By Dennis Crouch
In a prior post, I included a chart showing a recent rise in the use of the functional claim phrase “configured to.” See Crouch, What Does it Mean for a Device to be “Configured To” Perform a Particular Function, Patently-O (2014). Here, I have updated the data to also add information regarding claims that include the term “means” (the traditional primary trigger for §112(f) analysis) and those that include the phrase “for …ing” (such as “for calculating”) without reciting the term “means.” I see these chosen categories as indicia of the existence of functional claim elements. However, I recognize that my rigid automated approach is both somewhat under and over inclusive. However, the results (below) are so dramatic that it is difficult to argue that nothing is going on here. Complicating this, a legal definition of functional claim language (outside the scope of §112(6)) is difficult to nail down. Working a bit on this definition, the Supreme Court in 1946 wrote that a “claim which describes the most crucial element in a ‘new’ combination in terms of what it will do, rather than in terms of its own physical characteristics or its arrangement in the new combination, is invalid as a violation of [the indefiniteness requirement].” Halliburton v. Walker, 329 U.S. 1 (1946).
For the analysis here, I first downloaded the text of all U.S. utility patents issued between 1976 and 2014. I then wrote a script that parses through the independent claims of each patent to determine whether any of the aforementioned phrases are found within those claims. Because the worry with functional claim elements tend to be their over breadth, I looked only at independent claims rather than the naturally more narrow dependent claims. With those results in-hand, I then calculated the frequency-of-appearance in a week-by-week time series. The chart is slightly smoothed by reporting a 10-week moving average – that smoothing largely imperceptible because the time series encompasses almost 2,000 weeks of data). A nice element of using the entire population of utility patents is that there is no need to include significance levels or confidence intervals.
The basic results are apparent from the chart below. The use of traditional Means-Plus-Function (MPF) language in patent claims has dropped dramatically since the early 1990’s and continues to drop. (Blue data series). In the 1980’s most patents included an independent claim written in MPF form. Today, that frequency is less than 10%. The decline in the use of MPF claim language corresponds roughly with a set of cases that cabined-in the construed scope of MPF elements and also bolstered the doctrine that an MPF claim is invalid if the patent document lacks an affirmative statement showing a structure that performs the claimed function. See In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) (en banc). Although patentees have eschewed the statutory sanctioned MPF format, they have not given up the use of functional claim limitations. In the chart below, I pick up on two particular common approach. One approach has been to replace the term “means for” with a more structural noun such as “circuit for” or “instructions for.” Those types of claim elements are shown in the green data series below and show a rise in that claim format in the 1990s that matches the decline in MPF usage. The red data series shows the use of “configured to/for” language in independent claims as discussed in the prior essay.
As patentees moved away from the use of means-plus-function claim language, they could have conceivably chosen either to focus more particularly on structural elements or instead to continue with an approach of claiming according to the function of the unspecified structure. The chart above graphically suggests that patentees have chosen the latter – replacing means-plus-function claim elements with functional claim elements carefully designed to avoid the statutory trap of §112(6).
The sheer number of patents at issue here is impressive. To be clear, we are talking about millions of patents that are caught-up in this transition. Thus, if we think that it’s a problem to have functional claim limits written outside of the safeguards of §112(6), then what we have here is a big problem.
[…] of means-plus-function claim terms compared with bare non-MPF functional claim terms. See Crouch, Functional Claim Language in Issued Patents (2014). Here, the court finds, roughly, that a claim term with a smidgen of structure should be […]
The briefs in the Nautilus v. Biosig Supreme Court cert. roundly condemn functional claiming, linking the issue to O’Reilly v. Morse, citing both United Carbon and Halliburton. See esp. the Amazon, Google brief.
link to scotusblog.com
The Amazon case cites this Taranto case with “approval”: IBORMEITH 2 IP, LLC v. MERCEDES-BENZ USA
link to cafc.uscourts.gov
Now, how do you like that? One of our newest Federal Circuit judges being cited with approval to the Supreme Court.
BTW, IIRC, we never had a blog post here on either Nautilus or IBORMEITH, although Dennis did tell us about Nautilus’s cert.
The brief in opposition makes some pretty big statements on pages 22-30.
link to sblog.s3.amazonaws.com
I still need to read the actual case though lol.
You can always tell when you’re dealing with an ignoramus in prosecution by their technical drafting capabilities. Gaze ye upon the technical abomination depicted in Fig. 15 where all the lines that go into the oscilloscope are connected to all the lines they run into.
link to sblog.s3.amazonaws.com
Overall I’m getting the feeling that what is going on in this case is that the prior art showed a spacing but it wasn’t a “special spacing” like the patentee would have liked, and should have been made to if that is what he wanted, to claim. Is 112 2nd the proper tool here? Mmmmm, to the extent that the patentee’s position relies on the old canards of functional terms magically imparting structure because someone of ordinary skill could figure out what the structure is supposed to be, yes. That’s the same problem we see in computer garbage claims. Perhaps if they take this case, tear it a new ars e, the CAFC will stop that nonsense in softiewaftie claims as well. As to the other issues presented, meh yeah they’re problems as well. And the dearth of 112 2nd cases due to the insoluble ambiguity req having been imposed is quite fascinating and troubling at the same time. I just found out about that one a few months ago.
