Guest Post By Paul Gurzo and Neil Kardos from the firm Harrity & Harrity, LLP
Based on a prior post discussing comments by Chief Judge Rader regarding claims including “configured to” language, we decided to review Patent Trial and Appeal Board (“Board”) decisions from 2013 that included “configured to” language. Based on our review, we identified 1,028 decisions that included this language.
Of those decisions, 376 decisions included “configured to” language in at least one feature that was argued by the Appellant and, thus, addressed by the Board. In 344 decisions (91%), the Board gave full weight to the features following the “configured to” language. In 18 decisions (5%), the Board gave the features reduced weight by usually stating that “configured to” is an intended use and the prior art must merely be “capable of” performing the recited features. In 14 decisions (4%), the Board gave no patentable weight to the features by usually stating that the phrase does not further distinguish the claimed apparatus from the prior art. After reviewing each of the decisions, we could not identify any concrete reason why the features following the “configured to” language were given weight in some situations and not given weight in other situations.
Chart 1 provides an illustrative breakdown of these decisions.
Based on this information, we decided to review the 32 decisions where the Board gave no weight or reduced weight to the features following the “configured to” language to determine the technology associated with the appealed claims.
Twenty-two decisions were rendered for applications assigned to electrical or computer art units (e.g., Technology Centers 2100, 2400, 2600, and 2800). Of those twenty-two decisions, the Board gave no weight to the features following the “configured to” language eleven times, and the Board gave reduced weight to the features following the “configured to” language eleven times.
Nine decisions were rendered for applications assigned to mechanical art units (e.g., Technology Centers 3600 and 3700). Of those nine decisions, the Board gave no weight to the features following the “configured to” language twice, and the Board gave reduced weight to the features following the “configured to” language seven times. Only one decision was rendered for an application assigned to a chemical art unit (e.g., Technology Center 1700), and the Board gave no weight to the features following the “configured to” language in that decision.
Chart 2 provides an illustrative breakdown of these decisions based on Technology Center.
Based on this breakdown, we decided to review the twenty-two decisions in the electrical or computer art units. Surprisingly, the same three-judge panel decided nine of the twenty-two decisions. Of those nine decisions, this panel gave no weight to the features following the “configured to” language six times, and this panel gave reduced weight to the features following the “configured to” language three times. In addition, at least one judge from this panel was part of the panel of judges in five of the other thirteen decisions. In those five decisions, the Board gave no weight to the features following the “configured to” language three times, and the Board gave reduced weight to the features following the “configured to” language twice. Therefore, only eight of the twenty-two decisions in the electrical or computer art units included a panel of judges that did not include any of these three judges.
Chart 3 provides an illustrative breakdown of the panel makeup for these twenty-two decisions.
Based on recent Federal Circuit decisions (Superior Industries v. Masaba and In re Giannelli) and the increase in the percentage of issued patents that include “configured to” language in the independent claims, it will be interesting to see how the Federal Circuit and the Board consider this language in the future.
Please list the 32 cases where you say that “no weight” or “reduced weight” was given to the “configured to” language. Thanks.
Can you provide the list of cases you reviewed?
A lot of this has to do with “inherency.” When structure or composition is distinguished from prior structure or composition by function, the office, relying on cases stemming from the ’30s, have relied on “inherency” to prove prior art. They show the same structure existed in the prior art. If it did, then it too inherently had the same function.
Computers changed all this. “Configured to” references the programming. Thus showing that two computers existed does not prove their programs were the same.
Still waiting Ned: the logic (not the facts) of Nazomi…
anon, how many times I don’t understand Nazomi because I do not know what hardware Nazomi was trying to claim. The case was unclear on that point.
Ned,
How many times must I point out that I am not asking (at all) about “because I do not know what hardware”
The court’s logic has absolutely nothing at all to do with the hardware.
This follows – exactly – the Grand Hall experiment that proceeded the case (by years?) and that you have never deigned to recognize in our discussions.
We now have a case and not just a thought experiment, and yet, you continue to refuse to even acknowledge the legal concept under discussion.
