Every Penny Counts v. Wells Fargo Bank, 2014 U.S. Dist. LEXIS 28106 (M.D. Fl. 2014).
In a ruling this week, Judge Merryday rejected Wells Fargo’s indefiniteness argument made in a pre-trial summary judgment motion. Like claim construction, indefiniteness is seen as a question of law that can be resolved by a district court judge. In fact, the Federal Circuit has written that “Indefiniteness is a matter of claim construction, and the same principles that generally govern claim construction are applicable to determining whether allegedly indefinite claim language is subject to construction.” Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008).
EPC’s invention is software for rounding-up credit and debit transactions to the nearest dollar and then putting the extra money to a special use. See U.S. Patent 8,025,217. Claim 1 of the ‘217 patent is listed as follows:
1. A system for accumulating credits from a customer account belonging to the customer and managed by an institution and placing the credits into a provider account, comprising:
an information processor; said information processor including a data store with data identifying the customer, the rounding determinant, the managed institution, and the account;
said data store including machine readable instructions authorizing the processor to access and read the customer account;
said data store including machine readable instructions to calculate rounders after receiving a plurality of payment transactions from the read customer account and to calculate an excess based on the rounders;
said data store including machine readable instructions to withdraw the excess from the customer account;
said data store including machine readable instructions to transfer the withdrawn excess to the provider account.
The indefiniteness issue with the claim is that the claim introduces two types of accounts – a customer account and a provider account – and then refers to “the account” without identifying which of the two accounts are being referenced. Wells Fargo argues that there are “at least four equally plausible interpretations” of “the account” – it could be the customer account, the provider account, both accounts, or some other account. Adding to the difficulty of interpreting the term, Wells Fargo highlights the fact that the patent itself is riddled with seeming typographical errors that make interpretation difficult. The court writes:
The patent is infested with scrivener’s (and other) errors, and the prospect of a missing “s” fits comfortably within the patterns discernible in the patent. For example, the patent states, “The actual transfer . . . concludes with the [transfer of] funds to each listed PC (provider account) . . . .” “PC” is used nowhere else in the patent, and the patent later clarifies that “PA” is the intended acronym for “provider account(s).” But even the creation of the correct acronym, “PA,” is tardy – by the time the patent defines the acronym, the patent has already deployed either “provider account” or “provider accounts” four times and “PA” twelve times. And after the “PA” acronym is created, the patent no longer uses the acronym but uses “provider accounts.” In other examples of error, the patent bungles nearly every acronym, conflates “i.e.” and “e.g.,” and writes “invention invention,” “FIG. 7A” (not “FIG. 7” – no figure 7A exists), “FIG. 4B” (although Figure 4B exists, “FIG. 4C” is intended), step “8120” (not”120″), “2 $300.14” (not “$300.14”), “pa id” (not “paid”), “saving s,” and “piece s.” These errors – which say nothing of the drafter’s grammatical and syntactical incompetence and bemusing judgment – confirm that “account” lacking an “s” by mistake accords with the level of compositional adroitness and dexterity that pervades the patent.
In sum, as used in claims 1 and 2, the phrase “the account” lacks definiteness. “[T]he account” might mean “the customer account,” “the provider account,” or otherwise; no informed and confident choice is available among the contending definitions.
Now, here’s the trick – after finding that the phrase lacks definiteness, the court next went on to hold that the phrase is not legally indefinite. Rather, there exist a spectrum of definiteness levels, and the forfeiture of patent rights due to indefiniteness (currently) requires extreme indefiniteness. Thus, a claim term that is only somewhat indefinite will not render its respective claim invalid as indefinite. And, because of the conceptual separation of most patentability doctrines, the lack of definiteness shown here will have no other adverse impact on the patent.
In particular, a claim term is only found indefinite if clear and convincing evidence sufficient to overcome the statutory presumption of validity proves that the claim is “insolubly ambiguous” and “not amenable to claim construction.” Taking that standard, the court could only find the claim sufficiently definite:
Although the entire patent is awkwardly drafted, the oppugned claim is simple. The specification is simple. The drawings are simple. The patent as a whole, notwithstanding the deficiencies, seems understandable; the claim seems understandable. In short, the indefiniteness of the term “the account” leaves no unmanageable gap in the information available for determining the scope of the claim. No practical incapacity or disabling uncertainty appears as a consequence of the fact that “the account” might mean one thing or the other. In sum, the extent of the indefiniteness in the term “the account” is inconsequential and falls far short of the “insoluble ambiguity” required to invalidate the claim.
Holding: Claim not invalid as indefinite.
This case tightly linked to the outcome in Nautilus. If the court changes the standard for determining indefiniteness there then we’ll likely see a modified holding here as well.
