The Vast Middle Ground of Hybrid Functional Claim Elements

FunctionalClaimsby Dennis Crouch

In Robert Bosch v. Snap-On (Fed. Cir. 2014), the Federal Circuit has held that two different claim elements “lack sufficiently definite structure” that must be interpreted under 35 U.S.C. 112(f) as means-plus-function elements and, because corresponding structures were not sufficiently disclosed in the patent document (as required by 112(f)), the associated claims were held invalid as indefinite.  Here the claim elements in question are a ‘program recognition device’ that plugs into a car motor to see if its control software is out of date and also a ‘program loading device’ that updates the control software if necessary.  U.S. Patent No. 6,782,313.

Functional claim limitations are in vogue.  Part of the reason is that the current generation of computer-focused engineers have been trained in an object oriented approach that discusses solutions more in terms of results than in detailed algorithmic steps.  That approach makes it easier to create new tools and devices by relying upon the building blocks created by others.  But, the carryover to patent law remains somewhat tenuous.

Functional claim terms also offer a mechanism for achieving broader claim coverage and claim coverage that is more aligned with the scope of potential competitor activities and follow-on innovation.  The use of functional language for that purpose has a century-long history in U.S. patent law and has been much debated at all levels, including the U.S. Supreme Court.

When the Supreme Court discussed the topic in its landmark 1946 decision of Halliburton v. Walker, the Court described functional claim terms as those that focus on results – “what it will do” – and not on the actual physical implementation.  In Halliburton, the court held:

A claim which describes the most crucial element in a “new” combination in terms of what it will do, rather than in terms of its own physical characteristics or its arrangement in the new combination, is invalid.

Id. The result in Halliburton was that the claim was found invalid under as indefinite because the functional language there (an “echo receiving means”) did not provide sufficient notice of the scope of patent rights.

The Patent Act of 1952 left intact a strong definiteness requirement but overturned Halliburton by enacting what is now known as 35 U.S.C. 112(f).  That provision expressly allows for an element to be claimed as a “means” for performing a “specified function” but without actually specifying the physical characteristics of how it works.  However, 112(f) has an important and significant limitation that cabins-in the scope of any such means limitation to only cover corresponding embodiments described in the patent document, and their equivalents.

(f) Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

A second limitation on 112(f) is the court interpretation that purely functional claim elements that are not physically described in the specification are deemed indefinite and the corresponding claim invalid.

US patent attorneys have taken notice of these legal limits on means-plus-function claiming and have largely abandoned the form. Twenty years ago, most patents included claim terms written in means-plus-function form. Today, that figure is under 5%.  But the strategy for many does not eschew functional claim elements, but rather to integrate functional limitations together with structural limitations with the result being broadly defined claim elements that avoids the limitations of 112(f).

The Big Middle Ground

Partially Functional Elements: The rules are clear for claim elements written in purely functional terms  such as a ‘means for communicating’ without any claimed physicality. However, there exists a vast middle-ground for claim limitations that include some functionality and some physicality.  These might include a ‘circuit for communicating’ or – as in the recent Bosch Case – a ‘program recognition device.’

In Robert Bosch v. Snap-On (Fed. Cir. 2014), the Federal Circuit has affirmed a lower court determination that two different functional claim elements are indefinite and thus that the associated claims are invalid.  The patents relate a motor vehicle software-update tool.  The claims include a ‘program recognition device’ that plugs into the motor control unit to see if the software is out of date and also a ‘program loading device’ that plugs into the motor control unit to upload new software. Easy enough.    But, the specification includes no diagrams and no real structural detail about these ‘devices.’

The Federal Circuit has a fairly straightforward algorithmic approach to functional claims elements. The first step it to determine whether the element qualifies as “functional” and, if so, interpret the limitation under the rubric of Section 112(f).  For the court, a functional claim element is one recites a functional limitation without “reciting sufficient structure for performing that function” or that fails to “recite sufficiently definite structure.” EnOcean GmbH v. Face Int’l Corp., 742 F.3d 955 (Fed. Cir. 2014). The court also uses a linguistic shortcut — claim elements drafted in the form “means for [performing a specified function]” are also presumed to be functional.   Similarly, elements that do not use the word “means” are presumed to be structural.  Importantly, Federal Circuit precedent indicate that these presumptions are “strong.” See Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004).

Here, although the terms were not claimed in “means” form, the court found that they lacked structure and therefore were functional.  In walking through its analysis, the court first looked at the claim words ‘program recognition device’ and ‘program loading device’ and found no structure other than the ‘nonce’ word device.  Then, looking at the specification, the court found:

[The] ‘313 patent’s specification does not contain a single reference to the structure of the “program recognition device” itself; all of the proffered citations from the specification merely explain its function. For example, the statement that the external diagnostic tester is “equipped” with the “program recognition device” that “querie[s] and recognize[s]” program versions in the control unit is nothing more than a functional description. This passage is devoid of structure. Likewise, the passage that explains how the external diagnostic tester uses the “program recognition device” to automatically check which program version is currently on the control unit only describes the connection of the external diagnostic tester to the control unit in the vehicle. The specification is, therefore, also silent about any interaction between the “program recognition device” and other components of the system, including the external diagnostic tester. Contrary to what Bosch contends, the specification does not teach how the “program recognition device” receives and processes signals, as the words “signal” and “process” are not even in the specification. . . .

Because the claim terms lack structure, the court determined that they fall under the rules of 112(f) [112p].

The claim terms, construed in light of the specification, fail to provide sufficiently definite structure to one of skill in the art. The claim terms “program recognition device” and “program loading device” invoke § 112, ¶ 6.

The problem for Bosch in this case is that the same analysis of the specification above also supports the conclusion that the claimed function lacks structural description in the specification. And, as a result, the court found the claims invalid as indefinite.

Since we have concluded that both claim terms invoke § 112, ¶ 6, we now must attempt to construe the terms by identifying the “corresponding structure … described in the specification” to which the claim term will be limited. Welker Bearing Co., 550 F.3d at 1097. “If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed.Cir.2007). On this point, however, little needs to be said. Bosch did not argue to this court that, even if the claim language at issue is within § 112, ¶ 6, the language is definite because the specification sufficiently discloses corresponding structure. See Appellant’s Br. 51–52. And we also see no such disclosure.

Indeed, as already discussed in Part III.B, in the limited number of instances that the specification even mentions these claim terms, it offers no further guidance about their structures. Therefore, we conclude that “program recognition device” and “program loading device” are indefinite. Since these terms are found in the only independent claim of the ‘313 patent, we conclude that all claims in the ‘313 patent are invalid.

An important element of the court’s analysis here is that it is all seen as a question of law reviewed de novo on appeal. Thus, although the appellate panel largely agreed with the lower court’s original decision in this case, that decision was given no deference in the analysis. Further, the strong presumption of validity requiring clear and convincing evidence was also entirely ignored here because that evidentiary requirement is directed toward questions of fact not questions of law.

A second important and interesting element of the court’s decision here is that it does not cite the Supreme Court’s most recent foray into indefiniteness – Nautilus v. BioSig (2014) (requiring reasonable certainty).  Likewise, the court did not cite Halliburton. In fact, the court has not cited Halliburton for almost 20 years and it has never cited the case other than to criticize the decision or indicate that it has been legislatively overruled by 112(f).

The case here is also in tension with those cited above: EnOceanLighting World, and Inventio. however, the court here took steps to distinguish those cases based upon the ‘fact’ that Bosch’s patent application failed to provide structure in the specification to guide one skilled in the art in understanding the ‘device’ limitation.  In the other cited cases, the specification included examples and diagrams sufficient to transform the seeming ‘nonce’ words into ones with structural meaning.

What will be interesting here will be to see whether this case is the beginning of a movement in a new direction.  This case’s path to the Supreme Court is most likely if the Federal Circuit first grants an en banc rehearing request.

162 thoughts on “The Vast Middle Ground of Hybrid Functional Claim Elements

  1. The moment you leave behind claims that are “purely” functional is the moment you enter into the vast middle ground wherein one is allowed to use language of functional description.

    The law fully supports the use of such language, quite apart from the sixth paragraph of 112.

    Such is statutory law that cannot be overridden by the courts. When all else fails, start with the statute.

  2. “For the life of me I cannot figure out why this is not happening. It seems like after a couple of brutal 9-0’s, people would change their approach. Maybe its a “stages of grief” type thing. We’ve had denial and anger. Time for bargaining!”
     
    Why is there need for anyone in favor of business methods and software patents to be in grief? If anything it’s the anti patent crowd that is in denial. Specifically in denial that Business methods have been upheld as patent eligible subject matter by the Supreme Court, 5-4 in Bilski. And now there are probably only three votes against them since Stevens has retired.  And in denial that the Court specifically refused to strike down software patents as far back as Benson, upheld them in Diehr and that case is still the controlling precedent, as so indicated in Mayo.
     
    In fact, if you look at the current state of patent law rationally and logically, all that has has occured in Mayo, Bilski, and Alice is thus::
     
    Bilski= A hedging concept that can be reduced to practice as a a math formula is an exception to statutory subject matter.
     
    Mayo= A  law of nature/natural phenomenon reduced to two steps and nothing significantly more is an exception to statutory subject matter.
     
    Alice: Another hedging concept similar to Bilski’s and offering nothing more is still an exception to statutory subject matter.
     
    Okay so you can’t patent hedging concepts and laws of nature. The above doesn’t sound like the end of software or business methods to me. But what I can’t understand is why the anti patent crowd can’t reconcile any of their legal beliefs/theories with the Courts “Integration” analysis from those cases.  Could it be that “Integration”, the antithesis of dissection , makes it possible for 99.9 % of all business method and software to pass 101 as statutory subect matter?
     
