a chilling effect on your skin but cannot brand it and so cannot effect “freeze branding”. Similarly the paste concept. Neither are embodiments of freeze branding so both are outside the scope of my claim.

              1. Not as described by Random. He applied the paste to the brand. A reaction cooled the brand. This is encompassed by claim 2 as proposed by Random : 2. A method of branding comprising: acquiring cattle; and branding the cattle at temperatures at or about that of liquid nitrogen. I believe this claim 2 is an allowable claim based on your disclosure even if you did not contemplate this particular embodiment. You invented make a brand cold and apply it to a cow.

                1. Les our discussion reveals the importance of the precise words of the claim. Not easy in a summary hypo. Random posits:

                  “a new organic paste which marks the cattle, but because of the chemistry of the paste it can only be applied at very low temperatures”

                  I see that as a species of chemical marking, not “branding”. I do not see my invention as reaching as far as methods of hair whitening by chemistry as opposed to freezing the hide down to liquid N2 temperatures without resort to any added chemical.

                2. Yes. I understand your position.

                  Nevertheless, given what you invented :

                  2. A method of branding comprising: acquiring cattle; and branding the cattle at temperatures at or about that of liquid nitrogen.

                  is a claim supported by your specification (especially if it is an original claim).

                  I see no reason, given what you invented, that it would not also be an allowed claim.

                  It also READS on or Encompasses the paste based method as the claim does not require that the cold DO the branding, only that the branding be done at the recited temperature range. Nor does it require that nitrogen be used to arrive at the temperature range.

              2. Max, I assume we are discussing here how to chill the brand. If you disclose one way of chilling, should you be able, with your claims, to cover all ways of chilling the brand?

                This is why I think we have to recognize what the invention is. The combination of prior branding techniques with the chilling method, given that both are known to be effective in permanently changing a marking on a hide, should not be patentable as such. The claim should be limited to the particular means and methods used to achieve the result otherwise the claims will cover means and methods not disclosed and not invented by the applicant.

                Thus I support not only holding your hypothetical freeze-branding claims invalid for obviousness, but also for being overbroad and a violation 112 per Random.

            2. Max invented branding at cold temperatures.

              Really? I thought Max invented one means of branding at cold temperatures.

              The paste branding is a particular flavor of cold temperature branding and may be patentable in its own right.

              If the full scope of branding at cold temperatures remains unenabled, and won’t be enabled until these other inventors enable it in their “patentable in their own right” invention, how could Max have invented it?

              1. Right, Random. What I invented was no more and no less than to chill the branding iron instead of heating it up to red heat. I do not describe, claim, covet or contemplate marking hides using a paste to react chemically with the hide, whether at room temperature or freezing temperatures. My claimed freeze branding invention is non-chemical. I supposed that much to be implicit in my hypo. Sorry readers. I supposed too much.

                I still think that failing to recite in my claim the precise means to chill my branding iron down to my freeze-branding temperature does not render my claim indefinite, unclear, not enabled over its full scope, old, obvious or whatever. But opinions differ. There you go!

                1. Furthermore, the breadth of claim 2 and the fact that the Examiner could not find prior art, even in view of the breadth of claim 2 makes it clear that the inventor had and was entitled to claim 2.

                2. Still yet further more, if Randoms view were correct, no claim would ever be valid as some embodiment encompassed by a claim can always be found that was not disclosed in the specification.

                3. For example: 1. A method of branding comprising: coating a brand in liquid nitrogen; and pressing the brand against cattle.

                  Did the spec disclose that the brand could be made of titanium? Did the spec disclose that the brand could be made of quartz?

                  If someone makes a brand out of quarts and coats it with liquid nitrogen and presses it against a cow does that make the claim invalid for lack of enablement?

                4. Les, Still yet further more, if Randoms view were correct, no claim would ever be valid as some embodiment encompassed by a claim can always be found that was not disclosed in the specification.

                  I think the term is infringed.

                  However, your statement does suggest that you favor claiming results as opposed to what you disclose.

                5. Ned:

                  Did the spec disclose that the brand could be made of titanium? Did the spec disclose that the brand could be made of quartz?

                  If someone makes a brand out of quarts and coats it with liquid nitrogen and presses it against a cow does that make the claim invalid for lack of enablement?

                6. Ned Asked: “Les, so, you can patent ideas, provided they are new?”

                  No Ned, you can patent methods, articles of manufacture, machines and compositions of matter provided they meet the requirements of 35 USC 102 and 103 and you application complies with other rules.

                7. Les, but what you argue is akin to saying you have to disclose a machine, etc., but you can claim at the level of the idea — all ways of achieving the new or improved result with any limit to the means or methods you disclose so long as the new result is not in the prior art.

                8. Ned –

                  But what you are saying is that no claim is ever valid because there is always some detail left out of the description that could be included in an encompassed embodiment.

                  Please present a claim you would stand behind as valid and I will identify an embodiment encompassed by the claim (that would infringe the claim, if you prefer) that is not disclosed in the specification.

                  How do you resolve your interpretation of the requirements with that?

                9. Les, there is a fundamental principle in the patent law that one cannot encompass within an infringement something that is not the equivalent of what one discloses. Infringement does not require that the infringing device or process or composition be identical to what is disclosed. But at least must be an equivalent.

                  We all know the claims must be supported in the specification. But one can claim broadly so that the broad claim reads on the disclosure. The problem with this is that the claim reads far beyond the disclosure as well and encompasses subject matter that the inventor did not invent. That is the problem.

                10. Les, I’m sorry for that, but if the invention is the use of a brand at temperature, and one discloses an iron brand, but any brand will do, then a quartz brand is an equivalent.

                  If, however, it is determined that there something special about iron in the brand that makes the invention work, then only brands that are composed of a material that performs the function of iron in the invention in substantially the same way would be an equivalent.

                  The above illustrates why when claiming old elements one is entitled to claim and cover virtually all embodiments that perform the recited function. But when claiming the novel features, where the features are critical to the invention, one is not entitled to cover any substitute that performs the function, but only those that perform the function of the novel feature in substantially the same way.

                11. Ned –

                  Consider the case where the specification only says “brand”, much as did the discussion here. We all knew what “brand” meant and we didn’t think to discuss the material. It simply was not an issue.

                  Was the claim invalid?

                  Now, 5 years go by and someone notices that after 5000 uses the brands being sold by the inventor become brittle and fall apart. They being investigating other materials and decide that quartz is better.

                  Is the claim invalid now?

                  Is the quartz brand not a brand ?

                  Is the performance of the claimed method using a brand made of quartz not an infringement of the claimed method?

                  Can any claim be worked around by adding some detail not disclosed in the specification?

                  Isn’t “comprising” open ended?

                  Of course the claim is infringed even where the brand is quartz.

                  The method being performed is the same.

                  A patent may be obtained for the improvement of using a quartz brand. The original inventor would need a license to use a quartz brand and the quartz brand inventor still needs a license to use the the quartz brand in the claimed method. It is likely that a cross licensing deal would be arranged.

                  There is no “problem” as you suggested in earlier posts.

      2. 16.2 is invalid because it’s a single means claim? It’s a method. With two steps (albeit one step being pointless).

        Fail.

        WTF are they teaching in the patent academy these days?