[Updated on 3/8/14 with updated information that opinion was written by Judge Merryday not Magistrate Judge McCoun. Via W.Pollack]
This decision reminds me of a case I had where a respected federal judge wrote (paraphrasing) “if ever there was a case deserving of rule 11 sanctions, this is it; sanctions denied.”
I thought the requirements of Section 112 were pretty clear. Why do courts bend over backwards to preserve patentability, especially in a situation where the notice function of the patent and the claims are defeated? The presumption of validity is merely a presumption and should be cast aside where, as in the subject case, the patentee and his counsel had more than a fair opportunity to get it right.
It also seems that the Patent Office is abrogating its responsibility to examine a patent application and substituting a cursory review. This also undermines the supposed presumption.
Shouldn’t practitioners be supporting high and clear standards?
The claim included a typo. Only the attorney of an infringer, or someone from the anti-patent faction, would play so dumb as to be confused by it.
“Shouldn’t practitioners be supporting high and clear standards?”
They would except these days they don’t care about the patent system for the most part, they’re all about their own self-interest. Their self-interest is bolstered by the current tomscheme.
6 stumbles with “ except these days… they’re all about their own self-interest.”
I suggest you catch up with some good old Adam Smith.
“which say nothing of the drafter’s grammatical and syntactical incompetence and bemusing judgment”
Was it really necessary to say that Judge Merryday?
It would be trivial to sharpshoot something Merryday has written. In fact, the very sentence you quote. That kind of gratuitous acerbity in a public court opinion is a prime example of “bemusing judgment”, to say the least.
I wonder if Judge Merryday could write a patent application in the few hours we have to write a patent application.
My guess is that these judges cannot even understand patent applications and would have no hope of drafting claims.
(Of course, MM is a master claims drafter for all that has been. MM the ghost of inventions past.)
So I’m late to the commentary on this, but a search for the word Superman returns no hits?
Please don’t tell me I’m the first to point out this was done in Superman III, then referenced in OfficeSpace?
Question – if merely mentioning functionality enables and describes it, why is Superman III not prior art? After all, it’s “clerical” to transform his statement of functionality into the actual function, right?
Remember – DO NOT fill in holes in compound analysis with “tar.” It makes Superman all beardy.
Random, you simply have to check out Max’s post at 16. Apparently, Europe has an article that forbids distinguishing claimed subject matter by its function, and I presume that would include properties.
“Question – if merely mentioning functionality enables and describes it, why is Superman III not prior art?”
A question that shows that Random is a novice examiner in this art field.
(hint: the Star Trek replicator eviscerates ALL chem, biochem – H3LL, all manufactures from patent law).
“(hint: the Star Trek replicator eviscerates ALL chem, biochem – H3LL, all manufactures from patent law)”
Distinguish science fiction from patentable fact based on the interpretation that some on this board have that mentioning the functional result satisfies 112, 1st. I’m timing you. And…go.
Science fiction is make-believe.
Your turn: go.
“Science fiction is make-believe.”
So is getting a patent for claiming a functional result. That was easy.
The fact is for those who believe that 112, 1st is met by mentioning the functional result, there is no means by which one can differentiate science fiction from an actual work meant to be dedicated to the public.
Star Trek replicators may be science fiction, but star trek chairs are science fact. Describe them both by their respective functions, and there’s no means to tell which structures exist and which are fantasy.
That happens to be the problem with functional claiming in general, but for the moment I confine my argument to those who think description of the result satisfies 112.
Nice strawman – tell me the difference between “functional result” and using functional language as part of a claim description.
And yes, you still do not need actual code in a software patent application.
“Nice strawman – tell me the difference between “functional result” and using functional language as part of a claim description.
And yes, you still do not need actual code in a software patent application.”
A claim to a functional result is a claim to any means that achieves the end, which is what software people always try to encompass. They have one particular way of doing something (I didn’t mention code, but whether you want to call it code or algorithm it doesn’t matter here, the point is they have one structure) and yet they seek to claim every way of doing it.
Using functional language is sometimes proper as sometimes it only refers to well-known things in shorthand. One could conceivably list all of the known materials which float in water and it would be perfectly valid. Using functional language as a shorthand to avoid having to write out hundreds of pages of lists is perfectly acceptable, because all it is is describing old structures. Reference to old structures in shorthand fashion is completely different to failing to disclose a new structure by only claiming it by it’s functional result.
As I’ve said before, I can kill cancer cells by shooting the host. That achieves the function of killing cancer. But it makes no sense to give me a patent for the function of killing cancer simply because I’ve found one means for doing it. Maybe, just maybe, my patent should be limited to the actual steps I take (which involve shooting a gun) rather than to the functional result (which is the only thing of commercial value, and is being improperly claimed).
For all we know (since they rarely disclose their particular means) the software inventor is doing the equivilent of shooting a gun at the host. In fact, there is probably a substantially better way of achieving the function (as it’s unlikely the applicant actually used the best possible means) but the applicant seeks to claim it as his own despite him not having it.
