By Dennis Crouch
University of Pittsburgh v. Varian Medical Systems (Fed. Cir. 2014)
Pitt won its infringement lawsuit against Varian with a $100 million verdict. The patent basically covers a digital image processor that watches surgical patients and provides a warning signal if the patient moves. U.S. Patent No. 5,727,554.
A divided Federal Circuit has affirmed – with the division being over the construction of the claimed “processing means comprising means determining movement of said patient from digital image signals, including movement associated with breathing by said patient.”
The patent statute permits patentees to claim elements according to their function using so-called means-plus-function language. 35 U.S.C. § 112(f). However, the properly interpreted scope of the means-plus-function claim terms is limited to corresponding structures found in the patent specification and their equivalent.
Here, the claim construction debate is on whether the corresponding structure for the processing means is a computer processor programmed to perform either (a) a two-step process or (b) a thirty-two step algorithm. The difficulty in interpretation is that the patent does not affirmatively link the claim language with either structure but instead leaves readers to their own conclusions. On appeal, a two judge majority (Judges O’Malley and Lourie) agreed with the lower court that the proper interpretation was the broader two-step requirement while the dissent (Judge Dyk) would have chosen the more narrow interpretation that would have likely led to a non-infringement determination. To the dissent, the “two-step process” disclosed in the specification only offers more functional language – not structure. The dissent explains his position:
The majority’s identification of structure—the two steps of detecting and tracking fiducials—relies on a single statement in the specification that “[a]s will be discussed fully, the patient motion detector 47 detects and identifies the fiducials 39 and then tracks their movement.” The majority concludes that this disclosure identifies the corresponding structure as a two-step algorithm because the specification “links this algorithm to the function of determining patient movement.” But the statement in the specification does not explain how the fiducials are detected and tracked or how performing those steps accomplishes the function of determining a patient’s movement during radiation treatment.
One rule that would likely flip this decision would be if ambiguity in claim language were construed against the drafter (i.e., the patentee).
= = = = =
The majority did reverse the willfulness finding that almost tripled the damage. On that issue, the court found that the infringer’s non-infringement and invalidity defense were reasonable (or at least not objectively unreasonable).
The case is also interesting , but for a different point, and that is damages. During re-examination, the patent owner added a new claim 38 that combined the movement detection system with a beam generator that provided “multibeam conformal dynamic radiotherapy” for a patient. I presume that it subject matter was disclosed, but I am not sure. But the point is that the defendant, Varian, argued that the beam generator was prior art and damages should not be extended to include the value of prior art items. The majority rejected this contention on two bases: first Varian did not make this argument to the jury, and second it is inconsistent with the Georgia-Pacific factors. On the latter point, the court observed that claim 38 was to the combination of the motion detection apparatus with the beam generator, and was not for the motion detection apparatus for a new use. With respect to the combination, there was testimony by the plaintiff of the incremental value provided by the motion detector to the combination. Varian’s position was further rejected because the cases they relied on were from an era involving lost profits where apportionment was required. That law no longer applies. Furthermore, the Georgia-Pacific factors specifically cover incremental value to a combination involving old apparatus.
“Here, the claim construction debate is on whether the corresponding structure for the processing means is a computer processor programmed to perform either (a) a two-step process or (b) a thirty-two step algorithm. ”
Um, not quite correct.
The dissent (and apparently many people here) missed this:
“Varian objected to the special master’s recommendation, and urged the district court to adopt a four-step algorithm instead, abandoning its argument regarding a thirty-step algorithm.”
As I initially said, this case is merely one of difference of degree – not one of difference of kind.
Lazy thinking again. You appear to think “well gee 4 is close to 2, unlike 30.” That is irrelevant. Varian must have been willing to argue for a four step process because one of the two steps in the four step process that was not in the two step process couldn’t be proven by the patentee. Therefore, it is a difference in kind because the two steps are dispositive of the case.