        1. 16.2 is invalid because it’s a single means claim? It’s a method. With two steps (albeit one step being pointless).

          Fail.

          One step being pointless is what makes it a single means claim. You need two bona fide steps to avoid a single means failure.

          1. “One step being pointless is what makes it a single means claim.”

            No, it’s a method claim. There’s no “means” in it.

            “You need two bona fide steps to avoid a single means failure.”

            No. Again, it’s a method claim.

            1. AAA JJ,

              I am taking Random’s comment here as him meaning to say “steps for” instead of “means for” and using the commentary on the Act of 1952 pertaining to the maintained disallowance for single means claims to carry over to single steps-for claims.

              What this boils down to – and pertaining to ALL art units and ALL types of claims – is the mere “no aggregation” aspect of reading claims as a whole.

              Although there is an interesting carryover from above (see 16.1 and 16.1.1.1) when one considers that the English language being limited to “ing” type of words is especially prone to certain peoples (perhaps even on purpose) being confused as to what is a method claim and what is a item claim.

              This happens (again, often on purpose for those wishing to obfuscate matters) with anthropomorphications.

              I know that I need not remind you that software being a machine component is just not the same (in this important patent law sense) of the execution of that software.

              I am open to suggestions for politely policing this important distinction and removing from the blog those posts that can objectively be said to only want to create confusion as to this important point.

              It is a simple fact that Congress in 1952 opened wide the use of words sounding in function – even as descriptors of THINGS (as opposed to the statutory category of methods), and – critically – even outside of 112(f). You know: that Vast Middle Ground thing and at that all polite people know, recognize, and integrate into any type of meaningful discussion moving forward.

              1. I am open to suggestions for politely policing this important distinction and removing from the blog those posts that can objectively be said to only want to create confusion as to this important point.

                You are truly generous.

              2. I simply disagree that vast middle ground is an accurate statement of the law post-Nautilus if it was ever a proper statement before.

                First, the use of VMG was never in the 112a context, it was always in the 112b context, and it was pursuant to an insoluably ambiguous standard. That standard is no longer applicable, and at least as I discuss validity, there is more to life than 112b. A statement that functional language does not violate indefiniteness may or may not have been accurrate in the past, but I can certainly cite many cases which say that functional language makes it harder for you to pass 112a.

                Second, what is the basis for the statement “Congress in 1952 opened wide the use of words sounding in function…even outside of 112(f).” I know of no statutory change that deals with functionality other than 112(f). Therefore, it stands to reason that if one does not avail themselves of 112(f), they have not availed themselves of any “opening wide.”

                Third, I’m not sure what you’re asking for w.r.t. 112f. Are you asking for tests for determining when a combination is a bona fide combination such that 112f language is proper?

                1. First let me make some distinctions: some functional language, particularly in combination claims, is merely explanatory. Other functional language merely recites the steps in a process like the claims to most programmed computers. But there are claim elements that define structure functionally, steps in terms of their results, or materials in terms of their properties. It is with respect to the latter that I addressed my following remarks.

                  At least with respect combination claims, it now appears that the Federal Circuit has adopted the position that 112(f) applies regardless that one uses “means” or “step” or anything equivalent. That being the case, such claims can never be overbroad because they only cover what is disclosed and equivalents. But in my opinion, such claims are inherently indefinite. What they do is to define the outer limits of claim scope. The actual claim scope is within that boundary, somewhere. One has to look at the specification and prosecution history, not the claims, to fairly understand what the corresponding structure is, and let me tell you that is not easily done in most cases. Thus the claim scope is uncertain at best, and that is due to the uncertainty as to what the corresponding structure is.

                  But regardless, if the claims are required to particular point out the invention, how is it possible that they to do so by referencing structure, etc., described in specification? It is the claims that are “supposed” to tell us what is within and without.

                  So to extent that the claims should be definite, we need to ban functionally defined structure, steps or materials in claims to the extent that they refer to novel structure because I believe that it is quite permissible to construe functionally defined old elements to cover their full scope. The Supreme Court actually did so in Halliburton, but then we have 112(f) and the current Federal Circuit jurisprudence that has extended that statute far beyond its literal scope.

                2. Ned – you really do have to come to accept that Halliburton was abrogated in the Act of 1952 and ALL of the points of the 112 (the full 112, not just the optional part of (f)) are as I have shown to you to be.

                3. I simply disagree that vast middle ground is an accurate statement of the law post-Nautilus if it was ever a proper statement before.

                  As indicated above – this “notion” of yours is simply irrelevant.

                4. As to your other questions on the basis of terms of functional use outside of 112(f) – asked and answered MANY times.

                  I have provided case law (In re Orthokinetics, for example).
                  I have provided statutory law and the Cornell site explications.
                  I have provided the writings of Federico and Rich – architects of the Act passed by Congress.

                  You need to keep up, as I will not play the game of repeating (yet again) all of the conversations that have been put on the table for discussion over the past several years.

            2. No, it’s a method claim. There’s no “means” in it.

              What does that matter? 112f on its face only applies to combinations, and those combinations must be bona fide combinations. 112f applies equally to means and steps. Improperly invoking 112f is called a single means violation. If you want me to call it single step just so you can make the jump I will.

    3. MD: By chance I come across technical literature that teaches that liquid nitrogen leaves hide undamaged but permanently bleaches to pure white any hair (coat/pelt) growing out of that area of the hide. So I file on my new method of branding hides, at temperatures around that of liquid nitrogen rather than bonfire temperature.

      Your claim sounds incredibly obvious based on the prior art you just described.

      Why not just go ahead and use your method? Enjoy the cost-savings. Enjoy the pelts. Find a better excuse to threaten other people with lawsuits if that’s something essential to your happiness.

      1. Well yes MM, with hindsight it is obvious. Many of the best inventions are of the “Why did nobody think of that?” type. Another example might be the bag-less domestic vacuum cleaner. Freeze branding is not so obvious though, when the Paper I mention is remote from the branding arts and trade in animal furs and was anyway published a full 20 years before the date of my claim.

        But let’s stay on point. We could debate all day the “Obviousness Y/N” question but is there any point in doing that during a debate on when we get beyond an abstract idea?

        1. MD: Well yes MM, with hindsight it is obvious.

          It’s painfully obvious in view of the reference you described. What’s “innovative” about using “a solid object cooled to the temperature of liquid nitrogen” in light of the known fact that liquid nitrogen works for the same purpose?

          A reference teaches that you can burn a hole in paper with a flame at 451 F. In light of that teaching, is it a patent-worthy innovation to use “an object heated at 451” to burn a hole in paper? Of course it isn’t — unless maybe nobody understood that objects could be heated that high (a fact unfortunately not in evidence here on earth).

          the Paper I mention is remote from the branding arts

          “Remote from the branding arts”? I’m trying not to laugh but that’s pretty funny. The reference we’re talking about concerns the effects of a substance on an animal’s hide. Does it need to be published in Branding Digest Monthly to be considered “relevant”? And who decides what’s “remote” from “the branding arts” anyway? Your paid expert?

          published a full 20 years before the date of my claim.

          Does the alleged innovation become less obvious in view of the prior art if the inventor doesn’t read much? I don’t think it should matter.