“Using functional language as a shorthand to avoid having to write out hundreds of pages of lists is perfectly acceptable”
LOL – You mean exactly like I showed you in our earlier conversation about the number of different software languages?
I see that you still struggle with understanding the true meaning of ladders of abstraction.
“Star Trek replicators may be science fiction”
Maybe you old people haven’t heard, the “replicators” are just what we now call “3d printers”. Same as “communicators” now being called “cell phones”. Anon has a really hard time understanding that the “replicator” is nothing more than a magic box, we already have real life “replicators” called 3d printers and they don’t “eviscerates ALL chem, biochem” etc. etc.
He’s just too dmb to understand this.
Merely mentioning functionality can satisfy 112because when software designers communicate with their minions (the ones that actually write the code), the software designers merely describe the functionality and the minions (ones of ordinary skill in the art) are able to make and use the product (or invention) from that, without undue experimentation.
“Merely mentioning functionality can satisfy 112because when software designers communicate with their minions (the ones that actually write the code), the software designers merely describe the functionality and the minions (ones of ordinary skill in the art) are able to make and use the product (or invention) from that, without undue experimentation.”
Tour was just saying that you people are strawmen further down.
That is simply not true. It is insufficient to merely state the functional result and claim you have enabled the functionality.
What actually happens is the boss states the functional result and then pays for hundreds or thousands of man-hours which produce one working result. But the claim does not go to one result, it goes to all results.
What is the monetary and time requirement that would need to be invested in order to properly execute all means of achieving a functionality? Is that undue?
Your statement isn’t true in fact, and more importantly, is insufficient as a matter of law.
““Using functional language as a shorthand to avoid having to write out hundreds of pages of lists is perfectly acceptable”
LOL – You mean exactly like I showed you in our earlier conversation about the number of different software languages?”
Don’t take my statement out of context. The allowable usage of functional language is to describe known structures by their inherent properties. When the functional language is directed toward new code there are no known structures and no inherency.
If you admit your function is within the prior art, I’ll stand down on 112, 1st. Of course, since your processor is within the prior art as well you’ve tailor-made a 103 for me.
RandomExaminer,
Clearly, you do not get 103 either.
Chew on this: electrons, protons and neutrons are old in the art (very very very very old); all elements are old in the art (we will exclude any potential not yet created maxi-ones for argument’s sake); all ways of joining any components of electrons, protons, neutrons, elements are old in the art. ANY combination, manufacture (by your logic) is then de facto obvious.
“The allowable usage of functional language is to describe known structures by their inherent properties. ”
RandomExaminer – the allowable usage of functional language is more than that.
As I have pointed out to you, you rely on abrogated case law. The 1952 Act changed the allowability of using functional language.
Period.
Point of Novelty is a canard.
You keep on building a strawman that any other view is tantamount to a violation of 112(a) or 112(b). Such is simply not the case. 112(f) uses a permissive “may,” fully indicating that such a tactic is but one manner of using functional language, but clearly, not the only manner. If it were the only manner, different language would have been used (the non-permissive “must”). Your discussion of this difference elsewhere is pure legal error, betraying your examiner-style misunderstanding.
You assume the conclusion you want in error because you are not using the law as written in 1952.
You may not like that, but that is the law. Feel free to contact your Congressman.
“The fact is for those who believe that 112, 1st is met by mentioning the functional result, there is no means by which one can differentiate science fiction from an actual work meant to be dedicated to the public.”
Sure there is. The science fiction doesn’t exist and it isn’t useful. Therefore, it isn’t patentable.
If someone pulls a fast one and gets a patent on something that doesn’t exist, what is the harm? Are you upset that you can’t make, use or import something that doesn’t exist without paying a royalty?
“What actually happens is the boss states the functional result and then pays for hundreds or thousands of man-hours which produce one working result. But the claim does not go to one result, it goes to all results.
What is the monetary and time requirement that would need to be invested in order to properly execute all means of achieving a functionality? Is that undue?
Your statement isn’t true in fact, and more importantly, is insufficient as a matter of law.”
Even if that were true. It doesn’t amount to undue experimentation. Its just typical product development given the big picture description of the inventive combination of functions.
My statement IS true. And just as importantly, describing the various functions is sufficient as a matter of law.
If I were claiming a transmission, I would describe the various gears by type and placement and relationship to other gears and clutches and indicate their various functions.
I wouldn’t have to explain how to mine iron ore, make steal, and machine plates.
While Les sometimes drives erratically, his point here is germane: claims are to be read by the KSR-super-powered PHOSITA – and applications are to be understood by the same and need NOT be detailed down to the nubs and facets of how software inventions change the physical structure of silicon/electron gates.
