Federal Circuit: How Not to Describe the Invention

Patent,

By Dennis Crouch

X2Y Attenuators v. US International Trade Commission as well as Intel, Apple, & HP (Fed. Cir. 2014)

In this case, the Federal Circuit affirms a narrow construction of X2Y’s claim terms based upon a disavowal of scope. In the face of USPTO pleas for patentees to more particularly define claim terms, this case offers reasons for applicants to push-back against that approach.

The decision here fully and problematically supports the current patent drafting norms where the true nature and advances offered by inventions are hidden in order to avoid unduly limiting claim scope. Under standard patent drafting technique, no elements are described as necessary, critical, preferred, or even discouraged. And, “the invention” is never particularly defined or called-out. That strategy has the result of substantially decreasing the disclosure value of a patent.

= = = =

The founder of X2Y Tech was Mr. Anthony A. Anthony who passed away in 2012 while continuing to fight for royalty agreements from major manufacturers. During his life, Anthony obtained more than 100 patents covering a variety of electronic components and circuitry configurations.

X2Y’s claims require a set of electrodes but do not expressly indicate their relative configuration. The specification discusses a particular “sandwich” configuration of electrodes and the USITC found that the claims should be construed as also requiring the sandwich formation. On appeal, the Federal Circuit affirms – finding that the language of the specification requires that the claims be so limited.

Under Phillips v. AWH, the specification and prosecution history of a patent can provide insight into proper the claim interpretation. In addition to the scope-shading offered by Phillips, scope disclaimers or term definitions coming from the applicant can dramatically shift claim scope. However, the law requires that any disclaimer must be found in a clear and unambiguous statement made by the applicant.

In this case, the specification refers to the sandwich configuration as “universal to all the embodiments” and as “an essential element among all embodiments or connotations of the inventions.” The court finds these statements to represent a “clear and unmistakable disavowal of claim scope.” The standard for finding disavowal, while exacting, was met in this case.

To be clear, an important element of the decision here is that the disavowal is not tied to any particular claim language, but applies to all claims of the patent without regard to their express claim terms. In fact, the court goes even further and found that statements made in some family-member applications also apply to establish the disclaimer here.

The court notes that one mechanism for overcoming the disclaimer in a child application would be to expressly amend the claim scope so as to reject the disclaimer – of course that result may well have written description problems.

A unanimous majority opinion was filed by Judge Moore and joined by judges Reyna and Wallach. Judge Reyna also filed a separate concurring opinion discussing whether claim construction must come before determining whether a priority claim is proper.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

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331 thoughts on “Federal Circuit: How Not to Describe the Invention”

  2. 30

    Consider the interface between provisional applications and the requirements of §112(a). If such a provisional application to uses the standard gibberish of most US specifications, one cannot tell from such a specification what the invention is. Now consider further that such a specification was filed without claims. Can such a specification satisfy the written description requirement as defined in Ariad?

    1. 30.1

      Far too many will file a provisional that is, as they say, lawn clippings gathered and thrown into a bag.

      That being said, the contents of the bag are what they are. Keep in mind the time (and cost factors) and think of the provisional in a gold-mining analogy. The provisional is a claim to land that has a stream on it, that stream having provided a nugget. The prospector files his claim to the wide area, in order to have a legal claim to gold later found in the stream.

      Does his possess the gold in the stream if he possesses the stream?

      Or, more to your point, I think, can he quantify how much gold will be found in the stream?

      Maybe he finds silver instead. Since provisionals – by law – are not subject to examination, is your attempt to apply case law stemming from examinations truly applicable?

  3. 29

    Given i) the disappointing response to my #28 ii) that drafting inventor-optimally for the US courts is irreconcilable with drafting optimally for the courts everywhere else in the world, and iii) that what one drafts today will be considered by the courts 20 years from today, tell me, which of the following options is best for a conscientious and competent drafter, acting assiduously to protect the interests of her Inventor Client:

    a. draft for the US Courts (ROW will come round to the US view, sooner or later)

    b. draft the way the ROW does it (the courts of the USA will adapt to it, sooner or later)

    c. draft two patent applications, namely, one for the USA and one for the ROW. Take care to file them on the same day, to avoid falling foul of Paris Convention priority rules. But can the Applicant’s “profanity” within her ROW priority document somehow anyway be “incorporated” into any US court proceedings, to “taint” or “pollute” the US patent that derives from the US-exclusive priority filing?

    d. follow the advice (whatever that is) given by numerous pundits in innumerable conferences that address the thorny issue how to draft the universal (that is, both USA and ROW) patent application. Attending such conferences has the advantage that one can acquire Continuing Professional Education points.

    Can anybody name another jurisdiction on Earth, that needs a separate patent application, set apart from the one that serves optimally everywhere else on Earth, in order to secure full patent protection within its boundaries? To serve my clients, I need to know

    1. 29.1

      Max, two applications.

      Note from Dennis’ post: “Under standard patent drafting technique, no elements are described as necessary, critical, preferred, or even discouraged. And, “the invention” is never particularly defined or called-out. ”

      In the US, the claims as-filed define the invention. I am not sure that the ROW will not follow suit. But, until then, two applications just may be best practice.

      Max, how do US specs fair in Europe? Do we have to file two as well?

      1. 29.1.1

        Ned put it this way: if domestic-focussed Americans ever do work out how to draft properly, the Rest of the World will soon be toast. Most American filers have it all stitched up at home but have not yet punched their weight overseas. When US filers come to the idea that the ROW market is worth more than the US market, and draft accordingly, they will get better results in courts other than those of the USA.

        Ned of course the claims define the Invention, everywhere on Earth. Of course the claims are to be construed in the context of the specification, all over the world. That’s not the point. The point is, what’s the “Invention” (as of the filing date) for which Applicant is petitioning for 20 years of exclusive rights (with validity tested as of the filing date and not later than that). Is it (judged as it is on the as-filed document) worthy of those exclusive rights? What has been “contributed” to the technical field, the state of the art? Outside the USA, an invention is the solution to a technical problem. What’s the problem and what’s the solution, the contribution offered by the Inventor in the WD? That’s the question, and it’s judged on the drafting. If Applicant chooses not to front up, with what her contribution was, that’s OK, probably wise for the US jurisdiction, but elsewhere in the First to File world, she will then have to take the adverse consequences.

        There is a nice Paper by an American professor of patent law entitled something like “Getting away from the Cult of the Claim” and advocating a reversion from peripheral to central claiming. Talk about re-inventing the wheel. What a graphic demonstration of the parochialism of academics. Did nobody tell the good professor that Europe resolved and finessed out of the tension between the opposite extremes of peripheral (England) and central (Germany) claiming back in 1973, when it drafted the EPC?

        Ned as far as I know, it is standard supra-national corporate practice (even for inventions made in Europe) to draft one doc for the USPTO and a different one for filing under the PCT. I don’t know any other country in the world where this double filing is thought advisable or necessary.

    2. 29.2

      Are you “disappointed” that your hoped for One World Order has not as yet overcome national sovereignty, MaxDrei?

      Do you view this as a mere ‘ugly-Americanism?”

      Is “optimally serve” to be accepted on its face? Without recognition of individual sovereignty or the diversity of politics and agreements that more truly reflects our current reality?

      It is with wry amusement that I would draw a parallel with the EPO as a mini-State-Federal system to the US Federal system of patents. Before our constitution sanctioned the patent system as a Federal system, we too had a state by state system. Even before we had a centralized court body (the CAFC), regional effects still persisted even within the single Federal system. The take-away is that the “ease” you desire is a mirage, a fantasy. As Einstein has said: “Everything should be made as simple as possible, but not simpler“

      1. 29.2.1

        Same old piffle. Same old blah, blah blah. But putting all that tosh to one side, anon, and getting back to reality just for a moment, what do you advise your clients, when they want patent protection both in the USA and somewhere else in the ROW as well? Is it to draft two separate WD’s, or trust to just one? It seems that you have never had that dilemma.

  4. 28

    A propos “essential” and the like, here’s something useful on “patent profanity”:

    link to finnegan.com

    I still think one can draft with a WD of the Invention that is effective to secure protection in the ROW without being profane in the USA.

    Or, to put it another way, it is bad also in the ROW to be profane when drafting.

    1. 28.1

      Thanks for the link MaxDrei,

      One important consideration (often lost on those who think we already have One World Order), is that profanity is particularly primed to each sovereign’s laws and the case law interpretations of those laws.

      One really must be aware of the distinction between “would be nice” and “is the law.”

  5. 27

    OT – Dennis, I’m looking forward to extensive coverage of the recent opinion in the case of Muffin Anderson v. Kimberly Clark. Ms. Anderson, appearing pro se, is understandably upset about the district court’s dismissal of her patent infringement claim and demand for … wait for it … 50 billion dollars.

  6. 26

    Part of the problem is that you take an English description of an invention and translate it to the arcane language of claims.

    Then the Courts have to translate the claim language back to some kind of plain language so it can be understood by the Court (the Judge) and then maybe by a jury of the common people.

    It’s like translating everything into Nesite (a long-dead language spoken by the long-dead Hittites) and then translating it back.

    It’s nuts.

    The trend of the past several decades is to write Laws in plain language (as much as possible) so that the meaning of the Law can be understood.

    We should do that with claims.

    Why can’t an invention be particularly pointed out and distinctly claimed in plain English?

          2. 26.2.1.1.2

            The overall guidance, as in all of them taken as a whole, are now more or less exactly what I said they should have been pre-alice. The change after alice, where all of the exceptions are to be treated the same was just what I said it was supposed to be before alice. So I’m totally on board with that.

            The only thing which I recall that remains in need of attendance is their “guidance” so to speak as to how to figure out if there is an abstract idea/phenom/law at play. But, that said, it is probably about as good as a bunch of engineers can come up with and we’ll probably be stuck with it for a decade or so.

            All said. Not bad. A tiny ways to go maybe.

            Anything in specific on your mind?

              2. 26.2.1.1.2.1.2

                “Are the examiners rejecting under 101 using the new guidelines?”

                I’m sure at least some are. Everyone that I know of and have asked at least knows of them and were informed of the change (mass email went out announcing it). They just sent out a new FP yesterday for people to use.

                “How big of an affect do you think it is going to have?”

                Compared with the status quo right before the alice case I’d say not that huge. Most of the things that are now 101’d under the new guidelines would have been 101’d under the old guidelines as well. But there will surely be some effect. Hard to predict the exact magnitude. And it will vary by art. The change in my AU will be practically nothing. The change in certain others will likely be rather large.

                Of course if you’re asking for a comparison to pre-bilski then the change is rather large.

                Also as my mom used to correct me: the word is “effect”.

              3. 26.2.1.1.2.1.3

                From reading PatentDocs, I would gather (surprisingly) that the post-Alice changes are affecting the Bio and Biochem arts in the most severe manner.

              4. 26.2.1.1.2.1.4

                “Also as my mom used to correct me: the word is ‘effect’.”

                Oh the irony of being corrected by somebody who uses “later” when he means “latter” and “difference” when he means “deference.”

                Lulz upon lulz upon lulz.

              1. 26.2.1.1.2.2.1

                I’m not sure – but I think it is more than just the econ stuff and is the whole “Gist/”Abstract”” double edged sword that the folks at PatentDocs are freaking out about.

              2. 26.2.1.1.2.2.2

                Well, anon, I agree that the SC is floundering after Bilski and they are adrift.

                But they drift in the direction of Hotel Security and its progeny which makes this whole discussion simple: non statutory subject matter in a claim is to be ignored for 102/103 unless integrated.

  7. 25

    What strikes me about the comments particularly by Dennis is a complete lack of connection with reality.

    This is reality: In-house counsel have a huge incentive to have patent applications be as concise and understandable as possible. That is FACT.

    I have worked for most large tech companies. If you name 4, I have probably worked for 3 of the 4. EVERY in-house attorney I have worked for has demanded that the applications be as easy to read as possible and as concise as possible for portfolio management.

    THAT IS REALITY!!!!!!!!!!!!!!!!!!!!!!!!!!!!!

    The fiction that is being pawned off on the masses is made up to burn the system down.

    The obscurity that comes in some application is because of 1) there are a few bad actors and the PTO is terrible at policing them, 2) the law has become unreasonable. This functional business by LEMLEY (THE DIRT BAG) for example, is counter to all patent law and counter to anyone that actual writes applications. We can see that Lemley is out to burn the system by the fact that he never addresses practical considerations which should guide the discussion.

    1. 25.1

      And, for those that aren’t sure what is going on: look to the practical everyday what needs to get done and whether the anti-patent judicial activist (nearly criminal intent) crowd say about the practical. They simply do not address the practical issues. They ignore them because the practical issues expose them as the $ying dogs they are.

      REALITY: EVERY IN-HOUSE COUNSEL FOR MAJOR TECH COMPANIES WANTS PATENT APPLICATIONS TO BE AS CONCISE AS POSSIBLE AND AS READABLE AS POSSIBLE FOR PORTFOLIO MANAGMENT. Reality. Try to put into your psychotic disconnected cognition. (But, Lemley knows exactly what it is doing. Just read some of his comments. The functional canard will “solve” the software problem.)

      1. 25.1.1

        And, for those that doubt me: Ask yourself, will the anti-patent crowd address this issue.

        Is it true that in-house counsel want (and demand) patent applications to be as concise and readable as possible?

        If that is a true statement, then their entire premise is wrong and the real problems we are having is that case law and judicial activist are preventing real patent attorneys from doing their job the way the client wants.

        THAT IS REALITY!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!

        !!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!! REALITY !!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!

        1. 25.1.1.1

          Moreover, the reality is that patents are used by large corporations to manage innovation. They set goals of a number of patent applications and pressure the engineers to come up with that number of new innovations. The in-house counsel want the applications to be understandable so they represent the innovation that occurred.

          !!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!! REALITY !!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!

          This has been a reality break from your normal psychotic discussions. We now return to your normal psychotic discussions that have nothing to do with reality.

          MM, says ….

            1. 25.1.1.1.1.1

              Life is generally good. Lots of positive developments recently.

              Of course, dealing with the constant battle of the paid anti-patent crowd, ignorant judges that were appointed based on promises to burn the system down, CJ of the PTO burning down the system to get stock options, and a shadow director hired by industry and bidding her time for the stock pay off is a pain.

              1. 25.1.1.1.1.3.1

                I do. Thanks for asking. How about you? Maybe you could spend some time in an ethics boot camp. Might help you to understand the outrage some of us feel towards the anti-patent crowd.

              2. 25.1.1.1.1.3.2

                LOL – no, I don’t think more outrage is what either of us needs. I was thinking the beach, or something like that – lots of quiet meditation.

              3. 25.1.1.1.1.3.3

                anon, no kidding.

                I will add, though, that the one “patent troll” I worked for delighted in filing bloated incomprehensible applications.