Anon, regarding Nazomi, one interpretation of the case was that Nazomi was trying to claim hardware and the court ruled that the functionality of the claim could only be provided by combination of hardware and software. But another interpretation is that the hardware had the capability being claimed but it was only enabled by a certain software toolkit that the accused infringers never licensed.
I am not sure what the case held because I really don’t understand what hardware being claimed and whether the case turned on whether that hardware was enabled or whether the claim covered the combination of hardware and software.
Ned: “one interpretation of the case was that Nazomi was trying to claim hardware”
One interpretation? Whose was that? I have seen no such interpretation put forth by anyone, let alone by anyone in the art.
Again, Ned, you appear to be trying so very hard to discuss something you simply do not want to acknowledge. You keep on wanting to emphasize a factual predicate that has nothing to do with the logic the court put forth.
Stop evading the question I put to you.
We should all recognize the fact at this point that software is equivalent to firmware and is equivalent to hardware, making Ned’s statements as to the legal logic used by the court in Nazomi even more bizarre.
We should all recognize the fact at this point that software is equivalent to firmware and is equivalent to hardware
Maybe you should just start calling it “computerware” or “mebo-gardoz” so nobody gets confused by the different terms.
Ned’s statements as to the legal logic used by the court in Nazomi even more bizarre.
I don’t find them “bizarre.” Nobody else appears to find them “bizarre” either. Maybe you should take a nap and have some milk and crackers and try again tomorrow.
Malcolm vacuously quips “I don’t find them ‘bizarre.’”
Malcolm, do you even know what ‘them’ is? Clearly, all you are doing is tr011ing me, as the ‘them’ under reference here is Ned’s lack of addressing something and addressing something else that I am not asking about. It is meaningless for you to say that you do not find ‘them’ bizarre.
But then again, you often attempt to dissemble and find nothing wrong in such actions, because this is not a court of law and this is only a blog and you have made it abundantly clear that you feel that intellectual honesty is not a requirement for posting.
And once again, Ned has disappeared.
I’m new to this one anon, why don’t you tell me exactly what the issue here is and the logical reasoning Nazomi imparts to you with respect to it?
Anon. Can you link me to this Grant Hall. I don’t know what it means.
Random, and Prof. Crouch: the Grand Hall experiment was posted on a software patent thread several years ago. I do not have the link. Several recent comments have provided the summary, but it sounds in exactly how the court treated the discussion in the Nazomi case.
A quick recap: start with two identical machines that have no software. Configure one machine with software. Now race with the machines to try to accomplish that which is enabled by the software. The unchanged original machine that has no software cannot do what the other machine can do. Thus, the new capability is directly traced to the machine component of software, a manufacture in its own right.
The unchanged original machine that has no software cannot do what the other machine can do.
Why do you need to invoke some silly “thought experiment” for the proposition that a programmable machine can do something more responsively to user input after it has been programmed relative to what it could do before it was programmed (specifically, the programmed computer can do exactly what it was programmed to do (that’s why it was built) — and it might even be able to do it well once all the bugs have been worked out, which can take a long time as anyone who has ever beta tested a computer program knows perfectly well)?
What “issue” does this “experiment” purport to resolve? Does it also show that a TV programmed to show my “favorite channels” is a “different machine” compared to the TV that I bought? Should I be able to patent my TV with my particular channel selections? If not, why not? What about a car with the adjustable seats adjusted in particular ways that are “unique” to my family? Is that a different car from the one I bought? Patentable over that car? What if I describe the channel selections and seat adjustments using functional language with no disclosure of any of the channels selected or the seat adjustments? Any possible issues that you can imagine arising from that approach?
And why the “Grand Hall”? The “Monty Hall” or the “Daryl Hall” experiment seem more appropriate.
The “grand hall” “thought experiment” nonsense is a reference to some nonsensical blog posts he made (along with our good friend pingerdoodle) back years ago that only he can remember the particulars of because he is obsessed with it. He can’t provide a link to it since you baleted and haven’t restored the old comments even if he actually had those threads faved. Which I doubt he does.