“Even if that were true. It doesn’t amount to undue experimentation. Its just typical product development given the big picture description of the inventive combination of functions.”
What’s funny is that this is reminiscent of arguments no doubt made by people in bio when the patent hammer was coming down on their art back 30-40 some years ago.
6,
What is funny is that your reference of “back 30-40 some years ago is completely unclear.
Question – if merely mentioning functionality enables and describes it, why is Superman III not prior art? After all, it’s “clerical” to transform his statement of functionality into the actual function, right?
All that prior art is irrelevant science fiction until Prawn M0r0nville writes it up in a patent application. Then we all need to bend over and pay him because his patent is The Most Important Thing Ever for the US economy. Do you want to go back to the stone age?
Besides, I have a box of programmable protons which devastates your position, which is just your policy agenda and not actual law.
Also, the Founders built this city on rock and roll.
And please keep your government out of my entitlement program! It’s private property.
/patent txxbxggers off
LOL – a great collection of misinformation and spin from Malcolm.
While attempting to be humorous at the expense of others, Malcolm’s lack of touch with reality for any of the points that he attempts to ridicule make him the f00l.
Out of idle curiosity anon – why do you bother with responding to that mephitic recreant whose gratuitously bilious ridicule would make the odious Alinsky blush? You seem to be fully aware that he is (1) uneducable; (2) shameless; and (3) contemptible. Just curious. Is it a quasi-religious thing, you know, a perceived burden to aid victims of hideous intellectual leprosy or something? Because if so, I might remind you of certain apropos phrases, “casting pearls before swine” and such.
For whatever reason you keep trying, you’re a better man than I am Gunga Din.
Thanks Tourbillion – I chuckled at your post, but you should note the following:
(1) uneducable – not really – the fun thing to do is to nail him to the wall with his lack of substantive posts on point, and then when he tries to talk about the merits, he volunteers admissions against his interests that make him look even more f00lish and intellectually dishonest.
(2) shameless – that he is. Note on this thread how he dares play a race and sex card even though history shows the exact opposite effect. Of course, this has the same result of (1) above in showing how depraved he is. That he still tries to champion a certain agenda in his depravity actively works against that agenda. If he ever got wise to the damage he does and went quiet, the chances of his agenda actually working would skyrocket. My providing him the chance to ‘shine’ in all his in-glory is one of the best pro-patent moves around.
(3) contemptible – See (2) above.
It is Malcolm who is making the mistake of whom enjoys playing in the mud (as it is immensely fun to get the best of him so often). He is the Fox News poster child of how not to behave on a blog.
I’m not sure if you attacked the keyboard after commencement of happy hour (not that there’s anything wrong with that), although your post is no less rambling and unintelligible than many office actions. But seizing on the one comprehensible phrase it contains, I do not believe that anyone ever advanced the proposition that merely “mentioning functionality enables and describes it”, except perhaps a buffoon or two trying to erect a ridiculously ineffective straw man.
Incidentally, a “hammer” refers to familiar structure entirely in terms of its functionality. Its structure is not a “hammer” – its function is TO hammer. Its structure is an elongated handle with a typically metal mass (not always – rubber mallets, Random) at one end, also often (not always – mallets again, Random) elongated transversely to the handle, with a typically (not always – ball peens, Random) flat disk-shaped end and opposed elongated diverging prongs extending away therefrom. But since the term “hammer” existed at the dawn of the Industrial Revolution, the age still comfortably occupied by the understanding of many posters on this site, it’s a dandy of an uncontroversial term.
To your hammer, I would also throw in a screwdriver.
At least you can also drink one of those 😉
I’ll simply observe that just as the Royal Navy has a daily rum ration which must not be exceeded, so has Providence a lifetime screwdriver ration. Which some exhaust sooner and others later.
“Incidentally, a “hammer” refers to familiar structure entirely in terms of its functionality. Its structure is not a “hammer” – its function is TO hammer. Its structure is an elongated handle with a typically metal mass (not always – rubber mallets, Random) at one end, also often (not always – mallets again, Random) elongated transversely to the handle, with a typically (not always – ball peens, Random) flat disk-shaped end and opposed elongated diverging prongs extending away therefrom. But since the term “hammer” existed at the dawn of the Industrial Revolution, the age still comfortably occupied by the understanding of many posters on this site, it’s a dandy of an uncontroversial term.”
This is, again, a backwards way of looking at it, as nobody ever tried to patent all “hammer”s nor the act of “hammering”, nor does anybody suggest that the structure you described is the only structure that could achieve the act of hammering. Instead what you have is a set of known structures which perform (but do not fill the field of) a common function. Clearly you can reference the standard structure, and clearly you can reference a group of known structures which inherently perform the act, as both of these statements are simply means of talking about what are structures which are admittedly within the prior art.
