Written Description: Showing “Possession” of a Negative Limitation

By Dennis Crouch

In re Bimeda Research & Development (Fed. Cir. 2013)

Bovine mastitis is udderly problematic. Since so many folks now want to buy antibiotic free milk, dairy owners are looking for new ways to address the issue. Bimeda's patent relates to one solution that can be used during a "dry period" – typically prior to a cow giving birth. See U.S. Patent No. 6,506,400. The offered solution essentially involves painting-on a waxy physical barrier to protect the mammary teat canal during the dry period. These seals are not new, but Bimeda's revolution is that its seals do not include any antiinfectives. In 2009, a competitor (Merial Ltd., a Sanofi compani) filed an ex parte reexamination request.

During reexamination, Bimeda added several new claims including a new limitation that the physical barrier seal is made of "an acriflavine-free" formulation. Acriflavine is well known to folks skilled in the art as a treatment for mastitis. However, the original specification does not mention acriflavine. The result is that the PTO Board found the claim unpatentable for failing to comply with the written description requirement of 35 U.S.C. 112. On appeal, the Federal Circuit affirms.

The original patent application must disclose the invention being claimed – otherwise the claim fails the written description requirement and is unpatentable. Written description issues arise most often when a patentee changes claim language during prosecution (as here) and adds new limitations in order to avoid prior art. Written description is often seen as a "technicality" requirement because it applies even when the added limitation would have been easy for someone of skill in the art to add without further instructions in the application specification. The point of the requirement is to make sure that patents are only granted to cover subject matter actually invented.

Here, Bimeda argued that it should be able to add the acriflavine-free limitation because (1) acriflavine is an antiinfective and the application described formulations that were antiinfective free and, the exemplary embodiment (Example 1) described a formulation that was acriflavine-free. Now, to be clear, the example did not spell out that the formulation was "acriflavine-free." Rather, acriflavine was simply not in the list of ingredients.

On appeal the Federal Circuit reviewed the factual question of written description for substantial evidence. Thus, the PTO wins if it can show more a mere scintilla of evidence in support of its findings. The court easily found sufficient evidence.

In this case, the Board found, inter alia, that claim 32 failed the written description requirement because the disclosure did not "describe[] a formulation excluding a specific species of the anti-infective genus, while permitting others to be present." On appeal, Bimeda counters this finding by arguing that the disclosure broadly claims a teat seal formulation utilizing a physical barrier, yet does not expressly exclude any particular antiinfective agents. Bimeda interprets this as tacit indifference to the presence or absence of specific antiinfectives, and contends that the disclosure therefore supports a claim which excludes one particular antiinfective (such as acriflavine) but permits the use of others (such as antibiotics).

Substantial evidence supports the Board's contrary interpretation because the disclosure is generally inconsistent with a formulation which, like claim 32, excludes acriflavine but could include antibiotics.

Judge Clevenger drafted the opinion for the court. Chief Judge Rader also filed a short concurring opinion noting that the usual catchphrase of "possession" is not the correct way to think about written description. In particular, according to Rader, possession makes no sense here where the focus is on a negative limitation. He writes that "the Board places the patentee into a Catch-22: to satisfy written description, the patentee must show possession of something it specifically claims it does not possess." Here, Judge Rader suggested an important element in this case is the fact that Acriflavine is a "well-known species of antiinfective that [has] been used in teat seals to treat bovine mastitis for over 75 years." Along these lines, it makes sense that you could later claim a "wheat-free" bread invention based upon a disclosed bread recipe that includes a list of ingredients for making the bread and where wheat is missing from the ingredient list. Of course

270 thoughts on “Written Description: Showing “Possession” of a Negative Limitation

  1. 270

    Could the applicant have avoided this by simply incorporating the Encyclopedia Britannica by reference?

  2. 266

    Quite in fact

    I’m not sure where you picked this up but it’s not English and makes you sound like a t 0 0 l.

  3. 265

    Your choice of examples rings once more of your ‘association’ with Malcolm.

    Given how extensive his duplicity has been in regards to svckpuppets, it leaves one to wonder.

    Plus, you attempt to misdirect by re-defining creepy independent of the propensity to ‘troll.’ Please put the goalposts back.

    I will take it then that you acknowledge the fallacy of your first attempted logic and recognize that I am indeed NOT trolling you. Just like I said. You cannot logically have stalking and diversity.

    You would be better off simply not trying to spin this.

  4. 264

    Diversity – that’s pretty funny, anon.

    OK, let me put this in terms that you can understand. Some anonymous guy is at the park every day and all day, sitting on a bench in your dirty trenchcoat and watching a diverse assortment of nine-year olds use the swing set. Several of those kids come by on a regular basis, say every two weeks. A few of them are the anonymous guy’s favorites, so he occasionally mutters something generally unintelligible about “cheerleader outfits” or “circles” as they pass by. Now, each of those kids is far more likely to encounter the anonymous guy on any given trip to the park than the anonymous guy is to encounter him on one of the anonymous guy’s trips to the park. But which is the (diversely) creepy one?

  5. 263

    That you have no difficulty does not address the particulars of how and why the PHOSITA can have no iota of inventiveness AND still maintain common sense.

    You have not explained why you have no difficulty, nor explained how the apparent contradiction is overcome.

    Further, your comment regarding the difference in law between the US and what governs the patent system you are familiar with is a bit of a red herring. Unless you mean to say that the KSR decision was wrong, I cannot tell how you handle that case as it pertains to our discussion.

  6. 262

    You are not applying the two edges of the sword correctly, MaxDrei.

    The sword of PHOSITA is to be applied equally to the real person of the inventor as to the real person of the accused infringer.

  7. 261

    When you have time, then, MaxDrie.

    Here your views ring with credibility as you are discussing things within your realm, sans proselytizing. I quite enjoy these posts.

  8. 260

    Your logic is fallacy Leopold.

    You acknowledge my diversity and then claim I am stalking – you cannot have it both ways.

  9. 259

    “I take it, independent of how much of the prior art corpus any particular player happens to have read or seen or heard?”

    Yes.

  10. 258

    We have been over the math on this before, Leopold – you are more likely to post in response to me than I in response to you – by several orders of magnitude.

    I see your logic skills are right up there with your English skills. Since 50% of the comments on this site are yours, everybody is more likely to post in response to you than you to him, if you’re talking about the probabilities attached to a single post. The fact is, though, that you respond to very close to 100% of my comments, whether or not they are directed to you. I respond to maybe 1 or 2% of yours. The former is tantamount to stalking. The latter is merely an occasional lapse of good judgment.

  11. 257

    It has to do with how they define their person of ordinary skill, and that their judges and tribunals appropriate that role to themselves, as required by the civil law system of law in Germany, which thus unfortunately blurs the distinction between true evidence and mere attorney argument. The English law jurisdictions can help them with that problem, I believe. (Conversely, Germany can help England, when it comes to who enjoys access to justice.)

    No time now, for more than that.

  12. 256

    Yeah, anon, I did wonder what “ordinary inventiveness” meant. Germany used to say that you need a higher level of inventive activity to defend your 20 year patent claims against validity attacks than you do those of your 10 year utility patent (Gebrauchsmuster). Perhaps Germany could comment on the meaning of an “ordinary” level of inventiveness?But fortunately for Europe, along came the EPO and now in Europe obviousness is a strict binary question.

    That said, I have no difficulty ascribing to Fozzie BOTH common sense and zero inventive acumen. But then unlike you, I’m not subject to any SCOTUS binding precedent on what is meant by ordinary, obvious, common sense, or inventiveness.

  13. 255

    Can’t legitimately opine on USA law but i can comment from a position in EPC-land.

    Europe does not do triple dameages and sees no need for them, ever. It does do “innocent infringement” though. Mind you, if you are BMW you can’t credibly assert that defence against a claim you infringe an EPO patent in the field of cars.

    The PHOSITA has the attributes of no real person. That is why so many non-patent professionals have such trouble with it. It is a legal construct to bring clarity to issues of patent validity. Deeming it to know everything requires no counterpart deeming of the state of knowledge of any one real individual. The accused infringer is a real individual, perhaps with 70,000 employees. No comparison, no 2-edged sword.

    Should a government decide to distort the rules of free competition by installing a patent system, it is free to use it to promote the progress of useful arts in the way it thinks best, balancing trade secrets with incentives to patent in whatever way works best. Europe studied how the USA does it and then installed a system of absolute novelty and a right of continued use for those who bring innovation to industry without patenting it. Did it go wrong? As you know, I think not.

  14. 253

    but to be incapable of one iota of inventive thought

    How would you square KSR with that? Here, PHOSITA has common sense, and has the level of inventiveness that comes along with that common sense.

    If you scrap even one iota of inventive thought, where lie common sense?

  15. 252

    Notwithstanding the soapbox, good post MaxDrie.

    (seriously, no snark intended)

    Would you agree that the calculus regarding treble damages needs to be reconfigured in light of “Patent applications are supposed to be read?”

    Let’s use a double edged sword – the first edge being that any person attempting to patent something is pre-supposed to have full knowledge of published work in their field. The second edge being that any person not attempting to patent something is pre-supposed to have full knowledge of published work in their field. (of course, a de facto result of this is that we START with the presumption of treble damages, then)

    In all fairness, we would not want to treat those would share differently from those who would infringe, would we?

    Something tells me that this will not sit will with those holding the Book of Infringer’s Rights.

  16. 251

    OK Les, Fairness.

    The EPO’s Supreme Court recognises the unfairness of squeezing the owner of a claim with prior art that he could not have known about. We call that earlier filed but later published art 54(3) art and against it you can disclaim freely, to re-establish novelty. Obviousness is not an issue, with 54(3) art.

    But what about prior published art. You think Inventors wearing blinkers should get to issue while those who research the prior art should not. That’s not a very good way to Promote the Progress, is it. Patent applications are supposed to be read, as soon as they are A published.

    In Europe we decide on prior art attacks objectively. Our PHOSITA is deemed to have read everything but to be incapable of one iota of inventive thought. You want objective (fair)findings on claim validity, I take it, independent of how much of the prior art corpus any particular player happens to have read or seen or heard?

  17. 250

    No. I could go looking for it but, then again, so could you. Some Germans to this day still have a hard time keeping novelty and obviousness separate, for reasons connected with their domestic law of patents. It is a weakness that has to be bred out of them, I think.

  18. 249

    aside from the fact that he insists on following me from conversation to conversation

    We have been over the math on this before, Leopold – you are more likely to post in response to me than I in response to you – by several orders of magnitude.

    It’s creepy how you employ the same twisted types of ‘logic’ as the one you are so apt to do cheerleading for.

  19. 247

    I’m more interested in Fairness. And I have seen such things as insistence by the EPO on literal support for every word used in a claim lead to unjust decisions over and over. In a world where an inventor cannot be aware of every piece of prior art prior to filing an application, and where language is an imperfect tool, and where translation is an imperfect process, there needs to be some flexibility in the adjustment of claim language after the fact to allow an application to disavow or disclaim aspects of newly discovered (to the applicant) prior art.

  20. 246

    Ah, so you’re still fretting about the 102(e)/103 rejection. Got it.

    Regarding anon, the creepy part (aside from the fact that he insists on following me from conversation to conversation) is that he seems to think I understand his pseudo-English babbling.

  21. 245

    To tell you the truth, LB, Heinz Bardehle was the one I had in mind, with his concept of “enhanced novelty”, conceived to bridge between Europe and the USA, on the prior art effect of earlier-filed but later-published, rival patent filings.

    And right, LB, that from anon is not English and no other language either. He knows what he thinks (I guess) but is not capable of communicating it to others. Curious eh.

  22. 244

    But this IS a blog, Leopold, and I am pretty sure you understand what I am saying (well, so much for your levity…)

  23. 243

    Your post belies those with whom you are intimate (not sure any of those who typically charge at red capes would charge at that).

    That’s not English, anon.

  24. 242

    LOL – I wasn’t charging at MaxDrei…

    Your post belies those with whom you are intimate (not sure any of those who typically charge at red capes would charge at that).