But from what I recall, the whole point of the “grand hall” was to counter the assertions that I was making back in the day having to do with what would anticipate claims to general computers “configured/programmed to x”. I posited that since such a computer only needed to be capable of xing then any ol general computer is capable of anticipating regardless of whether that computer needed some additional programming. That was so, I posited, since reprogramming is simply using the computer, and since the use of the computer is allowed while determining what the device is “capable of” then the old computer is surely capable of xing after the programmer has used the computer a bit in terms of reprogramming it to x.
The grand hall is a response to that. It attempts to show that an old computer is not “capable of xing” when it is without the programming to x. It does so by hypothetically comparing a programmer in front of an old computer that is not programmed to x to a programmer in front of a newly programmed computer programmed to x. The people behind the “experiment” state that the programmer in front of the old computer is not capable of getting his computer to x. Without reprogramming it anyway, which in their view is tantamount to changing “the structure” of the computer during programming.
In response I simply noted that any such structural change is de minimus changes to the structure which occur in the routine use of the computer for xing and such should not be considered to distinguish over the prior art. That is because the people that made the device intended for downstream programmers to be able to instruct the computer such that it would take the configuration that allows the device to x when the user/programmer decided to tell it to. And I also posited that this argument is at least applicable to the situation where there is no actual description and structural depiction in drawings of the structure of the alleged new device since the de minimus nature (i.e. nobody of skill in the art cares about them, they care about the function) of the structural changes is why we don’t require the drawings of this structure in the first place. I further posited that allowing such patenting to occur through the use of the term “configured to x” or “programmed to x” is analogous to allowing people to re-patent an old accordian in a certain “configuration” that would result from the everyday use of the accordian.
In response to that, the people making up the “experiment” simply pounded the table about their “structure” being o so different and asserting that they should be allowed to use functional terms to set this supposed “structure” forth in patent claims. As a matter of simple policy and supposed “law”.
Though I should note that the “experiment” is in large part nothing more than an exercise in semantics that allows people currently to obtain claims that are preposterous and would be soundly rejected in other arts. The federal circuit seems to put up with it simply because they feel that the softiewaftie arts would not be sufficiently incentivized through our patent entitlement program were they to hold otherwise. Such seems like a weak policy reason to flip the traditional law on its head.
In the mean time since we had that discussion the Federal Circuit has since attempted to put a lid on that argument by stating that in their view such claims/claim terms should be interpreted structurally and the law is that such terms would require the prior art be “capable of xing” without reprogramming (which in their view is a change of “structure” even though it is de minimus just as the supposedly new use of an accordian doesn’t entitle one to claim all the different “configurations” of an old accordian while it is in use that one has “discovered” through routine use of the accordian). At least the feds say that when there is an “algorithm” disclosed.
Of course this sets to the side the small matter of just what such a structure would be, why it is never disclosed in the application or drawings, and thus my line of argument went down that path in recent years. If they want to play the “micro-physical-structure” game, then I say let’s play the structural game. That is after all a subject squarely in my backyard. I’ll go balls to the walls 112 1st WD about this “structure” and likewise on the drawings. If the structure is truly what is so important in these applications then surely it needs to be set forth in the application and the drawings just as much as in any other application where this is the case. It is my view that such 112 1st concerns as well as the drawing concerns were largely ignored because the “structure” that is actually referred to when you use “configured to x” in a computer claim is nothing more than the metaphorical structure (aka the algorithm made up of method steps), not the actual physical structure that is capable of being drawn out in the drawings or seen with a microscope. Such was of course pointed out in the founding document of B claims (an article by the author of the B claim application). Many folks, including perhaps the federal circuit themselves, and many office personnel, misunderstand this. In any event, since it refers to the metaphorical structure, then drawings would not need to be provided as the metaphorical structure is nothing but a bunch of method steps (aka an algorithm). And to be clear, my overall goal is not to take all these claims down in one decision, my goal is to get people to realize the difference between the metaphorical “structure” and the physical “structure” in the overall conversation and eventually hold the CAFC’s feet to the fire about why there is such a dearth of disclosure of these structures in applications if we’re really talking physical structure. If we made them actually disclose their actual structure then after a few hundred thousand applications we’d have most of the basic series of 1’s and 0’s in the prior art after a few years (just like DNA sequences). As is we get no disclosure of physical structure in return for the patent granted. I’d like to either get their feet held to the fire on that or else I’d like to get a straight up admission that it is metaphorical structure being discussed, just for the record so everyone is clear on the shinanigans going on and so further attacks can be made on that front.