          It took a long time for some attorney to find the chutzpah to claim most of the obvious “do it on a computer” junk that is floating out there even though the prior art relevant to those claims is sometimes centuries old. Unless there’s teaching away, why should such facts change the obviousness of the claim in view of the prior art?

          We could debate all day the “Obviousness Y/N” question but is there any point in doing that during a debate on when we get beyond an abstract idea

          When you get beyond any problems with a claim protecting “an abstract idea” it seems to me that debating obviousness is the entire point.

          1. Well thanks for all that, MM. I think it reflects a trans-Atlantic difference about how to go about filtering any given claim for fitness to issue. As you know, The EPO adopts a strict sequential approach and I am infected with that logic. First one filters for “technical character” and discards only that which lacks it. Then one proceeds to novelty. Obviousness comes last. Very often at the EPO the claim is still standing, even when obviousness is the only remaining hurdle. But by then, the issues (including definiteness and enablement) have all been so thoroughly explored that the obviousness debate is all over in very little time.

            I like that way of filtering. I suspect that we agree, that the way obviousness is handled in the USA is distasteful in practice, in the end subjective and in any case intellectually hard to defend

            I don’t like the modern US approach, that if it’s all obvious let’s wipe it out quickly, by dubbing it, right at the outset of the exercise, nothing of any significance more than a mere abstract idea.

            But if we are to adopt the US Approach, well then it behoves us to explore with rigor the boundaries of the “abstract idea” litmus test. Or doesn’t that matter, if it’s all obvious anyway?

            The English case I cited to was exploring whether use of T to treat ADHT was obvious, given that T was known for treating depression. With hindsight, it was obvious. But the court found it not obvious. I sense that your experience (and your heart) is in chem/bio/pharma, where things are not always predictable and where there is much debate about whether the “obvious to try” test is useful. My experience is elsewhere. Our different background and experience brings us to different attitudes to obviousness.

            Back to the freeze branding hypo then. Just because some obscure Paper published 20 years ago in Nature or The Lancet notes a permanent hair whitening effect from a single ultra-cold, short and sharp, thermal shock to human skin does not, in my book, render 20 years later the brilliant, out of the blue revolutionary idea to improve commerce in animal hides by branding the steers with a freeze rather than a red hot branding iron. Why? Because there is no hint in the academic Paper that the human skin, including the area under the white hair, can be tanned and sold commercially at advantageous prices. As you will have gathered, I like an objective TSM approach to obviousness.

            Thanks again for the discussion.

            1. An interesting juxtaposition that MaxDrei (inadvertently) presents:

              When “discussing something with someone with whom he agrees with on larger issues,” a fawning and obsequious “politeness” pervades the post – almost as if MaxDrei is afraid to have a cross word. Even going so far a s to offer up some point of “agreement” that is not at all present, and to make excuses for any sense of “disagreement.”

              When a post is made by someone with whom MaxDrei knows that he disagrees with on the larger issues, the automatic and reflexive ad hominem, with LACK of any civility, much less actually reading the post and contemplating, and giving the idea on board any sense of critical reasoning, occurs.

              With whom then does “the problem” lie with? Surely it is with MaxDrei.

              Just as the case may be that the Lady doth protest too much, so too, can it be that the Lady doth NOT protest where protest is warranted.

              One wonders if the “dialogues betwixt MaxDrei and I would be so “pleasant” if MaxDrei expended the same level of effort to be sycophantic to my points presented. Alas, no set of “posting rules” can control that behavior.

              (by the by, MaxDrei, your “point of reply” is not one “of preference” here in the States as might be gleaned from reading your post, but rather, one of what would PHOSITA entertain. Malcolm has in the past exhibited his lack of understanding on the concept and would prefer an incorrect version of the PHOSITA and would amplify “obviousness” beyond the limited world view for which the law of 103 applies to. He would forget that the world of prior art for 102 is different than the world for 103, and this difference is a direct function of PHOSITA. To wit: the world of prior art for 102 is not constrained by what the ITA constrains for analysis in 103.) IN this instance, your fawning politeness obscures the distinction, and is rather Unhelpful for the purpose of dialogue. Trying too hard to be too nice just is NOT an appropriate tactic for all situations.

  5. DC: Although non-precedential, the case will certainly reverberate – especially the court’s refusal to limit the definition of ‘abstract idea’ and its continued acceptance of judgment-on-the-pleadings as the proper method for dismissing cases on Section 101.

    When you see claims as junky as these, dismissing the case on the pleadings is the correct result. Even more correct would be sanctions given that there was no reasonable argument that the claims weren’t “do it on a computer” junk falling squarely within Prometheus/Alice.

    Here’s the key finding from the opinion: At best, the ‘392 patent answers the question of how to provide faster, more accurate and reliable impairment testing by simply stating “use an expert system.” M

    Got that? “At best”.

    At worst, we’ve got fraud on the PTO based on the fact that, as of the filing date, everyone on earth inclding Kevin Roe knew that (1) devices existed that could produce data relating to operator impairment; (2) machines can be turned off; and (3) computers can be used to evaluate data and use the data to control accessibility. So where’s the “innovation”? There’s isn’t any unless we recognize the new depths plunged by greedy patent lawyer who couldn’t innovate himself out of paper bag.

    And then, of coursse, we have that “vast middle ground” (LOL) between the best and the worst theoretical possibilities outlined above.

    As for “reverberations”, this case is unusual only because the CAFC actually bothered to write an opinion, even it was a non-precedential opinion. Most desperados with claims as awful as these end up with a Rule 36 affirmance of the lower tribunal’s ineligibility determination (e.g., the CAFC’s recent Rule 36 affirmance of the ineligibilty of Cloud Satchel’s junk claims).

    If you want “reverberations”, get ready for the super silliness that the CAFC seems ready to hand down in that “use rules to animate lips” case. Based on the oral argument, there’s a good chance the CAFC will reverse the district courts ineligibility finding in that case and an even better chance the decision will be so filled with internal contradictions and self-serving nonsense that it might as well be titled “Please Tear Me Up, Supremes.”

    1. ah yes, the canard of “can be” which is nothing more than the proposition that all inventions somehow (magically) are already “in there” in the [old box], without regard to the FACT that it is the change in configurations – by the hand of man through the manufacture of the machine component called software – that contains the NEW inventions.

      Funny how Malcolm refuses to address this counterpoint put on the table of discussion and instead merely wants to engage in his same old tired monologue….

      Shall we visit (again) the notion of configuration through the easy to understand example of three resistors in series versus the changed configuration of three resistors in parallel (then expand that example literally millions of configurations…)

  6. From Kevin Roe’s bio on linkedin:

    “Have written US patents that were so valuable that they have been licensed for millions of dollars.

    People who license garbage like this need to have their heads examined. Kevin Roe is a quintessential example of the type of b0ttom feeding attorney that thrives when the PTO and the courts completely fail to do their jobs. There are worse kinds of human beings out there, to be sure, but there aren’t too many worse kinds of patent attorneys (or worse kinds of attorneys generally, for that matter).

    Oh but wait! I’m just jealous because Kevin Roe made millions off his junk patents before his game playing was exposed. Hey Kevin — maybe Media Queue will hire you. I think they’re looking for an “expert innovator” in the field of testing stuff using tests with rules. It’s s00per dooper techno. You’ll thrive there.