There’s also some additional points related to technical incompetence of the people motioning against cert. They, and I presume the patentee, both seem to think that electrodes somehow magically enable the removal of signals based on size, width, spacing etc. That’s not really true. Electrodes are just blobs of metal. Signals pass through them and then into the circuit which is then either capable of removing those signals or not from the signals received. Understandably different electrodes will make this easier or harder, but it is ultimately not the electrodes that do this thing or enable such. This seems to go right over these technical ignoramus’s heads.
Likewise, it really does seem that the patent should have laid out how all this was to be tested. At least said something about standard equipment and the setup. Even if we’re to buy into their whole “well you can test out your device and see if it infringes and that’s how you’ll know the metes and bounds of our functionally claimed invention lolololol” approach.
Here’s another little tidbit, they don’t even know how to use the word “configured” correctly.
“was that the prior art did not disclose electrodes configured with a differential amplifier for detecting and substantially removing
EMG signals”
lulz, electrodes “configured” with a diff. amplfier? lulzroflmao.
This is kind of the real rub that it all boils down to. The Fed Circ holding:
“The Federal Circuit also explained that because “some experimentation
may be necessary to determine the scope of the claims does not render the claims indefinite.””
See some people interpret this to mean that so long as simplistic/reasonable experimentation can be performed on the alleged infringing device or other similar devices and you can tell whether they infringe under the language of the claim then you’re all hunky doorey. Other people interpret this rightfully to mean that you must be able to come to a definite construction through running some reasonable/simplistic experimentation.
I fall into the later camp myself. For the claims that fall into the first category and not the second category are indefinite since their scope depends solely upon the inventive genius of the alleged infringers and not upon an objective boundary established aforehand.
Can I get a hells yeah?
You really should note how your “belief” system colors your views 6.
Actually it’s good that you bring that up anon because I was just thinking that myself. In the end, it all boils down to what you fundamentally consider claim scope to be and what it is there to do. Under the former view I mentioned above, the sole point to having claims is simply to inform people whether their newly created thing infringes or not. Under the later, claims are there to put people on notice, in advance of making anything, of a definite set of things that will infringe if they create them.
You’re absolutely right that it comes down to your fundamental beliefs on things. However, in the end, I’m pretty sure that the later are more in line with the whole public notice thing, which the accused noted in their brief here.
Nice 6 – you managed to say absolutely nothing with that post.
Do you recognize that your belief system is clouding your judgment?
Not further than what I’ve already noted.
6 retorts “Not further than…”
Brings to mind the phrase: nothing from nothing leaves nothing.
anon note how your “belief” system colors your views”
LOLOLOLOLOLOLOLOLOLOLOL!!!!!!!
All bow down before the Great Anon, the only truly objective person on his planet.
Malcolm, you have ZERO credibility on saying anything to an objective standard.
I would be more than willing to put into court anything that I post.
You would not and cannot.
Intellectual honesty – try it.
All said, I don’t know if this is a good vehicle or not. It appears from a glance to these briefs to be a big ol sht show of all that is wrong with 112 2nd jurisprudence so in that respect it is a good one. On the other hand, if the late evidence introduced into the record is actually considered meh, that makes it much harder and narrows the sht show to some narrower issues. Though those are still good issues!
The way I see it is this:
In combination claims, 112(f) should not be invoked in the following situations, and neither should the claims be declared indefinite as functional:
1. If the invention is a method where particular structure is not important, the method steps (two or more) can be claimed as a method, a system, or an apparatus configured to perform the method without invoking 112(f). Halliburton could not claim his invention as a method as everything in the patent was old but for the new apparatus. In order to clarify, a patent should include a method claim and the apparatus and system claims should correspond to the method.
2. Old elements in an apparatus claim should be claimable functionally. This form of claim actually adds clarity. Subject to 1, if novelty is ascribed to the element, it should be construed under 112(f).
3. New structure should be claimed structurally otherwise 112(f) is invoked. However, new structure may still be defined by combinations of old elements that themselves are defined functionally without invoking 112(f).
A patent then becomes indefinite as functional only when 112(f) applies and there is no corresponding structure, or the specification itself is functional. The case on appeal to the Supreme Court is like this: the novelty was in a new function where there was no corresponding structure defined in the specification that achieved the recited function.
Meh, disagree. If you subjectively believe (or know) “the invention” is a method, then you claim something other than a method (for instance an apparatus) you fail the commandment in 112 2nd immediately. No further discussion required.
6, it appears that you categorically oppose claiming an invention as a apparatus or system where all the hardware is old and novelty lies in new method, a new way of using the old hardware.
Now let’s pause and consider a new cell phone. One invents a new way of interacting with the cellular network, but all the novel functionality is in software and that software is load into an becomes part of the cell phone apparatus that is sold to the public. One wants to sue the maker and seller, and bar his imports. To do so, the cell phone must infringe.
