Patentlyo Bits and Bytes by Anthony McCain

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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.

26 thoughts on “Patentlyo Bits and Bytes by Anthony McCain

  1. 2

    Dennis: is there a mechanism for getting the PTO/Courts to focus-in on the point-of-novelty issues?

    Raise the issue every time it presents itself. It’s a matter of common sense and logic and it always was. You can not use a patent to protect abstractions, including information and logic. And you can’t avoid the subject matter problem by limiting the claim to a particular field.

    The PTO and the courts issue rulings that “confuse” certain practitioners because those practitioners feel that they are entitled to their junk claims. They feel entitled to those junk claims because the Federal Circuit went completely out of its mind and created a fantasy playground for those practitioners. Kappos dutifully went along for the ride. Certain notorious elements of the patent blogosphere went to great lengths — and still do — to pretend that these junk claims are somehow responsible for every shiny computer application and every medical diagnosis that was ever developed.

    Why is it the case that after Prometheus and Alice the courts and the PTO are still addressing utterly specious arguments about prohibitions against “claim dissection” in contexts where comparing elements in a claim to the prior art is absolutely essential? It’s because applicants and patentees are still making those utterly specious arguments. Why are those applicants and patentees still making those utterly specious arguments? Because self-identifying “experts” on the Internets are still pretending that you can have a sane patent system where subject matter eligibility problems are addressed without consideration of the relationship of the claims to the prior art.

    Frankly, Dennis, both you and Jason could certainly do a lot more to educate your readers regarding the fundamentals. Those readers include people at the PTO and elsewhere. That’s your “mechanism”.

    There’s a few really simple examples that are helpful for illustrating the problems with claims reciting elements that are ineligibile at the point of novelty. People who don’t “get it” need to be forced to deal with those examples. Education, education, education…

    1. 2.1


      However, MM, allowing a forum where you and I and Random can debate others is, I think, what distinguishes today’s patent law from yesterday’s. We are having an impact.

      1. 2.1.1

        Shining examples of what is NOT the law are what you, Malcolm and Random are, Ned.

        The company you keep…

      2. 2.1.2

        So, the difference between patent law now and sometime in the past is….a forum? Where unknown people who all have the same opinions “debate” each other? (And in fact, all these people could be different personas of the same person.)

        Most of us with normal jobs, who actually draft patents and counsel clients, give up here after a while. Why? 1) We simply are overwhelmed by the sheer volume of posts you people can generate. 2) It’s like beating one’s head against a brick wall: no matter what we say or what our arguments are, you’re not going to change your mind. Neither will MM or any other anti-patent folk. Why continue to post?

        There’s really not a lot of “debate” going on in this forum. It’s more of a diat ribe by anti-patent ha ters, punctuated periodically by a real attorney/patent agent who takes time out of his or her day to add a comment.


            The “dispute,” Ned, is your “claim” to “debate.”

            You don’t do that.

            That would mean that you don’t run away from the counter points I present – that you acknowledge, learn and integrate them instead of your ad nauseum ad infinitum internet style shout down monologues


          anti-patent ha ters

          What’s being discussed here is the irrefutable fact that claims in the form [old]+[new abstraction] protect the ineligible abstraction in the context of the old.

          Your reaction is one of bitter entitlement. It’s not only wrong (I don’t ha te patents) but it evinces a fundamental failure to understand some very basic concepts. It’s exactly what I was referring to in my comment.

          no matter what we say or what our arguments are, you’re not going to change your mind

          On the contrary, PB, my mind has certainly been changed over the years by the stuff that you and your cohorts have written (and continue to write).


            Your “irrefutable fact” pet theory reduces to the banal “no mere aggregations.”

            There is zero need for your obfuscations since that doctrine exists in the claim as a whole understanding.

            The fundamental failure is yours.

            As usual “folks.”


              Your “irrefutable fact” pet theory reduces to the banal “no mere aggregations.”

              That makes no sense whatsoever. There’s no “pet theory”. And for something that’s (allegedly) “banal” it’s astounding how often it’s rejected or ignored by those inclined to make blanket proclamations about what is “allowed” in the course of analzing a patent claim and what isn’t.

