Patentlyo Bits and Bytes by Anthony McCain

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Eligibility Discussion: Christal Sheppard will be visiting the University of Missouri System on  Thursday, July 23 at the University of Missouri Kansas City (UMKC) Law School Campus.  Sheppard is Director of the Detroit Patent Office.  Sheppard along with Prof Chris Holman, Michael Cygan from the PTO’s OPLA, Crissa Cook (Hovey Williams), and Jason Mudd (Erise IP) will be discussing the PTO’s new approach to subject matter eligibility and may delve into the expected new examiner guidance. Pre-register here.

 

Anthony McCain

About Anthony McCain

Anthony McCain is a law student at Mizzou where he is focusing on intellectual property; He has a background in mechanical engineering. anthony.mccain@patentlyo.com

37 thoughts on “Patentlyo Bits and Bytes by Anthony McCain

  1. Businessman Donald Trump holds a slim two-point lead over Wisconsin Gov. Scott Walker in a 2016 Republican presidential primary poll released Wednesday by the left-leaning Public Policy Polling (PPP).

    Trump takes 19 percent support in the poll, with Walker at 17 percent. Former Florida Gov. Jeb Bush (12 percent), neurosurgeon Ben Carson (10 percent) and Sen. Marco Rubio (10 percent) round out the top five.

    So which member of the cl0wn car will be best for the “innovation community”?

    LOL

  2. Re the PTO: “The analysis for whether a computer-implemented 112f limitation satisfies the definiteness requirement of 112b is similar to the analysis for whether there is adequate written description under 112a.”
    But where there is a complete absence in the spec of any specific suggestion to a POSITA of how to do what is claimed in the subject claim element, I wonder why Fed. Cir. decisions do not seem to often support BOTH 112a [non-enablement] and 112f [ambiguity] rejections when it decides the claim element is a 112f claim element? To avoid an argument that the spec should not need to spell out at least one example what is well known that would work for 112a ,but must for 112f? I.e., are they “similar” as the PTO says, but not really the same?
    This is merely a question to provoke comments.

    1. Paul, how often do we see in claims “computer,” “processor,” computer readable media?”

      A lot.

      How often do we see in specifications black boxes for these things, at best, with no description of how to make a computer, a processor or a computer readable media.

      Just as often.

      The patent office is treating every functionally defined term as if it were the invention, which might be true and which might not be true. The question is whether the claim element at issue is directed to well known structure or not. What has to be disclosed should track the answer to that question.

      Engine means for powering a car should not require too much disclosure, now should it?

      1. Yes, that is often the 112(a) dilemma as to what or how much legally needs to be disclosed in a spec. There is is one arguable solution to that dilemma, but you won’t like it – have the the spec state, or have the examiner ask the applicant, which claim elements or interactive combinations thereof are NOT already well know in art OR are being argued as unobvious to distinguish over the prior art?

        1. The better “arguable” position is that what is good for the goose is good for the gander.

          If PHOSITA is used to knock out claims – it too is used to support what is there, and applicants do NOT have to explain what has gone before.

          This is exactly why the arguments of Malcolm and his “objective physical limitations” optional claim format is so bogus. The TYPE of structure is known ENOUGH by Persons Having Ordinary Skill In The Art, and do NOT have to be spelled out like a pre-schooler.

          In the AIA run-up Lemley pushed for the notion that today’s “inventor” is actually a “village.” Just consider part of the “village” that recognizes the “objective physical structure” present BOTH in software as a manufacture and machine component, and the CHANGES in “objective physical structure” that must necessarily be there (cue the inherency argument and the fact that not all future inventions by way of software just are NOT “in there” in “old box”) in those inventions that first require an old machine to be changed (configured to == changed).

          Will we ever see inte11ectual honesty on this most basic point from the anti-software patent propagandists?

          1. If PHOSITA is used to knock out claims – it too is used to support what is there, and applicants do NOT have to explain what has gone before.

