Comments for Patently-O https://patentlyo.com America's leading patent law blog Wed, 21 Feb 2018 04:43:24 +0000 hourly 1 https://wordpress.org/?v=4.8.5 Comment on Isolating and Measuring a Natural Phenomenon by RandomGuy https://patentlyo.com/patent/2018/02/isolating-measuring-phenomenon.html#comment-401666 Wed, 21 Feb 2018 04:43:24 +0000 https://patentlyo.com/?p=22496#comment-401666 Conflating 101 and 112 only shows that you truly understand neither.

For anon: Scoreboard.

For people who might be able to learn something: The Supreme Court used to police non-enablement overbreadth by what is today called 112b and Alice. If a Spec disclosed only one means of doing something but the claim was drawn to all means of doing something, the claim either failed to particularly claim the invention (because the functional abstraction is not a particular description of the invented structure which performs the function) or it was abstract (because Morse actually suggested he invented every means of printing at a distance).

Following the 52 act, the CCPA gutted 112b as a substantive scope rule and ignored abstraction. When they realized that was leading to ridiculous results where people would invent 1 means and claim all means of performing a function, they had to invent written description to prevent the overbroad scopes. The Supreme Court has never taken and never endorsed Written Description’s “posited possession” standard for declaring claims overbroad, and instead has taken cases like Alice and Nautilus.

Written Description is a test which notably requires counter-invention (prove overbreadth by showing a different means of achieving the vague result than what the patent’s spec contemplates) and places a clear and convincing standard on the defendant. Alice, on the other hand, allows for a quick back-and-forth argument over whether other limitations surrounding vague or functional language are “significant” and there is heightened standard.

They aren’t the same test but they are definitely related, for at least the reason that one can’t really prove they possess the entire range of an abstract act.

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Comment on Isolating and Measuring a Natural Phenomenon by RandomGuy https://patentlyo.com/patent/2018/02/isolating-measuring-phenomenon.html#comment-401664 Wed, 21 Feb 2018 04:30:48 +0000 https://patentlyo.com/?p=22496#comment-401664 does this spec have any disclosure to support any claim specificity to the allegedly novel and fully generic claim step…

If only I could get my coworkers to think this thought.

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Comment on Isolating and Measuring a Natural Phenomenon by RandomGuy https://patentlyo.com/patent/2018/02/isolating-measuring-phenomenon.html#comment-401663 Wed, 21 Feb 2018 04:23:05 +0000 https://patentlyo.com/?p=22496#comment-401663 They said, “Appellant’s claims are directed to a naturally-occurring phenomenon.” The PTAB justified unpatentability based on the law of nature exception.

The claim does a) a non-limited analysis on b) naturally occurring matter. A is ineligible and B is not a significant limitation on it. B is ineligible and A is not a significant limitation on it.

The PTAB sees this a “directed to B with A not being significantly more” situation. You (in your 5.0 post) described it as a “directed to A with B not being significantly more” situation (by calling it a method of measuring a phenomenon).

I simply pointed out that if you wanted to look at it that way, the claim would still be ineligible, just under a different theory of abstractness. I’m not trying to justify what the PTAB did (though the PTAB was within their right to resolve the directed to inquiry as they did), I’m pointing out that even if you look at the claim as being directed to “measurement” (as opposed to a particular kind of measuring device) the claim would be abstract, regardless of whether the measurement is of a natural thing or anything else.

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Comment on Eligibility Analysis and its Underlying Facts: A Roadmap for Surviving Dismissal on the Pleadings by B https://patentlyo.com/patent/2018/02/eligibility-underlying-surviving.html#comment-401662 Wed, 21 Feb 2018 04:18:03 +0000 https://patentlyo.com/?p=22450#comment-401662 Respectfully, no. Two weeks doesn’t make a “trend,” and the CAFC has an annoying habit of ignoring limitations and asserted advantages they feel entitled to ignore. Judge Linn commented upon this in his dissent in Smart Systems.

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Comment on Isolating and Measuring a Natural Phenomenon by RandomGuy https://patentlyo.com/patent/2018/02/isolating-measuring-phenomenon.html#comment-401661 Wed, 21 Feb 2018 04:04:44 +0000 https://patentlyo.com/?p=22496#comment-401661 Not sure I get your dig at me, Ned

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Comment on Trump’s Budget Proposal for USPTO Flat for FY 2019 by anon https://patentlyo.com/patent/2018/02/trumps-budget-proposal.html#comment-401656 Wed, 21 Feb 2018 02:17:50 +0000 https://patentlyo.com/?p=22437#comment-401656 There is no “logic” there – only Malcolm’s own duplicity and – as typical – a generous helping of his number one meme of Accuse Others.

12 years now.

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Comment on Eligibility Analysis and its Underlying Facts: A Roadmap for Surviving Dismissal on the Pleadings by anon https://patentlyo.com/patent/2018/02/eligibility-underlying-surviving.html#comment-401655 Wed, 21 Feb 2018 02:15:29 +0000 https://patentlyo.com/?p=22450#comment-401655 None in opposition then?

That rather proves my point, does it not?

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Comment on Some Laws Regarding Laws of Nature by anon https://patentlyo.com/patent/2018/02/some-regarding-nature.html#comment-401654 Wed, 21 Feb 2018 01:58:05 +0000 https://patentlyo.com/?p=22494#comment-401654 That would entirely depend on how you define a successful revolution.

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Comment on Isolating and Measuring a Natural Phenomenon by anon https://patentlyo.com/patent/2018/02/isolating-measuring-phenomenon.html#comment-401652 Wed, 21 Feb 2018 01:51:24 +0000 https://patentlyo.com/?p=22496#comment-401652 No Les, by any objective view.

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Comment on Isolating and Measuring a Natural Phenomenon by anon https://patentlyo.com/patent/2018/02/isolating-measuring-phenomenon.html#comment-401651 Wed, 21 Feb 2018 01:49:31 +0000 https://patentlyo.com/?p=22496#comment-401651 , but that’s not the reasoning the PTAB adopted

Malcolm
Does
Not
Care

never has – never will

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