    To paraphrase the great anti patent  proponent Malcolm Mooney, “Ding, Ding, Ding, we have a winnuh!!”

    1. 101,

      Well, I agree with you that not all software or business method patents are ineligible per se under the current law. However, I do not think Mayo, Bilski and Alice are as limited as you suggest. For example, the same reasoning that would invalidate a hedging method would invalidate many, many other patents that purport to organize human activity or otherwise claim a very old economic practice, on a computer.

      I’m still a little unclear on the concept, though I do appreciate that you’ve tried to explain it. Were the claims in Alice not integrated? I seem to remember their requiring computer implementation.

      As an example of how these cases are being implemented, see BuySafe v Google, Planet Bingo v VKGS, Digitech v Electronics for Imaging. There are also many district court cases along these lines.

      I would argue that these cases indicate that the federal judiciary believes that Bilski, Alice and Mayo are as limited as you suggest.

          1. Well, l surely can’t speak for Mr. Cole, but I for one am aware that some lower court judges are not following the Supreme Courts rule on Integrated claims as the Court said “must” be done. I also believe in a year or two you will see the Court take up one of these cases and hold the claims are eligible because the claims are “Integrated” to the point the claims do not preempt an implicit exception.

        1. “I would argue that these cases indicate that the federal judiciary believes that Bilski, Alice and Mayo are as limited as you suggest.”
           
          The question is not whether these Federal and DC judges believe the Courts predecents are limited, but whether the judges are applying the Courts “Integration” analysis. 
           
          By not doing so these judges are thereby eviscerating the Supreme Courts rule that, ” in applying the §101 exception, we must distinguish between patents that claim the “‘buildin[g] block[s]’” of human ingenuity and those that “integrate” the building blocks into something more, Mayo, 566 U. S., at ___ (slip op., at 20), thereby “transform[ing]” them into apatent-eligible invention, id., at ___ (slip op., at 3).” [Emphasis Added]
           
          Yes, Alice’s method  ( series of steps ) is “Integrated”,  as are all fully enabled claims . The process in that case is “Integrated” into a computer system. However in the Courts view, the concept itself is pre-empted even  when”Integrated” on a computer and therefore falls into one of the implicit exceptions. The lesson here is the concept must be “Integrated” to the point it no longer covers the concept itself.
           
          I would suggest you go back and read all the Federal Circuit cases you cited and ask the question, is the concept itself pre-empted, even when “Integrated” on a computer?  If the answer is no in any of those cases then that is cause for the Supreme Court to overturn the lower courts decesions. Because as the Court said, “The latter ( referring to “Integrated”patent claims ) pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws. (See Alice)

  3. It is fundamentally unfair to invalidate the claims of a patent X years post-issuance due to a change in the law.

    I think it would only be fair to push the patent back into some sort of a reexamination process to see if any claim could be allowed if written differently. If no claims are allowable, so be it, but we shouldn’t punish patentees for getting claims allowable under one set of laws on validity and then changing the validity rules after the fact and using those laws to invalidate claims written to another standard.

    The current process is insane.

      1. Optional, voluntary reexamination upon a finding of invalidity would help. Of course this assumes the spec was written more robustly as well, which was not required either.

      2. The rule is basically that the courts can retroactively change patent law while Congress generally cannot.

        So… where does the USPTO fall in that spectrum? Is the USPTO part of Congress, or part of the court system?

        I don’t even mean the PTAB, which at least has administrative law judges and looks like a court. I mean the USPTO Office of Policy and International Affairs, and the instructions that they give to examiners. If their policy instructions post-date the filing of these applications by several years, and also insert brand-new requirements of patent-eligibility that cannot be amended into the specification without adding new matter – is that an administrative taking, or simply a radical reinterpretation of law?

          1. “This repeal, however, can have no effect to impair the right of property then existing in a patentee, or his assignee, according to the well-established principles of this court in 8 Wheat. 493; the patent must therefore stand as if the acts of 1793 and 1800 remained in force” McClurg, 42 US at 206

            The case, 9 Wheat. 493 is never cited by name. Dennis, do you know the US citation?

              1. The money quote from Society:

                But there is a still more decisive answer to this objection, which is, that the termination of a treaty cannot devest rights of property already vested under it.

                If real estate be purchased or secured under a treaty, it would be most mischievous to admit, that the extinguishment of the treaty extinguished the right to such estate. In truth, it no more affects such rights, than the repeal of a municipal law affects rights acquired under it. If, for example, a statute of descents be repealed, it has never been supposed, that rights of property 494*494 already vested during its existence, were gone by such repeal. Such a construction would overturn the best established doctrines of law, and sap the very foundation on which property rests.

                Id. at 493-494.

                1. The point about vesting here is interesting from the standpoint of how you view what the Court is doing.

                  If the Court is merely interpreting, then there is no “real” vesting.

                  If the Court is instead changing (writing) patent law, then there was a vesting (at the time of grant).

                  I think it clear what Congress intended when they state that a granted patent has the attributes of personal property: at the time of grant, the item is vested.

                  The logical conclusion then is that the Court is writing patent law…

                  …so we come then full circle to the Separation of Powers issue. Prof. Hricik has spoken of this on his side of the blog concerning the difference between judicial interpretation and writing law through the mechanism of common law development. It is worth repeating that writing patent law in particular has been designated to a particular branch of the government in the heart of our constitution. Many other areas of law are not so constrained.

    1. Bluto –

      Why do you stop at re-claiming. The spec was drafted based on the requirements understood at the time. If the rule at the time was –describe it so one of ordinary skill would understand– and the rule now is, expressly recite the litany of combinations of memory and microprocessors, micro-controllers, digital signal processors, tc currently available from Intel, Atmel, Advanced micro-devices, Analog Devices (thats just the A’s off the top of my head) that could be used to make the device and show circuit schematics for each showing how each would interconnect to memory devices and I/O devices and power supplies and flow charts, and state diagrams, sample code showing the variety of ways each claim element could be implemented, isn’t it equally unfair to punish patentees for getting claims allowed with support that was sufficient under one set of laws and then change the support rules after the fact?

      1. isn’t it equally unfair to punish patentees for getting claims allowed with support that was sufficient under one set of laws and then change the support rules after the fact?

        It’s not “unfair” because it applies to everybody and everybody is on notice that the law or the interpretation of the law could change at any time. That’s doubly true when the law being relied on was created by a lower court and has been heavily criticized from the moment it was created.

        This has always been the case in patent law and it’s what makes the practice of patent law interesting and challenging. You have to think several steps ahead at all times and account for as many contingencies as possible. If you fail to do this, you are almost certainly going to get burned.

        From the perspective of someone (or, more accurately, just about anyone) who started out drafting biotech applications for the international stage many years ago, these sourpuss, handwringing complaints about a requirement for actual data and a detailed description of a working embodiment (or two) in exchange for a broad 1/2 billion dollar information-processing patent claim aren’t terribly compelling, to say the least.

        1. “This has always been the case in patent law and it’s what makes the practice of patent law interesting and challenging. You have to think several steps ahead at all times and account for as many contingencies as possible. If you fail to do this, you are almost certainly going to get burned.”

          How can someone write this kind of nonsense and do it with a straight face?

            1. Anyone who thinks they can, with any certainty, predict the future of law, issued by courts whose constituents change frequently and in response to changes in politics, should apply for James Randi’s million dollar prize. Should we call you Sylvia Brown from now on?

    2. Any patent applicant who relies on “magic words” (e.g., “configured to”) handed down to them by a court or an agency that is plainly bending over backwards to find some way to accomodate that applicant is playing with fire and asking to be burned.

      Applicants need to demand from their patent lawyers a nuanced and informed view about the state of patent law that takes into account all of the contingencies. Relying on a “software patent” in the short term to secure some money from an otherwise skeptical investor or bank may be feasible but relying on the continued existence and/or enforceability of such patents over the long haul is a big gamble.

      Do not forget: from the perspective of many of us, the claims shot down in Bilski, Mayo and Alice were never valid. Not even close. We didn’t hide our views about that. But those views were not only ignored by many, but vociferously derided at every turn. And they are still being derided by many of those same people in spite of the fact that there will be no “swinging back of the pendulum.”

      Whose fault is it that some people refuse to listen and choose instead to find sources of “information” where that information amounts to little more than sunshine being blown up their behinds? Not mine.

      What’s really “unfair” is that the gates were ever opened so wide that any person with an idea for a new “function” could buy their ticket and rush in. The circus is going to take a long time to shut down because all those folks who swarmed into the gates want to finish their peanuts before they leave.

  4. I’d like to see specific examples where people think functional claiming is a problem. So, a functional claim and then an accused device that you believe should be held to infringe.

  5. This case just reinforces the obvious – one cannot simply take the fact that a machine will do all the processing you tell it to and use that to support a claim to anything on a computer.

    The actual test (which the federal circuit is looping around to the long way round) is that Aristocrat applies to all language. When a claim is directed to functional goalposts it is claiming an abstract idea with no limitation on how to get there. Consequently it has 101 problems (claims an abstract idea), 112 1st problems (does not enable or possess the full scope of the idea) and 112 2nd problems (novelty cannot be claimed functionally). The Supreme Court was here 70 years ago if not sooner, and some poor decisions have waylaid the Federal Circuit.

    What I say when I mean Aristocrat applies to all language is that in order for a patent to be validly asserted against a defendant, the patent must describe an algorithm of sufficient specificity that one of ordinary skill would immediately know the structure of the steps taken to get there for all parts of the program.