Assume the claim is of the form, “Apparatus” having a number of means plus function clauses, where the software is defined in the steps described by the means clauses.
Are you OK with such a claim, when the corresponding structure is software?
If you are, the why would you oppose removing the “means for” and just defining the software in terms of “configured to?”
“it appears that you categorically oppose claiming an invention as a apparatus or system where all the hardware is old and novelty lies in new method, a new way of using the old hardware”
I do but that wasn’t really what I was harping on in the last comment. I’m a stickler for following the command in 112 2nd to claim that which is subjectively believed to be the invention. If you admit straight up front that you believe the invention to be something other than is what is in the claims I will hit you for it every single time. And put it on the record. The commandment is there for a reason(s). And preventing the tomfoolery you’re proposing just now is one of those reasons.
“One wants to sue the maker and seller, and bar his imports.”
See and that’s the real rub. I’m sorry, but there is no reason for us to allow for the subversion of the foundation of the patent system simply because of your subjective wishes to sue various people. Sorry.
“Assume the claim is of the form, “Apparatus” having a number of means plus function clauses, where the software is defined in the steps described by the means clauses.
Are you OK with such a claim, when the corresponding structure is software?”
No, for a variety of reasons. But the reason most pertinent to our instant conversation is because, I’m presuming, that you kindly admit straight up front that you subjectively believe the invention to be the method.
But even presuming you didn’t kindly admit such and presuming you actually drew out the supposed structure in your drawings and all was hunky dorey on the structure front/mpf format front then I’m still wary of simply allowing the use of the term “configured to” in the way presented by modern software patent apologists. For a variety of reasons that I’ve expounded upon at length here before and I decline to expound upon again at this time.
If you admit straight up front that you believe the invention to be something other than is what is in the claims I will hit you for it every single time
What happens when applicant has two or more claims or even worse … two or more independent claims? Aren’t they using different language to describe the invention?
Your problem is that you IGNORE well-settled law that an invention can be claimed in different ways.
Until you find your way into the solicitor’s office, I would suggest your career would be better served by applying the law — as it actually is, instead of applying it the way you think it should be.
“What happens when applicant has two or more claims or even worse … two or more independent claims? Aren’t they using different language to describe the invention?”
I’ll let them go until they make the admission. The whole of this modern “claim it as a method and device all the time” claiming paradigm is based on the fact that there are some instances where there are both method and composition/device/ apparatus have indeed been invented and then pretending that all or nearly all inventions are this way to artificially expand coverage for those. Personally I think there should be a better way to enforce this than waiting for an admission but that seems to be the status quo and it isn’t a fight I’m willing to fight atm.
Sometimes though it’s easy to goad them into the admission though, see for a high profile example, Myriad at the USSC where they admitted the invention was the discovery and got busted (finally). The office could have secured this admission and saved everyone $$$$$$$. When I do it though I always do a double take to make sure that they are indeed admitting what I think that I just goaded them into admitting. And I’m very specific and explicit.
“Your problem is that you IGNORE well-settled law that an invention can be claimed in different ways.”
I’ve never said that an invention can’t be claimed in different ways. Many are, legitimately. Many others aren’t. What your problem with this is I’m not aware.
“pretending…artificially…”
6’s belief system once again coloring his world view. 6 confuses his ‘being unaware’ and his uncaring about the universality of his comments. 6 – pay attention to what Patent Guru is actually saying.
.
LOL – 6’s own expressions of “goading them into admissions”- and yet he refuses to recognize when admissions made on this board smack him upside the head (for example, the ladders of abstraction discussion). So very much like the other anti-software patent people: unable and/or unwilling to recognize how their own admissions wreck their agendas.
“Sometimes though it’s easy to goad them into the admission though, see for a high profile example, Myriad at the USSC where they admitted the invention was the discovery and got busted (finally). The office could have secured this admission and saved everyone $$$$$$$. When I do it though I always do a double take to make sure that they are indeed admitting what I think that I just goaded them into admitting. And I’m very specific and explicit.”
Lulzapalooza.
Any time you want to provide us with even one example of an instance in which you were successfully able to “goad”an applicant into an “admission” that a claim didn’t recite what they regard as their invention, please feel free to do so. Until then, the rest of us will just consider your post to be yet another one of the typical blatherings uttered by you from the fantasy world where you reside during office hours.
Can’t respond directly to your post there AAA JJ, but I make an attempt maybe every 10th interview. Most folks hesitate when I do a double take and take it back. I make the attempt just to focus their attention really. Specifically on what they regard their invention to be regardless of the current claims on the record.
But there are some very few incompetent boobs that have talked themselves into a 112 2nd which so far as I’m aware is permanent once such an admission has been added to the record on their behalf. I’ve never seen one of these incompetent fools get the relevant claim(s) issued. Fundamentally some of them seem to finally have it dawn on themselves that they never considered that to be the invention in the first place. /facepalm.