Compare that with, for example, Morse’s machine, which performed the function of typing letters at a distance, and which was claimed, in one claim, as such. The court correctly found that the language was drawn not to a set structure, but to all structures (known and unknown) that achieved the function. The court then used language which, if drawn to today’s statutory scheme, would sound in 101, 112, 1st and 112, 2nd. This is because a claim to a function (even if you nominally claim it to be embodied in a machine, as Morse did) is a claim to a non-statutory thing, the description by the inventor only discloses the means the inventor knows (while the field is substantially larger than what the inventor knows) and the scope is indefinite because what the inventor has actually created is one structure, yet he’s seeking to claim an unknown number of other structures.
The software field today is replete with Morse-copycats. People who invent one means of achieving the function but refuse to claim their single means, instead attempting the claim the function for themselves. A claim to a novel computer functionality is no different than a claim to Morse’s function, and it would be no different than a naked claim to the function of hammering. It is no more likely that one person invented all the computer algorithms which achieve a function than it is that one person invented every structure which could be used to hammer. Thus the patent must be limited to HIS algorithm or HIS hammer, which is, after all, the sum of what he invented.
Please discontinue working backward, as it is a logical fallacy. Describing a novel structure by the function it performs is not the same thing (nor is it logically equivalent) as describing a function by common structures that cause it. In the latter case, the structures are known and the causal link is within the prior art – the reference is clearly drawn only to old things. In the former case, the structure is unknown (as the inventor is the only one who knows it and is not disclosing it) and the causal link is tenuous as there are any number of possible structures which could result in the same functionality.
I should point out that the above argument is of general applicability. My original statement was a joke about the position held by NWPA, who has argued that:
1) Stating a functional result describes the structure of the function
2) Describing a function inherently enables the function and thus
3) Mentioning what you want to achieve is sufficient to overcome 112, 1st.
This is, of course, ridiculous, because it would do exactly what my joke suggested: It would allow a science fiction writer to become an inventor simply by dreaming up the function he wants his machine to do and then stating that he has a machine which does it. Stating the function you want to occur is insufficient as a matter of law for a novel function. I can understand how you may consider it a straw man, Tour, as it is indeed ridiculous. Unfortunately, the standard of a strawman is not how crazy it is, but whether it has been advanced as an argument.
That being said, regardless of NWPA’s argument, there exist a large number of applications that in fact simultaneously argue that Function F is novel and whose specifications simply state that their machine “can do function F” or “performs function F”.
Gee, Random, thanks for setting up a nice straw man to burn down for me. I hope you painted my face on it so that you got some real pleasure.
Let’s get to real things: a real product. I write patent applications for real products. I write functional claims. They are enabled by the specification. Some of the inventors are people with Ph.D.’s from top engineering schools. We understand what is enabled. We understand what embodiments are covered by the functional language.
You guys are shameless. You write abstract nonsense to the ignorant masses and don’t address any real issues in patent law. Such as: here are about 1000 ways we can see how to implement the invention. How does one cover those enabled embodiments with claims that aren’t functional–you cannot.
Your nonsense and Lemley’s filth have nothing to do with real patent law.
“Let’s get to real things: a real product. I write patent applications for real products.”
Good so far.
“I write functional claims.”
Less so.
“They are enabled by the specification.”
Conclusory.
“Some of the inventors are people with Ph.D.’s from top engineering schools. We understand what is enabled. We understand what embodiments are covered by the functional language.”
Understanding what embodiments are covered by the functional language is one component of indefiniteness. I notice you don’t mention written description at all, as what you’re required to do is describe YOUR invention. Your Ph.D.’s simply aren’t in possession of all the algorithms that do something. You’re in possession of one algorithm that does something, and you’re trying to get more than that.
“You guys are shameless. You write abstract nonsense to the ignorant masses and don’t address any real issues in patent law. Such as: here are about 1000 ways we can see how to implement the invention. How does one cover those enabled embodiments with claims that aren’t functional–you cannot.”
The Supreme Court has rejected the “but maaaa it’s really really hard” argument. Similarly, the united states doesn’t owe you a commercially valuable patent, just a patent. If you do something one way in a medium that allows for 1000 ways, you’re going to get designed around. Tough nails. In fact, when there’s 1000 ways of doing it, you might consider that you’re wasting the Ph.D.’s time. When you actually file a claim discussing your novel algorithm solely by it’s functional result, now I know you’re wasting your client’s time.
“Your nonsense and Lemley’s filth have nothing to do with real patent law.”
Patent law protects inventions. It doesn’t allow you to try and create monopolies in a field. It specifically is against that. You’re not trying to prevent competition via your means, you’re trying to prevention competition over your end. You’re misunderstanding patent law, which is unfortunate, given your career choice.