                Corporations on the other hand that had real products are laser focused on concise understandable applications.

                Perhaps a study on that would be interesting. Size of patent application might correlate to the trolls.

              4. 25.1.1.1.1.3.4

                And, anon and DanH, we don’t need less outrage we need less outrageous behavior. It does sound like you need that ethics boot camp DanH.

                We need more outrage in response to outrageous behavior–not less.

              5. 25.1.1.1.1.3.5

                How are the materials on the ladders of abstraction that you were going to find coming along? (you see a not-so-subtle difference there? – I typically INVITE input – especially input on germane points under discussion, albeit the points I invite do tend to be rather inconvenient for those with ulterior motives, but I do invite them to fully discuss the merits)

                LOL – I’m sure that someone knows what you’re talking about.

                I’ll keep an eye out for this “Malcolm” fellow that you’re so concerned about. He sounds scary.

              7. 25.1.1.1.1.3.7

                “I will add, though, that the one “patent troll” I worked for delighted in filing bloated incomprehensible applications.”

                Well I’m glad to hear you owning up to “reality” at least a tiny bit.

        2. 25.1.1.2

          “Is it true that in-house counsel want (and demand) patent applications to be as concise and readable as possible?”

          I frankly don’t know, but if they are then whomever they’re demanding this from are abject failures in a huge portion of cases.

    2. 25.2

      “The fiction that is being pawned off on the masses is made up to burn the system down.”

      The “fiction”! What a riot! You can point to 10 random patents and point out at least 5 of them that (probably all 10) that do exactly what was related in that “fiction”.

      “1) there are a few bad actors and the PTO is terrible at policing them, ”

      How exactly do you “police” them without a good solid statute (or maybe even “rule”) to do so with re re?

      1. 25.2.1

        6, that is factual wrong regarding random patents.

        How do you police them? Use 112. But, I will say that the PTO rules on 20 claims has cleaned up patent applications a lot. They may consider such a restriction on the number of pages. And, consider Lemley’s functional claiming nonsense and the fact that it encourages giant applications.

        So, one answer would be to start charging extra for over 30 pages and make it clear that functional claiming is fine and that it covers scope of enablement. Then you would start to see some snazzy patent applications. Readable. Filled only with what is new.

        But, of course, the anti-patent crowd would rather claim that functional claiming isn’t ok and that scope of enablement is nonsense and burn the system down rather than addressing the real practical issues.

        1. 25.2.1.1

          You see 6, your little dirt bag friends make life hard on everyone. You just haven’t figured it out yet. If reality was dealt with properly, almost all the problems we have now could be fixed rather quickly. But, instead we have to deal with psychotic delusions of reality and intellectually dishonest characterizations of the world.

          1. 25.2.1.1.1

            “You see 6, your little dirt bag friends make life hard on everyone. You just haven’t figured it out yet. If reality was dealt with properly, almost all the problems we have now could be fixed rather quickly. But, instead we have to deal with psychotic delusions of reality and intellectually dishonest characterizations of the world.”

            Well I must say that I don’t see how they’re “making life hard one everyone”. Maybe on some few applicants or drafters. But not “everyone”.

        2. 25.2.1.2

          “Use 112.”

          How exactly does that rejection go? Because I surely do not have a FP for that and have never seen 112 used in such a fashion.

          “But, I will say that the PTO rules on 20 claims has cleaned up patent applications a lot. They may consider such a restriction on the number of pages. And, consider Lemley’s functional claiming nonsense and the fact that it encourages giant applications.”

          Why don’t we just do the restriction on the number of pages + Lemley’s suggestion at the same time? (not that I’m for lemley’s suggestion)

              1. 25.2.2.1.1.1.1

                Don’t you remember? It was just like yesterday when you said that you did not want to have a conversation on law (this being a legal blog and all, a bit strange), but that you ONLY wanted to play our little “med-control game with your obsession on me.

                You face palm at the oddest times.

              2. 25.2.2.1.1.1.2

                “Don’t you remember? ”

                I don’t even know what you’re asking me if I remember.

                “It was just like yesterday”

                I don’t know what “it” is in your sentence.

                “did not want to have a conversation on law”

                If I said I did not want to have a conversation on law then I likely meant I didn’t want to discuss it with you brosefus. Other people are probably fine.

                ” but that you ONLY wanted to play our little “med-control game with your obsession on me.”

                Last I remember discussing the “med-control game”, aka your mental conditions, I thought I asked you if it would be cool by you if I just don’t talk to you. You know, on account of you having OCPD (set aside the psychopathy) and my not really being able to help you with that, and since it causes problems. And I have yet to see the reply if any is present.

              3. 25.2.2.1.1.1.3

                LOL – the obsession and pre-occupation you have with me is the very same “med-control” thing that I mock you with.

                The “med-control” is not my mental condition – but yours.

                You are doing that projecting thing again.

              4. 25.2.2.1.1.1.4

                “the obsession and pre-occupation you have with me is the very same “med-control” thing that I mock you with.”

                Yes, thinking about an ashat that is constantly causing inter-personal problems all over the board every other time he posts is totally having an “obsession” with him. Right. Newsflash re re, unlike your constantly thinking about laws, rules, ethics, order, truth and right/wrong the only time I’m thinking about you is after you’ve posted something, or more likely posted something that causes a problem. Though I do find your conditions very interesting even irl outside of blogging, your conditions are not you.

                In any event, since I’m so blatantly “obsessed” with you then that must also be why your “mocking” me has everyone thinking you’re totally sane. Including the nice man Martin that promised not to feed your condition anymore by refraining from responding to you. I’ll simply say that perhaps if the whole blog took that generous stance then some progress might be made in others dealing with your conditions, at least on the board.

  8. 24

    LOL, fun quote of the day:

    “…you have my sympathies when you truly don’t know jack squat about the art, but this is an application for an official entitlement from your federal government, not popping down to the supermarket for a loaf of bread. I’m still, and always will be of the opinion that it is time to get your sht together. “

    1. 24.1

      The question in many cases is always: how would a patent attorney skilled in the art of identifying a target ripe for the picking and then filing claims to extort money from that target understand the scope of the claims?

      The Supreme Court made that very clear.

        1. 24.1.1.1

          News flash, Billy: there’s lots of innovation going on that doesn’t involve, much less require, a bunch of patent attorneys dreaming up ways to grift off another company’s success via patent litigation.

          Seriously. I know it’s nearly impossible for you to believe but it’s true. People actually do program computers, for real.

          1. 24.1.1.1.1

            Nice non-sequiturs.

            Second paragraph is absolutely meaningless as it is untethered to this conversation. There is no link between your statement and the topic here. No one is arguing that people do not program computers for real. What you seem to fail to understand is that programming computers does involve invention. For real.

            First paragraph draws fallacious implications in more than one manner. It assumes that all (or even most) litigation is frivolous and untowards. It also assumes that all patents are litigated. It also assumes that patents are only sought to be litigated. It also assumes that litigation per se is bad. It also assumes that it is patent litigators driving the large scale use of the patent system. And finally (for now) it also assumes that wanting to make money in a legally valid system is somehow “bad.”

            NONE of these assumptions have any merit.
            All of them rely solely on the frenzied use of “rhetoric.”

            The venom you carry for the very profession you project to be a part of should cause you concern. Such cannot be healthy for your psyche. That shows very clearly.

            1. 24.1.1.1.1.1

              “The venom you carry for the very profession you project to be a part of should cause you concern. Such cannot be healthy for your psyche. That shows very clearly.”

              Examiner Mooney is clearly not a practitioner, or “agent” in his parlance, but if he were the amount of self loathing he’s bottling up would surely have consumed him by now.

  9. 23

    “…the specification refers to the sandwich configuration as “universal to all the embodiments” and as “an essential element among all embodiments or connotations of the inventions.”

    The court finds these statements to represent a “clear and unmistakable disavowal of claim scope.” “

    1. 23.1

      Anyone who knows anything about patent law would not so find:

      Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In reVan Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) (Claims to a superconducting magnet which generates a “uniform magnetic field” were not limited to the degree of magnetic field uniformity required for Nuclear Magnetic Resonance (NMR) imaging. Although the specification disclosed that the claimed magnet may be used in an NMR apparatus, the claims were not so limited.); Constantv. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571-72, 7 USPQ2d 1057, 1064-1065 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988) (Various limitations on which appellant relied were not stated in the claims; the specification did not provide evidence indicating these limitations must be read into the claims to give meaning to the disputed terms.); Ex parteMcCullough, 7 USPQ2d 1889, 1891 (Bd. Pat. App. & Inter. 1987) (Claimed electrode was rejected as obvious despite assertions that electrode functions differently than would be expected when used in nonaqueous battery since “although the demonstrated results may be germane to the patentability of a battery containing appellant’s electrode, they are not germane to the patentability of the invention claimed on appeal.”).

      The above is taken from the Manual of Patent Examination Procedure section 2145(VI)

      link to uspto.gov

      1. 23.1.1

        Les,

        Reading limitations from the specification into the claims is a separate issue.

        You may want to review estoppel and statements made by an applicant maybe held against the applicant.

            1. 23.1.1.1.1.1

              I didn’t miss anything. Original claims are part of the specification. If they conflict with the detailed description, they conflict and there may be some issue to be resolved. The conflict does not authorize reading limitations from the description into the claims.

              Whats good for the goose is good for the gander. The courts and the Office can’t find a claim invalid or rejected because a limitation from the description is not included in the claim and at the same time read a limitation from someone elses description into their claim. The courts have to pick one rule and stick with it.

              1. 23.1.1.1.1.1.1

                “The conflict does not authorize reading limitations from the description into the claims.”

                Not the nuanced point Les.

                The nuanced point has to do with what estoppel means.

                (and I agree with you concerning reading into the claim or not – but as I mentioned, an application can be tripped up for what is on the record outside of what is strictly in a claim – or what is not strictly within a claim. For example, if an applicant admits to something being prior art, either in his specification, of in a response (the applicant’s admission is on the record), then the applicant is held to that item being “prior art” – even if that item is in fact NOT prior art.

                Estoppels are a nuance that needs to be appreciated over and above the focus you have.

    2. 23.2

      If the court’s characterization of what the specifications say was accurate I agree anything without the sandwiching would be disclaimed. However, the specifications do not say what that quote says. In the ‘500 patent, a more compete context for the quoted sniper is

      “Center common conductive pathway electrode 14 is an essential element among all embodiments or connotations of the invention and when joined with the sandwiching outer two common conductive
      pathways 14 together act as inherent common conductive 25 pathway” col 19 ln 21-26

      It is clear that the “Center common conductive pathway electrode” is essential to all embodiments, but before we get to “sandwiching” in the sentence we run into “and when”. The sandwiching, in my opinion, clearly might be present, and if so that leads to certain combined properties.

      Worse is the characterization that ‘444, by incorporation of ‘350, that sandwiching is “a feature universal to all embodiments”. The snippet in ‘350 in context is
      As can be seen, many different applications of the differential and common mode filter architecture are possible and review of several features universal to all the embodiments must be noted. First, . . . “ col. 20 ln 14-17

      None of the 440 words from this point to the end of the specification includes “sandwich”. In fact, as mentioned, but dismissed in the opinion, everything that is encompassed under this statement is permissive!.

      The claim drafting lesson is do not say:
      As can be seen, many different applications . . . are possible and review of several features universal to all the embodiments must be noted. First, the material . . . may be one of a number in any of the embodiments including but not limited to . . . .

      Second, in all embodiments whether shown or not, the number of plates, both common conductive and electrode, can be multiplied . . . .

      Third, additional common ground conductive plates surrounding the combination of a center conductive plate . . . may be employed to provide . . .

      Finally, from a review of the numerous embodiments it should be apparent that the shape, thickness or size may be varied . . . the differential and common mode filter,. . . could easily be fabricated in silicon . . .

      1. 23.2.1

        Thanks George.

        Yet another indication that the court sees what it wants to see and disregards the rest.

        lie lie lie
        lie lie lie lie lie lie lie
        lie lie lie

  10. 22

    AAA JJ the idea that one of ordinary skill in the art should be able to determine what “the invention” is just from reading the written description is just plain wrong.

    Between the claims as originally filed and the written description, every “invention” that will ever be claimed by the applicant needs to be clearly set forth such that one skilled in the art can understand what the invention is and how that invention differs from the prior art (it’s sort of important to know that so you can avoid engaging in infringing activities).

    If the claims as originally filed flatly contradict the written description (by failing to include an element that the written description states is essential), then you’ve got an indefiniteness problem. Now that the Supreme Court has smacked the CAFC in its ridiculous face again, it’s going to be an incurable problem in most cases.

    This isn’t very difficult stuff, folks. Most of us in the grown-up arts figured out pretty early how to write applications that left us lots of wiggle room and plenty of fall back positions. Yes, you need to be smart and work hard to accomplish that task. And yes if you stick your head and the sand pretend you were born yesterday and have no knowledge of the prior art (computers can process information? really?) then you are pretty much doomed to fail. Too bad for you.

      1. 22.2.1

        Billy, if your invention isn’t described in a manner that distinguishes it from the prior art, then it isn’t an invention.

        Thanks for playing, Billy. When you finish your booger sculpture, ask your mommy for a prize.

            1. 22.2.1.1.1.1

              As previously discussed, your version of Muncie Gear is suspect (at best).

              What exactly – hear – are you attempting to use the case for, Ned?

              Certainly, Muncie Gear does NOT hold that you must particularly announce the difference between your invention and the prior art.

              Again, Ned, the point you are attempting to make – that the invention be described – is simply NOT a point at issue. No one is arguing that you cannot describe your invention. The point here is that your description of your invention does not require you to designate the state of the art and particularly state the delta to that state of the art. If the law was so written, if such was actually required, Jepson claim writing style would be a requirement.

              Not only is such not the case, Jepson claim writing style is an artifact [sic] of a bygone era and – is itself – largely considered patent profanity.

              1. 22.2.1.1.1.1.1

                Actually, since Rich limited the holding of Muncie Gear to new matter, the issue has not been raised again in litigation that I know of.

                But now we find every Rich reversal of Supreme Court cases and established doctrines that are challenged, to the Supreme Court level, are reversed.

                And, since Ariad, it is clear that Muncie Gear is back in play.

                The Supreme Court held in Muncie Gear that the anti-cavitation plate invention claimed in the amendment was not described in the application as filed where the application as filed sought to claim the anti-tort plate as the invention. Considering that the anti-cavitation plate was fully described in the specification as filed, we can only conclude that the failure of written description here had to do with a written description of the invention requirement that did not indicate that the anti-cavitation plate was even new when the application was filed.