This case again proves the problem with functional claiming. The patentee disclosed one method of doing something and then argues an attempt to make it broader. Unfortunately, because he claimed under 6th, by statute it cannot be broader other than through equivilents, but to determine what the equivilent is to a step, you have to include the step as part of the claim. The majority again attempts to omit a necessary step (which is made worse, as the dissent points out, because it was the examiner found to distinguish over the prior art) in an effort to unfairly broaden the rights of the patentee beyond what he has made.
Random Examiner – not lazy thinking at all.
Correct thinking.
A tempest in a teapot here – much ado about nothing.
Move along.
(and explicitly – whether or not a ‘step’ was included or omitted between the two and four has nothing to do with what I posted about – the “lazy” here is you and your thinking that I am talking about the explicit result of this particular case while I am talking about the legal concepts in play)
Wake up.
Random, what happened here was that the claim construction of the District Court and of the Federal Circuit effectively read out of the claim of novelty – the “how to” extracted from digital images of a patient real-time patient movement. The prior art disclosed the use of laser beams on the patient for this purpose but did not use the patient’s image. The prior art disclosed the use of fiducials and cameras, but not for real-time determination of patient movement. Thus the soul novelty in the claim was how to extract from a digital image real-time information about patient movement such as breathing.
That point of novelty was argued to the initial examiner and to the re-examination examiners and gained allowance of the claims. The effect of the construction then, as you said below, is to read out of the claim it’s only novel feature.
How this patent is not invalid on this claim construction is beyond me. I would suggest that the patent owner again request re-examination and introduce the argument of the patent owner that the so-called “two-step” method is all that is corresponding to the processing means. This two-step method probably is insufficient to overcome the prior art because it simply states the desired result and does not require any of the novel steps. In other words, while there is an invention disclosed in the specification, it is not claimed.
Ned,
Do you think that the patent owner will claim that the two-step includes the other items (if push comes to shove)?
C = f1; f2 – as determined by the court
but if pushed further, patentee simply admits
f1 = Step1; Step2
f2 = Step3; Step4
anon, given the claim construction of the Federal Circuit and the argument about corresponding structure that was made in court, I think the patent owner any future re-examination will be required to amend into the claim some of the novel steps disclosed in the specification to distinguish over the prior art. This will of course introduce intervening rights they could have avoided had a they not advance such a ridiculous claim construction position in court.
No anon, he can’t admit that, since one of the steps isn’t infringed. That would not be the issue on appeal if it would be proven anyway.
The actual case is the same as every other junk patent:
f2(patent) = step3;step4
f2(infringer) = step5;step6;step7, etc.
Applicant argues that the claim language is f2 and f2 is infringed. There’s no proof that applicant ever possessed steps5-7, but because poor thinkers with a “ladder of abstraction” think f2 is sufficient claim language (even, apparently, some poor thinkers ON THE COURT and in the context of 6th of all things) they often (and incorrectly) prevail.
Surely you must understand that in the context of 6th at least, that steps 3-4 are the heart of the coverage and must be in the case, and steps 5-7 are not infringing. The court incorrectly holds the structure as f2, and comes to the wrong conclusion. It’s lazy thinking that is unbecoming of people whose job this is.
Random, since the patent owner argued both in the first prosecution and in the re-examination that the prior art did not disclose how to process a digital image to detect and determine patient motion, it is a wonder to me how the special master could have come to a conclusion that the processing step was fulfilled by a high level objective description rather than a more detailed description of how one processes the digital information from the image to determine patient motion. I can only think that it was the failure by Varian’s counsel.
But there’s another aspect to this case it really bothers me in that it looks like the patent owner took one position before the patent office on what was new over the prior art, and a decidedly different position in arguing corresponding structure regarding the processing limitation. As you say, patent owners urge a narrow construction to obtain the patent and then a broad construction defined infringement. While one assumes in the ordinary case that the defendant will raise the issue of inconsistent positions, at which point can everybody else point out the inconsistent positions taken by the patent owner so that the argument to the court can be viewed more than just litigation advocacy, but an fraud on the court. See e.g., United Business Communications v. Racal-Milgo, Inc., 591 F. Supp. 1172 (D. Kan. 1984). link to scholar.google.com
Random Nonsense,
LOL – I took a serious look at your response and there is nothing there – absolutely nothing – except your rather noxious (and completely unsubstantiated) attack on ladders of abstraction.