            Except that they AREN’T THE SAME STANDARD. A PHOSITA is often used to question what a theoretical person knowing all there is to know in the art COULD do. A WD standard is about what THIS INVENTOR did.

            Google has an algorithm for estimating the time it will take me to drive from point A to point B. That algorithm is itself undisclosed but is in public use and therefore known to a PHOSITA under 102b. But most inventors themselves don’t know it. Consequently patent law 1) prevents Google from getting an exclusionary right without disclosing the algorithm, 2) Protects google from other people excluding them out of use of their own trade secret and 3) Prevents an ignorant inventor from freeloading on Google’s trade secret.

            Your argument would conclude that 1) Google could rely upon 102b to bring the use of its algorithm into a PHOSITA’s knowledge and therefore protect advancements on it despite never disclosing the base algorithm

            2) Someone else could invent a poor algorithm but expand his scope to Google’s great algorithm simply because it was in use despite him never possessing Google’s trade secret

            3) Someone else could claim improvements off of an algorithm that they themselves do not know, possess or understand.

            All three of those outcomes are ridiculous.

            1. Random, how does one determine the skill level of a POSITA and what he could or could not d0? Or is this just a guess, so that the whole exercises is just a seat of the pants judgment of the trier of fact?

              1. Well that’s largely fact/area specific right? A PHOSITA can definitely do everything in the art that has already been done. Beyond that, I can’t imagine there’s broad rules.

                1. You BOTH are so deep in the weeds that you may never find your way back to the road.

                  Let me give you one (exquisite) thing to chew on: the optional claim form of the Jepson claim.

                  For either of your views to hold water, that optional claim form would in fact necessarily be NOT optional.

                  (your notion of trade secret trumping an actual shared patent also shows how twistedly wrong you are)

                2. Random: “A PHOSITA can definitely do everything in the art that has already been done.”

                  That, Random, sound more like a Master in the art, not a Person of Ordinary Skill.

                  It is interesting that in all my conversations regarding what a person of ordinary skill is in a particular art in real court cases, the formulation you proposed was never discussed or even considered.

                3. Ned,

                  Your comment about “Ordinary” versus “Master” recalls the link I previously provided concerning the inflation-effect of super-empowering PHOSITA to include inventors themselves. You will note that this directly leads to and is in fact quite synonymous with Flash of Genius.

                  Unfortunately, I did not “fave” that post and cannot recall the author of the paper that explicated that concept so well.

                  Random has shown an amazing lack of ability to understand any contrary view to his own agenda (much like others here that refuse to countenance counter points at all).

                  Imbuing PHOSITA with “common sense” when that waxy term is mashed to include “common inventive capability” turns the subset of prior art that is the dominion of 103 into the full set of prior art that is 102.

                  My naysayers Malcolm and his cheerleading echo DanH jumped quickly and deeply into the weeds the last time that I pointed out this distinction. It is a distinction not because I point it out though, and there “reaction” to the presenter of the point, rather than to the point itself, short circuits the dialogue.

                  As we have seen though, dialogues are NOT wanted are wanted in the comment section here.

                4. As we have seen though, dialogues are NOT wanted are wanted in the comment section here.

                  should read:

                  “As we have seen though, dialogues are NOT what are wanted in the comment section here.“

          2. “objective physical structure” that must necessarily be there

            LOL

            Please describe the objective physical structure “that must be” in the computer for everyone. Of course your description will be different from the objective physical structure in the prior art.

            Thanks in advance.

            LOLOLOL

            1. Been there, done that.

              You are confusing “can” with “need to.”

              There is a very good reason why claims are read in the eyes of the Person of Ordinary Skill IN THE ART.

              Please tell me you know at least that basic understanding.