“And, why do people keep mentioning my name on this blog? Go and make your own arguments and stop building little straw men made from strands of my arguments you have patched together with your psychotic under-powered minds.”
You mean the exact same argument you just made wholesale in a single paragraph one post above? Stop making terrible arguments and you’ll stop getting called out on them.
RandomExaminer,
“Stop making terrible arguments and you’ll stop getting called out on them.”
Pot, meet Kettle.
And, why do people keep mentioning my name on this blog? Go and make your own arguments and stop building little straw men made from strands of my arguments you have patched together with your psychotic under-powered minds.
Random, good series of posts. Again, I must applaud you. Thanks for helping out, as functional claiming has long been a bug-a-boo of mine.
I think the problem all along is that the CCPA (Rich) was hostile to the point of novelty analysis. Thus they pulled language from Wabash direct to old, well known structures, and applied it to novel structures.
It has taken a very long time for the Supreme Court to take the errant lower court to task. But, only the Amazon brief really lays the case out. None of the “no party” brief even has a clue – never mentioning that Nautilus claims were functional at the point of novelty.
Ned,
You are doing that “Gee the examiner is an Einstein because he also believes in my agenda” thing again.
Stop your mischaracterizations of law – the 1952 Act – and your micharacterizations of different entities (Federal Circuit) later changing the law. Your anti-Rich penchant is as well known as it is misplaced. You really do need to realize how much was changed by Congress in 1952. You really do need to recognize the judicial activism for what it is – regardless of alignment with your Crusades. As we have discussed, this inconsistency of yours leads to you picking and choosing legal positions, parsing (incorrectly) any judicial interpretations, and greatly affects the credibility of your positions across the board.
“You really do need to realize how much was changed by Congress in 1952”
Anon we’re all open to “realizing” how much was changed by congress in 1952. We simply see nothing about it in the congressional record, or, even moreso, nothing in the statutory changes themselves. We ask you, time and again, where we are to find such and you’re just go silent. You just sit and pound your same old boring drumbeat boring us all to death. Seriously, we’re open to “understanding” or “realizing”. We just don’t see, based solely on what has been put forth already, a solid footing for making such a “realization”.
Sorry, we just don’t. We’re totally open to such.
But you’re not going to persuade anyone by being boring or repetitive. So just spare us, please.
LOL – ever wrong again 6.
I have indicated in the case law where the congressional record is referenced and the specific text of the statute being permissive (not mandatory) in one way (not the only way) of using functional language.
Pull your head out of the sand, 6 – your belief system is getting in your way.
“I have indicated in the case law where the congressional record is referenced and the specific text of the statute being permissive (not mandatory) in one way (not the only way) of using functional language.”
First I’d like to note that you are in fact relying on a decision, and its quoting of some unrelated parts of congressional record and some unrelated permissivity of a statute that doesn’t even apply to the situation. Notably you are not referencing the actual explicit language regarding this type of claiming under instant discussion. Which is what we note time and again, and which you’re too dmb to just cop to and say “sure thing, but but but, I have a decision here that says that the CCPA decided that’s what the congressional record and permissive language meant”.
And we disagree with that particular judge or panel of judges in that particular case. What of it? We can feel free to disagree with their reading of the law. And we can feel free to discuss that on the interbuts. What is your problem with us doing that?
Hmmm? What’s your problem with our doing that? Don’t want it changed or what? Because we have a case pending now were that issue is coming right straight up to the fore. You ready for ol judge Rich’s words to mean jack squat here shortly?
“First I’d like to note that you are in fact relying on a decision”
No 6, I am relying on a case that directs you to the congressional record.
Pay attention.
“Notably you are not referencing the actual explicit language regarding this type of claiming under instant discussion”
No 6, also wrong – I do talk about the explicit language in the statute – see my notes regarding the permissive ‘may’ language as opposed to your view that would require a mandatory ‘must’ language. You really should pay attention to why that difference is important.
“we disagree… what of it”
LOL – you can always disagree – you would be wrong, but hey, you are free to be wrong (and almost always are).
So go ahead 6 and proudly proclaim just how wrong you are. Never mind that impending cliff, stay in lockstep with your fellow lemmings.
“Please discontinue working backward, as it is a logical fallacy.”
I expect that to be in a memo tomorrow to the examining corps of the U.S. Patent & Trademark Office.
Get cracking.
Re your strawman comment: See this thread at 17.2.1.1.1.5.
“I expect that to be in a memo tomorrow to the examining corps of the U.S. Patent & Trademark Office.
Get cracking.”
I have yet to see a specification (and arguments of counsel do not replace facts) that provides facts that show why the action being taken by the applicant is outside very straightforward application of logic open to anyone of skill in the art.
Applying very obvious solution X to well-known problem Y doth not a hindsight analysis make.