  25. 241

    Come on, anon, give somebody else a chance to charge at the red cape of “MaxDrei said,” why don’t you?

  26. 240

    Who blurs the distinction between novelty and non-obviousness, Max?

    LOL – take a wild guess Leopold. Here’s a hint: “Whatever”

  27. 238

    Les in my example I deliberately left all that stuff open, so you could see that, in any particular real case, the answer on disclosure/novelty/priority/written description/added matter always is “It all depends”.

    Obviousness is another thing entirely. Not black and white at all.

    In Europe, because of Art 54(3) EPC, I can assure you that we are forced to be 100% clear on whether we are on novelty (etc) or obviousness. You might think that the EPC is a Looking Glass World but I do assure you that keeping rigorously distinct the concepts of novelty and non-obviousness 8as opposed to blurring the distinction) does wonders for the clarity of the law.

  28. 237

    Fair enough Max. I accept that it is possible for a negative limitation to be new matter. But, I believe it to be unlikely.

    For example, what was in the figures of your glove application. Where 5 fingers always shown or was there a figure showing only the thumb and first finger, implying the rest of the glove was could vary? What is the wording of the claim? Was it for a glove having at least two fingers, wherein at least two of the fingers have feature X? Or, was it for a glove? If it was for a glove, what is the definition of a glove? Must an item of clothing have 5 fingers for it to be considered a glove? If so, what are those things called that the Fagan was wearing in Oliver?

    link to psecher.dk

    Anyway, in your example, it seems to me we don’t need to get into all that, as a 103 rejection in view of Fagan et al. would suffice.

  29. 236

    “I do not understand… do not try again”

    Yup – there’s a mind open to understanding…

    /eyeroll

    Pretty soapbox MaxDrei.

  30. 235

    Thanks anon, for giving me an opening, and for prompting me to clarify the matter with Les.

    Here is what Les wrote:

    “The inventor discovered that ABC alone works, described and claimed same but did not know that ABCD was prior art and could therefore not claim or described ABC and not D. Since the claimed and described combination did not include D, it is not and should not be considered new matter to later specify not D. One of ordinary skill in reading comprehension would have understood that the inventor had ABC and not D in his/her possession at the time of the invention since D was not mentioned as a component.”

    Agreed?

    In my concrete example, ABC is the glove with the pads X on the thumb, first and second finger. D is the 3rd and 4th finger sleeves, about which Les in his app as filed is silent. The prior art has ABCD so Les amends during prosecution to claim “ABC, but no D”.

    Les, I do not see where my concrete example fails. Do you?

    Your posting, anon, whether at 7:28 am or pm on August 1st, I simply do not understand. Do us all a favour though. Do not “Try Again”.

  31. 234

    MaxDrei, your example falls to the same problem that Ned’s example had.

    See my post at 7:28 (Aug 1).

  32. 233

    Les suppose you disclose and claim a glove for the left hand with feature “X” on the pads of the thumb and first and second fingers. Perhaps a special glove useful when peeling potatoes.

    Now suppose the PTO finds an earlier filing (PA1) for a glove with those same features. You respond with an amendment that specifies bare third and fourth fingers in your glove, and thereby gives your claim novelty over PA1. What would you need in your original application to render that amendment admissible. Perhaps, total silence about the 3rd and 4th fingers? Is it implicit that a glove leaves the 3rd and 4th fingers bare? Is that enough to render your amendment good for i) you ii) the USPTO and iii) the EPO?

  33. 232

    Perhaps, but I’m not sure.

    You seem to think that it is possible to disclose and claim A, B and C without mention of D and not clearly imply that D is not a required element.

    I can’t think of an instance where failure to mention D nevertheless suggests the inclusion of D.

    So, while I agree with your post above as written. What is left out is whether or not not mentioning D in the specification always implies that not D is at least an embodiment or not. I say it does, or at least usually does. And I say usually, only to be open minded. I can’t think of an example where it would.

  34. 230

    Thanks.

    And feel free to repeat the same line (funny, McCracken went through this phase recently…)

  35. 228

    Largely unoriginal anti-patent CRP that liberally quotes others from the anti-patent camp.

    Credibility: Zero.

  36. 225

    Your reference might be picked up if it were in the least way appropriate. What you are attempting, doesn’t even fit.

    You should try some other angle.

  37. 224

    LOL – I say join in with an intelligent comment anytime you feel like making some minimal effort, my friend, or just keep on mumbling to yourself and laughing at yourself.

    Either way is fine with me.

  38. 223

    Good luck, clown prince. “Obscure reference”. LOL.

    What year were you born, 1984 or something?

  39. 221

    Citing Lemley is a first strike…

    Not being clear as to why you are linking to the article is a second.

  40. 220

    Les, the test remains as to whether you could add the thing you are claiming to the specification without adding new matter. If you could add to the specification "not D," then you could claim "not D."
     

  41. 219

    Les, Whether you could claim something depends on whether that something you claim is disclosed. If what you claim is not described in the specification, but implicit, and you could make explicit that which is implicit by an amendment to the specification without adding new matter, then you should be able to claim it.

    Are we in agreement?
     

  42. 218

    I do not understand the Davy Crockett explanation of the notion of an “intermediate generalisation”. So I will myself attempt one.

    Consider the independent claim, in the application as filed, as a balloon that defines the periphery of the protected technology. Consider the Best Mode of the Detailed Description as a diamond within that balloon. Consider the independent claim after a prosecution amendment, as a balloon that is smaller than the original balloon, one that is wholly within the original balloon, one that still encloses the same diamond.

    [[[[Up, down, right, left. in, out –
    where is a connect, where there is a disconnect, etc.. ]]]]

    ON<>which confers no exclusion(s) on prior art<>OFF
    link to writtendescription.blogspot.com

  43. 217

    Les,

    Ned is obviously not following you and insists on talking about what he wants to talk about (which only on the surface is intersecting with your points).

    See below Ned’s post at 8:03 and my pointing out how Ned is missing the boat at 7:28.

    Also see my posts at 8:45/8:47 commenting on your views.

  44. 216

    Might? No, No, I AM right. Admit it.

    Then, admit that if I am right in this particular case, the blanket rule that will be established by this decision is wrong and the through the looking glass logic applied by the EPO is also wrong.

    If inventors have to list everything not needed in there invention, applications will become very very long.

  45. 215

    No. Not new matter. D was never mentioned. Clearly the invention did not include D. How is that not clear to you?

  46. 214

    Thanks Ned, as my position has been steadfast and true, any closing of the gap in communication can be attributed to you moving closer to accepting what I have always posited.

    The credit for such belongs to you.

  47. 213

    I haven’t bothered with your obscure reference “said in reply.”

    You think yourself clever, but you are not – you are a bore – at best. You just don’t even come close to any sort of ‘becoming.’

    Whether or not the claim was found invalid has nothing to do with your arguments, which, quite in fact, are naked assertions and assume the conclusion to be proved. Rather than spend your time trying to think of clever references, spend it with basic legal logic.

    Try to think substantive points rather than ‘flash.’ I realize that that is a bit old-fashioned, but since you want to paint yourself as older and presumably (albeit quite questionably) mature, you might recognize what that means.

  48. 211

    P.S. Have you figured out why you are Winston, yet?

    Or are you still thrashing about encumbered by your deficient education?

  49. 210

    “Did you see my comments below at 8:45/8:47? They address ”

    Oh yes! I did! I did indeed! And they “address” precisely nothing.

    Look – you’re obviously of at least average intelligence. The problem you seem to have is, you don’t realize what that means.

    I don’t have any “naked assertions” nor am I “assuming the conclusion to be proved”. The claim was found invalid. Deal with it.

    Or don’t – if you prefer to continue living in your little fantasy world. That’s fine, too.

    But you’re fast becoming uninteresting, and I don’t even come around here all that much (I actually have real work to do – but apparently all your “major corporation” clients don’t care whether you do any work at all – what a gig! I’m quite envious of you…).

    Later, Gator.

  50. 209

    Les, you might be right because he did disclose a transfer function and that function did not have hysteresis.  So, in the example, one might legitimately say “no hysteresis.”  But if the transfer function was not disclosed, I would think the argument would have been harder.
     
     
     

  51. 206

    Max, the spec did not say“no hysteresis.”  It did show a transfer function and that clearly was identical regardless of starting conditions.   The claims were limited to a positive description of this transfer function rather than a negative description of a characteristic of the prior art.
     
     
     

  52. 205

    Ned,

    I do not think you realize just how close you are to the view that software is a patent elibile category with your post at 5:56.

    All you have to do is realize what you said and remember that machine components – like rivets, tires and bullets – are patent eligible (as a category) in and of themselves as manufactures.

  53. 204

    Anon, it depends on the context.  In a circuit having an input and output, it makes no difference whether the math of the circuit is itself circuitry, or a programmed computer.  The critical requirement is that the programmed computer is applied to a circuit having an input and output.
     
    In a phone having an input and a display, it similarly makes no difference if the stuff in the middle is all hardware or a programmed computer.

     
     
     

  54. 203

    (as no-name also points out hereabouts, there is no duty to perform a search in the first place).

    Thanks “said in reply.”

    Did you see my comments below at 8:45/8:47? They address what you are attempting to do here (use a single edged sword, and ASSume the very conclusion you want to have, that is “now having found”). You naked assertions of “pulling shenanigans” and “spurious” are likewise logically deficient as you are assuming the very conclusion to be proved (and quite disregarding any factual element of inherency – after all, the discussion is presuming that a new-matter rejection is not being made).

  55. 202

    It explains nothing (other than you delight in obscure references).

    It is a good day. Thanks.

  56. 201

    CANARD ALERT:

      For an American, used to wearing down his Examiner with an endless stream of continuing applications, that can be a scary sobering thought.

    MaxDrei, you need to understand reality here in the U.S. There is no such thing as ‘wearing down an examiner.’ Cut and paste and mere repetion of responses are too real and too easy a way out. Just as (maube you realize this) in Europe, the US has a no-new-matter rule and an application properly examined at the get-go has no ‘fear,’ or concern for being ‘worn-down.’ You completely misapply (and show ignorance of) the just-get-it-right admonition.

    That you deem yourself worthy to lecture me is hilarious given your oft repeated (what 80 reps?) of your apparent six months experience.

  57. 200

    ” If your position is correct, then all applications undergoing examination or patents undergoing reexamination are in peril because unforeseen prior art can turn up that cannot be circumvented without an exclusionary negative limitation.”

    Hello AC. I understand what you mean. No search will ever be perfect, and (as no-name also points out hereabouts, there is no duty to perform a search in the first place).

    However – turning exactly to what you write above, my thinking is that it is a good result if apps under examination right now are in peril due to unforeseen prior art.

    That is to say, if what is in their specifications does not define over the prior art, then they don’t deserve a patent. If they can’t define over the prior art, they do not have an invention. Period.

    And pulling shenanigans like throwing in a spurious negative limitation to circumvent the prior art should not entitle them to a patent on their (now having found to be a) non-invention.

  58. 199

    “…Winston? “

    Sheesh, what do they teach you kids in school today?

    The fact that you need to ask about that transparent reference explains an awful lot.

    Good day.

  59. 198

    Well said, Fly. It should have occurred to me that it would have been at oral proceedings that Les got his experience of the EPO. Doubtless in a meeting the day before the Hearing he and his EPO rep found the claim amendment to fix the problem, and presented it for the first time the next day, at orals.

    His attorney could do him a favour and draw his attention to the rule in the Implementing Regulations of the EPC that gives an Applicant just the one shot at amending in response to a communication from the Examining Division, with every attempt thereafter to introduce an amendment being subject to the “consent” of the Examining Division. For an American, used to wearing down his Examiner with an endless stream of continuing applications, that can be a scary sobering thought.

    In these threads, attorneys are very quick to chastise PTO Examiners for not getting it right first time. But when the tables are turned, and they themselves are required to “get it right first time”, they (in the immortal words of Corporal Jones of Dad’s Army) “….don’t like it up ’em.”

    link to en.wikipedia.org

  60. 197

    LOL – are you saying that you do not have an anti-patent agenda, Malcolm?

