Patent Law Quiz:

Here is a 1-hour quiz that I recently gave my patent law students on some of the basics of 101; 102; 103; and 112. Questions:

1. An employee at Freya’s small start-up company has come up with a new smartphone-app that helps cat-lovers meet. Essentially, the app causes the phone to “meow” when another user is nearby; “purr” when a good match is nearby; and “hiss” when an identified cat-hater or non-compatible is nearby. In her patent application, Freya claims:

A mobile device having a memory and a processor and operating as part of a social network, wherein the memory includes a stored program configured to:
cause the mobile device to emit a first sound based upon the proximity of a mobile device associated with a member of the social network;
cause the mobile device to emit a second sound based upon the proximity of a mobile device associated with a member of the social network who has been identified as a match; and
cause the mobile device to emit a third sound based upon the proximity of a mobile device associated with a member of the social network who has been identified as a bad match.

Is Freya’s claim subject-matter-eligible under 35 U.S.C. § 101? (120 words).

2. Regarding back to Freya’s claim above. Provide a concise argument that the yet-unpatented claim fails for lack of definiteness. (60 words).

3. Sometime during the past decade, Thor invented a new metal alloy known as Midguardium that is extremely hard and exhibits boomerang-like properties when thrown. Thor would like to patent a hammer made from the alloy but keep the actual process of making the alloy a trade-secret. May he do this? (50 words).

4. Following your advice above, Thor does fully disclose the process of making the alloy in his patent application (claiming “A hammer comprising a hammer-head made of Midguardium and a handle”). After Thor created his hammer (but before he filed his patent application), Loki independently invents Midguardium and forms it into scepter that he uses publicly in New York City. Loki does not, however, file for patent protection.

Concisely explain how the dates of invention, public use date, and Thor’s filing date may impact whether Loki’s disclosure counts as prior art against Thor’s patent application (250 words).

5. Assuming that Loki’s public-use counts as prior art against Thor’s patent application, can you make an argument that the scepter anticipates the aforementioned hammer claim? (60 words).

6. Still assuming that Loki’s public-use counts as prior art against Thor’s patent application, what can Thor do/argue in order in order to overcome the USPTO’s initial conclusion that the patent claim is obviousness based upon Loki’s use? (describe up to three approaches/arguments). (100 words).

Note: You are allowed to use a statutory reference (both pre and post AIA) and look-up relevant case law.

266 thoughts on “Patent Law Quiz:

    1. 21.1

      I’ll let others on this message board read the case and arrive at opposite conclusions. When I feel that all hardware and software implementations are going to be invalidated, then I’m moving to China and I’m going to make a ton of money by reverse engineering silicon valley. Right now I’m not feeling that. But my bags are packed.

    2. 21.4

      A construction of the claim in quiz question 1 is that the claim reads on software. As such, the claim is directed to non statutory subject matter per Allvoice.

      1. 21.4.1

        “having a memory and a processor” “wherein the memory includes a stored program”

        Not considering abstract idea, it is a statutory category because the claim is limited to two physical objects.

        You’ve never been able to claim software qua software, it’s always had to be software embodied on something. This case says nothing new about 101 at all.

  1. 20

    Many “innovations” today are solely in the “data manipulation” part of the “new machines” that US companies are coming up with. And this includes new “machines” that are being designed by “old tech” companies.

    Ned (and I’m sure there are others on this message board, but Ned is the most vocal of them) do not think that software and hardware implementations of “data manipulation ideas” are patent-eligible under 101.

    And that’s fine with me. I guess they have figured out a way to interpret 101 to arrive at that conclusion. I don’t have time to read every Supreme Court case and desperately try to convince myself that they are all consistent with each other.

    I understand the business impact of Ned’s position. Maybe Ned (and his sympathizers) do not fully understand how many patents such a position invalidates because they don’t understand the technology that well, e.g., they have never been engineers and so they don’t understand how “innovation” works today. Or maybe they do understand the implications, and they still want to come to that conclusion because (1) they work for countries/entities or are biased toward countries/entities that will benefit from such a position, (2) they are lost in their abstract world of legal interpretation and don’t care about the real world impact, or (3) a combination of these reasons.

    The good news is that the courts and the USPTO have had many occasions where they could have struck down all patents on “software or hardware implementations of data manipulation ideas,” but they haven’t. Instead they have intentionally created a mess where some “software” patents pass the 101 test, while others don’t. I think the reason is because, like me, they understand the impact of invalidating all software patents, and at the same time they want to discourage “patent trolls.” Unfortunately, I don’t have a better solution.

    1. 20.1

      Genghis,

      You only need to read two cases to understand the current state of 101: Mayo and Alice.

      I have a solution that I think is fair to everyone. A separate system for software patents. Easier examination, narrower scope and shorter term. Basically, I’d like to (1) only require novelty, (2) narrow scope (only the algorithm disclosed) and (3) 5 year term. Ideally, you’d issue these things in <6 months.

      1. 20.2.1

        I don’t think so. At a high level, I think Ned will agree with me. He may disagree with some of the details, e.g., he understands the impact of his position and it won’t be that bad. But he can’t back up any of those statements with any case law, so it will just be his personal opinion, not an informed legal opinion.

    2. 20.3

      Genghis, see post 21.

      See, Gottschalk v. Benson, 409 U.S. 63, 93 S. Ct. 253, 34 L. Ed. 2d 273 (1972).

      Note, I am careful to distinguish the use of a programmed computer in larger machines, applications or systems, or where the algorithms are actually used to improve a computer or computer system as opposed using a generic computer to simply calculate.

    3. 20.4

      software and hardware implementations of “data manipulation ideas” are patent-eligible under 101.

      Saying “I would like to implement this data manipulation in software or hardware” is not eligible. Actually implementing it in hardware (i.e. limiting yourself to a concrete example) is almost certainly obvious, because the logic underlying the data manipulation is almost certainly obvious.

      It is not inventive to “translate” conventional thinking into computer commands absent some sort of enablement problem.

      There exist valid software patents, but it isn’t the functionally defined bs that is floating around today.

  2. 19

    Are questions of novelty, non-obviousness, enablement, or written description inextricably intertwined with the question of patent-eligible subject matter? In other words, is it possible to analyze whether or not a claim contains patent-eligible subject matter without getting into novelty, non-obviousness, enablement, or written description issues?

    I’ve always thought of these as “orthogonal” questions, and this way of thinking about patent law appeals to the engineer in me. However, maybe some believe these questions are not separable, and this may actually explain why there are such strong opinions about whether or not software is patent-eligible subject matter. I never thought this would be the root cause, but maybe it is.

    1. 19.1

      Genghis, it is not that hard. The printed matter cases all stemmed from Hotel Security that simply said that invention must be in the otherwise eligible subject matter. The Supreme Court says the same thing. This is not that difficult of a concept.

      1. 19.1.1

        My question was not about the current 101 law – I should have made the explicit. Suppose you were the King of Nederlands, how would you define what is and what is not patent-eligible subject matter? That was the question.

        Regarding the what is meant by “new” in the current 101 law, I saw your response below, and it makes sense.

        1. 19.1.1.1

          Genghis, those who draft the patent statute can choose whether or not to keep eligibility clear of novelty and obviousness.

          For example, look at the EPC and the EPO.

          Patents are confined to the useful arts or what GATT_TRIPS calls “all fields of technology”. Art 52 EPC covers eligibility, 54 novelty and 56 obviousness. The EPO sets a very low hurdle “technical character” to satisfy Art 52. So, if you claim a computer you are eligible but if you claim a method of reducing your liability to tax you ain’t.

          But when it comes to novelty and the obviousness issue, the EPO gives patentable weight only to such matters in a field of technology. So where the novelty and ingenuity is found in ways of reducing your tax liability, that doesn’t count.

          How does that scheme strike you?

          1. 19.1.1.1.1

            I should add that, for the EPO, eligibility is a timeless matter, absolute, not relative (to what the prior art happens to be by today). Otherwise, eligibility becomes dependent on what just happened yesterday to get into the prior art database, and so shrinks progressively, as the Prior art databank swells. For the EPO, that makes no sense.

            For the judges of the patents courts of England, however, this EPO way of treating eligibility is “intellectually dishonest”. You can see why they think that: for the EPO the following (rather broad)claim is 100% eligible for patenting:

            What I Claim is: 1. A digital computer.

            Now is that honest or dishonest, intellectually?

            You are welcome to join the debate, between London and Munich!

            1. 19.1.1.1.1.1

              The “orthogonality” is definitely an issue.

              Even as MaxDrei attempts to shoehorn Useful Arts into “technology” – they are not the same, as U.S. law has clearly stated that (at least for the U.S. sovereign) useful arts is broader than “technological arts” – a “watering hole” point that MaxDrei has been led to many times.

              Clearing up that bit of obfuscation, one then looks at MaxDrei’s point of “timeless matter,” and wonders how Ned and his infusion of “new” can coexist with this “timelessness” – as many here relentlessly confuse the idea of “merely old building blocks” somehow with a notion that whole art fields should be blocked at the front gate of 101 on a per se basis.

              As to the “London v Munich” debate, well, to be blunt, who cares about those foreign sovereigns in a discussion about US patent law?

                1. Given that Nuitjen is badly decided (from an objective scientific point of view), what exactly is your point in mentioning the case, MaxDrei?

                2. Ah, I gather that I should have mentioned that the consistent caselaw of the EPO recognises that a defined signal can be eligible whereas the controlling US caselaw, Nuijten, whether or not “badly decided”, denies elibility to such signals. Thus far then, EPC eligibility wider than that of the USA.

                  Turning to methods of doing business, the EPC denies eligibility for that subject matter, as such. But exceptions are construed narrowly and constant pressure on the Patent Office from the attorney and applicant communities results in eligibility “creep”. The EPO continues to issues loadsa patents on business method-type subject matter, despite its being able to derive a “technological arts” filter in Art 52 EPC.

                  I do not know whether my claimed inventive concept is or is not “abstract”. (I’m not sure the USPTO does either). Just as with signal claims, i can envisage business method claims refused by the USPTO getting through to issue out of the EPO. I do not accept that a mere declaration by a US judge, of the plain fact that there is no additional “technological arts” filter in the patent statute of the USA, is proof that “useful arts” is broader than “technical character”.

                3. The “per se” and “as such” are great “modifiers,” are they not?

                  As to “consistency,” well we have your age-old misunderstanding on stare decisis to contend with, but why muck up the thread with that dust-kicking…

                4. (…and I am still waiting for a non-circular definition of “technical” or “technology” from you, MaxDrei – your usual deflection of “that’s not defined” is shall we say less than compelling)

                5. The bad – and yes, controlling – case law from Nuitjen only proves too much, MaxDrei.

                  It does not support your view and in fact does the opposite.

                  It merely highlights a poor judicial “gloss” which does not fit with the words of Congress.

                  This is a tangent to our discussion between the difference between Useful Arts and Technical Arts.

                  Let’s use a little simple set theory (“A,” “B,” and “C” are already taken for my simple set theory printed matter discussion, so we will use other letters).
                  Let’s take “Technical Arts,” however (if ever) you define that. Yes you provide an exception with an errant albeit controlling case, but as they say the exception proves the rule. Let’s call your Technical Arts “F.”

                  It is beyond doubt and in fact that “F” is but a subset of Useful Arts. As you are well aware (or should be aware), 3, the new 4, is still not 5, and the U.S. Supreme Court has not yet re-written business methods (as such) out of eligible matter.

                  Let’s call Useful Arts Set E. Importantly in our discussions here, items outside of the Useful Arts are full stop at the get go. As Wolfgang Pauli would say, not even wrong; meaning of course, that it is completely in apposite to attempt to include them in the conversation – a canard of the pure dissembling sort. So we can safely exclude the Fine Arts – as an example – from Set E (let’s call these excluded items Set D).

                  One should realize that the universe is totally comprised of Sets D and E – and explicitly not Sets D and F (remember that “as such” stuff).

                  It is then most odd – on a simple logic basis – for you to have such immense difficulty in seeing that the sunset F simply must be smaller than the Set E.

                  It is only with a mind unwilling to learn, a mind shut to understanding, your eyes clenched tight, yet still moaning that you cannot see, your horse dying of thirst standing at the well of wisdom you have been brought to, that your insistent and persistent state of being can be found.

            2. 19.1.1.1.1.2

              Munich makes more sense to me on this issue. I just think it makes the law more elegant and clear if patent eligibility is kept separate from novelty.

              anon, I understand this is not how it works in the US.

              1. 19.1.1.1.1.2.1

                Genghis, indeed, not how it works in the USA. Why? because once you let the scoundrels past the eligibility filter, they can bamboozle their way past the novelty and obviousness filters all too easily, and get through to issue, whereupon they can leverage their property, blackmail and intimidate, which in turn brings ridicule and revulsion on the patent system.

                Ratcheting up the eligibility filter is a pragmatic attempt by the Supreme Court of the USA to rescue the credibility of patents in the USA.

                1. What a lovely display of an inappropriate power grab regarding statutory law.

                  The ends NEVER justify the means, MaxDrei.

                2. MaxDrei said: “Ratcheting up the eligibility filter is a pragmatic attempt by the Supreme Court of the USA to rescue the credibility of patents in the USA.

                  Thank you for saying that. Yes, I completely agree with that and I get that. Instead of the word “pragmatic,” software programmers use the word “hack” as in “a piece of computer code providing a quick or inelegant solution to a particular problem.”

                  This is why these contentious discussions on this message board about 101 are futile. The engineer who hacked the code doesn’t defend it, and his colleagues don’t criticize him/her because they know why it was necessary. Peace.

              2. 19.1.1.1.1.2.2

                Keeping clear is how it is supposed to work, Genghis – if it is not, it is only because of the separation of powers is being ig nored and judicial activism is afoot.