  7. “The suggestion in this case appears to be that the same claim could have been eligible if the patentee had provided (in the specification) a full explanation of how to implement its system.”

    This is not necessarily saying that the claims are not enabled. It could be well within the capabilities of one skilled in the art to implement the abstract idea without undue experimentation.

      1. Claiming a concept implemented by a computer is always enabled. So if you don’t know how to implement it, you must not have ordinary skill in the art.

    1. “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”

      I agree in part that though the claimed subject matter might in principle be within the capabilities of one skilled in the art, the statute also requires that the specification actually describe “the manner and process of making and using it”. Being enableable in principle is not sufficient, one must provide at least enough detail in the description to satisfy those reading the application/patent that the inventor himself actually possessed the full scope of the subject matter and could make it work. I guess what I’m saying is that both the written description and enable requirements under 112 may be inadequate here, and not just enablement.

      The court noted some potential descriptive matter that was missing from the specification that would certainly raise doubts whether the inventor himself possessed the full scope of the invention, namely: how the existing vehicle equipment can be used to measure these characteristics; how the decision module determines if an operator is impaired based on these measurements; how the decision module decides which control response to make; and how the “expert system” effectuates the chosen control response.

        1. On further thought, even if the application had disclosed one way of achieving the desired result, that does not entitled one to claim always of achieving the desired result.

          This implies that the Federal Circuit would construe the claim here to cover the corresponding structure and equivalents. As I have said before, when one has to search through the specification and the corresponding structure to determine the scope of the invention, there is something inherently indefinite in such a claim.

          1. cover the corresponding structure and equivalents. As I have said before

            Simply and utterly wrong there Ned.

            Of course, you already know that, right?

  8. Once again, the Court visits Alice in Wonderland. Now 112 is included along with 102 and 103 in a 101 analysis. They continue to confuse the difference between patentability and the subset patent eligible subject matter.

    1. Now 112 is included along with 102 and 103 in a 101 analysis

      Prior to the Act of Congress in 1952, there was but one (ring) paragraph that ruled them all (ruled what became 101/102/103/112).

      How precious…

      😉

  9. Sigh. As I noted on the Patent Doc post, yet another case which should have been resolved under Section 112, not 101. The chaotic conflation caused by the broken and nonsensical Alice test continues.

  10. I’m struck by how small the world is, these days, when debating patentability/eligibility. For example, 6 uses the topical phrase “high hurdle”, almost as if he has been reading the IPKat blog:

    link to ipkitten.blogspot.de

    I’m struck too by how the same issues can arise in CII and pharma cases. Thus, simplified, but unchanged in scope, the impressive claim in the IPKat case reads:

    1. Use of T for treating ADHD.

    In the patent, EP 721777, upheld as enabled, definite, sufficient, new, useful and inventive, there was no Example, no comparative data. During examination at the EPO the Examiner asked where is the evidence. Applicant responded with a cite to a post-published peer-reviewed learned Paper.

    Of course, this being pharma, and the Plaintiff a generics firm, the litigation took place two decades after the filing date so obviousness was hard to analyse. Nevertheless, the court did it, and upheld the patent.

    No wonder the Federal Circuit suggests in the Roe case that the answer might have been different had Kevin explained in his patent how to build and operate the crucial “expert system”. Fact is though (unlike Eli Lilly in the English case) he failed even to make it credible, never mind plausible. All he did was to have an idea and write it down. Which is why Eli won and Kevin lost. The patent system working as it should. Hooray!

    1. MD: Fact is though (unlike Eli Lilly in the English case) he failed even to make it credible, never mind plausible. All he did was to have an idea and write it down. Which is why Eli won and Kevin lost. The patent system working as it should.

      Indeed. And there are only about a million equally junky claims out there that remain to be expunged from the system.

      In the meantime, maybe the PTO should stop granting more of them instead of continuing to coddle the lowest form of “innovator” that ever existed. That would help a lot.

      1. Oh Noes, someone is tiptoeing into the field of rye that Malcolm has anointed himself safe keeper over.

        My, oh, my, what will we do?

        /off sardonic bemusement

  11. More b.s. under Alice. These claims are dead under 112 and/or 103, and should have been killed that way. But they most definitely fall under 101 as Congress intended it back in 1952. It’s time for the CAFC judges to grow a pair and do what they did well for many years, find ways of politely confining silly Supreme Court cases to the dustbin.

    1. Atari, when you write “fall” under 101 I suppose you mean the opposite, that the claims ought to have survived scrutiny under 101. But if I claim a chemical compound and fail to disclose a meaningful use for it, do I survive 101 “useful” scrutiny? I had supposed not. If so, how much does it take, when it comes to a claim to a particular “expert system” before I’m useful enough to pass the 101 filter?

      Besides, I see no diminution in the Federal Circuit’s willingness to distinguish over Supreme Court precedent, as and when it feels inclined, to get to the result it thinks is right.

      1. Max, I too find it odd that the lower courts have interpreted the Supreme Court precedent literally when it is truly apparent, to me at least, that what the Supreme Court was driving at was preventing the patenting of non statutory subject matter. Except for Rubber-Tip Pencil, the Supreme Court has generally addressed claiming at the level of an idea, e.g., functional at the point of novelty or however else it is expressed, in terms the claims being unpatentable under what is now 112. Even Morse cited “112” as the statutory problem for claim eight.

        The claims in this case may be unpatentable under 112, but I think they are directed to an otherwise statutory invention.

  12. “Thus, contrary to what many patent attorneys continue to believe, whether a concept is an “abstract idea” will depend upon the invention’s priority dates.” – also contrary to logic, but alas Dennis isn’t wrong here. I’m not a fan of these claims as drafted. However, the test for “abstract” should be entirely independent of the prior art in my (now minority) view.

    1. Why is that? I mean if you write a new story that you put in an old book, why is it that the book would impart some sort of eligibility when everyone agrees (including you) that you didn’t invent the book? You “created” (as invent is not the proper word) a story, and the book is just existing medium through which your creation can be transfixed.

      Wouldn’t it make sense that at one point there were no books, and so the person who invented the book had a novel, eligible invention. Then other people, around the same time and unknowing of the earlier book invention, also claimed they invented the book, and thus they had eligibility (they plausibly claimed to create a new device) but lacked novelty. But once a number of years have passed, and everyone knows of a book, and agrees that the book is old, and it’s clear from the context of a specification that the applicant isn’t teaching you how to make a book and that the book is old, why is the inclusion of a book in the claim something that confers eligibility? Why shouldn’t it be seen for what it is – background upon which the asserted “invention” (the novel story) is fixed.

      That’s not to say an invention can’t be the combination of old things, but the context matters – if I write a story in a book, nobody plausibly thinks the act of combining words and paper (i.e. writing) is what is being suggested as the invention. It’s clear from the context the invention is the story. In other contexts it may be that combining element A and element B (even if both A and B are old) is the invention.

      I mean I suppose if we had a different system, one where the PTO had more power, the PTO could force the applicant to remove the book from the claim and then there would be a clear 101 with respect to the ineligible story, but we don’t have that system as the applicant is master of the claim. The applicant is free to put anything into the claim he wants. As long as that is the case, there has to be a mechanism whereby we say “we recognize this limitation is in the claim, but it’s background, it may be there to give context to what you’re claiming to have invented but you’re not pretending this is anything other than conventional” to prevent system claims that abuse the eligibility rules. Conventionality matters in defining what the invention is, and therefore novelty matters.

