Federal Circuit: Prior Art Enabled by Applicant Admissions in his Patent Application

by Dennis Crouch

In re Steve Morsa (Fed. Cir. 2015) (Morsa II)

This is the return-appeal, a divided panel has now agreed with the patent office that its cited prior art is sufficiently enabling to serve as an anticipating reference.

In its 2013 Morsa decision (Morsa I) involving the same issues, the Federal Circuit ruled the PTO had applied the incorrect prior-art-enablement procedure and remanded.  The disclosure in question is a short press-release from Peter Martin Associates that announces a product known as “HelpWorks” that allows folks to “use the Web to screen themselves for benefits, services, health risks, or anything else an agency wishes to implement via its eligibility library.”  Morsa’s claim in question – Claim Number 271 – is directed toward a “benefit information match mechanism” that requires (1) storing benefit registrations; (2) receiving a benefit request; (3) determining whether the request matches a registration; and (4) providing a benefit results — all “at least in part via a computer compatible network.”

Enabling Prior Art: A prior art reference being used for anticipation must be enabling.  To be anticipating, the prior art must “teach a skilled artisan … to make or carry out what it discloses in relation to the claimed invention without undue experimentation.”  However, during patent prosecution prior art cited by the USPTO is presumed to be enabling unless that issue is directly challenged by the patent applicant.  In Morsa I, the Federal Circuit ruled that an applicant’s direct challenge shift’s the burden to the PTO if it is a “non-frivolous argument that cited prior art is not enabling.”

While an applicant must generally do more than state an unsupported belief that a reference is not enabling, and may proffer affidavits or declarations in support of his position, we see no reason to require such submissions in all cases. When a reference appears to not be enabling on its face, a challenge may be lodged without resort to expert assistance. Here, Morsa identified specific, concrete reasons why he believed the short press release at issue was not enabling, and the Board and the examiner failed to address these arguments.

On remand following Morsa I, the PTO particularly addressed Morsa’s enablement argument and ruled that the anticipating reference was enabled — finding that the reference taught everything that person with ordinary computing kills needed to know in order to make and use Morsa’s claimed invention.  Now on appeal, the Federal Circuit has affirmed.

In the process, the court made a set of important findings. First, the starting point of this analysis is the level of knowledge of a skilled artisan as of Morsa’s critical date — and the question is whether the prior art reference enables that skilled artisan to create Morsa’s invention.  Building upon this starting point, the court included a number of admissions from Morsa’s application. In particular, Morsa had indicated in his background section that several different aspects of the invention (processors, memory, search routines, etc.) were  “within the knowledge of those of ordinary skill in the art.”  The court next focused a bit on Morsa’s claimed invention — finding that in includes only four basic claim limitations and that “each of those limitations can be mapped directly onto the [prior art] reference.”

Writing in dissent, Judge Newman offers the following:

The Board recognized that some of the claim steps are not described in the press release. The Board solved this dilemma by taking what it called “Official Notice” of the missing subject matter. And my colleagues solve this dilemma by finding the missing subject matter in the Morsa specification by stating that since the specification states that a person skilled in the art would know how to “implement” the claimed system, that person would have “knowledge” to fill the gaps in the prior art. However, we are directed to no disclosure in the prior art of all the claim elements and steps. “Anticipation” is not established in accordance with law.

“Official Notice” is not anticipation. . . The applicant’s specification is not prior art . . . [Rather] Enablement of the prior art must come from prior art.

= = = = =

I have pasted below the entirety of the 1999 press release being used as prior art.

CHICAGO–(BUSINESS WIRE)–Sept. 28, 1999–

Peter Martin Associates is moving eligibility screening one step closer to public availability with the announcement that its expert screening solution, HelpWorks(TM) is now Web enabled.

The launch of HelpWorks Web Edition(TM) took place today at the APHSA-ISM (American Public Human Services Association – Information Systems Management Conference) in Columbus, Ohio. The talk at the conference was the Government’s migration to e-commerce empowering the public to avoid long lines and seemingly endless forms to secure government services.

HelpWorks(TM) is a state-of-the-art software program designed to help maximize the benefits and services that consumers receive from Government agencies. It can be configured to evaluate any or all benefits and programs required – Federal, State and/or local.

HelpWorks Web Edition(TM) supports both a professionally-directed deployment model – in which end users are professional caseworkers – or as stated above, a self-service model in which consumers use the Web to screen themselves for benefits, services, health risks, or anything else an agency wishes to implement via its eligibility library.

The power behind this unprecedented flexibility in application and access is PMA’s newly released Expert Eligibility Server(TM) (EES) technology. The EES engine allows an agency to utilize HelpWorks Web Edition(TM) as well as other applications that will leverage this dynamic technology. With EES as the backbone, agencies can rapidly deploy eligibility solutions for touch-screen kiosks, interactive voice response systems, the Web and many other platforms.

Peter Martin Associates is the premier provider of software designed to support public and private social service agencies, focusing on family centered case management, information and referral, and eligibility screening. Information about Peter Martin Associates may be found on the web at www.petermartin.com.

189 thoughts on “Federal Circuit: Prior Art Enabled by Applicant Admissions in his Patent Application

  1. 14

    What disappoints me in this case is the wobbly way that novelty is explored in the US jurisprudence. I find the inherency doctrine unconvincing.

    In England there are two and only ways a prior art reference can destroy novelty. Either it announces “clear and unmistakeable directions to do something within the scope of the claim” Or, the “inevitable result” of following the teaching in the reference is something within the scope of the claim. Of course it goes, almost without saying, that its teaching must be enabling.

    The EPO does novelty by asking itself a different question: for the skilled person, studying the reference, is something within the scope of the claim “directly and unambiguously derivable” from the reference.

    These are questions that provoke the litigating parties to file effective evidence and to support it with cogent argument. That in turn puts the tribunal or court in a position to decide the issue with authority. Here, does PMA give such “clear and unmistakeable directions”. Can you practise PMA at all, without falling within the claim? If that had been debated, I think the court would have found easier the ultimate question, Novel Y/N? I just think it’s a shame that the Higher Courts in the USA cannot lay down a roadmap that helps the lower courts to reach solid well-reasoned decisions on novelty.

    And of course it goes. almost without saying, that there’s a “squeeze” between enablement and obviousness. You can’t avoid it, so you have to be aware of it when drafting your patent. To present your invention persuasively, and contrast its brilliance with mere routine, you often need to write in your application that the skilled person would be able without problem to put something or other into practice. But any such statement, if carelessly included, can come back to hurt you when you want to convince the court that the claimed subject matter wasn’t obvious. There’s an old saying “He who lives by the sword dies by the sword”. It has survived so long because it accords with common sense. To the extent that patent law fails to accommodate common sense, it will lose its audience. For me, the common sense outcome here would have been to declare the claim obvious. For me, it happens time and time again that the common sense outcome “The claim is obvious” cannot be got to. That the “right” outcome cannot be attained is, for me, is an indictment of the way obviousness is handled in the USA.

    1. 14.1

      But the problem here, Max, is the statute. Read 103 — there is no room for enablement analysis in its formula.

      1. 14.1.1

        Thanks for the thought Ned but I don’t see that as decisive. Consider Article 56 of the EPC:

        “An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.”

        Is there any “room” in that text “for enablement analysis”?

        All I’m saying is that when an Applicant makes an admission in his patent application that some step or other was routine and requires no inventive activity, he shouldn’t be surprised if the court uses that admission against him, when it comes to assessment under 103 or 56.

        1. 14.1.1.1

          Beware the fallacy if comparative analysis: here, once again, is the attempted insertion of EP law into US law.

      2. 14.1.2

        Ned,

        I find your “lynchpin” of enablement lacking legal basis.

        For EITHER 102 or 103, science fiction is not permissible. All “enanblement” does is separate the real from the fantasy, and this applies to the very meaning of what “art” means.

        Can you legally distinguish between science fiction being permissibly for 103 and not permissible for 102?

    2. 14.2

      MaxDrei,

      It is less how inherency is actually handled here, and more how you may have seen it discussed by those on this blog that you tend to “give weight” to.

      It is NOT a coincidence that those very selfsame people have never picked up my call to discuss matters using the patent doctrine of inherency.

      This is simply not an accident.

  2. 13

    In view of disputes in the comments about taking “judicial notice” here it is in Federal Rules of Evidence Rule 201: “Judicial Notice of Adjudicative Facts
    (a) Scope. This rule governs judicial notice of an adjudicative fact only, not a legislative fact.
    (b) Kinds of Facts That May Be Judicially Noticed. The court may judicially notice a fact that is not subject to reasonable dispute because it:
    (1) is generally known within the trial court’s territorial jurisdiction; or
    (2) can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.
    (c) Taking Notice. The court:
    (1) may take judicial notice on its own; or
    (2) must take judicial notice if a party requests it and the court is supplied with the necessary information.
    (d) Timing. The court may take judicial notice at any stage of the proceeding.
    (e) Opportunity to Be Heard. On timely request, a party is entitled to be heard on the propriety of taking judicial notice and the nature of the fact to be noticed. If the court takes judicial notice before notifying a party, the party, on request, is still entitled to be heard.” …

    1. 13.1

      One must also note the various statements in KSR about 103 analysis such as: “As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”
      [Or, as expressed elsewhere in KSR, the 103 POSITA’s knowledge or common sense is not limited to just the text of prior art documents in the same field.]

      1. 13.1.1

        Right, which is why when Judge Newman makes radical statements like “Official notice is not anticipation,” she is wrong.

        Bless her heart. Fighting the good fight to “protect the law of anticipation”

        Nothing in the FRE prohibits anticipation being based on official notice.

        Also worth noting that the APA (and applicable case law) provides for substantial evidence review of adjudicatory facts as well.

        1. 13.1.1.1

          Topce,

          You are aware that anticipation is necessarily single source, right?

          Your comment about “based on official notice” seems to indicate NO source is required.

          Whatever that is, that’s not anticipation.

            1. 13.1.1.1.1.1

              That’s not the same as what I am asking.

              Think of it this way: what does it take to establish inherency? Why must one go to that degree?

        2. 13.1.1.2

          Not even to mention that “anticipation” is a term of art for a 102 rejection [not 103] as even MPEP Section 2131 notes.

  3. 12

    I think it is time for Judge Newman to retire.

    Some statements she made in her dissent were just flat out wrong.

    A specification can include admissions that something is prior art.

    Also “official notice” can be used to fill in the gaps in a 102 analysis.

    If a Euro patent uses the word “lift” can I not use that to reject an elevator?

    It isn’t “anticipated” that one skilled in the art would understand dialect differences. Lol.

    1. 12.2

      “Also ‘official notice’ can be used to fill in the gaps in a 102 analysis.”

      No it can not.

          1. 12.2.1.2.1

            That Judge Newman doesn’t understand what Official Notice means.