                “Harry L. Johnson, an experienced engineer and manufacturer of outboard motors, filed his application for the patent on August 25, 1926, but in no way suggested the combination now asserted as his invention. The single sheet of drawing accompanying the application was not changed during the prosecution of the application, and is the same as the drawing of the issued patent. This drawing showed an outboard motor assembly comprising, among other things, an engine at the top connected with a propeller at the bottom, with an anti-cavitation plate located horizontally above the propeller, approximately midway between top and bottom of the housing for the engine and propeller shafts. All water passages for the cooling system beneath the normal water level were shown to be enclosed in the housing. No cross section of this housing was drawn or indicated, and for all that appears from the drawing it might have been circular, triangular or rectangular. The drawing showed an arched member extending from the housing and anti-cavitation plate over the top and to the rear of the propeller, containing openings and passages for the intake and discharge of water, and ending in a curved “deflection plate” extending rearwardly like a fixed rudder. From the specifications and claims, it appeared that the purpose of the deflection plate was to compensate for the side and pivotal force of the moving propeller, which tended to draw the boat off its course unless the operator made constant adjustment to offset the “side throw.” The specifications and drawings both indicated an anti-cavitation plate which the specifications said “prevents cavitation,” but it was in no way asserted that the cavitation plate was new, or that it 762*762 was being employed in any novel cooperative relation to the other elements.

                All of the claims of the application as originally made were rejected on December 15, 1926. On December 13, 1927, Johnson offered amendments which retained and amended the prior claims and added others directed to the feature of the deflection plate. In urging allowance, he said, among other things, “It is conceded that cavitation plates are old in the art as shown in the patent to Johnson cited,” and he proceeded to urge as an invention the combination of the cavitation plate and the arching member or deflection plate. A similar supplemental amendment was filed on January 19, 1928. Several of the original claims as amended were allowed, and the rest of the claims rejected, on June 7, 1928.

                On December 8, 1928, Johnson came forward with new claims. Claims 20 to 25 offered by this amendment made no mention of the deflection plate or of the arching members, but did not even suggest the presently asserted invention. On March 30, 1929, Johnson cancelled these claims and offered further amendments to his original application, together with a supplemental oath that he had invented the subject matter of the application as so amended, prior to the filing of the original amendment.[2] The effect of those changes was aptly described by the patent examiner: “The amendments have been such that the claims now emphasize the anti-cavitation plate rather than the anti-torque plate.” With changes which are immaterial here, the new claims so offered became the claims in issue.”

                …

                “Concededly, the original claims were limited additionally either to the deflection plate or to the arched support. But claims without these limitations had, contrary to Petitioners’ assertions, been filed December 8, 1928. The difference in date is critical because the record shows that the only manufacture of devices embodying the invention which had occurred more than two years prior to December 8, 1928, was licensed manufacture by Johnson Motor Company, predecessor of Respondent Outboard, Marine & Manufacturing Company, and in 1926, exclusive licensee of Respondent Johnson Brothers Engineering Corporation, owner of the application for the patent in suit. . . . The only concern which produced outboard motors in accordance with the invention of the patent in 1926 was the exclusive licensee under the application for the patent in suit. . . . March, 1929, would be more than two years after the opening of the 1927 model year; but the actual date in December, 1928, when the patentee claimed the specific invention in controversy, without regard to deflection plate or arched support, was well within two years of the first competitive use of the invention, even assuming that the 768*768 two year period is of any significance in the present case. . ..”

                It is clear to us, however, that the amendments of December 8, 1928, like the original application, wholly failed to disclose the invention now asserted.

                The claims in question are invalid if there was public use, or sale, of the device which they are claimed to cover, more than two years before the first disclosure thereof to the Patent Office. Cf. Railway Co. v. Sayles, 97 U.S. 554, 557, 559, 563-64; Schriber-Schroth Co. v. Cleveland Trust Co., supra, at 57. Section 4886 of the Revised Statutes would in terms provide for their invalidity had they been offered by application rather than by amendment; and whatever may be the efficacy of an amendment as a substitute for an application, it surely can effect no more than the application itself.”

              2. 22.2.1.1.1.1.2

                That’s a whole h311 of a lot of dust-kicking Ned.

                Let’s get back to the point, shall we?

                There is no requirement that the (yes needed) description be of the type of description that explicitly reaches back into the prior art, notes exactly what was prior art and what is the particular distinction separate from that prior art.

                Would this be “nice?”

                Sure.

                Is this a requirement?

                Most definitely not.

                Any attempt by you to extend Muncie Gear to something that the case does not address, merely because it “sounds good to you” is simply improper over<-reading that you are so prone to do.

                The point of the matter is that neither Ariad nor Muncie Gear address the particular type of description being advanced as legally required here.

                That the cases discuss having A description is not at issue. The issue here – explicitly – is whether the description must of the “Jepson-claim style type of description. One can describe something adequately enough to have the content to overcome prior art without ever even referencing any prior art per se. A perfectly valid description can be obtained with absolutely zero discussion of what the prior art holds. Such a “zero-description-of-prior-art” application can FULLY meet the law as explained by the cases of Ariad and Muncie Gear, and thus shows the fallacy of trying to make the “nice to have” into some “need to have.”

                I do hope that you are not so naive as to not realize that what is going on here is a subtle goalpost moving of the law from “need to have” to “nice to have.”

                One of Prof. Crouch’s weaknesses is the painting of “nice to have” as somehow being the law and thus creating a de facto re-writing of the law. It is a malady that can readily and almost imperceptibly infect those that love a common law development scheme – and a malady that I daresay that you are heavily infected with.

              3. 22.2.1.1.1.1.3

                “Considering that the anti-cavitation plate was fully described in the specification as filed, we can only conclude that the failure of written description here had to do with a written description of the invention requirement that did not indicate that the anti-cavitation plate was even new when the application was filed.”

                Simply put – you are simply wrong. Your “only conclusion” is forced conjecture, and ignores our previous discussion on inherency, CIP, and new matter completely.

                You are doing that contorting Ned-IMHO-law thing again.

              4. 22.2.1.1.1.1.4

                Anon, you did note the quotation from the record by the Supreme Court that the applicant at one point argued that the cavitation plate itself was old?

                I think Malcolm and I both agree that specification as filed, and this includes the claims as filed, and this is consistent with Muncie Gear as well, must describe to one of ordinary skill in the art what the inventor regards as his invention.

                If one starts claiming subject matter not described in the specification as filed as an invention, or claimed as an invention in the claims as filed, and then Muncie Gear is on point.

              5. 22.2.1.1.1.1.5

                “must describe to one of ordinary skill in the art what the inventor regards as his invention.”

                Once again Ned – that’s not at issue.

                Read my posts: “must describe” and “must describe in Jepson style” are two very different propositions.

                Obtuse? Is it deliberate? (said in the best Any Dufresne tones)

  11. 21

    Is there any reason that the attorneys who filed this lawsuit shouldn’t be sanctioned?

    I just wonder what their theory of the case was, given what was in the specification.

    Maybe they were the kinds of attorneys who post here obsessing about the 1952 patent act. You know, w a nk ers.

    1. 21.1

      Nice non sequitur (about the 1952 Act).

      The Rule of Law and the separation of powers doctrine are still rather important (just because you don’t care about the law – nor about ethics – does not mean that everyone else does not care).

      1. 21.2.1

        But, they agreed to a common claim construction with patents that did have the disclaimer. That was attorney malpractice.

        1. 21.2.1.1

          Pretty bold statement Ned – and assumes facts not in evidence.

          Do you know that counsel did not act on direction of client in the matter?

  12. 20

    Yet another case of patent yin-yang.

    What’s good for the public ends up being bad for the inventor …

    What’s bad for the public ends up being good for the inventor …

  13. 19

    After the following and other Fed. Cir. decisions and numerous CLE presentations on this subject, how is it one preparing applications could not anticipate this patent litigation problem? [Perhaps, as one comment below suggests, the decline of partner supervision of new patent attorney or agents? Or the [related] increase in clients more concerned with getting prep and prosecution cheap than quality supervision?]
    For some Fed. Cir. decisions based at least in part on the patent using the word “invention” in the specification, see, e.g., C. R.Bard Inc. v. U.S. Surgical Corp; No. 04-1135, (Fed. Cir. 2004); Modine Mfg. Co. v. United States Int’l Trade Commission, 75 F.3d 1545, 1551(Fed. Cir. 1996); Storage Technology Corp. v Cisco Systems Inc., 66 USPQ 2d 1545 at 1553 (Fed. Cir. 2003) [where the Court expressly relied on the fact that a particular term was used in a subtitled “Summary of the Invention” specification paragraph to render that term (which was only in the claim preamble) an express claim limitation]. Also, SciMed Life Systems Inc. v. Advanced Cardiovascular Systems, Inc. (Fed. Cir. 11/14/01) and Gaus v. Conair Corp. 70 USPQ2d 1380 at 1384 (Fed. Cir. 2004)

    1. 19.1

      Thanks for reminding me Paul, of the reason for dropping the sub-title “Summary of the Invention” and replacing it with the sub-title “Summary”. Things have come to a pretty pass, when the outcome of patent litigation depends exclusively on whether the drafter remembers to delete the words “of the Invention” in the sub-title in question.

      Charles Dickens famously wrote “If the law supposes that, said Mr Bumble,…… the Law is a Ass”

      Is the law today any less fatuous than it was in 19th century London? It seems not.

    3. 19.3

      paul,

      “Invention” is hardly the only no-no word. I had a link of prolific patent profanity around here somewhere – if I find it, I’ll post it.

  14. 18

    Thanks Ned, and friends.

    We see here discussion about the relative complementary roles of the claims and the written description. We see mention of how the PTO draws up the terms of reference of the search.

    Two thoughts.

    The specification does not have to describe exhaustively the entire area embraced by the independent claim. One or more (depending on the nature of the Invention) will suffice to enable. So looking at the written decription alone is not enough, for drawing up the terms of reference of the PTO patentability search.

    At the EPO, examiners are required to search for the subject matter which the Applicant will be claiming, later, when it sees the results of the search that break the patentability of Claim 1 as filed. How do they do that? By being sure to search, in particular, the core of the contribution, as revealed by the illustrated embodiments, and the promised enhancements in performance that they will deliver.

    At the EPO, rigorously avoiding anything that carries even the slightest hint of “patent profanity” will have the consequence that the claims will fail, because you cannot establish later, in prosecution, that they corresponded to an inventive step that was already made before the application was filed.

    I welcome this debate as a contribution towards the solution of the problem, how to draft to be effective at both the USPTO and the EPO.

  15. 17

    “And, ‘the invention’ is never particularly defined or called-out.”

    Uhm, probably because the law states where “the invention” should be particularly defined or called-out. Do you know where that is? I’ll give you a hint: it ain’t the written description.

    “That strategy has the result of substantially decreasing the disclosure value of a patent.”

    Silly overstatement.

  16. 16

    Judge Reyna’s patent ignorance really shows in his dissent. He’s obviously trying to prove he has some patent ability, but someone should tell him that “it is better to be silent and be thought the fool then open your mouth and remove all doubt.”

    He is basically saying that the entitlement to priority from the prior applications should have been determined first. In reality, the effective filing date of the claims is meaningless in this case. The prior applications were incorporated by reference. Whether they were a benefit application or someone else’s application with no priority claim makes no difference. In the asserted patents, the patentee could have easily disavowed the disavowal in the incorporated applications. Who cares what the effective filing date is?

    And to think N00bs like Reyna are going to be helping shape important issues like 101 in the future.

    1. 16.1

      Patent leather,

      The ‘444 patent, a CIP, did not have the disclaimer. The earlier specs, incorporated by reference did.

      I think this is a clear indication that the patentee revoked the earlier disclaimer and should not be bound by it despite the incorporation by reference.

      I agree with Reyna’s analysis. The claims stand on the ‘444’s specification (a CIP) itself, not on subject matter incorporated by reference. In my view, that subject matter is supportive of enablement, but it does not count as written description support or a disclaimer until it is expressly amended into the specification.

      1. 16.1.1

        So if you incorporate the provisional by reference in the non-provisional you are stuck with statements made only in the provisional?

        1. 16.1.1.1

          Fish, any matter incorporated by reference is non essential material unless it is set forth in the specification by amending it in. Something adversely said in the incorporated material is not an admission against interest in the application because the applicant did not rely on it.

          1. 16.1.1.1.1

            Not sure I buy that line of reasoning, Ned.

            “Non-essential” is not a correct identifier – leastwise, for all purposes of incorporation. Sure, it is non-essential in at least one respect. But is focusing solely on that one respect the right view?

            The incorporated by reference material may not have been relied upon for one particular effect. But this does not mean that the material is not relied upon for other effects. Clearly, there are aspects being relied upon.

            Ask yourself: is the court here using the notion of any reliance to bind the applicant for the sum total of the content being introduced by the party? (think not only statements against interests, but also admissions of a party opponent – two separate concepts)

            I would think that a party introducing the item to be on record must take any affirmative steps to disclaim something that he does not want on the record.

            1. 16.1.1.1.1.1

              anon, according to the concurring opinion, what did the patent owner in was to treat the claim terms the same way throughout the applications, so that is what did the patent owner in.

              2. 16.1.1.1.1.1.2

                anon, with respect to the patents did not have the disclaimer, the concurring opinion noted that it was the agreement by the patent owner to construe the claims the same way for all patents that did him in.

              3. 16.1.1.1.1.1.3

                LOL – Ned, it is still uncertain whether you are agreeing with me.

                “treating [ ] the same way’ can be taken as a form of estoppel quite apart from a view of clear claim disavowal.

                Read again my post at 16.1.1.1.1 and my reply to Les at 23.1.1

                I think you are attempting a much too narrow read here.

          2. 16.1.1.1.2

            Ned, that’s just not correct.

            1.57(c) states, ‘”Essential material” may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference. ‘

            The ‘444 patent incorporated the ‘350 and ‘249 (both with the problematic language) by reference. These were issued patents at the time of the ‘444 filing. There is simply no requirement that any “essential material” be copied into the ‘444 specification here. The IBR statements in ‘444 was EFFECTIVE to bring in all that other text from the other patents.

            I’m not aware of any doctrine where an incorporation by reference is “watered down” when incorporating an enabling benefit application. See Cook Biotech, Inc., v. Acell, which was similar to this case in that an application incorporated by reference was problematic to the instant patent. The application IBR in that case was NOT a priority application. Did Reyna not even read this case?

            The Fed Circuit has a pattern of not rescuing lazy attorneys. The drafter’s of the ‘444 patent could have dropped the IBR statements and simply pasted the portions of the other specifications they wanted. Or they could have said, “the X embodiments are not universally required” (or something like that) in the ‘444 specification.

            If you IBR, you do so at your own risk.

            1. 16.1.1.1.2.1

              patent leather, essential material can be incorporated by reference, but if one is going to claim it, one has to set forth in the specification as well. That can be done by amendment. Thus, one does not have to incorporate the disclaimer.