  3. Written Description training w.r.t. Functional limitations was pushed to Examiners today. Some of the statements follow:

    “Compliance with 112a for [computer functional] claims is critical to ensure that inventors do not ‘attempt to preempt the future before it has arrived’ by claiming pure functions without limit as to how they are accomplished”

    “Examination Takeaway: During prosecution, when the specification does not provide a sufficient explanation of how a claimed function is achieved or enable the full scope of a claim that covers all possible ways of performing the function, the examiner must resolve the issue by applying 112a”

    “Mere presentation of a ge nus claim would not normally raise a question of WD, unless the broadest reasonable interpretation of the claim extends significantly beyond any described embodiment. For example, the specification provides only one method of performing a function and there is no evidence that the inventor contemplated a more ge neric way of performing the function.”

    “The critical inquiry is: Does the specification explain what hardware and/or software (specifically the steps or procedures) the inventor uses to accomplish the claimed function?”

    “It is not enough that one skilled in the art could write a program to achieve the claimed function as 112a requires that the specification must explain how the inventor intends to achieve the claimed function”

    “The analysis for WD of programmed computer functions is the same whether or not 112f is invoked…The analysis for whether a computer-implemented 112f limitation satisfies the definiteness requirement of 112b is similar to the analysis for whether there is adequate written description under 112a”

    “For functional limitations, it is not necessarily sufficient to merely repeat the claimed function in the WD or in a flowchart. The steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed”

    The training does a good job but does muddle one part – When there is NO positing of a genus at all it clearly fails WD, but when it does posit a genus there’s still a question of whether the examples of the spec “fill the scope” (as I say, quoting the fed cir) of the range of the limitation. Other than that good job Office training.

    1. The PTO clearly still does not get it. No distinction between claiming old and new elements, unless this is entirely limited to software.

      As we all know, Random, now one intends to protect a particular software implementation with a patent. It is the function that they are trying to protect regardless of the implementation.

      A claim element says, processor configure to do X function. This claim is invalid under the guidelines no matter what specific limitation is disclosed, unless one specifically invokes 112(f).

      On that issue, is there a presumption that all functionally claimed elements are governed by 112(f)?

      1. No distinction between claiming old and new elements, unless this is entirely limited to software.

        I’m not sure the law draws a distinction between old and new elements, Ned. Suppose I invent a method that is enabled using a gasoline-powered car engine and the claim includes the limitation “powered by a car engine.” Then someone invents an electric car engine, and for whatever reason the electric engine doesn’t work with the method. You come along and get a similar method to work with the electric car engine.

        Either my claim is unenabled, because one of ordinary skill cannot practice a substantial portion of the claim, or my claim is enabled and you cannot practice without my permission, despite the fact that you enabled what I did not which is the purpose of the patent disclosure.

        I suspect there is actually a third option – that the equitable thing to do is construe the term car engine to mean gas engine. But that actually has nothing to do with the office. I think in front of the office if the examiner can point out that electric engines exist, the limitation has to be made that its a gas engine before it passes to issue.

        1. In any case the fact that there is training is for pretty much everyone, but I think the training itself is tech center specific. Mine was all computer functional but I see that TC 3600 is included in the training.

        2. It is interesting that you bring up car engines because your example reminds one of the Selden patent. If you recall, the Second Circuit found that the sole novelty in the patent was the particular adaptation of a known engine so that it could be light enough, yet powerful enough, to drive a horseless carriage. But the claim did not simply claim that particular engine, but essentially claimed all gasoline engines so that the claim covered every car made.

          In order to preserve the validity of the claim, the Second Circuit limited the claim to the particular engine disclosed, reasoning that to construe the claim more broadly would render the claim invalid over the prior art that had broadly suggested the desirability of using gasoline engines in a horseless carriage.

          But let us assume that the novelty is not in the engine, but in a transmission. In order to claim the transmission one has to define the car, an engine, a driveshaft, a differential and a pair of driven wheels. Now when this invention is claimed, why is it wrong to claim any kind of engine, and why is it necessary to have any details whatsoever as to how to make and construct any engine for car on the penalty that the claim is going to be invalid for failure to disclose corresponding structure when that is completely unnecessary given the context of the claim?