    (btw, anti-patent does include anti-business-method patent and anti-software patent).

    Come now, what did you say? What? Can’t hear you.

    LOL

  61. 196

    LOL, are you making an admission Malcolm?

    Seems like you want to, but just don’t have the nuts to actually do so outright.

    I can see why, given your incessant QQ ing about svckies beign the ‘worst thing evah,’ and how this would (yet again) show you engaging in that which you accuse others of.

    Truth hurts and it does in fact svck to be you.

    Give us all a f *cking break already” – that ‘us’ being the royal you and your svckies, right?

  62. 195

    Tr 0llb0y: Stop trying to over-read the message

    Pretty funny coming from the guy who habitually launches on people who he believes have “imputed” some nefarious aspect of the “anti-patent” agenda.

  63. 193

    for a year now you’ve been bragging

    Not. Even. Close. Bub.

    which compels people

    LOL – what compels is that your agenda and self-serving posts are thrown into the spotlight. As I posted, truth hurts and it svcks to be you.

    LOL – I see that you STILL have not actually answered the questions – and yes, we both know that they are you.

    So Malcolm, why the dissembling? Why the hypocrisy?

  64. 192

    hypocritically

    Just for grins, Tr 0llb0y, let’s assume that when I post elswewhere on the Internet I don’t use the same pseudonym that I use here. Let’s go even further and assume that sometimes, on some blogs, I login with a different pseudoynm.

    How in the f *ck does that make me a “hypocrite”? Are you that psychotically f *cked in the head that you think the only objection people had to your psycho behavior here where for years you posted repetitive insults twenty times a day using different names was that you didn’t always post under the same pseudonym? Really?

    Give us all a f *cking break already.

  65. 190

    you accuse me of 1ies and yet you have failed to produce any every single time I call you out on this. Once you attempted with misrepresentations which I shot down.

    Of course you did, Tr 0llb0y.

    Check the meds. I think you need to take two of those blue capsules, not just one.

  66. 189

    You are the one that torched your own pet theory

    Right, just like you torched your dad while he slept in the tent and told everyone that the fire was an “accident.” Sure, you caught him in bed with a woman who was not your mom but everyone knows your mom was drinking pretty heavily back then (she hit the bottle hard shortly after she had you).

    I do enjoy this game, Tr 0llb0y. It’s about as much fun as a creative person like me can have conversing with a s0ci0pathological l y i n g —h*le like you.

    I look forward to playing again. As always, I’ll wait for you to make the first move.

  67. 188

    “Go e ff yourself, Tr0llb0y.
    consistent with a s0ci0pathic a ssh0le
    f* cking t 0 0 l

    and yet MaxDrie insists I am the ‘hectoring’ one.

    Again, it’s a sign of your deep psychosis, Tr0 llb0y, that you ignore your own endless hectoring behavior which compels people to tell you to f *ck off.

    For cripesake, Tr 0llboy, for a year now you’ve been bragging about how you follow people around and hector them on other blogs because you think they are me. You even keep track of their names and wave the list around here every other day. What kind of a s *ck t 0 0 l does that? Get help.

  68. 187

    LOL – Well played (or not) Leopold.

    You forgot Calvinball face sp1kes, the phhhhft of arrows landing at your feet, and a number of other fine rhetorical representations that have been lavished on the readership here.

    (but at least you seem to have a sense of humor still about you)

  69. 186

    3. No idea why you get hit. See the EPO’s MPEP. It expressly teaches Examiners that pulling stuff out of the spec and putting it into the claim, to overcome novelty and obviousness attacks, is normal Applicant behaviour, completely legit.

    Except when its done late in the procedure, e.g., in the heat of an OP. The examiner had made a competent job of covering all the claims, but all of a sudden the applicant pulls that ugly rabbit out of his hat.

    The claim apparently avoids all the prior art cited to date, and technically overcomes all the outstanding objections (but just), so you can’t really refuse it off-hand, you however have a feel that the claim is still not allowable. The Guidelines say that the search report should anticipate possible amendments to the application, but can you really have a crystal ball that predicts with certainty that the applicant would suddenly try to go for THAT?

    The clock is ticking, you want to reach a decision after years of going nowhere, and two of your colleagues grudgingly take one half to one day for one of YOUR files, without “compensation” (those g*d d*mned production points). Do you start all over again, and resume the procedure in writing? Or scramble to find some formal deficiency in the claims?

    The Boards can at least wield R. 12.4 RPBA…

  70. 185

    You’re wasting your time, anon. You can lead the dead prisoners’ horses to the toasty bonfire, but you can’t make them drink or say thank you, no matter how much you complement them.

    C’est la vie!

  71. 184

    What is more and more ridiculous is your need to dwell on an obvious typo on a blog.

    As to answering ‘the question,’ my answer was provided – with the bonus of explaining why you are confused.

    Instead of snark, your reply would be more fitting to be a simple ‘thank you.’

  72. 183

    You mean “compliment” I suppose, anon. You do know what a complement is, I suppose?

    Whatever it is that you are directing at me, you tell me to take it “as given”. But that is exectly the point: I don’t know what you are giving.

    How about if I were to condescendingly tell you, in your own beloved words, to “try again”? Would you care to confirm the bit about the EPO’s approach to obviousness, that it is indeed something that encourages you to perform high quality drafting?

    See, I got that bit in yet again. thanks for giving me the opportunity. But are you ever going to answer it? Clearly not.

    Sigh. Readers, more and more ridiculous.

  73. 182

    Davy, here some reactions to your 1-5:

    1. Sorry.

    2. You cannot extend the sope of protection under the EPC. That is Article 123(3) but, note, it applies ONLY after the patent issues. No per se prohibition on introducing wider claims earlier than that, like, during prosecution, like, such as when you file a divisional. But you are at all times after your original filing date subject to the blanket prohibition on adding any disclosure that was not directly and unambiguously derivable by the PHOSITA reader of your WO publication.

    3. No idea why you get hit. See the EPO’s MPEP. It expressly teaches Examiners that pulling stuff out of the spec and putting it into the claim, to overcome novelty and obviousness attacks, is normal Applicant behaviour, completely legit.

    4. If you need to broaden your claims as filed, fire the attorney that wrote them. What was he playing at?

    5. The point about a balloon is the image of its periphery, infinitely small wall thickness, to serve the function of defining the periphery of an inventive CONCEPT. The idea of a diamonds is to denote a hard enabled pinpoint, occupying infinitesimal volume inside the balloon. I have trouble thinking of the concepts of balloons and diamonds as a useful machine or process.

  74. 181

    Take the complement as given.

    Stop trying to over-read the message (it is really not that complicated). The problem you are experiencing is that you are seeing the red cape of “anon said,” and immediately bracing for a smackdown. You reflexively are creating your own confusion, and further ‘context’ is simply unnecessary here.

  75. 179

    Les,

    Seems to beg the question: should inherency be a double edged sword?

    No one (I would dare presume) would argue that a later filed application should not be allowed on matter that is inherent in an earlier filed (and just for argument’s sake, let’s throw in Enalbed) application.

    So you have the one edge in preventing someone coming later grabbing what someone else openly decided to share (whether or not that sharing was done with full knowledge and intent).

    Whither the other edge, in giving credit (where credit is due)?

    I think it comes down to a question of the newly-beefed up possession notion including (or not) a type of mens rea of purposeful and explicit statement as opposed to possessing simply by having the larger item that inherently contains the explicitly unstated (but nonetheless present) inherent item.

    To me, fairness dictates that the blade be in fact double edged.

  76. 178

    Ned, I am not arguing that the rejection you describe will not happen. I am arguing that it SHOULD NOT HAPPEN.

    The circuit your application described did not use hysteresis, yet it got the overall job done. Anyone of ordinary skill would have understood that it didn’t use hysteresis.

    It is not new matter to later explicitly state –without hysteresis–, if without hysteresis is inherent or implied to one of ordinary skill in the art.

    The inventor wasn’t keeping it secret. Its right there in the diagrams. He just didn’t know it was worthy of explicit mention.

  77. 177

    It would be ungracious of me, not to acknowledge the “good post” part of anon’s 6 word post immediately above. So, ever gracious, I do so. Thanks anon.

    Except that, even when there are only 6 words in total, and three of them are “good post MaxDrei”, anon once again fails to express himself with any degree of clarity.

    Readers, what do you think? Does he mean:

    A: Except for the soapbox part, good post.

    or does he mean

    B: Good post, all of it, despite part of it unfortunately coming from on top of a soapbox.

    You see, because anon, ridiculously in the context of a blog on patent law where his speciality is endless picking of nits, is incapable of writing clear English, I have no idea whether anon is agreeing with me or diasagreeing with me, that EPO handling of obviousness encourages good drafting habits.

    But hey, here’s to anon, for giving me another chance to remind everybody, that EPO-PSA encourages good drafting habits that can keep your clients away from the Board and out of the courts. Thanks anon, once again.

  78. 176

    Malcolm posts:

      “Go e ff yourself, Tr0llb0y.
      consistent with a s0ci0pathic a ssh0le
      f* cking t 0 0 l

    and yet MaxDrie insists I am the ‘hectoring’ one.

    And this type of post simply slides by, while the Crybaby Veto results in the need to put a simple and non-expletive message in symbol form.

    @ta boy little circle club

    C’est La Vie

  79. 175

    in reality, there is no difference

    I wonder if Ned would recognize the same type of ‘no difference’ between software, firmware, and hardware…

  80. 174

    Ned, you examples here do not address the situation we are talking about.

    Quite in fact, it shows that you are not listening to what Les has presented. For example, your circle is not the same as the prior art ABCD. Your circle is ABC[_] where [_] can be anything from D to nothing at all.

    That is quite a different situation.

    So again, pay attention to what Les is saying.

  81. 172

    I like your story Ned and I see in it a chance to help Les see the logic of a requirement for what is variously called (depending on the jurisdiction) “written description” or “no new matter”.

    In your case, did the inventor report in the specification given to the PTO on the original filing date that his device has no hysteresis? In that case, adding “and no hysteresis” to the claim strikes me as being within 112 and adding no new matter.

    Suppose you can satisfy the PTO that “no hysteresis” is implicit in what is taught in the appln as filed. Well then in Europe it is not adding matter to add during prosecution “and no hysteresis”. In reality though, proving it is implicit is horribly hard to do.

    How would it be with 112?

    But now consider the case when the Inventor sees the PTO art and cries out “But that has hysteresis” Attorney replies “So what?” Inventor: Yeah but with mine there is none. Oh says attorney, why didn’t you tell me that when we filed the appln. Didn’t think it necesaary says inventor.

    The EPO’s Problem and Solution Approach encourages good drafting habits, as I have often urged on these pages. The no hysteresis story would have been in the original as filed if it had been written for the EPO.

  82. 171

    In the dissent in this case he does not do as you indicate.

    You are reading far too much (from somewhere) into this case and need to come back to reality.

  83. 170

    Anon, I know what Les is saying. What you don't seem to understand is what I am saying.

    Assume the following: a typewriter exists. It has a QWERTY keyboard.

    Later, I reinvent the typewriter. I file a patent describing the typewriter and claiming a typewriter. I make no mention of the claim or in the patent of what kind a keyboard that typewriter has.

    When the examiner cites the prior art typewriter that has a QWERTY keyboard, I should not be able to distinguish my claim to the typewriter over the prior art typewriter on the basis that a QWERTY keyboard is not necessary unless I can show in my specification that I invented a QWERTY-keyboard-free typewriter and that this is somehow inventive.

    A contrary approach would not make sense.

    Imagine a circle and call it a typewriter. The first inventor gets the entire circle. A second inventor should not be able to claim the same circle carving out a slice that embraces typewriters with QWERTY keyboards. He should only be able to obtain a patent on his own slice of non-QWERTY keyboards, but only if such is inventive and that invention was disclosed.