              What did the patent owner in in this case was the agreement to treat the claim terms consistently throughout all patents in suit, including patents where the disclaimer was in the specification.

              1. 16.1.1.1.2.1.1

                “essential material can be incorporated by reference, but if one is going to claim it, one has to set forth in the specification as well.”

                Ned, this is incorrect. Care to show me the rule that requires you to copy essential matter incorporated by reference from an issued patent/publication into the spec? read MPEP 608.01(p) again.

      2. 16.1.2

        In the ‘444 patent, the patentee could have explicitly disavowed the “essential” language present in the priority application (by saying the feature is not essential, etc.) . Even though you say that language wasn’t repeated in the ‘444 language, but it was by virtue of the IBR. Their attorney should have read all IBR docs carefully and explicitly disavowed any language they felt was problematic for the current application.

        What if the document IBR was not a priority document? Would your analysis change? It shouldn’t matter.

    2. 16.2

      “Judge Reyna’s patent ignorance really shows in his dissent. He’s obviously trying to prove he has some patent ability, but someone should tell him that “it is better to be silent and be thought the fool then open your mouth and remove all doubt.” ”

      Speaking of fools with open, drooling mouths, perhaps some one should point out to Patent Heather here that no dissent was made in this case (by Judge Reyna or anyone else).

      1. 16.2.1

        OK fine, it wasn’t technically a “dissent.” Big whoop. I still say the “concurrence” was useless.

        2. 16.2.1.2

          And big LOL on “not ‘technically’ a dissent”.

          It also was “not ‘technically’ a Crispy Creme Donut”, you know.

          Nor was it “technically” a Goodyear Blimp.

  17. 15

    Maybe this is an argument that applicants should invoke the option of means + function more often. After all, if you’re going to be limited to the specific embodiments you actually disclose, you might as well get the upside-benefits of 112(6th).

    Then again, maybe it’s a matter of degree – the “structural equivalents” standard might still be a little tighter than whatever we have here.

    1. 15.1

      Ken, I disagree about 112(f) — that is, unless and until the Federal Circuit recognizes that old elements should be given the full scope of the claim language itself. I claim, “means for attaching,” an old element in the combination. I disclose a nail, but anything will do: screws, tape, glue, bolts. Whatever.

      Today, the Federal Circuit limits one to the nail and equivalents — thus imposing a narrow structural construction on something where particular structure has nothing to do with the invention.

      The narrower construction should be justified if and only if the means element is the point of novelty.

      2. 15.1.2

        Ned, I’ll admit to not knowing much about that…but in any event, so long as courts are interpreting “means + function” in the way that they are for the time being, rightly or wrongly, wouldn’t my point still stand (at least as a practical matter for current applicants)?

        1. 15.1.2.1

          Ken, given the downright weird Federal Circuit jurisprudence in this area, deciding cases in the abstract without reference to what the invention is and whether the claimed element is new or old, I would generally avoid MPF like a plague.

          The Federal Circuit just may be the worst example of a Federal Circuit court in history. Pray they improve.

          1. 15.1.2.1.1

            Ken, given the downright weird Federal Circuit jurisprudence in this area, deciding cases in the abstract without reference to what the invention is and whether the claimed element is new or old, I would avoid MPF like a plague.

            The Federal Circuit just may be the worst example of a Federal Circuit court in history. Pray they improve

  18. 14

    Clearly, Lemley and his functional judicial activism is the biggest threat to patent beside the fictional abstract 101 test.

    Dennis, if you want to contribute to patent quality get Lemley off the functional claiming business. That clearly has nothing to do with actual inventions and patent applications.

    In all arts, there are many solutions to each element of the claim. Under Lemley’s burn the system to the ground approach a patent application would have to be about 10,000 pages. I interview inventors all the time. They say yes I know lots of ways of doing A and I am sure there are 10 other ways.

    So, A + B + C, each having 20 ways is what? And under Lemley’s burn the system to the ground approach we would have to put in how many embodiments?

    2. 14.2

      In all arts, there are many solutions to each element of the claim.

      And the first person to provide one way does not get all of them. This is not “functional judicial activism”, it is a necessity to the system working at all.

      They say yes I know lots of ways of doing A and I am sure there are 10 other ways.

      Do you think patent law should or does gives him the 10 other ways he just admitted he doesn’t know?

      So, A + B + C, each having 20 ways is what?

      The fact that you personally cannot conceive of a manner in which to identify the important structural features of a limitation doesn’t mean they don’t exist. There was just a case on here two days ago where the court found that a set of structures was described (the problem being that other undescribed structures still fell under the claim language)

      1. 14.2.1

        “They say yes I know lots of ways of doing A and I am sure there are 10 other ways.

        Do you think patent law should or does gives him the 10 other ways he just admitted he doesn’t know?”

        How did he admit he doesn’t know the other 10 ways of doing A? He said he is sure there are 10 other ways.

        As I noted in a prior post, the case law is clear: the applicant does not have to describe every single possible embodiment that is covered by the claim.

        Get. Over. It.

        1. 14.2.1.1

          AAA “Impeach the Judges who Don’t Use the Words I Like” JJ brings on the deep thoughts: the case law is clear: the applicant does not have to describe every single possible embodiment that is covered by the claim.

          The case is clear that the applicant leaves out descriptions of potentially valuable embodiments, preferred or otherwise, at his/her own peril.

          The case law is also clear that you are perfectly free to pretend you were born yesterday and try to claim “the world and everything in it.”

          When you fail to get the results you desire, however, that’s your problem. Grow up and quit your crying. You embarass professional patent attorneys.

        2. 14.2.1.2

          How did he admit he doesn’t know the other 10 ways of doing A? He said he is sure there are 10 other ways.

          Is this a real question? There’s no distinction between not knowing and not disclosing, that’s what the written description does. But to humor you: The statement that there are 10 other ways of doing something new, absent a disclosure of those 10 new ways, operates as an admission that applicant has failed to describe the full scope of his claim. There’s a significant argument to be made that if the applicant knows of one single way but intentionally withholds it that he shouldn’t get the scope (i.e. while generally the rule is that one need not describe every embodiment, the rule may be different for intentionally withholding.)

          the case law is clear: the applicant does not have to describe every single possible embodiment that is covered by the claim.

          True, but a failure to disclosure a structurally different embodiment may later defeat the claim if it is considered significant enough that the Applicant did not disclose it. You tread into dangerous territory when you ask the court to make a leap from what structures were disclosed to completely different infringing structures. The very breadth of the claim would defeat it.

        3. 14.2.1.3

          AAA JJ, in combination claims, the elements, many of them, can be old. One does not have to disclose every variation of these old elements, but the claim should cover all of them if functional language is used to describe these old elements.

          But when it comes to the novel structure itself, this is the combination. The all elements rule prevents one from discarding or ignoring elements.

          Moreover, one cannot claim the combination as a whole functionally.

          So while I agree somewhat with your statement, it has to be nuanced just a bit.

          2. 14.2.1.3.2

            “Moreover, one cannot claim the combination as a whole functionally.”

            This is simply a wrong statement of law.

            As I have pointed out to you in your error of reading Frederico, it is ONLY the single means claiming that is verboten. It is perfectly legitimate to have a multiple means claim, and have each and every means claimed functionally.

            Of course, a distinction being glossed over here is that there is a difference between PURE functional claiming and having, within a claim, descriptions that use functional language. This is nuance that is also sought to be obscured.

          3. 14.2.1.3.3

            “Moreover, one cannot claim the combination as a whole functionally.”

            I don’t know if I agree with that. Take a look at claim 10 of U.S. 6,415,276, which recites:

            10. A sensor diagnostic apparatus comprising:

            calculation means for calculating probabilities of a Bayesian belief network wherein said network comprises at least one sensor-status node, at least one process-variable node, and at least one sensor-reading node;

            input means for inputting information to said calculation means;

            storage means for storing information; and

            output means for outputting information from said calculation means.

            If all of the “means” terms are described in the application (i.e. there is structure disclosed that performs the recited functions and corresponds to the mpf recitations), what is the argument that the claim is invalid under any section of 112?

            1. 14.2.1.3.3.1

              AAA JJ, if one reduces a combination to a single functional element, e.g., a single means claim, almost everybody agrees, and certainly the Federal Circuit agrees, that such is not patentable under the case law that goes back to O’Reilly v. Morse.

              3. 14.2.1.3.3.1.3

                I asked a very simple question. Why he can’t provide a direct answer is beyond me.

                I know a single means claim is not valid. My question is: is claim 10 of U.S. 6,415,276, which is not a single means claim, valid under 112?

                Well, Ned?

              4. 14.2.1.3.3.1.4

                “Why he can’t provide a direct answer is beyond me.”

                I have explained this before: Ned disappears from all conversations that “get uncomfortable” because he posts – not in his personal views – but in view of his third party interests and refuses to post a logical conclusion to any discussion here that goes against his third party interests and his agenda against business method and software patents.

                This has a serious degradation factor on blog posts here as it directly leads to the CRP-run away from valid counterpoints-CRP again merry-go-round.

              5. 14.2.1.3.3.1.5

                AAA JJ, claim 10 is iffy.

                1. 112(f) does not sanction single means claims (SMC).
                2. Frederico opined that one cannot add nominal elements to a SMC to avoid the rule 1.
                3. Claim 10 appears to violate rule 2.

                4. The Federal Circuit might, nevertheless, find it a valid combination claim, ignoring Frederico and the law. The Federal Circuit are nominalists, and this is why they are consistently overturned.

                5. The Supreme Court probably would follow Frederico’s views, but they probably would never take the case. For some reason, they are avoiding anything to do with 112(f).

            2. 14.2.1.3.3.2

              If all of the “means” terms are described in the application (i.e. there is structure disclosed that performs the recited functions and corresponds to the mpf recitations), what is the argument that the claim is invalid under any section of 112?

              Anon just said this too, but the statute on its face says that you’re not getting the scope of the function. It says that the scope of that language will be construed to cover the structure described in the spec and it’s equivalents, and equivalents has been interpreted to be a much smaller scope than the functional language.

              In other words, 112 6th may allow you to use functional language, but it doesn’t claim “the combination as a whole functionally” because you’re just getting the scope of the structures pointed to in the spec + a little more, certainly nothing of the scope that would present the problems in the Abbvie case.

              1. 14.2.1.3.3.2.1

                “but the statute on its face says that you’re not getting the scope of the function”

                This is a non-sequitur to the question being asked.

                Let’s obtain a clear answer before we move the conversation from this point. (Ned Heller really does need to appreciate the meaning of the law here).

                Then we can move on to the fact that the use of language of functional terms of descriptions is not constrained strictly to either “means for’ or ‘step for’ language nor 112(f) that you need to understand, Random Examiner (in the meantime, you can re -read the case of In re Orthokinetics and see that functional language is permissible under 112(a) and 112(b) directly.

                Separating and understanding each of these issues will provide the necessary clarity to our ongoing discussions.

              2. 14.2.1.3.3.2.2

                Jeebus, Ned and RandomExaminer, it was a simple yes or no question: Is claim 10 of U.S. 6,415,276 invalid under any section of 35 USC 112?

                Yes or no?

                If yes, why?

                Can you answer that?

                If I have a claim that recites:

                1. An apparatus, comprising:

                means for doing A;
                means for doing B;
                means for doing C; and
                means for doing D.

                and all of structure of each mpf recitation is in the prior art and is disclosed and described in the written description, is the claim invalid under any section of 112? It’s a “yes” or “no” question, so the answer I’m looking for is either “yes” or “no.” If the answer is “yes,” please explain why such a claim would be unpatentable/invalid under 112.

                Can you do that? Something tells me you can’t, but I’m going to give you the opportunity to prove me wrong.

              6. 14.2.1.3.3.2.6

                This is a non-sequitur to the question being asked.

                Whether Congress endorsed granting a functional scope (which 112, 6th on its face does not do, as it’s limited to a structure plus equivalents) is very much the question being asked.

                that the use of language of functional terms of descriptions is not constrained strictly to either “means for’ or ‘step for’ language nor 112(f) that you need to understand

                Keep talking, and I’ll keep reminding you that not all functional language is per se invalid, simply the functional language you use (attempting to broaden the scope of novel structures) is.

                (in the meantime, you can re -read the case of In re Orthokinetics and see that functional language is permissible under 112(a) and 112(b) directly.

                If you’re referring to what I show as Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F. 2d 1565, then you’re as poor a lawyer as you are a draftsman.

                First, 112, 1st is not before the court on appeal.

                Second, to the extent they deal with 112, 1st they deal only with enablement (as this case is before description was considered it’s own requirement).

                Third, you might want to notice how the court brushes over the very description issue they would have to deal with in present day: one desiring to build and use a travel chair must measure the space between the selected automobile’s doorframe and its seat and then dimension the front legs of the travel chair so they will fit in that particular space in that particular automobile . That’s the essence of a description issue. The fact that one of ordinary skill could do the work if presented with it goes only to enablement and obviousness. The question is whether the particular inventor posited this structure to get in this car. And while we’re on that subject…

                Fourth, see this statement: The claims were intended to cover the use of the invention with various types of automobiles. That a particular chair on which the claims read may fit within some automobiles and not others is of no moment. The phrase “so dimensioned” is as accurate as the subject matter permits, automobiles being of various sizes.

                You might want to consider that Ortho appears to be in the exact same position of Biosig. They appear to be suing over a chair which fits into some automobiles and not others, thus the question becomes whether “insertable through a doorway of an automobile and one of the seats thereof” constitutes a “reasonable certainty” of the dimensions. One need only think of the vastly different configurations of “an automobile” to know that’s not reasonably certain. You don’t need any industry knowledge to know the answer to this, why don’t you tell me what dimensions will infringe this claim? In other words, this court didn’t even get indefiniteness right under the current test.

                This case is, unfortunately for you, very similar to General Electric v. Wabash. The court there certainly found that those structures were not “reasonably certain.”

                Is claim 10 of U.S. 6,415,276 invalid under any section of 35 USC 112? Yes or no? If yes, why?

                If the equations in the specification are the full disclosure of the “calculating means” function, then no. If those calculations fail to describe the full calculation, then yes. To give you a more clear answer: if the limitation is “calculating means for energy” and one discloses a processor and the formula e=mc^2, then one has met 112, 6th.

                1. An apparatus, comprising: means for doing A; means for doing B; means for doing C; and means for doing D. and all of structure of each mpf recitation is in the prior art and is disclosed and described in the written description, is the claim invalid under any section of 112?

                You’re not going to like this, but that’s not a complete question. If by “disclosed and described” you mean a statement like “A is old. The means for doing A is well known in the art” then you violate 2nd in view of 6th. Similarly, if you say “A is old. Anyone of skill in the art can make A using well-known methods” then it’s invalid.

