Patently-O Bits and Bytes No. 20

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  • Bye Bye Markush: The USPTO has published its “Initial Regulatory Flexibility Analysis” of the proposed changes to Markush Claims. [IRFA][Proposed Rules]. According to the PTO, about 22% of all patent applications contain affected claims, with the highest percentages in Biotech and Chemical cases. The proposed rules would limit Markush alternatives only to those that are not overlapping and that do not make the claim difficult to construe. There is still some time to comment on the changes.

20 thoughts on “Patently-O Bits and Bytes No. 20

  1. 20

    I don’t understand why anyone would oppose Markush claims (I also don’t understand why anyone would use them outside of chemical practitioners) Of course, I don’t understand why multiple dependent claims are set up to be unusable in this country either.

  2. 18

    “would not make the claim difficult to construe”?

    The whole point of having a Markush claim is to make the claim easy to construe!

    Without it, you would be getting such vague language in claims as “or any other functional group capable of doing blah blah blah while not doing blah blah blah, that will take a dozen lines to describe”.

    Markush claims serve a valid purpose, because to paraphrase Learned Hand, words exist to describe things, and not the other way around; you make a new genus of compounds, and of course a word doesn’t describe it adequately – it’s new, after all!

    But I’m a chemist, so what do I know?

    I don’t see people in other countries having problems construing them. Or even saying they are anything special by giving them a unique label like “Markush”. Correct me if I am wrong, but I was under the impression they were only introduced in the first place, in the US, because the USPTO had a strange rule that alternatives could only be used if there was a natural word to describe the alternative. So you could claim alternatives in fields which were both old (enough for the language to have evolved) and well-known (so there were enough people using the things to be bothered making up such words), but not in fields that were young (and most inventive).

    Hardly the way to encourage innovation. So three cheers for Markush (or rather his attorney).

    Cheers, Luke

  3. 17

    Though, to be sure, I see where you’re coming from David. Only problem is, it’s nothing but pure unadulterated crying to have your way rather than let the PTO sub-system evolve just like all the rest of the sub-systems of your government do.

  4. 16

    Remember dear followers o PO, I breakdown into leetspeek when, and only when, people break down into ridiculously childish or outlandish positions. See David’s position above.

    Hah, but anyway QQ is from any gamers terminology, see Halo, RTS’s, etc. but it may have begun in WoW, I doubt it though, WoW’s too new. In any event, QQ entered the mainstream of youngpeople chat awhile back (See texting). Also, perhaps you’ve heard of PurePwnage fighting for the trademark on Pwnage?, from what I know of WoW, PP predates it and they use it there. If I didn’t tell you once my bad Alun, I’ve explained it a few times on here already, I can hardly introduce all of you to the future your kids are bringing to you everytime I post. See also that gamer channel on tv, I don’t remember it’s name.

    Wish I could play me some WoW, or anything else lately 🙁 QQ. Gf always wants to go out and spend $$ (one game costs $ only and lasts a couple of days), and then, when she goes on Spring Break instead of going out and picking up dudes or whatever, she wants to spend the whole thing on the phone with me. Ridiculousness. I get to look forward to her crying till I say “I love you” before saying goodnight tonight. I know I know, QQ moar e6k …

    Though, tbh, all the games I’ve played this last year or so pretty much sucked anyway, so I hardly feel too left out.

  5. 15

    So that’s what QQ means. I asked 6k before but he didn’t reply AFAIK. I could call him a LID, but then I assume he would be scratching his head and wondering too, which is very much the point.

  6. 14

    (okay, this 50 something year old learned something new today on patentlyo)

    From WoWWiki
    Jump to: navigation, search

    Chances are if you are browsing this page you have recently been told to QQ and had little meaning of what the word meant.

    QQ is a string of letters often used in online communication to signify two crying eyes. It is usually used in the pejorative such as “QQ more nub” meaning “Why don’t you cry more, newbie.”[1]

    “QQ” has become a popular term, and can also be used to reply to a poster that the person thinks is whining. It is generally seen as trolling if the post only consists of QQ, for example:

    Hunter: Why do hunters always get nerfed?
    Reply: QQ

    Within the context of World of Warcraft one will often see “less QQ more pewpew”, meaning basically “try crying less and fighting back more”, for example:

    Player A: Why do level 70s always gank? What’s the point?
    Reply: Less QQ more pewpew.

    This term came from the Warcraft series. The quick way to exit out of the game and enter back into the chat lobby was to press alt then Q twice, hence QQ. It became a way of insulting noobs and telling them to get out or leave the game

  7. 13

    6k wrote: “QQ”

    If the are any skilled debaters reading this, stop now. 6k has won. When someone starts using World of Warcraft terminology you know you cannot win.

  8. 12


    Get your qq outta here you bunch of spoiled brats. They’ve been to generous to you already.

    MM I would get into a more substantive analysis, but that’s what it would end up showing.

    BTW david, I didn’t realize the claims “were the invention”. If that’s true, (which according to the powers that be it’s not) then if you recieve a valid first action rejection, you can’t change those claims at all, otherwise you’re no longer claiming “your invention”. Don’t get into bs about “well issued claims are the invention” with me, I’ll take you to town there as well.

  9. 11

    EG // MVS // David Bounty – thank you for pointing out the relevant case law … how abstracted the folks at the office are or had intended to be … it is really a shame …

    all of your posts are appreciated …

  10. 10


    You’re absolutely on target regarding this Rules package, which is complete nonsense, a sham, and everything else you called it. I’ve already put my 2 cents into the PTO Relations Committee (Patents) of the AIPLA on an earlier version of this Rules package and why it is absolutely beyond the PTO’s authority to enact, why this Rules package is completely in conflict with CCPA and Federal Circuit case precedent, etc. The Federal Circuit would have a field day “drop kicking” this Rules package. And we won’t even have to petition any rejection or objection based on this Rules package because, like in In re Weber, this Rules package constitutes a refusal to examine the claimed invention on the merits which isn’t the PTO’s call to make.