    This is why if one discloses a genus it is anticipated by a prior species within the genus. One cannot overcome such prior art by simply disclaiming the species.
     

  84. 169

    Ned, what part of “Yes I did. I didn’t mention D once” don’t you understand? If in your oddly paraphrased post at 6:47 the light bulb with molasses is in fact known, then a light bulb – with no mention of molasses at all is clearly inventive over the molasses version.

    Pay attention to what Les is saying.

  85. 168

    I did not know, so I could not disclose.

    You want credit for an invention

    Nice twist Leopold – you now have Les trying to claim an invention he did not know about – clearly he was saying something other than what you are replying to.

    Maybe we will get you to say “perfectly right anon” again – that never gets old.

  86. 167

    Another vacuous comment which shows his fantasies being projected (again).

    You only have yourself to blame, Malcolm. You are the one that torched your own pet theory, and then when given the chance to defend that theory with all the ‘expertise’ of your command of English as first language, you refused.

    We both know why – there is no defense for your pet theory. But maybe you can dissemble up another of your svckies and post again at PatentDocs…

    Not sure why you think this is fun for you, but hey, you might bend that way.

  87. 166

    Les, but in the example, the lightbulb is known, albeit with molasses. You can’t repatent in the lightbulb, even if you independently discovered it.

    If you truly discovered that the lightbulb works without molasses, you need to have that disclosed.

  88. 164

    another commenter

    LOL – that’s just it, as we both know it is NOT ‘another,’ as it is the same.

    It is you, Malcolm.

    So why the dissembling with the parade of svckies that you hypocritically QQ d incessantly about?

    What? I can’t hear you.

    LOL

  89. 163

    Again you accuse me of 1ies and yet you have failed to produce any every single time I call you out on this. Once you attempted with misrepresentations which I shot down. Every single other time you have merely accused and ran away.

    Tellingly, you would rather engage in expletives than answer the very simple question presented to you: the one that we both know shows you to be the site’s biggest hypocrite bar none.

    Your silence screams volumes, and as the saying goes, it svcks to be you.

  90. 162

    Malcolm torches his pet theory

    Right. Just like the day that your parole officer caught you by the kindergarten in your bathrobe taking pictures. You said that you were making a documentary about the kinds of bushes that grow near elementary schools. But the pictures in your camera’s memory “torched your theory.”

    Fun game, Tr 0llboy. I’m sure you’ll want to play it again, soon.

  91. 161

    1. Ouch!
    2. You cannot enlarge upon your balloon and diamond under EPO rules.
    3. If I try to narrow a claim (make my balloon smaller to escape the prior art) I get hit with objections based on the fact that the necessary limitation was not in the original set of claims. This is not presented as an intermediate generalization problem by the examiners I deal with.
    4. If I try to broaden the claim (make my balloon larger) (say by referring to the balloon as a housing or enclosure (that need not, for example, be resilient), I get hit with rejections based on intermediate generalization.
    5. To go with your example, if I literally disclosed a balloon enclosing a diamond, but claimed a housing holding a diamond, that would be impermissible intermediate generalization (I have generalized the disclosed balloon into a generic housing). If I mentioned that the balloon was made of latex in the spec, I might be able to add the latex limitation to the independent claim (but only if I already had it in a dependent claim?). That makes the balloon “smaller” If I did not mention latex in the spec, I cannot add it to the claims to make the balloon “smaller.” (In the US, this is a written description issue, in the EPO, I think it is referred to as going beyond the disclosure. As you phrase it, there is no announcement in the application as filed).
    This is from my experience. Hearing your outlook is helpful.

  92. 160

    Ned, – again with you and your accusations – please provide a specific example or STFU.

    Thanks

  93. 159

    I have no idea what you’re talking about

    Let’s start with this question from link to patentdocs.org (which you and your svckie “FriendS of the Court” never answered):

      (remember, Prof. Crouch has told you that 1ying is not allowed here – not that that has stopped you in the past)

    Have you ever posted comments to various blogs under the pen names of Malcolm Mooney, MM, Robert, Francis, Shrivan, Vivika M., or any such derivatives?

    LOL

  94. 158

    LOL – you are kicking up quite the dust cloud with your questions, Malcolm.

    It is too bad that sucd spin is useless, given that you have volunteered the admission that you know and understand the controlling law when it comes to the exceptions to the printed matter doctrine.

    Another Toasty Malcolm Moment.

  95. 157

    LOL – and yet Malcolm (and his svckies) glorify Prometheus and then FINALLY in his first attempt at providing a substantive post to square that decision with the precedent case most on point, Malcolm torches his pet theory.

    That bonfire is still roaring.

    Toasty.

  96. 156

    Yes I did. I didn’t mention D once.

    When Edison claimed the light bulb, he didn’t mention that it did not include molasses. Nevertheless, he invented the molasses free light bulb and everyone understood that.

  97. 155

    There is no requirement that you know you invented something for you to be the inventor.

    You need only to have invented it.

    There is no requirement that you be aware of the prior art to have invented something.

    You need only to have invented it.

    So, yes, I want credit for inventing A, B and C and not D, even though when I applied for a patent for A, B and C, I didn’t know A, B, C and D was known.

  98. 154

    TeamA,

    Claiming something not disclosed has long been considered “new matter” even though the specification has not been amended. What this means is that a claim to “new matter” violates 112(a) and its written description requirement.

    What Judge Rader advocates is so contrary to well established law of extreme vintage as to be remarkable. Either he is not aware of that law, or wants to change it.

    But it is in our statutes, e.g., Section 132 (35 USC) so that he cannot overrule prior case law and get his way even if he thinks it wrong.

  99. 153

    Les, I inherited a case one time where a circuit was claimed somewhat functionally. The examiner read the claims on prior art that did the same thing, but using additional circuit elements that used hysteresis to accomplish the desired effect. The applicant then tried to claim the same circuit functionally, but excluding hysteresis. The examiner rejected on new matter.

    In the end, the applicant claimed the circuit with a transfer function that was disclosed and this transfer function did not have hysteresis.

    Lesson: negative limitations to avoid prior art have to be disclosed. It is remarkable that we have this case now from the Federal Circuit, because the USPTO has been applying this rule for a very long time — the case I am references was prosecuted in the early ’90s.

  100. 152

    Are you really saying that the Supreme Court actually considered something you wrote when deciding Myriad?

    I think he’s saying the opinion is poorly reasoned, conclusory, internally contradictory, loose with the facts and the law, and stridently avoids addressing even the most obvious questions that any practitioner in the relevant art would be immediately compelled to ask. In short, it might as well have been written by Tr 0llb0y.

  101. 149

    I did not know, so I could not disclose.

    You want credit for an invention that you didn’t know you invented until somebody told you about the prior art, well after you filed your application? Surely 35 USC 112(b) means something?

  102. 148

    Do you need me to find and print the quote?

    I have no idea what you’re talking about, Tr 0llboy, but go right ahead if you feel like it. Please get me a beer, too, while you’re at it.

    Reminds me: have you asked Kevin about using mailroom staff to screen registered mail sent to attorneys and throw out the mail with prior art? I can hardly wait to find out whether he agrees with you or not.

  103. 147

    LOL – your English as a second language gambit has gone stale given how the Supreme Court in Myriad perfectly understood me…

    You keep saying that. Are you really saying that the Supreme Court actually considered something you wrote when deciding Myriad?

  104. 146

    arguing… Printed Matter Doctrine …?

    Not at all

    Very much so, Tr0 llb0y. Is new information eligible for patenting? No, it’s not. (Please let us all know if you disagree). So when a claim recites something old — say, an old kit — with new information printed on the box, what happens under 103?

    Describe the analysis for us, Tr0llb0y. And explain to us the rationale behind that analysis. Explain to use why dissection of claims into eligible and ineligible subject matter is permitted in a 103 analysis. Go ahead.

  105. 145

    I did not know, so I could not disclose. Clearly, this case shows there is a problem, because of some unclear thinking on someones part. But it should not be a problem.

  106. 144

    Absolutely not. Consider A, B and C as compared to A, B and C and NOT D.

    A, B, and C encompasses A, B, C and D.

    A, B and C and NOT D does not encompass A, B, C and D.
    Therefore, A, B and C and NOT D is narrower than A, B and C.

  107. 143

    Do you need me to find and print the quote?

    (it’s in very plain English, so you should have understood it)

  108. 140

    Les, I also think that ABC is different from ABCD.  But I must admit that you might have a problem if you did not disclose ABCD as prior art and the unexpected nature of the fact that ABC alone works. 

     
     

  109. 139

    Tr 0llb0y: “And indeed 103 continues to do the job of 101”

    LOL – Nope – 9-0, baby.

    Too funny. Now Tr 0llb0y is arguing that the Supreme Court overturned the Federal Circuit’s so-called “Printed Matter” doctrine.

  110. 138

    I have read a lot of the case law on this, and come close to your conclusion. I have not yet figured out why some examiners use one, and other examiners use another.
    If they are one and the same, why have two separate bodies of case law addressing each?

  111. 137

    You might, but there are reasons not to. Furthermore, its not clear to me that that would remove ABCD as relevant prior art as it includes ABC. ABC and not D is a different claim that essentially ABC.

  112. 134

    I did not say there is never a role for 112.

    I said 112 is not appropriately applied HERE against the claims. Moreover, it is not appropriately applied against the claims in the scenario I have now outlined twice.

  113. 133

    And indeed 103 continues to do the job of 101

    LOL – Nope – 9-0, baby.

    Are you still trying to push your pet theory that you burnt to a crisp (with your first attemtp at a substantive squaring of Prometheus with the unchanged most on case precedent) and refused to defend with your ‘vaunted’ English as a first langauge skill?

    And are you still attempting to dissemble with your svckpuppets at PatentDocs, even after Dr. Noonan (very politely) and very clearly told you that you were wrong with your ‘theory’ the last time you trotted it out under the svckie “FriendS of the Court?”

    The word for you (still): hypocrite.

  114. 132

    “there is a respectable view that 102 and 103 can do the job of 101”

    And indeed 103 continues to do the job of 101 when the only novel feature of the claim is ineligible information (e.g., new instructions printed on an otherwise old kit). For some reason, even the patent t–b-ggers don’t complain about “dissection” in that instance, in spite of the fact that (it is believed) 103 expressly forbids it. Try to get Gene Quinn or his disciples to talk about this, though, and you’ll just get shown the door and insulted.

  115. 129

    there is a respectable view that 102 and 103 can do the job of 101

    Not after Prometheus.

    How did you miss that 9-0 Dance a jig baby decision?

  116. 128

    Les, there is a respectable view that 102 and 103 can do the job of 101. Strikes me you have followed that debate and taken home the notion that 102 and 103 are the only tools that are needed. There is no way 102 and 103 can perform the necessary function that 112 performs. Think about what that function might be. Do you see that?

  117. 127

    it must gall you to be shown to be wrong so often by me.

    ROTFLMAO. The Insulting Fortune Cookie rides again!!

    Are you “devastated”, MD?

  118. 126

    this decision reflects S.O.P at the EPO. Its a bizarre, through the looking glass world over there.

    This is from the guy who believes that purely mental processes should be eligible for patenting.

    Or did you change your mind about that without telling us?

  119. 125

    “Those aren’t the facts of this case. The prior art included plenty of “hints” that acriflavine-free seals would work to prevent infection.”

    If that’s the case, the claims should be rejected under 102 or 103, not some nonsense about written description.

    Bad decisions have ramifications. This one has bad ramifications with regard to the scenario I outlined.

    Whats worse is, this decision reflects S.O.P at the EPO. Its a bizarre, through the looking glass world over there.

  120. 124

    If your team really is full of people who are that instinctively afraid of new things, perhaps the should move to Afghanistan and join the Taliban where they never want anything to progress past where they were when Muhammad received the Koran.

    Another option would be to go back to undergraduate school and take a few science courses, instead of the political science or gender studies.

