Survey Response: Does the Amendment Violate the Written Description Requirement?

by Dennis Crouch

In an earlier post, I mentioned recently issued U.S. Patent No. 8,196,213.  During prosecution, the examiner rejected the pending claims as improperly claiming unpatentable subject matter under 35 U.S.C. 101.   In particular, the PTO submitted that the claimed “computer readable storage medium” could encompass transitory signals, which are themselves unpatentable.  In response, the applicant (Microsoft) amended the claims by adding an express limitation excluding “signals” from the claim scope.  The amended claim begins: “1. A computer readable storage medium excluding signals . . . ” This change satisfied the PTO and the patent quickly issued.   The original patent application document did not discuss signals or directly define computer readable media other than having the functional qualities of being able to “store data that is accessible by a computer.” However, the application did list several examples of computer readable media, including “magnetic cassettes, flash memory cards, digital video disks, Bernoulli cartridges, random access memories (RAMs), read only memories (ROMs) and the like.”

In a one-question survey, I asked Patently-O readers “does this patent claim violate the written description requirement?”  As discussed below, most readers (~75%) agreed that amendment did not invalidate the claim.

Of the 850 responses, almost half (46%) suggested that the claim is valid because the amendment does not go beyond what was originally described in the specification.  In its 2012 memo to examiners, the USPTO argued as much:

A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. 101 by adding the limitation “non-transitory” to the claim. . . . Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure.

See 1351 Off. Gaz. Pat. Office 212 (Feb 23, 2012).  I have some amount of difficulty understanding the explanation given by the PTO — that no new matter problem is created by the amendment “because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se.” While the USPTO’s interpretation of the law is important during the prosecution process, no deference is given to this type of analysis when a court later considers a patent’s validity.

Another 22% also suggested that the claim is valid because “negative limitations such as this need not be disclosed in the original application.”  And 4% argued that the limitation should be ignored because it is found in the claim preamble.

Only one option in the survey led directly to an invalidity conclusion. 26% of responses suggested that the claim limitation excluding signals from the scope was improper because that limitation was not disclosed in the original application and that the claim is therefore invalid under the written description requirement. 

In my mind, this entire discussion is ridiculous.  The invention in this case (as in several hundred thousand other cases) is a bit of software. Yet, because of these odd rules setup by the U.S. Supreme Court (and their interpretation by the PTO) applicants feel they cannot be straightforward enough to simply obtain a patent on the software. 


In the above discussion, I jump quickly between “new matter” and “written description” doctrines. During patent prosecution, the two doctrines are relatively inseparable. The PTO tends to issue new matter rejections under 35 U.S.C. 132.  Once a patent issues, the facts that would have created a new matter rejection at the PTO lead courts to invalidate claims for failing the written description requirement of 35 U.S.C. 112.

338 thoughts on “Survey Response: Does the Amendment Violate the Written Description Requirement?

  1. 338

    Congress did get involved, and we got the AIA as a result. They appear to be gearing up again to attack software patents, and it looks like they may kill a lot of electronic patents along the way, if they succeed.

  2. 337

    Summarizing, applicant disclosed X and claimed it as A. Examiner said that A includes X and Y, and, contrary to rationality, Y is unpatenable subject matter. Applicant then amended to exclude Y.

  3. 336

    Ned, wants to play semantic games with the words category, and categorically, so he can obfuscate the real issue that Business methods are statutory subject matter.


    Ned knows he can’t refute that fact with the law.

    He lost that debate long ago.

    But apparently he is still bitter, confused, and dazed by the Bilski ruling.

  4. 335

    “I wanted to change the law?”

    Yes, and you still do.

    “Just as we cannot categorical exclude any subject matter, we likewise cannot categorically include any subject matter.”

    Wrong. This is circular reasoning and thus a fallacious statement. I won’t even get into the semantic word games you play with “categorical” as Anon has expertly pointed this out up thread. So, let’s cut the Sophistry tricks and just cite the law as authority as to what can be categorically included.

    35 U.S.C. 101: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    USPTO Relying on U.S.C. 35: “The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained. In the language of the statute,..The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes.

    The term “machine” used in the statute needs no explanation.