    A claim to a novel function violates 101 and 112, 2nd. The failure to disclose every means of getting to that function violates 112, 1st. Consequently, unless one discloses the means of achieving each part of the program and those parts match up (at least in an equivalent manner) to the infringer’s program means that an infringer will always have a Lizardtech or Abbvie defense to a limitation, or even a Wabash or Alice defense before that. You cannot simply say “Function F was known in the art” and rely upon that to protect your claim, and you certainly can’t (as even the Federal Circuit seems to be getting this now) say “One of ordinary skill could figure out how to do F so I claim F.” It simply does not matter that one way of doing something is known or can be achieved when the scope is directed to all ways of achieving something.

    1. What is the point of 112-2? The EPC manages OK without it. Take the set consisting of eligibility, novelty, obviousness, enablement. Isnt that enough to despatch into oblivion any claim that is bad?
      Or does the EPC need revising?

      1. The problem with 112-2 is that it doesn’t give the judge the ability to sniff the patent and claim it is invalid based on how he/she thinks it smells.

      2. There is an agenda at work here. There are a group of people that rather than wanting to go to Congress have decided our courts are a better place to get legislation.

        That is the US way. The golden rule. He who has the gold makes the rules.

      3. What is the point of 112-2? The EPC manages OK without it. Take the set consisting of eligibility, novelty, obviousness, enablement. Isnt that enough to despatch into oblivion any claim that is bad?

        I tell you to do X on a computer. 100 PHOSITAs come up with 100 ways of doing X. Applicant claims doing X. Is X enabled? Yes. Is X eligible? Possibly. Does Applicant possess each way of doing X? Probably not. Applicant has a single way of doing X. That’s why you need WD.

        You need indefiniteness for similar reasons – enablement can cure any issues on the outer boundary of a nebulous claim, but obviousness won’t necessarily cure the inner boundary, because applicant may not be claiming all he is entitled to, nor is it immediately clear where the office draws the obviousness boundary.

        1. Thanks for that revealing answer. If only the PTO had a reliable way to examine for obviousness, and if only it were required to enable over the full width of the claim. Would examination at the PTO then proceed more expeditiously and fairly?

          1. When a person first invents the bow, and claims “a machine that fires a projectile” how does the EPO enforce a scope that would exclude a gun from coverage, despite the fact that nobody has posited the gun at the time?

            i.e. Prove that they haven’t enabled the full scope without using any evidence that the scope is not enabled.

    2. That’s exactly right. Hopefully, the Fed Cir uses this analysis to satisfy Alice requirements. For all those who understand algorithms, there are A LOT of crappy, functional-language-laden patents out there that need to be invalidated, albeit following an invalidation analysis that makes more sense than Alice.

      As to the object-oriented programming that Dennis mentioned. We are heading into that darkness very fast—is there a copyright or a patent right for a painting drawn by an elephant, a selfie captured by a monkey, a painting drawn by a robot, a program coded entirely by a computer (and which the initial programmer would have to read to understand what the computer’s algorithm is).

    3. RandomGuy

      The following claim claim is directed to functional goal posts. Is it abstract and not eligible?

      18. A method for fabricating a high light extraction efficiency light emitting diode (LED) structure, comprising:
      (a) wafer bonding a first optical element, comprising n-type ZnO, to a p-type layer of an LED, to form a wafer bonded structure, wherein the LED is comprised of an n-type layer having an n-type electrode, an active region, the p-type layer, and the n-type ZnO;
      (b) shaping the first optical element into an n-type ZnO cone to extract light emitted by the active region, wherein a base of the n-type ZnO cone is bonded to the p-type layer, and an angle, between a base and sidewalls of the n-type ZnO cone, is a critical angle;
      (c) placing a p-type electrode on top of the n-type ZnO cone; and
      (d) forming an interface between the sidewalls of the n-type ZnO cone and a second optical element, wherein the second optical element’s cross-section is a trapezoid, the interface extracts light emitted by the active region into the second shaped optical element because the second shaped optical element on one side of the interface has a refractive index lower than a refractive index of the n-type ZnO cone on the other side of the interface, the critical angle is determined from the refractive index of the second shaped optical element divided by the refractive index of the n-type ZnO cone, and most light entering the n-type ZnO cone from the active region impinges on the interface within the critical angle for refraction into the second shaped optical element, so that the trapezoid and the n-type ZnO cone provide at least a 500% increase in output power.

      1. If you’re referring to d, it looks like it is structural with intended use or prolix about inherent properties thrown in (“the interface [performs function] because of [structure]” is read in terms of patentable weight only as “[structure]”)

        But to answer your question – if the claim asserts there is a function performed, but discloses no or inadequate structure for performing it, it is either invalid because it is purely functional, or it is properly construed as being in means-plus, and becomes invalid if the spec has no structure in it. If it is in means-plus and the spec does have structure, then by operation of statute the scope is limited to the structure. Either way the limitation is structural. There is no such thing as a valid functional limitation imparting novelty.

        1. I am talking about each element, with the possible exception of the placing element.

          Each recites a step in general terms and then describes the desired result of the step.

          The patent office disagrees with you, as do I.

          link to google.com

          1. I think it ought to be clear that what the patent office considers patentable and what the courts consider patentable seem to be two vastly different scopes. I’m talking about the law here.

            Each recites a step in general terms and then describes the desired result of the step.

            There is step-for just as there is means-for. Either the specification states an act which would allow you to perform the function, or it does not. If it does not, the claim is invalid. If it does, the claim is limited to that act. You cannot validly claim the full scope of a functional result.

            You can’t get around the fact that WD requires you to possess the full scope of your claim. If an infringer can show that you did not possess that scope, then you aren’t entitled to the claim. This is pretty basic stuff here. It is clearly stated in several cases that merely using the same words, claiming function F and then saying in the spec to do function F, is insufficient description.

    4. The patent must describe an algorithm of sufficient specificity that one of ordinary skill would immediately know the structure of the steps taken to get there for all parts of the program.

      I’m curious why you think this is necessary, when such requirements are neither present nor demanded in any other field of technology.

      In chemicals, the applicant does not need to describe an exact, step-by-step process for making the chemical in the manner of a cookbook. The disclosure is sufficient if a chemical engineer could figure out how to make and use the disclosed chemical.

      In semiconductor processing, the applicant does not need to describe the step-by-step process for manufacturing a semiconductor, starting from the bare substrate. A description of the actual change in the process, with a nominal reference to the step of the process that’s being changed, is sufficient.

      In mechanical engineering, the applicant can describe the new part of an engine. The disclosure does not need to describe the exact process of building an engine, step-by-step, from the bolts up.

      All of these areas reflect a consistent trend: the written description only needs to meet the level of ordinary skill in the art. Yet, this complaint about software seems to presume a special need in software for an exacting disclosure – all the way down to the type-in source code listings that appeared in computer magazines in the 80’s.

      On what basis do you demand a tremendously higher level of disclosure for software than for any other technology?

      Do you perceive that there is no “level of ordinary skill” in software? Why can chemical patents be oriented toward the typical chemical engineer, but software patents can’t depend on any level of expertise?

      1. I’m curious why you think this is necessary, when such requirements are neither present nor demanded in any other field of technology.

        Structure is always a requirement of a claim. Functional claiming is improper and always has been.

        In chemicals, the applicant does not need to describe an exact, step-by-step process for making the chemical in the manner of a cookbook. The disclosure is sufficient if a chemical engineer could figure out how to make and use the disclosed chemical.

        If the computer medium was defined in the same manner as the chemical code (a medium containing the flops 010111010…) then yes, the structure would be satisfied in the same way the structure of the chemical is satisfied. But that’s not what is happening, is it? The computer is claiming any structures (any set of commands, any flops in a disk, etc which is a huge range of structures) which cause a result to happen. If a chemical claim was directed to “any compound that cures cancer” that claim would be invalid too.

        A computer program defined by the function it performs is nothing more than a method. You cannot say “I claim a method which does X” you have to claim a method containing steps ABCD, the use of which causes X to happen.

        All of these areas reflect a consistent trend: the written description only needs to meet the level of ordinary skill in the art.

        Perhaps you’re misunderstanding the argument – I’m not saying that there is no skill in the art for software, as it is not a question of what one can or can’t build, as that goes to strict enablement. What you cannot do (under any number of grounds) is actually know of one way of achieving something but create a vaguery in your claim language such that you are in fact getting many or all of the ways of achieving something.

        Lizardtech put it well – if one creates a new fuel-efficient engine, even if they perfectly enable or describe that engine, that disclosure does not necessarily support a claim to ALL fuel-efficient engines, no matter how different in form or method of operation. The reason you have to disclose your way of performing a function is not because the art is full of uneducated oafs, the reason you have to disclose your way is because that is all you are entitled to claim.

        Morse had a particular machine that harnessed electrical signals in a particular way to create his claimed result (printing at a distance). Morse violated 101 because his claim was to an idea/result (printing at a distance) but he also violated what today would be 112 1st and 2nd, because he did not describe or enable the full scope of what he claimed (which should be clear, since a computer connected to the internet infringes on Morse’s claim, and he obviously didn’t describe or enable that). The claim to the machine Morse had was valid, the overclaim to any way of doing it was not.

        Once it is clear that you are only entitled to your way of doing something (something that ought to be an initial starting point in all patent law thought) it should become obvious why you need to disclose each part of the algorithm – the infringer’s defense is always going to be that the infringer has a completely novel way of doing step XX, and thus Applicant never possessed his method, but is instead trying to capture it via functional language. This very same thing was done in the chemical sphere in Abbvie – the patentee disclosed structures, claimed functionally, and the infringer got off because his structures were totally different and there was no proof the patentee ever had the infringer’s structures.