            Judge Newman is also out of touch with the standards of review in the APA.

            The majority opinion correctly applied the substantial evidence standard.

            1. 12.2.1.2.1.1

              The claim recites “A system comprising A, B, C, D, and E.”

              The prior art reference discloses a system comprising A, B, C, and D. The examiner takes Official Notice that E is old and well known.

              Is that a proper case of anticipation?

              Very much looking forward to your answer.

              1. 12.2.1.2.1.1.1

                It depends how well known E is. In prosecution the examiner is a fact finder, so he gets substantial evidence review of official notice of Element E under Zurko.

                In litigation the judge can decide not to take this to the jury under the FRE.

                So in certain cases, yes.

                1. In the event of a case with a claim reciting a system comprising A, B, C, D, and E and a rejection under 35 USC 102 by a reference disclosing a system comprising A, B, C, and D and a taking of Official Notice that E is old and well known, I am 100% certain that the rejection would be reversed by the PTAB. 100%. As is every other practitioner. Slam dunk reversal. Not an iota of doubt about it.

                  “In prosecution the examiner is a fact finder, so he gets substantial evidence review of official notice of Element E under Zurko.”

                  Not sure why you’re so hung up on the standard of review. It wouldn’t matter. The burden of establishing unpatentability is on the examiner, and it’s a preponderance of evidence. In the case of anticipation, a question of fact, the examiner has to establish, by a preponderance, that the identical invention claimed is disclosed by a single reference, in as much detail as is recited in the claim. And the PTAB doesn’t review the examiner’s findings for substantial evidence, they review the examiner’s findings for a preponderance (i.e. does the evidence provided by the examiner establish the requisite facts more likely than not). So even if E is old and well known, the rejection for anticipation still fails as it doesn’t establish that a system comprising A, B, C, D, and E was identically disclosed by the prior art.

                  Not what you wanted to hear, huh?

                2. “It depends how well known E is.”

                  BTW, no it doesn’t. How well known E is, or isn’t, is completely irrelevant to the issue of whether a reference disclosing a system comprising A, B, C, and D anticipates a claim to a system comprising A, B, C, D, and E.

                  Hint: the reference doesn’t anticipate the claim.

                3. One more BTW, of course the chances of you actually getting such an anticipation rejection past your conference of SPE/QAS/otherknownothingdonothinguslessGS-15 and up to the PTAB are somewhere very, very, very, very, very, very close to 0%.

                4. You are so clever.

                  I’m talking about taking official notice that E is inherent.

                  You should know that is what I mean.

                  And leave office politics out of it.

                5. Topce,

                  No one can read your mind or read the arguments that you had wanted to (but did not) make.

                  To wit, your “I’m talking about taking official notice that E is inherent.” is nowhere evident in your posts, nor is it something that any reasonable person would give you credit for being in your posts.

                  And leave office politics out of it.

                  That’s far less “office politics” and far more merely an indicator that your views have been seriously warped by your time in the Office.

                  You want out? I seriously recommend simply getting up – right now – walking out, and just not coming back.

                6. Official Notice that E is inherent? I should know that’s what you meant?

                  You are off the deep end. Way, way past the point of no return.

                  BTW,you can’t take Official Notice that a feature is inherent in a reference. Have your local SPE/QAS/otherknownothingdonothinguselessGS-15 explain why.

                7. See MPEP 2142 (“The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence.”)

              2. 12.2.1.2.1.1.2

                “Not sure why you’re so hung up on the standard of review”

                The correct standard of review is substantial evidence.

                The Board is not following Supreme Court precedent if they are using a preponderance of the evidence standard.

                the appeal success rate numbers should not be a coin flip, they should weigh against the applicant.

                1. I claim a method to turn the sky from blue to green comprising A B C & D.

                  Can I make an anticipation rejection without a reference saying the sky is blue?

                2. the appeal success rate numbers should not be a coin flip, they should weigh against the applicant.

                  Like,… why?

                  (sorry, I cannot read your mind ans see the “fabulous logic” at work on this point either)

                3. Examiners should get deference like fact finders at every other agency except the PTO.

                  30% is substantial evidence.

                4. Do you have any rebuttals?

                  Because merely saying I don’t know what I am talking about is not an argument.

                  Just because the PTO doesn’t apply the law properly doesn’t mean that the way they apply the law is correct.

                  Neither of you are arguing in good faith in my opinion. You are arguing to squash me because considering what I have to say and doing the work to rebut my points could require some introspection.

                5. Topce,

                  Your views simply are NOT the law.

                  You are doing that “coming out of the weeds and show a case that disproves what I say” thing again.

                  I seriously doubt that you did attend law school as your “logic” here simply shows no appreciation for what law is or how it is made. IF you ever did get into a law school, I would greatly question any school that matriculate and PASS your “thinking skills” off as a bonafide law school graduate.

                  “your “not in good faith” when you CLEARLY have not made the arguments that you think that you have made (leaving things ONLY in your own mind) is not what “good faith” even means.

                  Your latest escapade here: where the H did you pull this “30%” from? Why would you think that less than a one third probability should garner ANY respect – anywhere?

                  Your views are simply bizarre and unconnected with any sense of reality.

                6. Again. If my views are so wacky
                  1) why are you replying?
                  2) where is your rebuttal.

                  Easy to just shoot stuff down. You probably aren’t going to reply now which is good because now I can share my ideas without you sticking your neck in every one of my posts.

                  You leave me alone and I leave you alone. Cool?

                7. Topce,

                  Your request is flat out denied.

                  I am not here to be “left alone.”

                  I want dialogue.

                  You , apparently, on the other hand, only want your monologue and to spread your “philosophy” as if it were law, and that to be uncontested.

                  I asked – and you replied directly – that you were an attorney.

                  No self-respecting attorney would treat the law as you do. No self respecting attorney would want to be unchallenged in treating the law as you do.

                  You are NOT an attorney.

                8. Right I want a dialogue. Just not with you. You are incapable of having a dialogue with anybody on this board as your posts have illustrated.

                  You want to frame me as wanting a monologue and then when I don’t fold you go for the personal attacks.

                9. With all due respect, it appears that you don’t understand the difference between standards (i.e. burdens) of proof and standards of review.

                  During patent prosecution, the Patent Office has the burden to prove that the claims are unpatentable. You can see any number of cases for this, e.g. In re Warner, In re Caveney, In re Oetiker. See the first sentence of 35 U.S.C. 102 for why the PTO has the burden.

                  All factual questions must be resolved by a preponderance of the evidence. See In re Caveney. So for anticipation, which is a question of fact, the examiner must establish, again by a preponderance (i.e. more likely than not, often thought of as 50.0000001%), that the claimed subject matter is identically disclosed by a single reference. See the first sentence of 35 USC 103 for the requirement for identity of invention. See MPEP 2131 too. For the requirement that the claim be identically disclosed by a single reference, see, for example, cases like Karsten Mfg. Of course, “secondary references” are permissible in anticipation rejections. See MPEP 2131.01.

                  Official Notice and inherency are entirely different concepts. Inherency requires that the evidence provided in support of the rejection makes it clear that the missing feature is necessarily present in the reference, just unstated. Official Notice is an acknowledgement that the reference(s) doesn’t disclose the feature, but that the missing feature is capable of instant and unquestionable demonstration as being well known. If requested by applicant, documentary evidence must be supplied to support the taking of Official Notice. So unlike inherency, the missing feature is clearly not “necessarily present” in the reference.

                  So you can’t take Official Notice that a feature is inherent in a reference.

                10. The PTAB reviews the examiner’s factual findings to determine if they are supported by a preponderance of the evidence. See Ethicon v. Quigg. See also any number of PTAB decisions where they have a finding of fact section and note that all of the findings are supported by a preponderance (and almost always have a cite or footnote to Ethicon).

                  The “review” that the PTAB does to an examiner’s findings of fact is not the “standard of review” that a court does to the findings of a trial court or an administrative agencey (e.g. the PTO). The issue in Zurko was whether the Fed. Cir. was required to review the examiner/PTAB findings by the substantial evidence standard of review (which is often referred to as court-agency review) or the clear error standard of review (which was the standard of review prior to the APA, which was passed in 1949 IIRC, and which is often referred to as court-court review as it is the standard of review that appellate courts apply to trial court findings of fact). The Fed. Cir. alleged that an exception in the APA allowed them to continue using the clear error standard (which is less deferential than the substantial evidence standard), but the PTO argued they were entitled to the less deferential substantial evidence standard of the APA. The PTO won in Zurko. However, that had no effect on the standard (i.e. burden) of proof required at the examination stage. That standard of proof was, is, and remains preponderance of the evidence (the lowest standard of proof, as explained in Caveney).

                11. See MPEP 2142 (“The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence.”)

                12. I knew and agreed with everything you stated until this point.

                  “However, that had no effect on the standard (i.e. burden) of proof required at the examination stage. That standard of proof was, is, and remains preponderance of the evidence (the lowest standard of proof, as explained in Caveney).”

                  Under 102 the PTO bears the initial burden of proof to show that all of the elements are disclosed in a single reference. However, the initial rejection does not have to meet a preponderance of the evidence standard. The burden of proof for inherency is the same for that of obviousness. (MPEP 2112).

                  So when the burden shifts back to the applicant, and the examiner finds that the evidence— that something is not well known in the art –is unpersuasive based on the preponderance of the evidence, what standard of review does the board use to determine this based on the record?

                  The PTAB is not a trial court. The examiner gets to determine whether the preponderance of the evidence justifies (un)patentability. Aka, if the examiner believes something is well known, then it is. The standard is meaningless for all practical purposes.

                  The PTAB is an ajudicative appellate body and can only rely on the record put before it.

                  So if there is more than a “mere scintilla” of evidence that something is well known in the art TO BE AN EQUIVALENT to a claimed structure, does the board have the authority to overturn the rejection? My position is that Zurko dictates– no– the PTAB does not have such authority.

                  So why am I hung up on the standard of review? Because it is the only thing that matters.

                13. “The examiner gets to determine whether the preponderance of the evidence justifies (un)patentability.”

                  The examiner makes the determination, on the totality of the record (i.e. evidence and arguments for AND against patentability) meets the preponderance standard (i.e. it is more likely than not). But if the applicant disagrees, and appeals to the PTAB, the PTAB reviews and decides if the examiner’s decision is correct (i.e. if, on the totality of thre record the claims are more likely unptatentable than patentable).

                  ” Aka, if the examiner believes something is well known, then it is.”

                  Uhm, no. The factual questions must be resolved with objective evidence. The opinion of an examiner of what is “well known” is not objective evidence.

                  “The standard is meaningless for all practical purposes.”

                  No, it’s very meaningful. Read J. Nies in SSIH equipment where she explains how standards (burdens) of proof and standards of review relate to one another.