You clearly still do not understand the ladders of abstraction concept whatsoever.
You use that word “lazy,” but I think that you do not know what that word means.
Ned at 15.1.3.1.2.1 – your link is off, as it takes me to
“APPLIED DIGITAL DATA SYSTEMS INC., Plaintiff, v.
MILGO ELECTRONIC CORPORATION et al., Defendants.”
In general Ned, my point above seems to have not reached you. I wonder if you are intently searching for a lower wrong when a higher rung already includes that lower rung (I have not researched the case, so I am positing this as a question rather than as an assertion).
You seem intent on thinking that the special master missed something. Could it be that you missed something and that the special master did not?
(sigh)
“wonder to me how the special master could have come to a conclusion that the processing step was fulfilled by a high level objective description rather than a more detailed description”
A step up on the ladder of abstraction does not read out that which is below that step Ned.
Ned,
Do you feel that arguing in the alternative, or mere inconsistencies is the same as what happened in the UBC case?
(I think that you may be doing that over-reading thing again…)
The link to UBC v. Racal-Milgo is here
link to scholar.google.com
The point of the case is that making it argument to the court that is inconsistent with the arguments made are being made to patent offices, in the case linked, a German counterpart patent application currently in prosecution, is fraud on the court.
If you had not been lazy and had read my post below with the quote from the dissent you would see that there is NO difference in kind – even for the larger step size argument. This is simply not the case that the chum would indicate. Functional claiming would be allowed by the dissent as well.
Move along now – nothing to see here (unless you want to take note as to what legal structure is per the dissent).
anon, the discussion of the special master’s report in in the majority opinion. The dissent never argued that the four step process was corresponding.
But one thing seems clear from reading the opinion including the whole discussion about damages was that Varian shot itself in the foot time and again by changing its litigation positions. had they argued for four step process to the special master rather than the full, 32-step process, they may have prevailed. Also, given the prosecution history taken as a whole and given that the sole novelty argued time and again was the process for determining patient movement from digital images, how the special master could have come to a different result is almost beyond imagining. The Varian attorneys must not have made this argument during claim construction because the result cannot be explained without assuming that Varian did not make the argument.
Ned, read my comment at 6.2.3 to relate to my post at 15.1.4.
To help us all understand whether the precise algorithm for the distinguishing movement was incorporated by reference, the question has to be answered by whether that subject matter was argued in distinguishing the prior art. I think it was, at least in the underlying prosecution.
The following argument was made in connection with claim 19 that became claim 20 in the patent:
Claim 19 is an independent claim which calls for, inter alia, camera
means generating digital signals and processing means comprising means determining movement. of the patient from the digital image signals including movement associated with breathing by the patient, and gating means generating gating signals synchronized with the movement associated with breathing by the patient. Fujita teaches generating signals associated with patient breathing from direct measurement of chest position using an ultrasonic detection system. It does not suggest using digital images generated by a camera to detect breathing. Gerig, et al., as mentioned, can only determine patient position at a repetition rate of five seconds, obviously too slow to detect breathing. Furthermore, there is nothing in Gerig, et al. to suggest how the rhythmic movement associated with breathing could be extracted from a camera image. Accordingly, Claim 19 is patentable over any combination of Gerig, et al. and Fujita.” Applicant Remarks of June 30, 1997, pages 9-10. (emphasis supplied)
I don’t follow you Ned. Claim 19/20 apparently recited a camera and the cited documents didn’t even suggest a camera.
What are you concluding from that?
Read the highlighted portion. This is where the algorithm for determining rhythmic movement is incorporated by reference in the argument for novelty. It is there, else the claim would not have been allowed.