“I have yet to see a specification”
Conclusory – (gee, that was easy)
Tour, Wabash Appliance recognized that functional language, e.g., descriptive nouns and adjectives, and equivalent functional terms, are quite permissible if, to one of ordinary skill, they defined known structure.
Now, just what have I been saying, ad nauseum, and for a very long time now. There is no vice in using functional language for old and well know structures. The SC recognizes this.
Where the train went off the rails for the CCPA/Fed. Cir. was in Swinehart, where the CCPA took this line from Wabash Appliance and used it to justify a functional definition at the exact point of novelty.
“descriptive nouns“…
Watch as the goalposts start to move…
And yes, Ned, your error in trying to lay blame on the Federal Circuit has been repeated ad nauseum. Your repetition will not make your error go away – no matter how many times you make that error.
PON is a canard.
Merely mentioning functionality enables and describes an invention in the world of methods implemented by software because when software designers communicate with their minions (the ones actually write the code), the software designers merely describe the functionality and the minions (ones of ordinary skill in the art) are able to make and use the product (or invention) from that without undue experimentation.
No one says that “merely mentioning” functionality “enables it.”
Why do you spout such garbage?
“No one says that “merely mentioning” functionality “enables it.”
Why do you spout such garbage?”
This was said at 17.6. You should check 17.5.
I have tried to take the car keys away from Les…
*No one says that “merely mentioning” functionality “enables it.”*
Except the Federal Circuit.
“As a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software. This is because, normally, writing code for such software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed.”
Judge Lourie
Fonar Corp. v. General Electric Co., (Fed. Cir. 1997)
Thank you Owen,
and Ahmen.
At 14.2.3.1.1 above, Ned Heller writes:
1. A chocolate-coated finger biscuit wherein the chocolate is characterized such that it does not adhere to a finger at body temperature.
The specification discloses one chocolate formula, but only one formula, for achieving the claimed functionality. Obviously the claim covers all chocolate formulations. There is a discrepancy between the scope of the claim and the scope of disclosure. The Federal Circuit might hold the claim non-enabled, but would not hold it indefinite. In contrast, controlling Supreme Court authority would hold the claim indefinite because it described the composition not in terms of what it is but in terms of what it does.
How do you handle this in Europe?
Here’s the answer:
The claim is not allowable, for a number of reasons. I would include amongst them:
1. Not clear (Art 84, EPC). First, definition by function not acceptable unless there is no other way. see the EPO’s MPEP. Here, there is another way. Simply recite in the claim the choc compn that works. Second, what does “adhere” mean? Under what test conditions do we determine whether or not the chocolate adheres? Not in the claim? Claim not clear.
2. Not novel. Conventional chocolate doresn’t adhere either (at least if you can specify the test conditions to favour non-adherence).
3. Not inventive. Simply reciting in the claim the problem to be solved is not enough (except when the invention lay in perceiving the problem). Here, the problem (adherence) is not only known but notoriously known.
But Ned, the EPO would likely allow that the claimed subject matter is sufficiently disclosed, and enabled.
Suppose nevertheless it issues. Hard, I know, but just suppose.
Want of clarity is not a ground of opposition. It would be hard to persuade the EPO to revoke for insufficiency. What’s left? Novelty and obviousness. Both a shoo-in I would say at any EPO Board of Appeal these days. Depending what prior art is available, the patente would limit down to the disclosed composition and, with that limitation, the patent would likely be maintained.
Is that a win for the patent owner or for the opponent? You tell me!
Max, 1. Not clear (Art 84, EPC). First, definition by function not acceptable unless there is no other way. see the EPO’s MPEP.
Gott in Himmel! Finally! Finally we began to understand why functional claiming does not and cannot exist in Europe. It is verboten.
Once, we had such rule in the United States. It appears to have been overruled by combination of In re Swinehart and In re Donaldson. Take a look at In re Arbeit, one of the cases that was overruled. Application of Arbeit, 206 F.2d 947, 99 U.S.P.Q. 123 (C.C.P.A. 1953). This case flatly refused to distinguish apparatus or compositions by their properties of functions.
“ It appears to have been overruled by combination of In re Swinehart and In re Donaldson.”
(sigh) – Once again Ned – no it was overruled by Congress in the 1952 Act.
link to documents.epo.org
Ned go to para 4.10 claiming by “result to be achieved”. That is what I am alluding to, by “functional”. This is different from including in the Claim something “functional” like, say, “means for cutting”.
Max, may I quote from the referenced 6.5:
“A claim may broadly define a feature in terms of its function, i.e. as a
functional feature, even where only one example of the feature has been given in the description, if the skilled reader would appreciate that other means could be used for the same function (see also F-IV, 2.1 and 4.10). For example, “terminal position detecting means” in a claim might be supported by a single example comprising a limit switch, it being evident to the skilled person that e.g. a photoelectric ell or a strain gauge could be used instead.”