    The term “manufacture” refers to articles that are made, and includes all manufactured articles.

    The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.

    These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.”

    Ned, so according to the Statute, which is the law, every method is included. which naturally also includes “methods of conducting business”.

    Until the changes and specifically says methods of conducting business are excluded, they remain patentable subject matter just like every other method.

  5. 334


    I think the reason for the extended conversation is that you continue to play word games like Anon has posted.

    You continue to mischaracterize the legal context of “eligible” when the discussion is concerning singular patent claims or categories.

    Relying on the hard and fast language of the Court is only a sure sign of you playing semantics.

    We (mostly) are big boys here and can use the proper terms of art (even if the Court cannot). Eligibility and patentability are concepts that we as professionals should be able to use, and use correctly.

    No, Ned, the reason for the extended conversation is because you continue to choose not to use those terms correctly.

    And by the way, we do say that a patent is valid. We even have a law that presumes that it is valid. There is a legal instance where a court will hold a patent “not invalid,” but clearly, this is yet another word game from you.

    Let’s stop that one here and now.

  6. 332

    Mr. Game, not me, you.

    We do not say a patent is valid for a reason.  We say that a patent is not invalid.

    Likewise the SC said that patents on business methods and programmed computers were not categorically excluded.  They did NOT SAY, however, that they were "eligible."  And, it is the reason they did not say this that is the topic of our extended conversation.

  7. 331

    No one (else) has ever said “categorical inclusion.”

    It’s a phrase that doesn’t even make sense, given the proper understanding of terminology in patent law.

    It’s also unnecessarily confusing to the extreme, given the definition in Webster:

    1: absolute, unqualified

    2a: of, relating to, or constituting a category
    b: involving, according with, or considered with respect to specific categories

    2: is perfectly acceptible in a legal discussion of patent eligibility.
    1: is perfectly unacceptable and is reminiscent of Ned’s “categorically” versus ‘as a category” beatdowns from Anon.

    A new question for Ned: Why are you trying to make this so confusing?

  8. 330

    BMs are US,  

    I wanted to change the law?

    Haven't I noted that the central problem with regard to categorical exclusions is the lack of a good definition of what it is that is being excluded?  Without such a definition, we have to take these things on a case-by-case basis.  That is primarily why the SC stated in Bilski that BMs were not categorically excluded.  No good definition. 

    Just as we cannot categorical exclude any subject matter, we likewise cannot categorically include any subject matter.  This is why the SC expressed itself the way it did in Bilksi and for that matter, in Benson.

    No categorical exclusion. 

    As well, no categorical inclusion.

  9. 329

    “They did not hold that methods of doing business were eligible as you state the law to be. ”

    Methods of doing “anything” are eligible.

    That’s the law.

    And yes it includes methods of doing business.

    You wanted to change the law to exclude methods of doing business.

    You lost.

    Any questions?

  10. 327

    Mr. crusade, I think you misunderstand why I am discussing this issue with Mr. anon.  It's a matter of the proper use of language as opposed to a particular class of claims.  We are discussing whether it is proper to state that "business methods are eligible subject matter for patenting under section 101" when in Bilski the Supreme Court said that business methods were not categorically excluded.

    I think we have the same problem with the Benson case and its statement, and again I paraphrase, that programmed computers were not categorically excluded from patentability.  Some have relied upon the statement for the proposition that "programmed computers are patent eligible."  I don't think that such a statement is a fair summary of what the Supreme Court held in Benson.  In the same way, I don't think the statement that "business methods are eligible" is a fair summary of the majority opinion in Bilski taken as a whole, which after all held the business claims in that case ineligible.


  11. 326

    Mr. weed, I've already agreed it in a separate post that the discussion of the categorical exclusion by the majority was dicta in that it was a response to the Stevens dissent.

  12. 325

    Mr. crusade, what agenda are you talking about? I have heard nobody discussed whether medical methods, let alone whether medical methods were laws of nature or were not laws of nature.

    You continue to prove Anon’s points. You take every opportunity to rail against business methods, and yet are stone cold silent on medical methods.

    Why the inconsistency?

  13. 324

    That wasn’t the holding in Bilski.

    Do you know the difference between holding and dicta?