  121. 123

    Stick to the scenario I outlined. The inventor discovered that ABC alone works, described and claimed same but did not know that ABCD was prior art and could therefore not claim or described ABC and not D. Since the claimed and described combination did not include D, it is not and should not be considered new matter to later specify not D. One of ordinary skill in reading comprehension would have understood that the inventor had ABC and not D in his/her possession at the time of the invention since D was not mentioned as a component.

  122. 122

    ..and if I am ‘such an embarrassment,’ it must gall you to be shown to be wrong so often by me.

    No wonder you are so bitter.

  123. 121

    You can repeat all you want MaxDrei – you major in minors and get the important stuff wrong, all the while wanting to see perfection where such is neither necessary nor required.

    Nice tree in the wrong forest.

  124. 120

    See, readers, anon puts “wagging my finger” in quotation marks even though what I wrote was “raises his finger”. I wonder, does anon suppose the two expressions to mean the same? Does anon then “wag his finger” when he wants his bid at auction accepted? anon’s comprehension and command of the English language continues to be alarmingly deficient.

    anon, I repeat, for as long as you continue, you are an embarrassment to yourself.

  125. 119

    with every posting he makes himself ever more ridiculous.

    Thanks MaxDrei, coming from you and seeing how often you are wrong on these threads, that’s a compliment.

    Perhaps if you did more than just soapbox your particular views or had more than (eighty iterations of) six months of experience, you would not be so brittle when I point out your flaws in your lovely soapbox. We both know the real reason you attempt the Crybaby’s Veto – but do keep attempting to paint the picture that I am ‘wagging my finger’ – as your own past painting of you “just here to learn” all the more stands out as a naked 1ie.

  126. 118

    So, Mr Crockett, I guess you are not a patent attorney but thanks for reading these threads. Most gratifying for me.

    Because you don’t “get” my notion of a balloon and a diamond, I will enlarge on it. After you have read below, you might like to go back and read my earlier post again and perhaps this time it will make more sense to you.

    Your Claim is a Definition of the subject matter of the application, the invention that you are seeking to protect. What is inside the balloon is protected, what is outside is not. A Claim defines the periphery of the protected area. In Europe, after issue, you cannot inflate your issued balloon still further. See Art 123(3) EPC. That protects the public from nasty surprises.

    Your diamond is the pin-point, within the balloon, of the embodiment shown in your patent drawings. Often within the balloon is more than one diamond but they are all different pinpoints within the balloon.

    You see the point? In the specification you use individual pinpoint examples to show readers how to enable the invention that you have claimed, anywhere inside your balloon.

    The dependent claims of your application as filed represent stepwise deflation of the balloon, huddling ever closer to your diamonds, to get away from the all-surrounding prior art to the extent that turns out (during examination of patentability) to be necessary. If your over-optimistically inflated original balloon is squeezed by the art, you deflate till you have found a balloon size and shape that is separated by a gap that cannot obviously be jumped, from a jumping off point within the prior art.

    But at the EPO you can’t deflate down to a balloon size and shape of which there was no announcement in the application as filed.

    anon puts his trust at the EPO in a Doctrine of US patent law, namely that of “Claim Differentiation”. Well, duh, of course, even outside the USA, one construes a patent application as a coherent whole, independent and dependent claims, summary, prior art background, detailed description and drawings, using a mind willing to understand what is being taught. That much is so banal and trite that in Europe it never got elevated to the status of a Doctrine with a name all of its own.

    As usual, anon trots out a word we all know, raises his finger and admonishes us that we all should note it well, without bothering to explain further because we should know it already and if by any Chance we don’t well then we can easily look it up. I suppose then he pats himself on the back and tells himself how sharp he is. with every posting he makes himself ever more ridiculous.

  127. 117

    just one of your many, many reading comprehension issues

    LOL – your English as a second language gambit has gone stale given how the Supreme Court in Myriad perfectly understood me, while you, Keeping It Real, Robert, Francis, Shrivan, Vivika M. and Friend(S of the Court continued your dissembling ways at PatentDocs.

    The one full of ‘s*it’ is you as your nose continues to be rubbed into your own CRP. It just happens so often that you can no longer smell it – but you really should look in the mirror – that’s not chocolate sauce all over your face.

  128. 116

    Thanks L.B.Z.,

    A response that does not fly off the handle like others (of the little circle club).

    My boilerplate suggestion runs along the lines of your 5:09 post – see my 5:44 response. One thought to keep in mind is claim differentiation – claims cover a spectrum, and the interchangeability is in line with that claimed spectrum (or allows amendments as needed).

  129. 115

    this product may do something to consumer’s bodies and may not be healthy for use.

    Maybe they should put a notice on the package: “Teat plug may present choking hazard. Please remember to remove teat plug before milking.”

  130. 114

    “Due to fear that after a couple of years this product may do something to consumer’s bodies and may not be healthy for use. ”

    A couple of the team members are mentally challenged aren’t they? The whole point of the invention was to get rid of the things that may not be healthy for consumers.

  131. 113

    I must confess that, leaving aside any other consideration, I also do not understand what is the problem with continuous vs discrete claim and EP practice. I must confess that I don’t play with ranges that often, but the same principles that I mentioned above apply there as well. I can try to engage the question if more details are provided.

    I am not taking your suggestion of a standard clause to append to features as a personal attack, but as far as I have understood it I don’t think it is a good suggestion in view of how the examination of the EPC requirement of added subject-matter is carried out.

    First of all, using a wording such as “this feature can be essential when matched with other features in combinations not explicitly detailed, but as understood by a person having ordinary skill with the teachings of this application” or similar practically earmarks the feature as essential, whereas in order to avoid the objection of intermediate generalization it is necessary to argue precisely the opposite, i.e. that the features that are left out are not essential.

    Secondly, I don’t know what to make of your claim that the wording “worked” in EPO practice: if you did not get the objection raised during prosecution, it’s more likely that you made amendments in a sensible way than the effect of that particular sentence.
    The EPO has published Guidelines with examples regarding this topic (link to epo.org), and IMHO is not so easy to have the objection triggered as long as one keeps in mind the technical teaching of the application when amending.

    Finally, the test used for intermediate generalization (which is mainly the essentiality test that I mentioned above) relies only to a certain extent on what the description says about a feature and for passing that part of the test, it is enough that the omitted features are not identified as essential: no special statement is needed.

  132. 112

    ‘because Malcolm says so’ is evident in every vacuous post of yours

    We all know that you believe this, Tr0llb0y. But that’s just one of your many, many reading comprehension issues.

    the 0.2% only coming within the last week or so

    You’re so full of s*it you could fertilize the entire planet. Of course, your meds would trickle into the water supply and feminize the fish population which might not be the greatest thing.

  133. 110

    The only drafting advice I can give to avoid this kind of problems is to try and make the embodiment of the invention modular…

    Sage advice. Often easier done with certain types of inventions that are ‘out of favor’ with certain posters.

  134. 109

    The issue of intermediate generalization and essentiality of omitted features are not separate; they are one and the same, and stem from the same legal basis, i.e. the proibition of adding subject – matter (A 123(2) EPC). Way before the term “intermediate genealizaton” became popular, it was held (T1067/97) that it is normally not admissible to extract isolated features from a set of features which had originally been disclosed in combination for an embodiment, unless there was no clearly recognisable functional or structural relationship among said features.

    In other words, when amending a claim using the description it is in principle necessary necessary to take a whole disclosed embodiment alltogether; features disclosed in combination may be omitted if they can be proved unnecessary to the invention, i.e. if the conditions of the three-step “essentiality test”, which I tried to summarize above, are fulfilled. This test was developed in T331/87 in the context of omitting features when amending and has since become part of the EPO Guidelines, so it’s going to be applied pretty consistently by examiners.

    Boilerplate statements can only help during phase i) of the test, but since the requirement is just that “the feature is not explained as essential in the original disclosure”, as long as the description does not go out of its way celebrating the advantages of the omitted feature, it’s not a big hurdle to overcome anyway. I’d say on the other hand that most amendments are objected as intermediate generalizations for failing step ii) or iii). Dennis says in the OP that WD in the US is often regarded as a technicality; in European practice, it is very much a substantive issue, so one must be prepared to discuss technical issues if the objection arises.

    The only drafting advice I can give to avoid this kind of problems is to try and make the embodiment of the invention modular by making clear the functional relationships between the generic features and the more specific ones appearing in the embodiments.

  135. 107

    LOL – You might consider how you appear Malcolm, and just how much the ‘because Malcolm says so’ is evident in every vacuous post of yours (which is to say, about 99.8% of them – with the 0.2% only coming within the last week or so – and definitely NOT including any of the QQ from the nutless Myriad vomiting).

    The word for you (stil): hypocrite.

  136. 106

    Due to fear that after a couple of years this product may do something to consumer’s bodies and may not be healthy for use

    I really hope business law has better logic…

  137. 105

    they construe claims in the abstract

    I have no idea what you mean by this Ned. Do you have a case in mind as an example?

  138. 104

    Plurality: Is there a particular reason they don’t just put something like “without an antiinfective agent” in the claim somewhere

    In fact, that’s the independent claim from which the “acriflavene-free” claim depends.

    18 (allowed) “A prophylactic method of controlling infection in a mammary gland by a mastitis-causing organism, comprising sealing a teat canal of a mammary gland with a seal formulation so as to provide a physical barrier in the teat canal, wherein the seal formulation is free of an agent that is antiinfective.”

    This claim is obvious j–k for the reasons provided elsewhere in this thread. Hopefully the USPTO will do the right thing and tank this claim, too. I’m not holding my breath, though.

  139. 103

    We are part of a Business Law course and have been assigned to find and active blawg pertaining to patent law. We found this blawg interesting due to the contention between respondents and the strong opinions being shared. After reviewing, the most contentious source for the comments is in the last section of the article, “the usual catchphrase of “possession” is not the correct way to think about written description. In particular, according to Rader, possession makes no sense here where the focus is on a negative limitation. He writes that “the Board places the patentee into a Catch-22: to satisfy written description, the patentee must show possession of something it specifically claims it does not possess.” Here, Judge Rader suggested an important element in this case is the fact that Acriflavine is a “well-known species of antiinfective that [has] been used in teat seals to treat bovine mastitis for over 75 years.” Along these lines, it makes sense that you could later claim a “wheat-free” bread invention based upon a disclosed bread recipe that includes a list of ingredients for making the bread and where wheat is missing from the ingredient list” (Crouch, 2013, para 6).

    This section stirred people up because of the accusation of Judge Rader placing the patentee into a Catch-22 while commentators claim that the patentee himself did not conduct the proper research prior to filing the patent and therefore was left with an unsatisfying court ruling due to his own negligence, or negative limitation factor of leaving out an ingredient from the list and later wanting to include that in the list claiming that they previously did not state it was “acriflavine-free”.

    A few team members agreed this patent should be rejected. Due to fear that after a couple of years this product may do something to consumer’s bodies and may not be healthy for use.

  140. 101

    This decision … is clearly unfair.

    If I invent combination A, B and C and am not aware that A, B, C and D exists and the prior art (of which I am unaware) includes no hint that A, B and C would work

    Those aren’t the facts of this case. The prior art included plenty of “hints” that acriflavine-free seals would work to prevent infection.

    For what it’s worth, claims 1 and 2 are also invalid in view of the reams of prior art that teach (1) the use of physical barriers for reducing the risk of infection and (2) the desire of the public to reduce the exposure of domesticated animals to antibiotics and hormones wherever such reduction can be achieved. The USPTO needs to get its head out of its bxtt.

  141. 100

    Les, if the invention IS A + B + C, sans D, I hope that invention is described. If so, there should be no problem if it is claimed.

    If LATER, after filing, and perhaps in a continuation or reissue even, one finds that D is not essential, claiming A + B + C, sans D, is something not disclosed and therefor is new matter.

    I have no problem with this.

  142. 99

    Well, anon, the Feds have noted that they often get claim construction appeals where a claim term (added after filing) is not used in the specification. It gets dicier when the term at issue has no specific industry meaning.