                14. ‘The “review” that the PTAB does to an examiner’s findings of fact is not the “standard of review” that a court does to the findings of a trial court or an administrative agency (e.g. the PTO)’

                  This is not settled law. The PTAB (w/r/t examination) is an internal appellate body.

                  The examination process is an informal adjudication conducted ex parte.

                  It appears you are treating the PTAB as if it conducts appeals from examination as a formal adjudicatory process.

                  There is nothing other then two or three federal circuit cases justifying your position.

                  Zurko, decided afterward, leaves the question open.

                15. “My position is that Zurko dictates– no– the PTAB does not have such authority.”

                  Again, Zurko had absolutely nothing to do with the Board’s review of examiner findings of fact. Nothing.

                  “So why am I hung up on the standard of review? Because it is the only thing that matters.”

                  No. The standard (burden) of proof matters. The outcome of the appellate review matters dependent on the underlying standard of proof. What constitutes a clear error, or substantial evidence, may change dependent on if the underlying standard of proof is preponderance, clear and convincing, or beyond a reasonable doubt.

                  As J. Nies noted in SSIH, “adopting a ‘standard of proof is more than an empty semantic exercise.'”

                  You have to understand that “substantial evidence” is not, repeat is not, a standard of proof. The examiner cannot resolve factual questions (i.e. establish facts necessary to support the rejection) with “substantial evidence.” The reason for that is clear: substantial evidence is not a standard of proof. As Caveney, and SSIH, clearly state, preponderance of the evidence (i.e. more likely than not) is the lowest standard of proof there is.

                16. Your legal authority is getting shakier.

                  Now you are relying on conjecture and a journal article. I can throw 20 articles regarding the APA and the USPTO back at you from 3 years worth of research but I choose not to.

                  You said that the factual questions must be resolved with objective evidence. The opinion of an examiner of what is “well known” is not objective evidence.

                  A determination of the ‘state of the art’ is the first step in any obviousness or anticipation analysis.

                  You are reducing any opinion based on objective evidence to a MERE opinion. To say that it is well known that the sky is blue is an opinion? Must I provide a reference for that?

                17. “This is not settled law.”

                  Yes, it is.

                  “The examination process is an informal adjudication conducted ex parte.”

                  I’m not sure what you mean by “informal adjudication.” There is a written record, and the requirements of the APA apply. The applicant by filing the application and meeting all of the statutory requirements is presumed entitled to a patent. Unless the Patent Office can establish, by a preponderance of the evidence, that the applicant is not.

                  “It appears you are treating the PTAB as if it conducts appeals from examination as a formal adjudicatory process.”

                  Again, not sure what you mean by a “formal adjudicatory process.” There’s a written record and the PTAB determines whether the examiner has carried his/her burden in establishing, by a preponderance of the evidence, that the claims are not patentable.

                  “There is nothing other then two or three federal circuit cases justifying your position.”

                  I’m sure there are more, but is it really necessary to cite for you every single case that says that the standard/burden of proof on the PTO during examination is preponderance?

                  “Zurko, decided afterward, leaves the question open.”

                  No, it does not.

                18. I am not arguing that the PTO doesn’t need to prove by a preponderance of the evidence that something is not patentable.

                  I am saying that it is the examiner and not the PTAB that makes this determination.

                  The PTAB reviews this determination.

                19. “Your legal authority is getting shakier.”

                  You think Warner, Caveney, and Oetiker are shaky? Ethicon and SSIH are shaky? Why don’t you Shepardize them? Why don’t you see how many PTAB final decisions cite Warner, Caveney and Oetiker for the exact same reasons I’ve cited them to you? Feel free to see how many PTAB decisions cite Ethicon for the preponderance standard during examination. It shouldn’t take you three years.

                  “Now you are relying on conjecture and a journal article.”

                  No conjecture from me. The journal article was for your edification. I wasn’t citing it as precedent or as any sort of authority. I think that’s pretty clear from my posts.

                  ” I can throw 20 articles regarding the APA and the USPTO back at you from 3 years worth of research but I choose not to.”

                  Feel free to. I doubt even one will contradict the well settled law that the standard/burden of proof during examination is preponderance. That’s the standard. Has been for decades, if not longer.

                  “You said that the factual questions must be resolved with objective evidence. The opinion of an examiner of what is ‘well known’ is not objective evidence.”

                  Examiner’s “opinions” (by which I think you mean conclusions or determinations), that are not supported by objective evidence are not evidence, they’re not facts. They’re opinions.

                  “A determination of the ‘state of the art’ is the first step in any obviousness or anticipation analysis.”

                  Correct. And how does the examiner resolve the state of the art (by which I assume you mean the scope and content of the prior art)? By citing objective evidence (e.g. prior art references).

                  “You are reducing any opinion based on objective evidence to a MERE opinion. To say that it is well known that the sky is blue is an opinion? Must I provide a reference for that?”

                  This appears to be the favorite silly example provided by examiners (along with the boiling point of water) whenever the issues of Official Notice or inherency are discussed. If you want to take Official Notice that the sky is blue, be my guest. I seriously doubt that the number of cases where it’s required is very many, and the number of cases where it’s actually dispositive is even fewer, or none at all.

                  Back to your question of “I claim a method to turn the sky from blue to green comprising A B C & D.

                  Can I make an anticipation rejection without a reference saying the sky is blue?”

                  Sure. If you have a reference that discloses a method comprising A, B, C, and D. Then you have a very strong argument that the method would inherently change the sky from blue to green.

                  If your reference discloses a method comprising A, B, and C, can you take Official Notice that E is old and well known and thus the reference anticipates the claim?

                20. You are trying to argue that the cases that say the PTO as a whole must prove unpatentability by a preponderance of the evidence means that the PTAB must do so as well.

                  I am saying that these cases do not extend to the PTAB and merely apply to examiner determinations.

                  The PTAB should, under Zurko, review the Examiner’s record and give substantial evidence to the findings in that record. This is all I am saying.

                21. “Sure. If you have a reference that discloses a method comprising A, B, C, and D. Then you have a very strong argument that the method would inherently change the sky from blue to green.

                  If your reference discloses a method comprising A, B, and C, can you take Official Notice that E is old and well known and thus the reference anticipates the claim?”

                  No– but you can say that one skilled in the art would interpret E as equivalent to D.

                22. Your authority on the point you think I am trying to make is strong.

                  Your authority on the point I am trying to make is weak.

                23. “I am not arguing that the PTO doesn’t need to prove by a preponderance of the evidence that something is not patentable.”

                  Well, at least we’ve cleared that up.

                  “I am saying that it is the examiner and not the PTAB that makes this determination.”

                  Glad we agree on that.

                  “The PTAB reviews this determination.”

                  3 for 3. Yes, the PTAB does review this determination. And they review it to determine if the evidence provided by the examiner to resolve the required factual questions meets the preponderance standard. That’s Ethicon v. Quigg.

                  You appear to be advancing some novel theory that Zurko “left unsettled” the “standard of review” that the PTAB is (supposed to) apply to examiner findings of fact. There is nothing unsettled about it. The PTAB reviews the examiner’s findings of fact (whether they are outright questions of fact like anticipation or analogous art or field of endeavor or reasonable expectation of success) for whether they are supported by a preponderance of the evidence. If they are not, the PTAB reverses. It’s that simple. There’s nothing “unsettled” about it.

                24. “The PTAB should, under Zurko, review the Examiner’s record and give substantial evidence to the findings in that record. This is all I am saying.”

                  What you are saying is wrong. Zurko had absolutely nothing to do with what standard of review the PTAB should apply to examiner findings. Nothing. Absolutely nothing.

                  That’s because the PTAB, under Ethicon, reviews the evidence relied upon by the examiner to resolve factual questions to determine if the evidence meets the preponderance of the evidence standard of proof. That’s the law. Sorry if you think me, the PTAB, the Fed. Cir., and every single member of the patent bar and every single APJ of the PTAB is incorrect about that, but you really should re-evaluate your theory.

                25. “No– but you can say that one skilled in the art would interpret E as equivalent to D.”

                  Where do E and D come in? You said the claim was “a method to turn the sky from blue to green comprising A B C & D” If the reference discloses a method (for making chocolate chip cookies, as an example, or for treating toe nail fungus maybe), comprising A, B, and C, the reference doesn’t anticipate. Even if the examiner “takes Official Notice that E is old and well known” or “take Official Notice that the sky is blue.” What difference would that make?

                  Are you not really understanding that?

                26. “You are trying to argue that the cases that say the PTO as a whole must prove unpatentability by a preponderance of the evidence means that the PTAB must do so as well.:”

                  The cases do say that. There is nothing in any of those cases that makes a distinction between the examiner’s findings of fact and the Board’s findings of fact. They are one in the same: they are the PTO.

                  “I am saying that these cases do not extend to the PTAB and merely apply to examiner determinations.”

                  Do you have any support from Warner, Caveney, Oetiker, Ethicon, etc. for that? Is there anything in all those journal articles and three years of research that you did that supports, or even suggests, that?

        1. 12.2.1.3

          Why you put that in quotes is odd.

          “Is” “that” “another” “bad” “habit” “you” “picked” “up” “from” “Malcolm?”

          (Besides, you would have been better off putting “fill in the gaps” in quotes, as the reference to the MPEP by Paul points out the “gap-filling” instances in which more than one reference is used for an anticipation rejection.

  4. 11

    For those of who write patents, can anyone identify a sensible reason why you would ever say that anything in your patent is “within the knowledge of those of ordinary skill in the art.” It seems like the reflex of an aged patent attorney that serves no purpose. If it comes up in prosecution, you can explain it then.

    1. 11.1

      Patent profanity (induced by the courts) and such things as KSR (another Court inducement) inextricably lead to saying the minimal possible in patent applications.

      This is not – and should not be – a surprise to anyone.

      1. 11.1.1

        such things as KSR (another Court inducement) inextricably lead to saying the minimal possible in patent applications.

        Only if your intent is to attempt to get a patent that you shouldn’t be entitled to. That’s the inherent premise of Crockett’s question though, isn’t it? The actual answer is “Because the applicant knew that the acts were within the knowledge of those of ordinary skill in the art.” If you’re asking why the applicant told a truthful detail in a document that is designed for both truth and detail it says more about you than the system.

        1. 11.1.1.1

          Only if your intent is to attempt to get a patent that you shouldn’t be entitled to.

          Absolutely wrong.

          There is a reason it is called patent profanity, son.

          (And pointing to a broken scoreboard only means that you don’t understand that the scoreboard is broken – maybe you should actually listen to the discussions as to why the scoreboard is broken; just a thought)

        2. 11.1.1.2

          Actually, RandomGuy, my premise was more honest than that. The premise is, reflexive incantations lead to confusion, and give examiner’s fodder for confused rejections, so why do it? And, sometimes, it is just not the case that the thing is known in the art, and sometimes, in the context of your invention, it is not known in the art.

