Introduction to Patent Law Book Review

Introduction to Patent Law An Introduction to Patent Law
by Janice M. Mueller


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Book Review: In this 400 page paperback, Professor Janice Mueller (Pittsburgh) lays out the basics of patent law and explains the requirements for obtaining a patent as well as considerations during litigation.  This is essentially a textbook, and covers the same material as other patent law textbooks.  The main difference is that Mueller’s writing flows and is easy to read.  In addition, she explains the foundations of patent law without getting bogged-down in unnecessary case-law and statutory interpretation.

This is a basic but thorough text covering the legal side of patents.

Who should read An Introduction to Patent Law:

  • Law students (This is a good back-up to understand what your casebook is saying).
  • Anyone entering the area of intellectual property and patent law.


This book is of limited use as a research end-point for an experienced patent attorney.  The book is an introduction and does not cover the topics in enough depth to be serve as a treatise. (That’s why it is called an introduction).

About Book Review Monday: On occasional Monday we review patent law related books.  Let me know if you are interested in writing a book review. (Send your proposal to

154 thoughts on “Introduction to Patent Law Book Review

  1. 20

    I’m sorry. But I’m with the examiner on this one. Learned in law school that “and/or” has multiple interpretations and that it is a sloppy drafter who resorts to it . . . or one who intentionally wants to be ambiguous. Mr. Gross wouldn’t have had to do the appeal if more precisely drafted in the first place. It was very kind of the PTAB to have taken it upon themselves to clear up the ambiguity for him.(Disclosure: I am not the examiner and/or not related to the examiner and/or anyone on the Board.

    1. 20.1

      Multiple interpretations…?That would depend on what the definition of “is” is…(said in the best William Jefferson Clinton tones)

  2. 18

    There is ANOTHER problem with the “and/or.” It calls for forming a website collective, based on “either” a “common topic” or a “common contract” or both. However, only the “common topic” aspect is employed by the other steps. “Common contract” is unrelated to any other step in any way. It just hangs there — an apparently completely unrelated criteria for forming a collective. When items are added to a claim that have no functional relationship to the other elements of a claim, isn’t there a 112, p.2 problem? In former times, such claims were known as aggregations, a parts list, like my example of a claim to the combination of a monkey and a monkey wrench. What is the proper rejection of such a claim where unrelated items are simply listed that add nothing to the claim?

    1. 18.1

      Of all people, Gene Quinn note the problem of combining in a claim two different things that have no relationship to each other. He says that the claim should have received a 112, p.2 rejection.I noted that AAA JJ responded to Gene and noted the problem was “aggregation.” It is a 112, p.2 problem.

      1. 18.1.1

        “Of all people”….?That’s just a little bit of Malcolm-taint there, is it not?Speaking of Malcolm taint, the concept of ‘aggregation’ would help explain why his pet theory of [oldstep]+[newthought] is such a fallacy, and why he always runs away and/or dissembles when it comes to claims as a whole and integration, why he is always trying to introduce the strawman of claims completely in the mind (when the topic is claim elements in the mind and never a complete claim). Aggregation is the concept that explains why claims of [oldstep]+[oldstep] or [oldstep+[ANYTHING] may well be perfectly patent eligible AND patentable claims, as the concept distinguishes between collections that merely are unconnected and lumped together and collections that are integrated. His fallacy relies on the “+” always being an aggregation when clearly that is simply not so.

  3. 17

    Perhaps something like the following would minimize the risk of unnecessary narrowing:“… at least one of A, B, or C, individually or combinations orsub-combinations thereof.”

    1. 17.1

      I think you get all that if you just say “at least one from the following group.” Saying it is a group then gives one the group selection process. I think this way is actually the cleanest.

  4. 16

    This is some trollriffic stuff alright. Check out the pending claims and try to believe it. Exhibit A for our broken messed up patent system. Will the USPTO ever wake up?A method of identifying appropriate electronic advertisinginformation for a search engine implemented using computer software instructions embodied in a computer usable medium executing on one or more computing machines and comprisingOkay, so note that it’s not just “ad information” but “appropriate” ad information”. The term “appropriate” is not defined. Presumably it means “ad information that works.” Isn’t that nice? It’s a method for doing something that works! And it uses a computer in some manner, although at this point we have no idea why the computer is mentioned at all. But it is like a beautiful dream come true already. Let’s see what awesome technology awaits below … forming a website collective whose members include a plurality of different websites characterized by a common parameter including at least one of a common content topic and/or a common contractual arrangement;Okay so two members are formed into a collective based on some “common content” or simply because they agree to be formed thusly. Nothing new at all about that. Entities have joined together for millions of different business and advertising purposes since the beginning of commerce. “Websites” are just another old example of such, no different than any old storefront or newspaper stand in that context.further wherein said website collective members are treatedas a single aggregate content entity by the search engine for responding to searches releated to at least said common content topic;I guess that’s the only where the computer necessarily comes in. Of course, search engines, like supermarket aisles, are just old entry ports into a venue where different information is presented to potential consumers. So far this is just obvious crap without much of a point … but I’m sure it gets really technological really fast. compling content taken from webpgages in the websitecollective to generate a synthetic document representing aggregrated content from said different websites for said single aggregate content entity;It’s not clear who or what performs this step. But the term “synthetic document” is pretty funny. What other kind is there? I’ll go way out on a limb and bet that it’s not defined in the application. In any event, this “synthetic document” (LOL) “represents” “aggregated content” for that collective. In other words, apparently, somebody or something collects information content displayed by the entities in the collective and “aggregates it”. Golly, so far this all seems pretty silly and very obvious (and very very broadly claimed)…. Maybe the real magic is the part coming up where the “appropriate” ad is “identifed.” That must be it! Let’s see… identifying an advertisement to be associated with saidaggregated content and said single aggregate content entity by comparing content of said advertisement and said synthetic document.Well, that’s disappointing. Apparently someone looks at the list of “aggregated content” and “compares it” to some advertisement (the source of which is left to the imagination, I guess) and based on some unnamed criteria (?!?) the advertisement is “identified” or it isn’t. What happened to “appropriate”?This is one sorry, sad claim. And there’s nothing much more in the specification to add to it. It’s just description of a dream about some imaginary software that the applicant couldn’t be bothered to write and share with the PTO, apparently. But rest assured if someone else goes through the immense trouble and time of figuring out how to make an “appropriate ad identifier” work, there will be some fireworks. That’s true even in the very likely case that nobody except me and ten other people ever read this application (and really, why would anyone bother? it’ll be just another piece of computer-implemented “shove an ad in your face” dreams buried among a million other poorly articulated hand-wavey computer-implemented dreams that the USPTO will have published over the past several years (and millions more to come, very shortly, if present trends continue).