              There is zero need for your obfuscations

              You’re the one who’s “obfuscating”. Go ahead and rub PB’s back some more. Maybe you two can work yourselves up into a frother lather and then we can all learn more about this “patent ha ter” nonsense.


                LOL – once again the Vinnie Barabarino meme of “Huh? What?”

                Classic Malcolm.

                You’re the one who

                Classic AccuseOthersOfThatWhichMalcolmDoes.


                Get into a profession for which you can believe in the work product produced.

    2. 2.2

      By all means Professor Crouch – show the law – the real law grounded in the words of Congress – for this “issue” of point of novelty as Ned (ab)uses it.

      Let’s see your “teaching moment.”

      1. 2.2.1

        (and then maybe you can teach a lesson on the fundamental difference between common law and statutory law)


          I can even recommend a professor who has written a book on statutory interpretation to help you out. Chances are real good that you know him already.

  2. 1

    Ex parte Khvorova (Appeal no. 2012-010359, appl. ser. no. 10/940,892), discussed by Sue Nym, is another example of a claim abstract at the point of novelty. The problem is the PTAB wanders all over the place creating confusion.

      1. 1.1.1

        Contact your congressman to have the item actually considered for (real) US law.

        In the meantime, stop throwing chum in the waters.

      2. 1.1.2

        Dennis, good question.

        One is claiming a result when the novel subject matter is claimed at a level of abstraction that essentially is preemptive of the principle, as opposed to any specific method or means invented.

        Now that we have Internet Patents, we can cite to a Federal Circuit case that claimed a result at the point of novelty, where everything else in the claim was old and old in combination. Even if the claim would present patentable subject matter if the novel subject matter were limited to specific means and methods disclosed, the claim still runs afoul of Morse->Halliburton->Alice when the novel subject matter is claimed as a result.

        Since the PTO has to follow the Federal Circuit, they should pay attention to Internet Patents. I was surprises the PTAB in Ex parte Khvorova did not mention the case, but instead relied on a number of district court cases.

        As to the courts, it would seem the many or most recent patents in many fields have at least some claims that claim the novel subject matter as a result because we all like to claim result and the PTO does not object. Litigators who are paying attention to this issue will have a field day.

        For patentees, don’t assert claims that are so vulnerable — you might be sanctioned. Look to the dependent claims for specific means or methods. If there are none, a reissue may be in order.

        But if the claims are not infringed but for the claim to a result, then the patent should not be asserted until they are fixed.


          “Since the PTO has to follow the Federal Circuit”

          Is this a rule or practice?

          Where can I find more on this and how to put this (rule/practice) to the examiner (other than just citing the case)?


            Joe, to try to hopefully provide a somewhat better practical answer to a serious practical question than one usually gets here:
            For an actual issue of law most examiners are only interested in citations to the current MPEP, if any, or a recent PTO Examiner Guideline on point. But if you plan to appeal to the Board, and if the examiner is really saying something directly contrary to a controlling new Fed. Cir. decision, you need to cite the case and apply it, in case you get a Board member that cares about that legal issue.
            BTW, see the intro to the MPEP.



          You say “PTAB in Ex parte Khvorova did not mention the [Internet Patents] case, but instead relied on a number of district court cases.” Are we reading the same decision? All cites that I see in Khvorova are to CCPA, CAFC or USSC.

          The Khvorova decision was mailed only 3 weeks after Internet Patents was decided – maybe the PTAB wrote their decision a few weeks before it was mailed.


          “For patentees, don’t assert claims that are so vulnerable — you might be sanctioned.”

          It’s one thing to lose your case, or even lose on summary judgement, but sanctioning sounds pretty extreme for something which – no matter what one’s own position may be – has long been a disputed point in patent law by many.

          Also, the line between claiming means vs. ends (so to speak) is simply not as crisp as we may wish, and there is too much gray area at the margins to start sanctioning people just because they get it wrong.


            Ken, if one files a case claiming a computer-implemented business method after Alice, one should be sanctioned, plain and simple.

            There are grey areas, of course. If the courts have not yet ruled on an example, then one has a right to his day in court to take a position.


              Three – the new four – is still not five.

              It is you that should be sanctioned Ned.

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