          I agree with your statement that if a claim recites a limitation, there are only possible outcomes. An incantation won’t change that.

          In this Morsa case, the incantations led to an unexpected result, and were otherwise worthless. They established a high level of skill in the art. They established that an artisan “is capable of programming the invention” and thus, in combination with the reference, established that the reference was enabling. These consequences are pretty hard to predict while you are writing a patent application.

          It’s like in baseball, when your own man say you were out: The fact that you beat the ball to first base becomes immaterial when the other team can point to your admission of prior arrival (APA).

          1. 11.1.1.2.1

            The premise is, reflexive incantations lead to confusion, and give examiner’s fodder for confused rejections, so why do it? And, sometimes, it is just not the case that the thing is known in the art, and sometimes, in the context of your invention, it is not known in the art.

            It’s not a confused rejection nor is this situation in some manner unique. If the admission was not textually made in this case, the only thing that would have changed is that the examiner would anticipate that a non-enablement argument was coming against his prior art, and would make an in-the-alternative 112a rejection against the claims as well.

            Then the applicant would have to pick – do I argue the art couldn’t have done it? If so, it becomes simple to prove the claim isn’t enabled – the art couldn’t do it, and the spec is silent on teaching how to do it. If the opposite happens, and the applicant argues that the art could have done it, he has perfected the prior art rejection.

            There was actually zero harm or confusion done by adding the words that something was previously known. Where the harm came in was in the failure to provide a teaching disclosure. The reason a teaching disclosure was not made in this case is the same reason that its not made in any other case – the inventor actually knows that it could be done by others, most likely because he got that part of the invention from somewhere else, because it is basic, or because he saw that someone else could do it.

            The language in this case that makes it appear unique, about establishing skill and whatnot, is procedural – so that the board could be upheld without it being a new basis of rejection. Apply the same situation to a court case and the defense will just amend to add a 112 defense if it wasn’t present already. Either way if you’re arguing that something you personally didn’t teach is the novelty, your claim is going to fail, and you’re just quibbling over whether it fails the 103 statute or the 112.

            1. 11.1.1.2.1.1

              In this case, you are likely correct. In the case I am writing today, I am not so sure.

          1. 11.1.1.3.1

            And yet look at the incessant complaining about the Act of 1952…

            Your aim, driven by your “philosophies,” remains woefully inadequate.

              1. 11.1.1.3.1.1.1

                You made a blanket statement without rhyme of reason, as I provided a much older reference very much under contention to refute your “dinosaur” point.

                You really should get a refund from your law school.

    2. 11.2

      can anyone identify a sensible reason why you would ever say that anything in your patent is “within the knowledge of those of ordinary skill in the art.”

      Because it’s true, because it speaks to enablement and because what’s being claimed is an actual innovation rather than a word salad disguised as one.

        1. 11.2.1.1

          Your use of “word salad” here is itself nothing but word salad.

          Sorry, “anon.” I thought most people understood the term.

          It refers to the scrivener’s practice of loading up a claim with excess verbiage and bogus “techno” terms so as to make the claim look like “new” technology when in fact it’s nothing of the sort. See Steve Morsa’s claim at comment 1 if you are still confused (which I expect you will be).

          1. 11.2.1.1.1

            word salad transcribed for Malcolm:

            It refers to the [anti-patent blog Tr011’s] practice of loading up a[n “argument”] with excess verbiage and bogus “[legal]” terms so as to make the [“argument’] look like “[real” critical piece of legal thinking] when in fact it’s nothing of the sort.

            All it is, is your opinion/feeling/philosophy of how you wish the law was.

      1. 11.2.2

        Yes, it may be true. I think in most instances, though, it serves no beneficial purpose for the applicant, and serves as an admission that can only hurt the applicant. Is there no case on point that might have led old farts to infect their specs with this language. Over the years, you might absorb an understanding that the phrase leads to admitted prior art, illustrated by a few cases (Ex parte Reinert, for one example). Was there an earlier case that suggested that the phrase saves a case from a non-enablement issue? Do patent attorneys add the phrase because they see it in old patents, or because they see some advantage beyond being relieved of the task of explicitly enabling a minor feature?

        1. 11.2.2.1

          Yes, it may be true. I think in most instances, though, it serves no beneficial purpose for the applicant, and serves as an admission that can only hurt the applicant.

          Well if it serves no purpose for the applicant it certainly shouldn’t be in a document designed for teaching the public.

        2. 11.2.2.2

          it serves no beneficial purpose for the applicant,

          Sure it does. It simplifies or obviates enablement issues that might otherwise be raised, thereby saving the applicant money and time.

          Was there an earlier case that suggested that the phrase saves a case from a non-enablement issue?

          Common sense tells you that it can do that. Why do you need a cite? Admitting that a prior art reference is prior art likewise serves to avoid a dispute about the date of the reference. You need a cite for that, too?

          What confounds so many present day patent agents and attorneys in particular art units (e.g., the “do it on a computer” arts) is that they simply got used to having their way, all the time, no questions asked. All of a sudden the patent laws are being applied in reasonable systematic ways and it’s like taking a lollipop away from a five year old. They just can’t figure out what’s going on. It was all about them for so long. Now they have to learn to make their beds and wipe their noses and by their reaction you’d think they were being asked to build a nuclear reactor from matchsticks.

          In the grown up arts we long ago got used to presenting data showing unexpected results. Can you imagine how the computer-implementers are going to howl when that wave breaks on the shores of their shrinking paradise. Hoo boy it’s going to be fun.

          1. 11.2.2.2.1

            Definitely enablement. Actually, not too different from incorporation by reference. Beyond enablement, bringing prior art to the attention of the examiner makes for a stronger patent.

          2. 11.2.2.2.2

            Why do I need a cite? Just curious.
            Can that incantation really establish enablement? If I said, “The device is powered by cold fusion, which is ‘within the knowledge of those of ordinary skill in the art,” I don’t this that I would establish enablement.

  5. 10

    Lo and behold this Morsa character turns out to be a professional “appeal! appeal! appeal!” patent tr0ll who couldn’t innovate his way out of cardboard box. But he loves to appeal!appeal!appeal! Because he’s super serious about his “rights.”

    You can read here about his feeble attempt to grift off Facebook with some junky “shove an ad in your face” patents.

    link to iptrademarkattorney.com

    and you can read here about how badly that turned out for clever Stevie Morsa:

    link to casetext.com

    Tanked under 101. Good riddance.

      1. 10.1.1

        LOL

        Steve Morsa’s agenda: get money into Steve Morsa’s bank account by filing and asserting junk patent claims.

        Sorry to spoil your fun, Steve.

      2. 10.1.2

        And by the way, Steve: “principled, reasoned discourse” about your patent claims is the last thing that you want. You can trust me on that, or you can find another competent patent attorney and you can trust him/her.

        Or you can prove me wrong and provide a “principled and reasoned” defense of the ridiculous junk that you just tried and failed to patent. Start with a “reasoned” and “principled” discussion of the prior art and tell everyone exactly what your awesome “innovation” was.

  6. 9

    Now, I know h0w to program; but I would not know how to

    “resolving said benefit request against said
    benefit registrations to determine one or more
    matching said benefit registrations;

    by a publication that just said that this was done. That one of ordinary skill could implement the described matching technique once it was described to him or her, does not suggest at all that one of ordinary skill at the time of the reference (patent application/invention?, what is the law here on anticipation) would know exactly how to implement this step without undo experimentation.

    That said, the claim itself just says “do it.” At this level of abstraction, the claim suffers from not including in it anything truly novel, as just “do it” suffers from being simply an idea, a work plan, an abstraction.

    I think this case suffers from the level of abstraction at which the invention was claimed. But it lays down broad propositions of law about the use of one’s own specification description of the skill of the art to teach what was within the skill of the PHOSItA at the time of the reference. This, as a matter of law, cannot be right.

    Consider what Morsa I said,

    “First, an examiner must determine if prior art is enabling
    by asking whether a person of ordinary skill in the
    art could make or use the claimed invention without
    undue experimentation based on the disclosure of that
    particular document. See 35 U.S.C. § 112. While reference
    to the patent application is appropriate for purposes
    of determining what the claimed invention is, i.e., what
    falls within the scope of the claims, the anticipation
    exercise must assess the enabling nature of a prior art
    reference in light of the proposed claims. To the extent
    the Director argues that a head to head comparison
    between the disclosures in the documents is appropriate
    moreover, the PTO’s description of the application is
    inaccurate. The level of detail and disclosure in the
    application far exceeds that in the PMA. Absent a finding
    that the application’s disclosures are unrelated to the
    invention actually claimed, we cannot agree that the
    enabling nature of the two documents the PTO seeks to
    compare are, in fact, comparable.”

    Morsa I, slip at *10, In re Morsa, 713 F.3d 104, 110-111 (Fed. Cir. 2013).

    But, it seems that that is exactly what Morsa II did.

    Just one example, the quantum computer. Now, assume a brochure that described the development of a quantum computer at AT&T but it does not describe how to set and read the quantum states of the particular crystal lattice that is being programmed. The specification says everything in the claim but this one element is old and well known, and then describes in detail how to set and read.

    Now I hope that this can cannot be read to suggest that the brochure was enabling on this point just because my specification described how to do it.

    1. 9.1

      Just one example, the quantum computer.

      With all due respect, Ned, this case has absolutely nothing to do with any computer technology whatsover, much less “quantum computers”.

      I know h0w to program; but I would not know how to

      “resolving said benefit request against said benefit registrations to determine one or more matching said benefit registrations;

      LOL. Maybe Morsa should have hired you to write an expert declaration! He’s probably going to appeal all the way to the Supreme Court (because his precious patent rights are super dooper important!) so it’s not too late. Call him up. He’s probably in his squalid overheated garage right now, sweating and greasy and working really hard on his next sooper dooper awesome “invention” but he probably invented some fantastic auto phone responder device that will record your voice and save it into some sort of new fangled computer database!

      But seriously, Ned, maybe you should take a deep breath and ask yourself what minimum actions would suffice to meet the limitation of “determine one … matching” item when searching a database in response to a query. Maybe there was some pre-written software that would help you with that, even if you “yourself” couldn’t figure out how to make it happen way back in 1931 when Morsa’s awesome application was filed.

      I think this case suffers from the level of abstraction at which the invention was claimed.

      True of 99.999% of the computer-implemented junk out there.

      1. 9.1.1

        …and now making a “glorious” comeback from the (claimed) low of “90%,” Malcolm crows a new number that begs to be “proven.”

        of 99.999% of the computer-implemented junk out there.

        But one has to wonder if Malcolm is purposefully making a distinction with the possible non-junk that is also computer implemented; or maybe he is gearing up to celebrate the “Innovation with the Amish” festival…

        /off sardonic bemusement.