              3. 19.1.1.1.1.2.3

                > I just think it makes the law more elegant and clear if patent eligibility is kept separate from novelty.

                That’s the thing, isn’t it? Separation really does make the law so very clear and simple. You just answer a few simple yes or no questions and it gives you a simple answer that’s easy to understand.

                The problem is that allowing that separation also allows people to take obvious idea A, then add an already-invented computer B and ‘invent’ something.

                The fact that that is harmful to everyone except the inventor and their patent lawyer when A was already known and B has already been invented is why the general public dislikes the idea.

                It only gets more embarrassing when patents are written to emphasize the trivial bits–our computer has a CPU, RAM and a hard drive!–and glosses over how to do the bits that are actually supposed to be new in order to avoid inadvertently limiting the claims to merely those things the inventor actually did.

        2. 19.1.1.2

          Well, G, the US constitution is a good start:

          Inventions in the Useful Arts.

          At the time of the constitution, what this meant was not unclear. It certainly did not mean business methods (trade monopolies), discoveries of things that already existed or that were known or in public use. Further, it certain did not extent to ideas, but to applications that one could make and sell, and put to practical use to make things.

          1. 19.1.1.2.1

            “I would have it understood that what I claim as my invention is- 1. The combining of the process of making white lead with the process of making lime, whereby the carbonic-acid gas evolved in the latter process is beneficially applied in place of permitting it to pass into the atmosphere. ”

            Publication number US1804 A
            Publication type Grant
            Publication date Oct 8, 1840
            Inventors Horace Cory

            link to google.com

            Reads like an idea to me…. and just 50 some years after the Constitution was ratified.

            1. 19.1.1.2.1.1

              Actually, it’s a method of implementing an idea, not an idea in and of itself. In general, intellectual property protects manifestations of ideas, not the idea itself. This is true of copyrights (protecting the content, not the idea that the content expresses) and trademarks (protecting the actual brand name) as well.

              1. 19.1.1.2.1.1.1

                Really, what is the method? What is step one? What is step three?

                Trust me, from Ned’s point of view, this claim is for the abstract idea of using carbonic-acid waste gas from a first process as an input to a second process.

                There is no specificity as to how you get the gas from one process to the other, there is no specificity as to the material any pipes should be to tolerate the acid, heck, there’s no mention of pipes at all, nor pumps, or pumping, compressors or compressing, valves or controlling; no mention of pressures or how to distribute/mix the gas appropriately to the second process, no mention of ratios of one product to the other or of the gas to the second process.

                The claim is directed to the abstract idea.

                The combining of the process of making white lead with the process of making lime, whereby the carbonic-acid gas evolved in the latter process is beneficially applied in place of permitting it to pass into the atmosphere

          2. 19.1.1.2.2

            Fair enough.

            I think I’m getting close to understanding the rift, and as was my first guess, I believe it is based on one’s familiarity and comfort level of with certain EE/CS concepts.

            I understand the following position (based on Dobu’s articulation): a CD with a program on it is not patent-eligible subject matter because CDs are known, and simply writing data on it doesn’t “improve” the CD, e.g., it doesn’t turn a 10x CD into a 30x CD.

            The problem with this position is that it is seems “intellectually dishonest” (borrowing the phrase from MaxDrei) with the position of accepting a circuit design to be patent-eligible subject matter when both the CD with a program on it and the circuit design embody the same “data manipulation idea.”

            As an engineer, an “intellectually honest” approach would be one of the following.

            1. A “data manipulation idea” is not patent-eligible, and any embodiment of a “data manipulation idea” is also not patent-eligible. Therefore, a program written on a CD and a circuit (which is essentially a hardware description language program “written” on silicon) are not patent-eligible. Essentially all Microsoft and Intel patents fail the 101 test.

            OR

            2. A “data manipulation idea” is not patent-eligible, but any “technological” embodiment of a “data manipulation idea” is patent-eligible. Therefore, a program written on a CD and a circuit is not patent-eligible. Most Microsoft and Intel patents pass the 101 test.

            I don’t care which approach is taken. I just want it to be “intellectually honest.” You can’t fault the US Constitution. The founders did not know anything about hardware or software, and even now it seems many people in patent law don’t understand this technology as well as they should.

            1. 19.1.1.2.2.1

              In option 2, it should have said “Therefore, a program written on a CD and a circuit is patent-eligible.”

            2. 19.1.1.2.2.2

              In option 2, it should have said “Therefore, a program written on a CD and a circuit are patent-eligible.”

            3. 19.1.1.2.2.3

              Genghis, there is an assumption in your logic stream that provides a false premise. It is this — that one can patent A circuit that does algorithm A.

              One cannot, and I have previously explained why. One can patent improved circuits to the extent they are improved circuits, but one cannot patent an algorithm limiting its implementation to “circuits.”

              One however can patent a circuit in a larger machine or process to the extent the circuit modifies or improves the larger machine or process to produce an improved machine or process. One simply cannot patent the algorithm in the abstract even by limiting it to “circuits.”

              False premises abound with the advocates of patenting business methods.

              1. 19.1.1.2.2.3.1

                Genghis, post-Alice, I suspect the PTO to tighten ship on whether a claims to allegedly new circuits are really claims to algorithms where the circuitry disclosed in generic.

                Same issue here as with computers and programs and CDs with programs.

                1. “I suspect the PTO to tighten ship on whether a claims to allegedly new circuits are really claims to algorithms where the circuitry disclosed in generic.”

                  I completely understand your position, and I believe it is logically sound. However, the holy grail for you as I believe it to be is just a wish at this point. Almost all of Intel’s and Microsoft’s patents are still going to be valid under Alice.

                2. You lose me here Genghis, as Ned’s position just is not logically sound and rests entirely on perv erting the law to achieve his Belieb-driven end state.

                  What Ned has labeled as “nominalist” is his undoing, as his anti-nominalist view requires a “Gist/Abstract” that eliminates the words of Congress in 101, eliminating inventions that meet the statutory category prong (without regard to the other prong in 101 of utility).

                  The “rift” as you put it has to do with the Judicial over-ride of that actual words of Congress and the fact that patent law is statutory law. There are places where Congress does lend its authority to the judicial branch, but 101 is expressly NOT one of them, and this mess is directly attributable to the Judicial Branch’s addiction to pre-1952 101-like law writing through the then allowed (by Congress) common law power of evolving the definition of “invention.”

                  In 1952 Congress took that power away.

              2. 19.1.1.2.2.3.2

                Ned said: “Genghis, there is an assumption in your logic stream that provides a false premise. It is this — that one can patent A circuit that does algorithm A.

                No, that wasn’t the assumption. The assumption was that you thought circuits that performed a “new” algorithm were patent eligible, but you thought that a CD with a program that performed the same “new” algorithm was not patent eligible. However, it seems that assumption was false. In other words, according you, essentially all Intel and Microsoft patents are invalid under 101. It is an “intellectually honest” position. I’ll give you that.

                1. Genghis, I do not know about all Intel and Microsoft patents. But the invention must be in the machine, the manufacture or composition, and this could include a new algorithm in a programmed computer that improves the machine, the manufacture or composition or method of making these, or in using these to produce a new result.

                  One simply cannot claim the algorithm in the abstract — sans application. Adding that the algorithm be conducted on a generic machine is not enough “application.”

                2. Ned said “Genghis, I do not know about all Intel and Microsoft patents.

                  They are all “data manipulation ideas” Ned. That is what you don’t get. And that is what I mean by one’s familiarity and comfort level with certain EE/CS concepts.

                  I don’t have any problems with the position that “a claim is invalid under 101 if it is merely a hardware or software implementation of an algorithm.” That is a logically sound position, and it is also a position that will render almost all Intel and Microsoft patents invalid. If you try to wiggle out of that position, then it implies that you are either technologically ignorant or intellectually dishonest.

            4. 19.1.1.2.2.4

              There is already a sui generis intellectual property right for mask works, e.g. hardware implementations of logic.

              Hardware implementations and software implementations are fundamentally different while also being logically the same.

    2. 19.2

      In other words, is it possible to analyze whether or not a claim contains patent-eligible subject matter without getting into novelty, non-obviousness, enablement, or written description issues?

      No, because in order to define what the “improvement” is (which is the subject of the 101 test) it requires some analysis of what came before.

      Before there were books a claim to “a book with particular writing in it” was eligible because the book was understood to be an invention. But now that a thousand years have passed, the same claim to “a book with particular writing in it” would be understood as being directed to the writing (either because the spec admits or one can be presumed to know the book is “non-novel”), which is non utilitarian and ineligible.

      That’s why you can’t turn a claim on ‘particular words’ eligible by adding that they occur ‘in a book’ despite the book being a manufacture, for the same reason you can’t turn a function like ‘printing at a distance’ eligible by adding that the actor is ‘a machine’. Similarly, if Alice had invented the economic method, that method would be eligible itself today as a business method, and if Alice had invented the computer the computer itself would be eligible. Alice invented neither, so the “improvement” of doing one on the other was found to not be eligible.

  3. 18

    Test: The right answer here qualifies one to be elevated to the status of patent scholar.

    Why does “on sale” appear in 102(b) and not in 102(a) [pre AIA]?

    1. 18.1

      Although I’m not particularly interested why this is so, I’ll take a stab. Isn’t there a geographic restriction in 102(b), but not in 102(a)? I’m guessing that is the reason for the absence of the phrase “on sale” in 102(a)? The argument being that if something is sold outside the US, then that should not create a bar in the US because we want to encourage the importation of innovative technology. On the other hand, we don’t want someone to simply take a research paper published outside the US and get a patent on that in the US.

      1. 18.1.1

        Think about this: 102(a) applies for acts before an invention made by an applicant. 102(b) applies to acts before a filing date of the applicant.

        So why cannot on sale apply to 102(a) ever?

        1. 18.1.1.2

          Your line of questioning seems to suggest you believe there is some “fundamental logical explanation” of this, in the sense that it is not simply a matter of policy. If that is the case, then you will have to explain yourself.

          For me, all IP rights are simply “a matter of policy.” I’m using this phrase very broadly – things like free speech are also “matters of policy” under this broad definition, for example, because there is no basis in “math” or “science” for free speech. Of course policies have real consequences.

        2. 18.1.1.3

          Ned –

          You said: “Think about this: 102(a) applies for acts before an invention made by an applicant.”

          So, you answered your own question. How can it be on sale before it was invented by the applicant?

          The only way it can be on sale before it was invented by the applicant is if the applicant didn’t invent it and someone else did.

          102(a) says known or used by others. That’s broader than and encompasses on sale.

  4. 17

    Not a patent lawyer, but an inventor who spends a lot of money on them.

    1 – Not patentable under 101 simply because it fails to explicitly state or imply that the claimed memory is “non-transitory”, and it is that memory that causes all the actions.

    There may be other issues with the claim, but I would freak out if my counsel drafted a claim/amendment with such an obvious deficiency.

    1. 17.1

      Transitory memory is an oxymoron and no memory at all.

      You are thinking of “computer readable media,” which the Office chooses to pretend reads on (allegedly non-statutory “transitory”) signals over the internet and to which I say: everything is transitory, check out the wear and tear on the pyramids.

      1. 17.1.1

        Yep, and I agree. But “computer readable” media/medium/storage and “memory” are officially interpreted as transitory signals. TTAB and Federal courts have repeatedly upheld 101 rejections proper for talking about “memory” or “Computer readable ____” without specifically stating that it is non-transitory or disclosing other limitations that would render it as such.

        One can make an argument for the claims to be eligible (or not) in a variety of ways on their merits – but this simple formality makes it ineligible under 101 regardless of the claims’ content or the underlying invention: the program is claimed to be in a (possibly) transitory memory.

        1. 17.1.1.1

          Even if you are correct, there is still time to amend. She can jam in a “non-transitory” after the first Office Action.

          1. 17.1.1.1.1

            The question wasn’t if the invention was patentable under 101 or could be amended to be so – the questions was if the claim (as written) was patentable.

            This might not be the intended “correct” answer – but I suspect it is, because it’s a very sneaky test question – however it is a practical answer. As-is, this claim would be flat-out rejected by examiners on statutory grounds for failing to lock the memory down to a “non-transitory” medium.

            1. 17.1.1.1.1.1

              You are mistaken johnathan. As evidence, I direct your attention to claim 33 in post numero 1 in this thread.

  5. 16

    Les, but programs do not cause anything. It is the execution of the program by the computer that causes something to happen.

    Example, computer program written in a book configured to cause X. Who infringes this claim and how?

    1. 16.2

      The intended and understood meaning is the same. You can quibble about the admittedly imprecise phrasing if you like, but one of ordinary skill would have understood the claim to mean–the instructions, when executed by the processor….–.

      1. 16.2.1

        Les, may I again ask the question,

        “Who infringes this claim and how:

        1. A computer program written in a book configured to cause X.”

        1. 16.2.1.1

          If that were a valid claim, then someone who manufactured, imported, sold or used a book with a computer program written in it that was configured to cause X would infringe the claim, assuming that someone did not have license to do so.

          1. 16.2.1.1.1

            Small steps here.

            Assume I only sell textbooks that include sample programs. A program in my book looks like a program in the specification of the patent in which the claim appears.

            How is a program written in a book configured to cause X? What does that program “do.” How do I infringe such a claim?

            You say sell the book. But the claim is not to just a program, but a a program configured to cause X. No matter how much the program I sell looks like the program in the spec, in no way does that program “do” anything. It just sits their, on the written page doing nothing.

            No one can infringe such a claim. The claim does not and cannot clearly tell one of ordinary skill in the art what the boundaries of the claim are because it is literally impossible for the claimed subject matter to do what is claimed. No one knows precisely what it is that one must do to infringe.