                If, on the other hand, you description like “A is old and well known in the art. A consists of a processor performing the following steps: s1,s2,s3,s4,s5…” And the structure of steps s1-5 is known (for example, they are each a handful of computer commands for which there are no substitutes), then disclosure of that in the spec is sufficient.

                This issue was well explained in Aristocrat. The question is not whether one of ordinary skill could achieve the functionality. The question is whether one of ordinary skill would understand the disclosure to be disclosing a specific structure (i.e. a particular way of doing it). Statements that structures exist in the prior art, or that the prior art enables the limitation, is insufficient; the particular inventor’s particular structure must be disclosed.

      2. 14.2.2

        The inventors says, yes everyone knows there are 10 ways to do this hydraulic function (real case I just had).

        That’s not the same statement. Saying everyone knows how to make something old is not the same thing as saying “I can think of 10 ways to do this new thing, and I bet there are 10 more ways, go get me a scope that covers all 20 ways”.

        Regardless, if your client is going to admit that its old, there shouldn’t be a problem simply stating “The means of doing this are well known in the prior art” is there? You are allowed to functionally describe old things, see Wabash.

        1. 14.2.2.1

          “You are allowed to functionally describe old things, see Wabash.”

          You are also allowed to functionally describe new things. See the Patent Act of 1952, 35 USC Section 112, paragraphs 1 and 2 (in addition to paragraph 6 as noted in In re Orthokinetics among other sources already presented.

          1. 14.2.2.1.1

            anon, but with new things defined functionally, you have definiteness, written description and enablement issues.

            The Feds will have to address these on the Nautilus remand where spacing was construed to be limited by the functionally defined effect.

            1. 14.2.2.1.1.1

              Ned,

              You have fallen into the kool-aid trap.

              With ANY description, you have definiteness, written description and enablement issues.

              Any.

              That you may have such with functional descriptions simply is not cause for alarm, let alone attempts to twist the law to say something that it clearly does not say.

              Read again In re Orthokinetics. I cannot force you to accept the law as it really is, but I can remind you that the law you want to have is not the law that we do have.

    3. 14.3

      Night, Lemley is wrong about functionally claiming as it applies to software that really are nothing more than method claims. Methods do not need new apparatus to support their scope.

      He was also wrong on the “single-actor” rule for method claims. He is directly responsible there in really screwing up the patent system.

      He has been massively wrong on a number of issues. I wonder why.

      2. 14.3.2

        “I wonder why.”

        Do you really wonder why? Or was that rhetorical?

        Some posting on this site think that Lemley’s “academic scholarship” is biased by those who pay his bills, i.e. his clients. It wouldn’t surprise me if that was the case, but I continue to believe that the biggest problem with Lemley’s “academic scholarship” is that he just doesn’t know what the heck he’s talking about when it comes to patent prosecution.

  19. 13

    Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336 (Fed. Cir. 2010).

    “A separate written description requirement also does not conflict with the function of the claims. 35 U.S.C. § 112, ¶ 2. Claims define the subject matter that, after examination, has been found to meet the statutory requirements for a patent. See In re Vamco Mach. & Tool, Inc., 752 F.2d 1564, 1577 n. 5 (Fed.Cir.1985). Their principal function, therefore, is to provide notice of the boundaries of the right to exclude and to define limits; it is not to describe the invention, although their original language contributes to the description and in certain cases satisfies it. Claims define and circumscribe, the written description discloses and teaches.”

    “But the hallmark of written description is disclosure. Thus, “possession as shown in the disclosure” is a more complete formulation. Yet whatever the specific articulation, the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.”

    …

    “Rather, as stated above, it is the specification itself that must demonstrate possession. And while the description requirement does not demand any particular form of disclosure, Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed.Cir. 2008), or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement…”

    The takeaway here is that the claim limits the scope of the invention, but still the invention must be described in the specification.

    (The case has a great deal of discussion of genus claims as well — they have to be supported by sufficient species, not just a description of the genus.)

    1. 13.1

      Max, Ariad established the principle that one must be able to read the specification (and not the claims) and determine what the invention is, and not only that, what is not the invention.

      The claims in the US delimit the scope after examination.

      1. 13.1.1

        Not quite right Ned, as the originally submitted claims – being fully a part of the specification – are used in the determination.

        1. 13.1.1.1

          anon, the requirement for a written description applies to claims as filed. One cannot file a generic claim with the application as filed and say that such is a written description of the genus invention.

          You might read Ariad, anon.

          1. 13.1.1.1.1

            anon, the requirement for a written description applies to claims as filed. One cannot file a gen eric claim with the application as filed and say that such is a written description of the genus invention.

            You might read Ariad, anon

            1. 13.1.1.1.1.1

              Ned – once again it is not the case I am taking issue with.

              Here, the case is simply inapposite to the (implicit) need to talk about OTHER people’s inventions.

              No one (well, certainly not I) is saying that Ariad must be met. But meeting Ariad CERTAINLY does not mean that you have to draw ANY distinctions to the current state of the art and what else might be out there.

              That’s not what Ariad is saying.

              1. 13.1.1.1.1.1.1

                “No one (well, certainly not I) is saying that Ariad must be met”

                should read

                “No one (well, certainly not I) is saying that Ariad must not be met”

    2. 13.2

      Ned,

      I think that your attempted point here misses the mark. No one is arguing that a description of the invention is not required. The distinction you seem to be missing is whether that description necessarily call attention to the prior art and delineate the differences between the invention and the prior art.

      Much like the demise of Jepson claims, this style of application is not only NOT required, but has simply fallen out of favor.

      As I point out, one of the drivers for this falling out of favor is the actions of the courts themselves, and the natural reaction to the court’s creation of “patent profanity.”

      As also previously mentioned, the fact that the Court has heightened the powers of PHOSITA also makes a trend for thinner applications. As we both know, an applicant does not have to include in his application that which PHOSITA knows.

      (and yes, this does affect Team Inventor – Yay Lemley – and making it unnecessary to include the TYPE of structure that certain art fields already recognize as having functional relationship (and yes, per controlling law – patentable weight).

      1. 13.2.1

        anon, I, of course, agree with you that complete knowledge of the prior art is not required. But there must be something in the spec. that tells one of ordinary skill what the invention is without even looking at the claims. That this might be narrowed by the claims is acknowledged.

        1. 13.2.1.1

          “But there must be something in the spec. that tells one of ordinary skill what the invention is without even looking at the claims.”

          Not at issue Ned. No one is arguing otherwise.

      2. 13.2.2

        Excessive reliance on italics, bold, and capitalized text makes you look like a desperately struggling dooshbag.

        Just sayin, Billy.

        1. 13.2.2.1

          LOL – it’s not reliance.

          Then again,. you don’t seem to understand what content is anyway, so I would have thought that the “ooooh shiny” would at least captured your attention.

          And you want to know what the sign of a real dooshbag is? The one that whines incessantly about “grifters” and yet cannot abide my the ABA rules of professional conduct – hint, that woudl be you.

  20. 12

    Just to be clear, Dennis: you agree that this litigation was doomed to failure but you would prefer that the claims were construed broadly and then tanked under 112? I think that’s the approach that leads to the most consistency (in terms of the law governing claim construction) and predictability at the end of the day.

    1. 12.1

      That’s how I understand Dennis too. Once the claim is treated as a statement that means what it says, consequences for validity follow, as night follows day. And BTW, what a pity M+F claims cannot also be so treated.

      A problem with my daily practice is the notion that a claim must be construed in the light of the specification. Who could quarrel with that principle. After all, the claims and the description are both parts of a single coherent document.

      Yet that simple notion is handled utterly differently, on the opposite sides of the Atlantic Ocean. Everyday mutual incomprehension is the consequence. A pity. But I live in hope, that better communication will reduce the level of incomprehension.

  21. 11

    Again blocked, so here again is the second half:

    It was a historical accident in 1973 that got the ROW shipshape. The accident was that the EPO in Munich would examine on the merits but not do the search. That could only be done by the IIB in Holland. Hence the EPO search branch at The Hague. But, with separation of search and exam, the Exr in Munich was unable to search after Applicant filed amended claims. If the Munich EPO only issues on fully searched subject matter that sure constrains the scope for amendment of the claims, doesn’t it?. Meanwhile, at the USPTO, every round of amendment is followed by fresh search activity, something that really does upset Applicant’s prosecutring attorneys and does Little for prosecution efficiency, eh 6?

    And as 6 observes, when the ROW can put its ship in order, why not America too?

    Dennis, can you unblock please?

    1. 11.1

      “If the Munich EPO only issues on fully searched subject matter that sure constrains the scope for amendment of the claims, doesn’t it?”

      That depends.

      Was the first search a limited key word search only based on the terms found in the original claims? (and do you recognize why this is such a p1sspoor search, violating the directions given to US examiners?)

      “followed by fresh search activity, something that really does upset Applicant’s prosecutring attorneys and does Little for prosecution efficiency”

      Overblown concern there MaxDrei – for the very reason that applies to the first half of this comment.

      1. 11.1.1

        “(and do you recognize why this is such a p1sspoor search, violating the directions given to US examiners?)”

        You mean the old directions. Nowadays what you just said about keywords is the directions. Like explicitly, to the youngens coming in. Sure they still toss in a subclass search. But even that may go the way of the dino with the CPC shortly since CPC is such a god awful mess.

          1. 11.1.1.1.1

            “Are you operating under different double secret direction 6?”

            No. I’ve told you how “I” operate. And I told you how everyone else is operating and is being trained to operate. Yet you still get on here and btch to me about the actions of others.

            “STILL not even close 6 (and yes, we’ve had this conversation before).”

            Yes and I’m so wrong all the time and you totally don’t have OCPD.

            “As an examiner, you ARE bound by these.”

            Tell the rest of the corps re re. Not me.

            1. 11.1.1.1.1.1

              “Yet you still get on here and btch to me about the actions of others.”

              LOL – didn’t you yourself just use the phrase “social norming” in defense of the very thing you wish to accuse me of, 6?

              And hey- I did you a favor and listed several things that you are bound to (so you know, it was not ME that was trying to “control” you).

              And yet, you cannot help yourself and your efforts to control me and what I post.

              Go figure.

              1. 11.1.1.1.1.1.1

                “LOL – didn’t you yourself just use the phrase “social norming” in defense of the very thing you wish to accuse me of, 6?”

                Oh look another cute psychopathism: “social norming”. You sure have an ability there! I said you’re biching to me about the actions of others. It isn’t an ‘accusation’ so much as an observation of your behavior. And “social norming”, whatever that is, doesn’t have jack squat to do with your btching.

                By the by, the term I used is social pressure re re, and yes, that is just as irrelevant as your psychopathism you just made up since you need to be socially pressuring the rest of the corps you fcking id iot. Though quoting them the MPEP isn’t exactly “social pressure”. It’s just you trying to get them to kowtow to the “authority” of a few broadly worded phrases in a book. That is, instead of their spe’s authority, or the ‘norms’ of their social group. Gl with that. That’s an appeal to authority where the actual irl authorities (the spes) say differently. Besides, the ‘norms’ of their social group changed at the will of the trainers/spes. That’s the whole fcking point and you don’t seem to comprehend the futility of making an appeal to a lesser authority than the irl ones directly over the examiners. If you “socially norm” them then they’ll be doing exactly what I just told you instead of what you want. And you can sit and btch to me about how “bound” I and others supposedly are to your interpretations of some phrases in a book or you can just st fu because both will be equally effective at getting the whole corps to do your bidding.

                “bound to”

                lulz. Keep dreaming.

                “And yet, you cannot help yourself and your efforts to control me and what I post.”

                Yes, it’s all about controlling you and what you post. Right. Either that or “controlling” you into a therapists office. Oh wait, yes, the later.

                But thanks for finally getting around to answering the question I asked last week about what you really think I’m trying to control you into doing. All my efforts to help you are all just one attempt to control what you’re posting! Riiiight.

                If you think I have spent a couple of days worth of hours trying to control what you post you’re wrong re re. It’d take no more than a 5 minute email to do that. I was genuinely trying to help you, and encourage you/get you to see a therapist. I do in fact still do the later.

              2. 11.1.1.1.1.1.2

                “Oh look another cute psychopathism: “social norming”.”

                lol – that was you that introduced it pal.

                You are doing that passive/aggressive cycling thing again…

              3. 11.1.1.1.1.1.3

                5 minute email…

                LOL – there’s that nutty power/control thing of yours again.

                You should hold up a mirror the next time you want to try your little psycho-babble stuff on someone.

        2. 11.1.1.2

          Are you operating under different double secret direction 6?

          MPEP 704.01 Search [R-08.2012]
          After reading the specification and claims, the examiner searches the prior art. The subject of searching is more fully treated in MPEP Chapter 900. See especially MPEP §§ 904 through 904.03. The invention should be thoroughly understood before a search is undertaken

          MPEP 904 How to Search [R-08.2012]
          The examiner, after having obtained a thorough understanding of the invention DISCLOSED and claimed** in the nonprovisional application, then searches the prior art as disclosed in patents and other published documents

          [yes 6 – that means BOTH the application and the claims]

          MPEP 904.02 General Search Guidelines [R-08.2012]
          In the examination of an APPLICATION for patent, an examiner must conduct a thorough search of the prior art…. The search should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed.

          [ditto]

          MPEP 904.03 Conducting the Search [R-08.2012]
          …It is normally NOT enough that references be selected to meet only the terms of the claims alone, especially if only broad claims are presented; but the search should, insofar as possible, also cover all subject matter which the examiner reasonably anticipates might be incorporated into applicant’s amendment. 37

          CFR 1.104 Nature of examination.
          (a) Examiner’s action.
          (1) On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application or patent under reexamination with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.

          As an examiner, you ARE bound by these.

        3. 11.1.1.3

          Are you operating under different double secret direction 6?

          MPEP 704.01 Search [R-08.2012]
          After reading the specification and claims, the examiner searches the prior art. The subject of searching is more fully treated in MPEP Chapter 900. See especially MPEP §§ 904 through 904.03. The invention should be thoroughly understood before a search is undertaken

          MPEP 904 How to Search [R-08.2012]
          The examiner, after having obtained a thorough understanding of the invention DISCLOSED and claimed** in the nonprovisional application, then searches the prior art as disclosed in patents and other published documents

          [yes 6 – that means BOTH the application and the claims]

          MPEP 904.02 [TYPICAL] Search Guidelines [R-08.2012]
          In the examination of an APPLICATION for patent, an examiner must conduct a thorough search of the prior art…. The search should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed.

          [ditto]

          MPEP 904.03 Conducting the Search [R-08.2012]
          …It is normally NOT enough that references be selected to meet only the terms of the claims alone, especially if only broad claims are presented; but the search should, insofar as possible, also cover all subject matter which the examiner reasonably anticipates might be incorporated into applicant’s amendment. 37

          CFR 1.104 Nature of examination.
          (a) Examiner’s action.
          (1) On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application or patent under reexamination with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.