      I don’t think there’s any doubt that if there were no computers prior to Alice, and Alice taught people how to make computers, then the inclusion of computer limitations in the claims would have rendered the claims eligible.

      1. I really don’t follow your examples. My problem with Alice is that the fact that computers did or did not exist is immaterial (my minority view) to whether the subject matter is abstract.

        1. My problem with Alice is that the fact that computers did or did not exist is immaterial

          Yes, my question to you is why you think is that true, what support do you have for it? I assume your reasoning is that a processor is a concrete machine, it was a concrete machine yesterday and will be a concrete machine tomorrow, and every system that has a machine is eligible, therefore the inclusion of a processor in your claim surpasses all 101 rejections, right?

          What I’m suggesting is that at some point the processor, like the book above, in certain contexts loses the ability to impart eligibility to a system, because the inclusion of a processor has nothing to do with the “new or improved” feature that is the subject of the patent:

          1. A system comprising: A novel, non-obvious, non-useful song being sung by a person; and an old, known processor.

          The processor in Claim 1 has no interaction with and no relationship to the actual “invention” – a novel song. So why would it be imparting eligibility in this case? If we were to allow this to pass 101, then there would essentially be no 101, because we could always get around it:

          2. A system comprising: A novel, non-obvious, non-useful, ineligible thought; old, known paper to write the thought on; an old, known pencil for writing the thought down.

          Thoughts clearly aren’t meant to be eligible, and there’s no advancement (nothing “new or improved”) about what is eligible, so why should we allow this?

          3. A system comprising: A naturally occurring transitory propagating wave; and an old concrete building that the wave passes through.

          What I’m suggesting here is that in the Alice case, the patentee knew he wasn’t putting forward a new or improved processor. In fact, he basically admitted that the processor was old because he didn’t teach how to make a processor. Nor was the processor being used in some new way, it was being used to process code in the same way all processors do. In fact, his enablement required the processor/code interaction to be previously understood, because otherwise a PHOSITA couldn’t have written the code. So why is it that this system that includes the processor is concrete and eligible?

          Wouldn’t a “better” view (a view to prevent people from gaming 101 like they might with the “novel thought”) be that once the patentee admits that he is using a known processor in its conventional manner that it essentially disappears from the claim for the purposes of 101? Why is the processor in the claim OTHER THAN the fact that we let the patentee write his own claims?

          Why is it that we write Claim 4, but not Claims 5 or 6:

          4. A system comprising: a processor and novel, non-obvious code run by the processor.

          5. A system comprising: novel, non-obvious code

          6. A system comprising: a building; a desk in the building; a computer on the desk; the computer comprising: a processor, and novel non-obvious code run by the processor.

          The reason we don’t do 6 is because those are unnecessary limitations – the building and the desk don’t interact with the novel code in some different way. But that’s also true of Claim 4 – the processor isn’t interacting with the code in some different way. In fact, for the code to be enabled we have to guarantee that the relationship between the code and the processor is stable and known. The reason we write 4 instead of 5 is because writing 4 hides the fact that really all we’re claiming is 5; in the same way the pen and paper try and hide the fact that all we’re claiming is a thought.

          The difference, of course, is that code CAN be an eligible process by itself, while a thought can never be eligible. But the point is the same – the addition of the processor is irrelevant because the processor and its relationship to code is old and well known. That’s because the focus of these claims is on the software. If the focus of other claims was on a processor and a processor’s new interaction with, for example, a new different kind of memory, there the processor itself is involved in the “new or improved” thing, and imparts eligibility by itself.

          Further, let’s assume I’m wrong – how do you reject Claim 2? There’s no 103 issue because you can’t prove the novel, non-obvious thought previously existed. Nor is there a 112 issue, because people are clearly enabled to think and the thought can be conveyed in a specification. The only way to reject Claim 2 is to either ignore the pencil/paper under 101 or to ignore the thought under 103. Now I suppose you could do the latter, but that’s just an Alice test by another name – you’re still going to be upset that features are being put into the claims but not given their full weight under what necessarily must be a nebulous standard. Alice would not be any more palatable if the Supreme Court said that it was a 102 because you ignore the code and the processor/memory are anticipated.

          1. and every system that has a machine is eligible, therefore the inclusion of a processor in your claim surpasses all 101 rejections, right?

            What I’m suggesting is that at some point the processor, like the book above, in certain contexts loses the ability to impart eligibility to a system, because the inclusion of a processor has nothing to do with the “new or improved” feature that is the subject of the patent:

            Your suggestion is a F A I L – for two easy and explicit reasons (at least):

            1) 101 is NOT just a “meet the statutory requirement and you are in” thing. The other part of 101 is the claim being of the proper utility (the Useful Arts). THAT is why you F A I L right from the get-go when you attempt to use examples that are not within the Useful Arts.

            2) there is NO such “Jepson Claim format” mandatory law. Trying to read claims as if they are ALL Jepson claims makes that format a perfunctionary default legal requirement that Congress simply did NOT impose.

            Further, let’s assume I’m wrong – how do you reject…

            You ARE wrong – and you reject like you always should be rejecting: under the proper use of the law.

            1. 1) 101 is NOT just a “meet the statutory requirement and you are in” thing. The other part of 101 is the claim being of the proper utility (the Useful Arts). THAT is why you F A I L right from the get-go when you attempt to use examples that are not within the Useful Arts.

              What are you saying with this? Are you saying that the utility test must be met by an eligible feature as opposed to the claim as a whole? I’m not aware of a case that says that, do you have one? So in the book/story example – the book has utility (it can be used to store information) and it is eligible, so that passes 101, right? Must the novelty also be in the eligible and useful feature? If not, that means you can patent old book + new story right? If so, isn’t that just a statement that we ignore ineligible matter, which is pretty much what the Alice test achieves anyway (identify abstract idea/ineligible matter, segregate it out, consider the other limitations)?

              I don’t understand what you’re saying the test is, complete this sentence for me: The reason old eligible subject matter + new ineligible subject matter is okay/not okay is ____.

              2) there is NO such “Jepson Claim format” mandatory law. Trying to read claims as if they are ALL Jepson claims makes that format a perfunctionary default legal requirement that Congress simply did NOT impose.

              I’m not suggesting there’s a mandatory format, but I am suggesting that is what the statute USES AS AN ANALYSIS, which we know is true because “101 does not depend upon the scrivener’s skill”. If Ultramercial writes claims that amount to watching advertising in exchange for viewing content on a computer, and the prior art is watching advertising in exchange for viewing content on a television, it doesn’t matter if you use a Jepson-like “watching advertising in exchange for viewing content on a computer instead of a tv” phraseology or actually write out a series of acts that constitute trading advertisement viewing for content on a computer, the 101 analysis is the same – it’s still an analysis that we’ve conventionally traded advertising for content in the tv context, and all the applicant has done is added the idea to shift it to the computer context.