You may have notice that claiming “old elements” was and still is quite permissible using functional language. It is quite apparent that this is exactly what is intended by the 6.5, otherwise the alternative known to the skilled reader would make no sense.
The novelty cannot exist solely in the functional element though, as by definition the functional element must have known equivalents.
This whole conversation is about functionality at the exact point of novelty, where the applicant distinguishes the prior art based upon the function. Necessarily, the structure or the composition of matter that causes the novel function or property is the invention. The Supreme Court required this to be in the claim.
The Federal Circuit (CCPA)? It overruled cases that actually required such. See, In re Donaldson and Application of Swinehart.
Now, just how they could do that is a wonder. And that arrogance has now been brought to the attention of big brother in Nautilus.
That’s all fine, Ned, except I don’t know how you come to the idea that para 6.5 is “the referenced” paragraph.
The paragraph in the EPO Guidelines to which I invited attention was the 4.10 para (F.IV.4.10) which I think you will find is on point, namely, claims where the point of novelty is recited as a result to be achieved.
As you might well imagine, the Framers (of the Guidelines, that is) were wise men who contemplated all that had gone before, and then tried to build on it, taking that which was good and making full use of it, but setting aside that which was not good enough for inclusion. For example, first Edition of the Guidelines used the gloriously named 100 year old English case of No-Fume v. Frank Pitchford, a case about an ash tray. The point of novelty was that the tray had a lid and the characterizing part of the claim was written functionally, to the effect that the smoke from the burning cigarette end was confined beneath the lid. The claim in issue was found valid. Note that a claim to a result to be achieved is NOT categorically excluded by the Guidelines, even today.
Does anybody else remember ash trays topped by a plunger. One stubs the cigarette out on a platform, then depresses the plunger to spin the cigarette end into the cavity below the platform. On release of the plunger, the platform closes back over the cigarette end in the cavity below. I think those devices were commercially quite successful, in the days when we used to buy smokers’ requisites as birthday presents!
Ned,
For shame (insert sarcasm here), it is obvious that para 6.5 is different than para 4.10, as it even says so.
The actual difference is, um, “clear.”
“as precise as the invention allows” – this too is “clear.”
Clearly.
MaxDrei,
Isn’t the meaning of “The area defined by the claims” taken to be the area defined by the claim as a whole?
Not only does 4.5.3 seems to suggest this, but that section of the guidance also seems to place structure and functional descriptions on equal footing.
But I do permit that I may be misunderstanding this and I am open to learning.
Max, I read 4.10. It broadly forbids functional claiming the novelty (the invention) as stated in your post. It excepts necessity.
You did state that one can claim using MPF or functional claims. I found that in 6.5. That clause can only be read to allow such claim elements with known variants — which is precisely how they were authorized in the US prior to Rich and his merry crew rammed 112(f) down our throats.
Comparing the two clauses together — one cannot claim the novelty, the invention, functionally. Elements maybe expressed functional, provided there are KNOWN variants (the invention can hardly be found in a MPF element).
If you did not appreciate that this is what these clauses actually say, I would recommend that you think about them for a bit. They are in large measure in accord with US law prior to Rich.
Ned errs with the wishful thinking of a man possessed and wearing blinders – unwilling to see anything except what he wants to see with “That clause can only be read”
Sorry Ned – as that is simply not so. See 4.5.3. Note the claim as a whole parallel (which eliminates the canard of PON). Note the absence of the “Means” or “Step” mandatory type of direction.
Note that you continue to run away from the valid points I present. Tell me Ned, why is 112(f) NOT written in the words of Congress in mandatory terms?
Stop running away.
“2. Not novel. Conventional chocolate doresn’t adhere either (at least if you can specify the test conditions to favour non-adherence). ”
Huh?
link to google.com
Test conditions (say): Select from the range of conventional chocolate coating recipes, for minimum adherence to body temperature skin. Take thus coated chocolate finger out of the refrigerator, dot it down fleetingly on the body temperature finger, then inspect finger with the naked eye, for chocolate residues. If there are none, the chocolate has not “adhered” to the finger. ergo, claim not novel.
Test conditions lack clarity for at least he following:
range
conventional
minimum
body temperature
coated
fleetingly
inspect
residues
none
…and anon, your point is?
Are you saying that Ned is entitled to issue of his filthy claim, that gives 20 years of exclusivity to more or less all chocolate-coated finger biscuits, merely because you find room to assert that my test conditions are not clear? Is that it?
The statutory duty of Examiners at the EPO is to object, object, object, until satisfied that the application meets all requirements of the EPC. These requirements include clarity and novelty. Nothing unclear or of doubtful novelty shall get through to issue. Never mind my test. Ned’s claim it is, that is not clear and not yet shown to be novel.