    During prosecution, it would be nice if the examiner would actually say the claim term is not used in the specification and its meaning is therefor unclear, citing 112, p. 2. But, post issue, I think the Feds attempt construction and do so, I think, by determining what in the spec. is associated with the claim term and then construing the term accordingly. To simply construe the term without this step would allow people to claim anything regardless of the specification, which is pure nonsense.

    But, when you think of it, this is what Rader and Linn actually do — they construe claims in the abstract and do not limit the claims to the disclosure in any meaningful sense.

  143. 98

    This decision requires that the inventor be aware of the whole of the prior art at the time of the application. This is clearly unfair.

    If I invent combination A, B and C and am not aware that A, B, C and D exists and the prior art (of which I am unaware) includes no hint that A, B and C would work and so always includes D How am I to know to specifically indicate the D is not included in my invention? What I discovered is that combination A, B and C works. Impurities, are generally acceptable, but for sure all that is required is A, B and C. Sure, I don’t want people to get around my claim by adding inert agents, so I use the word comprising. If the examiner then shows me that A, B, C and D is known, fairness dictates that I be able to disclaim formulations including D by specifying D is not included in my invention. Clearly, I taught that A, B and C works. That clearly implies that D is not needed, even if I didn’t know D even existed.

    If one has to list everything NOT included in ones invention, patent applications will get quite long.

  144. 97

    that’s about all the information anyone is going to get out of you.

    LOL. Out of the tens of thousands of mewling QQ words from you post-Myriad, the information from you contained in three little words STILL has not been forhcoming.

    Yet more typical accuse-others-of-that-which-you-do major Malcolm B$.

    Gee, the surprise if it all

    /off sarcasm.

  145. 96

    Certainly those that have been found to infringe claims filed 10 years into prosecution, generalized to the point where it is clear that the claimed invention is what the patent attorney devised in light of a new device, and clearly was not contemplated by the inventors, would agree. But I think that is unusual, compared to the inventor with an application well-drafted for US prosecution who can’t get a meaningful claim in Europe. In the US, we need a rule to prevent over-generalization. In Europe, I think they need to soften the rule and allow reasonable generalization. For now, we just have to know where the traps are and address them as well as we can.

  146. 95

    Maybe Malcolm thinks the actual point is that water is still wet

    Maybe. Or maybe I’m just laughing at your typical self-serving b.s.

    “You’re missing the actual point.” Of course they are, Tr0 llb0y. Because you said so. That’s all anyone needs to know.

    In any event, that’s about all the information anyone is going to get out of you. Of course, if you “actually read all my comments” “in tandem” then you would see that they “fall to the concurrence” “in a manner” that “tends to persuade” that you are being “kicked off the soapbox that you stand upon.” Or something like that. Ask the aliens in your fillings to explain it to you.

  147. 94

    Yes, the disclaimers necessary to avoid the intermediate generalization trap won’t necessary help with the essential elements issue. Aren’t there some positive things you can include in the spec to avoid the essential elements trap? Your list seems to rely on implications. Would one in the art understand that you could omit the white sugar in favor of brown sugar and still get a good cookie? You would be left arguing this point with an examiner unless your spec says “and by the way, any dope would use all brown sugar if he ran out of white sugar, so I don’t intend to be limited by the best mode I just described.”
    But I don’t know if the disclaimers can be reduced to boilerplate, except in US practice of the last paragraph which the EPO makes you delete.

  148. 93

    The truth is my comment is accurate and on point.

    That you feel insulted or attribute any s0ci0pathy is a “you” problem.

  149. 92

    The heartache for US applicants pursuing EP patents is that nobody cares how big the balloon is, and it is obvious to the applicant, any bone-headed artisan, the examiner and the board that nobody cares how big the balloon is, and the intermediate generalization rule just seems like a mean-spirited game. You are screwed for merely mentioning the size of the balloon. Whereas in US practice, you could be screwed when a competitor uses your device as a guide to broadening his claims in a manner totally unrecognized by the inventors until they saw your otherwise non-infringing device.

    I think most would agree that, as is the case in the EPO, it is better that the patent applicant experiences the “heartache” you refer to rather than the public at large.

  150. 91

    Tr0llb0y: the posts I make tend to kick out the soapbox you love to stand upon

    Because Tr0llb0y says so.

    What an unbelievable d*ck.

  151. 90

    Tr0llb0y: Malcolm (who is by far the most offensive person on the boards)

    Go e ff yourself, Tr0llb0y.

    Th epoint about Malcolm, is also accurate: he has posted in a manner that perpetuates a fallacy that the claims must be self-enabling.

    “In a manner that perpetuates a fallacy”? LOL.

    Tr0llb0y posts in a manner consistent with a s0ci0pathic a ssh0le who can’t help but pick fights about inane cr*p that even Tr0llb0y can’t explain to anyone. And then Tr0llb0y pretends that he’s the victim and everybody else is “sensitive” or just plain st pid.

    What a f* cking t 0 0 l.

  152. 89

    Like I said, intermediate generalization is strange to US practitioners. I may be confused in understanding your balloon/diamond example. Intermediate generalization, in the instances when I have had to address it, would have been best analogized to going from the balloon as described in the spec to a slightly larger balloon. If you disclosed a balloon of 1 meter diameter, you might be foreclosed from claiming a balloon, without specifying the diameter, or you might be foreclosed from claiming an enclosure or housing. Your example, where you go from the original balloon to a smaller balloon, seems to be an instance of lack of written description for the smaller balloon, as it is merely undisclosed. From the EP case law, it appears that the concepts are closely related, and it is not always clear why one concept is applied over the other.
    The heartache for US applicants pursuing EP patents is that nobody cares how big the balloon is, and it is obvious to the applicant, any bone-headed artisan, the examiner and the board that nobody cares how big the balloon is, and the intermediate generalization rule just seems like a mean-spirited game. You are screwed for merely mentioning the size of the balloon. Whereas in US practice, you could be screwed when a competitor uses your device as a guide to broadening his claims in a manner totally unrecognized by the inventors until they saw your otherwise non-infringing device.

  153. 88

    Intermediate generalization does not lead to a requirement that the claims themselves be enabling. However, as applied, the essential elements rule in the EPO comes close to requiring that a claim be enabling. At least, you might be required to recite more than in the US. In my cookie example, a US claim to a cookie flavored with cumin, oregano and chili powder would be allowable, but in the EP I might have to recite the remainder of the recipe as essential elements. This to avoid the evil of granting a patent that might cover oatmeal raisin cookies when all I mentioned was chocolate chip cookies.

  154. 87

    truth hurts, doesn’t it Malcolm?

    Not sure what the “truth” has to with your comment about my “rants” and this “common fallacy” you attribute to me.

    The “truth” is that you’re a s0ci0pathic dlpshlt who can’t help but insult anyone and everyone whom you disagree with, and the evidence for that is right here in this thread.

    [shrugs]

  155. 85

    Not used in the spec? Just to clarify then, this is a term introduced in an amendment, right?

    In that case, ‘it depends.’

    If the term is in a means plus or step plus format, of course 112(f) would apply – and may not apply successfully, because…

    …since absent from the specification, the term would need to be construed according to standard dictionary meaning, as understood by the art, in light of the specification. If this meaning does not find support in the specification, then the 112(f) analysis would indicate that this is added matter.

    US law does not require ‘dixitque in verbis.’

    (note: I have seen this less-than-stellar incident in work we have adopted from other firms, and I was told that this can occur when different people draft the different parts of the applicaiton, and a different firm prosecutes the application – most definitely NOT a Best in Class approach)

  156. 84

    Like I said, intermediate generalization is strange to US practitioners. I may be confused in understanding your balloon/diamond example. Intermediate generalization, in the instances when I have had to address it, would have been best analogized to going from the balloon as described in the spec to a slightly larger balloon. If you disclosed a balloon of 1 meter diameter, you might be foreclosed from claiming a balloon, without specifying the diameter, or you might be foreclosed from claiming an enclosure or housing. Your example, where you go from the original balloon to a smaller balloon, seems to be an instance of lack of written description for the smaller balloon, as it is merely undisclosed. From the EP case law, it appears that the concepts are closely related, and it is not always clear why one concept is applied over the other.
    The heartache for US applicants pursuing EP patents is that nobody cares how big the balloon is, and it is obvious to the applicant, any bone-headed artisan, the examiner and the board that nobody cares how big the balloon is, and the intermediate generalization rule just seems like a mean-spirited game. You are screwed for merely mentioning the size of the balloon.

  157. 83

    How does one construe in court a claim term that has no industry accepted meaning and is not used in the specification?

    1. Find the structure, etc., associated with it in the spec. and construe it to cover that like 112(f)?

    2. Construe the term as broadly as the ordinary meaning of the words in the term?

  158. 80

    Ahhh, the red cape of ‘anon said’ is seen and the Leopold bull comes a charging…

    Pretty pom-poms today Leopold. How about you post something that actually contributes to the thread?

  159. 79

    MaxDrei,

    What exactly in my 7:06 response do you find ‘hectoring?’

    You are far too sensitive to think that I am lecturing LBZ when all I am in fact doing is presenting another viewpoint (and one that is in fact accurate).

    And you are noticeably quiet when Malcolm (who is by far the most offensive person on the boards) goes about his business. Th epoint about Malcolm, is also accurate: he has posted in a manner that perpetuates a fallacy that the claims must be self-enabling. You turn a blind eye to his rhetoric – why?

    As to the REAL reason you do not wish to engageg me, we both know your attempts at a Crybaby veto and we both know that the posts I make tend to kick out the soapbox you love to stand upon.

  160. 76

    LOL- talk about lecturing from one who is an embarassment….

    Pot, meet kettle.

    (and it so happens that the comment I made has worked in EPO practice – you protest when you should not)

  161. 75

    IBP there is plenty of EPO caselaw that looks at punctuate ranges and plenty more that looks at stepless ranges. I see no problem. I suppose your difficulty arises from domestic US law and how it might be reproduced in Europe. I suggest you forget domestic US law before you engage with EPC law. That might help.

  162. 74

    anon, deliberately I’m not going to answer you.

    Just so as you know why, this is because I never understand your questions, because any attempt to guess what reply will serve has the distasteful consequence that it prompts you to write ever more nit-picking and hectoring gibberish, and because the last thing I want is to encourage you to hang around here.

    In writing stuff like:

    “It’s a common fallacy of Malcolm to want to have…”

    you do violence to the English language and expose youself as incompetent in your use of it.

    LBZ was telling us something about the EPO. You jump in and lecture LBZ on when boilerplate language “in fact” does “cut it” there. You present yourself as his teacher on the facts of EPO practice, which is ridiculous and embarrassing because LBZ knows a lot about EPO practice and you sir know f–k all about it.

    Either you set out in these threads deliberately to offend people, or you don’t even realise when you are insulting them. For as long as you continue, you will continue to be an embarrassment to yourself.

  163. 73

    anon–

    Good point regarding continuous vs discrete and EPO practice. I’m not an EPO expert and have wondered the same as you.

  164. 72

    Maybe Malcolm thinks the actual point is that water is still wet…

    …or that he can be a pr1ck while accusing others of the same…

  165. 70

    the very post here by Prof. Crouch fails

    You mean that you disagree with something Professor Crouch said? What did he say that you disagree with, Tr0llb0y?

    the indications of kitchen sinks and toenail clippings point this out.

    Uh … what?

  166. 69

    Tr0llb0y: it was you Malcolm at 2:59 and at 11:05 seem to be shocked that ‘water is wet.’

    “Shocked”? No, Tr0llb0y. Just pointing out something that is counter-intuitive. Most times when patent attorneys speak of a genus and a species, the species is narrower. Negative limitations are an exception and an important one to keep in mind in some cases.

  167. 67

    He may have been following Malcolm’s rants too closely. It’s a common fallacy of Malcolm to want to have the claims to be enabling in and of themselves.

    Wow, you made it almost two days without reverting into your usual pr*ck self, Tr0llb0y.