              And again this is an example of how conventionality matters: when you had prior tv viewing, the departure was to take what was done on tvs and put it on computers. If there was no prior tv application, the departure would be the trading of advertising for content viewing, which is a significantly more weighty contribution and would heavily impact the analysis done. Ultramercial applied it on a computer, my hypothetical guy enabled visual modern advertising – they’re two totally different improvements.

              1. RG: What are you saying with this?

                He’s saying that he’s right and you’re wrong because you’re “not allowed” to use hypotheticals that don’t serve “anon”‘s purposes.

                Just get on your knees and kiss his ring, RG, and don’t forget to thank and acknowledge his “points” in every other comment. Otherwise you’re just demonstrating your bias and ignorance to everyone.

                Rince, recycle, repeat.

                Seriously, though, I commend you for the continuing education efforts. There are newbies out there who have an excuse for not understanding these fundamental issues. “anon” certainly isn’t one of them, however, and neither is his bff “i invented that”.

                1. It is NOT that you are “not allowed because it does nto serve my purposes”

                  Not at all.

                  It is because such do not even make it into the conversation – AT ALL.

                  There can be no take away from ANY attempt to make a legal point because you are simply not in the area that the rest of the law pertains to.

                  This has NOTHING to do with me. It has everything to do with the law itself.

              2. It is clear what I am saying: your attempt is wrong from the get-go with our conflation of non-Useful Arts into a legal discussion that MUST – from the start – be focused on the Useful Arts.

                Is it really that difficult to NOT engage in that (well-known) canard and instead attempt a proper legal discussion in order to arrive at any merits?

                1. It is clear what I am saying: your attempt is wrong from the get-go with our conflation of non-Useful Arts into a legal discussion that MUST – from the start – be focused on the Useful Arts.

                  I’ve said – I claim a system comprising a book and a new story. The book is clearly within the useful arts. Nobody is suggesting that when the book was invented it was ineligible subject matter for a patent. I think we all agree that a story, in and of itself, is not useful. But that’s just one aspect of the system as a whole. Many of the 101 cases do this as well – in Mayo there was certainly treatment of a disease utility, but the novelty lay in the ineligible aspect which in and of itself was not useful.

                  So do we ignore the non-functional aspects altogether? Do we count them for some things and not others?

                  If I have a book with a novel story in it, is it anticipated by another book because the story is given no weight at all? Is it obvious over another book with words in it? Or does it surpass the prior art rejections and fail for some other reason?

                2. You continue to err by attempting to equate stories with software.

                  Set B printed matter versus Set C printed matter.

                  Until you change your beginning error, you will simply not reach a proper understanding.

          2. In your claim 2 example, we can reject the claim without relying on “abstract” or section 101. Here, I would rely on 112 and argue that the “thought” is indefinite.

        2. iit: I really don’t follow your examples.

          Is anyone surprised? Take some remedial education classes, learn to read and learn to think.

          Then come back when you’re all growed up.

          1. LOL – Malcolm responding to someone saying that they don’t understand…

            More of Malcolm’s favorite of AccuseOthersOfThatWhichMalcolmDoes

            Go figure “folks”

        3. IIt My problem with Alice is that the fact that computers did or did not exist is immaterial (my minority view) to whether the subject matter is abstract.

          That’s not “your problem with Alice”. That’s your problem with applying basic logic to the analysis of the eligibility of a patent claim.

          But you can at least take comfort in the fact that you’re not alone. I had to hold hands for years here trying to get “smart” folks here to accept some of the simplest basic facts about subject matter eligibility and how the analysis must necessarily proceed in order to have any utility. But it sank in eventually. Now there’s just you and a couple dozen software patent worshipping s0ckpuppets out there who relentlessly insist on “not getting it”. Meanwhile, most of the rest of the world has moved on.

          1. Your diatribe remains fundamentally misplaced, Malcolm.

            It is you that has not accepted the most basic facts and it is you that continues to spew malarky as if that malarky were somehow meaningful.

            Your “version” of “to have any utility” would be a de facto ban on the single most prevalent form of innovation today – and in a dichotomy that you have yet ot even bother address, a form that is MOST accessible by those NOT in the one percenter’s club that you seemingly want to place in your field of rye.

            Now there’s just you and a couple dozen software patent worshipping s0ckpuppets out there who relentlessly insist on “not getting it”.

            LOL – change that to “anti-software patent worshipping” and you have the EXACT same old trite rhetorical t001 that you are infamous for: the AccuseOthersOfThatWhichMalcolmDoes.

            Go figure “folks.”

  13. Yes, another example of “Jules Verne” or “wouldn’t it be nice for someone to figure out how to actually do this?” patents with no 112 enablement. Like too many patent invalidity decisions now based on 101, patents like this should have been rejected by the PTO for their lack of enablement. But PTO management for years had actually discouraged examiners from giving 112 non-enablement rejections! Even though the few examiners that do apply 112 rejections.
    So instead a defendant like this has to spend several million dollars to fix the PTO’s errors in litigation, because PTO failure to apply 112 is not correctable by either a reexamination or an IPR. A PTO systemic defect that patent-attorney “inventors” [as here] can take advantage of.

    1. “patents with no 112 enablement.”

      But but but posita!

      “Like too many patent invalidity decisions now based on 101, patents like this should have been rejected by the PTO for their lack of enablement.”

      Can’t do that, then they’d likely have to reject nearly all the software patents on enablement. Plus, the Fed Circ set the bar waaaay too low for enablement, and set the bar for required evidence to establish a lack of enablement way too high. Remember, the applicant signed his oath/dec. now magically the office has a high hurdle to make a 112 enablement rejection.

      1. Your “protest” is simply NOT intelligent.

        In truth – what you see is that the law as written by the courts cannot be sustained and falls apart when viewed in light of the statutory law as written by Congress.

    2. Just to follow this up, my friend who remains at the USPTO had his SPE tell him to withdraw a 112 rejection during an interview. He had objected to the claim because it violated the laws of conservation of momentum and angular momentum. This led to allowance, because (obviously) you cannot find prior art on something that is physically impossible.

      1. ” my friend who remains at the USPTO had his SPE tell him to withdraw a 112 rejection during an interview. He had objected to the claim because it violated the laws of conservation of momentum and angular momentum”

        He most likely fed up and it didn’t violate either.

    3. patents with no 112 enablement. Like too many patent invalidity decisions now based on 101, patents like this should have been rejected by the PTO for their lack of enablement.

      Now here’s an interesting question you may well be able to give some guidance to any reading examiners on.

      The burden of making a rejection is on the examiner. The claim is to writing code to achieve a functional result. How does one go about supporting an argument that something is not enabled when the only act required is a particular type of writing? Keep in mind that software coding is a perfectly predictable art – which raises the burden for undue experimentation. Must you find a treatise saying such code to achieve a functional result can’t be done? You know how rarely people say what can’t be done? And what the odds are of you finding the exact functional language being claimed? What if you do find that language and it’s from something a year before the filing date. The art moves pretty fast, is that evidence that it wasn’t achievable at the filing date? What about Federal Circuit opinions say that any function that is properly defined is enabled because translation is mere clerical work?

      In short, how can you turn it into something more than a mere swearing test – with the applicant saying “of course this can be done” and the examiner saying “no it can’t”? Assuming that is the sole argument remaining (and since you’re not saying it’s also obvious, it would be) what supervisor is going to send a he-said-she-said argument to the board when you have the burden?