I think Les is asking a different question: why are you talking about claims 19/20?
Les, the prior art did disclosing using cameras and fiducials. Thus the argued novelty is that the prior art did not disclose “how the rhythmic movement associated with breathing could be extracted from a camera image.”
The “how” then becomes the invention, because everything else was old – from the use of fiducials, to the use of cameras, even the use of laser beams that are monitored by cameras. What was new was the methods and algorithms used to determine and predict patient movement from not only fiducials, but from other images of the real person.
I must say I have not yet reviewed the re-examination, in my opinion might be altered after that review, but based solely on the prosecution history before the initial examiner, it appears that the novelty was in the method, the “how.”
I have now had a chance to review the re-examination, and nothing in it changes my view that the point of novelty over the prior art has to do with the real-time processing of camera images of a patient to determine movement. Thus that is the invention. Everything else in the claim is old from the use of cameras, to real-time processing of other things than digital images of the patient to determine movement.
Thus the claim construction of the majority read out of the claim the only novelty as argued repeatedly to the patent office in obtaining allowance of the claims.
Then why didn’t the examiner require recitation of that in the claims?
Les, it was means plus function. See, In re Donaldson.
I am not sure that that answers the question, Ned.
Fujita teaches generating signals associated with patient breathing from direct measurement of chest position using an ultrasonic detection system. It does not suggest using digital images generated by a camera to detect breathing.
This is the kind of total b.s. argument that the softie wofties always seem to get away with. Digital cameras predated this application by many years, as did their use to detect things. There is no teaching away in the prior art from the use of digital cameras to detect *any* kind of movement because that is what digital cameras do. Likewise, there is no question that more subtle movements than “breathing” were detected with “digital cameras” prior to this application. Researches in all kinds of disciplines were using digital cameras to detect subtle movements since the invention of such cameras.
But somehow the PTO and the courts love to pretend they were born yesterday whenever a compooter of some sort is mentioned in the claims. Why is that? When will it end?
Those silly electrons, neutrons and protons have been around very nearly forever. The way they bond to each other is one of the oldest things in the art. But somehow the PTO and the courts love to pretend they were born yesterday whenever a molecule of some sort is mentioned in the claims. Why is that? When will it end?
/eyeroll
somehow the PTO and the courts love to pretend they were born yesterday whenever a molecule of some sort is mentioned in the claims.
In fact, the opposite is true and practioners in the chemical arts are routinely asked to provide evidence of unexpected results.
But go ahead and engage in your path0l0gical lying. It’s what you do.
You keep on using that word “lying” I do not think that that word means what you think that word means.
LOL – it is a lie only – and exactly – as much as your mirrored statement is a lie.
Your sarcasm meter is broken.
“The majority concludes that this disclosure identifies the corresponding structure as a two-step algorithm because the specification “links this algorithm to the function of determining patient movement.” But the statement in the specification does not explain how the fiducials are detected and tracked or how performing those steps accomplishes the function of determining a patient’s movement during radiation treatment.”
So what? There a zillion ways to do those two steps. The invention is at the level of those two steps. At least a preferred embodiment was also disclosed. That is all that is required. The examiner searched for the 2 step process and found nothing. I know this because the patent office applies the broadest reasonable interpretation. The 2 step process was what was invented.
The argument that it was only the 32 step process that was covered is absurd on its face. Why would anyone bother getting a patent on the 32 step process that can so easily be worked around?
Finally, a court got one right!
The invention is at the level of those two steps.
Detecting a marker and tracking the movement? That’s in the prior art. Really, really old prior art.
Why would anyone bother getting a patent on the 32 step process
Maybe because it works and represents a valuable improvement over other processes.
If the prior art didn’t work, then its not prior art, its science fiction.
You said it didn’t work, both here and in another thread, or at least you implied it, because the prior art didn’t include the “important aspects”.