        1. If the computer medium was defined in the same manner as the chemical code (a medium containing the flops 010111010…) then yes, the structure would be satisfied in the same way the structure of the chemical is satisfied.

          Once again, we see the persistent belief that claims in other areas, like chemistry, are specified with exacting precision, while claims in software are not.

          A glance at some recent chemical patents reveals otherwise:

          U.S. Pat. No. 8,859,628:

          1. A method of treating Alzheimer’s disease comprising administering to a patient in need of such treatment an amount of scyllo-inositol of about 1 to about 70 mg/kg/day.

          Ah, structure – as in, the word “scyllo-inositol.” That’s some powerful “structure” right there.

          U.S. Pat. No. 8,865,841:

          1. A thiol-containing liquid rubber composition comprising: (A) a styrene-butadiene copolymer which is liquid at 25.degree. C.; and (B) a polythiol derived from mercaptocarboxylic acid, wherein the styrene-butadiene copolymer (A) is a random copolymer and has a number average molecular weight (Mn) of 3200 to 17200, and wherein the rubber composition is thermally curable.

          U.S. Pat. No. 8,865,813:

          1. A coating composition capable of forming a crystal-like stereo-pattern, comprising: a polyester; a curing agent for curing said polyester; a curing catalyst mixture including at least two curing catalysts to provide different curing rates for curing said polyester; a composite solvent including at least two solvents having different dissolving powers for said polyester; and a wax incompatible with said polyester, wherein said curing catalyst mixture includes first and second curing catalysts, said first curing catalyst providing a curing rate faster than that of said second curing catalyst, and wherein said first curing catalyst is a primary amine, and said second curing catalyst is a weak acid.

          I see “functional claiming at the point of novelty.”

          I see property- and results-oriented claiming: “the wax is incompatible with the polyester”; the rubber composition is “thermally curable.”

          I see all sorts of things that would cause software patent opponents to decry the sloppiness and overbreadth of claim drafting… if only these claims were presented in the field of computers.

          1. Once again, we see the persistent belief that claims in other areas, like chemistry, are specified with exacting precision, while claims in software are not.

            Its partially about the precision, but it’s about whether its structural or not, and whether you can reasonably be more descriptive of what it is you have. If it’s not structural you have a 101 issue. If it’s not reasonably descriptive you have a 112, 2nd issue. You’re also likely creating an overbreadth issue under 112, 1st.

            Ah, structure – as in, the word “scyllo-inositol.” That’s some powerful “structure” right there.

            I don’t know what scyllo-inositol is, but I assume that is referring to what is in the compound. What is in the compound of a computer program that calculates hedges? In any case, if the structure there is too vague, then that patent is invalid too.

            U.S. Pat. No. 8,865,841:

            This looks entirely structural?

            U.S. Pat. No. 8,865,813:

            This one is invalid.

            I see property- and results-oriented claiming

            Properties are not necessarily a problem, though they can be. Functions are a problem.

            I see all sorts of things that would cause software patent opponents to decry the sloppiness and overbreadth of claim drafting… if only these claims were presented in the field of computers.

            I’m not getting this crusade. Nowhere have I said that it applies only to computers or that it doesn’t apply to chemistry.

            There is a thing you cannot do which is commonly done in software – which is describe your program not by what it IS but by what it DOES. Software, being entirely ethereal in nature, is fertile ground for this misuse, and it is the worst place for it. That is not to say it cannot be done elsewhere obviously – Morse, Wabash, Perkins Glue, Halliburton – machinery and chemical cases. But they all exhibit the same problem which today is done commonly in computers: An attempt to avoid describing the structure of what you have by instead describing the results of the use of the structure that you have.

            If you invent a bow, you can claim the bent wood and the string that forms the bow. You can’t claim a machine that fires a projectile, as that is overbroad of what you have made (1st), claims you novelty in functional terms (101) and is not reasonably definite because a better description easily exists (2nd).

            The problem occurs everywhere, and the standard is the same it was 60 years ago – the means-plus standard, as that is the only way you can claim functionality. Computers are the best at violating it for precisely the reason Dennis suggests – computer programmers themselves think of the program not by the steps it takes but by the ultimate function that it performs.

            1. >>If it’s not structural you have a 101 issue.

              The anti-patents for information processing put forth so much nonsense. Here we have mystics. They believe that thinking occurs in the spirit world and that machines perform functions without structure.

              It is how one skilled in the art would view the claim. None of the claims I have seen would present a problem for me (an MS in computer science).

              Just nutso stuff.

              1. The anti-patents for information processing put forth so much nonsense. Here we have mystics. They believe that thinking occurs in the spirit world and that machines perform functions without structure.

                Every time you open your mouth I feel sorry for you man. The Supreme Court has routinely said what ought to be obvious – describing a machine by function does not limit its structure.

                It is how one skilled in the art would view the claim. None of the claims I have seen would present a problem for me (an MS in computer science).

                It’s about claiming what you have. He doesn’t have every way of performing the function. He has one way. Nor do you possess every way of performing the function.

                If you want to run around pretending that the facts you would like to be true are actually true, get a job at Fox News. If you want to be a patent attorney, you might want to actually use the legal standards.

          1. Actually, there is no “immediately” requirement. The requirement is –without undue experimentation–.

            No, that’s the enablement standard. Whether it could be done with or without undue experimentation has zero importance for written description. I’ll just quote you the paragraph if you’re not going to read the case and make the same arguments they did:

            Aristocrat also argues that, even if there is no disclosure of an algorithm in the patent, the disclosure of a microprocessor with “appropriate programming” is a sufficient disclosure of structure for meansplus-function purposes, because the evidence showed that one of ordinary skill in the art could build the device claimed in the ‘102 patent based on the disclosure in the specification. That argument, however, conflates the requirement of enablement under section 112 paragraph 1 and the requirement to disclose the structure that performs the claimed function under section 112 paragraph 6.

            As I said, sooner or later the court will figure out that it doesn’t just apply in 112, 6th circumstances, because the evils it causes occur outside 6th as well. What is indefinite under 6th is undescribed under 1st.

            1. I better quote the next paragraph too for full understanding:

              Whether the disclosure would enable one of ordinary skill in the art to make and use the invention is not at issue here. Instead, the pertinent question in this case is whether Aristocrat’s patent discloses structure that is used to perform the claimed function. Enablement of a device requires only the disclosure of sufficient information so that a person of ordinary skill in the art could make and use the device. A section 112 paragraph 6 disclosure, however, serves the very different purpose of limiting the scope of the claim to the particular structure disclosed, together with equivalents. The difference between the two is made dear by an exchange at oral argument. In response to a question from the court, Aristocrat’s counsel contended that, in light of the breadth of the disclosure in the specification, any microprocessor, regardless of how it was programmed, would infringe claim 1 if it performed the claimed functions recited in the means-plus-function limitations of that claim. That response reveals that Aristocrat is in essence arguing for pure functional claiming as long as the function is performed by a general purpose computer. This court’s cases flatly reject that position.

              Guess what – you can’t claim functionally outside of means-plus either. That rule existed before means-plus came to be. Then 112 6th created a safe harbor for functional claims (by turning the semi-structural by limiting them, by statute, to the disclosed structures). Now people are ignoring the harbor but still demanding the safety. It doesn’t work like that.

                1. Aristocrat was right. The court was wrong. shrug.

                  Good, now you just have to find a place where they listen to Arisocrat Inc rather than the federal judiciary and you’ll be all set.

  6. Hard to sympathize with the loser in this case. There’s no new law here. An attorney with understanding of how 112(f) can be undesirably invoked could have avoided the outcome. It’s not that there was insufficient structure, it’s that there was _no_ structure, in either the specification or the claims. How hard is it to avoid this problem? Not hard at at all.

      1. Incredibly hard, basically impossible in foreign origin work. They don’t have the same rules we do, so anything in “means” format does not have a corresponding structure, and need not have one there.

  7. Second round of assaults on patents continues with the functional claiming nonsense. Just ask: how would a person having ordinary skill in the art interpret the claim in view of the specification. Funny how the Lemley’s and the Google Judges seem to forget that step.

    1. Just ask: how would a person having ordinary skill in the art interpret the claim in view of the specification.

      That just moves the goalpost to what some “expert” is going to testify to in court in exchange for some money and a promise from the patentee’s attorneys that he/she will be given some time to “train” for his/her performance.

      The important issue being presented here doesn’t go away.

      How does a person “having ordinary skill” interpret a functional element devoid of new, objective physical structure or any known objective relationship to any such new structure?

      In the case of the software “innovations” that are typically being filed upon, there is no such corresponding physical structure that is ascertainable by the skilled artisan — at least not one that is unambiguously “new”.

      If you disagree, then go ahead and describe the objective physical structure of software that “determines whether the copyrighted video stream authorized by Grandma Jones at 422 Wildcreek Way contains images or audio is inappropriate for children.” If you need additional information before answering that question, just ask.

      1. I am not sure why Dennis went around and deleted my responses to you MM. Your response to me is shear nonsense. I don’t know what “objective structure” is. You made that term up after our debate about structure. You began adding “objective” as if that adds meaning.

        I have pointed you to many articles about the structure of software from computer scientist. Respond to the computer scientist and academic papers about structure in software. And about the equivalence of software to hardware.

        1. So, please respond to Mano on the equivalence and the structure issue.

          No serious academic would say there is no structure to software.