            1. 16.2.1.1.1.1

              “You say sell the book. But the claim is not to just a program, but a a program configured to cause X.”

              It was the book that was configured to do X (via the program, I assume).

              Where X is provide an example of a 12 stage Fast Fourier Transform or illustrate a point of view on patent law I presume.

    2. 16.3

      How about USPN 3,713,148. The “original” RFID patent – I got this info from the Wikipedia page on RFID. Memory + circuitry to read/write the memory + circuitry to generate power based on a received RF signal. Completely passive device, doesn’t cause anything. Not patentable?

      1. 16.3.1

        Genghis, the something about your question that implies that you are not understanding our conversation. The RFID device claims an apparatus. It claims novel structure. I have no clue as to why you would think that a claim to novel structure would not be patentable subject matter.

        1. 16.3.1.1

          Ned –

          I dare say Genghis is confused by your apparent repeated insistence that software must “cause” something for claim 1 to be patentable. Genghis’ point seems to be that noting in the claimed RFID device “Causes” anything to happen (the external stimuli is the “cause”), yet it appears to be patentable (since it was patented).

          1. 16.3.1.1.1

            Les, I daresay that it is not Genghis that is confused.

            Please attempt to answer the question about who infringes and how?

            1. 16.3.1.1.1.2

              “Les, I daresay that it is not Genghis that is confused.”

              Ned, I dare say that it was you that said Genghis was confused:”Genghis, the something about your question that implies that you are not understanding our conversation. “

        2. 16.3.1.2

          I agree that all patent attorneys will immediately categorize an RFID chip as an apparatus. I get that. But, the RFID claim and the claim “a mobile device having a memory and a processor …, wherein the memory includes a stored program configured to …” seem awfully close when I think like an EE/CS engineer. Yet these two appear to be completely different animals to some patent attorneys.

          Where would you draw the patent-eligible subject matter line in the following items? I’m not asking for an answer based on current 101 law which I think is a complete mess. I want to know where you believe the line should be, and the “logical” justification for that.

          1. A circuit that adds two numbers.
          2. A processor and a memory, wherein the memory stores instructions for adding two numbers.
          3. An FPGA, a memory, and FPGA configuration circuitry, wherein the memory stores a binary file corresponding to a circuit that adds two numbers, and wherein the FPGA configuration circuitry configures the FPGA based on the binary file.
          4. A memory and FPGA configuration circuitry, wherein the memory stores a binary file corresponding to a circuit that adds two numbers, and wherein the FPGA configuration circuitry is capable of configuring an FPGA based on the binary file.
          5. A memory that stores instructions for adding two numbers.
          6. A paper document that contains instructions in English for adding two numbers.

          As an engineer, I understand how one could draw the line between 5 and 6 based on the “technical nature” of 5 vs. the “non-technical nature” of 6. I believe this is how the law works in Europe. However, I believe you (and many other patent attorneys) want to draw the line somewhere else, which seems arbitrary and doesn’t make sense from an EE/CS standpoint.

          I suspect the root cause for this divergence in views may be one’s familiarity and comfort level with certain EE/CS concepts.

          1. 16.3.1.2.2

            A related question. We keep talking about what is and what is not an apparatus. What about “article of manufacture”? Why can’t a CD-ROM storing software be an article of manufacture and therefore be patent-eligible subject matter?

            Clearly, an article of manufacture doesn’t cause anything. It is silly to talk about a hammer causing something. Yet it is clearly patent-eligible subject matter.

            1. 16.3.1.2.2.1

              CD’s are articles. Add the program and the question becomes whether the CD is “new” within the meaning of 101. That question is answered by determining whether program is transformative of the CD so as to make it new CD qua CD.

              The answer to this question is self evident.

              In all these cases, the confusion is caused by mixing the ineligible with the eligible. The question that must be answered is where is the invention when one mixes the ineligible with the eligible. The invention must be in the eligible subject matter.

              1. 16.3.1.2.2.1.1

                Let’s see if I can follow your train of thought.

                CD’s are articles.

                Agreed.

                Add the program and the question becomes whether the CD is “new” within the meaning of 101.

                Yes it is new within the meaning of 101 the way I now understand it. The CD with the program is an “improvement” because it can be used in ways a blank CD cannot.

                That question is answered by determining whether program is transformative of the CD so as to make it new CD qua CD.

                I don’t see how “newness” in 101 = “transformative.”

                The answer to this question is self evident.

                Yes, it is self evident to me that a CD with a program is patent-eligible subject matter under the 101 meaning of “newness” which means something that is not found in nature or is just “math.”

                In all these cases, the confusion is caused by mixing the ineligible with the eligible. The question that must be answered is where is the invention when one mixes the ineligible with the eligible. The invention must be in the eligible subject matter.

                Here’s how I think about a CD storing a program. I put it in a computer and “new” stuff happens. So the CD must be “new.” I’m not sure it is obvious how to separate the “eligible” from the “ineligible” in a CD storing a program.

                Here’s a hammer. It looks just like other hammers. But when you throw it, it comes back. I found an alternative to the Midguardium. I imprinted magic words on the hammer that cause it to come back. Patentable?

                1. Genghis,

                  Your viewpoint is viable, and shared by several patent practitioners here who support strong patent rights.

                  In case you’re interested in an opposing viewpoint: CD’s with programs has been done before, many, many times, and is old. CD’s are manufactured for the purpose of storing digital data, so using them as intended is not “new”.

                  The rift between these two viewpoints is subject to very contentious discussion here.

                  Cheers. =)

                2. To say it is a discussion is a misnomer, as that implies an actual listening, understanding and integrating of the valid counterpoints raised.

                  To wit, your expressed view here of “using CD’s for their gen eral purpose but then discounting the fact that that gen eral purpose need not be what is new is absolutely akin to the logic of my big box of electrons, protons, and neutrons, wherein putting those elementary particles together “has been done before, many, many times, and is old. “Using” electrons, protons, and neutrons to build any thing of matter is “old” in the exact same logical sense you are attempting to use against CD’s when you want to close your eyes to the very different results you obtain when you recognize the reality that a CD with a Microsoft operating system is just not the same as a Britney Spears CD. There is a very real difference in the functional relatedness.

                  The improper gloss here of attempting to paint all CD’s as the same because the functionally related aspect is the same – at the gen eral level – is an error, plain and simple.

                  I have exemplified this error in very easy to understand set theory terms.

                  This then is NOT a matter of merely those who favor “strong patent rights” or not, but much rather to the point of those that merely recognize reality that software is defined to be a machine component and IS a manufacture in its own right.

          2. 16.3.1.2.3

            Let’s start at 1.

            Assume circuits for adding two numbers are old. I admit that they are old.

            The disclosed circuit has an analog input, a DAC, a novel arrangement of op amps, flip flops and logic gates, an ADC and an analog output.

            I claim,

            1. A circuit that adds two numbers.

            Discounting prior art, is such a claim a “new” circuit within the meaning of 101?

            Next consider that the new circuit has a novel arrangement of the aforementioned components that more efficiently than prior circuits calculates a square root function.

            I claim,

            1.A circuit that calculates a square root.

            Does this claim claim a “new” circuit? No. Does it particularly point out and distinctly claim the invention? No. Is the claim novel. No. Is there an invention disclosed. Yes, but the claim is way, way overbroad and indefinite.

            Now assume that I have a new algorithm, and disclose a novel arrangement of flip flops and the like as above that implements the new algorithm. Can I claim,

            1. A circuit for performing algorithm A?

            No.

            Why?

            You are claiming all circuits that achieve that result, even though you disclose only one.

            Note also, circuits, even digital circuits, operate on signals and produces signals. Computers do not.

            1. 16.3.1.2.3.1

              Ned said “Discounting prior art, is such a claim a “new” circuit within the meaning of 101?

              We may have a more fundamental problem here. Are you suggesting that novelty is an inherent and integral part of patent-eligible subject matter analysis?

              As I stated before, I’m not interested in a 101 analysis based on the current law under Alice. I’m asking you to tell me what you think the law should be. And it appears that you believe that the patent-eligible subject matter question and the novelty question (and may be even the non-obviousness question) are inextricably intertwined. Am I right?

              1. 16.3.1.2.3.1.1

                Well, Genghis, 101 “newness” [or improvement] is a requirement of 101 and has been since 1793 when both “new” and “composition” were added to “101” while “not known or in use” was retained as an independent requirement. Myriad held that product of nature was not a “new” composition within the meaning of 101 even though the product was not previously known.

                Ditto “math.” See, Flook. Like a law or phenomena of nature, math was really not “new” within the meaning of 101.

                Novelty, is a slightly different concept. Novelty relates to humans and what they know. If they did not know of something, but discover it, the thing they discover may be novel, but not “new.” Think Columbus and the “New” World.

                But assuming that something is old and well known, it is not new in both the 101 and 102 senses. But, when we get down to claims having mixed subject matter, some eligible such as machines, articles or compositions, and some not eligible, such as math, then the invention must be in the eligible — and that includes applying the ineligible to the eligible so as to transform it, in the words of both Mayo and Alice. Diehr is an example of such a tranformative use.

                Hope this helps.

                1. Thanks, makes sense. So what you are saying is that a CD-ROM storing software will be patent-eligible subject matter as long as the process embodied by the software is “new” in the 101 sense, e.g., the software does not simply embody “well known math.”

                2. Ned’s canards and false steps are all over the place.

                  One cannot obtain a copyright on math (for the dissembling types, yes, there is a difference between math and a math book).

                  One can copyright software.

                  Ergo, software is not math.

                  One cannot copyright thoughts – even thoughts of software.

                  Again, one can copyright software.

                  Ergo, there is (and must be) a difference between thoughts of software and software.

                  Genghis has (gently and subtly – but consistently) pointed out the clear difference: that of being functionally related.

                  I explained ALL of this to Ned with simple set theory and invited him to show where my explanation was deficient.

                  I begged him to join the conversation.

                  He refused and ran away.

                  One of these days Ned you will have to stop running and deal with the discussion points in an inte11ectually honest manner. They are not going away.

                3. Genghis, a computer program by itself is not a patentable process. A programmed computer in a larger system or process can define a patentable process, apparatus or system.

                  The sale of a CD with such a program would be contributory infringement. The distinction between direct and contributory is important, as contributory infringement requires proof of knowledge of the patent, etc.

            2. 16.3.1.2.3.2

              “1. A circuit for performing algorithm A?

              No.

              Why?

              You are claiming all circuits that achieve that result, even though you disclose only one.”

              How about this:

              Inventor Uglug invents a new apparatus. His is made of stone and a stick. Uglug files a patent application describing his invention. He claims

              A wheel comprising:
              Thing shaped like circle with hole in center, hole good for receiving an axil.

              Does uglugs claim pass 101? Remember now, there are no other things shaped like circles with hole in center. That is what he invented.

              Is it too broad because it reads on wooden “things.”

              Of course not.

              Remember now, he invented it. There are no other wheels

              1. 16.3.1.2.3.2.1

                Les, assume that one cannot simply patent result A. Why can one patent achieving result A with a circuit?

                Next Ugh builds a wheelbarrow. He claims “Moving items from one location to another using a machine.”

                Story was confronted with just such claim in Wyeth v. Stone:

                “I claim cutting blocks of ice with a machine.”

                Really?

                Wyeth was the case Morse relied on for its holding.

                There are problems with these kinds of claims, from not claiming the real advance, to claiming ideas in the abstract, etc.. The Supreme Court puts these kind of claims in the 101 bucket as claiming inventions in the abstract — at the idea stage.

                1. Ned,

                  I think you nailed it here. The root problem is inventors (really, their attorneys) trying to claim more than they actually invented.

                  If attorneys would limit themselves to their inventions and practical equivalents disclosed and contemplated by the inventor, 90% of the problems we talk about here would go away.

                  Of course, that’s not going to happen.

    3. 16.4

      Ned – you said:

      “Les, but programs do not cause anything.”

      But under “ordinary meaning” programs do cause things. For example, malware causes bad things to happen (or good, as Obi-Wan might say: “from a certain point of view”)

      See for example, this “ordinary meaning” from a WIRED article that mentions a piece of malware named “Wiper”:

      “Wiper didn’t steal data—instead it destroyed it, first wiping content on the machines before systematically erasing system files, causing the systems to crash, and preventing them from rebooting. Wiper was “designed to quickly destroy as many files as effectively as possible, which can include multiple gigabytes at a time,” according to researchers at Kaspersky Lab who examined the mirror images of hard drives in Iran that were destroyed by Wiper.”

      link to nytimes.com

      1. 16.4.1

        A book describes how to make a bomb.

        A bomb described by he book explodes and kills some marathon watchers in Boston.

        The police arrest the author of the book and put him on trial for capital murder.

        Don’t you see the problem?

        1. 16.4.1.2

          For the record Ned – I responded to the post above. However, the post went to –waiting for moderation– for reasons unfathomable. I was my usual charming and civil self…

          I shant retype it.

          Suffice it to say, I was right and you would have been convinced.

  6. 15

    I am not a law student nor have I taken any law courses. But I’ll give it my uneducated try. Feel free to educate me on where I’m not understanding the law.