And that is where the conversation is today. Sans the USSC calling the CAFC out on their nonsensical BS related to this issue, then I and others have to pursuit the “structural” line of nonsense espoused by people like anon who have managed to convince the CAFC (before I even worked in the patent field) of the nonsense “structural” limitations stuff from Alappat (that was specifically a 112 6th case that clouded the issue originally). It’s just one more issue teed up ready for the USSC to reverse the Fed Circ on though really 🙁
“Why do you need to invoke some silly “thought experiment” for the proposition that a programmable machine can do something more responsively to user input after it has been programmed relative to what it could do before it was programmed (specifically, the programmed computer can do exactly what it was programmed to do (that’s why it was built) — and it might even be able to do it well once all the bugs have been worked out, which can take a long time as anyone who has ever beta tested a computer program knows perfectly well)?”
There’s no reason to do so MM, other than to appear to be a ta rd every time he makes mention of it.
“And why the “Grand Hall”? The “Monty Hall” or the “Daryl Hall” experiment seem more appropriate.”
No kidding. It was just their silly name for it that arose from their chosen physical surroundings for the experiment to take place in.
I should add that the manner in which the whole thing is nothing more than a big ol semantics game is that the experimenters pingerdoodle and anon simply want to deny people the use of the device in determining what the device is “capable of” when it comes to reprogramming the machine (and thus making de minimus changes to its structure). Though they magically do not want to deny people the use of say, a keyboard having its buttons mashed and de minimus changes in structure being made that way, (or some signals of electrons etc moving in other systems where no keyboard is being used) when it comes to whether an accused system infringes or not. When it comes to “capable of” in that context they’d very much like de minimus changes to the structure to count towards what the device is “capable of” “without structural changes”. Generally that is the semantic connundrum for those keeping track of such minutia.
I should add that the manner in which the whole thing is nothing more than a big ol semantics game is that the experimenters pingerdoodle and anon simply want to deny people the use of the device in determining what the device is “capable of” when it comes to reprogramming the machine (and thus making de minimus changes to its structure). Though they magically do not want to deny people the use of say, a keyboard having its buttons mashed and de minimus changes in structure being made that way, (or some signals of electrons etc moving in other systems where no keyboard is being used) when it comes to whether an accused system infringes or not. When it comes to “capable of” in that context they’d very much like de minimus changes to the structure to count towards what the device is “capable of” “without structural changes”. Generally that is the semantic connundrum for those keeping track of such minutia.
anon: “A quick recap: start with two identical machines that have no software. Configure one machine with software. Now race with the machines to try to accomplish that which is enabled by the software. The unchanged original machine that has no software cannot do what the other machine can do. Thus, the new capability is directly traced to the machine component of software, a manufacture in its own right.”
Well that assumes the issue doesn’t it?
For example, both machines could process data, both machines could store data. Storing NewDataX (without a claim to NewDataX itself) is no different from Storing OldDataY. So under Grand Hall, a machine “configured to store” recites the same use. In this case, its entirely proper to give no patentable weight.
Contrast that with the majority of functions, for example, claiming a computer configured to do NewFunction F. That is clearly a different machine that isn’t anticipated by a computer generally. Tons of caselaw bears this out, and you’re entirely correct anon.
However, as I’ve said before, the question of whether claim construction encompasses a large scope is entirely different from the question of whether that large scope is supported by the spec.
Random misses with “Well that assumes the issue doesn’t it?”
No. It does not. Tons of caselaw? Start with Alappat, which is the controlling en banc case here.
anon: Random misses with “Well that assumes the issue doesn’t it?” No. It does not.