          1. NWPA I don’t know what “objective structure” is.

            It’s “objective physical structure.”

            objective: not influenced by personal feelings or opinions in considering and representing facts.

            It eliminates those physical structures that can be deduced by a paid expert who has been trained to tell a court “I can see the structure!” in the case where half of the rest of the world sees no structure or a different structure.

            .No serious academic would say there is no structure to software.

            You guys have been making these “no true Scotsman” type “arguments” for years. It’s no different than the usual tactic of labeling everyone who disagrees with you as ignorant of the law and/or the technology. It’s fine to do that if you’re preaching to the choir but it doesn’t work as an argument.

            There is “structure” to software only insofar as there is “structure” to a sentence, an algorithm, or a logical framework. That’s not the type of “structure” that our patent system was designed to evaluate or protect. It’s difficult to imagine how any patent system could be successfully implemented to evaluate or protect such “structures”. In any event, it would seem to require going back to the drawing board and starting over with a very different and specialized regime than the one that we have.

            1. >objective: not influenced by personal feelings or opinions in >considering and representing facts.

              OK. So, it is your belief that things like computers exist without structure? That different functions can be perform by machines without a structural change?

              OK. Sure. And ideas exist in the ether not in your brain.

            2. MM >>making these “no true Scotsman”

              How about you respond to Mano a respect computer architect with a book that was universally used to teach generations of EE/CS people. We quoted from that book about the equivalence of software and hardware. You have never responded to that.

              1. I think that we’re simply coming down to a disagreement over the meaning of “structure” as found in the precedent. We do know that the Federal Circuit has identified a software algorithm as structure when disclosed in a manner sufficient to teach PHOSITA how to make and use it. We also know that from any fundamental physics perspective, software (when implemented on a computer) is certainly physical both in its existence and in the results that it can cause. I don’t think that there is any debate on these points.

                But, we have also seen the Supreme Court disregard certain algorithmic steps as unduly abstract. And, I would suggest that something abstract is not structural.

                Where does all of this take us?

                1. Dennis,

                  If a programmed computer is an element in a larger combination, such as a disc drive, and one is claiming that disc drive, I see no fundamental problem in simply requiring a disclosed algorithm for definiteness purposes. In the context of the larger machine or process, it is only important what the programmed computer does, and defining what it does, in context of an algorithm, is sufficiently definite.

                  The problem occurs fundamentally when the novelty appears to be in the software alone, no larger machine or process is involved, and the computer is generic. Here the software cannot define a new machine so as to pass 101 and be consistent with the Supreme Court cases beginning with Benson and ending with Alice. Rich’s opinion in In re Benson was premised, after all, on a programmed computer being per se eligible. If cannot be and be consistent with the Supreme Court’s opinion in the same case.

                2. Ned, please let LexisNexus know that Alappat is no longer good law as they haven’t heard the word yet.

                3. Where this leaves us is that in physics there is no question that I am right. Ned’s you need a ROM is absurd. MM’s contention that this is not “objective” but based on feelings is not even worth commenting on.

                  Seriously, MM contends that machines without a structural change can perform different functions. Not possible. Moreover, there is no question that the conservation of information is the most important law of physics. Susskind from Stanford who is one of the most respected physicist alive today says this, and I posted a video of him saying this on this blog.

                  Representing and processing information is a physical process that requires time, space, and energy. The only question is whether or not the courts will ignore reality for their end.

                  One can simply not credibly deny 1) that software/firmware/hardware are equivalent. That comes from Mano. 2) That software has structure. A simple search on Google scholar will held many results. Moreover, the equivalency with hardware means it must have structure.

                  So, Alappat may not be good law anymore. I don’t think Graham is good law anymore due to Alice. I don’t think the 1952 Patent Act is good law anymore due to Alice. I think there are retired Fed. Cir. judges that agree with me.

                  So, where we are Dennis is MM never responding to these arguments (except of course with his addition of “objective” where now he claims these are feelings of mine). He clearly has an agenda.

                  And Ned maintaining that the software is not fixed and thus non-statutory, but the software is fixed for solving the functions it solves. Ned won’t address this issue. He clearly has an agenda.

                  And with the courts we are left with judges that are so woefully ignorant that they appear to believe that thinking occurs outside their brains in the spirit world (Stevens clearly believes this.)

                  Just think that these machines through software are beginning to rival our mental abilities. That software is becoming the driver in the world economy and from all forecasts will become more and more the driver. Just think that one of the great industrialist of our time Elon Musk just said that artificial intelligence may be more dangerous than nuclear bombs. That is software may be more dangerous to the human species than nuclear bombs and yet we get these ridiculous arguments.

                4. I also think, although I know you don’t like me saying this, that the only explanation in my mind for the continued push of these arguments is an agenda to remove eligibility from software.

                  And, there are clearly players that are giving vast amounts of money (Google is number one) that want to weaken IP rights.

                5. It would also be possible to compile a list of comments Fed. Cir. judges and SCOTUS have made that evinces such an ignorance of science that they are clearly not fit to sit on the bench.

                  Justice Gingsburg remarks during Alice about the “real world” vs the computer world were shameful.

                6. Also, note Dennis, that MM has not responded to ANY of the substantive issues. He posts on here day in and day out that the structure is “objective” and claims that I feel there is structure. And, ignores Mano, ignores Susskind, etc.

                  Just absurd that he is permitted to post this nonsense.

    1. By the way, I see the Bosch one, but it would be nice to have the others listed at the bottom or in the body as well.

  8. Dennis, you might want to consider actually reading Faulkner v. Gibbs someday, because what you are saying about Halliburton is inaccurate to the extent you morph from talking about the most crucial element in the combination claim to every functionally claimed element in the combination claim without missing a beat. The Supreme Court was careful to make clear in Faulkner v. Gibbs that it had no objection functionally claimed elements in a true combination where the novelty was in the combination. In other words, where the combination was the invention, the elements all could be old, and there was never any objection anywhere in the Supreme Court literature to functionally claiming old elements except for some possible dicta in Halliburton. But that dicta was clarified in Faulkner.

    Because most claims in the 1930s and 1940s had adopted the format of using means plus function for all elements, the bar reacted with appall. §112(f) was originally proposed by the Milwaukee Patent Law Association as a straight overrule of Halliburton. But under Rich and the patent office, they morphed it into what we see today where to use a means plus function was declared to be optional in a combination claim. The rule of construction was a common rule of construction used in courts at that time for means plus function. The rule of construction came out of the Westinghouse case, where the novel element in a combination claim was claimed functionally in terms of what it did. Supreme Court in Westinghouse had said there that to preserve the validity of the claim they would have to construed to cover corresponding structure and equivalents. But it became to practice in the courts to construe all means plus function claims elements that way.

    But regarding functional elements themselves, the Supreme Court has never declared functionally claiming old elements to be a problem with definiteness. Asserting on a problem with respect to what we call functional claiming an invention – that was a problem in that originated in O’Reilly v. Morse, and was the reason why the Westinghouse court said the claim would be invalid if not construe to cover corresponding structure and equivalents.

    So the bottom line is this, the Supreme Court did not overturn Halliburton except to permit the use of means plus function in a combination claim. But in this you have to consider the comments of Federico that pointed out that single means claims were not authorized by the statute, and neither were single means claims masquerading as combination claims authorized and by that he meant where the claim merely added the conventional elements of the prior art to a single means claim. What he seems be have been driving at is that when the claim is not a true combination claim, §112(f), the claim is not authorized by the new statute regardless. And what is a true combination claim, where the novelty is in the combination. Again see Faulkner v. Gibbs.

    Regarding the Federal Circuit, it has been often a lark for many many years taking the clue from Judge Rich who apparently disagreed with Federico about what the intent of §112(f) was intended to do. Judge Rich never really understood the problem of functional claiming, and I can say this by citing to numbers of his cases including Tarczy-Hornoch. When a claim contained more than one element it was a combination claim and never really looks to whether it was a true combination claim. He was a nominalist pure and simple, down the line. We know that Supreme Court abhors nominalism.

    So where the Supreme Court never really objected to functional claiming of old elements, the Federal Circuit now hunts them down like animals. And where the Supreme Court has strongly objected to nominalism, the Federal Circuit still doesn’t get it and still allows what are effectively single means claims so long as the claim includes nominal, but conventional other elements.

    But like anon, I have to point out the statutory language to you. Section 112 makes the use of means plus function entirely optional, and limits their use the combination claims. The Federal Circuit obviously does not respect the language of the statute in either respect.

    1. Ned –

      Regarding : “The Supreme Court was careful to make clear in Faulkner v. Gibbs that it had no objection functionally claimed elements in a true combination where the novelty was in the combination. In other words, where the combination was the invention, the elements all could be old, and there was never any objection anywhere in the Supreme Court literature to functionally claiming old elements except for some possible dicta in Halliburton. But that dicta was clarified in Faulkner.:”

      In Alica and Bilski and I am sure others, where the novelty was, if nowhere else, at least in the combination, the Supreme court has declared that each element was old and that therefore, the claims were not directed toward methods. So, it is respectfully submitted that your assertion is mistaken.

    2. Thanks Ned. I do appreciate that the Supreme Court in Halliburton v. Walker focused in on what they saw as the problem of undue functionality at the point of novelty. The holding in Faulkner (1949) is much more limited than you suggest (at least on its face). There, the court simply held that the novelty of an invention can be in the combination of elements. Although not discussed by the Supreme Court decision, the asserted patent did have means-plus-function claim elements and so you may be implying that those were blessed by the court decision.