          But of course, the reason that the patent office finds itself in this place is because of a court that has consistently failed to follow the Supreme Court and now finds itself hanging by its own petard once again.

          1. let us assume that the novelty is not in the engine, but in a transmission. In order to claim the transmission one has to define the car, an engine, a driveshaft, a differential and a pair of driven wheels.

            Really? So when your transmission fails and they put a new widget in your car, are you saying that widget is unknown or indescribable prior to entering the car engine? How do they know what widget to put in then? Are they all interchangable? If so, have you really invented anything?

            Your car battery works with your car engine, does that mean the battery sitting on the shelf has no structure? Would putting in a new spark plug cause the same result as putting in a new battery? Of course not. And why? Because the battery as it sits on the shelf has a different structure than a spark plug and thus will cause a different response when hooked up to the rest of the machine.

            What you’re really talking about (and this is true in computers too) is that sometimes an applicant wants to put in “background” limitations which really are not the invention but provide context for which the invention is used. When people write new code they’re not really claiming a processor or a hard disk, they’re using them as paper upon which they write their actual invention of software. They do this because it’s a 101/103 tuna-helper: If they were to just state that their claim was to a method of intermediated settlement, it would be easy to see it is both an idea and not novel. But throw it in a new context (this is a processor doing intermediated settlement!!) and you might confuse people that something old is in fact new.

            Your physical device has a structure. That structure has a value even when its not currently hooked up to anything. Maybe you want to hook it up to things to make it more clear it would be useful, but rarely is utility the sticking point of a claim. A saddle doesn’t have a lot of utility absent a horse to ride on. Do you think people who invented saddles should include horses in their claims? After all, a saddle works with most any horse. No, the solution is to simply remove the background context.

            Now when this invention is claimed, why is it wrong to claim any kind of engine, and why is it necessary to have any details whatsoever as to how to make and construct any engine for car on the penalty that the claim is going to be invalid for failure to disclose corresponding structure when that is completely unnecessary given the context of the claim?

            Things that are not the invention shouldn’t be included in the claim. Your argument is that it works in any car, therefore the car is in fact irrelevant to the invention. Most machines, subject to electrical requirements and whatnot, will work anywhere on Earth. Earth isn’t part of the invention, so you probably shouldn’t include it in your claims.

            1. Random, “things that are not the invention should not be included in the claim.”

              I wholeheartedly agree. But until the examiner indicates he is willing to allow the claims based on so and so feature or combination of features, I really don’t know what is superfluous.

              Now at this point, the notice of allowability, I think the Office should require the old stuff that contributes nothing be stripped from the claim, or put into the background. But no examiner has ever done that. To the contrary, I have found it impossible to delete these unnecessary claim elements from the claims. The examiner simply will not do this – saying a new search will be required. I inevitably have to file I have an RCE or a continuation simply to take the unnecessary limitations out of the claims.

              The problem here is the PTO, not the applicants.

              Then we also have the problem of the “Federal Circuit” that ruled in Application of Bernhart that the office had no authority to require the applicant to take out of the claim such “background limitations.” The “Federal Circuit” laughed off controlling Supreme Court authority, namely Lincoln Engineering, as somehow not binding. You go figure.

              So, Random, you are right in principle, and according to controlling Supreme Court authority, but when are you guys going to challenged the Federal Circuit on this issue?

              1. I think the Office should require the old stuff that contributes nothing be stripped from the claim, or put into the background. But no examiner has ever done that. To the contrary, I have found it impossible to delete these unnecessary claim elements from the claims.

                That’s because most allowances are under an improper “number of references” approach and you’re trying to take away their extra references. Of course, if we went by the actual obviousness rules there’d be a lot fewer patents, and nobody wants that, right?

                So, Random, you are right in principle, and according to controlling Supreme Court authority, but when are you guys going to challenged the Federal Circuit on this issue?

                I neither run the office nor it’s legal sector. I just examine patents :)

                1. You don’t run the legal sector….?

                  Shockers. Between you and Ned, you sure have the fantasy IMHO “law” down.