“But there are some very few incompetent boobs that have talked themselves into a 112 2nd…”
I would agree that any practitioner that talks about “the invention” as anything other than what is claimed is a boob. Although I still find it hard to believe that a practitioner would make an “admission” that whatever was claimed wasn’t regarded as at least “an invention” of the applicant. Given that you have no understanding of what an “admission” is (see, e.g. this from you: “…which so far as I’m aware is permanent once such an admission has been added to the record on their behalf”), the more likely explanation is that you’re simply wallowing in the usual examiner ignorance of rather simple and straight forward concepts such as evidence, facts, law, etc.
“… I’ve never seen one of these incompetent fools get the relevant claim(s) issued.”
Again, any examples, even just one, you’d care to share and enlighten us with would be helpful.
You’ll get examples when I leave, just the same as on other topics people care to ask about on that day. I have yet to spread the gospel to enough other examiners to be able to give out examples from them on this topic.
“I have yet to spread the gospel to enough other examiners to be able to give out examples from them on this topic.”
Lulz.
I remember when I worked at the PTO and this one examiner told me about rejecting an application for failing to disclose the best mode because it disclosed plural embodiments. He was real proud of how clever he thought he was. You remind me a lot of him.
Well you remind me of teh dumz so I guess we’re even eh?
The ignorance of 6 is on full parade as he shows that he does not understand one of the most basic aspects of innovation – that an invention most often easily has modes in several of the categories of patent eligibility.
Yet another character suicide.
“that an invention most often easily has modes in several of the categories of patent eligibility.”
Pretty sure I never said that. I simply noted that in the instant case the prospective applicant admitted that he subjectively does not believe that to be the case in the instant hypothetical. Instead, he subjectively believes the invention to be solely in the method as explicitly noted by Ned.
Pretty sure that not only did you say that, you just reaffirmed that with your attempted defense of your inane position.
You really svck at this law stuff 6.
Try reading my post again and noting that the particular mode of eligible category is a complete misnomer to many inventions.
“Try reading my post again and noting that the particular mode of eligible category is a complete misnomer to many inventions.”
No thanks, instead I think I’ll just apply the law. K?
6,
First you have to understand the law before you can apply it.
You continue to show that you do not understand the law. You appear to not even understand that your belief system is preventing you from understanding the law.
“You really svck at this law stuff 6.”
I know, right? It’s amazing. His writing and his understanding (if you can even call it that) of the law is actually getting worse.
Whatev you say ta rds anon and AAA.
Ned: you raise good points. Thank you for being articulate in your counter arguments.
As a patent drafter, I just want to know what the rules are so that I can play by them. When I prosecute a patent, and an examiner entirely disregards everything following “configured to” as “merely intended use,” I honestly believe he is disregarding an entire body of valid caselaw. Regardless of which line of caselaw it is.
More specifically, as I understand it, what follows “configured to” is either is a limitation expressed in functional terms (see Typhoon Touch Technologies v. Dell et al., 659 F.3d 1376 (Fed Cir., Nov. 2011), Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008), etc…) – or – it should be construed under 112(f) (see MIT v Abacus Software 462 F 3d 1344 (Fed. Cir. 2006), Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004), CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002), etc…).
Either way, I am entitled to SOME construction and shouldn’t have it entirely disregarded.
I honestly don’t care which line the PTO follows, I just want it to be consistently applied so that I know how to do my job. Likewise, in a perfect world, the PTO would clarify the statement in 2114 that “While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function,” as even purely functional terms should be entitled to a structural construction under 112(f).
Either way, I am entitled to SOME construction and shouldn’t have it entirely disregarded.
If you think that there is a structure corresponding to your recited function, then you are free to describe that structure to the Examiner and provide evidence and reasoned argument to support your conclusion. Or you can amend your claim to recite the structure which you surely included in your specification (because who wants to get sued for malpractice?).
It’s not the Examiner’s job to draft a patentable claim for you.
“While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function,”
That’s called “common sense”. You really need a case cite for that?
That’s called “common sense”. You really need a case cite for that?
He didn’t ask for a case cite for that. He asked for the PTO to supplement the existing case cite with some clarification. As he noted, some examiners are reading that statement to say that anything that follows “configured to” can be ignored, despite ample case law that clearly indicates that limitations expressed functionally very often can and should be construed as imparting structural limitations to the claimed apparatus.
He is exactly right. 6 appears to be confused, thinking that this citation to in re Schreiber says something odd, i.e., to the effect that functionally expressed limitations are meaningful in an infringement context but not in determining patentability. Other examiners are confused about the distinction between limitations that express an intended use, which do not add any structural limitations to the claimed apparatus, and functionally-defined limitations that do.
LB: some examiners are reading that statement to say that anything that follows “configured to” can be ignored
Context is everything. I don’t doubt that some examiners are doing that improperly, but I also don’t doubt that some examiners are seeing so many claims relying on bogus “configured to” functionality that the default approach should be to ignore those functions. I have no idea what sort of claims anonymous is presenting. Of course, I could take a guess …
Examiner consistency has been and always will be a problem. But applicants have amplified this problem by relying excessively and improperly on such language.