          As an examiner, you ARE bound by these.

  22. 10

    Good comment #9 from Prof Crouch. Good comment from 6, as follows:

    “You see the chinese come in and straightforwardly let you know exactly what they’re contributing. Germans also often do this. And those apps generally are a breeze to examine. If we had a statute that forced this to happen…”

    That’s indeed the crux of the matter. ROW has that statute, but the USA does not.

    Or perhaps it does but the US courts don’t have the freedom to enforce it.

    Why? Perhaps because everybody in the USA buys in to the myth that it is beyond human skill to draft claims until after the USPTO has told you what the closest art is.

    But that’s just “chicken and egg”. How can the PTO do a worthwhile search before the applicant has defined the contribution to the technical field which is the subject of the patent application?

    It was a historical accident in 1973 that got the ROW shipshape. The accident was that the EPO in Munich would examine on the merits but not do the search. That could only be done by the IIB in Holland. Hence the EPO search branch at The Hague. But, with separation of search and exam, the Exr in Munich was unable to search after Applicant filed amended claims. If the Munich EPO only issues on fully searched subject matter that sure constrains the scope for amendment of the claims, doesn’t it?. Meanwhile, at the USPTO, every round of amendment is followed by fresh search activity, something that really does upset Applicant’s prosecutring attorneys and does Little for prosecution efficiency, eh 6?

    And as 6 observes, when the ROW can put its ship in order, why not America too?

    1. 10.1

      “If the Munich EPO only issues on fully searched subject matter that sure constrains the scope for amendment of the claims, doesn’t it?”

      See 11.1

  23. 9

    I should add here a few points:

    (1) Judge Moore is not creating new law with here opinion but rather implementing well established law in a way that is entirely consistent with precedent. Thus, I do not fault Judge Moore for continuing this line of decisions since she is required to do so.

    (2) Although I complain about the rule creating perverse incentives, an opposite rule is not necessarily better.

    My basic complaint is that the patent disclosures could provide much better information if they followed the simple process of particularly identifying the contribution being made and situated that advance with reference to the state-of-the-art. While acting in the best interests of their clients, patent attorneys intentionally avoid following that process and instead typically embed the inventive contribution deep within the text discussion and without being particularly highlighted.

    1. 9.1

      “My basic complaint is that the patent disclosures could provide much better information if they followed the simple process of particularly identifying the contribution being made and situated that advance with reference to the state-of-the-art. While acting in the best interests of their clients, patent attorneys intentionally avoid following that process and instead typically embed the inventive contribution deep within the text discussion and without being particularly highlighted.”

      Yeah that’s a concern also. But then, many times they don’t really know what the “advance” is, they just know what their client made or dreamed up.

      I also share your concern about them having to act in the best interests of their clients by hiding the inventive contribution (I presume you mean because of court decisions). I simply think that the problem goes deeper than court decisions forcing them to do that. It is really an issue with the intersection between the court’s current interpretation of 112 1st and with legislation that would be needed to set the system straight.

      I’ll also note that the recent spat of chinese applications brings this whole part about hiding the invention into sharp contrast. You see the chinese come in and straightforwardly let you know exactly what they’re contributing. Germans also often do this. And those apps generally are a breeze to examine. If we had a statute that forced this to happen…

      1. 9.1.1

        “ many times they don’t really know what the “advance” is, they just know what their client made or dreamed up.”

        A bit of a (subtle) mistake is being made here: applicants are simply not required by law to research and determine exactly what the “advance”** is. It appears a “would like to have” is being confused with a “what is required.”

        **”advance” in quotes, given that any student of innovation knows that true innovation is not a matter of linear advance over the prior art. Some reading of Schumpeter, Christensen, and Kondratieff is recommended.

          1. 9.1.1.1.1

            Brush aside the ad hominem, and lo and behold, another empty Malcolm post.

            Do tell me that you have heard of the authors I mention, Malcolm. Please do.

            1. 9.1.1.1.1.1

              another empty Malcolm post.

              There’s no “emptiness” in reminding everybody that you’re a s 0ci0 path and a habitual l y i n g a s s h o l e.

              Somebody has to do it.

              1. 9.1.1.1.1.1.1

                Yes, you post in vap1d ad hominem and I post with reference to leading thinkers on innovation, and somehow I am the one who is a “ s 0ci0 path and a habitual l y i n g a s s h o l e.“….

                You do not even care what a hypocrite you are, do you?

                It would be funny if it were not so wretchedly pathet1c.

              2. 9.1.1.1.1.1.2

                “Somebody has to do it.”

                LOL – tell me again who – by far – has had the most posts expunged for being offensive? Far more than all others combined?

                I think Prof. Crouch is telling you that you are not the one that “has” to do it.

                But you do have that “save the children running through the rye field” complex about you….

        2. 9.1.1.2

          Christensen. LOL. LOL. LOL.

          INNOVATION. INNOVATION. INNOVATION. !!!

    2. 9.2

      “My basic complaint is that the patent disclosures could provide much better information if they followed the simple process of particularly identifying the contribution being made and situated that advance with reference to the state-of-the-art. While acting in the best interests of their clients, patent attorneys intentionally avoid following that process and instead typically embed the inventive contribution deep within the text discussion and without being particularly highlighted.”

      Yeah that’s a concern also. But then, many times they don’t really know what the “advance” is, they just know what their client made or dreamed up.

      I also share your concern about them having to act in the best interests of their clients by hiding the inventive contribution (I presume you mean because of court decisions). I simply think that the problem goes deeper than court decisions forcing them to do that. It is really an issue with the intersection between the court’s current interpretation of 112 1st and with legislation that would be needed to set the system straight.

      I’ll also note that the recent spat of chinese applications brings this whole part about hiding the invention into sharp contrast. You see the chinese come in and straightforwardly let you know exactly what they’re contributing. Germans also often do this. And those apps g e n erally are a breeze to examine. If we had a statute that forced this to happen…

      1. 9.2.1

        I also share your concern about them having to act in the best interests of their clients by hiding the inventive contribution
        Said by someone who knows very little about what we do. I know of no attorney who attempts to hide the inventive contribution. I do know, however, of many instances in which the precise delimitation between inventive contribution and prior art is unknown so the attorney has to describe both (without knowing one from the other). Only after the best prior art is found (and applied) by the Examiner can the process of finding the precise line between unpatentable and patentable can be negotiated.

        2. 9.2.1.2

          “Said by someone who knows very little about what we do. I know of no attorney who attempts to hide the inventive contribution. ”

          Well you say that. But it isn’t very hard to find an app that does, or effectively does. I have one just this past week where they buried what their supposed inventive contribution was in 35 pages of telling me all about this grate invention about this and that yet one seemingly throw-away sentence (solely in the spec) is cited by him as being the defining characteristic in his most recent amendment. I won’t say he necessarily did this on purpose. But he sure as sht did not make any effort to bring it to the fore in all his 35 pages of blathering and that pretty effectively buried the contribution.

          If you write a small book “describing your invention” and your defining characteristic is approx five words that you just stick in edge wise some random where I hate to break this to you but you done buried the inventive contribution.

          “I do know, however, of many instances in which the precise delimitation between inventive contribution and prior art is unknown so the attorney has to describe both (without knowing one from the other).”

          I quite agree with that.

          “Only after the best prior art is found (and applied) by the Examiner can the process of finding the precise line between unpatentable and patentable can be negotiated.”

          That’s funny, I wonder why that “truism” doesn’t really hold for the entire rest of the world? I guess it only applies when you cross the imaginary boundary between canada and the US or mexico and the US eh? To be sure, you have my sympathies when you truly don’t know jack squat about the art, but this is an application for an official entitlement from your federal government, not popping down to the supermarket for a loaf of bread. I’m still, and always will be of the opinion that it is time to get your sht together. Max doesn’t seem to have that bad of trouble with this. Why is it so hard for you? Too accustomed to the laxness of the status quo?

          1. 9.2.1.2.1

            Well you say that. But it isn’t very hard to find an app that does, or effectively does.
            I see you didn’t read past my first sentence. One cannot hide the precise “invention” when one doesn’t know the precise line that separates invention from prior art. I have to describe both unless the inventor knows, with absolute certainty, where that line can be drawn. If I describe too little — my client loses patent scope — not a good thing.

            yet one seemingly throw-away sentence (solely in the spec) is cited by him as being the defining characteristic in his most recent amendment
            It wasn’t a throw-away sentence then? Perhaps that one sentence was what separated the invention from the prior art. The inventor or attorney may not have known that is where the line would have been drawn at the time the specification was written. However, we don’t have perfect knowledge. Hence, we cannot write the perfect specification.

            That’s funny, I wonder why that “truism” doesn’t really hold for the entire rest of the world?
            And how do you figure that? There is a reason why people can amend claims — think about it. It is because the law recognizes that the initial claims may over (or under) claim the invention. Moreover, this isn’t unique to patent law. To the extent that they process them, most (if not all) government agencies allow applications to be amended — in order to meet the requirements of the law.

            I’m still, and always will be of the opinion that it is time to get your sht together.
            You don’t know how funny that sounds coming from you. It is like the coal miner walking into the operating room before a surgery and saying “c’mon doc, this place is a mess — you need to clean it up.”

            1. 9.2.1.2.1.1

              “It wasn’t a throw-away sentence then? ”

              So he asserts. It will turn out to be in this case though.

              “Perhaps that one sentence was what separated the invention from the prior art. The inventor or attorney may not have known that is where the line would have been drawn at the time the specification was written. However, we don’t have perfect knowledge. Hence, we cannot write the perfect specification.”

              Perhaps it is. And perhaps you cannot ‘write the perfect specification”. But you sure as f could make more effort than you are currently since people in foreign lands are doing a much better job at it already. If they can do it then so can you. Ur ‘Merican gd it! Anything dem Brits, Frenchies, Maoists n Krauts can do we can do betta!

              “One cannot hide the precise “invention” when one doesn’t know the precise line that separates invention from prior art.”

              Not necessarily intentionally. That is quite correct. I agree entirely. You can still manage to do it unintentionally though. And if it is happening in case after case after tiresome case then yeah, that’s a symptom of having no reason to avoid doing it.

              “If I describe too little — my client loses patent scope — not a good thing.”

              I’m not saying describe too little, or in fact describing any less than what is already being written in the app.

              How is this so hard for you to understand? All we’re asking for is that, as is often if not always done in ROW just at least make an attempt to highlight SOMETHING as being at least one contribution you’re making. If you want to highlight more, then by all means. Highlight more. It really isn’t that hard. Many people do it already. Especially foreigners in jurisdictions that encourage them by various means to do so.

              And if the problem really is your abject ignorance of the prior art then GASP! You might need to do like ROW already does and routinely start finding at least something to compare your sht to (or knowing stuff already) so that you’re sure you have an “inventive contribution” “novelty” or whatever you like to dub that pre-filing. And frankly that isn’t that hard in 99% of cases. Esp if you’re a big corp operating in the same space all the time.

              Listen if you have anything else to say go ahead. I really don’t have much more to say and I’m not going to sit and go around and around on the interbuts regarding this very simple topic. You don’t want to make the effort and you don’t want to be required to by any means, direct or indirect. I and nearly the rest of the people on the planet want you to. That’s it. Whether the congress /PTO continues their laissez-faireish type approach or not is up to them.

              1. 9.2.1.2.1.1.1

                6,

                See the comments on the fact that a “description” and a “description in Jepson style” are two very different things.

                You want the law changed to require the “description in Jepson style?” Call you congressman.

                And please, stay within your own jurisprudence – you have enough difficulty handling that.

              3. 9.2.1.2.1.1.3

                If they can do it then so can you. Ur ‘Merican gd it! Anything dem Brits, Frenchies, Maoists n Krauts can do we can do betta
                I’ve read plenty of foreign-originated applications. Some are really good, others decent, some bad, and some really bad — a real mix. Given a choice, I would always have US counsel draft a patent application intended for the US.

        3. 9.2.1.3

          Oh no, traditionally, one describes the outer contours of the invention as then appreciated in the Summary. At the end of the detailed description, it is good practice to advise that the description of the invention is not intended to limit the scope of the claims.

          This SHOULD allow broader claims to be filed than the invention originally described in the summary, provided the specification does not have scope limiting language such as “essential,” “critical” and the like.

          In the end, as described in Ariad, possession of the invention is the limiting criteria. There must be something in the specification that indicates that so-and-so was considered to be an invention.

          1. 9.2.1.3.1

            “There must be something in the specification that indicates that so-and-so was considered to be an invention.”

            Um, that would be the specification itself Ned.

    3. 9.3

      Prof. Crouch,

      With all due respect, the single word that comes to mind reading your ideal world approach is: naive.

      There is a reason why the term “patent profanity” exists. The real world is simply not that nice of a place sometimes. The plain fact of the matter is that there are philosophical factions (yes, more than one) that actively seek to reduce/eliminate the benefits of a patent system, and such actions do become reflected in the jurisprudence. If everyone “played fair” life would be simpler, but such a view is simply too pollyanna.

      2. 9.3.2

        D’s post was also disingenuous. But whatever.

        Make no mistake about it, those weeping and gnashing their teeth over the silly notion that applicants “embed the inventive contribution deep within the text discussion and without being particularly highlighted” are from the unbelievably lazy class of either examiners, judges or academics. “Gee dude, do you really expect me to read this application to figure out exactly what technology you’re disclosing in exchange for a patent? Can’t you just boil it down for me so that I can get the gist of it? Like, maybe just hit the highlights kinda?”

        The “invention” is exactly what 1952 Patent Act says it is: whatever is particularly pointed out and distinctly claimed by the applicant that is described and enabled in the application, and that is novel and non-obvious over the prior art.

        Get. Over. It.

        1. 9.3.2.1

          “D’s post was also disingenuous”

          It r disingenuous I say! Disingenuous!

          U so disingenuous D!

          “are from the unbelievably lazy class of either examiners, judges or academics (ahem, add in or anyone else reading the patent from the general public).”

          Everyone in the world wants that except those drafting and maybe some overzealous applicants who are overzealous at the bidding of those doing the drafting! Imagine that! Patent attorneys vs. the world!

          “Gee dude, do you really expect me to read this application to figure out exactly what technology you’re disclosing in exchange for a patent? ”

          Right, you want US (everyone other than the drafters and applicants) to “figure out” what the “technology” or “advance” is rather than doing it ya dam self even though you’re best positioned to do so.

          That really is the crux of the issue. You nailed it. Drafters and applicants wanting the rest of the world to do what they’re best positioned to do while the rest of the world would prefer that they go ahead and do so. Of course you go on to tell us that everyone else should be burdened with this burden. And if they don’t like that they’re “lazy” because the inventor/drafter is the most important thing and person evar (or some such nonsense)!