      2. 9.1.2

        MM, matching search criteria is a start.

        Imagine you want to post results of a search to a degree that it produced 99% relevance in a prior art search. How would you do that if I asked you to “do it?”

        Seems on its face more complicated than simply finding a match.

        I assume, but do not know, that the specification showed how.

        I will look that up just in a few minutes just to make sure.

        1. 9.1.2.1

          Imagine you want to post results of a search to a degree that it produced 99% relevance in a prior art search. How would you do that if I asked you to “do it?”

          Before I’d lift a finer I’d ask you to define “99% relevance” in an objectively testable manner.

          But again: this case and these claims aren’t about improving logical methods of searching and comparing one piece of data to another piece of data. This case and these claims are about exploiting a broken patent system for profit, at everyone else’s expense. Thankfully two members of the CAFC saw through the b.s. and did the right thing.

          1. 9.1.2.1.1

            I’d ask you to define “99% relevance” in an objectively testable manner.

            Sort of like Malcolm’s proving that 99.999% number….

            ;-)

        2. 9.1.2.2

          Seems on its face more complicated than simply finding a match.

          Or less, depending on exactly what’s in the “benefit registration database” and exactly what’s being requested.

          Therein lies the rub.

      3. 9.1.3

        MM, I read through the provisional. It is long on describing the prior art, but it does not tell how one “correlates” benefit requests to benefit registrations. Completely blank.

        Yeah, this is a research plan, and nothing more. An idea. No working examples of how to do this step. There is no written description/enablement even in the specification.

        1. 9.1.3.1

          it does not tell how one “correlates” benefit requests to benefit registrations. Completely blank.

          Kinda funny people were certainly doing that in the prior art … using their brains. But nobody could have predicted you could use a computer (shocking!) to carry out a logical information processing task previously carried out by humans (especially comparing one thing to another — that’s the computer equivalent of sending a manned spaceship to another galaxy).

          Most historians understand that until just a few weeks ago computers were basically just TV sets. It wasn’t clear what use they had other than as paperweights.

          1. 9.1.3.1.1

            You do, of course, realize that there IS a fundamental difference between a machine and a peron using their brains, right?

            Hint: Anthropomorphication.

            Extra hint: The thought of software is not software.

              1. 9.1.3.1.1.1.1

                I am telling you because you are the one so obviously confused (or disingenuous, or both).

                1. Well, one of us is confused, that’s for sure. Pretty sure it’s the one who spent years here defending ridiculous junk like the junk that just got tanked here. That would be you (in case you were confused).

                2. The one “confused”** is you.

                  **i use that term loosely as you have admitted to knowing and understanding the controlling law as exemplified in the exceptions to the judicial doctrine of printed matter in one of your classic admissions against interests. Thus, your perpetual “arguments” that do not take into account that which you have admitted to knowing is less true “confusion” and more just plain duplicity.

                  As for what you (mis)state here, my defenses are of the law as it is proper to understand. I do not play your game of defending individual “gee look at this bad patent examples that you habitually tr011 with.

                  Of course, you are already aware of that. So here too – no such “confusion” as you deceptively post.

  7. 8

    Mr. Morsa, amongst other things, admitted in the specification that the system as described in the patent “can be implemented by any programmer of ordinary skill . . . ,” thus allowing him to avoid having to teach the public this very concept. Therefore, by using Mr. Morsa’s admissions, the Board simply held him to the statements he made in attempting to procure the patent.

    This argument is one I often use but unfortunately few of my colleagues understand despite it being very simple. If the claim claims something, and the specification doesn’t describe in detail how to achieve it, there are only two possible outcomes – 1) it was already known or otherwise obvious or 2) it was not enabled. That is the way it HAS to be, because the alternative is that a claim could issue because of a feature that the public cannot achieve, which is contra to the entire patent system. You should probably be careful if your patent issues because you outwit a non-lawyer by talking out of both sides of your mouth, as (some, I qualify after reading this board for a while) attorneys are actually competent about the law.

    Newman has a heading entitled “The applicant’s specification is not prior art” which is one of those technically-true-but-so-misleading-it-is-dangerous statements that I see the FC put out every now and then that it should be removed. The citation to Rasmussen in that section proves how wrong she is, because Rasmussen cites to Hafner which points out that prior art enablement has a LOWER standard than 112 enablement, and draws no distinction with respect to “make” enablement, which is the enablement at issue. When the specification relies upon something being known, it is an admission that something is known. It’s better than prior art, because prior art can be attacked, while admissions have some estoppel protections.

    With respect to the anticipation/obviousness question Newman brings up – Here’s she’s right. Once you take official notice of a non-inherent fact you’re within the realm of obviousness. That being said – the invention is clearly obvious. The fact that the office doesn’t know how to put together an argument beyond the most basic “durr let me map this reference language to this limitation” creates a lot of problems in this area.

    1. 8.1

      RG: Once you take official notice of a non-inherent fact you’re within the realm of obviousness.

      What was the “non-inherent” fact being officially noticed here?

      That being said – the invention is clearly obvious.

      It’s clearly ineligible junk is what it is. Our patent system’s difficulty with “clearly obvious” claims, of course, is that once the “clearly obvious” claim is mistakenly granted by the PTO, the patentee can obscure that clarity — “legally” — by threatening defendants with expensive Texas lawsuits and settling a bunch of them for low-value licenses. That’s the game.

      This claim is just another in a zillion example list of claims which seek to prevent people from using old computer technology to process a particular species of information. The major malfunction at the PTO and the CAFC for many years is the failure to recognize that programmable computers can store, transmit and process any information that they are programmed to process and that’s been the case for a long, long time. There is no such thing as “unexpected information identity” in the context of computer-assisted information processing by a pre-existing programmable computer, just as there is no such thing as “unexpected gravel identity” in the context of a gravel carrying by a pre-existing dumptruck. The genus of “information” anticipates every species of “information” because the labels we assign to information are abstractions (perhaps the quintessential examples of abstractions).

      For many years now our legal system has tried to pretend that the elephant in the room doesn’t exist. This has led to chaos and disappointment for pretty much everyone except for a tiny number of patent-savvy attorneys and manipulators who saw the land grab opportunities and, well, grabbed them and capitalized before common sense leaked back into the system and the door started closing.

      1. 8.1.1

        What was the “non-inherent” fact being officially noticed here?

        Whatever they took official notice of. If A inherently causes or requires B there is nothing to take official notice of. A’s citation is sufficient to teach the B element. The use of official notice means that A must not have been enough, and that defeats an anticipation argument.

        If you tell me the board didn’t need to take official notice of something because it was inherent – fine. But once you feel you have to take official notice you’re admitting that what you have there isn’t enough, and once you say that you’re outside of anticipation.

    2. 8.2

      The prior art in question:

      HelpWorks Web Edition(TM) … can be configured to evaluate any or all benefits and programs … [and] supports … a self-service model in which consumers use the Web to screen themselves for … anything

      That’s right: anything. And it’s perfectly accurate. Actual technology — you know the sort of stuff the patent system is supposed to promote — did (and does) allow consumers to “screen” any information about themselves. All one has to do is tell the computer, in a language the computer understands, to “make it so” and the computer will do it.

      It doesn’t matter if you call the information “benefit information” or “Jonny’s credit card information” or “Granny’s favorite Lawrence Welk moment information” or “Billy’s trusted friend information” or “mobile user’s DVD wish list information” or anything else. This is what programmable computers do: they process information. It’s been that way for a long, long time and for an equally long time jurists like Judge Newman have been sticking their heads in the sand and pretending otherwise.

      Make it stop.

    3. 8.3

      Suppose Random I invent the Quantum computer and require blue lasers with a specific wavelength, angle, pulse length and amplitude to set the quantum state of particular latices members having a specific crystal structure, and a green laser, etc., to read that quantum state.

      Now if I say it is common knowledge that people of ordinary skill in the art know to use lasers to set/read the quantum states of materials, is a brochure describing the development of a quantum computer enabled by my admission?

      1. 8.3.1

        Now if I say it is common knowledge that people of ordinary skill in the art know to use lasers to set/read the quantum states of materials, is a brochure describing the development of a quantum computer enabled by my admission?

        It’s easier than that Ned. If you tell me the art knows how to build a lightsaber and the art in fact cannot build a lightsaber and there is not a single lightsaber reference out there, the correct finding with respect to 103 is still to say that the art knew how to build a lightsaber. You don’t need a reference, you don’t need supporting facts, and it doesn’t even have to be true. The applicant made a statement and for all purposes against the client the statement is true.

        You may find it odd that you would have a situation where the prior art is enabled to do something but the current invention is not enabled to do the same thing. There’s nothing odd about it. That’s how estoppel works. Houses purported to be haunted are haunted vis-a-vis their purporter.

        1. 8.3.1.1

          Well, Random, there are admissions then there are admissions.

          Where is the PHOSITA legally? The US, the world? Has that changed with the AIA?

          So my application says that it was known in Mother Russia how to program the quantum states of this or that crystal using blue and green lasers. Prior to the AIA, such knowledge was not prior art. Does that admission nevertheless implicate the level of skill in the art in the United States in some way? Does the expansion under the AIA of knowledge and use to the rest of the world automatically expand the definition of a PHOSITA.

          1. 8.3.1.1.1

            Where is the PHOSITA legally? The US, the world? Has that changed with the AIA?

            Wherever the art is. Probably not. It certainly isn’t brought up in your or my examples where they are outright saying that the person of skill in the art can do something.

            So my application says that it was known in Mother Russia how to program the quantum states of this or that crystal using blue and green lasers. Prior to the AIA, such knowledge was not prior art. Does that admission nevertheless implicate the level of skill in the art in the United States in some way?

            It doesn’t matter. If Russians are not people of ordinary skill in the art then it doesn’t matter what they know for either enablement or prior art. If they are members of the art, their knowledge adds to the store of skill in the art. You’re trying to create a statutory inequality where by definition none can exist.

            The spec either teaches or it doesn’t. If it doesn’t, either the art knows and it’s not a novelty or the art doesn’t know and it’s not enabled. When someone points to a feature and says “this is why I got a patent” and the feature isn’t taught in the specification, the claim is invalid on its face and you’re just quibbling over which basis is most apt to apply.

            1. 8.3.1.1.1.1

              “Teaches or it does not…” But, doesn’t that depend on who reads.

              I assure you that if I read a paper on PHD level quantum mechanics, that I would not understand a thing.

              Thus, if the person of ordinary skill in the US is a BS Physics or EE, is such a paper enabling?

              This illustrates to me that there is fundamental flaw in US law and that is centered on this hypothetical PHOSITA. We assume that everything published in the relevant Art teaches this individual, when clearly, that is not the case as a general proposition unless the PHOSITA is a master in the Art.