Random didn’t “miss” at all. You have an obnoxious trolling habit of telling people they are wrong without explaining why. And you’ve been told that before and you respond simply by doubling down (which you’ll certainly do again).
The issue is whether a configurable machine becomes a “new manufacture in its own right” every time that it’s “configured” to do something that has not been expressly disclosed in the prior art. Does anyone believe that’s true in the patent context? Even in the limited computer context (where such an assertion is arguably a tad more compelling) I don’t think people believe such a statement is reasonable or accurate.
As Random points out (and as thousands of other people have pointed out before Random): computers are machines that receive, store, transmit and process information. The source of the information or the “content” of the information or the abstract name we humans give to the information is completely irrelevant to the machine.
If I save “available real estate” information on my computer, is my computer a “new machine” relative to the computer before I saved the information? Why or why not? What if the “available real estate” information is “not otherwise published”?
You have a computer. It’s programmed so that a little window pops up whenever you type a certain number of keystrokes per minute. The window shows a picture of a cat. If I “program” your computer so that instead of a cat, the window shows a list of phone numbers of the nation’s Lowest Ranked Patent Trolls of 2013, did I just create a “new computer” for you? Is it patentable over your old computer? If so, why? Exactly what I am protecting with that patent relative to what existed previously, and how is progress in computer technology advanced by such protection? Where’s the public benefit in granting patents on “new machines” such as the one I just described?
“Well that assumes the issue doesn’t it?”
Obviously there is a lot of that which goes on in their “experiment”. But I generally just overlook that since you can’t even talk to them if you don’t.
“Contrast that with the majority of functions, for example, claiming a computer configured to do NewFunction F. That is clearly a different machine that isn’t anticipated by a computer generally. Tons of caselaw bears this out, and you’re entirely correct anon.”
That’s what he is attempting to “show” in his “thought experiment”.
Even when I agree with you you’re stand-off-ish.
Aristocrat is all you need, they adequately explain the difference between a general computer and a special function computer there.
Some functions, such as storage, are within the capability of all computers. Others, which mostly involve the special purpose functions that are the basis of claims, are not. A special function distinguishes a computer and requires a new teaching. A common function, like storage, does not distinguish a computer even if the thing you are storing is new. This is because the act of storage is not what-humans-interpret-the-information-to-be dependent – storing data is storing data, and thus its proper to not give weight to X in a claim that would say “configured to store X”. Contrast with function F, which would be given weight.
There’s nothing surprising or interesting about your argument, anon, it’s simply the law. Your experiment, as much as you’ve said here, is correct.
Random: A special function distinguishes a computer and requires a new teaching.
Alternatively, one could argue that without a new, particular and specific teaching about how to achieve that function (e.g., code), that “special function” can be ignored because, without more, it’s just a statement of an intended use that can not be relied on to distinguish the claimed computer from the prior art.
Some functions, such as storage, are within the capability of all computers. Others, which mostly involve the special purpose functions that are the basis of claims, are not.
Wouldn’t it be nice if someone at the USPTO attempted to articulate exactly what all of these “other functions” are that can’t be relied upon regardless of the amount of specificity sprinkled into the claim by the desperate applicant? Those “other functions” certainly are not limited to “storage functions”. Not by a long shot.
storing data is storing data, and thus its proper to not give weight to X in a claim that would say “configured to store X
CLAIMS AS A HOLE!!!!
Just kidding.
MM: “Alternatively, one could argue that without a new, particular and specific teaching about how to achieve that function (e.g., code), that “special function” can be ignored because, without more, it’s just a statement of an intended use that can not be relied on to distinguish the claimed computer from the prior art.”
But a teaching has nothing to do with the claim scope. You’re trying to fix a 112, 1st problem by writing out the offending language. You can’t do that. The applicant knows what he’s claiming, and what he’s claiming isn’t described.
“Wouldn’t it be nice if someone at the USPTO attempted to articulate exactly what all of these “other functions” are that can’t be relied upon regardless of the amount of specificity sprinkled into the claim by the desperate applicant? Those “other functions” certainly are not limited to “storage functions”. Not by a long shot.”