As I said, I don’t know who “anonymous” is. I do know that some people have been defending functional claiming for years while many other people (myself included) have been pointing out that if it becomes normalized then the patent system goes into a death spiral (just as would be the case if [oldstep]+[newthought] claims were permitted).
Perhaps the presumption in every case should be that “configured to” isn’t a structural limitation unless (a) the structure is evident from the claim (e.g., “said wire is configured to connect X to Y” or (b) the applicant can identify the corresponding structure for achieving that function when asked to do so by the applicant. That shouldn’t be a problem for anyone who has a patentable invention and who has described its structure somewhere in that application. You’re still going to get some inconstency with (a) but at least applicants will know what to expect when they are pushing the limits of functional language at the point of novelty.
Canards and QQ
Ignoring the law and what it actaully says and instead ‘relying’ on the law as Malcolm says it should be.
Throw in the well-roasted vacuous ‘theory’ of [oldstep] and Malcolm’s soapbox looks oh so pretty.
Y.
A.
W.
N.
“As he noted, some examiners are reading that statement to say that anything that follows “configured to” can be ignored, despite ample case law that clearly indicates that limitations expressed functionally very often can and should be construed as imparting structural limitations to the claimed apparatus.”
My influence grows by the day! Though my adherents aren’t always so skilled as myself, and lag behind the curve. Some of them simply ignore the limitations instead of considering those limitations to refer to a 1 or a 0, the slightly more advanced formulation of the same thesis that helps to narrow the issue for the ignoramuses that have been generating caselaw at odds with reality.
“6 appears to be confused, thinking that this citation to in re Schreiber says something odd, i.e., to the effect that functionally expressed limitations are meaningful in an infringement context but not in determining patentability. ”
If you think I’m sooooo confused then you should consult your legal treatises and textbooks on the matter. Be sure to grab an old version, and then compare and contrast to newer versions. Newer versions of course sometimes note the apparent disregard for the oldschool law which is supposedly becoming accepted practice through nothing but people allowing it to occur. The USSC is mightily not impressed with such nonsense, which is why I’ve stated quite clearly it is yet another aspect of the CAFC’s caselaw just begging to get knocked down by the supremes. In a round about manner we’ll likely see this happen in Alice.
And to be clear, the citation to schreiber isn’t so complex as “the effect that functionally expressed limitations are meaningful in an infringement context but not in determining patentability. ” The limitations are “meaningful” in both contexts. But what you’ve stated is simply what follows from the actual law that the claim be DISTINGUISHED in terms of structure, that is, from the prior art. Even if the claim is properly DISTINGUISHED from the prior art in terms of structure, it may still contain functional recitations which will of course bind the patentee in court when it comes time to judge infringement. That’s just simply an effect of the law, not the actual formulation thereof. And it is there for good reason.
But here, on this sub-category of discussion, just between you and me LB, since we have a similar case pending at the USSC perhaps we can discuss the matter a bit further. Perhaps you’d be so kind as to tell me, does the claim in Alice really implicitly require “complex” coding (set aside Techdirt showing 16 lines of code to perform the method) and a bunch of specialized machinery like Rader and those adopting your views would have us believe? Note that your position here, regarding apparatus claims essentially rests on essentially the same premise. If the premise falls then so does the rest of the position.
If you think so, do you predict Alice comes through the ordeal with flying colors? Or, would you instead suggest that the USSC will see through such nonsense and see the claim for what it is?
And if the later, do you not see that your premise is pretty much shot, and thus your view on modern drafting of apparatus claims likewise falls by the wayside sans that same premise?
6 states “My influence grows by the day!”
Translation: 6’s delusions grow by the day!
Well I was the original bringing this to light and I do spread the gospel. If there are other people out there doing likewise then I’d sure be interested to know these folks.
The words following “configured to” mean something. If an examiner can’t figure it out, then maybe the proper rejection is under 112. The legal tools exist to construe even purely functional language. Examiners aren’t allowed to pick an choose which words they consider when judging patentability. See MPEP 2143.03 “All words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Your arguments may be valid policy arguments, and may be totally appropriate in a brief for the Alice v. CLS Bank case, but policy is set by legislators, judges, and rule making committees. Examiners and applicants must both follow the rules that are handed to them. Right now, I am more concerned with what the law is, and not what it should be.
Examiners aren’t allowed to pick an choose which words they consider when judging patentability. See MPEP 2143.03 “All words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
This kind of out-of-context CCPA aphoristic silliness is just another way of sticking your fingers in your ears and pretending that the issues being discussed don’t exist.
Moreover, it ignores reams of Federal Circuit case law which says that the exact opposite is true in certain circumstances. See, e.g., case law re preambles, claims reciting new “results”, product by process claims, and/or claims reciting so-called “printed matter”.
Patentability of a claim is undoubtedy judged by the words in the claim. But not all words are treated equally for all purposes.
So MPEP 2114 is good common sense law, but 2143.03 is aphoristic silliness.
To recap:
1. not all claim terms are treated equally, and some we can just plain ignore.
2. not all MPEP sections are treated equally, and some we can just plain ignore.
Makes total sense to me.
1. not all claim terms are treated equally, and some we can just plain ignore.