      But PTO management for years had actually discouraged examiners from giving 112 non-enablement rejections!

      Factual. My first SPE never let me make any enablement rejections.

      Can’t do that, then they’d likely have to reject nearly all the software patents on enablement. Plus, the Fed Circ set the bar waaaay too low for enablement, and set the bar for required evidence to establish a lack of enablement way too high. Remember, the applicant signed his oath/dec. now magically the office has a high hurdle to make a 112 enablement rejection.

      True, true, true and true. You can get around this, however, by making the same rejection that you would make for enablement under written description and then changing some buzzwords around. Similarly, some examiners will improperly cite a term under 112, 6th and apply Arisocrat to find it indefinite for the same reason. It’s all the same thing though – applicant’s are trying to claim on the one hand it’s never been done before so get me past 103 and yet I don’t have to teach anything so there’s no 112.

      1. The only 112 rejections I have ever made were from where the applicant/attorney obviously messed up (got physics or chemistry wrong). It was a royal pain in the ass, but they abandoned after non-final.

        1. Right but that’s the problem, because you have rules to rely upon and software has none.

          It’s like if I wrote: “There once was a wizard, and he studied really hard and cast a magic spell, the end.” And then argued that because I wrote a story about a wizard, and all stories about wizards can be achieved through writing, that therefore I had written Harry Potter. Well of course there’s no evidence I’m skilled enough to write Harry Potter, nor did I posit all the nuances that make up the Harry Potter stories, but there’s no physical law and no evidence that I’m not as good of a writer as J K Rowling either. So the argument over whether I can write Harry Potter amounts to a swearing contest with me saying “I totally could have done that” and the other guy saying “No you can’t.” and the other guy has the burden of persuasion.

              1. Does not wash Random.

                Exactly because of the 101 aspect of utility.

                That’s kind of important for the Set C portion (the exception) to the Set B controlled items of the judicial doctrine of printed matter that all of this stuff ends up pertaining to.

                1. I write a very basic algorithm which measures distances, assumes an average driving speed (say 10mph) and simply divides the distance by the speed and returns a result. It’s not very accurate, but it performs the function of estimating trip time.

                  Google Maps has a very particular algorithm which considers actual roads, actual speed limits, stop lights and traffic. Google maps will also estimate my trip time, but it will be much more accurate.

                  You tell me, since the office is so bad at its job anon, how the office should go about proving that I, coming forward with my basic algorithm, should have my claim to “all estimating trip time algorithms” found unenabled. What is the office going to cite against me? Some journal that says you can’t estimate trip times? Those don’t exist, and even if they did they clearly would be out of date once I came forward with one example. I would need to find a journal which specifically says “It might be possible to estimate only an average time, but would not be possible to write an algorithm that considers roads, actual speed limits, and traffic”.

                  So an enablement rejection comes down to the office saying “you haven’t enabled other algorithms” and me saying “yes I have I gave you this example and you can write any other variables you want in there”. Then when Google comes along and actually makes their algorithm they have to contend with an overbroad claim from me, because nobody ever stopped me from overclaiming.

                  Virtually every claim I see is people giving me the basic algorithm and then claiming a scope that includes the nuanced Google Maps.

                2. You seem to not recognize a very simple and basic idea: the difference between math and applied math (otherwise known as engineering).

                3. I’m not sure how that’s relevant – I’m not talking judicial exceptions here, this thread is assuming the problem is not 101 but 112 enablement, with them saying there should be no 101 because the claim could have been disposed of by the office making an enablement rejection. Nobody is answering my question how the office, with the burden of proof, could have gone about rejecting such a “clear” enablement problem. It’s a swearing test with the office having the burden of persuasion.

                  You’re against Alice, so here’s a chance for you to show how 112 performs it better. How does the office complete this “clear” enablement rejection?

                4. Nobody is answering my question how the office, with the burden of proof, could have gone about rejecting such a “clear” enablement problem.

                  Nobody is telling you how to do your job…?

                  Maybe because you keep on asking how to do your job with conflated examples of Useful Arts and Non-Useful Arts, and you are ASSuming that a “clear” problem exists that defies any attempt to correct except to use the law incorrectly.

                5. Nobody is telling you how to do your job…?

                  He is saying this is a clear enablement rejection. In order to make an enablement rejection the office has a burden of proof. I am asking for what that proof is, so that I can agree with him the office screwed up. People are saying there should have been a rjeection, but nobody is saying how they would go about making said prima facie rejection.

                  Maybe because you keep on asking how to do your job with conflated examples of Useful Arts and Non-Useful Arts, and you are ASSuming that a “clear” problem exists that defies any attempt to correct except to use the law incorrectly.

                  I just gave an example of an application actually before me – the applicant writes a basic driving direction algorithm, but then seeks a scope of all driving direction algorithms. That is within the useful arts. It seems to me the only way to support an enablement rejection would be the rare case of finding a reference that says “you can do this exact algorithm the applicant is claiming, but you can’t do something else.” If you know software you know that nobody makes those statements.

                6. if you know software“….

                  Right back at you: go to Techdirt or Slashdot and read on the MathS philosophy type of equivalence (note: NOT the hardware/software type of equivalence) and please try to disabuse yourself of your innate “code-level claiming” desire.

  14. Alice appears to be a convenient way for judges to say that they are going to tell us what the art field really is with no evidence.

    Fact is that I’ve done AI research, I’ve taught AI classes with expert systems, I’ve been a software engineer, and the claims in view of the specification are enabled and I know the metes and bounds of this claim.

    This opinion is not patent law, but the application of a policy the SCOTUS passed. They should start putting candle wax stamps on their opinions like they did in the ancient w1tch trials. Let us all know that this has nothing to do with the law, but with power.

  15. Alice appears to be a convenient way for judges to say that they are going to tell us what the art field really is with no evidence.

    Fact is that I’ve done AI research, I’ve taught AI classes with expert systems, I’ve been a software engineer, and the claims in view of the specification are enabled and I know the metes and bounds of this claim.

    This opinion is not patent law, but the application of a policy the SCOTUS passed. They should start putting candle wax stamps on their opinions like they did in the ancient witch burning trials. Let us all know that this has nothing to do with the law, but with power.

  16. From Kevin Roe’s bio on linkedin:

    “Have written US patents that were so valuable that they have been licensed for millions of dollars.

    Successful in obtaining issued US patents with valuable claims for clients by using effective communication skills with the USPTO.

    Very skillful at obtaining issued US patents from patent applications, even after many patent law firms have failed.”

    One does have to wonder how often he falls back on claiming abstractions to obtain these hugely valuable patents (nevermind how valuable the actual inventions were).

  17. I think there is a significant chance that this applicant, Mr. Roe, being an attorney, filed this application with the sole intent of trolling the likes of anon and Gene Quinn.

  18. “The suggestion in this case appears to be that the same claim could have been eligible if the patentee had provided (in the specification) a full explanation of how to implement its system.”

    Mmm, nah bro. They also needed to go ahead and put that stuff in the claim as well as the spec. This claim dies regardless of the additional WD in the spec.

    1. Morse had a working system for communicating via electricity and then additionally tried to claim the discovery that you could communicate by electricity.