          1. 9.3.2.1.1

            I wrote the application. I’ve written lots of applications. And each one takes a lot of work. All I expect you to do is to actually read it. But you tell me that you can’t be bothered, and you’d rather have me just say, “The invention is…” and dumb it down so much that even somebody of your limited intellect can “understand” it. So yeah, you are the lazy one.

            Go figure.

            1. 9.3.2.1.1.1

              “All I expect you to do is to actually read it.”

              Lulz! I’ve read several hundred if not a couple thousand apps brosefus. And if all I had to do to “figure out” the “technology” or “advance” being set forth was to read the app then that would be wonderful! And sometimes it is!

              On the whole however mere reading /= figuring out. G e n erally speaking anyway.

              “So yeah, you are the lazy one.”

              Typical. Still at it eh? Expecting everyone in the world to genuflect before his amazingness! He’s already written it down for everyone to figure out! Now just read it! Then figure it out! It’s that easy! How hard could it be? Just figure it out! It is everyone else that are the lazy ones! It’s all these judges/examiners/other people! It’s 6! It isn’t me! It can’t be! No wai! Me and my client vs. the world! Fck yea! ‘Merica!

              And look “AAA” or anon or whatever, I’m not saying that your specific apps are all that bad. They may not be. And maybe you really have a bunch of bad apples that never read the spec doing your examining. All that may be. It doesn’t change one bit the crux of the current issue before us which you correctly IDed already up above.

              1. 9.3.2.1.1.1.1

                “I’ve read several hundred if not a couple thousand apps brosefus.”

                I get it. You’re one of those examiners who thinks that because he’s read hundreds of applications that means he could actually write one.

                You’re more delusional than I thought.

              2. 9.3.2.1.1.1.2

                Worse yet, he thinks that because he has merely “read” something that he has understood it as well.

                6’s lack of understanding is legendary. He will often provide something “that he has read” and trumpet “what he has read” as proving what he want to be proven, but he neglects the fact that he does not understand what he has read, and what he offers failed to prove what he thinks it proves for the very reason that he just does not understand what he is reading. He takes his subjective view of his reading, rather than an objective understanding and routinely errs in the application of his reading.

              3. 9.3.2.1.1.1.3

                “I get it. You’re one of those examiners who thinks that because he’s read hundreds of applications that means he could actually write one.”

                I never stated such a thing. We’re talking about “figuring out” what the “technology” or “advance” is. Try to stay on topic re re.

              4. 9.3.2.1.1.1.4

                “He takes his subjective view of his reading”

                You know, the same “subjective” view that allowed me to correctly predict the last 4 101 cases at the USSC. And the same “subjective” view that gets me nigh perfect reading scores on all tests I take judging that. Good ol anon, you can always count on him to own the truth, and refuse to belieb his eyes when my “subjective” view somehow magically was the correct reading.

              2. 9.3.2.1.1.2.2

                BWWWWAAAAAHHHHHHAAAAAHHHHHAAAAA!!!!!!!!!

                You so funny, Examiner Mooney.

                Keep up that record breaking outstanding quality work you’re doing examining DNA fragments and protein bits. You’re an inspiration to all your fellow examinerturds.

            1. 9.3.2.1.2.1

              I laughed. Then again, pretty much all your posts are a joke.

              How’s that drive to impeach the judges who use the term “monopoly” in patent cases going, by the way?

              Have you and Eric made any progress?

        2. 9.3.2.2

          Disingenuous?

          Mmm, I am not so sure I would use that word. I think the good professor does believe in his views.

          Now, as to bias, well, he may – or may not – be aware of that, but since he teaches this stuff, he really should be aware of it (and should be able to separate it).

          But hey – it’s his blog, so c’est la vie.

          1. 9.3.2.2.1

            as to bias, well, he may – or may not – be aware of that, but since he teaches this stuff, he really should be aware of it (and should be able to separate it).

            Please tell everyone more about Dennis’ “bias”, Billy.

            And there more objective patent blogs out there that we all should be reading? Do tell.

        3. 9.3.2.3

          Once again, AAA JJ, the view you describe in you post are not consistent with Ariad. The claims delimit scope. The specification describes the invention.

          Read Ariad.

    4. 9.4

      Dennis, part of the problem is relieved by the presence of an abstract that examiners often police. The PTO could require that the abstract be written after a notice of allowance and that it accurate and succinctly describe the invention.

    5. 9.5

      Dennis –

      “particularly identifying the contribution being made and situated that advance with reference to the state-of-the-art” requires that the inventor knows the state of the art. That is not always the case. Moreover, it is not a requirement for receiving a patent.

        2. 9.5.1.2

          The parse-cite master at “work” again…

          See link to bc.edu

          “In 1822 the U.S. Supreme Court ruled in Evans v. Eaton that an inventor who had made improvements to a patent could not win an infringement action based upon those improvements because the improvements were not adequately stated in the original patent’s specification. At the time of the Evans decision, the Patent Act of 1793 did not require claims, but did require that the patent applicant ‘deliver a written description of his invention.’”

          Criminy Ned – Fn understand the context from which you pull your citations please.

          1. 9.5.1.2.1

            Ariad adopted the view the that Evans v. Eaton and subsequent cases (a lot of them) all required a description of the invention, not just a description of embodiments that enabled one to make and use.

            1. 9.5.1.2.1.1

              None of this has anything to do with what I said. I didn’t say you didnt have to describe the invention. I said you don’t have to know “the state of the art”.

              You can invent a light emitting diode without knowing about candles or incandescent lamps.

              For that matter you can invent a blue LED without knowing that red LEDs exist.

              You can invent a silicon based diode without knowing the germanium diodes exist.

              1. 9.5.1.2.1.1.1

                Les, no doubt that claims are necessary to define over the prior art.

                Still, throw claims into the trash for a moment. The law requires that one be able to read the specification and determine what the invention is.

                (There could be more than one invention, of course.)

              2. 9.5.1.2.1.1.2

                I said nothing about whether claims are necessary. I said you don’t have to know the state of the art.

                If I don’t know about red LEDs I can still describe how to make and use the blue LED that I invented.

              3. 9.5.1.2.1.1.3

                “The law requires that one be able to read the specification and determine what the invention is.”

                Wrong. The invention is whatever is claimed that is described and enabled in the written description, and is novel and non-obvious over the prior art. The law requires that one of ordinary skill in the art be able to read the written description and understand that the applicant was in possession of what is claimed as of the filing date.

              5. 9.5.1.2.1.1.5

                “The view you espouse was the dissenting view of Rader.”

                No it’s not. I’m fully in agreement with the written description being a separate requirement of 112. I’m also in agreement with the requirement that the written description show that the applicant/patentee was in possession of the invention (i.e. what is claimed) as of the filing date (something J. Rader clearly said was not a requirement of 112, 1st, and which he was wrong about).

                But the idea that one of ordinary skill in the art should be able to determine what “the invention” is just from reading the written description is just plain wrong. The term “the invention” as used in 112, 1st has the same meaning as it has in 112, 2nd, i.e. it is the subject matter that applicant particularly points out and distinctly claims. A written description potentially claims many “inventions” (i.e. things applicant could claim that are patentable). The idea that one of ordinary skill in the art should be able to determine every single one of them just from reading the written description seems ridiculous to me.

              6. 9.5.1.2.1.1.6

                AAA JJ, as described in Ariad, the written description requirement varies by invention and technology.

                In chemicals, the claim might be to a genus. The specification must describe sufficient species and recognize that the genus is an invention.

                Utility — same.

                Take specification that describes an outboard motor in detail. Some of its features are old. Some are new. The applicant must have some idea when he files what he claims to be new. But what if when he files, he neither describes nor claims a certain feature to be inventive, what is one of ordinary skill in the art going to believe about that feature if he or she reads the published application?

                In this light, you might again read Muncie gear that held that the claimed invention that switched from claiming an anti-torque plate to an anti-cavitation plate as not being described in the patent as filed. One reading that application would be lead to believe that the anti-cavitation plate was within the prior art.

                What are your views?

              7. 9.5.1.2.1.1.7

                “A written description potentially claims many “inventions” (i.e. things applicant could claim that are patentable).”

                The other dirty little secrit of the ‘merican way and the reason why the search is generally never truly finished under american examination. Under this paradigm really there are hundreds, if not thousands or millions of “inventions” in the modern application as filed. And of course the office is supposedly responsible for searching and examining them all in 20 hrs.

                “The idea that one of ordinary skill in the art should be able to determine every single one of them just from reading the written description seems ridiculous to me.””

                I quite agree. And not only that, the idea that a real life person who has the title examiner should be able to determine every single one of them just from reading the written desc and claims seems ridiculous to me. But of course, under our existing paradigm that is precisely what is supposedly “expected” (officially, though unofficially of course not).

              8. 9.5.1.2.1.1.8

                “A written description potentially claims many “inventions” (i.e. things applicant could claim that are patentable).”

                ^ The other dirty little secrit of the ‘merican way and the reason why the search/examination is g e n erally never truly finished under american examination. Under this paradigm really there are hundreds, if not thousands or millions of “inventions” in the modern application as filed. And of course the office is supposedly responsible for searching and examining them all in 20 hrs.

                According to Max that isn’t really the case in the EPO.

                “The idea that one of ordinary skill in the art should be able to determine every single one of them just from reading the written description seems ridiculous to me.””

                I quite agree. And not only that, the idea that a real life person who has the title examiner should be able to determine every single one of them just from reading the written desc and claims seems ridiculous to me. But of course, under our existing paradigm that is precisely what is supposedly “expected” (officially, though unofficially of course not).

              9. 9.5.1.2.1.1.9

                AAA JJthe idea that one of ordinary skill in the art should be able to determine what “the invention” is just from reading the written description is just plain wrong.

                Between the claims as originally filed and the written description, every “invention” that will ever be claimed by the applicant needs to be clearly set forth such that one skilled in the art can understand what the invention is and how that invention differs from the prior art (it’s sort of important to know that so you can avoid engaging in infringing activities).

                If the claims as originally filed flatly contradict the written description (by failing to include an element that the written description states is essential), then you’ve got an indefiniteness problem. Now that the Supreme Court has smacked the CAFC in its ridiculous face again, it’s going to be an incurable problem in most cases.

                This isn’t very difficult stuff, folks. Most of us in the grown-up arts figured out pretty early how to write applications that left us lots of wiggle room and plenty of fall back positions. Yes, you need to be smart and work hard to accomplish that task. And yes if you stick your head and the sand pretend you were born yesterday and have no knowledge of the prior art (computers can process information? really?) then you are pretty much doomed to fail. Too bad for you.

              10. 9.5.1.2.1.1.10

                MM: re: your post at 9.5.1.2.1.1.8

                Agreed.

                The claims as originally filed are part of the specification.

                So, if one begins to claim inventions neither described to be an invention in the specification, nor in the claims as originally filed, then that invention is not described in the specification as filed.

              11. 9.5.1.2.1.1.11

                “And of course the office is supposedly responsible for searching and examining them all in 20 hrs.”

                I guess you’re one of those examiners RandomExaminer talks about s#cking at searching. Who’d’ve figured?

              12. 9.5.1.2.1.1.12

                “It’s hard to do my job” is not a valid excuse for not doing your job.

                Have a gripe with the time allotted? Um, you do have a union, right? That is the type of work-situation that the union is for, right? Take the appropriate action to effectuate the change you feel justified, but please, whining here is probably the least effective thing you can do – it paints you as someone unwilling to do “the right thing” (no matter if the “right thing” is in fact the “right thing” or not).

                Do your Fn job.

                If you really really really cannot do your Fn job (and it is a structural problem) seek the remedy you have and change the Fn job. Don’t attempt to slough off that job and impact the party that has paid the prescribed fee for the prescribed job to be done by you.

                And don’t be otch when you take the shortcuts aimed solely for your own benefit that impact what the party deserves (even – or especially – if you feel that such is “hard”).

                Guess what? If every single examiner did the Fn job right, and took the time to do the Fn job right, the “patent quality problem” would take care of itself.

                Period.

                What are they going to do? Fire all of you?

              13. 9.5.1.2.1.1.13

                “I guess you’re one of those examiners RandomExaminer talks about s#cking at searching.”

                LOL. Either that or maybe I’m the one that others come to for help on their searching lol. Oh wait, the later.

              15. 9.5.1.2.1.1.15

                ““It’s hard to do my job” is not a valid excuse for not doing your job.

                Blah blah blah I don’t know w t f I’m talking about and am a real blow hard on this subject I know nothing about. And also I’m really preoccupied with rules because of my OCPD. So neyah!”

                Nice rant. Gl with that.

              18. 9.5.1.2.1.1.18

                “Congratulations on developing real deep expertise in a task I pay folks in India $1.15/hr to do.”

                Lulz. Gl with that. When you get Sandeep on the phone and he instructs you to restart your computer when you ask him for your results know that I’m here loling @ u.

          2. 9.5.1.2.2

            Criminy Ned – Fn understand the context from which you pull your citations please.
            Accurately citing case law is not one of Ned’s strong suits. Actually, it is one of his greatest failings.

            1. 9.5.1.2.2.1

              That’s because he operates in a perpetual Ned-IMHO-Law-fitting-his-agenda mode.

              Just look at how he disappears EVERY time the conversation takes a turn that his agenda cannot handle.

              It’s like clockwork.

      2. 9.5.2

        It’s true that the inventor doesn’t always know the state of the art accurately.

        But nobody invents in a vacuum and every inventor has a belief about how their contribution differs from that which already exists. Why else file a patent unless you’re simply kookoo or going on a fishing expedition. There’s no reason any patent system should encourage these latter sorts of filers.

        1. 9.5.2.1

          “There’s no reason any patent system should encourage these latter sorts of filers.”

          LOL – the RQ/HD so decrees.

          Um, brightboy, that would make such a requirement, right?

          You still having trouble with understanding that basic word?

            1. 9.5.2.1.1.1

              LOL – I don’t need anything more than what I provided to rebut your statement.

              Do you really need me to post the definition of “requirement?”

            2. 9.5.2.1.1.2

              “It’s true that the inventor doesn’t always know the state of the art accurately.”

              LOL – Are you still wondering, given that at the critical point, you first agree with me?

    6. 9.6

      Just so we’re clear, Dennis: you agree that this litigation was doomed to failure but you would prefer that the claims were construed broadly and then tanked under 112? I think that’s the approach that leads to the most consistency (in terms of the law governing claim construction) and predictability at the end of the day.

    7. 9.7

      Dennis, if you want to contribute to patent quality get Lemley off the functional claiming business. That clearly has nothing to do with actual inventions and patent applications.

      In all arts, there are many solutions to each element of the claim. Under Lemley’s burn the system to the ground approach a patent application would have to be about 10,000 pages. I interview inventors all the time. They say yes I know lots of ways of doing A and I am sure there are 10 other ways.