    1. Under 101, yes, because software is included in patentable items and constitutes a new process.
    I would argue that it was not patentable under 102 because the claim, at its broadest interpretation, also includes the mobile device itself, which is prior art. I also agree with Phineas’ objection by way of 112-just having a similar program on a mobile device would constitute infringement, correct?
    2. Both ‘proximity’ and ‘bad match’ are undefined terms. I would think that ‘has a memory’ is ambiguous; the device itself does not have ‘a memory’ but has a hard drive and/or RAM that can store information. Let me know if I’m just splitting hairs.
    3. Thor needs to disclose this in the patent application but may file a secrecy order (application?) to prevent its public disclosure.
    4. Post-AIA, the date of invention is less important than being first to file. If Thor had publicly displayed a hammer made of Midguardium before Loki showed the scepter, Thor could still file an application based on his own previous disclosure. If he did not disclose, then the prior 3rd-party disclosure anticipates an item with a handle and a head made of Midguardium (depending on the manufacture of the scepter; some scepters have heads of metal and others are made entirely of the metal). If Thor had filed a provisional application before Loki’s public display, Thor could claim benefit of the provisional to avoid anticipation.
    5. Prior 3rd-party scepter disclosure (an item with a head of Midguardium and a handle) anticipates Thor’s initial claim.
    6. Thor can: claim the boomerang property of the hammer, since that was not part of the scepter anticipation; claim the process of making Midguardium; argue that the functions of hammers and scepters are not identical.

    1. 15.1

      John C, may I politely ask whether you have ever head of a recent Supreme Court case called Alice v. CLS Bank?

    2. 15.2

      Regarding point 5, the anticipation question, John C, why are you ignoring claim limitations? Do you draft reexamination petitions for a living?

      The claim is not to a head and handle, but that is what you said was claimed.

      1. 15.2.1

        Ned-

        No, I have not heard of that case yet. I’m studying for the patent bar, so the MPEP is my introduction to the field, not the relevant case law (thanks for your suggestion; I will look up Alice v. CLS Bank). Are there other cases or resources that you suggest I look up?

        Regarding point 5, I thought the specific claim discussed came from question 4, specifically “claiming “A hammer comprising a hammer-head made of Midguardium and a handle”.” Does that mean that the real question is whether a “hammer-head” would be considered different enough from a “head” of the same metal so that the scepter display is not anticipation?

        1. 15.2.1.1

          JohnC, one has to prove every limitation to prove anticipation.

          However, I am used to responding to reexamination petitions and the like. They often hand wave vigorously when they run into a limitation they cannot prove. When they do that, I focus my response on the missing limitation because I can usually be assured that the prior art does not disclose it.

        2. 15.2.1.2

          John C.,

          A recommendation for you until you get your feet off of the ground: do not read comments by the anti-patent folk here.

          In all seriousness, the level of dissembling and non-law that is passed off as law will do you grave harm.

          1. 15.2.1.2.1

            JohnC, if you actually want to learn something about patent law, you should not listen to posters who do not like either me, MM, Max or Random, to name a few of the good guys.

  7. 14

    That was a one hour quiz?!? Heck, answering those questions would be at least 4 hours of billable work for most experienced patent attorneys (7 or 8 at some firms)!

  8. 13

    American Innovation rests on week foundation – link to nytimes.com

    The article notes that despite increasing patent applications filed by major companies, their investment in basic research continues to decline. Rather the big companies tend to buy up smaller innovative companies that come up with breakthroughs.

    Where have we seen this argument made before? — and just how important it is to American productivity that we continue to focus the patent system on startups.

  9. 12

    1. No. The claim invention is just storing a program pre se and nothing more. The program is not executed by anything, like with the processor, to cause mobile device to do anything. Also there is a 35 USC §112, 1st paragraph problem too for enablement since a program just being stored can’t cause the mobile device to do anything as claimed.

    2. A bad match is still a match, hence will mobile device do both sounds? Also a bad match is a term of degree which if the specification does not have a definition of what is a “bad match” the metes and bounds of the claim is unknown.

    3. If Thor “invented” Midguardium, hence is known to the public for the last decade, e.g. has a patent, the answer is yes. If he kept the metal a trade secret and it’s process, the answer is no.

    4. If Loki uses it in public, hence known by others, over a year, the options by Thor is very limited to disqualify Loki’s public use. He may swear back over a year but he also must show diligence. If under a year, the USPTO usually takes the face value of the affidavit. Now do we have provisional applicants and/or PCT and/or foreign filings here too?

    5. Unless the term of a “hammer” is redefine in the specification, the answer is no, since one then must take plain meaning of the terms. A scepter is a staff or baton borne by a sovereign as an emblem of authority. A hammer is a tool that delivers a blow (a sudden impact) to an object. Their intended functions are totally different. One ordinary skill in the art would not use a scepter as a tool that delivers a blow to an object.

    6. One can amend the claims stating other properties of the hammer made of Midguardium, like only the owner of the hammer can only pick up the hammer at rest or returns to whom it thrown the hammer or takes you to Valhalla. One can send in affidavits of unexpected properties or results, like only the owner of the hammer can only pick up the hammer at rest or returns to whom it thrown the hammer or takes you to Valhalla. One can argue that a scepter is a staff or baton borne by a sovereign as an emblem of authority, hence it’s intended function, are totally different and unobvious than a hammer. Once skill in the art of hammer making would not use scepter art teachings.

    1. 12.1

      1. No. The claim invention is just storing a program pre se and nothing more. The program is not executed by anything, like with the processor, to cause mobile device to do anything. Also there is a 35 USC §112, 1st paragraph problem too for enablement since a program just being stored can’t cause the mobile device to do anything as claimed.

      Agree. But this is why I think the claim is indefinite because the claim does not claim the invention, the use of mobile devices to ID local devices of users also using the social network.

    2. 12.2

      Phineas said “1. No. The claim invention is just storing a program pre se and nothing more. The program is not executed by anything, like with the processor, to cause mobile device to do anything.

      How about “A mobile device having a memory and a processor and operating as part of a social network, wherein the memory includes a stored program which, when executed by the processor, is configured to:”? In your opinion, does that fix the “just storing a program per se” problem?

      1. 12.2.1

        Genghis – Yes, and but it might have some §112 rejections still. I would have written it “A mobile device having a memory and a processor and operating as part of a social network, wherein the memory includes a stored program which, when executed by the processor, configures the mobile device to:”

        Would the Patent Office issue and the Courts uphold a patent claim under §101 stating “A computer operating in an environment, wherein the computer includes a stored program configured to function A, function B…..function Z,” because that is what we have here, the mobile device having a memory and processor, under broadest reasonable interpretation, is a computer. The claim is claiming a machine, not a product or a process.
        The Courts stated many time that software or programs are “not physical things” and by themselves are not patentable for many reasons. As time went by, the Courts have stated, just storing the program on a memory or a computer is also not patentable, like we have in this example.

        What is patentable under §101, is when that program is executed by the processor or computer causing the machine to do something and hopefully that something is new and unobvious.

        1. 12.2.1.1

          “The Courts stated many time that software or programs are “not physical things” and by themselves are not patentable for many reasons. As time went by, the Courts have stated, just storing the program on a memory or a computer is also not patentable, like we have in this example.

          What is patentable under §101, is when that program is executed by the processor or computer causing the machine to do something and hopefully that something is new and unobvious.”

          Wow…. Please see allowed and issued claim 33 as presented in post number 1.

          1. 12.2.1.1.1

            Les, if the describe invention is an improvement in social networking using mobile devices running a specific program, the claim did not claim that invention.

            You speak of a processor executing a program. That is not claimed.

            You are trying to rewrite the claim, Les. That is what you are doing.

              1. 12.2.1.1.1.1.1

                The ordinary meaning of the test claim is an apparatus storing a program. That’s what it is. Nothing more, nothing less.

                1. You are mistaken. The ordinary meaning of, for example:

                  –wherein the memory includes a stored program configured to: cause the mobile device to emit a first sound based upon the proximity of a mobile device associated with a member of the social network;–

                  is that the when the processor of the mobile device executes the instructions of the stored program it causes components of the mobile device to emit a first sound when the recited condition is met.

                  Did you really not know or understand that?

    3. 12.3

      2. A bad match is still a match, hence will mobile device do both sounds? Also a bad match is a term of degree which if the specification does not have a definition of what is a “bad match” the metes and bounds of the claim is unknown.

      Disagree. Assume the invention is property claimed. The claim requires that the phone detect another using the social networking app. The sounds are generated according to whether the social network has identified the other user as a match or not match or incompatible. How that social networking actually determines whether the other user is a match, not a match, or incompatible, seems to be irrelevant. The state of matching, not matching, or incompatible seems to be a predetermined thing, a database entry, that the app queries.

    4. 12.4

      Phineas >>The claim invention is just storing a program pre se and nothing more.

      The claimed invention is not that. The claimed invention is a memory with the program stored in it–an apparatus.

      Can you anti-patent people at least try to write statements that have some barring on reality? I constantly see these statements such as “X is nothing more than a witch.” Moreover, the ridiculous focus on the form of the claim is fooling no one.

      Try to remember that processing information takes a machine that takes time, space, and energy. That these are machines that process information how they do it makes a big different to the time, space, and energy used. And, often it takes many years to even figure out how to perform functions or even to understand what functions to perform.

      1. 12.4.1

        Night, The claimed invention is a memory with the program stored in it – and apparatus.

        ?

        “A mobile device having a memory and a processor and operating as part of a social network….”

        1. 12.4.1.1

          >>the memory includes a stored program configured to:

          Ned, why must you torture my beloved patent law? Can’t you just go to Congress to get what you want? Isn’t that what the Lemley’s of the world should be doing? Going to Congress and not warping patent law.

          1. 12.4.1.1.1

            Night, why do you torture me with Lemley? How many times have I told you that I disagree with Lemley’s ideas.

            The problem I see with the claim Night is that the invention is not properly claimed. The invention really is a method of using a mobile device with a special app. Has nothing to do with an improvement to the mobile device, and a particular structure of the app is irrelevant. The invention is in a method and nothing more.

            1. 12.4.1.1.1.1

              Ned, you torture yourself, as software is not a method.

              Software is a manufacture and machine component.

              The execution of software may be a method, but clearly there is a difference. Just as there is a difference between software and the thought of software.

              These points have long been on the table of discussion.

              Learn them.
              Acknowledge them.
              Integrate them.

      2. 12.4.2

        Night- An attorney who prosecuting a patent for his client must deal with the realities of today, not what he/she wishes it to be. If you don’t like it, then you better ask Congress or Supreme Court to change their minds.

    5. 12.5

      There is nothing in the facts to indicate that Loki has allowed anybody access to the scepter for reverse engineering purposes. How can anybody know what MidGuardium is or how it is made? And if not, how is Loki’s public display of the scepter a public use?

    6. 12.6

      The hammer is a well-known structure. A scepter is a well-known structure. The 2 structures are not the same structure. What they are used for and what they symbolize is irrelevant to the issue whether the same structure is being claimed.

    7. 12.7

      3. Using a metal alloy to make a hammer seems to me to fall under:
      “The combination of familiar elements according to known methods is
      likely to be obvious when it does no more than yield predictable
      results.”

      But you could have a lot of nonobvious method claims like:

      A method for defeating the enemies of mankind consisting of:

      Adjusting the throw of a Midgardium hammer so that it misses an enemy of mankind
      Further adjusting the throw so that the Midgardium boomerang effect causes the hammer to hit the enemy of mankind in the back of the head

      1. 12.7.1

        Slash – the question was about 101. Obviousness is another hurdle set by a different statute (35 USC 103). There is no shame in confusing them, the Supreme Court does it all the time. However, please don’t.

        1. 12.7.1.1

          Question 3 was open ended and not limited to 101, Les.

          If you are going to be pedantic, at least be correct first.

  10. 11

    “Only when the tide goes out do you discover who’s been swimming naked.” – Warren Buffett

    The tide went out when Dennis posted the quiz.

  11. 10

    I don’t know enough of the relevant facts. So, just for fun, the following answers are deliberately incionsistent.

    I thought it amusing to consider how this would play out under the EPC:

    1. Eligible. No doubt. A mobile device has technical character.

    2. Fail. Is the claim to a device standing alone or to a “social network”? Is “bad match” a sub-set of “match” or are the two terms mutually exclusive? Which apparatus decides the question “Match y/n?”, the device or the network?

    3. Is the alloy at Thor’s filing date already an article of commerce? If yes, no need in the appln to teach how to make it.

    4. Loki’s public use fails to enable or to make available to anybody: alloy M, the boomerang effect, a hammer of M, how to make M and how to make the boomerang hammer. So, no adverse effect on Thor’s claim.

    5. Alloy M is “extremely hard”. So a sceptre of M makes a very serviceable hammer. It is notoriously old for a hammer handle to be an extension of its head, in one piece of the same material. The claim covers the sceptre of M.

    6. i) nobody making a hammer starts from a sceptre ii) nobody would impose on a sceptre a head/handle architecture ii) only with such an architecture is the boomerang effect attainable.

    1. 10.1

      Max, your post only goes illustrate the amazing gulf between European law and American law in practice.

      For one, how can the public disclosure of an unknown alloy like MidGuardium without access to it for reverse engineering purposes possibly put in place the non-disclosed MidGuardian alloy into the public domain?

      1. 10.1.2

        Ned, what exactly do I say about the “public domain” ? And where? Which of my answers 1-6 answer are you commenting on? It is not clear to me.

        In 3 I postulated that M had become a staple article of commerce by the time Thor files. Suppose instead the alloy was NITINOL. Everybody can determine its composition and examine its microstructure. But managing its shape memory properties involves much know-how and trade secrets. When I invent a new use for NITINOL I don’t have to teach how to make the alloy, do I?

        Or how about aluminum alloy car body panels. You can determine the composition but can you manage its paint bake response to the satisfaction of GM?

        Under the EPC, it all depends what subject matter you claim, and whether you have enabled it.

        Besides, I’m deliberately trying to provoke, indeed to see where the key differences lie, between AIA and EPC, and which of the two statutes is more workable.

  12. 9

    I don’t recall ever seeing a question – either during law school or on a bar exam by the state or USPTO – of the form: “Here is a controversial issue. Here is the correct position on that issue. Present an argument for this position.”