That’s not the PTO’s job. The court did instruct on this somewhat, my discussion of storage came from a case, though I can’t recall which one. There is a difference between a general purpose machine and a special purpose one though, and it’s silly to suggest they are the same thing. Whether the applicant can claim his scope or if he gets there is a different thing.
I have zero problem with a described algorithm being claimed in 112, 6th. I can envision situations where more than that can be claimed. A lot of the functions coming out of the PTO are bad though, imo.
Random: Even when I agree with you you’re stand-off-ish.”
LOL – you are new here. Let me know if you still think I am ‘stand-off-ish’ after you try to drag answers (with a minimal level of intellectual honesty) out of the likes of Malcolm and Ned.
In the meantime, open your eyes and read some of the claptrap that they post. Yes, we both know that I am right in what I post. They (likely) do too. But they have agendas to keep and much CRPing and running away to do.
Your tr011ing is not welcome Malcolm.
Your tr011ing
LOL! Reverse Grind Hall! Claims as a hole! See my second key in the previous thread.
There, I just devastated you again. And of course we all know that you made a voluntary admission that you’re an idi0t.
Continue doing what you accuse others of doing.
Etc etc etc etc
/rambling nutcase off
Except for the fact that when I post I am accurate and on point – which of course makes all the difference in the world.
when I post I am accurate and on point
Bow down, people. Patent Jeebus is here with your accurate, on-point comments.
How many times did you have that exact offensive phrase struck under the Disqus software, Malcolm?
Why do you delight in being so offensive?
How many times did you have that exact offensive phrase struck under the Disqus software
I have no idea. How/why would I keep track of such things?
I have no idea what’s “offensive” about it, either. All I’m doing is highlighting your habit of issuing decrees to the effect that only you are capable of making “accurate” “on point” comments … because you say so. The rest of us are just struggling to keep up, it appears, with your unassailable reasoning and focus. It reminds me of certain historical figures. Jeebus seems like the nicest analogy. I can certainly use other historical figures if comparisons to The Big J are a real problem for anyone.
Malcolm blindly asks “How/why would I keep track of such things?”
The easy answer: so that your posting adheres to a minimal standard of blog quality.
Your belief that rules don’t apply to you is duly noted. It rather fits with your belief that you do not need to post in an intellectually honest manner because this is not a court of law.
(that’s not a pretty combination)
And trust me, Rader knows all about inherency. 6 and I had a debate recently about a line of authority stemming from a Rader decision which had held a publication (and not a prior use) that described in experiment that inherently produced a claimed product or that practiced a claimed process anticipated a later claim to such a product or process regardless that the reference did not describe that product or that process and no one at the time recognized that the claimed product or process was the result.
Imagine an interference. Party A demonstrates prior to practice of a process, but does not recognize that it produces compound X until after Party B’s filing date. Who wins is interference? The prior practice of the process is effective prior art to Party B regardless of Party A did not recognize the production of compound X, but Party B is a senior party by virtue of his filing date.
Computers changed all this. “Configured to” references the programming. Thus showing that two computers existed does not prove their programs were the same
There are no “programs” in the applications we’re discussing. There’s only an old computer that is capable of being configured (in an infinite number of ways, none of which are disclosed with any particularity) to perform a stated function.
“A computer, capable of playing Beethoven’s 5th symphony backwards at 1/20th the speed at which said symphony was originally played, wherein said playing occurs in response to a single user action.”
I just conceived of that “invention”. In addition I just reduced that invention to practice. Did I create a “new computer”? There’s only a few places on earth where a handful of really unpersuasive, self-interested and, frankly, rather ridiculous people would say “Absolutely! And you deserve your patent!”
Those places are a handful of patent blogs and, sadly, the USPTO.
MM, to the extent the applicant is not claiming a programmed computer where the steps of the program are set forth, but any computer programmed to effect a capability and a program is not disclosed, then I agree, the claim is entirely functional in this aspect.