              Gene (at his dog site) actually said that a PHOSITA KNOWS all the relevant art. Where did he get this idea? I hardly think it is right, because it does not match up with reality.

              1. 8.3.1.1.1.1.1

                I assure you that if I read a paper on PHD level quantum mechanics, that I would not understand a thing. Thus, if the person of ordinary skill in the US is a BS Physics or EE, is such a paper enabling?

                But again there is no asymmetry. If a specification says “You can find out how to do quantum mechanics in this paper” and the paper wouldn’t make sense to one of skill in the art, then his specification has not enabled his invention, and we are back to square one – either somewhere else in his specification he must teach how to do it (in a manner the art WOULD understand) or he must admit that the art could do it without him. In either case, pointing a PHOSITA toward gibberish does not result in invention, nor should it.

                You also seem to be missing the rare invention where something is in fact known to the world but becomes an invention because it is not germane to a particular art – i.e. the non-obvious due to non-analogous art situation. If quantum mechanics would help the computer art and the computer art had no idea to seek solutions within quantum mechanics, then the teaching to EEs to look to quantum mechanics is itself an invention. Its not common, but it does happen.

                1. Good points there, Random. The rejoinder is that prior art itself would not be considered by one of the ordinary skill in the art.

                2. The proper rejoinder Ned is that the world of prior art that is available for 102 is different than the world of prior art that is available for 103.

                  This difference in availability does not change what is inherently prior art – it is but a[n admittedly subtle] application of that which is prior art.

                1. Second link is incorrect. But you can just Google scholar Standard Oil. Footnote 3 is worth a read. As is In re Antle.

                2. AAA JJ, excellent, and thanks. Clearly, what the PHOSITA actually knows and what he is statutorily presumed to know (102/103) have created confusion. The PHOSITA cannot argue patentablity based on lack of actual knowledge. But he remains open to argue that the he would not have looked to the field of the reference for a solution to the problem he was dealing with (even considering KSR).

                  Therefor, it is absolutely incorrect to say that a PHOSITA is a hypothetical person who KNOWS of the prior art in the field.

                  But that is what Gene said. It seems a lot of patent attorneys might think the same way.

                3. Ned,

                  You continue to show a considerable lack of ability to understand this so fundamental concept.

                  The last three words of your second last paragraph (“in the field”) is exactly the critical part that would match the facts of the case in the footnote.

                  This nuance should be easily grasped.

                  See my 6:04 am post above.

                  Think of it this way:
                  Prior art is prior art.
                  Prior art that is permissible to APPLY is simply different if you are applying 102 (full application of all art) and applying 103 (limitations based on what PHOSITA means, including the points as interpreted by the Graham factors.

          2. 8.3.1.1.2

            Ned states “there are admissions then there are admissions.” and given his silence as to both post 4 here and my admonition of him (and MaxDrie) on a recent thread on this very point, I have to wonder if Ned’s glibness here masks a serious deficiency of understanding of the danger of an applicant making statements in the specification as to what is prior art.

            This is NOT like a new discussion, as I have pointed this out to Ned several times in the past (with his rather “ancient” prosecution skills – seemingly learned sometime in the nineteenth century)

            1. 8.3.1.1.2.1

              anon, I have has numbers of my prosecuted patents successfully enforced. I had only one thing I have ever said being argued as prosecution history estoppel. I learned my lesson from that one.

              1. 8.3.1.1.2.1.1

                Based on the evidence at hand (the discussions on these boards), apparently you have not learned your lesson, and remain merely lucky that the enforcement actions did not bring up that issue.

    4. 8.4

      If the claim claims something, and the specification doesn’t describe in detail how to achieve it, there are only two possible outcomes – 1) it was already known or otherwise obvious or 2) it was not enabled.

      Your colleagues don’t agree with you because your argument is nonsensical. Enablement != obviousness.

      Your overall philosophy seems to be that patent law is a gigantic exercise in futulity: no conceivable invention can ever satisfy all of the rules.

      1. 8.4.1

        Your colleagues don’t agree with you because your argument is nonsensical. Enablement != obviousness.

        Someone is missing the forest for the trees. Very simple question – Was Congress granted the power to issue an exclusionary right for an invention that does not advance the useful arts because it was not disclosed to the public?

        The answer is no.

        Enablement != obviousness but the intersection of “non-obvious items” and “items not requiring undue experimentation” by definition is a null set, because otherwise you would have patents issuing for no advancements in the art at all.

        Your overall philosophy seems to be that patent law is a gigantic exercise in futulity: no conceivable invention can ever satisfy all of the rules.

        There are plenty of inventions that satisfy the rules. Like here there’s a very simple way to satisfy the rules – either admit that the art knows how to do something and that your novelty/non-obviousness lies elsewhere, or assert that you believe you’re the first to do this and teach people how to do it.

        You’re the one who is trying to twist patent law – you think that an applicant can summarily insulate himself from a 112 challenge and yet not have that admission count against him in a 103 argument. To the extent that you say “I don’t have to teach this because the art can do X” you’re stuck with the fact that “the art can do X.”

        1. 8.4.1.1

          Enablement != obviousness but the intersection of “non-obvious items” and “items not requiring undue experimentation” by definition is a null set, because otherwise you would have patents issuing for no advancements in the art at all.

          Right. So by your definition, Congress has created a system that is not empowered to issue any patents.

          By your rationale, the entire patent system is a black hole: applicants throw money into the process, and out come rejections – in this case, either 103(a) or 112(a). Nothing is ever allowable. Do I have that right?

          You continue to interpret patent law in bizarre ways that create these kinds of nonsensical results. Probably why “few of your colleagues” understand you.

          1. 8.4.1.1.1

            By your rationale, the entire patent system is a black hole: applicants throw money into the process, and out come rejections – in this case, either 103(a) or 112(a). Nothing is ever allowable. Do I have that right?

            My statement has always been in the context of the specification not teaching the feature in question. There is no set of circumstances where you can provide no teaching and receive a patent. That is not only how it should be, that is how it constitutionally has to be.

            Here is the closest you can get to what you want: It is known how to put A in a pot. It is known how to put B in a pot. It is known how to put C in a pot. When ABC are put together in the pot there are unexpected results.

            Thats the minimal teaching that there must be. You remove the last sentence, teaching the art of unexpected results, and the claim cannot issue. Barring that, you would have to say “Structure C has never existed before, and you couldn’t have made structure C, here’s how you make structure C” as the teaching of how to make C becomes the invention. Or conversely “Nobody knew how to put C in the pot, here’s how you put C in the pot” and that becomes the invention.

            What you definitely cannot do is claim all of the parts were known and the result was predictable, as that is per se obvious. Nor can you say that a part was unknown and you’re not teaching it either, but you want an exclusionary scope covering it, as that is per se overbroad.

            You continue to interpret patent law in bizarre ways that create these kinds of nonsensical results. Probably why “few of your colleagues” understand you.

            Scoreboarding is usually something I leave for anon, but I’ll remind you that pretty much everything I’ve said on this board the Supreme Court eventually says (though in fairness, they go through procedure and oral argument first which is what causes their delay) and then you guys turn around and complain that they are crazy. If I’m crazy, I’m in company with the authority in this area, while it’s my detractors which tend be wandering in the proverbial weeds afterwords. In the meantime, I’ll remind you that what I am saying, far from being nonsensical, is actually the majority holding in this case –

            Mr. Morsa, amongst other things, admitted in the specification that the system as described in the patent “can be implemented by any programmer of ordinary skill . . . ,” thus allowing him to avoid having to teach the public this very concept. Therefore, by using Mr. Morsa’s admissions, the Board simply held him to the statements he made in attempting to procure the patent.

            When you avoid 112 disclosures they WILL be used to tailor-make 103s against you. That IS the law. You’re arguing with me on a point in a blog post reporting on the court directly addressing our issue and coming down on my side, and you’re calling me nonsensical. When there is no teaching of how to do something you either have a 112 problem or you have tailor made anticipation of that feature. And when you have that feature being used in its standard or expected way, you have tailor made obviousness of that feature, ready to combine with any other art for the other limitations. You cannot receive a patent for a feature you do not teach, it will always be a 103 or 112 rejection. It HAS to be that way, logically and constitutionally.

            1. 8.4.1.1.1.1

              My statement has always been in the context of the specification not teaching the feature in question. There is no set of circumstances where you can provide no teaching and receive a patent. That is not only how it should be, that is how it constitutionally has to be.

              As a general principle, I completely agree with you.

              Here’s a story for you, about an incident that just occurred over at… that other IP law site:

              Mark Cuban (he of the so-named Electronic Frontier Foundation “Mark Cuban Chair to Eliminate Bad Patents”) has acquired a patent for a “self-balancing vehicle,” and has threatened suit against Walmart. Interestingly, the novel feature in the claims is this:

              …control logic that drives a first wheel of a self-balancing vehicle toward self-balancing a first foot placement section… and that drives a second wheel of the self-balancing vehicle toward self-balancing a second foot placement section.

              That’s it. It’s a self-balancing vehicle, comprising a control logic that achieves this self-balancing function. No discussion in the specification whatsoever about what that comprises, or how it works.

              Odd, right? – since it’s precisely the sort of claiming that the Electronic Frontier Foundation routinely campaigns to eliminate, and routinely features in its “Bad Patent of the Month” series. And it’s an unusual scenario where I am asserting patent invalidity due to inadequate disclosure, yet the EFF is noticeably silent.

              Surprisingly, it gets worse. When I asked Cuban about the missing disclosure, his answer was: We withheld the algorithm to avoid others from copying it, and we expect that they can’t replicate it otherwise.

              And then he proceeded to rant about how software patentees are abusing the patent system…

              Anyway – back to the discussion:

              I agree with you about the obviousness principle: taking known components, and putting them together in a straightforward way that achieves predictable results, does not confer patent-eligibility. (And that should’ve been the result of DietGoal and PlanetBingo and, well, most of the other 101 cases.)

              But where you and I continue to differ is on the requisite standard for novel components. I go by the current standard – enablement, i.e., detailed enough for “one of ordinary skill in the art to make and use it without undue experimentation” – and you use a much higher standard.

              That’s why we differed so sharply on Biosig: you demanded some dimensions for the “spacing apart” of the electrodes, and I agreed with the Federal Circuit that PHOSITA could readily determine the spacing. (Interestingly, Cuban’s patent also recites wheels that are “spaced apart.” Further embarrassing for the EFF, which took a strong stance on Biosig that they probably now regret.)

              I don’t really do “scoreboarding” either, but this is an area where the law is not moving in the direction that you want.

              When you avoid 112 disclosures they WILL be used to tailor-make 103s against you. That IS the law. You’re arguing with me on a point in a blog post reporting on the court directly addressing our issue and coming down on my side, and you’re calling me nonsensical.

              That’s not the holding of this case.