      Would that be the same thing here if you added implementation details to the claims and then said in your last claim ‘Further I claim any system which uses an expert system to prevent impaired driving.’ ?

  19. “Thus, contrary to what many patent attorneys continue to believe, whether a concept is an “abstract idea” will depend upon the invention’s priority dates.”

    Not necessarily technically true. It COULD conceivably, in some very rare instances, depend upon the invention’s priority dates, but generally speaking in the vast vast majority of 101 rejections/invalidations that info is for all practical purposes irrelevant.

    This is because usually, just like in this case, they either just tack on an abstraction to something you’d well expect is old, or the whole claim is one big abstraction (save for the occasional tie to something very old), or they simply abstract out everything that one would think might be an advance over prior art very well known as of the date of filing, and much earlier, and which is generally not even an issue the applicant/patentee wishes to argue.

  20. When struggling with the issue whether the subject matter of the claim is anything more than an abstract idea, I think it helps to think that patentable matter defined by a claim ought to be the solution to a problem, rather than no more than the announcement of a problem to be solved. Further, the problem has to be one within the useful arts. For example, consider the problem a parent has, to guard against their drunken teenage son driving a car on the public roads. This is a serious and weighty problem in human relations rather than a problem in any GATT-TRIPS “field of technology”. Ways to ameliorate such problems (chaperone, girlfriend, withold car keys) are not patentable inventions. Technology that solves a problem in technology is what patents are all about.

    And regardless what sort of problem was troubling inventor/attorney/advocate Kevin Roe, he had no solution. All he did was to advocate the trite trivial banal notion of using an “expert system” for damage control. Neither did he trouble himself finding any particular way to implement his idea or discovering it to the public in his patent application. Hekkuva job USPTO. Remarkable that he had the chutzpah to take Mercedes all the way to on his patent. He had been reading too much about the Blackbery cases, I suppose.

    I regret that important and life-threatening issues like restraining immature teenagers from hurting themselves and others are dismissed as “abstract”. Anything but, I should have thought.

    1. MaxDrei,

      For the the umpteenth time, please respect our sovereign here and note the difference between Useful Arts and your (EPO-desired) technical arts.

    2. I think it helps to think that patentable matter defined by a claim ought to be the solution to a problem, rather than no more than the announcement of a problem to be solved.

      True, and not just a general framework for a solution, but a particular means. Particular means have been and always will be the only thing that one can “invent.” You can’t claim the end result (i.e. solving this problem) nor can you claim any broad set of steps (such that each step would encompass wildly different particular means) that lead to the result.

      1. Much as I agree with a great deal of what you write, Random, I am representing inventors so I would hesitate, myself, to be so prescriptive.

        Suppose you invent freeze branding. Hitherto, hides are flawed by the presence of the scar in the leather arising from hot iron branding. My invention is to use an iron chilled in liquid nitrogen, which under the iron bleaches the animal hair white while leaving the leather undamaged.

        I claim: Freeze branding.

        Is that commensurate with my contribution to the art? Or will you give me a patent only if I claim the “particular means” ie a complete kit of parts including the vacuum flask of liquid N2?

        1. You may could get that claim. Tough one, did people try and fail various methods of freeze branding before you and you’re just now getting your sole specific method to work?

        2. I don’t know the art well enough to comment intelligently. If “freeze branding” is a description of the result (i.e. “anything that does not use hot iron branding”) then it’s a claim to a field. It’s like claiming (this appears to be an analogy) cold fusion. If cold fusion is fusion that occurs at “regular” (i.e. not solar) temperatures, there are presumably many different machines (none of which we’ve enabled yet) which could achieve the result. Enabling the first machine doesn’t give you the right to claim all other possible machines. Morse settled that one.

          What you can claim is your particular process – Chilling an iron with liquid nitrogen. If someone else recognizes that something other than liquid nitrogen would also bleach the hair and leave the hide undamaged, that’s a different invention entitled to its own protection. That case was also already decided – Perkin’s Glue. Similarly, depending on how one defines freeze branding it may include wildly different means – for example, suppose I develop a non-fading organic paint and brand that way.

          You’re in trouble whenever you’re claiming a result and cannot prove the negative – you have to show that there’s not other ways to do something other than how you’ve specifically posited and reasonable variations thereof. If you’re claiming “freeze branding” as a result with the only support being liquid nitrogen, you better be sure that there aren’t other coatings that would also achieve a freeze branding. What if someone comes along and realizes that Chemical X causes a low level localized irritation while the animal is alive, and brands that way? That’s a totally different concept and working principle from liquid nitrogen, but still isn’t hot branding. That would invalidate your claim. Again, that’s using an expansive view of what freeze branding is, but the same concept applies no matter how you define freeze branding, it’s simply that making it a tighter definition makes it harder to find different means. But then you have a tighter claim scope, which is the point.

          The simple fact is this – the only thing you can ever certainly get protection on is the particular means in your spec. Every time you abstract out features or limitations from the particular conveyed means, a defendant has an avenue to argue that your scope encompasses different embodiments you did not posit and did not invent and is therefore overbroad in some manner. Whether an abstraction to remove a feature leaves the claim still valid and eligible is highly context specific, but one line which seems to have been drawn in the sand by the Supreme Court is essentially the equivalency test – substantial similarity in element, operation and result. Once your scope encompasses embodiments that are not substantially similar to your conveyed means, you are running a significant risk of being overbroad which, of course, can be mitigated through proper use of dependent claiming.

          1. Random states: “I don’t know the art well enough to comment intelligently.

            And clearly this pertains to his (rampant) views on software including but not limited to the view that such is “perfectly predictable.”

            Obviously Random has NEVER worked on a real world software product, and has no clue as to what the debugging process involves.

            1. a) You couldn’t be more wrong about my software knowledge.

              b) When the claims are all drawn to functional results even non-software people can figure out what to do easily.

            2. anon: Obviously Random has NEVER worked on a real world software product, and has no clue as to what the debugging process involves.

              LOL. It’s hilarious to see this “you don’t understand the technology” script still being pulled out.

              Random has not yet bothered to read up on the MathS philosophy that I have previously directed him

              Because “anon” is a super serious person. And he knows about debugging which is, like, sooper dooper hard.

                1. (and it is not about whether debugging is “hard” or not – it is the fact that such is necessary – please stop being an arse, if you can)

          2. as to “particular means,” obviously Random has not yet bothered to read up on the MathS philosophy that I have previously directed him to (re: PoIR of techdirt/slashdot), and also obviously is still stuck in his “different code means different patents” mode, and further obviously is NOT dissuaded from pontificating on yet another art field that he does not know about.

            Random,

            while you “mouth” the equivalency line, you STILL do not appreciate what that means when it comes to software.

          3. Every time you abstract out features or limitations from the particular conveyed means, a defendant has an avenue to argue that your scope encompasses different embodiments you did not posit and did not invent and is therefore overbroad in some manner.

            You really got to get over this penchant for exacting picture claiming….

    3. >I think it helps to think that patentable matter defined by a claim ought to be the solution to a problem, rather than no more than the announcement of a problem to be solved.

      I’m pretty sure that there is some US case law that says something like “simply identifying a problem to be solved is not sufficient for patentability”.

Comments are closed.