      Faulkner v. Gibbs: link to casetext.com

      The following is the full text of the Faulkner decision:

      The controversy here concerned the validity of Patent No. 1,906,260, issued to respondent, May 2, 1933, and its alleged infringement by petitioner. The District Court found the patent to be valid and infringed. The Court of Appeals for the Ninth Circuit affirmed, 170 F.2d 34 (1948). Being moved by the petition for certiorari that there was a conflict with Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), we granted certiorari.

      The record, briefs and arguments of counsel lead us to the view that Halliburton, supra, is inapposite. We there held the patent invalid because its language was too broad at the precise point of novelty. In the instant case, the patent has been sustained because of the fact of combination rather than the novelty of any particular element.

      After the suit in this cause was initiated in the District Court, petitioner modified his device. The courts below held that this modification was insubstantial and did not place petitioner outside the scope of respondent’s patent.

      We will not disturb the concurrent findings upon the issues presented to us in the petition for certiorari. We are not persuaded that the findings are shown to be clearly erroneous. The judgment is Affirmed.

      1. Dennis, exactly that. The use of MPF claims in true combinations was not condemned, nor was the use of MPF claims where such was not the point of novelty.

        And, Dennis, you have to be careful about the holding. It was not limited to MPF claims — but to claims functional at the point of novelty — and that holding simply extended many prior cases to alleged combination claims.

        Claims cannot be functional at the point of novelty. That rule has never been overturned, period.

        1. Claims cannot be functional at the point of novelty. That rule has never been overturned, period.

          Practical question for you, not that the office would ever do this, but how do you handle this on an office level? The applicant certainly isn’t going to admit that parts of his invention are not novel, and the office practices compact prosecution – do you make a rejection to each and every functional limitation?

          1. Random, I have said this before here and will say it again, if in response to an action the applicant relies on a the function of a functionally claimed element to distinguish the prior art, and if it is not in means plus function format, enter a 112(a) and (b) rejection citing Halliburton, GE v. Wabash Appliance, United Carbon and Perkins Glue with the following words:

            “The Supreme Court has held that claims may not be functional at the point of novelty. Applicant has relied on the function of functionally expressed element to distinguish the art, and that element is not in means plus function format as provided by 112(f). The claim therefore is functional at the point of novelty and is properly rejected under 112(a) and (b).

            Applicant may overcome this rejection by amending the claim into means plus function format, or by demonstrating that the combination of elements is not broadly an old combination. Cf., Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 58 S. Ct. 662, 82 L. Ed. 1008 (1938).”

            1. if in response to an action the applicant relies on a the function of a functionally claimed element to distinguish the prior art, and if it is not in means plus function format, enter a 112(a) and (b) rejection

              How do you get around the office rule that you can only enter new rejections if they are necessitated by amendments in order to go final?

                1. Random, you need to fix that rule because it is wrong.

                  haha well I lack that power my friend.

                  WHAT?

                  It IS pretty clear that there are plenty of times when an argument itself creates a rejection. If the Applicant argues that a reference cannot be asserted under 103c because of common ownership, that may inherently cause a Double Patenting rejection, but under the rules of the office that rejection cannot be asserted without going non-final. The end result of that being that it simply isn’t asserted (or they wait until the case will either issue or be amended). That shouldn’t be – the rejection should be asserted immediately. The rule is occasionally wrong.

                2. Well, Random, include in the first OA the advice that one cannot distinguish prior art by reference to function without an amendment into MPF format, etc., so that if the applicant does not make the amendment, simply make the rejection over the art final.

                3. If I may ask you, Mr. Heller: why do you suggest that a claim that uses non-purely functional language can be rejected and made to be rewritten in means plus language?

                  Can you supply a proper rejection for doing so? I have never seen a rejection with such language and would very much appreciate seeing what such a rejection would look like.

                  Mind you if you please, I am not talking about a claim that is “purely” functional – as I indicate above, once you pass from the purely functional, you are in the fully allowed under the law vast middle ground.

                  Are you denying that such middle ground exists? I find such an assertion preposterous on its face.

            2. Ned, Haliburton was decried as a bad decision when it was written.

              Scope of enablement is what you should be permitted. You agree there is no merit to any of this talk of functional claiming except at the point of novelty. But, why at the point of novelty? It is no different. The patentee should be entitled to obvious variants of their invention and all the other ways someone skilled in the art would know or could easily figure out how to build the invention at the point of novelty.

              So, how about a real world example from you Ned. Where there is a functional claim at the point of novelty and an invention you don’t think should be covered by the claims.

              Plus the combination problem. The claims shouldn’t be reduced to an element by element analysis only.

              LazardTech is for policing scope of enablement.

                1. I could do that Night, but the question really is why you think the folks at the time had a problem? Just give us your views.

              1. The problem, Night, is that if the claim is functional at the PON, it is claiming the entire invention functionally. The other elements are merely contextual.

                1. Merely?

                  The reason cited documents have to be analogous art is because it is inventive to take aspects from one art and move them to another art.

                  If a mechanism is known in the art of train locomotives for converting linear motion to circular motion and someone takes that idea and applies in in the reverse direction to convert circular motion to linear motion in the art of toothbrushes, that can be a novel invention and can be claimed functionally at the “PON”.

    3. The bottom, line here Dennis is that without knowing what the invention was, i.e., what the departure was from the prior art, there is no way to judge whether the court in this case was right or wrong. I have a hunch that the critical novelty could have been in the two functionally defined elements, but if the novelty was in their combination and those of ordinary skill in the art would know how to make the described devices (programming a computer for example, putting them into a state machine for another), I don’t see any real problem under the Supreme Court case law.

      The real vice identified in Haliburton and the host of cases it relied on was claiming the novelty functionally. One cannot overturn Halliburton without overturn all those cases going back to O’Reilly v. Morse. Thus it is a very glib statement you make that Halliburton was overruled. Very glib.

    4. But regarding functional elements themselves, the Supreme Court has never declared functionally claiming old elements to be a problem with definiteness.

      That’s not entirely accurate Ned, as functionally claiming an element inherently introduces novelty (albeit unsupported novelty) unless you can come to the conclusion that all ways of achieving something are already known.

      Random claims ABC, where C is novel and B is a functionally-defined old term.

      Ned comes by and invents a completely new way of performing B and then executes ABC.

      Can an infringement action by Random be upheld with respect to Ned, keeping in mind that for Ned’s scope to be valid, he must have possessed Random’s version of ABC?

      1. Can an infringement action by Random be upheld with respect to Ned, keeping in mind that for Ned’s scope to be valid, he must have possessed Random’s version of ABC?

        Sorry, this should read – Can Random win against Ned keeping in mind that for RANDOM’s scope to be valid he must have possessed NED’s version.

        1. The correct answer, as usual, is “it depends”. Your statement that “for RANDOM’s scope to be valid he must have possessed NED’s version” goes too far.

          What if C is a novel and inventive circuit and B is “a power source” (or if that’s not functionally-defined enough for your hypothetical, “means for providing electrical power”)?

          What if C is a novel and inventive active ingredient and B is “a stabilizing agent”?

          Would Ned be able to use your circuit/active ingredient without fear of infringement because he invented a new power source/stabilizing agent?

          1. Would Ned be able to use your circuit/active ingredient without fear of infringement because he invented a new power source/stabilizing agent?

            Except you don’t infringe claims, nor are they valid, on a partial basis. The claim is as a whole. The claim is not directed to a circuit and a power source, the claim is directed to a combination system of a circuit+power source. The office has already determined that Random didn’t have the circuit+power source system (that’s why they gave Ned a patent on it) so how can you argue that Ned shouldn’t be able to use what the office has agreed nobody had?

            I think the issue you’re trying to bring up is the doctrine of equivalents. That is the correct issue, but that’s not what the discussion here is, is it? That’s a significant difference, because the burdens shift when you’re applying the doctrine versus literal infringement.

            1. You misunderstand. Just because you come up with a new power source for your device, the fact that such a new power source isn’t enabled by an existing and enforceable patent doesn’t get you outside of the scope of literal infringement of a claim of that patent that recites simply “a power source” (provided of course that your device has all of the other elements of the claim). Also, the claim doesn’t suddenly become invalid for lack of enablement because you’ve invented a new power source.

              1. That argument you’re making is a doctrine of equivalents argument. In other words, I am saying that Yes, inventing a new power source DOES take you outside of the previous patent. Now, it may be (and almost certainly is) true that the power source has little to nothing to do with the way the machine functions, and thus the new machine and the old machine are equivalent. Therefore the second person still infringes the first patent, but not (when correctly viewed) in a literal way.

                In other words – the original applicant should be made to claim his particular power source. The second person should be found infringing because while he has a different power source, the different power source will likely be found to be equivalent. What you cannot do is allow the original applicant to summarily avoid the equivalence analysis by overclaiming his scope to begin with, because that leads to the original applicant doing what Morse did – saying “I’m the first to get make [broad result] happen, I don’t care how else people make [broad result happen], it’s mine.” If you allow an applicant to decide which differences matter and which don’t, he will always tell you that no differences matter, since that will give him the maximum scope coverage.

      2. Random, the invention is C added to known A and B, where B is anything that achieve function X. Ned invents new B. B achieves function X.

        Does Ned infringe?

        Probably.

        Take claim 5 in Morse. The invention was in a system if dots, dashes and spaces, not in the particular code. The Court there held that Ned did not get off the hook for infringement if he used a different code so long as he used a system of dots, dashes and spaces.

        Take a claim to the picture frame where the novelty is a better means of attaching together four pieces of wood to form a frame, let us say it is a screw and not a nail, and where one of the “old” elements is expresses as means for attaching a picture to the frame. The disclosed means for attaching the picture to a frame are a plurality of clips spaced periodically about the wood pieces on one side, and a recess in each of the pieces of wood against which the picture abuts.