    Every question I’ve faced is: “Take a stance, pro or con, and then explain your reasoning.” And the grade is determined by the legal accuracy and quality of the reasoning, not by the outcome.

    So, that’s interesting.

    1. 9.2

      …of the form: “Here is a controversial issue. Here is the correct position on that issue. Present an argument for this position.”

      Where does Dennis’s exam state “Here is the correct position on that issue”?

      1. 9.2.1

        Unless he is not going to grade the quizzes, the fact that some answer is implicit, eh?

        (plus, your “leading question” radar is malfunctioning again…)

    2. 9.3

      David said “Here is the correct position on that issue.

      Which part of the quiz are your referring to? Are you referring to question 2 which asks the student to “Provide a concise argument that the yet-unpatented claim fails for lack of definiteness”? That’s not taking a position; that’s simply asking the student to come up with a specific argument. I don’t see anything in the quiz that advocates a “correct position” on a “controversial issue.”

      1. 9.3.1

        That’s not taking a position; that’s simply asking the student to come up with a specific argument.

        Asked in the abstract – I would agree with you, and wouldn’t even have remarked on it.

        But let’s also consider the tone of the commentary on this issue:

        Despite the dramatic potential of Nautilus, the Federal Circuit has largely muted its impact.

        Notably missing from (the Biosig opinion) is any mention of Halliburton, which the court distinguished at length in the original opinion.

        If we think that it’s a problem to have functional claim limits written outside of the safeguards of §112(6), then what we have here is a big problem.

        …as well as guest posts by Mark Lemley on the topic of functional claiming.

        On the other hand, I’ve yet to see any comment suggesting that functional language is statutory – or any reference to this:

        MPEP 2173.01: Interpreting the Claims

        Applicant may use functional language, alternative expressions, negative limitations, or any style of expression or format of claim which makes clear the boundaries of the subject matter for which protection is sought. As noted by the court in In re Swinehart, a claim may not be rejected solely because of the type of language used to define the subject matter for which patent protection is sought.

        MPEP 2173.05: Functional Limitations

        A claim term is functional when it recites a feature “by what it does rather than by what it is” (e.g., as evidenced by its specific structure or specific ingredients). In reSwinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971). There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper. Id. In fact, 35 U.S.C. 112(f) and pre-AIA 35 U.S.C. 112, sixth paragraph, expressly authorize a form of functional claiming (means- (or step-) plus- function claim limitations discussed in MPEP § 2181et seq.). Functional language may also be employed to limit the claims without using the means-plus-function format. See, e.g., K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999).

        Unlike means-plus-function claim language that applies only to purely functional limitations, Phillips v. AWH Corp, 415 F.3d 1303, 1311 (Fed. Cir. 2005) (en banc) (“Means-plus-function claiming applies only to purely functional limitations that do not provide the structure that performs the recited function.”), functional claiming often involves the recitation of some structure followed by its function. For example, in In re Schreiber, the claims were directed to a conical spout (the structure) that “allow[ed] several kernels of popped popcorn to pass through at the same time” (the function). In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As noted by the court in Schreiber, “[a] patent applicant is free to recite features of an apparatus either structurally or functionally.”

        And yet, together, searches of Patently-O for any of these MPEP sections and cases reveal… zero results.

        It is clear that a position is being formulated and advocated, albeit subtly and carefully. That same subtlety is reflected in the quiz question.

        I don’t even have a problem with this. I chose the neutral word “interesting” with similar care, because that is how I regard it… as interesting.

        1. 9.3.1.1

          Wow – you had something much deeper going on there. I read this blog occasionally. It could very well be that the bias against functional claiming is subconscious. I don’t know the author that well to know whether or not he should be given the benefit of the doubt. I agree, let’s settle for calling this situation interesting

          1. 9.3.1.1.1

            Or you could read the blog on more than just a casual basis and witness the one-way street of bias.

            Just a thought.

        2. 9.3.1.2

          in In re Schreiber, the claims were directed to a conical spout (the structure) that “allow[ed] several kernels of popped popcorn to pass through at the same time” (the function). In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As noted by the court in Schreiber, “[a] patent applicant is free to recite features of an apparatus either structurally or functionally.”

          in [General Electric v. Wabash], the claims were directed to [grains] (the structure) that “[were of such size and contour as to prevent substantial sagging and offsetting]” (the function). [General Electric v. Wabash, 304 US 364 (1938)]. As noted by the court in [Wabash], “[The claim uses indeterminate adjectives which describe the function of the grains to the exclusion of any structural definition, and thus falls within the condemnation of the doctrine that a patentee may not broaden his product claims by describing the product in terms of function].”

          Federal Circuit misreads and misleads law. Shocking. Film at eleven.

          Unlike means-plus-function claim language that applies only to purely functional limitations…functional claiming often involves the recitation of some structure followed by its function.

          “The Court of Appeals for the Ninth Circuit relied on the fact that the description in the claims is not “wholly” functional. But the vice of a functional claim exists not only when a claim is “wholly” functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.”

          Oh MPEP, will you ever not enjoy garbage-in-garbage-out?

          1. 9.3.1.2.1

            Your position is clearly not in accord with the law as written by Congress, Random.

            Every time you “state your case,” you only remind us all that you just don’t understand the actual law and that you live in some alternate phantasy world of “only objective physical term claiming.”

            Open your eyes to the Vast Middle Ground deliberately instituted by Congress in 1952. Recognizing that the “point of novelty” is the claim as a whole will surely help you.

            1. 9.3.1.2.1.1

              Your position is clearly not in accord with the law as written by Congress, Random.

              The Supreme Court disagrees, as they just cited to Wabash in Nautilus.

              Open your eyes to the Vast Middle Ground deliberately instituted by Congress in 1952.

              That’s expressly covered by the second quote.

              1. 9.3.1.2.1.1.1

                You clearly do not understand that which you are quoting.

                It is he same misunderstanding that you are intent on maintaining akin to you clenching tight your eyes and continuing to exclaim “But I cannot see.”

        3. 9.3.1.3

          I think you’re on to something, David.

          Just to check a suspicion, I searched Patently-O for any references to “apple pie.” It turns out that it hasn’t been discussed since 2004, and then in only a superficial way! Why does Dennis h@te America so much?

            1. 9.3.1.3.2.1

              There certainly is. There’s also a difference between “a question … of the form: ‘Here is a controversial issue. Here is the correct position on that issue…'” and a question that states merely “Provide a concise argument that the yet-unpatented claim fails for lack of definiteness.” Given your expressed appreciation for subtlety, I’m surprised that you apparently can’t see that.

              1. 9.3.1.3.2.1.1

                As I wrote above – the question considered by itself is unremarkable, but considered together with the subtle and uniformly one-sided advocacy happening here, it’s a different story.

                If a random person asks me: “please explain some of the problems with the theory of evolution,” I wouldn’t draw any conclusions about the reason for asking. But when that question is asked by a Liberty University instructor or a representative of the Creation Museum, then the question has a much different objective.

    3. 9.4

      You must have been at a good law school never to have been “told” the right answer.

      In first year we had to attend courses on “Public Law” and listen to stuff about “social” justice and a bunch of gibberish about “privilege” and “marginalization” and “egalitarianism”.

      There was no doubt in those professors minds about “right” answers.

      1. 9.4.2

        You must have been at a good law school never to have been “told” the right answer.

        The standard format was:

        1) Teach settled issues of law (and, yes, questions had better reach the consensus answer on those);

        2) Teach open questions in the law – circuit splits, inconsistencies, etc.; and

        3) Express opinions (frequently strong opinions) about what the law should state, how judges should and hopefully will rule on a case or issue, etc.

        But I think that clear lines were drawn between these categories. And in that context, I find this quiz… interesting.

    4. 9.5

      David, the invention seems to be in mobile devices that signal users to the close proximity of other mobile device users that are cat lovers — or not. If the good professor is seeking to have the patent held indefinite for failure to disclose an algorithm, then I am totally on board with you.

      1. 9.5.1

        Ned, I agree that the claim has 112 problems, for at least some of the other reasons expressed here.

        But the tone of the question has an implicit but clear direction – and coupled with the advocacy here, that’s kind of unusual, as law school quizzes go.

  13. 8

    1. No, because the determination isn’t limited it’s directed to a field of “matching users” and the claims do not include substantially more because the playing of a sound is insignificant post solution activity

    2. The claims are “configured to” and thus invoke 112(f). Aristocrat requires the spec to define the algorithm, which never happens. If it were construed to be outside of 112(f) it would fail 112(b) for the same reason – it is not reasonable to not describe the matching procedure when the procedure is readily conveyable.

    3. hahaha No. 112(a).

    4. Loki’s public use creates a bar, a prior disclosure by Thor gets around it. Thor’s prior disclosure cannot be more than 1 year before his filing.

    5. Sure, a scepter has a handle. A definition of “hammer-head” could be a means for hitting things. A scepter can hit things. Therefore the scepter anticipates. Why bother though, when you can easily make it obviousness.

    6. Oh all of the standard 103 things.

    1. 8.1

      1. Why is “matching users” abstract. Merely stating that something is abstract does not make it so.

      2. Can a recipe be configured to cause a machine to do something? Is there not something missing here? Who infringes such a claim?

      3. How can something be a public use if what is disclosed is not enabling and the public does not have access to the scepter itself for reverse engineering purposes.

      1. 8.1.1

        1. Is matching users a concrete act or is it an abstract result? What does matching users look like, describe that act.

        2. What’s so odd about the claim? Its a standard software claim.

        3. Because that is not the goal of the public use bar. You know that case with the hidden corset or whatever, the public neither saw nor had an enabling disclosure. The on sale bar doesn’t require a machine even change hands at all, so how can “reverse engineering” or “having access” be a requirement? The important part of the claim is the Midguardian, and it was in public use. That the public wasn’t enabled to make it isn’t relevant, unless you have a case saying so.

        1. 8.1.1.1

          Random,

          1. ? Emitting sounds is not abstract.

          2. Standard? I’ve never seen such a claim before. It is a wonder that you guys in the patent office would allow such a claim that is so contrary to how computers actually work. But, of course, you also allowed B-claims without allowing the Federal Circuit to rule. Where in the world do you guys get the idea that you, the PTO, and not the courts, interpret the statutes.

          3. Random, I suggest you read Pennock v. Dialogue? There is a difference between prior art and an on sale bar.

          Prior art is stuff that is known or in public use. Both require that the subject matter be enabled that one of ordinary skill may make and use it.

          A Bar, on the other hand, requires no public disclosure at all, being personal. No enablement concerns are present. A bar is personal to the applicant. It is an equitable bar called abandonment that based on conduct of the applicant that forfeits his right to a patent.

          Congress codified the bar in 1836 based on Pennock.

          1. 8.1.1.1.1

            Congress codified the bar in 1836 based on Pennock

            And removed it with the AIA (see the congressional record aka The Soliloquy).

          2. 8.1.1.1.2

            Ned –

            You said:

            ” Standard? I’ve never seen such a claim before. It is a wonder that you guys in the patent office would allow such a claim that is so contrary to how computers actually work. But, of course, you also allowed B-claims without allowing the Federal Circuit to rule. Where in the world do you guys get the idea that you, the PTO, and not the courts, interpret the statutes.”

            I’m Shocked and hurt. Don’t you read my posts? Or do you feel that claim 33 in post 1 below is not “such a claim”, ’cause it seems darn similar to me.

          3. 8.1.1.1.3

            1. ? Emitting sounds is not abstract.

            Neither is displaying the word “Match” but that would also be insignificant post-solution activity. The claim doesn’t pretend (and evidence would clearly refute) that he was the first to get a machine to emit different sounds. The claim is premised on an undisclosed “novel” GPS and matching algorithm, and then engages in conventional notification of the result of that algorithm. Prometheus and Flook control.

            2. Standard? I’ve never seen such a claim before.

            A “stored program configured to” is no different than a standard claim to a non-transitory computer readable medium. The hypothetical claim is a system claim comprising 1) a processor and 2) a CRM. The CRM itself would be fine, and the addition of the processor seems unnecessary, but there’s nothing wrong about it.

            Where in the world do you guys get the idea that you, the PTO, and not the courts, interpret the statutes.

            haha oh that doesn’t happen, and it’s one of the main reasons the system is so f-ed up. We could hardly do worse than the fed cir.

            Prior art is stuff that is known or in public use. Both require that the subject matter be enabled that one of ordinary skill may make and use it.

            102(a) and the publication part of (b) require a “description” of “the invention” be published. The “describe” language is what creates the necessity for enablement for those parts of prior art. The on sale and public use bars simply state “the invention…was in public use or on sale.” The invention is circumscribed by the claims. If the features of the invention were in public, they meet the public use bar. If we were doing an office action I would insert the form paragraph about arguing unclaimed features here.

            BTW, that’s why you can use “patented” prong of prior art even when the foreign country doesn’t have the same descriptive requirements we do. We don’t have to engage in an international legal analysis to find out if their enablement is our enablement, we simply say the claims of this patent are like the claims in that patent, therefore this invention has been previously patented (although most examiners will use the printed publication part of 102a anyway).

            I’m not aware of any case that draws this kind of distinction between first and third party public uses. Even if that were the case, how do you get around the fact that Loki is engaging in public use and Loki is enabled. Public use doesn’t require a certain amount of people to trigger, all it requires is a single person not subject to a secrecy or experimental use. Loki is that person.

  14. 7

    Dennis, thanks for posting the quiz! I love the claim. It is a great way to exercise your “Alice” muscles. I think it is patentable subject matter under Alice. Are you planning to post your “model answer” to this question?

  15. 6

    My patent exam just required us to analyze whether or not a preamble was a limitation for purposes of novelty and obviousness.

    Sadly, I’m not sure I could adequately address these issues after 20 years in the field.