    1. 16.1

      Other than the “website” limitations, the claim would read on a convention of related businessmen (“common topic”) where many of them also had booths to display their wares, and where the convention provided a brochure describing the content to be displayed at the booths, an where the brochure had ads. I have attended many such conventions.Now, if there is invention here, it would be in the way the search engine operates. But I am not sure that what is being claimed given the obtuse claim language and claim structure.

  5. 15

    From the Summary:Another aspect of the invention relates to a system and method for identifying appropriate electronic advertising information for a search engine comprising: forming a website collective whose members include a plurality of different websites characterized by a common parameter including at least one of a common content topic and/or a common contractual arrangement; compiling content taken from webpages in the website collective to generate a synthetic document representing aggregated content from said different websites, and identifying an advertisement to be associated with said aggregated content by comparing content of said advertisement and said synthetic document.Wow. It’s a “system” where two information providers get together, come up with a list of information they provide, and identify an ad based on that list. Man, it’s amazing how advanced civilization has come in the last few years. This kind of technology makes Star Trek look like the Flintstones. I wonder if there will be ads in my robot car? LOL. The best part is that Google will be able to tell us instantly what ad was on the screen when the car ran over that little girl.

  6. 14

    1. A method of presenting advertising material with a computing system comprising:processing a query from a user related to a first topic within a search engine page to present a set of search results;presenting at least one first advertisement with the computing system related to said first topic within said search engine page with said set of search results;measuring an interaction by said user with said first advertisement to determine a performance score for said first advertisement while presenting said set of search results with the computing system, including by identifying if said user selects said first advertisement;presenting said first advertisement on one or more candidate individual webpages separate from said search engine page with the computing system to users based on a value of said performance score.Wow, that’s some amazingly pure junk. Just imagine — you shove an ad in a person’s face because you have some evidence that the person might respond to the ad. Then (get ready for this folks!) depending on the level of response to the ad, you present the ad elsewhere! Nick probably was born in 2003 or something so he never had time to learn about the history of advertising, which goes all the way back to 1996. All Nick knew (and let’s face it, all he ever needs to know) is that if you attach some junk to a POWERFUL COMPUTER BRAIN you’ll be taken super serious by the equally naive examining corp of the USPTO.

  7. 13

    I see a problem in the claim created by the “and/or.” What does the following mean if there is no common topic in a collective:”further wherein said website collective members are treated as a single aggregate content entity by the search enginefor responding to searches related to at least said common content topic;”

  8. 12

    I suppose the specification described A, B and the combination A and B. But, what if it did not disclose the A and B combination such that A or B is described to be the invention?I would argue 112, p.2 (b) is there an apt rejection because the claim language actually does not describe what the applicant regards as his invention. But, as we know, PTO will issue instead a 112, p.1 (a) rejection based on written description.

    1. 12.1

      In this particular case, it does mention “A and/or B” in the brief summary where it regurgitates claim 1. Interestingly enough, this is the *only* place it mentions B (the common contractual arrangement) at all.

      1. 12.1.1

        hmmm not quite; its also on page 9 of the original spec and the relationship of the “affiliated” sites is discussed at length on pages 15-16

  9. 11

    FWIW I brought the decision to Dennis’ attention since I know a lot of practitioners frequent this blog and might be interested in picking up a favorable piece of precedent they can use… I continue to be amused by the random tangential “attacks” that seem to be uncontrollable by some members of my whiny jealous fan club I’ve developed here too LOL

    1. 11.1

      my whiny jealous fan clubYou should keep your fantasies between you and your shrink, Nick.a favorable piece of precedentLOL. Most of us just know how to write claims in the first place. But thanks for bringing this piece of junk to everyone’s attention.What’s going to be the name of your next shell company and who are you planning to threaten first?

      1. 11.1.1

        innuendo: an allusive or oblique remark or hint, typically a suggestive or disparaging one.(and contrary to Malcolm’s assertions, this is not a post showing off my “learned a new word,” but merely my little way of showing Malcolm’s typical claptrap of Accuse-Others-Of-That-Which-He-Does)And yes, Malcolm, you still clearly have not answered the questions put to you. Do you know the controlling law as to the exceptions to the printed matter doctrine? LOL, why the duplicity?add: It is clear that Malcolm does not want to answer a simple direct question concerning what should be a basic understanding of law on a topic that Malcolm so desperately wishes to pontificate upon (for that matter, Ned’s silence on this is also deafening). A less simple question of “Why the duplicity?” then is not likely to be answered (by Malcolm), but the answer is self-evident given the body of ‘work’ provided by Malcolm. (and ‘pathetic’ is an apt description of that body of ‘work’)


          Oh, lookie! TB learned a new word (again) and he’s apparently struggling to find a way to use it properly.Fyi, Nick: this guy is what your actual “fan club” looks like. Enjoy.


              Malcolm is a self-made man.I merely highlight the f001 that he makes of himself.In other words, he has all the power in the world within his grasp to eliminate a substantial amount of poor quality blogging on these threads. He just needs a little bit of intellectual honesty.

      2. 11.1.2

        LOL see, – I knew you’d be the first fan boy to respondFWIW, I’m happy to report my “junk” invention of matching ads to content of search results has been adopted by such ….”trolls” as Yahoo, MSFT, Google and others:link to… – See e,g, page 12Oh, the authors just happen to include Dr. Broder, a distinguished Fellow at Google:link to…and a bunch of other senior scientists, albeit a few years after the factSo I submit my “junk” is in good company. But thanks for caring!




          my “junk” invention of matching ads to content of search resultsYou didn’t invent that, Nick. The concept of providing ads to people based on information about those people was “adopted” from ancient business practices.Are you really this arrogant and dense?a distinguished Fellow at Google:The term “jumbo shrimp” leaps immediately to mind. Nobody cares that some bottom feeder from Google shares your illusions. my “junk” is in good company.Yes, you are surely not alone. I’ve been saying that for years.

    2. 11.2

      Mr. Gross, did you get a separate 112, p.2 rejection related to the claim element beginning with “further” and ending with “said common content topic?” Can you give us one example where the is no common content topic in a collective and yet the search engine is programmed for responding to “said content topic?”