        Ned invents a better way of attaching the picture to the frame, but uses a screw — the novel element of the patent.

        Infringement.

        But the way the Feds view it, one would have to prove that the new way of attaching the picture to the frame was an equivalent of the clips/recess.

        Now that my friend is just plain ridiculous in my view.

        1. The Court there held that Ned did not get off the hook for infringement if he used a different code so long as he used a system of dots, dashes and spaces.

          Ah, but did the court say that because the literal scope was correct, or because the doctrine of equivalents renders that scope equivalent?

          I can transmit data (a well known act), or I can transmit data in a compressed, encrypted form. Are those two things equivalent? Not if you want to stream video, and yet the court’s statement there would certainly suggest that they are – after all, it’s still just ones and zeroes, dots and dashes.

          Ned invents a better way of attaching the picture to the frame, but uses a screw — the novel element of the patent.

          Again, not necessarily. The original claim was not to “a screw” (and otherwise unlimited) the original claim was to a screw in a particular context, and now you’ve gone and changed the context. I don’t know why you would summarily say the change in context is irrelevant. It may very well be irrelevant, but you can’t say that going in.

  9. Congrats to the Federal Circuit for getting this one right.

    Dennis: What will be interesting here will be to see whether this case is the beginning of a movement in a new direction.

    Let’s hope so, for the sake of the Federal Circuit’s credibility damage control. After the clarification of subject matter eligibility, this is one of the other big shoes that has to drop before the US patent system has any hope of recovering its senses.

    With respect to the chart you posted, Dennis, it might be informative to align that chart with the chart showing the patent grant rates over the same time period. As you suggest in your write-up, it’s very easy to describe an “innovation” in terms of its “new functionality”. Anybody who can write a decent sentence in English can “innovate” claims like that all day. Giving applicants the green light to claim “new functionalities” with reciting or disclosing corresponding new physical structure thus drops the floor for what is required by a patent applicant to a very, very low level. An extraordinary increase in patent filings is inevitable once that happens which is exactly what we’ve seen (and it’s only going to get worse if functional claiming at the point of novelty continues to be encouraged).

    1. Correction to my comment: “Giving applicants the green light to claim “new functionalities” without/ reciting or disclosing corresponding new physical structure thus drops the floor for what is required by a patent applicant to a very, very low level. “

  10. Does anyone here not believe that one of ordinary skill in the art would have understood what structures were being claimed?

    Is it not clear to anyone with an electronics background that what was being claimed was a box with a connector for connecting to the associated engine controller and a microprocessor or micro controller programmed to communicate with the engine controller and/or read the program memory of the engine controller to look for a version number or to compare the information in the program memory with the information in the latest version to see if they match?

    Is the scope of the claimed subject matter truly a huge mystery?

    1. a microprocessor or micro controller programmed to

      That’s also functional language, or possibly you could argue that it’s product-by-process language that limits infringement to those who are carrying out the steps for programming the controller … which also aren’t described.

      1. Not quite , MM. It’s not functional language because it isn’t claim language atall.

        90% of everything done in electronics these days is done by a suitably programmed microprocessor. Allowing no way to claim such things is not helpful. But then, no-one said you were.

        1. Alun: It’s not functional language because it isn’t claim language atall.

          I don’t follow. “X programmed to perform information-processing task Y”, “X configured to perform information-processing task Y” … there’s no real difference. They mean the same thing.

          90% of everything done in electronics these days is done by a suitably programmed microprocessor. Allowing no way to claim such things is not helpful.

          Copyright your software and be happy with that protection. The patent system doesn’t exist to “help” you just because what you’re doing is commonplace, nor should the system be warped beyond reason in order to accomodate information-processing and math.

          Why don’t you go ahead and propose something that’s practical, that is amenable to examination, and that rewards skilled artisans, i.e., actual programmers who make stuff work, rather than the lawyers dreaming up functions and dust-kicking claim terminology? That would be helpful. If you aren’t willing to do that, then there’s a good chance you might end up with a big goose egg. That’s not my problem, nor is it of any concern to me. Why should it be? Why should anyone be concerned? Because people are suddenly goig to stop innovating new information-processing schemes? That’s never going to happen.

        2. I agree with this, except I think the percentage is higher. I also think that patent law was not meant to prevent these types of invention. Furthermore, if one recites something like “determining a random number” (or “a microprocessor configured to determine a random number”), why does an algorithm need to be shown for something that’s incredibly well known?

      1. one of ordinary skill in the art would have understood what was claimed

        Whether you have ordinary skill, extroardinary skill, or no skill whatsoever, the understanding is exactly the same: what is being claimed is the functionality.

        Unfortunately, “new functionalities” aren’t eligible subject matter.

        It would be prudent for people like you who favor patent protection for software to begin discussing your preferred fallback positions because the squeeze play is coming. If you can’t come up with some good ideas, we’ll come up with them for you or (preferably) we can just axe software patenting completely because that’s where we end up sooner or later eventually.

          1. What is being claimed is a device that provides the functionality.

            This is the same logical error that the Supreme Court correctly destroyed in Prometheus v. Mayo.

            Your “claimed device” is distinguished from the prior art devices only on the basis of its functionality. There’s no practical distinction between a claim that protects a “new” device claimed in that manner from a claim that protects a “new functionality” for the old device.

            Why don’t applicants just claim “A new functionality for an old device, wherein said functionality comprises ….”? You know the answer, of course. The answer is that the applicants wouldn’t get past the front door. So in comes the “art of the draughtsman” and a Federal Circuit and PTO willing to look the other way because “special clients.”

              1. I’m aware of the absurd decisions the Supreme Court has spewed forth recently.

                There’s nothing “absurd” about Prometheus v. Mayo.

                It’s never going to be overturned because the logic is (1) unassailable and (2) necessary in order for any patent system to function in a sane manner.

            1. §101. Inventions patentable

              Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

              “Why don’t applicants just claim “A new functionality for an old device, wherein said functionality comprises ….”? You know the answer, of course. The answer is that the applicants wouldn’t get past the front door. ”

              If that’s true, the door man would be violating the law:

              §100. Definitions

              When used in this title unless the context otherwise indicates—

              (a) The term “invention” means invention or discovery.

              (b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

              1. If that’s true, the door man would be violating the law:

                In the United States, the Supreme Court gets to decide how the law is interpreted.

                Their interpretation doesn’t agree with your interpretation.

                Correct me if I’m wrong, Les, but you do believe that mental processes are themselves eligible for patent protection because … “processes”? Right?

                It helps to occasionally remind everyone where you’re coming from so everyone can understand the argument you are actually making here.

                1. If the Supreme Court has interpreted the law so that The term “process” means process, art or method, and does not include a new use of a known process, machine, manufacture, composition of matter, or material. Then they have overstepped their bounds and we are in Constitutional Crisis territory.

              2. we are in Constitutional Crisis territory.

                Okay, so we’re in a “Constitutional Crisis.”

                Then what?

                You see, Les: I’m still focused on the issue. You’re trying to change the subject.

                1. Well, I (and surely most of us can relate) disagree with the SCOTUS all the time.

                  My question would basically is: What’s your strategy? Are you still going to write application of the type that were struck down in Bilski, Mayo, Alice, etc.? Appeal when they’re rejected under 101? Lobby your congressman?

                  The problem you perceive has a political solution, if Congress rewrites 101 to explicitly include business methods and software, I strongly suspect the SCOTUS will abide. So I don’t think we’re in a crisis. I just don’t think Congress is going to do that.

                  I really am very interested at how practitioners who rely on software applications are proceeding. Though I disagree with some of the suggestions, Mr. Qu inn has discussed some of his strategies moving forward on his website, for example.

          2. What is being claimed is a device that provides the functionality. A machine.

            This is not a cognizable claim under patent law. You can’t claim ends, you claim means. Nobody invented a result, someone invented a way to get to it.

            The above is, in fact, a 101, 112 1st and 112, 2nd problem. I’ve been saying this for years, others appear to just be coming around to it.

        1. “It would be prudent for people like you who favor patent protection for software to begin discussing your preferred fallback positions….”

          For the life of me I cannot figure out why this is not happening. It seems like after a couple of brutal 9-0’s, people would change their approach. Maybe its a “stages of grief” type thing. We’ve had denial and anger. Time for bargaining!

          I don’t think the Supreme Court’s recent decisions will be overturned. As far as I can tell, there is no political appetite for expanding patent rights by either party. I guess part of how people react will depend on how the USPTO implements the recent decisions. But if the reports from people on this board are to be believed, they’re being ruthless.

          Should be interesting to watch.

          1. For the life of me I cannot figure out why this is not happening.

            It is happening but the volume level is turned down because the people with the biggest microphones simply cannot abide any restrictions on the way they (or their “clients”) have chosen to earn a living. The reasons for their stubborness can be traced to obvious factors like greed, and less obvious factors like the fear of watching one’s mythological belief system being exploded in real time.

            Nobody likes to eat crow but some people are going to be forced to eat a lot of it as we move forward here. The option was always there to at least try to draw some reasonable distinctions between the worst “do it on computer claims” and the claims that were marginally better, or to at least attempt to understand (and express that understanding) of the fundamental logic underlying the Supreme Court’s decisions in Mayo and Alice.

            But the decision was made that it was better to simply pretend that some unconstitional “war” was being waged on The Most Important People ever: rich entitled guys sitting at their computers speculating about what some deep-pocketed company is going to be able to develop and successfully market in the future.