Remember : “See also, e.g., ’554 patent col. 6 ll. 63–64 (“An
important aspect of the invention is the fine tuning of the tracking templates called for at 120 in FIG. 6.”); id. col. 5 ll. 9–12 (“The invention satisfies these requirements by utilization of successive levels of filtering and templates which are modified to accommodate for actual conditions.”).
… which, as pointed out by the dissent, were relied on to get a patent over old prior art which (surprise!) “used markings to track a patient’s movement during radiation treatment more than ten years before the ’554 patent’s priority date.””
See also, e.g., ’554 patent col. 6 ll. 63–64 (“An
important aspect of the invention is the fine tuning of the tracking templates called for at 120 in FIG. 6.”); id. col. 5 ll. 9–12 (“The invention satisfies these requirements by utilization of successive levels of filtering and templates which are modified to accommodate for actual conditions.”).
… which, as pointed out by the dissent, were relied on to get a patent over old prior art which (surprise!) “used markings to track a patient’s movement during radiation treatment more than ten years before the ’554 patent’s priority date.”
You said it didn’t work, both here and in another thread
No, I didn’t.
or at least you implied it
There is no “implication” that the prior art “did not work” in the text that you posted. Nice try, Les. Go ahead and try another lie. I’ll just keep busting you. But go ahead anyway.
Of course there is. How could it work if it didn’t include the aspects they you say are so important to the present invention?
How could it work if it didn’t include the aspects they you say are so important to the present invention?
Les, you are reading the inventor’s description of his own invention. That’s not a description of the prior art.
Second, saying that something is “important” for an improvement is not the same as saying that the prior art “did not work.”
Why would any of this have to be explained to someone who is presumably an adult with some knowledge of patent law?
This is why we have to ask the question again: are the patent teabaggers really as st00pit as they sound? Or are they just habitual liars who can’t help but simply make sh*t up when they get busted?
It’s a serious question. These people think they’re really sooper dooper important and smart. But they’re not. Mainly they’re m0r0ns and liars, shilling for their own self-interests. They’ll do and say anything to keep the party rolling, and screw everybody else.
Dennis knows this as well as anybody. So does Jason.
LOL – I love how you implicitly sign up both Prof. Crouch and Prof. Rantanen as full-fledged believers in your rantings.
Nothing like trying to put words in their mouths.
Here’s a better idea: lose your ad hominem and vapid posting techniques, learn and focus on the law and put that self-anointed English as a First Language Skill to use by actually posting with intellectual honesty and making some honest-to-goodness points in law and fact.
Give it a try.
I love how you implicitly sign up both Prof. Crouch and Prof. Rantanen as full-fledged believers in your rantings.
I’ll debate anybody, anytime, about your path0l0gical lying habits, Tr0llb0y. Pretty much every day you add to your stockpile of b.s.
My presumption is based on Dennis’ expressed recognition of your “crazy person” tendencies and the fact that you regularly direct your psych0path puke funnel at him. He knows what you’re all about.
I mean, Dennis and Jason are pretty smart. We can all disagree about stuff (and we do!) but it’s really only you and NWPA who have the habit of lying about other commenters you disagreee with on a daily basis.
You haven’t noticed this? Of course you haven’t.
You want an actual debate? LOL – stop running away
LOL. I’m right here, Tr0llb0y. And I’m responding to your b.s. all the time, every day. Nobody has responded directly to more of your nutjob b.s. than I have. Nobody.
Running away? LOL. Like I said: you’re a path0l0gical liar. You just can’t help yourself.
“. And I’m responding to your b.s. all the time, every day”
LOL – Malcolm, here’s a clue: your “responding” is not working out all to well for you.
That’s why I am asking that you improve your, um, “responding” by dropping the ad hominem and other typical trite and tired CRP from your limited script and try basing your comments in actual law and facts.
“responding” is not answering in an intellectually honest manner with arguments poised with law and facts.
(in case you have not yet noticed, it is your typical ‘responding’ that is by far what is excised from the threads – think about it)
>It’s a serious question. These people think they’re really sooper >dooper important and smart. But they’re not. Mainly they’re >m0r0ns and liars, shilling for their own self-interests. They’ll do >and say anything to keep the party rolling, and screw everybody >else.