      1. 11.2.1

        greetings Ned – the act of rendering search results in response to a query and rendering ads TO such search results are two entirely different operations – that’s pretty standard – so the SE always responds but may not have terribly relevant useful (ala Google)


          JNG, it looks like my replies to you have been swallowed. But you really need to pay attention to this issue before you pay the issue fee. Otherwise, you will have to file a reissue.


            Greetings Ned,first, I think you are overly limiting the phrase “common content topic” by suggesting it only has a meaning in the first limitation; that’s not accurate; it is introduced there, and even if it is not used as a basis for forming a collective, it IS a common parameter later used by the search enginethink of it this way: in the first clause, we could explicitly agree thru K that both of us will be treated as one entity by the search engine; or, the search engine itself may unilaterally decide to lump us together based on some common content topic; or… both could occur. Remember, websites don’t have complete control over how SE index their pages.the second limitation makes reference to how the search engine uses the common content topic; it is completely unrelated to whether/how the website members themselves may have decided to collectivizeI think the confusion is that you are thinking that the term refers to an element that is conditional, but it is not; it is introduced in the claim as a common parameter but for two different purposes – even if it might be used for only one step – so regardless of how the collective comes about, the SE uses a particular methodology in considering how to respondanyway, thanks for the note back, I appreciate your interest and as always I will take a look at the claims before they are birthed to see if they can use improvement – a second pair of eyes like yours always helps and your constructive input is appreciated


              Mr. Gross, the way you might solve the problem is to make the referring language to be identical to the referenced language:”said at least one of a common topic and/or a common contractual arrangement.’ If that does not make sense from the way your software operates or from your description, you might want to consider simply removing “common contractual arrangement” from the claim now before the claim issues. You will have a hard time if you have to file a reissue.

    3. 11.3

      I didn’t realize this was precedent if it is a non-p decision. Likewise, I’m not 100% sure that a decision making the examiner give you an objection is going to have the effect you or other attorneys wish it to have.

      1. 11.3.1

        I was incorrect for me call it “precedent” per se in the legal sense, although in my experience it is rare for me to show an Examiner a recent case on the exact same language and not have them seriously reconsider looking ….foolish.

    4. 11.4

      One must wonder why MM does not write a patent application that includes functional claims to cover what social network sites will look like in 5 years….why is that MM?

      1. 11.4.1

        what social network sites will look like in 5 yearsPretty much like they do now except it’ll be harder to avoid the ads (unless you pay, of course). In other words, it’ll evolve in the same way that every other corporate run “site” with information transmitting capability has evolved throughout history.As to why I chose not to become a bottom feeder and exploit the opportunities presented by our broken patent system by placing additional unnecessary stresses upon it, that’s just how I was raised. Life is a series of choices. Maybe Nick believes he’s actually an important inventor in the history of computing technology. I doubt he’s that delusional. I think he knows that he’s a quintessential example of a patent troll, and like his idol Eric Spangenberg, he’s going to grab as much as he can, while he can, without regard for what anyone else thinks or feels, including the people he threatens to sue with his junky patents.


          “that’s just how I was raised”Does ‘how you were raised’ also then explain your intellectual dishonesty?Clearly Malcolm, how you post so overshadows anything related to what you post that you have to be delusional not to see what a joke you are.


            Another sign that Malcolm has not been to law school. He introduces his character into the debate, then turns tail and runs when that same character (or lack thereof) is rebutted.More self-induced Malcolm FAIL.(pay attention 6 – as this is one of the delicious ironies that Malcolm continuously serves up)

  10. 10

    The Board decision is a good one because it follows logic. If you read “at least one of A and B” as “A and B” or “both A and B,” where both are required, then you effectively read it as “at least one of A and at least one of B,” which makes no sense given that A and B are singular. In other words, in this misinterpretation, “at least one of” is improperly rendered superfluous or converted to “both” because the interpretation is the same as “A and B,” where both are required. So, if you mean “A and B,” then you should not add “at least one of.”Saying “at least one of A and B” is different from saying “A and B.” A and B logically requires both while placing “at least one of” in front qualifies A and B by saying both A and B are selectable options from which one or more of A and B are selected. I’ve had plenty of cases that did not disclose B as a selectable option so I was forced to change A or B to A and B to make both of them selectable options the prior art did not disclose. “A or B” only requires that either A or B be an option. Unless A and B are expressly declared as required selectable options, A or B does not require both to be selectable options in the logic. When the USPTO gives “A or B” its broadest meaning, a reference with only A or only B discloses it. As for “at least one of A or B,” saying “A or B” already requires only one, but to avoid an interpretation of “only one of A or B” you can add “at least one” to assure interpretation as one or both. However, as far as the broadest interpretation by the USPTO, you still did not change anything. Any reference disclosing only A or only B still discloses “A or B” and “at least one of A or B.”

  11. 9

    The biggest problem with the Board’s decision is that it was four-years in the making The biggest problem is that this issue was ever appealed. Why not just amend the claim? I guess if you’ve got the time and money and you don’t have an actual product to protect, you might as well just the pound the table.websites characterized by a common parameter including at least one of a common content topicI haven’t looked at the spec but I’m dying to see how the term “common content topic” is defined. [Added: Surprise! It’s not defined at all — nobody could have predicted; congrats to the Examiner for focusing on the really important claim terms]. a computerized business method of serving content appropriate advertisementBecause shoving content appropriate ads in your face wasn’t possible until computers came around.

    1. 9.1

      “The biggest problem is that this issue was ever appealed. Why not just amend the claim?”Uhm, just a guess, but maybe because the rejection was improper and applicant was entitled to the claim as is.But do please keep s#cking at this.

      1. 9.1.1

        Uhm, just a guess, but maybe because the rejection was improper and applicant was entitled to the claim as is.”Tell me, Mr. hospitalized pedestrian, why did you cross when that car was coming?””Because the light was green, so the car’s trajectory was clearly improper, and I was entitled to cross as I did.”Why is it such a challenge for people to decide between being right and being smart?


          Please explain, if you can, why you consider amending a claim that doesn’t require amending to be “smart.”Pretty lame analogy, BTW. The sort I’d expect from an examiner.


            Please explain, if you can, why you consider amending a claim that doesn’t require amending to be “smart.”In this case, how much claim scope did the applicant retain by not amending, and how much money did it cost him?