Now whether this claim element is the invention or not is another question. At times the novelty is elsewhere in the claim, and the applicant is claiming the old element functionally, which is entirely proper — and there is Supreme Court authority on point. See the case quoted in Dennis post on “receiver.”
For example, I invent a new “receiver” that is able to receive broadcast signal better than other receivers. I describe that receiver in detail. But the claim includes an element that requires a broadcasting apparatus configured to broadcast signals that can be received by the receiver. Now it makes no difference how that broadcasting apparatus does that, just that it does.
“any computer programmed to effect a capability and a program is not disclosed, then I agree, the claim is entirely functional in this aspect.”
Whether the spec discloses something is an entirely different question than the claim scope. You can have broad claim scopes with no support.
A computer “configured to” do something different than a standard computer is usually a new structure. I should note that there are some distinctions though – if you are “configured to” process something, without defining how you process it, then that structure is old, because processing is an inherent function of a processor, just like storing is an inherent function of a memory.
A memory configured to store X reads X as intended use functionality and is anticipated by any CRM.
A processor configured to do function F reads F as non-inherent functionality that requires its own reference.
I suspect Ned and I are on the same page on this one, as it does have a lot to do with “inherency.”
It has even more to do with the well-debunked “House” canard. See Alappat.
the well-debunked “House” canard. See Alappat.
THE HOUSE CANARY! CLAIMS AS A HOLE!! THE GRIND HALL! ARTHORPOMOFIOCATOIN! SEE MY FECUND KEY!
You’re not communicating, anon. You’re just trolling. Learn to write. Maybe Gene Quinn can read your mind and understand the thoughtful, compelling, nuanced arguments lurking in your brain (or not) but it doesn’t appear that anyone here does. If so, they are conspicuously silent (as usual).
Random,
Since, as you say, you are new here, do you recognize the distinction between patent eligible and patentability?
“capable of” and “configured to” do not mean the same thing.
Of course, you already knew that.
“capable of” and “configured to” do not mean the same thing.
A machine capable of performing [insert new function].
A machine configured to perform [insert new function].
Please explain to everybody the difference between “capable of” and “configured to” in this context, where no structure is disclosed other than “the machine”.
“Configured to” is structural language – but then again, you already knew that (because you volunteered such an admission).
you already knew that (because you volunteered such an admission).
At best you’re taking something I said out of context. I’ll say this to you for the hundredth time and I’ll ask Dennis to note it because if I have to say it to you again I will point to this thread as evidence of your pathological lying behavior.
Are you ready? Here goes: “configured to” is not “structural language” when there are no identifiable corresponding structures readily ascertainable to the skilled artisan.
So now Dennis knows. And you know. Again, you’re sick habit of attributing b.s. “admissions” to me personally is pathological and I know you won’t stop doing it.
However, because people may be confused into thinking you are not a pathological liar, I also won’t stop calling you out on it either unless someone else (hint, hint) chooses to pick up the slack for me.
Once again: you’ve been informed (for the hundredth+ time).
Malcolm offers “Are you ready? Here goes: “configured to” is not “structural language” when there are no identifiable corresponding structures readily ascertainable to the skilled artisan.”
LOL – and you do realize the extent of that ‘corresponding structure is deemed by the near-omnipotent, KSR-enhanced PHOSITA, right? Once again, see Alappat as to structure of a machine difference between a blank machine with no software and a machine changed with structure due the augmentation of being ‘programmed to.’
You realize that your ‘context’ is also something that does not have to appear in claims, right? That claims are to be read – not with the sniff of your nose and purposeful misconstruing to the human mind (and the rightful application of what anthropomorphication means) – but as you put it, “ascertainable to the skilled artisan. That skilled artisan is fully aware that a machine configured to is
structurally different than a machine not so configured to.
As for the rest of your silly rant, your accusations fall flat. Your penchant for dishonesty is well established. You, the liar calling me a ‘liar’ is simply not believable. Tell me again – clearly – do you even know that there is controlling law regarding the exceptions to the printed matter doctrine? You rail with the same vigor against my holding you accountable for that voluntary admission against interest (which, if you had any sense of intellectual honesty) would eviscerate many if not all of your dissembling posts and ‘arguments’ against software patents.