  168. 64

    Ned, my comments were primarily about mechanical cases, and the genus/species rules you allude to are from chemical cases.

    That may account for the difference.

  169. 63

    Further to your point, AC, is that a prior art search is not a requirement at all.

    Of course, it is NOT a best practice to write an application without a prior art search (and the better the search, the better the app written, typically). In fact, I have had major clients (large multi-nationals) specifically request that NO prior art search be done. Other clients (on the small size end) don’t want a prior art search because the ‘patent pending’ designation at a minimum cost was a driver at the time. What it comes down to is that the patent system has a spectrum of valuable uses, and not everyone fits the ‘ideal’ super-pre-searched and written-with-best-prior-art-known mode. The best you can do is advise the client of the pros and cons, the risks and the benefits. The decision as to how to proceed is – as usual – the clients’.

  170. 62

    “”A prophylactic method of controlling infection in a mammary gland by a mastitis-causing organism, comprising sealing a teat canal of a mammary gland with a seal formulation so as to provide a physical barrier in the teat canal, wherein the seal formulation is free of an agent that is antiinfective.””

    I thought that was what the thing MM cited from ages back did.

  171. 61

    …Winston?

    Hey, sorry if you cannot hack my being right (and I love how you merely conclude that you belong to the ‘everybody’ group – mighty generous of yourself).

  172. 58

    I disagree with your “too bad”… “do a better search” comment.

    The law only requires that the specification disclose what the inventor invented in order to confirm that he knew what he claims to know about his invention as of his filing date. If your position is correct, then when he files he must also have knowledge of the prior art, so that he can include whatever is needed to exclude the prior art. That is just not practical. No pre-filing search is ever exhaustive, so all patents are subject to the “do a better search” quip. If your position is correct, then all applications undergoing examination or patents undergoing reexamination are in peril because unforeseen prior art can turn up that cannot be circumvented without an exclusionary negative limitation.

    Most negative limitations narrow the scope of the claim — the subject matter embraced by the claim is reduce by the negative limitation, and those kinds of negative limitations should be allowed. The Bimeda situation was the unusual exception of a negative limitation having a broadening effect.

  173. 57

    Ah, now I get it.

    Everyone else is insane and you’re a majority of one, Winston.

    That explains a lot.

  174. 56

    MaxDrei, How do you distinguish the continuous/discrete claim?

    That is, a claim with a range of values akin to a balloon that covers the range of being filled from X to letting air out to Y. Note that the diamond does not have to be at the bottom of the range.

    Then what about the announcement of a discrete set of possibilities (a la Novozymes v. DuPont Nutrition Biosciences?) How is the announcement of the range any different in functioning from the announcement of a set of discrete possibilities?

    It appears that mere announcement is not enough.

  175. 55

    Whatever gave you that curious idea

    He may have been following Malcolm’s rants too closely. It’s a common fallacy of Malcolm to want to have the claims to be enabling in and of themselves.

  176. 54

    Putting some boilerplate statement next to every other feature, as Davy Crockett suggests, does not cut it.

    That depends on the boilerplate.

    If the boilerplate is merely to the effect that “this is not essential – in combination as particularly stated – then perhaps. But better boilerplate such as “this feature can be essential when matched with other features in combinations not explicitly detailed, but as understood by a person having ordinary skill with the teachings of this application” (or such) does in fact cut it.

  177. 52

    said in reply,

    CJ Rader’s argument must be taken in context. 1) and 2) at 7:28 work in tandem. That is why the very post here by Prof. Crouch fails, and the indications of kitchen sinks and toenail clippings point this out.

  178. 51

    The so-called golden rule for any amendment in EP practice is that the amendment must be directly and unambiguously derivable from the application as filed.

    Starting from this premise, plucking out features from the description without much regard of their context can trigger the objection known as “intermediate generalization”. This happens when a number of specific embodiments are disclosed in the specification and a feature is taken from one of these embodiments without the other features it is disclosed in combination with. This means that the claim now is directed to that embodiment, but in a form which is broader than the one originally disclosed.

    As an exception to his general rule, it is possible to claim an embodiment leaving out some features if these are “inessential”, which means that i) the description must not disclose the feature left out as essential, ii) that the skilled person must objectively understand that the feature left out does not contribute to the solution of the technical problem the application sets out to solve and iii) that omitting the feature does not require modification of any other feature. Putting some boilerplate statement next to every other feature, as Davy Crockett suggests, does not cut it.

    As far as disclaimers (i.e. features which say what is NOT part of the claim) are concerned, they are generally fine if they are disclosed as such in the application: e.g. in the case above the feature “anti-infective free” referred to the barrier would be fine. If the disclaimers are not disclosed as such, then it is necessary that the subject-matter remaining in the claim after the introduction of the disclaimer be directly and unambiguosly derivable from the application as filed. In practice, there are not that many cases where this criterion would be fulfilled.

  179. 50

    Question, can you say more, so I understand what prompted your question, for then I could answer informatively.

    For the time being though, all I can write in reply is:

    No. Of course not. Whatever gave you that curious idea?

  180. 49

    Here are the claims in question, as best I can tell.

    18 (allowed) “A prophylactic method of controlling infection in a mammary gland by a mastitis-causing organism, comprising sealing a teat canal of a mammary gland with a seal formulation so as to provide a physical barrier in the teat canal, wherein the seal formulation is free of an agent that is antiinfective.”

    26 (allowed) Same same same, “wherein the seal formulation has no bacterial action.”

    32 (rejected WD) Same same same, “wherein the seal formulation is an acriflavine-free formulation.”

    The argument in favor of rejection is: (1) the specification teaches antibiotic-free seals, and (2) claim 32 recites “an acriflavine-free formulation”, therefore (3) claim 32 could include other seals containing non-acriflavine antibiotics, which is inconsistent with the spec.

  181. 48

    Can we agree that adding a negative limitation broadens?

    I think that depends on the “negative limitation” in question, the claim to which it is being added, and where it is being added to the claim.

  182. 47

    Right. And drink plenty of water each day.

    As I said, I was belaboring what should be obvious – but it was you Malcolm at 2:59 and at 11:05 seem to be shocked that ‘water is wet.’

    Try to keep up.

  183. 46

    I’m not so sure about claim 2, as it appears to read when combined with 1, “not genus X, and not species Y of genus X.”

    The reason you “aren’t sure” is because dependent claim 2 doesn’t limit claim 1. That’s why it’s invalid (in the US anyway; in Australia, maybe not …).

    If claim 1 is invalid through disclosure of Z of genus X, claim 2 still might be valid.

    I don’t think that’s how it plays out in this instance.

  184. 45

    Correct. In fact, claims 2 and 3 claim nothing if dependent upon claim 1 as by definition anything within the genus is included in the exclusion. Now if 2 and 3 were independent claims and just excluded species of that genus, that would be more broad than claim 1.

  185. 43

    Just to belabor the (should be) obvious:

    This falls clearly to Rader’s concurrence in that the type of claim at issue must be recognized.

  186. 42

    I’m not so sure about claim 2, as it appears to read when combined with 1, “not genus X, and not species Y of genus X.”

    Both conditions have to be true to infringe, thus no broadening. If claim 1 is invalid through disclosure of Z of genus X, claim 2 still might be valid.

  187. 41

    Question for all:

    Can we agree that adding a negative limitation broadens?

    If so, distinguishing the prior art by adding negative limitations excluding the prior art examples broadens the claims. If this is done in a reexamination or reissue filed beyond the two year limit, the claims are invalid regardless of the WDR.

  188. 40

    Okay, I have now read your point above at 7:28. I can quite agree about “patentee wanted to have a mixed bag of some free and some included”.

    However, my comment was specific to CJ Rader’s argument about catch-22.

    Forcing a patentee to have been in “possession” of a negatively-claimed invention is not some kind of a mystical impossible to accomplish catch 22. It’s do-able.

    People do it (draft their patent applications with forethought) all the time. Where it’s part of their invention and they draft with knowledge of the prior art, that is.

    But where they decide to stick in a magical negative limitation as hand-waving to get around prior art?

    Meh, not so much.

  189. 39

    anon, you got it. The point was to exclude only X of genus Y, thereby not excluding the rest of the genus.

    This broadens the disclosure that had formerly only excluded genus Y.

    The original claim 1 simply covered a barrier with no negative limitations. Such a claim seem to read on the prior art.

  190. 36

    Mr. Reply, I am thinking they attempted to broaden the claims during reexamination by adding a negative limitation and thereby hoped to fool both the PTO and Judge Rader (later) by pointing out that they “added” a limitation.

    They got caught

    Their patent attorneys need to have their heads examined to think that they actually believed they could get away with this stunt.

  191. 34

    6, this is not the only point patent law that Rader misunderstands. It is scary to think that according to his bio posted on the Federal Circuit site that his textbook is the most widely used patent law textbook today. Scary.

    People should use Chisum, and read it cover to cover.

  192. 32

    American C,

    Now let me understand this. A claim is to genus Y. The examiner cites species X. You “avoid” the art by excluding X?

    That should be impossible, as it is the law that the disclosure of any species anticipates the genus.

    You can claim a subgenus ONLY if it is disclosed. If it is not, you run right into the problem of this case, new matter.

    MD description of the problem from the EPO point of view is also apt.

  193. 31

    Chief Judge Rader argues in his concurrence that, “the Board places the patentee into a Catch-22: to satisfy written description, the patentee must show possession of something it specifically claims it does not possess.”

    With respect, no. The patentee merely shows possession of negative claim limitations by having in its specification an example or a description (or even bare mention) of the article where “hey, it’s good without Compound W, too!”

    This is hardly a catch-22 “gotcha” argument. The patentee could easily have drafted the application to mention the article being free of various such chemicals.

    Now, the fact that the patentee didn’t think it up until after filing that his “invention” was really an acriflavine-free sealant might be a cryin’ shame, but that’s just too bad. Do a better search.

    Not to mention that there’s something to be said for knowing what your invention is and actually putting that thing down in your specification.

    The idea that you didn’t know what your invention really was until after you got into a reexamination (and found you’d failed to mention this newly-found “invention” in your spec) is also just too bad.

  194. 30

    this is not anything new, right?

    Apparently it’s not “new” to you.

    I brought it up because it’s counter-intuitive. Most times when patent attorneys speak of a genus and a species, the species is narrower. This is an exception and an important one to keep in mind in some cases.

  195. 28

    I do not understand the Davy Crockett explanation of the notion of an “intermediate generalisation”. So I will myself attempt one.

    Consider the independent claim, in the application as filed, as a balloon that defines the periphery of the protected technology. Consider the Best Mode of the Detailed Description as a diamond within that balloon. Consider the independent claim after a prosecution amendment, as a balloon that is smaller than the original balloon, one that is wholly within the original balloon, one that still encloses the same diamond.

    Question: does the application as filed announce the smaller balloon? If yes, then reducing the claim scope to that smaller balloon does not add matter. But if there is no announcement of that exact smaller balloon size in the appln as filed then it is an undisclosed intermediate generalisation which, prima facie, adds matter to the appln as filed. What Europe calls a “selection invention” is a smaller balloon within a larger balloon disclosed within the state of the art. Within the scope of a claim to a selection invention is a technical effect delivered by the selection but not over the full volume of the wider field given by the prior art.

    One might suppose that insertion into a pending application of undisclosed intermediate generalisations is harmless. But it has repercussions or testing obviousness under the EPC. If one can only get one’s intermediate generalisation into the pending application, one can then likely formulate an unassailable non-obviousness argument.

    Thus it is, that insertion of an undisclosed intermediate generalisation is seen in Europe as the thin end of the wedge, that must be resolutely resisted, lest pending Applicants use them to improve their position belatedly, after their filing date, and hereby reverse the proper succession of entitlement to patent rights, in order of respective filing dates.

    Hence the notion of an undisclosed intermediate generalisation is very much a creature of a First to File regime.

    Questions?

  196. 27

    Claims 2 and 3 are invalid under 112, are they not? They are dependent claims that are broader than the independent claim from which they depend. That’s not permitted.