              Are you looking for exact figures? Your first mistake is assuming that the examiner would have removed the rejection in view of an amendment. You don’t know that. It’s probably likely the examiner would have, but it’s not a certainty. Shenanigans abound at the PTO.Your second mistake is assuming you know what the applicant knows. If the applicant decided that the “retained scope” was worth more than the cost of the appeal, who the h#ll are you to second guess that? Who died and appointed you “smart”?Your third mistake was that idiotic analogy. We’re talking about whether you should appeal some imbecilic rejection from a patent examiner because the rejection is improper, not whether you should step in front of a speeding car because you as a pedestrian have the right of way.You s#ck at this even worse than Mooney.


                Are you looking for exact figures?No. Are you looking for an argument? Because John Cleese is just down the hall. Room 12.

                1. Not looking for an argument with you. I generally take George Carlin’s advice in these situations: ‘Never argue with an idiot. They will only bring you down to their level and beat you with experience.’


                Exactly. If you have to appeal other silly baseless rejections, why not just include the siliest, most baseless rejection of them all?


                Correct; and you can see I started off with this point in my initial brief b/c it was the weakest and clearest error – a trivial point that should have never made it that far


          “Why is it such a challenge for people to decide between being right and being smart?”LOL – IANAE’s irony meter is obviously broken as well.

      2. 9.1.2

        Like most here I’m always willing to compromise where I think it makes sense and there is some room on the other side; here, there was no “give” whatsoever on the PTO side so it made no sense to amend and end up with a MUCH narrower claim


          made no sense to amend and end up with a MUCH narrower claimWith respect to the alleged indefiniteness issue, it doesn’t seem you would have lost any claim scope by fixing the “and/or” language.

    2. 9.2

      Malcolm, there was a very interesting issue litigated in Institut Pasteur that I’d like your views on. The claim required a particular way of cutting and inserting DNA into chromosomal DNA. A reference showed introduction of target DNA into a bacteria cell, and its incorporation into and later temperature activated excision from the chromosomes of the bacteria cell. It also showed plasmid introduction and temperature activation of an endonuclease that cut the excised target DNA and allowed recombination with a disease resistant gene using target DNA proteins produced by the excised target DNA to repair the cut. There was no attempt to cut the target DNA while still in the chromosomes.Testimony of junior members of the research team were to the effect that some cutting of the target DNA while still in the chromosome occurred because the temperature activation of the endonuclease occurred at low temperatures. The lab director stated that the experiment never intended to cut chromosomal DNA, and did not in fact do so because the bacteria would have died, citing reasons.The Supreme Court held in Tilghman v. Procter that unintended, accidental and unappreciated production of a compound did not anticipate. Rader in Schering confined this case to whether the compound was produced at all and held that when a known process necessarily produced the compound it inherently anticipate regardless of whether anybody appreciated it.Your views: is Rader right or is he ignoring the Supreme Court once again?

      1. 9.2.1

        Rader in Schering confined this case to whether the compound was produced at all and held that when a known process necessarily produced the compound it inherently anticipate regardless of whether anybody appreciated it. Your views: is Rader right or is he ignoring the Supreme Court once again?If the compound, as claimed, previously existed then the claimed compound is not new and it can’t be protected by a patent. Isn’t that consistent with Supreme Court precedent?


            Hmm.Is there a Supreme Court case other than this Tilghman v. Proctor case that suggests you can claim old pre-existing compositions of matter that arise naturally from a known process? The result Rader reaches, at least, is consistent with the result in Myriad (although Myriad was framed from the eligibility side)…


              Check my response under 102(g) as prior art.Regardless of Tilghman, there are number of cases where pre-existing products lost to history are patentable regardless. The real test of prior art is “possession” by the public. The first to recognize or rediscover the product is the inventor. Accidental or unintended production has never been anticipation. Rader reverses very long established precedent.


                The first to recognize or rediscover the product is the inventor. Accidental or unintended production has never been anticipation. Rader reverses very long established precedent.I haven’t read the case you’re talking about. But the claim is the key. If the composition as claimed (<–key point here) is shown to have existed in the prior art as the natural (even if unappreciated) result of some prior art process, I don’t see how that claim is patentable. On the other hand, if your claimed composition is distinguishable (e.g., modified or more purified) than the “unappreciated” composition naturally produced by some prior art process, then you should be in really great shape (assuming there’s no other close prior art).

                1. I would suggest Malcolm that you actually read Tilgman v. Procter. I think it was established that the claimed composition was produced by prior processes, just that no one intended to produce that product and its benefits were unappreciated.Think that a claim to vulcanized rubber was held to be anticipated by a newspaper article describing a plantation fire coupled with expert testimony that vulcanized rubber had to be produced in that fire.

                2. I think also that as a corollary would be that a prior process that accidentally produced the claimed product would not be an infringement of a product claim unless that product accidentally so produced was then “harvested” for sale by the accidental producer. I agree that the situation becomes more difficult in the case of drugs where the product being claimed is a natural by-product of the body acting on a drug that was in public use.


              “The result Rader reaches, at least, is consistent with the result in Myriad (although Myriad was framed from the eligibility side)…”Re: Myriad. The court premised its holding on the composition being “of nature” not based on it being in public use, but unknown. Consider what Newman had to say about the denial to take Schering en banc,”I write to state my concern for the panel’s departure from the established law of anticipation. The court holds “anticipated” a novel chemical compound (DCL), a compound not known to the prior art and that did not previously exist. The Schering inventor discovered it in vivo as a degradation product of loratadine, isolated it, determined its structure, and found its biologic properties. The panel nonetheless holds that this new compound is unpatentable on the ground of “inherent anticipation”…The law is that a product is “anticipated” if it is not new. Conversely, it is not anticipated if it is new. A new product may of course be unpatentable based on obviousness, but it is not subject to unpatentability for lack of novelty. No precedent supports the position that a product whose existence was not previously known and is not in the prior art is always unpatentable on the ground that it existed undiscovered. If the law is to be changed in this direction it must be done en banc.”The point where Rader would beg to differ is that the product did exist. Now, is Myriad truly limited to natural products?


                More than just that Ned.Malcolm (once again) misses the distinction between patent eligibility and patentability. As I so patiently tried to teach him, the exception in 101 is not a time-dependent, prior art based one.As to your Tilghman v Proctor conversation, are you not forgetting about the element in the inherency doctrine of something necessarily being present? You seem to be getting the doctrine wrong by over-reading the instant case. You do have a tendency to do that.As noted in MPEP 2112: “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).and”There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004)(“[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.”); Abbott Labs v. Geneva Pharms., Inc., 182 F.3d 1315, 1319, 51 USPQ2d 1307, 1310 (Fed.Cir.1999) (“If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics.”); Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1348-49 (Fed. Cir. 1999)

                1. Clearly, anon, a property of a composition in public use, or an effect of a process in public use, newly discovered, cannot make that same composition or same process repatentable.There is a distinction we make. We are talking about a composition that was unknown, but which is a manmade byproduct of a known process. We are not trying to repatent that know process, nor make it an infringement. We are suggesting that the discovery of the product itself, previously undiscovered, makes it patentable.