  16. 5

    1. The novel portion of the claim is ineligible subject matter (abstract) not being a new or improved machine, manufacture or composition or process that is transformative with respect to the otherwise eligible portions of the claim.

    2. I have no idea how a program causes a device to do anything. Rather it is the device executing the program that does something. How does anyone infringe this claim?

    3. No. 112(a) requires that the spec disclose how to make the claimed Midguardium Hammer. That requires the spec in this case to disclose the process of making Midguardium, an otherwise unknown process.

    4. Loki’s public use is not enabling regarding Midguardium and therefor not prior art for 102 purposes. Dates of invention are no longer relevant after the AIA, thus Thor could not swear behind Loki’s public use if it otherwise qualified as prior art.

    If all this occurred prior to the AIA, Loki’s public use might establish prior art under 102(g). However Thor might be able to swear behind the reference by showing that he did not abandon the invention (two years between reduction to practice and filing presumes abandonment) and can prove all the other elements required by 102(g).

    5. No anticipation. The claim is to a hammer, not a scepter.

    6. Obviousness? Just how can a claim to a Midguardium Hammer be obvious when the process of making Midguardium is not publicly known?

    1. 5.1

      5. No anticipation. The claim is to a hammer, not a scepter.

      Preambles aren’t given much weight Ned.

      How does a scepter differ from a hammer? They both have a head and a handle…. Does the claim specify aspects of the head that read away from the head of the scepter or does it just recite a head made from Midguardium mounted at the distal end of the handle?

        1. 5.1.1.1

          “The claim is not to a “head” Les.”

          I know that Ned. It is to a hammer… I assume something like this:

          A hammer comprising:

          a handle having characteristics A, B and C;
          a head having characteristic D wherein characteristic D is that it is made of Midguardium, and
          an attachment mechanism for mating the handle to the head, the attachment mechanism having characteristics G and H.

          That may or may not read on Loki’s scepter depending on what A, B, C, G and H are.

      1. 5.1.2

        “A hammer comprising a hammer-head made of Midguardium and a handle” The preamble must be given weight since it gives “life and meaning” to the over all claim. It’s also claiming a part called “HAMMER-head” too. Hence, the preamble is a limitation.

        1. 5.1.2.2

          No. The body of the claim is all that is needed to understand what it claimed. The per-amble could be replaced with : An apparatus comprising: and the subject matter being claimed would not change.

          No life, no meaning. Your preamble is weightless.

    2. 5.2

      Ned Heller said “Loki’s public use might establish prior art under 102(g).

      102(g)? Are you sure? I don’t think this was a typo; you seem to have mentioned this section deliberately. Can you explain how is this section invoked in this fact pattern?

      1. 5.2.1

        Genghis, there is a recent Fed. Cir. case that held that a conference presentation of describing, but not in sufficient detail to enable, a reduction to practice was not abandonment, suppression or concealment. I cannot remember the case name, but I remember reacting very negatively to the case.

        TQP DEVELOPMENT, LLC v. INTUIT INC., Dist. Court, ED Texas 2014 link to scholar.google.com is more consistent with my “previous” understanding of the law, that the public disclosure must include the essence of the invention:

        “When the “inner workings” are the essence of the invention, it is those “inner workings” that must not be suppressed or concealed in order for the invention to be prior art under section 102(g).”

        But again, I think there is a recent Federal Circuit case that is inconsistent with this district court opinion written by Bryson.

        1. 5.2.1.1

          Let me rephrase my question. Loki did not file a patent; therefore an interference is impossible. So how/why are we discussing 102(g)? Isn’t 102(g) only relevant if we have an interference?

          1. 5.2.1.1.1

            No. You might want to actually read the TQP case I cited.

            Also, the issue of non enablement is discussed, citing See also Dey L.P. v. Sunovion Pharm., Inc., 715 F.3d 1351, 1359 (Fed. Cir. 2013) (reversing summary judgment of invalidity under the public-use prong of section 102(b) because “a reasonable jury could conclude that if members of the public are not informed of, and cannot readily discern, the claimed features of the invention in the allegedly invalidating prior art, the public has not been put in possession of those features)”

            1. 5.2.1.1.1.1

              Thanks Ned. I did not realize that 102(g)(2) does not have the “during the course of an interference …” language. Regarding “abandonment, suppression or concealment” – is intent required? If so, I can see why the Fed. Cir. might have held that a conference presentation describing, but not in sufficient detail to enable, a reduction to practice was not abandonment, suppression or concealment. The conference presentation may have had page and time limits which may have forced the presenter to omit details.

              1. 5.2.1.1.1.1.1

                I don’t recall the case, but I think Bryson’s summary of the current state of the law but for this forgotten case is accurate. If the public disclosure still conceals the heart of the invention so as to make what was disclosed non enabling, then there is no inconsistency between 102(b) and 102(g).

    3. 5.3

      4. Loki’s public use is not enabling regarding Midguardium and therefor not prior art for 102 purposes.

      Citation please. Hidden public uses are not enabling and yet constitute prior art. Plus an offer for sale of a device ready for patenting constitutes prior art even if the sale itself is not enabling. Loki’s scepter was actually reduced to practice.

      The claim isn’t directed toward the process for making Midguardium, but a form of the Midguardium itself. Midguardium itself was publicly used. This isn’t a public use of a product not being prior art to the process to form it.

      5. No anticipation. The claim is to a hammer, not a scepter.

      The claim comprises a hammer head and a handle. Can the top of a scepter constitute a hammer head?

      1. 5.3.1

        “Can the top of a scepter constitute a hammer head?”

        Sure, why not?

        This one is very hammer head link

        link to touregypt.net

        I bet the Royal Scepter of the Carpenters Union has a hammer head on it.

        Besides, Broadest Reasonable Interpretation being what it is, anything you might hit something else with would be encompasses by “hammer head”.

      2. 5.3.2

        Random, see the cases cited in posts 5.2.1 and 5.2.1.1.1.

        Midguardium is not disclosed in an enabling way by the public display of the scepter.

        1. 5.3.2.1

          The Dey case on its face states “Sunovion is correct that we do not ask for an “`enablement-type inquiry'” under section 102(b),” at 1359.

          You’ve proven my point. Though I should point out I don’t think the rest of that sentence is necessarily correct. Supposedly if you claim internal features of a watch, for example, but only the external watch is displayed, there is a lack of conveyance of the features.

          But this is not that type of case. The case claims Midguardian. It is undisputed that Midguardian was used (and thus conveyed). The public use did not have to include an enablement of how to make the Midguardian in order to trigger the public use bar.

          1. 5.3.2.1.1

            Random, I may have answered this elsewhere, but the on sale bar pertains to the inventor applying for a patent — that is why there does not have to be enablement. For third parties, there must be an enabling disclosure — or what amounts to a commercial public use.

            May I suggest that you read Pfaff v. Wells for more on the on sale bar. It is all about applicants. link to scholar.google.com

        2. 5.3.2.2

          BTW the Konrad case that that case cites to is a better example – There the inventor did a public display of software. He argued that there is no enabling disclosure because the people who saw him use the program didn’t see the source code. The holding was that the claims define the invention, and the features that he claimed were displayed. The fact that there was no enabling disclosure of the source code was irrelevant.

          And that’s the only way it can be Ned. The function of the public use and on sale bars are to prevent people from benefitting from their non-disclosure. Under your logic, Coke could, for example, sell Coke, and so long as they never disclose their recipe, and the recipe is not reverse engineerable, they would maintain their patentability indefinitely while profiting from their undisclosed combination. Clearly that frustrates the purpose.

          1. 5.3.2.2.2

            Random, again, the on sale bar is about equitable abandonment. Read Pfaff’s citation to the Pennock.

            “We originally held that an inventor loses his right to a patent if he puts his invention into public use before filing a patent application. “His voluntary act or acquiescence in the public sale and use is an abandonment of his right.” Pennock v. Dialogue, 2 Pet. 1, 24 (1829) (Story, J.). A similar reluctance to allow an inventor to remove existing knowledge from public use undergirds the on-sale bar.”

            The case goes on to like the bar to the inventor:

            “We conclude, therefore, that the on-sale bar applies when two conditions are satisfied before the critical date.

            First, the product must be the subject of a commercial offer for sale. An inventor can both understand and control the timing of the first commercial marketing of his invention. ”

            “Second, the invention must be ready for patenting. That condition may be satisfied in at least two ways: by proof of reduction to practice before the critical date; or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to 68*68 practice the invention”

            The Supreme Court has not extended the on sale bar to third parties. Why? Prior art must put the invention into the public domain, that is why.

            If it were not the case, a third party secret commercial use would be prior art. But that is not the law, now is it?

            1. 5.3.2.2.2.1

              Pfaff is about the applicant because the applicant is the one that made the sale in that factual circumstance. There’s nothing in Pfaff that states it doesn’t apply to third parties.

              “Secondly, our precedent holds that the question is not whether the sale, even a third party sale, “discloses” the invention at the time of the sale, but whether the sale relates to a device that embodies the invention. King Instrument Corp. v. Otari Corp., 767 F.2d 853, 860, 226 USPQ 402, 407 (Fed.Cir.1985), cert. denied, ___ U.S. ___, 106 S.Ct. 1197, 89 L.Ed.2d 312 (1986); Barmag, 731 F.2d at 838, 221 USPQ at 566.”

              – JA LaPorte, Inc. v. Norfolk Dredging Co., 787 F. 2d 1577 – Court of Appeals, Federal Circuit 1986

              “Turning first to the prior art software products described in the later-published abstracts, the parties’ arguments focus upon whether the later-published abstracts make enabling disclosures. These arguments are misdirected. First off, it is the software products, not the abstracts, that are the prior art. Further, we held earlier in this opinion that the Board did not clearly err in finding that the products, including the features upon which the examiner relied in rejecting the claims, were in public use or on sale. Beyond this “in public use or on sale” finding, there is no requirement for an enablement-type inquiry.”

              – In re Epstein, 32 F. 3d 1559 – Court of Appeals, Federal Circuit 1994

              Two third-party public use, on sale bar cases which state that it is the existence of a embodiment which constitutes an invalidating act, not whether the use or sale conveys an enabling description.

              1. 5.3.2.2.2.1.1

                I thought you would cite Federal Circuit cases. Frankly, the Federal Circuit does not understand patent law, not just the law of infringement as discussed by the Supreme Court in Akamai. (There is a reason for this, but that is another topic.) One cannot rely on Federal Circuit cases on the issue of whether “on sale” by independent third parties can be prior art. It cannot be, otherwise secret third party commercial use is prior art. That is not the law, and is contrary to the intent of congress in amending the statute in 1836 to add the “on sale” BAR, an effective abandonment of the right to a patent by an inventor who commercially exploits his invention before filing — Pennock v. Dialogue

                You will note for the record that “on sale” is not 102(a) prior art. Why?

                Pfaff and Pennock are the two Supreme Court cases on “on sale.” They both specifically relate to activities of the inventor applying for a patent. While both cases did not expressly limit their holdings to on sale activities of the inventor, to hold that on sale could extend to independent third party activities would simply erase the requirement of an enabling disclosure and allow secret commercial activity of third parties to be prior art.

                That defendants in infringement cases have not properly raised the issue “yet,” does not mean it cannot be raised.

                1. Frankly, the Federal Circuit does not understand patent law, not just the law of infringement

                  Well yes, you’re preaching to the choir here.

                  It cannot be, otherwise secret third party commercial use is prior art.

                  I’m surprised you cite Pennock, because I have a theory about that case. Pennock is, I believe, the very creation of the phrase “not known or used by the public.” The statutory term was “not known or used” and the court said that it must be construed to be “not known or used by the public.” But the word “public” as used in that case means “people who aren’t agents of the inventor.” i.e. by “others.” Thus when Pennock creates a test, 102a captures it perfectly by stating it as “not known or used by others.”

                  But that, of course, isn’t the test we’ve been working under, right? Because “known or used” apparently means “known or used by the public” to the fed cir. But that renders the “by others” language of the statute superfluous, since knowledge or use by the general public would always include others.

                  So where does this publicly available test come in? The MPEP cites Carellav. Starlight Archery, 804 F.2d 135, 231 USPQ 644 (Fed. Cir. 1986) which cites In re Bass, 474 F.2d 1276, 1296, 177 USPQ 178, 193 (CCPA 1973) which cites (0f course) Pennock. So the entire special construction of “known or used” is a charade.

                  See Application of Schlittler, 234 F. 2d 882, 886 – “The reviser’s note on Section 102 of the Patent Act of 1952, 35 U.S.C. § 102, contains the following statement:

                  “No change is made in these paragraphs [102(a), (b), and (c)] other than that due to division into lettered paragraphs. The interpretation by the courts of paragraph (a) as being more restricted than the actual language would suggest (for example, “known” has been held to mean “publicly known”) is recognized but no change in the language is made at this time.””

                  In other words, everyone is in agreement the statute kept the status quo and that Pennock controlled that status quo. Pennock is clearly construing the test as merely a knowledge or use by someone unconnected to the inventor test, which is why the language was changed post-Pennock to “by another” and not “by the public.” I could get behind your view that the public use bar discussed in 102b is a personal bar, but only because the proper construction of the 102a test actually creates a stronger rejection than the federal circuit would have people believe. In either case, it is my belief that secretive commercial uses actually constitute prior art under a proper reading of the law.

                  That being said, I will agree with you that it’s certainly at least as likely that the fed cir is as terrible with its “public use bar applies to third parties” logic as it is with respect to its “known or used means publicly known or used” logic, or most other things it does for that matter.

                2. Random, look at the Act of 1836:

                  SECTION 6. And be it further enacted, That any person or persons, having discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale, with his consent or allowance, as the inventor or discoverer;”

                  “Known or used” by “others” prior to the date of invention is “prior art.” Obviously, I think, the known or used must mean that the knowledge or use must include how to at least make. Otherwise, how can a invention be known? And, if one cannot even tell from public use materials whether the claimed invention is actually being used, how can it be that the invention is known to the public?