D since there are so few of the ones on the right or mid/right getting the term correctly construed, perhaps you might be so kind as to bestow upon us the names of these decisions?
Surprisingly, the same three-judge panel decided nine of the twenty-two decisions.
Its not a surprise to those who frequently take appeals to the Board.
One of the main reasons that the use of “configured to” language has increased in recent years is that practitioners have switched from “adapted to” (or “capable of”) to “configured to.”
In biotech I still see “capable of” and “adapted to” a lot
“of” and “to” are not analogous. Compare Nazomi.
This is interesting article. It doesn’t seem particularly surprising …. but I’m not sure what to make of it. A couple points:
Gurzo and Kardos: After reviewing each of the decisions, we could not identify any concrete reason why the features following the “configured to” language were given weight in some situations and not given weight in other situations.
Imagine a partner in a law firm giving a couple experienced associates the assignment of reviewing 400 cases in which the term “configured to” was specifically addressed by the Board and identifying the reason why the term was given weight by the Board (the outcome in >90% of the cases). And then the associates coming back with “no concrete reason was identified.” How does the partner react?
Weirdly enough, it looks to me like there were, in fact, “concrete reasons” provided in the immediately preceding sentences:
In 18 decisions (5%) [where full weight was not given to the features following the term], the Board gave the features reduced weight by usually stating that “configured to” is an intended use and the prior art must merely be “capable of” performing the recited features. In 14 decisions (4%), the Board gave no patentable weight to the features by usually stating that the phrase does not further distinguish the claimed apparatus from the prior art.
Frankly, I don’t see much daylight between those two rationales. If the otherwise patentability-destroying prior art is capable of performing the recited function, then the phrase does not distinguish the claimed apparatus from the prior art. It seems to be just a choice of words used to describe a problem that arises with functional claiming where that function is relied on to distinguish the claimed invention from the prior art.
One obvious question (and one that should be easily answerable given the small number of cases in this category) is whether there was any discussion in the “no weight” cases of the lack of any discernable structure “disclosed” by the recitation of the function. What exactly were the functions recited in the 22 computer/electrical cases?
Lastly, the term “capable of” begins to lose all meaning when applicants argue that prior art programmable computers were “not capable of”, e.g., storing information about “available real estate” or transmitting video information “where the movie was not publically available.”
“capable of” reminds me of my big box of electrons, neutrons, and protons, and copious amounts of the elements…
“capable of” reminds me of my big box of electrons, neutrons, and protons,
That sure is impressive, Johnny! Be sure to put those crayons — oops, I mean “neutrons” — back in your magical box when you are done playing with them.
the infamous ‘House’ computer
What?
I am asking Malcolm to answer very simple questions that go to the heart of the software patent discussion
I didn’t see any question. Are you high?
Malcolm employs the infamous What the Sam Hill/Vinnie Barbarino response of “What? … I didn’t see any question.”
Shockers.
/eyeroll
Clearly, we all know (or should know) that the Article I court too closely connected with the Patent Agency (and thus failing any reasonable test of objectivity as might accord other Article I courts connected to Federal Agencies) will act in a rogue manner and will not correctly apply the law as written by Congress and interpreted by the Article III courts (whether or not the Article III courts are merely interpreting or adding to the law with implicit writings kept to the side).
we all know … that the Article I court too closely connected with the Patent Agency … will act in a rogue manner and will not correctly apply the law as written by Congress and interpreted by the Article III courts
Fascinating stuff (albeit presented in a nonsensical circular fashion).
Is that what’s been happening for the past decade or two while the PTO has been spewing out junky “configured to” softie woftie claims? Is that the “rogueness” you’re referring to?
Tell me Malcolm, what is the controlling law as regards to the exceptions to the printed matter doctrine?
Or, even easier, tell me Malcolm whether you even know what the controlling law is as regards to the exceptions to the printed matter doctrine?
LOL – lovely AOOTWYD at 6:22 (as is typical).
One other common phrase worth querying: “capable of”
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