Whenever you lose arguments, you get mean. Man, MM, you are one mean little mind. You must be a paid blogger.
NWPA cracks a funny one with “Whenever you lose arguments”
I cannot recall even a single instance in which Malcolm won an argument.
Les, consider this from the dissent:
“Second, the additional steps were included because
they were necessary to distinguish the prior art. The prior
art used markings to track a patient’s movement during
radiation treatment more than ten years before the ’554
patent’s priority date. In the initial office action rejecting
the application that issued as the ’554 patent, the examiner
cited U.S. Patent No. 5,446,548, which disclosed
“camera means 130, 160, passive fiducials 111–114, and
processing means 200” as part of a “position/movement
detection system subsidiary to the main (treatment)
system.” Examiner’s Initial Rejection of Patent Application
at 4, 5, Ser. No. 08/715,835, (P.T.O. Feb. 28, 1997).
The examiner also identified three other prior art references—
U.S. Patent Nos. 5,295,483; 5,558,430; and
5,389,101—disclosing “[p]lural cameras used to track
patient position in conjunction with camera-identifiable
fiducials.” Id. at 5. The application for the ’554 patent
included the additional steps, described above, to distinguish
the abundance of prior art. Claim 20 cannot be
construed broadly to cover all methods of determining
patient movement by tracking markings that are visible
on a patient.”
Of course, this raises the issue of whether the means for detecting was in fact the novel feature of the claim or something old, novelty lying elsewhere. The Federal Circuit is never good at telling us the big picture so that we can understand whether it was critical to include all the steps of the larger algorithm in order to preserve validity, or whether they can be substantially ignored because any motion detector would suffice.
As I have often said and I will say here again, functional claiming of old elements is okay and accepted. However when a novelty lies in the one element, functional claiming is not permissible. One must define the invention either in the claim, or when using means plus function, in the specification.
“was in fact the novel feature of the claim ”
Onward ho mighty canard…
Ned, tell me again what was the “Point of Novelty” in Diehr (hint, think computer program).
Ned, tell me again what was the “Point of Novelty” in Diehr (hint, think computer program).
Diehr wasn’t about functional claiming at the point of novelty. Relying on Diehr to respond to the problems created by functional claiming at the point of novelty just shows that you’re completely desperate.
More importantly, Dierh’s patent was a quintessential junk patent if there ever was one. As has been noted repeatedly by commenters, the eligibility analysis of a claim that implicates a particular technology will change when that technology becomes conventional. No claim like Diehr’s claim would ever be deemed eligible or patentable today. It should’ve never gotten out of the PTO in the first place.
All that Dierh stands for is mind-numbingly trivial proposition that a claim does not become ineligible per se simply because it recites an algorithm. That’s it. Big deal.
Does not answer my question, Malcolm.
No desperation on my end, at all – PON is a canard, so I really don’t care what the answer is – but the fact that neither you nor Ned care to be consistent in your treatment of the canard – that is interesting.
That you seek to provide your typical, um, “legal” answer of ad hominem is not really a surprise.
Does not answer my question, Malcolm.
You had already provided your own answer to the question, Tr0llb0y.
(sigh) I was looking for your answer or Ned’s answer.
Yes I already have my answer because yes I know and understand the law.
It is your turn.
Please do not dodge again.
tell me again what was the “Point of Novelty” in Diehr (hint, think computer program).
Straight from the case:
Respondents characterize their contribution to the art to reside in the process of constantly measuring the actual temperature inside the mold.
. . .
Because the temperature inside the press has heretofore been viewed as an uncontrollable variable, the conventional industry practice has been to calculate the cure time as the shortest time in which all parts of the product will definitely be cured, assuming a reasonable amount of mold-opening time during loading and unloading. But the shortcoming of this practice is that operating with an uncontrollable variable inevitably led in some instances to overestimating the mold-opening time and overcuring the rubber, and in other instances to underestimating that time and undercuring the product.