                2. You are clearly conflating property and use. These are two very distinct attributes.A product previously made and known carries with it all of its inherent properties. If one of those inherent properties is recognized or not is simply immaterial.Now if you want a separate patent on using something – and the use is new, then likewise the status of the item itself is immaterial (for such a process patent).You are confusing yourself by your over-reading (yet again)..Now if you are trying to establish something different, I can see where a conversation might be interesting. Let’s say that you are trying to distinguish inherency of a product and inherency of a process (and products made inherent to that process). add: for example, a reference that merely details a prophetic example might generate an interesting question, as such an item would admittedly not exist at the time of filing and thus, any inherent traits might be argued successfully as to likewise not exist – at the time of filing, even if those inherent traits are later shonw to be necessarily present in the then prophetic example.Why (e.g., in a legally supportable manner) are you attempting to distinguish inherency between process and product? Again, you seem to miss the “necessity factor” of inherency. For I would suggest that even for a process, if a byproduct is necessarily created as an inherent result, then the same (inherency of product) logic applies, and recognition of what must necessarily be present – or more to your point, the lack of recognition, cannot save the necessarily inherently present product of the known process for patentability.

                3. anon, you might want to go over to the Institute Pasteur thread for more, and also see the first post in this tread, but one of the patents under reexamination was rejected as anticipated by a reference describing a clearly different process that was argued by experts to inherently perform the claimed method. This is exactly like the vulcanized rubber example. The claim is to vulcanizing rubber by placing raw rubber on a hot stove, etc. The reference is a story in a newspaper that describes a fire in a rubber plantation, coupled with expert testimony that vulcanized rubber must have been produced.I think after you have given the matter full consideration, you might see that there has been a recent change in the law. See, Schering Corp. v. Geneva Pharmaceuticals, 339 F. 3d 1373 (Fed. Cir. 2003), reh. denied, 348 F.3d 992 (Fed. Cir. 2003)(Newman, Lourie dissenting in separate opinions, Gajarsa and Schall voting for review en banc)(“[T]o hold that a patent on a product, with a minimal disclosure of administering it to a human or other subject, anticipates a later application on a metabolite, of which no mention appears whatsoever in the patent, cannot be correct.” Lourie, J.)

                4. Different process to different process is quite different than what I am talking about Ned.Please stick to the subject of my posts.

                5. anon, but you change the topic of this thread. It has always been about Tilghman v. Procter and Schering Corp. v. Geneva Pharm. and the recent reexamination we discussed in the Institute Pasteur blog post. This thread has never been about inherent properties of products in public use.

                6. I do not dispute the law you cite. It is just not apposite to the discussion. Thus, regardless that one discovers a new, inherent property, one cannot claim old subject matter. One must claim a new use of it.But when a reference is silent on a topic, and a person of ordinary at the time of the claimed invention or application date would not read the reference to include the new discovery because at that time it was unknown to the art and the art would not understand, at that time, that the reference taught what experts now claim it teaches (and this is not about public use) what then? Do you have any views?

                7. I do not think that you have thought through your question enough.Inherency is what it is – regardless of that discovery’s appreciation, if that discovery is merely inherently there (and necessarily so), then what the reference is purported to have taught is quite meaningless (emphasis added). You seem to be trying to maintain that the public must have actually appreciated and used an inherent characteristic for there to be anticipation. That simply does not accord with inherency.Again, this is the law – now – today. Your attempted (overreading) that seeks to change this meaning – without more (as in with some correctly citable legal tie-in) – thus fails.

                8. You might be right when public use is involved. Lourie agreed with that point. But not with a reference, which could be a patent or a patent application that discloses only that which the person of ordinary skill would know it discloses at the time of the reference. I don’t know how we can tolerate experts testifying that X property was there in an old reference using current state of the art understanding, using hindsight, using the patent’s own disclosure, when at the effective date of the reference that subject matter would be completely unknown.What this does, in my view, is allow current state of the art to undermine patents based on so-called inherency when the references should be based on the understanding of the persons of ordinary skill in the art at the time of the reference. This is real b*ll sH!t.

                9. Ned, the property is not there “in a reference” per se.Ever.Properties are only there (inherently) in the item. You are very confused on this. There need not be ANY public use whatsoever (nor any public appreciation of anything inherent in the item of the reference) – so please, you can drop the emphasis on ‘public use’ and focus more clearly on what I am telling you.”A reference” does not have inherency as the case law you are attempting to use uses that term.The item in the reference – on the other hand – has inherency. And that inherency is what it is – regardless of what the reference teaches at the time of the filing of the reference or at any time, to a PHOSITA at the time of the reference, or to anyone at any time. That’s why the necessity factor is critical.

                10. How can I be confused about property of anything since I constantly tell you that that is not what is being discussed. I have no disagreement with the cases on THAT point.

                11. Ned, the case law you are attempting to use is on THAT point – it is not on the point that you want it to be on.

                12. anon, to me, if a process or a product is in public use, inherent aspects of it are in public use as well as a product or process may be reverse engineered.But otherwise one must rely on public knowledge or its variants. A reference that does not teach the method or product does not product that knowledge, period.Distinctions have to be made, and this is the proper distinction.Under Rader, one could find anticipation without any public availability simply on the fact that a reference describes a product that could only be produced by a particular process, that product reference could be used to anticipate a process patent despite the fact that no one knew or was able to know at the time of the publication or public use or at the time of application of that secret process. Rader turns the law on its head.This is why anticipation, really obviousness without an express teaching, must be measured at the time of the invention or application. What did the reference teach at that time?

                13. Public use is not a part of the inherency doctrine (add: as you would make it out to be).I do understand what you are trying to do, but that is simply legal error.So far as that goes, Rader is correct and is NOT turning the law on its head.Consider the well known analogue: prior to the AIA one could not obtain a process patent on an item that was in the public (regardless of whether or not a patent for the item was obtained) – and even if the process could not be reverse engineered from the product. In that case, you also lacked an actual path of knowledge, even though the item was the public (and noting that process patents are distinct from manufacture patents). Remember also that it is not the reference that serves as the driver (in the case of no product patent, there is no such reference), but rather, the critical factor is the ‘necessity’ factor as I have posted.Granted, a reference alone – in and of itself – is not an item that would have the inherency.