  11. 9

    ‘Dennis, you could change this to, “There is yet some time to comment on the changes” to be more PC.’

    Naw, yet is a derogatory term for our friends the yetis.

  12. 8

    I had not paid much attention to this rule package first time through, largely because I was up to my eyeballs on the other rules.

    Now that I read the Markush rule package, it is an outrage. The PTO proposes to

    – require the use of Jepson claims, without even the “fig leaf” that it proposed in the IDS rule of pretending to waive certain issues

    – “Two or more independent and distinct inventions may not be claimed in a single claim.” This sentence is meaningless on its face – by law, a claim *is* the invention. There is nothing in the rule package to prevent examiners from construing this to mean that one claim cannot embrace any two patentably distinct embodiments.

    – The PTO by rule proposes to overrule a lot of substantive law, Harnisch, Weber, Haas, etc. to grant itself the right to restrict within one claim.

    The PTO’s burden “analysis” is a complete sham. It assumes that there will never be more than one divisional filed, even if the examiner issues a 20-way restriction. It assumes that the only costs patentees have is filing fees – it ignores attorney costs. It ignores the burdens and societal costs of the destructuion of patent value, the loss of patent scope, the businesses that go out of business, and the loss of businesses that cannot attract investment capital.

    Please take a few hours to read the Rule and the PTO’s “analysis,” and write to the PTO, to the Small Business Administration, and to the Office of Management and Budget.

  13. 7


    Nice add-on to my comments. That assumes the USPTO hierarchy understands what a “physical equivalent” is.

  14. 6

    EG said:
    “Maybe they need the “legal” equivalent of a 2 X 4 across their rule-making heads.”

    I would suggest modifying “rule-making” to “rule making AND policy-making”. May also want to consider “physical equivalent” 🙂


  15. 5

    More rhetorical nonsense from our beloved USPTO. Maybe they need the “legal” equivalent of a 2 X 4 across their rule-making heads. This proposed Rule, if it is ever finalized, will be laughed out of existence by the Federal Circuit. How the USPTO can square this proposed Rule with In re Weber and In re Haas is beyond belief. And I doubt that the Federal Circuit gave the USPTO in In re Harnisch this sort of license to ignore 35 USC 112. There are more practical reasons for avoiding Markush groups in claims (just like avoiding product-by-process claims), but what the USPTO proposes here exceeds the very limited authority they have to control claim formats.

  16. 4

    “There is still some time to comment on the changes.”

    Dennis, you could change this to, “There is yet some time to comment on the changes” to be more PC.

    Falkland Islanders might find your original language offensive. It is quite well known that after British troops were forbidden to use the insulting term “B*nnies” against the Islanders, they named the Islanders “Stills” – because (or so it was alleged by the British troops) they were still B*nnies.

  17. 3


    i am looking forward to the day when you get a background check by your alleged future private practice firm … after your alleged attempt to attend a law school … “43”!

    “lawyer bs”? couldn’t possibly be anything else

    let’s see :: cost estimates – “incremental” (to whom?), any correlation with pendency prior to/at the time of/ the filing of these applications (does not seem to be any appearance of normalized data ecxept a DCF of 7% — find me a small biz loan at 7%! – “frustrate the Office” — and who pays for the examination and why is there a bil plus surplus in the pto accounts? earning 7%? doubt it), and the twisted logic in at least the following at (4) is laughable at best and pathetically sad to those who do innovate:

    “While exempting small entities from coverage of the proposed rules or any part thereof (or taking no action) would avoid any incremental economic impact on small entities, such exemption (or lack of action) would frustrate the Office’s ability to grant quality patents in a timely manner that effectively promote innovation. It also would result in small entity applications (or, in the case of no action, all applications) with two or more independent and distinct inventions presented in single claim that either: (1) Consume a disproportionate share of Office examination resources per application and thus not effectively promoting innovation in a timely manner; or (2) receive a less thorough examination, which would decrease, rather than enhance, the Office’s ability to grant quality patents.”

    … however, we recognize that larger companies are very effective at viewing published applications regardless … they file better claims with higher octane innovation that are disclaimed by smaller rivals who lack resources … they whine & dine at the finest crystal ball sessions in drafting these types of rules … we know that restriction requirement are clearly standardized … and every examiner is quite consistent in seeking counts per application … OH, forgot, and since DoE/Festo/KSR are quite clear in making matters of patentably distinct claims, scope and broad interpretation during prosecution clear to the office and practitioners (and, of course small entities who have acquired the cute little pto how to get a patent guide) … we believe Ex#6 affirms our position contrary to any traversal, declaration, or LOGIC that these additional requirements will improve the “Office’s ability to grant quality patents” …

    and since Ex#6 (expoundless) says 1-2 claim inventions are best (more than once and prior to this publication in the federal register) … we think you know that that little html editor’s moniker is full of a bunch of … quality enhancements … to feed you the experiences of an alleged young examiner …

    why not simply give the small entity the choice to get their application examined faster so that they can determine the risk reward themselves? — like the electronic filing program — and force the office to stick to strict pendency and patent term extensions?

    since comments from government employees go something like this: “sorry about not providing any extension but hey im trying to save you 200 bucks for a petition” — “but mr. patent extension pto attorney, i lost 10 years because of pendency, 6 examiners, 5 status inquiries, 10 business partners, 3 re-fis” — “well, sorry, NEXT!” — that would seem to promote innovation but then again the problem is too many patent filers! golly!

    woo hoo!

    cant wait for those ids rules …

    write you senators … s. 1145

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