The point of novelty is not in the computer program. It is in an industrial process which involves a computer. Again, straight from the case:
According to the respondents, the continuous measuring of the temperature inside the mold cavity, the feeding of this information to a digital computer which constantly recalculates the cure time, and the signaling by the computer to open the press, are all new in the art.
. . .
The respondents’ claims were not directed to a mathematical algorithm or an improved method of calculation but rather recited an improved process for molding rubber articles by solving a practical problem which had arisen in the molding of rubber products.
. . .
Their process admittedly employs a well-known mathematical equation
It is clear that the computer program is not the point of novelty. The equation is well known. The point of novelty is the industrial process as a whole.
The point of novelty is the industrial process as a whole.
More specifically, the “point of novelty” is the combination of a computer with an old industrial process (hey lookie — it’s automatic now!).
Why Diehr’s junk claim was not deemed obvious in view of reams of prior art teaching of the computer automation of other industrial processes is one of those great mysteries of patent law. But it does illustrate why the patent teabaggers are obsessed with using 103 instead of 101.
Paul,
In one sense, your ‘straight from the case’ ignores the art – the process of constant monitoring was accomplished by a computer program. All else was old in the art. It is very much clear that if you do NOT accept claim as a whole (as Ned and Malcolm do not) then the PON has to be something other than claim as a whole.
That’s kind of the entire point of my sticking it to Ned.
And in a critical sense, you cannot answer this question from your vantage point, because you are not coming from the vantage point of those who are (errant) in their attempted use of the canard.
While I will not argue that the proper interpretation involves the claim as a whole (remember, I firmly hold that PON is a canard), the use of that canard does not follow your view here. Thus, please let those holding the view that PON is not a canard explain themselves.
Note that I have politely asked for this legal explanation several times, and have yet to have a thoughtful and intellectually honest response provided.
the process of constant monitoring was accomplished by a computer program. All else was old in the art.
The process of “monitoring a process” using a computer was also old in the art.
Note that I have politely asked for this legal explanation several times
LOL. And you were given answers. You just didn’t like them so, as usual, you pretend that it didn’t happen.
You’re a path0l0gical liar.
You see how he works, Dennis? Of course Dennis sees this. It’s what you do here every day. You’re a liar, plain and simple. You can’t help yourself.
Get help.
Anon, please do not conflate issues.
Claim-as-a-whole is a straight jacket on how you are permitted to analyze claims in certain context. People can argue against claim-as-a-whole while accepting the advance over the prior art could be in the combination of old elements. Claim-as-a-whole and what are the advances of the prior art in a particular claim are two separate issues.
Paul,
That is not my conflation you need to be concerned about.
Do you want me to again quote you Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966) on what claim as a whole means? It means the novel elements of the claim, the point of departure over the prior art.
From Graham:
“Here, the patentee obtained his patent only by accepting the limitations imposed by the Examiner. The claims were carefully drafted to reflect these limitations and Cook Chemical is not now free to assert a broader view of Scoggin’s invention. The subject matter as a whole reduces, then, to the distinguishing features clearly incorporated into the claims.” Id., at 34.
Other elements are considered only to give context and meaning.
Absent, a point of novelty, all claim elements are considered. That is the way they are considered when examination STARTS. It not the way they are considered after.
Graham is controlling authority on this point. It is the LAW.
This is the nth time I have quoted the law to you, only to have you pretend that I did not.
There is dicta in Diehr that is consistent. The point of novelty is evaluated to determine whether one is attempting to claim the ineligible. That notion was clearly confirmed in Prometheus.
anon, your misunderstanding of what “claim as a whole” means is critical to your misunderstanding of a lot of what goes on in these 101 cases, let alone ordinary patent prosecution where the obviousness of the novel features are argued every day in determining the patentability of claims.
Do you want me to again quote you Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966) on what claim as a whole means? It means the novel elements of the claim, the point of departure over the prior art.