                  Thus, secret use by others cannot be prior art.

                  Back to the 1836 Act, the “public use/on sale” bar was clearly personal to the applicant, and to the extent others engaged in the on sale or public use activity, it only counted to bar his patent IF the inventor consented or allowed it. The Supreme Court in Andrews v. Hovey, 123 U.S. 267 (1887), eliminated the requirement that the inventor consent in response to the two year grace period, actually a bar (read the case), enacted in 1839. Thus it is possible that third party sales and public uses are prior art, but only if they are indeed public — the kind that places the invention into the public domain — such that the public would know what the invention is and how to make it.

                  Thus, back to Loki’s scepter. How do we even know his scepter is made of Midguardium? How could we prove such in court if, for example, no one but Loki ever had access to the scepter?

                  Moreover, assume we did have access to the scepter, how do we know it was Midguardium without demonstrating that it was made by the same process described in the patent, when the process that made the metal of the Loke scepter was and is unknown, at least, in this universe.

                  The Star Trek transporter is like the Loki scepter are similar in many ways. In Seymour v. Osborne, the Supreme Courts said that a description of an invention must be enabling to defeat a patent. Are not the Star Trek transporter and Loki scepter mere descriptions because after have seen what they can are and what they can do, no one has any idea of how to make one?

                3. And, if one cannot even tell from public use materials whether the claimed invention is actually being used, how can it be that the invention is known to the public?

                  We’re talking two different things now. I can agree with you on 102b, but only because my view of 102a still encompasses Loki being prior art. Why do you ask the question “known to the public”? That’s not the statute. The statute is known to an “other.” Loki is an other.

                  The “public” language came in because of a misreading of Pennock by the fed cir. If you don’t accept the fed cir’s logic on third party public uses, then why should we follow them about the public nature of knowledge? Point to where the Supreme Court has evidenced that “knowledge or use by others” requires “the public” to know rather than “one single person who isn’t the inventor’s agent.”

                  If you can’t, then Loki has knowledge and use of Midguardium and was enabled to make it.

                  Thus, back to Loki’s scepter. How do we even know his scepter is made of Midguardium? How could we prove such in court if, for example, no one but Loki ever had access to the scepter?

                  Because Loki could testify it was Midguardium and could prove it by explaining his “secret” process, which he would do because otherwise Thor is going to sue him for infringement for making the Scepter. This is a question of can we find proof, not whether any amount of proof would be sufficient.

                  You don’t need an otherworldly example for this. Coca-Cola is made by a “secret” process. According to the fed cir, if I re-discover Coca-Cola’s process for making Coke I can patent it, because their secret process isn’t prior art against me, despite the fact that it would remove the resulting Coke product, a product the public has enjoyed for 100 years, from the public sphere.

                  In Seymour v. Osborne, the Supreme Courts said that a description of an invention must be enabling to defeat a patent. Are not the Star Trek transporter and Loki scepter mere descriptions because after have seen what they can are and what they can do, no one has any idea of how to make one?

                  So again, we’re arguing two different things here. I agree with you that when the statute requires a “description” or “knowledge” of the invention then it requires enablement. But not every rejection requires description. I disagree that just because a public use is not reverse engineerable means it is not prior art, because the public use rejection has no description qualifier. Much like the fed cir, you’re reading a word into the statute that isn’t there. I certainly agree with you that one of the purposes of the use/sale bars are to prevent double exploitation by the inventor, but that can’t be the sole reasoning, or the 102a “use” rejection (which is limited to others) wouldn’t exist. There is simply an independent right of the public to not have things taken away from them.

                  The Star Trek Transporter isn’t a problem, because if it is “used” in public then either 1) the inventor has allowed it and it has started his personal bar under 102b or 2) it was independently invented and thus SOMEONE has enabled it and the public is enjoying the use of it, and it triggers the 102a use rejection. In either case, if the inventor is the sole inventor he can still get a patent by filing and if he isn’t the sole inventor he may lose/have lost his right.

                4. Ned – Coffin v. Ogden, 85 US 120, 124-125.

                  “The prior knowledge and use by a single person is sufficient. The number is immaterial.”

                5. Random, thanks.

                  Ogden: “Knowledge and use by a single person.” But that person must know how to make and use.

                  The requirements of the statute for a patent is to convey to the public the knowledge of how to make and use. To defeat a patent, the same should arguably be shown.

                  “Fitzgerald’s, the latter would not, upon such grounds, be entitled to a patent; provided Conner’s safe and its mode of construction were still in the memory of Conner.” Coffin at 125 quoting Gayler.

                  I still think it an interesting question about whether something can be a public use if the mode of construction is not public, but kept as a trade secret, and that mode of construction cannot be determined from materials available to the public. Why impose such disclosure requirements on a publication, but not on a public use?

                6. I had a long response posted but I cant figure out how to make it go through. See Corona Cord Tire Co. v. Dovan Chemical Corp., 276 US 358 – Supreme Court 1928

                  Alexander Milburn Co. v. Davis-Bournonville Co., 270 US 390 – Supreme Court 1926

                  and Standard Automatic Mach. Co. v. Karl Kiefer Mach. Co., 18 F. 2d 326

                  The first shows that a third party inventor + secret notes defeats a patent. The second is the rationale for 102e which states that public informing is not the only policy. The third is a nice compilation.

                  Maybe they’ll let my post through the filter.

                7. Random, Corona Cord was about the defense of prior invention, then among the listed defenses.

                  Moreover, the Kratz paper “described the kinds of rubber used, the proportions of rubber and sulphur in the mixture, and the manner in which the accelerator was incorporated and the method of vulcanization.” 276 US 358 at 371. Thus the method of using the DPG as an accelerator was disclosed.

                  Among rival inventors who both disclose how to make and use the invention, the priority goes to the 1st to reduce to practice, etc. As between Weiss and Krantz, Krantz was the 1st inventor even though he did not seek to obtain a patent, but only published.

                  The Supreme Court was not presented with a situation where the public is not given the benefit of how to make and use the invention.

                8. Random, regarding Alexander Milburn, the Supreme Court opinined,

                  “In view of the gain to the public that the patent laws mean to secure we assume for purposes of decision that it would have been no bar to Whitford’s patent if Clifford had written out his prior description and kept it in his portfolio uncommunicated to anyone.”

                  270 US 390 at 400.

                  It would seem that knowledge of a prior inventor, by itself, kept secret, cannot be bar a patent of another inventor. It would be strange that the Supreme Court would make this statement and confine its effect only to the prior invention defense and not to the prior knowledge of another defense.

                9. Random, regarding Standard Automatic Mach., the court did opine that people who observed the third-party machines in operation did not have to know how they actually operated for “public” prior use purposes. There does seem to be some tension here with requirement that the “public” be informed in some fashion not only of the use but of how the invention is made.

                  Back to Loki. The Supreme Court cases seem to require that the use be known to the public and that at least one person know how to make the invention. If the specimen is gone and the person who knows of the use is gone, then the Supreme Court is clear that the prior use is not longer a prior use.

                  But, what if Loki never knew how to make MidGuardium? There was no allegation that he was an inventor or a maker of it. I would think that the requirement of knowledge and use of the “invention,” which requires both what the invention is and how to make it so that it works for its intended purpose, is not made out.

                  Note here, we are not dealing with Loki as a patent applicant where the fact of prior commercial use seems sufficient for abandonment purposes.

                10. Random, Corona Cord was about the defense of prior invention, then among the listed defenses.

                  You can’t invent without knowledge. Knowledge is still a defense.

                  Moreover, the Kratz paper “described the kinds of rubber used, the proportions of rubber and sulphur in the mixture, and the manner in which the accelerator was incorporated and the method of vulcanization.” 276 US 358 at 371. Thus the method of using the DPG as an accelerator was disclosed.

                  But that wasn’t prior art because of its date. The patentee could swear behind it.

                  It would seem that knowledge of a prior inventor, by itself, kept secret, cannot be bar a patent of another inventor. It would be strange that the Supreme Court would make this statement and confine its effect only to the prior invention defense and not to the prior knowledge of another defense.

                  It’s made to the publication defense. That paragraph, in addition to the paragraph after it, is saying that the lower court might look at a 102e case as a document that wasn’t published and therefore doesn’t qualify as prior art, because the non-publishing (or abandonment) fails to serve the public knowledge policy interest; however (in the next paragraph) we have another policy interest which is that an invention goes to the inventor. I should also point out that they specifically prefaced that statement with “assuming” rather than take issue with the Coffin statement. It’s hard to call that an overruling in my mind.

                  But, what if Loki never knew how to make MidGuardium? There was no allegation that he was an inventor or a maker of it. I would think that the requirement of knowledge and use of the “invention,” which requires both what the invention is and how to make it so that it works for its intended purpose, is not made out.

                  It specifically says that Loki independently invented the Midguardium.

                11. OK, so Loki invented as well.

                  Still the issue has not squarely been addressed by the Supreme Court as just how much access the public must have to the specimen and the knowledge of how to make and use before something is good public use prior art.

                12. Just to reiterate, as secret use is not prior art, neither is secret knowledge.

                  We are still left with the idea that an invention (what it is an how to make it) must be public in order to be prior art. I think the new 102 AIA will go a long way to clarifying this in appropriate cases, as the statute has the “available to the public” add on.

        3. 5.3.2.3

          Ned. Public use does not have to be enabling. You can display a gadget with a patentable component deep within it, that is never used or activated or mentioned in the , for example, trade show display. That is still a public use for 102(b).

          1. 5.3.2.3.1

            ^ This is what I thought too, but that appears to not be the law according to the federal circuit cases he cited. Apparently they have a rule that the feature you’re seeking to use it for must be in use. So if you have a device that has qualities ABCD but only use ABC, you can’t use it for D. This seems to be in conflict with what the Supreme Court cases say.

            As I said though, the hypothetical is not that case. The feature was A (Midguardian) and the use was A, and the non-enablement disclosure is irrelevant.

            1. 5.3.2.3.1.1

              Well, someone ought to send an email to the MPEP dudes then:

              2. Even If the Invention Is Hidden, Inventor Who Puts Machine or Article Embodying the Invention in Public View Is Barred from Obtaining a Patent as the Invention Is in Public Use

              When the inventor or someone connected to the inventor puts the invention on display or sells it, there is a “public use” within the meaning of pre-AIA 35 U.S.C. 102(b) even though by its very nature an invention is completely hidden from view as part of a larger machine or article, if the invention is otherwise used in its natural and intended way and the larger machine or article is accessible to the public. In re Blaisdell, 242 F.2d 779, 783, 113 USPQ 289, 292 (CCPA 1957); Hallv. Macneale, 107 U.S. 90, 96-97 (1882); Ex parteKuklo, 25 USPQ2d 1387, 1390 (Bd. Pat. App. & Inter. 1992) (Display of equipment including the structural features of the claimed invention to visitors of laboratory is public use even though public did not see inner workings of device. The person to whom the invention is publicly disclosed need not understand the significance and technical complexities of the invention.).

              2133.03(a) “Public Use”
              A. Commercial Versus Noncommercial Use and the Impact of Secrecy
              2. Even If the Invention Is Hidden, Inventor Who Puts Machine or Article Embodying the Invention in Public View Is Barred from Obtaining a Patent as the Invention Is in Public Use
              link to uspto.gov

              1. 5.3.2.3.1.1.1

                But note that this section pertains to actions by the inventor, or someone “connected” to the inventor.
                Loki is a third party, neither the inventor nor someone connected to the inventor. Thus Loki’s actions are not covered by this section, but are still covered by the enablement requirement. Since merely viewing the outside of the device doesn’t lead to knowledge of how to make the device, any viewing was not enabling.

                1. CRP –

                  Loki is Thor’s brother. Good luck arguing that he’s not “connected to the inventor.”

                2. Les, not a difficult argument to make, given their past history, cross-purposes, lack of business arrangement, etc.

                3. That connects them, not disconnects them. Loki history of jealousy and related history of acting out make it pretty obvious that he stole the Midguardium to make his scepter just to screw with Thor and his patent application. Moreover, I’m sure we will find that he filed for a patent ahead of Thor and under the AIA and “first to file’ will get it.

                4. You can display a gadget with a patentable component deep within it, that is never used or activated or mentioned in the , for example, trade show display. That is still a public use for 102(b).

                  Display of equipment including the structural features of the claimed invention to visitors of laboratory is public use even though public did not see inner workings of device

                  They are not in contradiction. Public use of a feature is encompassed, display of a gadget with an unused component inside it isn’t as to the inside component.

                  You don’t need to enable the feature, but you do need to convey the feature, so if I have a watch but don’t show the innards of the watch, the features on the watch face are precluded, but a limitation directed to the inner working is not.

                  Put simply, you can reject a limitation with a public display that is “seen,” even if the thing enabling that display is “hidden.” But if the limitation is directed to something “hidden” there is no public use.

          2. 5.3.2.3.2

            Les, Public use implies that the public has access to the thing so that it might reverse engineer it, determine what it is. There is nothing in the statement of facts here that showed that the Loki shared the scepter with anyone, in fact, it was his scepter. It was only on display.

            The kind of public use by the applicant himself does not have to be enabling as it is a bar. See, Pennock v. Dialogue.