                14. Anon, where did you learn the law? “Prior to the AIA one could not obtain a process patent on an item that was in the public (regardless of whether or not a patent for the item was obtained) – and even if the process could not be reverse engineered from the product.”That statement is SIMPLY INCREDIBLE!!Have you ever read Hand’s opinion in Metallizing Engineering? Did you know Metallizing is actually followed by the Federal Circuit? Did you know that the Supreme Court has cited Metallizing 3 times?

                15. Metallizing abrogated? Really? It is manifest that the AIA went out of its way to limiting 3rd party prior art to that which was public if there was ANY ambiguity. That is what Metallizing held — that secret third party art was not prior art.

                16. Ned, of course really. Look at the legislative record, look at how they removed the personal limitations (even look at the title of the new 102 section).Ned- this is old stuff now. Why are you acting so surprised?

                17. “Public use is not a part of the inherency doctrine.I do understand what you are trying to do, but that is simply legal error.So far as that goes, Rader is correct and is NOT turning the law on its head.”Did you even have time to read Lourie’s dissent from denial of en banc review in Schering. The issue of inherency very much IS an issue of public use.

                18. Ned, it is not in the cases (specifically the Supreme Court case and the cases I listed in the MPEP citation).add: and I am most sure that you cannot read into the case as you are the notion that reverse engineering is possible. – Again, this is a symptom of your tendency to over-read.

                19. Ned,Are you trying to cherry pick from a dissenting opinion again? There is a reason the opinion is a dissent… Regardless of that, I have found a nice link that delves more into the nuances of the subject (I note with interest that Lemley has spoken on the topic). See the well reasoned presentation by Mark S Ellinger: link to…Note how the presentation pivots on the critical factor of the ‘necessity’ factor as I have posted.Also of note is that the presentation above, when combined with the subsequent Prometheus case (since some may argue that digestion is just a law of nature), may really put a damper on some Pharma efforts. Myriad also would modify at least one of the claim strategies on page 31.add: regarding Lourie’s dissent, I would say two things:1) on the whole, Lourie is confused and mistaken. He attempts to wholesale eliminate the ‘necessity’ angle and rest fully in the ‘awareness’ concept. [add: thus it is Lourie – and not Rader – who is trying to rewrite the law]2) Lourie’s comment of “In any event, we deal here with issues of patent law, not policy or equity” is most interesting – how do you think your idol Malcolm would respond to such a proposition?

                20. Anon, thanks for a link to the Fish article. Very informative.I would say this:When a process or product is in public use, inherent properties are not a matter of conjecture. They can be proved and should be proved to anticipate by clear and convincing evidence.If the reference is a publication that does not disclosed the claimed invention we are not talking about 102. We are talking about 103. The is the way the statute reads, for pity’s sake.103 requires, by statute, that the matter added by expert opinion or secondary reference be of the nature that people of ordinary skill at the time of the invention or the filing of the application would know that it is there.When in doubt, read the statute as Rader and Rich before him would say.

                21. The problem you have with your proposed manner of trying to use 103 is that the item you want to add may not even be “a reference” that can be added as you would so be inclined to do.That is part and parcel of the item necessarily existing and belonging to an inherent anticipation.That is one indicator that you are over-reading: your way eviscerates the entire doctrine.

                22. I’m sorry anon, if a claimed invention is “not identically disclosed or described” then 103 applies.This doctrine of “inherency” is a clear evasion of the statutory scheme.

                23. So then, it is you that is trying to overturn law and not Rader….Thanks for confirming that Ned (and confirming that once again my calling you out for misapplying law is dead nuts on). After all, it was not Rader who created that doctrine.And I have to return the favor:Ned, where did you learn the law?

                24. Thanks Leopold.You are doing that charging at anon blind bull thing again.1) I was not asking you.2) the question to Ned was in light of the explicit facts here – i.e. in context (you seem to have a major problem with that concept). To wit, Ned threw out that non sequitur as a jibe in our discussion, and as it turns out I was completely right and he was completely wrong, so the jibe he used was returned. Clearly, I was not looking for an explicit answer so much as to emphasize the fact that Ned had misapplied the law.

                25. anon, now that you put it that way, we need to look at where the doctrine of inherent anticipation began.

                26. Thought so. The doctrine traces to case before 1952, and it had to do with functional limitations.”To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. In re Oelrich, 666 F.2d 578, 581, 212 U.S.P.Q. 323, 326 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 U.S.P.Q. 665, 667 (CCPA 1939))” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991).The court went on to say that inherency was not a substitute for 103.”This modest flexibility in the rule that “anticipation” requires that every element of the claims appear in a single reference accommodates situations where the common knowledge of technologists is not recorded in the reference; that is, where technological facts are known to those in the field of the invention, albeit not known to judges. It is not, however, a substitute for determination of patentability in terms of § 103.” Id. at 1269.This, my friend, is the law, not the later Rader case.

                27. Ned,Your post here is a complete discombobulation.”had to do with functional limitations”What????From the case: 1) “is necessarily present”You mean, exactly like I posted?2) “It is not, however, a substitute for determination of patentability in terms of § 103.”[add: I see – again – your tendency to over-read and misuse the law; here, you want to run with the notion that the inherent aspect while unknown to a judge, was known to a PHOSITA. YOU CANNOT SO DO THAT – you are misapplying what is in essence dicta in order to negate other case rulings that clearly state that inherent aspects, necessarily present, do NOT have to be known by PHOSITA.] Also as I posted – correcting you – are you oblivious to this?This my friend flies directly AGAINST what you have been posting – and you have been posting that Rader has been wrong.You are just confirming (again) that I have been right all along.

                28. Regarding Malcolm, I think he would support Lourie. If a composition was in public use, it can be proved to be so and should be proved to be so.If the reference is only that, it should disclose the invention. Otherwise, by statute, it does not anticipate. If a claim limitation is not taught, we are into 103.

                29. I think you missed the point of my question – it does not have to do with Lourie’s view of the case in particular – it has to do with the separation of patent law from equity and policy.Try again.