              The “enablement” issue here was not about Morsa’s disclosure. It was about whether the prior art contained enough teaching to “enable” his invention, as a matter of obviousness. The problem for Morsa was that he inadvertently admitted as much in his own specification, and so the court simply agreed with his damaging admission.

              1. 8.4.1.1.1.1.1

                “Surprisingly, it gets worse. When I asked Cuban about the missing disclosure, his answer was: We withheld the algorithm to avoid others from copying it, and we expect that they can’t replicate it otherwise.”

                I wish there were a criminal statute for this kind of thing. The only thing new other than the mere idea was this algorithm. Yet it was deliberately withheld. He admits it.

                Perhaps justice ought to investigate — there might be something here in terms of the antitrust laws. But, if Cuban ever sues anyone on this patent, it should result in major sanctions.

                1. Mr. Stein pointed this (the fact of the matter that Mr. Cuban’s admission has gutted the patent, or perhaps more precisely, the ability to enforce the patent) out to Mr. Cuban.

              2. 8.4.1.1.1.1.2

                David, also, if you review the Morsa provisional application, it is completely devoid of any details of how to match benefit requests to available benefits. That appears to be the only potentially thing new in the whole specification. But there are no details. In the end, the spec says, do it. The claims effectively claim the idea of doing it.

                101, 112 — does it really make a difference what statute we choose to invalidate here?

                1. 101, 112 — does it really make a difference what statute we choose to invalidate here?

                  Absolutely

                  Hence, Ned, the fingerprints of the Court backtracking and violating what Congress purposefully did in 1952 is evidenced again.

                  Which is worse: what Mr. Cuban did, or what the Court is doing? Verily, it is what the Court is doing, as they have the higher responsibility and higher power and their actions are far more pernicious.

                  Yet, because their actions align with your own desired ends, you simply laud the clothiers’ work as the Emperor parades by in the buff.

                2. Logically all indefiniteness (112) issues should be resolved before the examiner goes onto to look at 101, 102, or 103 issues.

                  If the written description does not provide enablement, the patent application is fatally flawed and cannot be salvaged as is, and possibly a PTAB appeal is in order.

                  If a claim does not clearly specify its metes and bounds, an examiner cannot really determine whether it is eligible under 101 eligibility.

                  Only after the applicant has produced a claim that clearly specifies its metes and bounds can an examiner look at 101, 102, and 103 issues, and in truth, the examiner probably should not look at 102 and 103 issues until 101 issues are resolved.

              3. 8.4.1.1.1.1.3

                Well we’re getting off track here but:

                I go by the current standard – enablement…and you use a much higher standard.

                The way I discuss this is to use a term that the Office uses but I don’t think the law routinely uses. There is “enablement” and there is “scope of enablement.” Now both of those phrases are talking about the same thing, but the former is generally thought about as “can it be done at all” while the latter is saying “can it be done commessurate with the scope you’re asking for.” The office actually has different form paragraphs for enablement and scope of enablement to highlight the requirement of enablement that the full scope must be enabled. This often becomes a problem when it is entirely possible to determine ONE fulfilling criteria, but difficult to determine ALL fulfilling criteria.

                Biosig: you demanded some dimensions for the “spacing apart” of the electrodes, and I agreed with the Federal Circuit that PHOSITA could readily determine the spacing.

                Example: I tell you to write a book about wizards. Can you write a book about wizards? Sure. Anyone can. Certainly the art (of fiction writers) could. Does that mean Lord of the Rings is enabled? What about Harry Potter? If Harry Potter is enabled to one of ordinary skill then how come J K Rowling has all the money? Same thing with, eg, “doing math.” Even first graders can do some form of math, but are they enabled to perform the full scope of acts that mathematicians rely upon to do math? The evidence suggests the conclusion that while every person can engage in ONE OR SOME POINTS within the genus without undue experimentation, the full scope is outside of PHOSITAs power, requiring specialized or mastery level work.

                Thus when “writing a book about wizards” is the novelty of the invention (and perhaps, sometimes even when it is not the novelty but it influences whatever is the novelty) the full scope of the claim is not enabled and it fails enablement because the law is that the full scope of the claim must be enabled.

                That’s what Biosig is – because there were no statements on spacing it was entirely possible to look at a point and find out whether it achieved the functional result. But the claim wasn’t directed to one point, it was directed to all points, with no proof that anyone, least of all the inventor, actually knew if any other points were possible.

                This situation is better expressed by enablement’s partner Written Description, which makes clear that there has to be proof the applicant posited each means within the genus. That’s why Abbvie (see link to patentlyo.com ) and Lizardtech are such important cases.

                By discussing WD you make clear that sure anyone CAN write anything, just like anyone CAN code anything, just like anyone CAN find one spot of cancellation but did THIS GUY think of THIS PARTICULAR WAY?

                WD is, however, a creature of the FC. The Supremes deal with the problem that WD solves by using 101 and 112b. 101 allows the court to say that you’re intending to cover every method of doing something, and you can’t do that. 112b allows the court to say you’re intending to cover something specific but failed to properly limit, and you can’t do that. The combination forces an applicant to claim his particular, disclosed, posited method. 101/112b are a stand in for the FC’s 112aWD (which has never been directly accepted by the Supremes) but they are all more precise methods of talking about scope of enablement – they’re methods of tossing an overbroad scope when the disclosure only supports a subset of the scope. They are the direct result of applicants seeking to overclaim on their disclosures.

                There is only one scope you are entitled to on your disclosure – your described method of doing something and what the art would consider its equivalents. When you don’t describe a method properly you have nothing to claim. When you describe it but then claim anything that performs the same function, you are overbroad to the extent that your scope extends past the equivalents.

                control logic that drives a first wheel…No discussion in the specification whatsoever about what that comprises, or how it works…his answer was: We withheld the algorithm to avoid others from copying it, and we expect that they can’t replicate it otherwise.

                He wrote an invalid patent. Hypocracy is not a scarce resource.

                The “enablement” issue here was not about Morsa’s disclosure…The problem for Morsa was that he inadvertently admitted as much in his own specification, and so the court simply agreed with his damaging admission.

                Ah but therein lies the rub, because if you remove the admission the enablement issue IS about Morsa’s disclosure, because absent that sentence the examiner brings a 112a argument along with his 103 argument, and in defending the 112a Morsa would have to admit or prove prior outside-the-specification enablement, which perfects the 103 rejection. The fact that most examiners are too terrible to make the contemporary 103/112a rejections is the subject of my original post.

  8. 7

    Serious question: what in the world was this applicant thinking when he spent the money to appeal these claims?

    I know there’s a certain class of patent attorneys that could care less (because, hey, the naive client’s money spends just as well as the smart client’s money; grab it fast and run!) but can someone describe the applicant’s awesome “plan” for his dreamy claims to an automated method for comparing stuff with the assistance of a computer?

    It’s 2015 and this claim looks like it was drafted in 1987. If there’s a single patent attorney out there who thinks that a claim like this should be enforceable or even obtainable without an ethical violation and sanctions, I’d really, really love to hear that explanation.

  9. 6

    So am i getting this right? The enablement date for a 102 reference is NOT the date of the reference, but the priority date of the challenged claims? That could have some strange results.

    1. 6.1

      iwt: The enablement date for a 102 reference is NOT the date of the reference, but the priority date of the challenged claims? That could have some strange results.

      Please identify with a bit of specificity two examples of such results that you would find “strange”.

      1. 6.1.1

        Malcolm – pay attention to the fact that iwasthere did state that this is for a 102 reference.

        He is not talking about a 103 combination, which may have a secondary “fill in the gap” reference with that secondary reference having a controlling enablement date.

        The ability to “fill in the gap” for 102 is strictly limited.

    2. 6.2

      The enablement date for a 102 reference is NOT the date of the reference, but the priority date of the challenged claims?

      102 doesn’t use the word reference at all. 102 asks if the invention was, e.g., available to the public before the invention thereof/effective filing date.

      Ex: Ref A teaches how the invention could be achieved if only we could get X to work. Ref B teaches how to make X occur. Ref B postdates A such that A was not an enabled system at its time of publication. Refs A and B both pre-date the invention. The invention is obvious.

      1. 6.2.1

        A 102 reference can be rebutted if it is not enabled – and I used to think – that means within the 4 corners of the reference. If it is not enabled – then it can always be used as a 103 reference. Ergo, the famous, that which anticipates – if later – must infringe the claims. So you didn’t address the question, i.e., is a 102 reference enabled at the reference date or some point later in time, i.e.., the priority date of the challenged claim. This holding appears to mean – enabled at the time priority of the claim.

        As for odd results – its everywhere. Think warp drive (hyper-drive). That is standard scifi stuff now. But of course – not enabled. So along comes the inventor – enabling spec and therefore I claim: Faster than light travel with warp-drive. But then again, i suppose if you said in you spec – that a POSTA knows how to make the warp drive – then you just stipulated away your invention.

        1. 6.2.1.1

          is a 102 reference enabled at the reference date or some point later in time

          A document which presents an idea but fails in some part of it is a valid reference for the non-failing part. A second reference which teaches the failed part is a reference for that part. The combination makes a 103. Your question is non-sensical in that it suggests that the whole teaching is unenabled, which is probably never the case. It teaches some things and fails in others and is good for what it is good for.

          To directly answer your question though – if someone submitted a one-sentence document that was not enabled at the time of its making, it is not a 102. However, if someone else came along and enabled the same thing THAT enablement would likely be a 102.

          i suppose if you said in you spec – that a POSTA knows how to make the warp drive – then you just stipulated away your invention.

          If you said that, your invention was stipulated away regardless of the sci-fi show. In fact, if you say your claim is directed solely to a warp drive and then state that a warp drive preexisted, you don’t even get past the 101 stage, because you haven’t asserted that you made something new or improved. It is invalid as a claim to “a preexisting widget that I did not invent.”

          1. 6.2.1.1.1

            Think about science fiction and that “non-failing” part.

            What (if anything) in the absolute flights of fancy of science fiction is “non-failing”…?

            (Separately, I note with a small amount of satisfaction that Ned Heller seems to be grasping this concept of which I have tried to teach him in the past)

            1. 6.2.1.1.1.1

              What (if anything) in the absolute flights of fancy of science fiction is “non-failing”…?

              Star Trek’s flip-open communicator design is utilitarian, hinge technology was available at the time of its publication, and it was the inspiration for the flip cellphone. The unenabled innards minaturized later. Star Trek renders obvious the flip phone over the standard cell. Moreover, sci-fi almost always provides a motivation to combine by showing the benefit. Google inventions inspired by movies or by sci-fi.

              Visually-ascertainable (or easily describable) features are still features, you know. There’s certainly enough applications today trying to distinguish themselves based upon basic, visible stuff, no reason to short-stick sci-fi on the same basis.

              1. 6.2.1.1.1.1.1

                Incorrectly stated RandomGuy.