You’re learning! There’s a lot more to it than that but maybe if you go to law school and take the patent bar you’ll start to get a better handle of now things work.
2. not all MPEP sections are treated equally, and some we can just plain ignore.
The MPEP has been rewritten many, many times. It’ll continue to be rewritten as case law and applicant behavior evolves. At any moment in time there are MPEP sections that are out of date and MPEP sections that beg to be re-written or written for the first time. For example, I can think of quite a few basic facts that should be considered and probably articulated (for the benefit of the naive or faux-naive applicant) every time an information processing apparatus or method is claimed and presented to the PTO. Can you think of any? If so, please share them with everyone. Oh wait: that would like shooting yourself in the face, wouldn’t it?
Malcolm: “(for the benefit of the naive or faux-naive applicant)”
LOL – there’s that Accuse-Others gambit in play again…
“I honestly don’t care which line the PTO follows, I just want it to be consistently applied so that I know how to do my job. ”
That’s a big part of the problem. People causing trouble for other people that are affected by their work not caring how their work affects others.
More character suicide by 6.
Try again 6 – you missed his message: he seeks to understand the rule so that he could do his job correctly.
Nah.
LOL – “Nah… what?
Nah you understand what he is saying? (in other words, you remain ignorant?) Yep.
Nah that’s not what he’s saying. But as Mr. I can’t read worth a flying fck, you surely show us how your inability to read can be used to further your own thinking.
The Accuse-Others-Of-That-Which-You-Do game does not work for Malcolm either.
I suggest you try something else.
Dennis:
Because of your focus on functional claim language. Let me ask you a serious question. Why do you think it is a problem?
As patent claim drafters, we work with an imperfect medium … the English language. Look up any word in a dictionary and you’ll likely find several entries. Additionally, we have different words that have nearly the same meaning where the words are used different to express a slight nuance in the meaning – although some people don’t recognize/appreciate those nuances. These are the tools of our trade and they are imperfect tools.
When drafting claims, we aren’t necessarily enabling the invention. Instead, we are to particular point out and distinctly claim the subject matter to be invented – which is a combination of identifying the claimed subject matter while at the same time distinguishing from the prior art. When I analyze an invention, there is rarely a single feature, that on its own, could be considered patentable. Instead, what I find is that most inventions are combinations of several known elements combined in a manner not contemplated by the prior art.
What I have also found that in both mechanical and computer related applications is that many elements are best described in functional terms since it is the function that is important – not the specific “means” to perform the function. In many instances, there could be several, a dozen, a hundred, or a thousand different means to accomplish the claimed function. However, which one performs that function is irrelevant to the invention (although it could be relevant to best mode, but that is a different story). Why should I be forced to describe the element structurally when it doesn’t matter in the context of the invention?
Most inventions do something, which means that I can also claim the invention as a series of steps (i.e., a method/process). Thus, I can easily claim the invention in the context of method steps, which does not require the structure. If I can claim “a method, performed by a processor, comprising: step A, step B, step C,” what is the big deal about claiming “a computer comprising: a processor configured to perform step X, step Y, and step Z”? Why should we be limiting the “configured to” language in the device claim when the method claim will not be so encumbered?
Functional language merely provides a claim drafter with a tool to claim an element broadly. Moreover, as with all claim language, it is a double-edged sword. While the broader language allows for expansive infringement arguments, broader language also permits more prior art to be cited against the claims.
As I have noted in the past, some alleged “structural” terms are functional by their very nature. For example, consider the following: connector, distributor, light, copier, radiator, computer, container, router, amplifier, filter, insulator, conductor, joint, linkage, sensor, switch. These are all structural terms that are derived from the function they perform. Should we be questioning the use of these terms as well?
Getting back to my point about the English language, we are constantly inventing new “structural” terms because the English language is not perfect. Moreover, many of these new terms are based upon what the structure does – not what it is. Given that the English language is imperfect, we have to make do with what we have. As such, why should we be hamstringing our ability to particularly point out and distinctly claim the invention by limiting ourselves to a particular category of words?
PG: While the broader language allows for expansive infringement arguments, broader language also permits more prior art to be cited against the claims.
In theory that might be true. In practice, of course, it’s a complete joke and everybody knows it.
If the prior art doesn’t teach the combination of functions you recite, what difference does it make to you if “more prior art” is cited or not? You’ll just pound your fists on the table and shout “claims as a whole” and argue that the prior art didn’t enable that combination of functions.
That’s the game that you guys play.
These are all structural terms that are derived from the function they perform. Should we be questioning the use of these terms as well?
Otherwise known as “the sky is falling” argument. Again, the problem is not the use of old terms with functional connotations and actual structures that are readily ascertainable to skilled artisans. Nobody is arguing that if you use the term “conduit” in a claim that your claim should be unenforceable. Got it? Try to relax.