Of course that’s what it means: you can’t simply ignore the improvements described in the claim and say, e.g., “this is just another tractor — therefore obvious.” Trivial.
Unless of course the new element is information, in which case the the express language of 103 gets chucked out the window … except when it doesn’t.
When the patent teabaggers jump up and down about “claims as a whole” all they really are trying to do is steer the Examiner into approaching 103 as if it were 102. The reasons for doing that are, well, quite obvious.
Ned at 13.2.1.2.2.5 -what section of law are you grossly misusing the case law of Graham for?
You are attempting to use something non-101 in a 101 context.
Ned, tell me again what was the “Point of Novelty” in Diehr (hint, think computer program).
Tell me again how I am ‘ignoring you’ when you refuse to answer my question.
That’s really ‘compelling‘
/eyeroll
anon, the point of novelty is critical when the issue is functional claiming. The Supreme Court case law is replete with this phrase.
But, as we know, Rich, the CCPA and the Federal Circuit do not follow Supreme Court case law, but pretend it never existed, and make it up as they go.
You still have not answered my question on Diehr Ned.
You are attempting to use something non-101 in a 101 context.
This from the path0l0gical lying hypocrite who screamed “claims as a whole” at everybody for years when we talked about the relationship between eligibility and the prior art.
What a joke these teabaggers are.
With or without highlights, the only joke here is plain to see: why is it that both you and Ned refuse to answer a straightforward question, instead insisting on kicking up as much dust as possible.
The question remains unanswered.
Malcolm’s quip of “The process of “monitoring a process” using a computer was also old in the art.” reveals one of the flaws in both his pet theory and his overall approach to the jurisprudence of 101 .
It does not matter that ALL elements of a claim are “also old in the art,” as perfectly patent eligible and perfectly patentable (and yes those are two distinct and different legal concepts, no matter how often Malcolm wants to conflate the two) claims can exist with ALL elements being old in the art.
This has been pointed out to him (and his sockpuppet farm at PatentDocs) from the very beginning of his proselytizing of his pet theory. That pet theory comes down to a singular and rather unremarkable proposition that an unattached thought totally in the mind and unconnected to any other claim element will not change the status of whatever else it is that you are trying to claim. He kicks dust all over the fact that this [newthought] must be both unconnected and totally in the mind – neither of which pertains to software in general and the software that was the “Point of Novelty” in the Diehr case in particular. It is also the reason for the utmost delicious irony of Malcolm so proudly being the first to provide the link to the Office view of the Prometheus case without understanding what that link meant. For even a preposterously badly written case (from a legal perspective) that is nothing more than a Chamberlain like 9-0 bone tossed to Breyer does not mean what Malcolm thinks it means.
Ned, tell me again what was the “Point of Novelty” in Diehr (hint, think computer program).
Tell me again how I am ‘ignoring you’ when you refuse to answer my question.
(the silence screams volumes)
Ned – I haven’t read the entire file history. However, if the Examiner didn’t require the means for language to be amended to include a means for doing the allegedly argued filtering or whatnot, then the filtering must not have been necessary to provide novelty or non-obviousness.
The Examiner gives the claim language broadest reasonable interpretation. In this case he would have had to interpret it as encompassing both the broadly described two step process and the 32 step process.
Well, Les, I have yet to view the reexamination, but the applicant did argue that the prior art disclosed no “suggestion as how the rhythmic movement associated with breathing could be extracted from a camera image.”
This argument made the way to do this essential to the novelty of the claim regardless that the examiner did not require the detailed method be set forth.
“So what? There a zillion ways to do those two steps.”
You don’t understand 112, 6th do you?
You don’t understand 112, 6th do you?
All Les understands is that patents are sooper dooper awesome and anyone that tries to prevent a single patent from being granted is nothing but an ignorant technology-h@ter.
Once you appreciate these basic fact about the patent teabaggers who troll this blog, all the weird gibberish that comes out of their mouths is instantly explainable.