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.
ALLVOICE DEVELOPMENTS US, LLC v. MICROSOFT CORP
link to cafc.uscourts.gov
Claims construed to read on software held to be ineligible because software is not a manufacture.
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.
Randomifact rates this “True but Misleading”
That is an absolute horrible “take away” Ned.
Even for you.
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.
“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.
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.
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.
That might work…
A very-Chamberlain (and historically awful) idea Go.
Yikes. When Ned reads that he’s gonna be all like:
link to youtube.com
From the 18 second mark….
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.
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.
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.
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.
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.
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.
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?
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!
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?
Eligibility under the EPC. Technical character? See: link to eplawpatentblog.com
And in the USA? Useful arts? Nuitjen?
Given that Nuitjen is badly decided (from an objective scientific point of view), what exactly is your point in mentioning the case, MaxDrei?
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”.
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…
(…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)
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.
Correction of the autocorrect: change “sunset” to “subset.”
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.
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.
What a lovely display of an inappropriate power grab regarding statutory law.
The ends NEVER justify the means, MaxDrei.
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.
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.
> 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.
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.
“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.
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.
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
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.
In option 2, it should have said “Therefore, a program written on a CD and a circuit is patent-eligible.”
In option 2, it should have said “Therefore, a program written on a CD and a circuit are patent-eligible.”
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.
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.
“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.
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.
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.
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.”
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.
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.
Absolutely wrong Ned – as has been routinely shown to you on these pages.
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.
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]?
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.
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?
Can you get to your point? Your questions are too abstract.
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.
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.
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.
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.
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.
Even if you are correct, there is still time to amend. She can jam in a “non-transitory” after the first Office Action.
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.
You are mistaken johnathan. As evidence, I direct your attention to claim 33 in post numero 1 in this thread.
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?
This was intended to be a reply to 1.4.1.
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….–.
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.”
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.
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.
“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.
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?