The problem is “new” machines or manufactures (or methods that use “new” machines or manufactures) where no new structure is provided for those “new” machines but rather just the new functionality (or new functionalities, in the case where the Examiner finds anticipatory art whereupon you fold in some additional function that isn’t found in the anticipatory art). The typical example and the most problematic example of this kind of a “new” machine is an old information processing machine, otherwise known as “a computer” with new functionality magically ascribed to it.
connector, distributor, light, copier, radiator, computer, container, router, amplifier, filter, insulator, conductor, joint, linkage, sensor, switch. These are all structural terms
Why? Because you say so? What’s the “structure” of “switch”? What’s the “structure” of “light”? What’s the “structure” of “computer”? What’s the “structure” of “copier”? What’s the “structure” of “sensor”? What’s the “structure” of “connector”? These terms are surely more functional than structural but, again, the use of functional terms per se is not the issue.
why should we be hamstringing our ability to particularly point out and distinctly claim the invention by limiting ourselves to a particular category of words?
There’s nothing “particular” or “distinct” about a description of a desired functionality for a machine or manufacture that you have never built or whose structure is completely unknown to you.
So go ahead and cry me a river. Plenty of inventors and patent attorneys have been describing manufactures and apparatuses and compositions without using functional language at the point of novelty. And there’s good reasons for requiring that of inventors and their patent attorneys. One good reason is that if you don’t do that you end up with grifters piling into the system simply placing bets on what desired functionality is going to be commercialized next. That’s not the way to promote progress. That’s just a way to promote grifting. And here’s the thing about grifters: they are going to grift no matter what. Let them find another teat to nurse off.
And nobody really believes that patents are needed or even helpful for promoting the progress of information processing “technology.” Even if they were, the least helpful way to do it would be by granting claims on the new functionality without providing de-bugged source code ready to be used in commercially relevant operating systems. You want the patent? Provide some working code. That’s “particular and distinct” disclosure. Then we might see some real progress. That’s how the “real world” works. Or that’s the way it used to work before some lawyers decided they wanted to own the Internet.
Your post said absolutely nothing MM. You yapped a little straw man. You burnt your little straw man. Then declared the facts that according to you are that we are all cheating the system. SMMoke.
WTMQQDNR
There’s nothing “particular” or “distinct” about a description of a desired functionality for a machine or manufacture that you have never built or whose structure is completely unknown to you.
This seems to be the crux of what really bothers you about claims that use “configured to” language. But I don’t think the law backs you up here. Assuming that the claims are enabled, what is really required by the “particular” and “distinct” aspects of Section 112 is that you can tell which apparatuses infringe and which don’t. Just as with any other claims, drafters who know what they’re doing don’t usually have any real trouble with that, even while using “configured to” language.
“But I don’t think the law backs you up here. ”
The law doesn’t have to, the English language does it well enough.
In practice, of course, it’s a complete joke and everybody knows it.
If I recall correctly, you don’t practice in the arts in which the term “configured to” is used. As such, how would you know? I have, and I can tell you with 100% certainty that an Examiner will never have a problem citing art against any language that an attorney will used.
If the prior art doesn’t teach the combination of functions you recite, what difference does it make to you if “more prior art” is cited or not? You’ll just pound your fists on the table and shout “claims as a whole” and argue that the prior art didn’t enable that combination of functions.
As any good attorney should do if the Examiner has failed to present a rational underpinning for the proposed combination.
That’s the game that you guys play.
Arguing case law is not playing a “game.” It is practicing law.
Nobody is arguing that if you use the term “conduit” in a claim that your claim should be unenforceable. Got it? Try to relax.
Why not? What is an “insulator” but another word for “means for insulation”? Why shouldn’t these words be questioned as well? What is the policy rationale for coming down hard on “means for insulation” but not “insulator”?
an old information processing machine, otherwise known as “a computer” with new functionality magically ascribed to it
Unfortunately, that is (one of) your problem(s). Computers are little more than a magical device to you. Your past comments have made it painfully clear that you don’t understand their incredible complexity. Listening to you talk about computers is probably about as painful as a modern doctor listening to a doctor from the 1700s attempting to diagnosis an ailment. What is so sad is that your are more than content to wallow in your blissful ig nor ance.
There’s nothing “particular” or “distinct” about a description of a desired functionality for a machine or manufacture that you have never built or whose structure is completely unknown to you
Are you performing the function? If yes, then you meet that particular claimed limitation. If not, then are not meeting that particular claimed limitation and are not infringing. Pretty f’n’g particular and distinct to me. As to the part of building, there hasn’t been a requirement for working models in quite some time. Regardless, most of this stuff is fairly easy to build. In fact, with the clients I work with, the stuff is being incorporated into real products.
So go ahead and cry me a river.
It is you (among others) that are b’tch’n and moaning about these types of claims – not I. Both the USPTO and Federal Circuit have blessed these claims. In fact, we wouldn’t be having this conversation except that there are some who cannot accept that these claims have long been deemed acceptable. I’m not the one crying a river … you are.
One good reason is that if you don’t do that you end up with grifters piling into the system simply placing bets on what desired functionality is going to be commercialized next
There will always be people who attempt to game the system. This is going to happen regardless of the limits placed upon what claim language is required. If you want to remove the speculators, then go back to the requirement of working models be submitted. Regardless, there are legitimate inventors using these terms for legitimate reasons.