                30. anon, I think Malcolm is highly critical of the PTO for issuing patents of dubious merit. If I were a congressman, I would be more concerned about this issue than any other, and would demand answers from existing directors or some plan by new directors before they are confirmed. Just looking at tweaking examiner quotas, or calling software patents “good” is not in the least bit reassuring.

                31. Once again Ned you miss the point of the Lourie quote. [add – Ned the point being to distinguish (and apply) the law as opposed to making new law based on equity and policy]Try again.

                32. No anon, the issue is possession of the public of the invention. In the case of a public use, the products and processes can be reverse engineered.I am nonplussed by that you believe that secret information, like a secret process or a secret machine anticipates a patent simply because it exists. This really blows me away.

                33. Also, anon, what is the difference between discovery of a new use of a known compound and a new property of a known compound where the claim is to the use of that new property?


          In further reply, assume inventor A and B both file for compound Z. In an interference, A proves prior production of Z, but later conception because A did not recognize that Z had been produced, nor its utility.B proves later production, but first recognition.Now if A’s prior production is prior art to B, then B’s invention is not patentable to B. A wins the interference.But this is contrary to law.

    3. 9.3

      Actually there’s other issues already going to appeal so I’m sure he didn’t mind throwing in a paragraph or two.

  12. 8

    “The biggest problem with the Board’s decision is that it was four-years in the making – reversing an examiner rejection mailed February 2, 2010.”I disagree. The biggest problem with the Board’s decision is that this issue had to be appealed. That the examiner made the rejection in the first place is a huge problem and that the examiner’s supervisors let the Office Action be mailed is another. Yet another problem is that a phone call to the supervisor didn’t take care of the issue. Still yet another is that contacting the Ombudsman didn’t resolve it.That, the applicant had to spend $2000 in PTO fees and additional fees in attorney time to get this rejection reversed is shameful.The phrase and/or is used in the MPEP and in 37 CFR and clearly has a clear meaning.

  13. 7

    It looks to me like the issue that should have been raised by the examiner wasn’t just that it used “and/or”, but that it used that term in conjunction with “at least one of”. It’s redundant at the very least, even if not indefinite.Unfortunately, that wasn’t what the examiner said, which makes this example not particularly instructive. They already teach new examiners in the academy that “and/or” generally just means “or” under broadest reasonable interpretation.

  14. 6

    A non-precedential decision is considered newsworthy? Granted it’s a stupid 112 rejection where the examiner should have known to just treat it as an ‘or’ for examination purposes, but still. Why do we care about a non-precedential decision?

    1. 6.1

      …because it can add to the highllght of how off-beat the Miyazaki decision was…add (addressing 6’s comment and not Nope’s comment – my apologies to Nope): Sure it does 6 – here is a claim construction issue, with the PTAB accepting one version and yet suggesting a different second version. You now have two different versions, and thus your beloved Miyazaki would reject the claim.Further here, as evidenced by the court’s ruling, your objection below based on grammar is improper.

  15. 4

    My reading of “at least one of A and B” is that you need at least one of A – and – at least one of B (does not reach just the A alone, nor just the B alone).Perhaps the preferred verbiage that the Office was aiming for was “at least one of A or B.” LOL – No wait, that does not do it either (does not necessarily reach the one A and one B)

    1. 4.2

      “My reading of “at least one of A and B” is that you need at least one of A – and – at least one of B (does not reach just the A alone, nor just the B alone).”There’s a good article on this over at your buddy’s site: link to… . Your reading is a correct reading as a matter of plain English. Fortunately, as the above article points out, we do get to look to the specification for guidance, at least post-issuance. I prefer “A or B or both,” if there are only two items, and “at least one of the following: A, B, and C” if three or more. But those constructions don’t always fit smoothly.

      1. 4.2.2

        I like that language too. I prefer to use language that is less likely to need interpretation. Also, there’s superguide corp v. directv, 69 USPQ2d 1865, where the CAFC determined “at least one of A and B” = “at least one of A AND at least one of B”.

    2. 4.3

      How about the usual Markush language: “at least one selected from the group consisting of A and B.”

      1. 4.3.1

        The whole problem seems to be the short cuts of “from the group consisting of” cause confusion. I suspect the board should have written what you wrote RH. And, the “at least one of the following” is just another version that again seems to cause confusion.Seems like the problem is that for some reason we don’t like to write “the group consisting of” and just want to skip to the group members.

      2. 4.3.2

        If it were a chemical or compositional claim I would agree with you; in the electronic logic/computer arts the term “and/or” is pretty well understood


          Your claim has nothing to with “electronic logic”, Nick, and is only tangentially related to “the computer arts”. This “and/or” baloney is just another example of pretenders “in the computer arts” struggling with the basics.Your claim is an uninteresting advertisting method and would be treated as such if the USPTO would pull it’s collective head out of its arse.


          in the electronic logic/computer arts the term “and/or” is pretty well understoodThere is nothing in your claim, particularly that part of your claim, that has anything to do with “electronic logic” or “the computer arts.”Your claim is an uninteresting advertisting method and would be treated as such by the USPTO if it could pull its collective head out of its a rse.


            “particularly that part of your claim”LOL – did someone lose their understanding of ‘claim as a whole’ today?

    3. 4.4

      Someone stumped me with this question when a gave a talk on patent prosecution (… ) … since then, when I include the language ‘and/or’ I put in the definition above. There was a court case a while back that said it doesn’t include “A and B” … I much prefer the PTO’s reading of it, at least.

    4. 4.5

      anon,I’m with you. The PTAB’s suggestion of “preferred” language (“at least one of”) is also ambiguous, as you suggest. (As LB notes, there are Federal Circuit that hold opposite of what the PTAB suggests.) Instead, I would suggest using the phrase “one or more of: A or B” (works especially well if you have a long list of elements as in the old Markush group language), and it’s very clear you intend the separate elements, as well as all combinations of those elements. A definition in the application spec that the chosen phrase means separate elements and all combinations thereof wouldn’t hurt either.

  16. 3

    thanks for reporting on this Dennis – this comes up enough in my practice that I thought others would benefit from the holding,even if it is not precedential per se

    1. 3.1

      We have recently had a US Examiner object that “either or both A and B” was not the same as one of A, B, A&B.

      1. 2.1.1

        I think his point is that you can’t appeal an objection, which is instead a petitionable matter.


          What would be the objection? What would be the grounds for objection (e.g. in either 37 CFR and/or 35 USC)?