            [shrugs]

          2. Go, you have it all backwards. Congress does not have to explicitly include business methods and software because they are already included. Congress would have to explicitly exclude business methods and software. And since congress chose not to do so in the recent AIA, it appears that it is very unlikely to ever happen.

      1. 2164 The Enablement Requirement [R-11.2013]

        The enablement requirement refers to the requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph that the specification describe how to make and how to use the invention.

        2164.01 Test of Enablement [R-08.2012]

        Any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention.

        One of ordinary skill in the art would have known how to make and use the invention after reading the spec, or even the above patently 0 article, as well; e.g.: program a memory or a microporcessor or micro-controller as I have indicated at 5.0 and install it in a circuit board connected to said connector…. yadda yadda yadda.

        1. Does your per se enablement of computer implemented functionality apply to the reams of general teachings in the prior art about what computers can do, Les? Or does it apply only to the specific functionalities that patent applicants want to own?

              1. It is what it is. It is reality based. I don’t know what you mean in this instance by cuts both ways. But, if what one of ordinary skill in the art would have understood can be used against a claim, fine, use it.

        2. that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention.

          Important unquoted section: The full scope of the claim must be enabled.

          a microprocessor or micro controller programmed to communicate with the engine controller and/or read the program memory of the engine controller to look for a version number or to compare the information in the program memory with the information in the latest version to see if they match

          This is a common way of achievement. This is not the claimed way of achievement. The claimed way is broader. The fact that you can devise a single point within the scope and perform that point does not enable or describe the invention.

            1. Well the way computers often do it is to query a registry for the version number rather than query the program. The device could simply feature-test the program to determine what version it is by what features it supports. The device could submit information which it knows will result in different outcomes based on the version and determine the version that way. The device could query the car for its VIN and call in to a central repository of information which has a table which links the VIN to the installed version. The device could use the current time-till-checkup mileage to estimate the last time the vehicle was serviced and estimate a version from that.

              Some of these are terrible ideas. But that’s the point – you can’t let the person who has the terrible idea claim the good one by using functional vague langauge.

              1. Well, I will give you that my (unskilled person in the art) understanding did not include: The device could submit information which it knows will result in different outcomes based on the version and determine the version that way.

                But one of ordinary skill would have understood that to be included.

                The others ways you suggested that were not included in my interpretation would not work. The VIN does not change even though the software is upgraded. So any VIN based look-up would not work.

                The claim is broad. The Examiner searched for prior art based on the broad claim and found nothing.

                The invention and the claim are at the high level of a device that checks for latest version.

                If someone comes up with a good way to make one that is not disclosed by the first and original patent, they may patent their specific better way and cross license it with the giant upon whose shoulders he or she would like to stand.

                If I invent steering a plane by warping the wing and broadly claim is as moving some portion of the wing above and below the plane of the wing, my claim is eligible and my claim covers embodiments with flaps and ailerons even though I didn’t think of or disclose those in particular embodiments. Its a patent, not a copyright. It has broader coverage than exact copies but for a shorter time period. Get used to it.

                1. The claim is broad. The Examiner searched for prior art based on the broad claim and found nothing.

                  And if 103 was the only standard of patentability, that would be important. I’m not questioning whether it is obvious, I’m questioning whether he has mastered the full scope of what he claims – every way of learning a piece of information.

                  Do you believe he knows every way of learning the version number?

        3. I agree with that, I just disagree that one or ordinary skill in the art knows what is meant by “a program loading device”.

  11. Yep, this holding along with Alice and Nautilus form a natural triumverate that knock out 95% of software patents and applications.

    1. Sounds like wishful thinking, and the PTO continues to allow well crafted software patents at a healthy rate.

      1. I’m not sure the PTO has ever allowed well crafted software patents at a consistent rate.

        Regardless, allowance from non-legal Examiners is not validity in a court of law.

        1. True, and it’s why I emphasize to trainees that they must exercise their legal judgment during prosecution, including addressing or validity issues not raised by the PTO.

          But the hysteria from some attorneys is almost matched by the unjustified gratification from people opposed to software-related patents. I’ve yet to see what I consider to be a legitimate software-related patent found invalid under 101. The law is going through a much-needed correction, as anyone who has dealt with garbage patents can attest to.

          I suggest you take a look at the Supreme Court’s dicta in Alice about some types of computer-related inventions that they stated would not be invalidly abstract. Take a look, also, at remarks in other decisions that there is no bar on software patents. The reasoning of Alice applies to a small fraction of software-related patent applications.

          1. It’s not just Alice, nor is it just functional claiming indefiniteness, though both of them are nice.

            The fact is that a claim to a function is a claim to all ways of achieving it. By definition a patent can only disclose all of the ways currently known to the art and all of the ways currently known to the inventor. Absent a finding that the art knows all there is to know about an issue (which, by inductive scientific reasoning, can never happen) a claim that describes what it does by the interpretive function it achieves rather than the steps that it takes to get there is always overbroad.

            The office is decently good at performing 103 searches. There’s a lot more to issuing patents than that.

            1. “The office is decently good at performing 103 searches. ”

              In comparison with other patent offices, and the EPO in particular, I’m not so sure.

      2. I wouldn’t draw any conclusions from the PTO for post-Alice practice tips… By all appearances the PTO has been slow marching its implementation. Only a small number of art units appear to be conducting the post allowance review. Most that I have worked with are simply ignoring that Alice happened.

        This has unfortunately led many to believe that they have some magical inside track on how to “integrate” away an Alice challenge for a claim to [old device] + [new abstraction].

        Right now the pto is looking only at the hardest core of [general purpose computer] + [new abstraction] and forcing Alice rejections. Just wait until they start rejecting:

        [old power supply] + [old microprocessor] + [new abstraction]
        [old cell phone] + [new abstraction]
        [old display] + [new abstraction]
        [old audio components] + [old microprocessor] + [new abstraction]
        etc…

        In fact, in many/most/all electronic areas, it is difficult to see what will survive.

        But in the meantime, we should rejoice… Patents are still going out the door on this stuff. There is still work.

        Maybe we will get lucky and the Fed Cir will severely limit Alice. Maybe we will get double lucky and the SC won’t slap them down.

  12. The patent has only 3 pages, no drawings, and six paragraphs under the “Detailed Description Of The Preferred Embodiments” section. My guess is that it wouldn’t have taken much to avoid the 112(f) finding altogether. Not too surprised by the court’s result based on the Bosch specification.

    1. I didn’t even need those 3 pages. I understood the structure being claimed just from the description in the claims as discussed above. See post 5.

      1. I understood the structure

        No, you don’t. You only “understand” the function. At least, that’s what you recited to everyone: the function.

        You haven’t described the objective physical structure of this microprocessor because there isn’t any discernable objective physical structure that corresponds to that functionality. Rather, there are an infinite number of possible structures that could achieve that functionality. Why should the applicant be entitled to them all, particulary when not a single example of such a structure has been disclosed, or even a single example of code that actually works to achieve the recited goal (not that a single example would necessarily suffice)?

        This is one of the major problems with claims to “new” software. As written, they are claims to “new functionalities”, not new objects.

        1. What would a good enough example of code for a program recognition device be? Would it be good enough to just say

          integer u, v
          begin
          u=read(program)
          v=check_version(u)
          end?

  13. Functional claim limitations are in vogue. Part of the reason is that the current generation of computer-focused engineers have been trained in an object oriented approach that discusses solutions more in terms of results than in detailed algorithmic steps.

    That strikes me as an unsupportable statement, Dennis. Your data actually shows that functional claim limitations, in the form of means-for limitations, were quite popular well before object-oriented programming became widely taught, circa 1990, with 55% of patents having means-for limitations and 20+% having other functional limitations.

    I’m guessing that the patents represented in your three traces are not exclusive. It would be interesting to plot the total number of patents having any one of the three types of functional claim forms, per year, to see how much of a rise in functional claim terms (rather than just a change in type) there has been.

    1. “That strikes me as an unsupportable statement, ”

      If he graphed the amount that have at least one functional statement in the claims then the graph would likely be just going up and up. I believe he may have showed this graph before. Likewise, he’s drawing a distinction between MPF and functional limitations in any event.

      1. Likewise, he’s drawing a distinction between MPF and functional limitations in any event.

        Yes, the graph draws that distinction. But an argument that applicants have shifted from MPF limitations to other functional limitations would be a pretty unremarkable argument, and would be about 15 years late. But this argument doesn’t support the notion that there’s anything particularly “in vogue” about functional limitations these days.

        1. Thanks Dan. I appreciate your comment here and I do see what you are saying — basically that using ‘functional’ language in claim elements has been a major part of patent drafting practice for a long time.

          I’m going to go back to the data that I used to make that chart and see if I can better answer that inquiry.

    2. A far more likely reason for situations like this is that too many companies are no longer willing to pay for [or even paying attention to] the inadequate specification 112 “enablement” in their patent applications. [Apparently they prefer wasting millions of dollars trying enforce such patents.] T
      That may have been partially encouraged by the Fed. Cir. itself. Until more recently it did not seem that the Fed. Cir. was paying much attention to 112 spec inadequacy issues unless the magic word “means” was used.

  14. “A second important and interesting element of the court’s decision here is that it does not cite the Supreme Court’s most recent foray into indefiniteness – Nautilus v. BioSig (2014) (requiring reasonable certainty). Likewise, the court did not cite Halliburton. In fact, the court has not cited Halliburton for almost 20 years and it has never cited the case other than to criticize the decision or indicate that it has been legislatively overruled by 112(f).”

    Good ol’ federal circuit.

Comments are closed.