Moreover, you completely ignored my point about the relationship between method claims and device claims reciting “configured to,” which is that there is little difference between the two. Limiting the scope of “configured to” isn’t going to change the scope of the method claims. As such, everything you are arguing for isn’t going to have any substantive impact since the method claims will still have same scope.
nobody really believes that patents are needed or even helpful for promoting the progress of information processing “technology.”
Hauling out that canard again … what, for the ten thousandth time?
That’s “particular and distinct” disclosure.
You are really pathetic. How many times have you been told about the difference between the 1st and 2nd paragraphs, and you still don’t get it. You don’t understand that particular and distinct applies to the claims – not the disclosure. You also don’t get that specification need only enable one skilled in the art to make and use the claimed invention – not provide a working blueprint.
The worst part would be if in fact ‘he gets it’ by understanding the controlling law but nevertheless simply does not care and is merely pursuing his agenda.
Facts won’t matter to such a person.
Law won’t matter to such a person.
Intellectual honesty won’t matter to such a person.
(are you getting the picture?)
Patent_Guru, let me say I agree with everything yous say here. There is a real difference between claiming a new method that has a plurality of steps and/or claiming an apparatus or system configured to perform that method, and claiming new structure functionally, i.e., a single claim element defining the structure in terms of what result it achieves.
I see that Random Guy also gets it.
Halliburton truly was limited to what are effectively single means claims where the new structure being claimed is defined by the result it achieves — where the other elements in the claim are ‘nominal,” i.e., the combination being claimed is old but for the one element defining the new structure functionally.
Halliburton did not extend beyond “functional-at-the-point-of-novelty.” There is no Supreme Court authority, or any other authority that I know of, that holds indefinite or non enabled claims that employ functional limitations to define old elements or new combinations.
We really need the courts to clearly confine 112(f) to a specific overruling of Halliburton. Thus, if a claim does not employ “means for”or “step for” language, it is not governed by 112(f), period, end of story.
That would mean that claims that did not employ such language and that were in fact functional at the point-of-novelty would be invalid under 112(b) per Halliburton.
Ned, I see that you still do not get that you cannot retreat to case law that has been abrogated.
“We really need the courts to clearly confine 112(f) to a specific overruling of Halliburton.”
They already did and you cited me a 1993 decision that made the painfully clear. All it does is tell you how to construe terms drafted in a certain way and bless such drafting.
“I have, and I can tell you with 100% certainty that an Examiner will never have a problem citing art against any language that an attorney will used.”
I’ve observed such prosecutions and they’re worse than jokes. Which is also why there’s so much qq always coming from the crowd that practices before the office in such arts regarding the art applied in such cases.
“In fact, we wouldn’t be having this conversation except that there are some who cannot accept that these claims have long been deemed acceptable.”
I think we’re having this conversation because of evidence D found as to the pervasiveness of the use of the term increasing. As predicted and as is completely understandable. “configured to” for every patent I say! It should be as commonplace as “comrprises”.
Patent Guru, there are two real problems here: 1) claims functional at the point of novelty which is the very subject of Halliburton; and 2) 112, 6 — which everyone in their right mind wants to avoid given the grabbed jurisprudence of the Federal Circuit. Your post really does not relate to either issue.
Regarding functional language per se, you make a lot of valid points that I have always agreed with which compel me to ask you to join with me to call for a repeal of 112, p. 6.
Now, go read Halliburton and the cases it relies on all the way back to Wyeth v. Stone and O’Reilly v. Morse. Claims functional at the point of novelty essentially claim a result, not a method. The are, in effect, single means claims.
“The are, in effect, single means claims.”
Except for the fact that they are not, and that to get to such a ‘logical’ point, one must then eliminate the ENTIRE ‘read the claim as a whole’ jurisprudence.
Ned, stop the PON canard already.
one must then eliminate the ENTIRE ‘read the claim as a whole’ jurisprudence.
Apparently much of that jurisprudence is unadulterated hogwash if it’s led people like you to believe that it’s forbidden to analyze the relationship of elements in a non-anticipated claim to the prior art.
Take a non-anticipated claim in the very typical form:
An apparatus comprising
receiver for receiving information from [old source]
processor for determining [something about said information].
There is no new structure in that claim. You’ve got a device with an old receiver and you’ve got a processor that “determines” something. But the game you guys play is that “claims as a whole” prohibits finding such a claim obvious in spite of the fact that it’s utterly transparent to anybody with half a brain that you are doing nothing more than claiming a new function for an old device without providing any new structure.
As I’ve pointed out before, this is the without any doubt The Lowest Form of Inventing. Anybody can do it. No skill is required. No work is required, other than writing down your dream of what this new computer can do. Now you’ll cite some garbage about “inventions shall not be negatived by the manner in which they were achieved” as if that’s relevant to deeply flawed claims of the sort we are discussing.
The curtains are closing, friend. Figure out your next move. As we all know, grifters are going to grift. You’ll find something else to do. Maybe you can work in a mailroom somewhere. You seem to have some expertise there, as I recall.