              2. You want to delete things from your claims after allowance – when you have that capability right from the start – AND you want to place this blame on the Office…?

                How does that work, logically, I mean…

    2. So, if your claims recite “a processor configured to generate a random number”, you have to disclose an algorithm for generating a random number, even though algorithms for generating random numbers are well known?

      And where can I get a copy of the material presented to you in the training?

      1. if your claims recite “a processor configured to generate a random number”

        Well “a processor configured to” invokes 112, 6th and therefore always required an algorithm for achievement to be definite.

        With respect to non-112, 6th limitations, I think the technical answer is “Yes” unless you state that there are known ways of achievement. I think the practical answer is “only when it’s being argued as novel.” Of course, if it’s not being argued as novel it’s not going to be non-obvious either. Every application that matures into a patent should have at least one algorithm disclosure, that’s just common sense.

        And where can I get a copy of the material presented to you in the training?

        I don’t know.

        1. Random: Well “a processor configured to” invokes 112, 6th and therefore always required an algorithm for achievement to be definite.

          If the applicant has in his specification a statement like this: “Unless a claim element specifically uses the term ‘means’ coupled with a recital of function without structure materials or acts in support thereof, applicant specifically intends that the element not be construed under § 112(f),” where is your justification to construe the element in question under § 112(f)? Assume further that if you do construe the phrase in question under 112(f), and that enter a rejection based upon indefiniteness because of lack of disclosure of an algorithm and applicant response that he does not choose to have the claim element construed under § 112(f), how do you respond?

          I want to point out to you and everybody that the statute in question is optionally employed by its very terms. It has a specific format if one intends to invoke it by presumption. But if it appears that the applicant intends to a invoke it not using the proper format, nevertheless the applicant must be free to overcome any conclusion that the statute was intended to be invoked with a specific statement in the specification that negates such intention or a specific statement in response to that office action that negates that intention.

          1. where is your justification to construe the element in question under § 112(f)?

            Maybe it has none. Maybe it does because “expressed as a means for performing a specified function without recital of structure” can be construed as taking place absent language at all, i.e. the “may” in “may be expressed” might be the court’s interpretative “may” and not the inventor’s “may” (I agree that would require a reworking of court precedent).

            Assume further that if you do construe the phrase in question under 112(f), and that enter a rejection based upon indefiniteness because of lack of disclosure of an algorithm and applicant response that he does not choose to have the claim element construed under § 112(f), how do you respond?

            Are you asking me personally here, because I do have a personal answer. I always make a 112b in view of f rejection, and then I always accept them and withdraw when they say it’s not meant to be 112f, and then I always make a 112a rejection because they have simply jumped out of the frying pan and into the fire. You don’t solve a non-disclosure issue by flipping the 112f switch, it can’t be done.

            Is that technically what the office is supposed to do? No I guess not, I’m supposed to argue over the invocation. It works for me, and the record has an admittance on it. I’m not sure how people do it in court, but my first argument would always be an argument that the claim is in 112f just so they can argue its not. It brings the overbreadth prevalent in so many claims into start relief.

            I want to point out to you and everybody that the statute in question is optionally employed by its very terms.

            I agree that is the intent. Though the office does have a duty to generate a claim that provides proper notice that someone who is already working with fixed claim language post-issuance may not care about. If you’re claiming pure functionality and the only way I can show my SPE you’re either not-disclosing or overbroad is to make a mountain out of a nonexistent 112f molehill, I consider that an improper means to a proper end. The issue actually stems from the Fed Cir not applying (and the office not even using) Nautilus’ standard.

            1. You are right to impose a 112(a) rejection that may be overcome if the novelty is not in the claim element standing alone, but in the cooperation of two elements that are old. If the novelty is in the one element, and it is functionally claimed, then there is a problem. But if old structure is being claimed, that structure is is known by definition. One is not claiming all structure that performs a function, just known structure.

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