      2. 2.1.2

        Just object to the grammar. Claim 1 is objected to for improper and/or (lol) informal grammar. Claim 1 recites “blah blah and/or blah blah”. The correct grammar is “x”. Appropriate…And yes, as Aptotu surmised my main point is that people will be less likely to challenge the objection due to it being petitionable (=$$$) and that has to be done separate from the appeal. Likewise, the board doesn’t have to deal with it. Not to mention of course that 112 2nd is incorrectly applied.So long as his substantive needs are met he is unlikely to challenge the objection.


          “Claim 1 is objected to for improper and/or (lol) informal grammar.”As Mooney would say, BWWWWAAAAAHHHHHHAAAAAAHHHHHAAAAAAHHHHHHHHAAAAAAAA!!!!!!!!!!!!!!Before petitioning, one has to request reconsideration. When your sh!t is reversed on appeal, and the case comes back to you and applicant requests reconsideration of your, literally baseless, objection, your primary/SPE/QAS/other useless know nothing, do nothing, is going to tell you, “Just withdraw the objection and allow the application.”


          Apparently my first reply was “moderated” out of existence.Your objection would literally be baseless. Applicant would request reconsideration, which must be done before a petition can be filed, and when you are reversed, your SPE would tell you to just drop the objection and allow the case.


            “Your objection would literally be baseless. “And your point is? Either way, the grammar po po on the interbuts disagrees with you. “Applicant would request reconsideration, which must be done before a petition can be filed, and when you are reversed, your SPE would tell you to just drop the objection and allow the case.”His SPE already didn’t tell him to drop a 112 2nd ta rd. Likewise, the grammar po po agree with me, my spe will back me 1000%.

                1. I think you overestimate 6’s intelligence. The date, while rather neanderthal looking, is smart enough to use the chick’s ignorance to his advantage.6 is like the chick – clueless and believing that his “interbuds po po” validate his views.


              This would be a completely improper objection. “and/or” is not indefinite nor is it a grammatical error.I’m not sure who you think the “grammar po po” are, but when the petition is granted on your baseless objection it would make you and more importantly your SPE look foolish (since you appear to be a junior examiner without sig authority even after all these years posting here). Your SPE will not like looking like a fool in front of the director and whoever your TC director pawns petitions off on (likely a QAS).


                “…but when the petition is granted on your baseless objection it would make you and more importantly your SPE look foolish…”I think it was Roland Deschain who said that the only people who get what they truly deserve are fools. 6tard and his SPE are probably in that category.”…since you appear to be a junior examiner without sig authority even after all these years posting here…” Lulz.6.5+ years at the PTO and 6 is still not a primary. Must have started as a GS-1.I think 6 will get his full sig around the same time he starts law school.But there’s no need to even file a petition. I get this from examiners all the time. They call me up and tell me that the case is in condition for allowance but for some totally ridiculous requirement that exists nowhere but in their own imagination. They’ll tell me, “The case is in condition for allowance but I need you to amend claim 1 to change ‘wolfram’ to ‘tungsten’.” I’ll respond, “Why?” and the examiner will mumble some lame reason (translated as, “Because my SPE told me to call you and insist on this meaningless change”). Then I’ll decline the invitation to amend and tell them to mail me an OA that I can respond to in writing. Invariably I receive a Notice of Allowance.I once had an examiner object to some dependent claims because “the preamble doesn’t match” the preamble of the independent claim they depended from.


                Feel free to argue that and submit your petition. “but when the petition is granted on your baseless objection”Whatev you say brosefus. “Your SPE will not like looking like a fool in front of the director and whoever your TC director pawns petitions off on”Ahhh, my spe won’t, but this other spe that let this 112 2nd go totally does enjoy that RIGHT? Go d you people are so dmb.

    1. 2.2

      6, there is a 112, p.2 problem though. It has to do with a later claim requirement to do something with “said common content topic” where “said common content topic” is not required by the claim such that it has no true antecedent basis. I am not sure the Board did not mischaracterize the examiner’s rejection, but there is a real basis for one in the claim.

      1. 2.2.2

        A method claim that recites alternative steps is properly examined by focusing first on the simplest alternative and ignoring the others. If that alternative is anticipated or obvious, the claim is anticipated or obvious. The other alternatives are irrelevant at that point. The claim needs to be re-written to claim the other alternatives independently (assuming they are inventive).

      1. 1.1.1

        There’s no innuendo, TB. JNG’s personal patent prosecution proclivities have been discussed here before. That’s what I was referring to in my comment.In any event, my positions on virtually every topic we discuss here are made quite clear. Do you want to clarify some of your own positions? Just let everyone know and I’ll help you walk through them.


          Who is TB? LOL – oh wait, that is innuendo too.Your comment (to which I responded) was IN FACT allusive or oblique. Whether or what you intended to “refer to” is of course not actually listed. Further, your post is made in a suggestive and disparaging manner. That too is unmistakable (not that such will stop you from prevaricating yet again,and attempting to deceive others as to your posts. So your claim now that you are not using innuendo is merely you doing that Oh Very Carroll thing you tend to do – Malcolm being Malcolm, otherwise known as just being wrong.Typical CRP from Malcolm including a denial of what is plainly CRP.Plus:(‘in any event’, you really really really svck at this)add: “my positions on virtually every topic we discuss here are made quite clear”LOL – still waiting for you to stop running away from the question I asked you on the link to… thread. How does this ‘old box’ all of a sudden have a new function without that same ‘old box’ having been changed into a new box? Come Malcolm, this is the Grand Hall experiment – explain how the ‘old box’ without the software can match the new box with the software. Your audience awaits your (clutched) pearls of wisdom.Unless you are doing that very Carroll thing again and re-defining “quite clear” as the picture of you dodging and running away…After that, please make “quite clear” whether or not you DO know the controlling law regarding the exceptions to the printed matter doctrine. We both know that you volunteered an admission against interests that you in fact do know the controlling law, but you keep on dodging and running away whenever it comes time to apply that law.(don’t offer to help another to walk, when you cannot even crawl)Still waiting Malcolm for your ‘quite clear’ positions…


            Another “reply” that’s best appreciated with the old Merrie Melodies cartoon theme music playing in the background.


              LOL – now some Merrie Melodie innuendo…Oh, the irony. (the responsorial psalm for Leopold is: “That is pathetic.”) Funny that Leopold is completely absent from commenting on the obvious fact that Malcolm is caught in a blatant 1ie. There simply is no intellectually honest way for Malcolm to maintain that he has not engaged in innunendo – and yet, we have an upvote from Leopold for Malcolm in (yet another) Malcolm innuendo post.

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