      So, A + B + C, each having 20 ways is what? And under Lemley’s burn the system to the ground approach we would have to put in how many embodiments?

    8. 9.8

      My basic complaint is that the patent disclosures could provide much better information if they followed the simple process of particularly identifying the contribution being made and situated that advance with reference to the state-of-the-art.
      You premise your request on the belief that Applicant knows, at the time the disclosure was filed, exactly what was “state-of-the-art.” Few Applicants know the complete state-of-the-art. Some know a little, some know a lot — but very few know it all. As such, they cannot explain their contribution with regard to this unknown contribution By way of example, some of the prior art that will be cited is found in (unpublished) patent applications that were filed in the prior 18 months.

      You are asking the inventor to know both his invention and well as the inventions of everybody else — not required by the law. The law only requires that the inventor lay out what the inventor believes to be the invention. Usually that means a discussion of broad concept(s), narrower concept(s), multiple embodiment(s), and even more specific embodiment(s) — all, some, or none of it may be patentable.

      Only after someone who (should) have the most experience searching in the particular art (i.e., the Examiner) has found the best prior art that Applicant and Examiner can negotiate over where the line between unpatentable and patentable lies. It would be nice to know where this line exists prior to drafting the application so I could focus on it rather than everything else. However, that is a luxury afforded to very few.

      BTW — many (sophisticated) clients don’t want you talking about the prior art in their patent applications. The oft-stated reason is that they don’t want to put something in writing that may mischaracterize (either too broadly or too narrowly) what exists in the prior art. You too broadly characterize the prior art and you may admit to prior art that doesn’t exist. You too narrowly characterize the prior art and you may get accused of trying to pull the wool over the Examiner’s eye. It is safer to say nothing at all about the prior art.

      1. 9.8.1

        “BTW — many (sophisticated) clients don’t want you talking about the prior art in their patent applications”

        Bingo.

        I’ve had that discussion with Ned in the past… (and yes, this too, is a form of “patent profanity” based on reactions to the courts).

        This is why the naivete comment was made: the good professor should be well aware of this condition in US patent law and practice (and I would hope that he his alerting his students to this reality).

  24. 8

    Oh and here’s an article about just what is going on. You may have featured it D. It’s the old one about the cult of the claim.

    Rescuing the Invention from the Cult of the Claim

    link to law.berkeley.edu.pdf

    I don’t really like his proposal as to how to fix things myself. Personally I prefer the direct approach. Making people follow the very letter of the opening part of 112 1st with regards to their spec rather than on a simple claim by claim basis. Either by statute or whatever have you.

    1. 8.1

      Sorry the link doesn’t come through right due to this commenting system. Just google Rescuing the Invention from the Cult of the Claim.

    2. 8.2

      Lulz. Dude wrote a 55 page article and still doesn’t get that “the invention” and the claim are the same thing. And the fact that he can’t seem to explain that very simple concept to the doe-eyed students in his class just confirms why law schools are in so much trouble these days.

      1. 8.2.1

        “Dude wrote a 55 page article and still doesn’t get that “the invention” and the claim are the same thing.”

        Um that’s what the “cult of the claim” that he is referring to all through the article is re re. That’s the whole subject of his article. He “gets” it quite well.

  25. 7

    FSM forbid that anyone actually get a patent that covers only their actual invention.

    1. 7.1

      Again, this is pretty simple. The law (i.e. the statute) is clear: applicants may get a patent on anything they particularly point out and distinctly claim that is described and enabled in their application, and that is novel and non-obvious over the prior art. And the case law is also clear: applicants are not required to disclose/describe every single possible embodiment that would fall within the scope of their claim(s). And the Supremes have made it clear that patentees are entitled, yes entitled, to the protection of the DOE.

      Accept the fact that “the invention” is exactly what the 1952 Patent Act says it is: whatever the applicant regards as the invention and particularly points out and distinctly claims. Accept it. You’ll feel better.

      1. 7.1.1

        “You’ll feel better.”

        And not only will you “feel better”, you’ll have participated in the active destruction and degradation of the patent system.

        But that’s all just secondary to the feeling better about what some dead people did 60 years ago.

        1. 7.1.1.1

          “participated in the active destruction and degradation of the patent system.”

          …because paying attention and following the actual words of Congress does just that…. (Oh, Royal Nine, please save us)

          / eye roll

    2. 7.2

      The doctrine of Broadest (Un)Reasonable Interpretation is necessarily implicated – by the very notion of an examiner purposefully attempting to read a claim wider than the claim’s coverage to what a person having ordinary skill in the art to which the invention pertains would understand the claim to mean, rejections are made beyond that which would hold up for a granted patent – with no change to the actual scope of the claim from the granted patent.

      I “get” the why of the policy – that “why” is explicitly not the point of the issue.

  26. 6

    “The decision here fully and problematically supports the current patent drafting norms where the true nature and advances offered by inventions are hidden in order to avoid unduly limiting claim scope. Under standard patent drafting technique, no elements are described as necessary, critical, preferred, or even discouraged. And, ‘the invention’ is never particularly defined or called-out. That strategy has the result of substantially decreasing the disclosure value of a patent.”

    Wow, talk about not getting it. Since 1952 “the invention” is whatever the applicant particularly points out and distinctly claims. If that subject matter is described, enabled, novel and non-obvious, the claim, i.e. “the invention,” is patentable. Pretty simple really.

  27. 5

    Yeah Imma have to disagree with you there D. All this case does is show that the Federal Circuit knows how to properly police the scope of the claims when the applicant has clearly set forth what his invention is.

    The problem is that there is at present nothing forcing the applicant to clearly set forth what his invention is, and thus patent attorneys are able to skip all that messiness and instead skip straight to claiming what they want. This is due to the over-g e nerous interpretation of 112 1st paragraph’s opening words by the courts. Were they followed to the letter, and patents more often entirely rejected (rather than merely the claims contained therein) based on 112 1st then we’d be in good shape.

    That’s the problem with the system. Not that the courts are coming down over-harsh on people that actually do set forth their invention clearly.

    And it is a real problem. Only good legislation with teeth is likely to ever cure that problem.

    “The specification shall contain a written description of the invention, ”

    ^If you don’t do that then you whole shebang should go straight down in flames. But instead we have a system where we let the worst offenders (people that never explicitly say what the invention is and instead make a g e n eral description of a whole big bunch of “stuff” that isn’t the invention mind you, and then skip straight to the claims) go scott free and instead hold the law-abiding citizens to a higher standard, via construing only their claims more narrowly due to their obeying 112 1st, than the worst offenders are held to.

    It’s a real problem, but nobody has any will to actually solve the problem at the root of the problem. The bar is content with the status quo and prefers the “claims are the focus” approach so that they have free reign to squirm forever in amendments and cons etc.

    1. 5.1

      “The problem is that there is at present nothing forcing the applicant to clearly set forth what his invention is, and thus patent attorneys are able to skip all that messiness and instead skip straight to claiming what they want.”

      Lulz. It is really hard to believe that you are as incredibly dumm as your posts indicate. But given the daily barrage of your posts confirming it, I’m a believer.

    2. 5.2

      “It’s a real problem, but nobody has any will to actually solve the problem at the root of the problem. The bar is content with the status quo and prefers the “claims are the focus” approach so that they have free reign to squirm forever in amendments and cons etc.”

      LOL – have you so soon forgotten about Tafas?

  28. 4

    Yeah Imma have to disagree with you there D. All this case does is show that the Federal Circuit knows how to properly police the scope of the claims when the applicant has clearly set forth what his invention is.

    The problem is that there is at present nothing forcing the applicant to clearly set forth what his invention is, and thus patent attorneys are able to skip all that messiness and instead skip straight to claiming what they want. This is due to the over-generous interpretation of 112 1st paragraph’s opening words by the courts. Were they followed to the letter, and patents more often entirely rejected (rather than merely the claims contained therein) based on 112 1st then we’d be in good shape.

    That’s the problem with the system. Not that the courts are coming down over-harsh on people that actually do set forth their invention clearly.

    And it is a real problem. Only good legislation with teeth is likely to ever cure that problem.

    “The specification shall contain a written description of the invention, ”

    ^If you don’t do that then you whole shebang should go straight down in flames. But instead we have a system where we let the worst offenders (people that never explicitly say what the invention is and instead make a general description of a whole big bunch of “stuff” that isn’t the invention mind you, and then skip straight to the claims) go scott free and instead hold the law-abiding citizens to a higher standard, via construing only their claims more narrowly due to their obeying 112 1st, than the worst offenders are held to.

    It’s a real problem, but nobody has any will to actually solve the problem at the root of the problem. The bar is content with the status quo and prefers the “claims are the focus” approach so that they have free reign to squirm forever in amendments and cons etc.

  29. 3

    In this case, the specification refers to the sandwich configuration as “universal to all the embodiments” and as “an essential element among all embodiments or connotations of the inventions.”
    If I was reviewing an application written by an associate and came across that language, I would rip him/her a new ____hole. Why would anybody write such language?

    2. 3.2

      I have no doubt that if you reviewed the billing records from the firm(s) that drafted these you would find the old “partner tax” on them for “reviewing draft application.”

      Time for some folks to review their malpractice policy?

        1. 3.3.1.1

          I was just providing a direct and obvious answer to a question, Billy.

          You should try it sometime. Ask your mommy to help you.

          1. 3.3.1.1.1

            LOL – What you were “just” doing was being banal and vap1d.

            Nothing more.

            (Pull your head out of your arse and realize that well over 95% of claims of any value are beyond your “picture claim” motif.)

      2. 3.3.2

        Why would anyone write that? Gee, maybe because its true.
        If it is true, then why wouldn’t they put it in the claims? Something necessary for the invention yet not in the claims — doesn’t make sense.

        Regardless, you don’t put that language in the specification. It doesn’t help and can only hurt.

  30. 2

    Another case to be listed in the glossary for “patent profanity.”

    (cross reference under (un)foreseen consequences)

      1. 2.1.1

        I don’t think you need to have written very many applications to understand that a statement of “Every embodiment of my invention includes this feature” means, well, “Every embodiment of the invention includes this feature.”

        1. 2.1.1.1

          DanH/Leopold,

          You seem to belabor the obvious and miss the point of “patent profanity.”

          That the courts seem unable to recognize their hand in what they want to turn around and deride as “scriviner” machinations is – or should be – a lesson in Denial of Reality.

          1. 2.1.1.1.1

            That the courts seem unable to recognize their hand in what they want to turn around and deride as “scriviner” machinations is – or should be – a lesson in Denial of Reality.

            What are you talking about? The court in this decision simply followed the rules of common sense. Do you think there should have been a different result? Do you think the patent owner was actually entitled to claim scope that covered embodiments omitting the “essential” and “universal” feature described in the specification.

            1. 2.1.1.1.1.1

              I’m inclined to agree with DanH. If you are applying for a patent presumably there is AN INVENTION that you are trying to protect. If you never mention an invention, why are you writing a patent application?

              Good claim drafting is tied to good spec writing and is informed by what the inventor did, what the prior art discloses (from which you are trying to distinguish THE INVENTION in the claims).

              If the inventor only has one embodiment, then perhaps that is all that he has invented and is entitled to exclusive rights to. We usually try to broaden that scope to also include variations that the inventor (with prompting from the Scotus-derided “draftsman”) identifies, but if you can’t foresee it at application writing time then maybe it is not right for the patent to cover it. When those additional variations are identified, mention them in the spec and write the claim so that it reads on them, if you want claim scope that covers it.

              Yes, that is a bunch of hard work and thinking, but that is what we get the big bucks for.

              Oh, and by the way, rather than blame the patent draftsman for writing too narrow a patent, why don’t we blame the litigators for bringing suit when there is no infringement???

              4. 2.1.1.1.1.1.4

                I think you’re exactly right, help. When a court limits the meaning of a claim based on disavowal or file history estoppel, there’s a tendency to think that the patent prosecutor messed up. That may not have been the case, of course – the specification/file history statements may have been necessary to procure the claims in the first place. The litigating patent owner’s view of claim scope may be wishful thinking.

              5. 2.1.1.1.1.1.5

                “I’m inclined to agree with DanH. If you are applying for a patent presumably there is AN INVENTION that you are trying to protect. If you never mention an invention, why are you writing a patent application?”

                I quite agree. All these hundreds of thousands of applications that never even tell what the invention is that they’re trying to protect with the claims should go straight down the toilet until people can be bothered to tell us what the invention is first, and then put forth their claims thereupon.

              6. 2.1.1.1.1.1.6

                “and is informed by what the inventor did”

                That becomes problematic in some arts though because the only thing the inventor did was “dream” and “prophecy”.

              9. 2.1.1.1.1.1.9

                “I might in fact be the physical manifestation of the dark side.”

                LOL – you are a legend in your own mind 6 (this probably goes to your odd power/control obsession).

            2. 2.1.1.1.1.2

              I am talking about the big picture – and the point of the thread – as opposed to the focus you apparently have on one tree in the forest.

              Clearly.

              This single instance? Bah, not all that important.

        2. 2.1.1.2

          Yeah I really don’t see what the hubbub is when the guy clearly comes out and says something, like on purpose. The only real travesty in this case is the examiner not giving the applicant a rejection under 112 2nd to make him go ahead and claim that which he so blatantly has stated for the record is part of his invention.

  31. 1

    Interesting, Professor Crouch that you use the word “problematic”. I agree that the way cases are drafted in the USA is rather different from the way they are drafted for the rest of the world and that this decision can be taken as an endorsement of US drafting style. I have myself yet to read the Decision (or the patents in suit) but from what I have read above, I expect to find that what the CAFC thinks the PHOSITA reader would derive from the patent is no different from what the EPO would think the PHOSITA would derive. The PHOSITA is much the same, all over the world.

    If that is so, then the same legal outcome would follow. Claims are construed all over the world in the context of the written description. It is just the path to that outcome would be different under the EPC. For example, this is another case which can illuminate the WD/new matter dichotomy.

    But if that is so, then it is possible to draft in a way that is simultaneously optimal for both the US courts and those of the rest of the world. Not so “problematic” perhaps, after all?

    I hope we will now get a long and useful thread of comments. Thanks, Professor, for highlighting this interesting case.

    1. 1.1

      “The PHOSITA is much the same, all over the world.”

      Not sure why you would think so, MaxDrei. We have discussed the clear differences that are present (for example, given the KSR decision and the takeaway from that decision that the US version of PHOSITA is not the automaton that the EP version is).

      Also, as has been pointed out numerous times, the same legal outcome will not happen because we just do not have the same law.

      You seem to want to start with known erroneous assumptions… and want to end up at “it is possible to draft in a way that is simultaneously optimal for both the US courts and those of the rest of the world. Not so “problematic” perhaps, after all?” – an endpoint clearly contravened by reality.

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