    Broader?
    Claim 2 => yes.
    Claim 3 => yes.

    But this is not surprising and the claims should not be allowed in the first place.

    This falls clearly to Rader’s concurrence in that the type of claim at issue must be recognized.

    Another bit of weirdness: if a prior art reference teaches, generically, that one can exclude all members of a certain genus of chemicals from a particular composition, it would seem that you can’t argue the non-obviousness of excluding an expressly recited species of that chemical genus (e.g., by presenting evidence of unexpected results) unless you write the claim in closed form, using “consisting of” language.

    Your ‘closed form’ example would also need to show surprising results for that particular species, right? Again, this is not anything new, right?

  197. 26

    Intermediate generalization is the term the EPO uses to describe a reflexive activity of US patent attorneys: Editing the claims until you have recited the core of the invention, leaving out extraneous elements that do not lend patentability to the claim. In US practice, you can describe an invention completely enabled, but claim only what is necessary to distinguish from the prior art. In EPO practice, you cannot do that unless, for each element in the spec that does not appear in the claims, you provide an explicit statement that the element is somehow optional. The rule is new, at least in the sense that it is now being applied in a stingy manner against applications filed years before it was implemented in practice.
    An example would be a patent for cookies, using the Toll House recipe plus my patentable modification: Soften two sticks of butter, beat in .75 cups white sugar and .75 cups brown sugar till fluffy, beat in two eggs and 1 tsp of vanilla; In a separate bowl, mix together 2.25 cups flour, 1 tsp salt, 1 tsp soda; 1 tsp cumin, 1 tsp oregano and 1 tbl chili powder; mix the flour/salt/soda into the butter/sugar/eggs. Blend in 2 cups chocolate chips and 1 cup chopped walnuts. Separate out into cookie size blobs on a cookie sheet, bake at 375 for 9-12 minutes. Eat them all.
    Now, in US practice, I could pursue claims to Toll House plus cumin, without mentioning oregano or chili powder. (I could pursue many claim variations, each with varying degree of specificity or generalization.) In EPO practice, that would be an intermediate generalization. I could not do it unless I explicitly stated, in the spec, that you could try the cumin without the oregano and chili powder. Similar constrictions arise under the “essential elements” rule. Under one or the other, I might also be restricted to 375˚ and 9-12 minutes, unless I fudge that in the spec as well. I could not recite “an amount of soda effective for leavening” unless I disclaimed the exact 1 tsp in the recipe (or convinced the examiner the cookies were pharmaceutical). I could not recite a general term “fat”, to cover butter and shortening, unless I expressly stated that butter and other fats can be used.
    Case Number T1625/08 is an example: Where everyone (applicant, examiner, appeal board and artisans) agrees that you put a dispersion compensation optical fiber (whatever that is) anywhere in the claimed system, the claims must be restricted to the single position the applicant showed in the spec because he did not explicitly state that it could be placed elsewhere. Under this reasoning, a claim to my cookie recipe might have to include temporal limitations: I would have to recite mixing the dry ingredients AFTER mixing the butter/sugar/eggs because that’s how I presented it in the spec, even though it’s obvious that this is immaterial to the recipe.
    You can avoid these problems with a spec drafted to address them. At some point, the disclaimers necessary to avoid the proscription on intermediate generalization make it seem that nothing in your spec is special and warrants patent protection.
    If I wanted to pursue a claim with a negative limitation, like the Toll House recipe made without vanilla, I would have to express state that the recipe excluded vanilla, rather than just leave it out of the spec. The negative limitation disclaimer should be a bit easier to see, but in US practice it can be implicit, while in EP practice they really want it to be explicit.
    Bragging rights to anyone that makes my recipe and actually eats the resultant cookie.
    Do I still have a year to file a patent on my recipe? It could be worth a lot of money.

  198. 25

    nobody: In that case, wouldn’t it have also been acriflavine-free?

    Yes.

    A more specific negative limitation broadens the claim

    I believe this is true although I can’t help but wonder if there is an unusual counter-example lurking out there. 😉 Can anyone come up with one? Maybe a claim with a double-negative limitation …

    This raises all kinds of interesting issues, though. Consider this:

    1. A modified widget, wherein said modification comprises attaching a thingie to said widget, and wherein said thingie is not a member of the group consisting of [all thingies belonging to genus X].

    2. The modified widget of claim 1, wherein said thingie is not a [one particular species within genus X].

    3. The modififed widget of claim 1, wherein said group consists of [list of ten particular species belonging to genus X].

    Claims 2 and 3 are invalid under 112, are they not? They are dependent claims that are broader than the independent claim from which they depend. That’s not permitted.

    Another bit of weirdness: if a prior art reference teaches, generically, that one can exclude all members of a certain genus of chemicals from a particular composition, it would seem that you can’t argue the non-obviousness of excluding an expressly recited species of that chemical genus (e.g., by presenting evidence of unexpected results) unless you write the claim in closed form, using “consisting of” language.

  199. 24

    nobody: Patentees love that magical “comprising” language, but that means the invention does cover formulations including teonail clippings and kitchen sinks.

    Probably not how one skilled in the art would read the claim but the larger point you’re making is one worth keeping in mind. At the very least, it’s a good idea for drafters to include some clear written support in the spec for claims that narrowly describe the product(s) of greatest interest to the applicant.

  200. 23

    (you just threw up a little again)

    6 – that’s a rather common occurrence with your posts (and not something to brag about).

  201. 22

    Sorry nobody important, it appears that you are misapplying the ‘comprising’ language and quite missing the point of the claims under discussion here.

    My point stands – and stands as correct.

  202. 21

    I would say it’s the attempt to change it to only some included” that is the fatal error. Patentees love that magical “comprising” language, but that means the invention does cover formulations including teonail clippings and kitchen sinks. If you want to claim something that doesn’t include those, you either have to exclude them or not using open-ended language. And that’s a different invention.

  203. 20

    Probably because it would be anticipated or obvious. It’s very difficult to imagine that someone didn’t use a antibiotic-free sealant at one point as an internal control in an experiment to determine the effectiveness of various antibiotics.

    In that case, wouldn’t it have also been acriflavine-free? A more specific negative limitation broadens the claim, it doesn’t narrow it.

  204. 17

    I agree with anon. It sounds like the patent owner was trying to broaden the claim from “anti-infective-free” to merely “acriflavine-free,” and had not made any disclosure in the spec of a distinction between acriflavine and other antiinfectives.

    This case differs, I think, from many negative limitation cases. In those the spec is silent about element X, the examiner finds a reference that has claimed elements and element X and uses that reference to reject the claims, so the applicant adds a negative limitation of “element X free” to distinguish over the reference. The addition of the negative limitation here is not new matter because the applicant is solely narrowing the claim with the limitation. He is disclaiming, not claiming, element X.

  205. 16

    “Chief Judge Rader also filed a short concurring opinion noting that the usual catchphrase of “possession” is not the correct way to think about written description. In particular, according to Rader, possession makes no sense here where the focus is on a negative limitation. He writes that “the Board places the patentee into a Catch-22: to satisfy written description, the patentee must show possession of something it specifically claims it does not possess.””

    Leave it to rader to pick on a point of semantics which is distinct from the actual legal question which is presented when determining “possession”. The “possession” is not literally having something in your hand, or on/in your embodiment, the “possession” requirement is whether you have demonstrated, or not, that you had a grasp on the claimed invention as a whole, mentally, physically, or otherwise at the time of filing. The possession requirement is exactly the right way to think about it, though it sounds strange in the ordinary use of the word in the english language.

    This little opinion by Rader just highlights the old timer’s misunderstanding of the possession requirement.

  206. 15

    Is it just me, or does anyone else throw up a little every time a grown man uses the term “lulz”?

  207. 12

    “”The treatment of mastitis is oil massage of the udder and to provide heating by application of a hot lump of mud.” No mention of acriflavine.”

    lulz.

  208. 11

    “Acriflavine is well known to folks skilled in the art as a treatment for mastitis. However, the original specification does not mention acriflavine. The result is that the PTO Board found the claim unpatentable for failing to comply with the written description requirement of 35 U.S.C. 112. On appeal, the Federal Circuit affirms. ”

    Lulz. Where do these guys get all this money to appeal stu pid cases? Is nobody watching their purse?

  209. 10

    Two items catch my eye:

    1) “Now, to be clear, the example did not spell out that the formulation was “acriflavine-free.” Rather, acriflavine was simply not in the list of ingredients.

    Would you consider the formulation to be kitchen-sink free? Malcolm’s toenail clipping free? To be clear, the statement is a perfect example of Rader’s admonition.

    2) “and contends that the disclosure therefore supports a claim which excludes one particular antiinfective (such as acriflavine) but permits the use of others

    THIS is the crux of the issue (but permits…others). It is NOT that the patentee wanted a subset declared ‘free,’ but rather that the patentee wanted to have a mixed bag of some free and some included. It is the ‘some included’ that is the fatal error.

  210. 9

    Why drink milk? Take your coffee black. At other times Jack Daniels provides a good alternative.

  211. 7

    This just highlights the importance of a disclaimer. It is also important, even more so, in EP practice. If you see that a negative limitation might be useful, it is best to include a disclaimer. In EP practice, absence of a disclaimer also prevents “intermediate generalization,” which is totally strange to US practitioners.

  212. 6

    I’ll leave it to the 101 “experts” to tell us whether the claim should be ineligible in view of keratin.

    Patent ineligible or not patentable?

    There (STILL) is a critical difference.

  213. 5

    s there a particular reason they don’t just put something like “without an antiinfective agent” in the claim somewhere?

    Probably because it would be anticipated or obvious. It’s very difficult to imagine that someone didn’t use a antibiotic-free sealant at one point as an internal control in an experiment to determine the effectiveness of various antibiotics.

    Generally speaking, using a physical barrier to reduce bacterial infection is kinda old, as is the use of certain compounds (waxes, oils) to prevent the cracking of skin which facilitates infection. Mastitis occurs when the teat duct is exposed to infecting bacteria. So … pretty obvious (since Pasteur, at least) to cover up the teat duct with something that is sterile and does not cause the nipple to dry out. By the way, nature arrived long ago at a nearly identical approach that is “acriflavine-free”.

    Keratin is a wax-like substance secreted into the teat-end orifice or opening. The keratin lining of the teat canal entraps bacteria and prevents their upward movement into the mammary gland through its physical and bactericidal properties. Approximately 40% of the keratin lining in teat canals of Holstein dairy cattle is removed during the milking process, thus requiring continuous regeneration.

    I’ll leave it to the 101 “experts” to tell us whether the claim should be ineligible in view of keratin.

  214. 4

    Judge Rader suggested an important element in this case is the fact that Acriflavine is a “well-known species of antiinfective that [has] been used in teat seals to treat bovine mastitis for over 75 years.”

    Wow. 75 years! So, it’s been used pretty much since the first animal was domesticated by humans for milk production. (<-sarcasm). I wonder what antibiotics the Tuareg use on their camels and goats? Maybe the Internet can help: link to ncbi.nlm.nih.gov

    “The treatment of mastitis is oil massage of the udder and to provide heating by application of a hot lump of mud.” No mention of acriflavine.

    DC: Bimeda’s revolution is that its seals do not include any antiinfectives

    Seriously, absent a showing that skilled artisans that the “chemical-free” mixture would, by itself, cause harm upon administration, it’s generally not a patent-worthy invention to simply leave a chemical out when (as here) (1) it was well-known that it was not strictly necessary and (2) consumers prefer to avoid the chemical.

  215. 3

    Is there a particular reason they don’t just put something like “without an antiinfective agent” in the claim somewhere?

  216. 2

    LB, I took it that only the final punctuation, a period, is missing from the last sentence. Dennis agreeing with Rader C.J.! ?

    As I understand it, WD is a novelty test, as opposed to testing what is obvious, or what “makes sense”. When novelty is in question, tests get strict. Which is the case that made set the WD novelty test? Can Rader’s court get rid of it?

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