            1. 5.3.2.3.2.1

              MPEP 2133.03(a) A.2

              See also:

              I. POLICY CONSIDERATIONS

              (A) “One policy underlying the [on-sale] bar is to obtain widespread disclosure of new inventions to the public via patents as soon as possible.” RCA Corp. v. Data Gen. Corp., 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989).
              (B) Another policy underlying the public use and on-sale bars is to prevent the inventor from commercially exploiting the exclusivity of his [or her] invention substantially beyond the statutorily authorized period. RCA Corp.v.Data Gen. Corp., 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989). See MPEP § 2133.03(e)(1).
              (C) Another underlying policy for the public use and on-sale bars is to discourage “the removal of inventions from the public domain which the public justifiably comes to believe are freely available.” Manville SalesCorp. v. Paramount Sys., Inc., 917 F.2d 544, 549, 16 USPQ2d 1587, 1591 (Fed. Cir. 1990).

    4. 5.4

      Ned said “3. No. 112(a) requires that the spec disclose how to make the claimed Midguardium Hammer. That requires the spec in this case to disclose the process of making Midguardium, an otherwise unknown process.

      Are you saying that if you disclose the composition of an alloy, but do not disclose a process to create the alloy, then you are violating the 112(a) requirement? I thought you could patent a compound, but keep the process for creating the compound a trade secret. Am I wrong?

      1. 5.4.1

        Genghis, it is quite fundamental that the specification disclose enough so that one of ordinary skill in the art may make and use the invention. If the process for making MidGuardium is not publicly known, it must be described in the specification.

        1. 5.4.1.1

          Ah, I see that I assumed that a PHOSITA would know how to create the alloy once the composition was known, e.g., mix a bunch of metals and chemicals in the claimed proportion. If the composition of the alloy does not enable a PHOSITA to create the alloy, then I agree that at least one process has to be disclosed – you could still keep the “best process” a secret.

  17. 4

    2. The claim is indefinite because it is unclear whether a member of the social network who is a match will cause the first sound to be emitted for being a member of the social network as well as the second sound for being a member of the social network who is a match.

      1. 4.1.1

        You’re assuming that “a member of the social network who is a match” is treated as “a member of the social network” plus “who is a match,” rather than just “a member of the social network who is a match.” It is unclear whether “a member of the social network” is Condition A causing the first sound to be emitted and “who is a match” is Condition B causing the second sound to also be emitted, or whether “a member of the social network” is Condition A causing the first sound to be emitted and “a member of the social network who is a match” is Condition B causing the second sound to be emitted.

        1. 4.1.1.1

          “You’re assuming that “a member of the social network who is a match” is treated as “a member of the social network” plus “who is a match,” rather than just “a member of the social network who is a match.””

          I’m not assuming anything. The claim says there is a sound for a member and a sound for a match. The claim specifies there are two sounds.

          You don’t think that makes sense, and maybe it doesn’t, but that is what is claimed and the claim is definite.

      2. 4.1.2

        This is one of those cases where an exam question, as compared to an actual patent or application, just doesn’t have the proper background to fully consider the issue being questioned. But I suspect the issue that JSE raised is what Dennis was shooting for when he wrote the question.

        1. 4.1.2.1

          ” But I suspect the issue that JSE raised is what Dennis was shooting for when he wrote the question.”

          I don’t think so. The question parallels the “specification”. If Dennis meant for the claim to not reflect what the inventor considers to be the invention, he would have had the claim diverge from the spec.

  18. 3

    D makes these tests entirely too easy. Let’s go 5 minutes!

    1. No, it’s the abstract idea for a sound based cat owner/match/hater/bad match local ID implemented on old hardware.

    2. Match and bad match cause the claim to be indefinite since there is no objective standard for identifying when one infringes or does not infringe as they are subjective terms. Also the whole “associated” language isn’t pretty but I’ll set it aside for now.

    3. Most likely not since it seems on the face of it to not be enabled to one of ordinary skill. Though if it is, and so long as there is no best mode problem then he might be permitted.

    4. Depending on how long it took thor to file under the old pre-aia you’ve got 102(b) problems to watch out for so look for the one year mark between public use and FD (and possibly look out for 102(a) problems if someone filmed him and put it on youtube). Thor may be able to swear behind a 102(a) problem iirc. with his invention date. I’ll leave out AIA stuff for now unless you guys were talking about it.

    5. Yes if it is a scepter with a separate handle. Esp if I’m an examiner instead of an attorney. And if I’m not worried about sanctions as an attorney. We can go pretty broad on what a hammer head is.

    6. First it is a one reference 103 so make sure all elements are there, the handle sticks out. Then argue non-analogous art (scepter art being different than hammer). Can argue it wasn’t enabling. Can also just do the usual KSR song and dance about it not being common sense, no motivation etc. Also presuming they needed to bring in a handle via a secondary we can argue the scepter didn’t need a handle and wouldn’t be benefited by it so it isn’t obv.

      1. 3.1.1

        Ned,

        Tires (automotive) don’t “do” anything (unless added as a component).

        While this is but a limited analogy, you do get the point, eh?

        Machine components can very well be manufactures in their own right.

          1. 3.1.1.1.1

            You kind of missed the functionally related aspect there (again).

            Like lines on a measuring cup, or numbers on a magic hat band, I have explained this to you Ned in very easy to grasp set theory.

            You refused to engage in that discussion. You still play your drive-by monologue games.

  19. 2

    3. Yes, assuming that there is something new and not obvious about the process of making the hammer, such as a special method for attaching the handle to the head or a special method for forming the head and/or preparing the head to attach to the handle.

    Midguardium is a composition of matter and might be the subject of a separate patent application or trade secret protection.

      1. 2.1.1

        Never Assume. The question didn’t say that and it would have been easy enough for congress, err the professor, to say that if that is what he meant.

        1. 2.1.1.1

          um the question says explicitly he invented the alloy. the question does not say anywhere he invented anything else. It doesn’t even say he invented the hammer.

    1. 2.2

      If you can’t make the alloy, you can’t make a hammer made from the alloy. If the prior art doesn’t enable the ordinary artisan to make midguardium, then the application wouldn’t be enabled if the method for making midguardium was held back as a trade secret.

      1. 2.2.2

        I’m sorry. I guess I misread the question. It now says he wants to claim the Hammer. I thought it said claim a method of making the Hammer.

        Still, If there are novel aspects to the hammer other than the Midguardium, such as the handle attachment mechanism, he need not even mention the head material, unless it is material to the attachment mechanism.

        :-p

      2. 2.2.3

        “f you can’t make the alloy, you can’t make a hammer made from the alloy. ”

        Why can’t I buy the alloy and use it to make my hammers?

        1. 2.2.3.2

          Why can’t I buy the alloy and use it to make my hammers?

          That only counts if a PHOSITA could make the alloy that you bought.

          1. 2.2.3.2.1

            I bought it. Somebody made it, how else could I buy it?

            Are you saying I can’t make my patented Ice Cream Floats because the recipe for Coke-A-Cola is a trade secrete?

  20. 1

    1. Yes, as evidence see the following allowed claim from

    Publication number US8831642 B2
    Publication type Grant
    Application number US 13/586,191
    Publication date Sep 9, 2014
    Filing date Aug 15, 2012
    Priority date Aug 15, 2011

    33. A mobile device comprising:
    a processing device; and
    a memory device in communication with the processing device, the memory device storing instructions that when executed by the processing device result in:
    receiving a signal from a geographic location that is positioned within a space defined by an effective reception range of a short-range wireless communication transmitter, wherein the signal is received from the short-range wireless communication transmitter, the signal includes an identification code, and the receiving is by the mobile device located within the space;
    processing the signal on the mobile device, the processing including:
    determining whether information associated with the signal is stored on the mobile device; and
    identifying a retrieval location of the information based on the determining and on the signal,
    wherein the processing the signal is performed exclusively by a software application located on the mobile device and independently of any networks;
    based on the processing, retrieving the information from the retrieval location using the mobile device; and
    displaying the information on a display of the mobile device.

    1. 1.1

      Hmm….Is this enforceable?

      “COPYRIGHT NOTICE

      A portion of the disclosure of this patent document contains material that is subject to copyright protection. The copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent files or records, but otherwise reserves all copyright rights whatsoever. The following notice applies to the software and data as described below and in the drawings that form a part of this document: Copyright ConnectQuest, LLC, All Rights Reserved.”

      1. 1.1.2

        See link to uspto.gov

        “Patents are published as part of the terms of granting the patent to the inventor. Subject to limited exceptions reflected in 37 CFR 1.71(d) & (e) and 1.84(s), the text and drawings of a patent are typically not subject to copyright restrictions.”

        When the above is read in conjunction with the cited 1.71(d) section, there seems to be ambiguity.

        “(d) A copyright or mask work notice may be placed in a design or utility patent application adjacent to copyright and mask work material contained therein. The notice may appear at any appropriate portion of the patent application disclosure. For notices in drawings, see § 1.84(s) . The content of the notice must be limited to only those elements provided for by law. For example, “©1983 John Doe”(17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in paragraph (e) of this section is included at the beginning (preferably as the first paragraph) of the specification”

    2. 1.2

      I think you have to show your work. :-)

      Since patents are sometimes ruled invalid, does having an issued patent mean that the claim is subject-matter-eligible under 35 U.S.C. § 101?

      1. 1.2.1

        Well….it means that at least one authority thinks it passes 101. If I’m just a lowly student, who am I to disagree.

    3. 1.3

      Les, it does appear you have a hard time distinguishing between improvements in machines or systems and the use of old machines and systems for an otherwise ineligible purposes. This has been very consistent with your posts.

      1. 1.3.1

        …and you appear to be engaged (once again) in the skip-the-first-step of somehow being able to “use” a machine that has not first been changed and configured with the software to be used, Ned.

        Somehow, according to your logic, any machine – even a machine that has NO software, somehow magically has all future changes and improvements “already in there.”

        1. 1.3.1.1

          Anon,

          When the general-purpose computer is manufactured, it has a finite number of configurations. Assigning abstract “meaning” to various subsets of those configurations is mere human mental exercise, not “magic”.

          I would also point out that the computer will attempt to execute whatever instructions are contained in the computer’s memory, regardless of whether or not some human has assigned “meaning” to those instructions.

          1. 1.3.1.1.1

            My big box of electrons, protons, and neutrons has a “finite number of configurations.

            Same logic, Count Dobu.

            Point blank: the general purpose computer does NOT have all future innovations of the form of software “already in there.”

            That’s a simple fact.

            Eppur si muove.

          2. 1.3.1.1.2

            Further, your view explicitly denies the reality of the change in utility from the addition of the machine component and manufacture in its own right of software.

            You keep on wanting to ignore these critical facts…

            1. 1.3.1.1.2.1

              Anon,

              My big box of electrons, protons, and neutrons has a “finite number of configurations.

              Categorically incorrect. Analog systems have an infinite number of configurations.

              Point blank: the general purpose computer does NOT have all future innovations of the form of software “already in there.”

              Just like that microwave oven doesn’t have all future innovations of the form of cooking times and power levels “already in there”, I suppose?

              Eppur si muove.

              This again? Okay, fine:
              The Galileo Gambit
              (rationalwiki.org)

              Further, your view explicitly denies the reality of the change in utility from the addition of the machine component and manufacture in its own right of software.

              And you relentlessly present your twisted view of reality, using language that invokes images of tangible things to discuss the intangible, because you desperately need that machine to be “changed” in order to keep locking away software concepts under private monopolies.

              1. 1.3.1.1.2.1.1

                You clearly don’t get patent law and whatnot is for, nor do you understand the manufacture nature of that which is software.

                Let me know when you want to visit this reality, my friend.

          3. 1.3.1.1.3

            When the ream of paper is manufactured, it has a finite number of configurations. Assigning abstract “meaning” to various subsets of those configurations is mere human mental exercise, not “magic”.

            Does that mean that no books are copyrightable?

            1. 1.3.1.1.3.1

              Les,

              Under copyright law, a ream filled with recipes and a ream filled with woodworking techniques are different articles, and the expression in each can be protected.

              Under patent law, there is no difference between the two reams.

              1. 1.3.1.1.3.1.1

                Right. So what is your point?

                Under patent law a processor connected to a blank program memory does not anticipate or make obvious a similar processor connected to a programmed program memory that configures the processor to translate signals carrying speech to text.

                1. Les,

                  The discussion was about software being loaded and executed on an existing general-purpose computer. If you want to separate out the pieces and build a new piece of hardware with them, then enjoy your patent.

      2. 1.3.2

        Ned –

        For sure I have a hard time understanding what you are talking about.

        Are you trying to make some point about how the claim of question 1 allegedly differs from posted claim 33 in some manner that makes citation to claim 33 inappropriate?

        If so, please spell it out.

        If not, then whats your point?

        I fully understand the one named Kirk ( link to youtube.com ) ……but the one named Ned, not so much.

        1. 1.3.2.1

          Yes, Les. Claim 33 did look like a basic improvement in computer systems, while the Freya claim was directed to an improvement in social networking with old computers and computer systems.

          1. 1.3.2.1.1

            I don’t see it Ned. Claim 33 is a more professionally written claim, with more of the traditional interconnections and formatting. However, it appears to me that one of ordinary skill in the art would understand they are claiming similar, if not exactly the same thing.

            1. 1.3.2.1.1.1

              Les, it seemed to me that claim 33 was more an improvement to computer system than an improvement to a social networking system.

    4. 1.4

      “when executed by the processing device result in”……there is no equivalent in the claims. Claims state the the memory is storing just a program.

      1. 1.4.1

        ” wherein the memory includes a stored program configured to:
        cause the mobile device to ”

        I submit that the above is the equivalent you seek that one of ordinary skill in the art would find.

        1. 1.4.1.1

          “cause the mobile device to” and when does that happen to one ordinary skill in the art? Answer: When the software is executed by a machine. Software instructions or codes are not physical things (Warmerdam, 33 F.3d at 1361, 31 USPQ2d at 1760 and cannot do the claimed functions by themselves. The claim clearly states the PROGRAM is CONFIGURED, not any machine.

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