    Are you even a lawyer?

  14. 323

    Mr. repeat, if what you say is true about Mr. anon, obviously you can explain it here.

    One away is to begin with the holding of the Supreme Court?  "Business methods are not categorically excluded from eligible subject matter under section 101."  (A paraphrase)

    Connect the dots.

  15. 322

    Mr. crusade, what agenda are you talking about?  I have heard nobody discussed whether medical methods, let alone whether medical methods were laws of nature or were not laws of nature.


  16. 321

    Serious questions, when did I state that Diehr was overruled?  What I was talking about was the notion advanced by Judge Rich in both Benson and later in Bergy that section 101 was a threshold issue and that novelty had nothing to do with section 101.  Diehr seem to approve of Judge Rich's analysis.  But at best this was only dicta as it was not necessary to the decision and was a discussion intended to rebut the Stevens dissent.

  17. 320

    Mr. software solutions, that is the exact position of both Judge Rich and Judge Rader.  But I like to point out that the Supreme Court apparently disagrees when they GVRed Ultramercial.  Merely reciting software or execution on a general purpose digital computer is not enough to render a claim eligible for patenting.

  18. 319

    Mr. business method expert, while the explanation by the Supreme Court as to why the Bilski claims were held the abstract left something to be desired, I think it is clear that they held the claims abstract because hedging itself was abstract.  Hedging balances risk.  Risk is an abstract concept.  The balancing of an abstract concept itself is abstract.

    Regarding "eligible," the Supreme Court held in Bilski that methods of doing business were not categorically excluded.  They did not hold that methods of doing business were eligible as you state the law to be. 

  19. 318

    About to be lost and worth saving:

    An Infringement Primer said in reply to Ned Heller…

    I do not understand what you mean by “a programmed GP digital computer is not patentable subject matter out of context.”

    You do know that a programmed GP digital computer simply is not a GP computer anymore, right? You do understand what is meant by “programmed,” I hope. I note that you have issues with context on this subject matter to begin with (Anon’s posts immediately come to mind).

    But just so we understand each other, “programmed” entails purpose and application. Without purpose and application, you do not have “progammed.” Your reference to “See Benson” is inapposite. See Alappat.

    If the software under concern, that is, the software that is directly related to the patent claim has other uses than the specific application claimed, then the analysis would proceed as to any commodity type use. Granted, for some software there will be a commodity factor. But do not confuse breadth of claimed use with commodity. That would be a mistake.

    Your attempt to shoehorn one patent with one invention mistakes the purpose and availablity of multiple independent claims per patent. You are attempting too fine a read and you are confusing yourself. It is really not any more complicated than I posted.

    You misstate what I say when you indicate that some claims be construe to not require knowledge. I think that is what is called a strawman, as you have constructed a position not present and attacked your constructed position rather than what I posted. I posted that the knowledge factor is presumed. My statement accords with law. Do not misrepresent what I posted.

    Reply Jun 11, 2012 at 07:04 PM

  20. 317

    I am more than sure that Anon has used the term in its appropriate legal context.

    He even explained the multiple legal contexts of use (several times) and pinpointed how you used (and continue to use) the legal term in error by mixing the legal contexts.

    You have never shown this to be on error. You have never even acknowledged this. All you do is repeat your error ad onfinitum, as if somehow the next time you repeat the error, the error will magically disappear.

    You do know what the definition of insanity is, don’t you?

  21. 316

    1. The Prometheus claims were medical methods claims.
    2. The Prometheus claims were held to be Laws of Nature.
    3. Ergo, medical methods cannot be categorically not laws of nature.
    4. Arguendo, the statement that “medical methods are not laws of nature” is false.

    Loses a bit when you take it off-agenda.

  22. 315

    Ned: ” No. Implication only.”

    With all due respect here Mr. Heller we are dealing with the law, not implications. Therefore if you can’t provide citations to the “law” no such law exist.

    You statement that Diehr was overturned then is false.

    And the fact that business methods fall under the method class or category, and are included in that class or category is true.

    I think now every single fallacious argument you have put forth on this blog regarding business methods not being patent eligible, has been debunked, defeated, and destroyed!

    Now what do you have to say for yourself?


  23. 314

    “Augustus, is it your position that the only thing wrong with Bilski was that it was not tied to execution on a GP digital computer?”

    If Bilski’s invention had simply been software, rather than disembodied math, and thus executable, it would have automatically fallen in one the method/process category of the four enumerated categories.

  24. 313

    Ned I was stating a fact. A method of doing business simply can’t be performed in the mind and thus is a not an abstract idea.

    That is a fact you can’t dispute.

    Bilsk’s invention was not a business method.

    Bilski’s invention was a mathematical formula.

    That’s why the Supreme Court ruled Bilski’s invention an abstract idea.

    Now if you wanna argue if math is abstract or not, well that’s a horse of a different color.

    But that has nothing to do with a business method fitting in the method/process category of the four enumerated categories.

    Therefore a method of doing business STILL fits in the methods category of the four enumerated categories.

    Thus as a matter of law, a method of doing business is STILL patent eligible.

    Have anything else ?

    Or, are you finally finished.

  25. 312


    Implication only.

    The implication is from the use of "conventional" to describe the administering step and the determination step.

    Do  you deny that the SC used the term to describe these steps?

  26. 309

    Just, however, what did the Supremes say when discussing the eligibility issue at the categorical level?   What did they actually say?

    The fact that you and your fellow sockpuppets refuse to even use the language employed by the Supreme Court is telling, is it not?

  27. 308


    "…[A] method of doing business, [sic] is not an abstract idea….""

    Another categorical statement.

    Let me show you why such categorical statements are wrong, logically.

    1. The Bilski claims were business methods claims.
    2. The Bilski claims were held to be abstract.
    3. Ergo, Business methods cannot be categorically non abstract.
    4. Arguendo, the statement that "business methods are not abstract" is false.

  28. 307

    “What Rich tried to do in Benson, and later expressly in Bergy, is remove from 101 “new.” He expressly stated in Bergy that by splitting 101 from 102 in the ’52 Act that congress intended that 101 be a threshold issue and that questions of novelty had no place in 101.

    Diehr endorsed that view.

    But that view is wrong and has now been overturned by Prometheus.”

    Whoa, that is a big statement on your part Mr. Heller.

    Can you please cite in Prometheus where the Supreme Court expressly overturned Diehr?

  29. 306

    “that the SC has used the term very selectively to mean one thing and one thing only”

    As pointed out by Simply Unbelievable, this is plainly a false statement and Ned’s arguments folds like a house of cards in a monsoon.

  30. 305

    I lost my post but quickly recapping, I think Ned Heller has lost all credibility with his post of “No it has multiple conventional meanings, depending on context.  When used by the Supreme Court, it has one meaning.

    In Bilski, the Court clearly discusses eligibility at more than one abstraction level, discussing both the instant claims and the category level of eligibility due to the fact that Congress considered the category of business method claims eligible by their creation of certain law.

    This is not a point that can be debated by any serious practitioner.

    Ned has shown that he his not serious by such outlandish comments.

  31. 304

    Ned falsely states “
    No it has multiple conventional meanings, depending on context.  When used by the Supreme Court, it has one meaning.

    This is a shameless lie. It is clear in Bilski that the Justices were discussing eligibility at more than one abstraction level, including the immediate case at hand and the government’s action in setting a defense in law for a category or group level.

    For Ned to so blatantly lie on something so well known is conclusive of everything that he has been accused of. There is no possible defense for the outlandish positions and schemes he has put forth.

  32. 303


    As a matter of fact, a method of doing business, is not an abstract idea, law of nature, or natural phenomenon.

    And a method of doing business is new and useful. ( Not to confuse the new in 101 with the new in novelty in 102)

    Therefore a method of doing business fits in the methods category of the four enumerated categories.

    Thus as a matter of law, a method of doing business is patent eligible.

    And that’s the law until Congress says otherwise, no matter how many word games and sophist tricks you use to argue otherwise.

  33. 302

    used by the Supreme Court, it has one meaning.” Really? Cite please. You won’t provide one because you are just wrong.

    And btw, this still does not excuse your attempts to use it in multiple contexts, even in the same sentence as has been exposed as recently as within the last hour.

Comments are closed.