                It is NOT the Star Trek design that that renders obvious – but rather the hinge technology that was available at the time of its publication.

                Fantasy remains fantasy.

                Elements within the fantasy are another matter altogether. Do not let yourself become confused.

                1. It is NOT the Star Trek design that that renders obvious – but rather the hinge technology that was available at the time of its publication.

                  Nope, because the command to use the hinge technology in the context of the communicator is itself also a teaching. In fact, according to the federal circuit up until a few years ago, the failure of that teaching to be explicit would summarily defeat an obviousness rejection to the flip cellphone.

                  It is true that obviousness CAN be supported now without the Star Trek teaching (i.e. just a hinge + cell + conjured motivation from the art MAY be sufficient for obviousness) but KSR NEVER said a textual TSM was irrelevant, just that it was not mandatory.

                  Between a video clip or Star Trek or a publication describing a hinge, the Star Trek clip is superior prior art.

                2. The flights of fancy are never stronger than the underlying objective items.

                  Once again, you state your case poorly, and f1ub what I am actually asking of you.

                  Read the exchange again.

                3. The flights of fancy are never stronger than the underlying objective items.

                  The other reference was a hinge reference. The only reference to teach using a hinge with a communicator is in the Star Trek reference. Not only is that evidence, it’s evidence that was of paramount importance prior to KSR.

                  I suspect that because you keep trying to argue strength of evidence rather than if something qualifies as evidence you know that I’m right that non-failing sci-fi qualifies as prior art.

    3. 6.3

      iwathere, I agree. When must one know what he has to know to enable what the reference teaches for the reference to be enabling?

      Is that not a moving target if it is not the date of the reference?

      1. 6.3.1

        I don’t see why that’s so strange. The question with respect to the prior art is not what the authors of the references had in mind or possessed, but is instead what the relevant public has access to at the time of the application at issue was filed (post-AIA). So, the inquiry goes to what those references teach the person of ordinary skill in the art as of that filing date. Sure, the scope of any given reference’s teachings may change, because the background knowledge of the skilled person changes. But so what?

        1. 6.3.1.1

          DanH, read your post with this in mind,

          If at the time a reference is published one of ordinary skill in the art would know how to make and use the invention described in the reference, then the reference is anticipatory.

          If however, that knowledge/skill is learned after the reference but before the filing date of the application or the date of invention as the case may be, then the reference is not anticipatory.

          Think of the transporter. At the time the a transporter is first described in Star Trek, it is not enabled. Let us hypothesize that sometime in the future people of ordinary skill in the art learn how to move matter between locations using wormhole technology. The transporter is now enabled. But I would suggest that it be unfair to say that Star Trek was anticipatory. Rather it was the combination of Star Trek and the later developed technology that rendered the invention obvious.

          1. 6.3.1.1.1

            Eh, the transporter is a bad example, as Star Trek doesn’t really disclose even the basic elements of the technology. So I don’t think it could ever be referred to as anticipatory.

            The space elevator described in several of Arthur C. Clarke’s stories/books is a better example. (I don’t think the basic principles were his idea.) He described it in pretty good detail, with the key missing piece being the exact atomic composition of the hyperfilaments used to construct the elevator’s cable. Once materials having the necessary tensile strength to thickness ratio are parts of the PHOSITA’s standard toolbox, however, I think the earlier “fictional” design specifications for the elevator structure as a whole could and should thereafter be considered anticipatory, even though they weren’t enabled when first published.

            We’re probably arguing semantics, though.

            1. 6.3.1.1.1.1

              Thereafter be considered anticipatory…”

              But, didn’t we just agree that there has to be a secondary reference showing how to build the described, but pure fantasy, transporter/hyper-filaments?

              Even if one is citing an admission in the spec — is not that a secondary source.

              The reference has to disclose all elements of the claim. If a secondary reference is required to show one of them, are we not into 103?

              But, based on the holding of this case, it would seem that proof of enablement at any time before the date of filing/invention is sufficient to turn a reference describing all the elements, but not the ways to make them, into a 102 rejection.

              1. 6.3.1.1.1.1.1

                But, didn’t we just agree that there has to be a secondary reference showing how to build the described, but pure fantasy, transporter/hyper-filaments?

                I don’t think so. Claim 1 of the patent application we’re discussion includes all the elements of the space elevator, including a limitation that the cable is built using hyperfibers having certain dimensions and certain tensile strengths. If hyperfibers meeting those specs are known to the PHOSITA at the time of the application, there’s no need to describe the detailed composition (even if it would be a good idea to give some examples). Now you’ve got a claim that includes exactly the same elements named and described in the old science fiction reference. Why isn’t that old reference anticipating, as of the time of the application, for the same reason that the claim is enabled?

        2. 6.3.1.2

          Sure, the scope of any given reference’s teachings may change, because the background knowledge of the skilled person changes. But so what?

          I think that this is subtly – but critically – incorrect.

          At any point in time, the sum total of PHOSITA is (and remains) fixed.

          A better understanding of that fixed point may be mistaken as if that (fixed) point is changing, but the point itself is not in fact changing.

            1. 6.3.1.2.1.1

              DanH, the item you seem not to understand, the “fixed point” is your own “what the relevant public has access to at the time of the application at issue was filed (post-AIA).

              At the critical date of filing, what “is” will always be “what is.”

              Prior Art as of that date is fixed in stone – frozen in time as it were.

              Now, when you APPLY 102 and 103 you start drawing “circles” around which of the prior art items can be used for which legal effect.

              The legal effect of 102 is different than the legal effect of 103.

              Hence, the line drawing is different.

              Far, far, far, too many people do not grasp this and think (incorrectly) that such decisions such as KSR means that there is no difference in line-drawing between APPLYING 102 and APPLYING 103 – that any AND ALL art that is prior art is free to be “jigsaw-puzzled pieced together” for any 103 rejection.

              That is simply an incorrect over-reading of KSR.

              There is subtlety that should be appreciated here.

              Let’s take a look at the reference that Paul Morgan shared aboe: MPEP 2131:

              2131 Anticipation — Application of 35 U.S.C. 102 [R-11.2013]
              A claimed invention may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is “not novel”) over a disclosure that is available as prior art.

              Note the subtle language.

              The language frames the issue NOT whether the disclosure IS prior art, (as prior art is and remains always prior art); but rather the issue is framed as whether the disclosure is available AS prior art.

              That’s where the line drawing comes in. That’s where the distinction between why the line is being drawn becomes important. Lines for 102 and lines for 103 are drawn for different legal purposes – different means.

          1. 6.3.1.2.3

            anon, I see Newman’s point; but I think enablement is not a 103 issue. That is the takeaway here.

              1. 6.3.1.2.3.1.1

                anon, if the reference discloses all elements, and all are enabled at the time of the invention or filing of the patent, then the reference anticipates.

                That is my takeaway.

                What is yours?

                1. Ned,

                  Your most recent response (6.3.1.2.3.1.1) to my post 6.3.1.2.3.1) has NOTHING to do with the post of yours (6.3.1.2.3) that I was responding to.

                  What exactly was the point in your initial post, and how the H does it tie into your new post?

  10. 5

    Why does anyone post here? It seems to me that what you have is someone that posts the same exact theory over and over again and has seemingly unlimited time to do so (anyone who can actually listen to oral arguments at the CAFC has way too much time on his or her hands) and to respond to any rebuttal.

    I think I’m giving up. It’s fruitless.

    1. 5.1

      someone that posts the same exact theory over and over again

      It’s called “educating the masses”, PB. I wouldn’t have to repeat the same “theories” if there wasn’t a steady stream of students being educated by law professors who don’t (or won’t) acknowledge the facts and issues presented in incredibly important cases like Prometheus v. Mayo. But that steady stream exists. The zombie myths about “no claim dissection ever!” and “prior art has no place in eligibility considerations” continue apace.

      I suggest sticking around and just reading for a while. You might learn something. At the very least, you might learn some other “theory” besides “the Supreme Court is trying to destroy the patent system because Google is paying for it” which is, apparently, the most popular theory at many other “important” patent sites (and a theory that was endlessly repeated here for many years — I don’t recall you complaining about it, however).

      Or you could try to post some thoughts of your own that amount to more than mere whining about what other people post.

      I would miss the laughs, however, if you stopped posting deep insights like this one: “anyone who can actually listen to oral arguments at the CAFC has way too much time on his or her hands”

      I’m pretty sure those oral arguments are made available to the public for a reason. Check ’em out sometime. You might learn something! And there’s always time for learning. There was a particularly entertaining Battle of the Titans in Boston on October 8 (15-1215 PATO Ariosa Diagnostics v. Verinata Health, Inc.; Dark Lord Lemley facing off with Ed “$1000/hr” Reines)

      1. 5.1.1

        It’s called propaganda.

        ESPECIALLY when it so routinely fails to take into account the counter points raised in dialogue, and merely is the blind repetition of your (typical) short script.

    2. 5.2

      “It seems to me that what you have is someone that posts the same exact theory over and over again and has seemingly unlimited time to do so…”

      He’s only spending two hours a week posting here. ;-)

      1. 5.2.1

        It takes only moments to vom1t out something from his short script, especially as he has no “need” for spending any time in critical thinking and honest evaluation.

  11. 3

    This argument seems to work both ways, though…i.e. findings like this may make it easier for applicants to argue that their own specifications are in fact enabling. After all, it should be the same threshold whether we’re talking about prior art references or the applicant’s own disclosure.

    1. 3.1

      Ken: findings like this may make it easier for applicants to argue that their own specifications are in fact enabling

      In which case the obviousness and eligibility problems will easily tank the claim in nearly every instance when the arguments are made by a competent examiner/attorney.

      This is just one of the many squeeze plays that should have been applied diligently by the PTO and the courts for the last quarter century. The correct analysis crushes the typical “do it on a computer!” claim into dust.

      You say you want an enabled, non-obvious and eligible “do it on a computer” claim? Then (1) limit your claim to an specific operating system and (2) limit the claim to the code you are using that actually works on that operating system. Otherwise prepare yourself for the hammer.

    2. 3.2

      “After all, it should be the same threshold whether we’re talking about prior art references or the applicant’s own disclosure.”

      They’re not. The disclosure required by the applicant to enable the claimed invention(s) and the disclosure required by a prior art reference to provide an enabled disclosure are different.

      1. 3.2.1

        Really? Well, now, that seems quite unfair…

        I knew the standard for enablement was different than for obviousness (i.e., person of “ordinary” skill in the art for obviousness, vs. person of any/minimal skill in the art for enablement…hence the common dilemma of certain disclosures being deemed “enough to make X obvious” but not “enough to enable X”), but I didn’t know that even *within* enablement there was a double standard.

        Where is that articulated, and what exactly is the difference in threshold?

      2. 3.2.2

        findings like this may make it easier for applicants to argue that their own specifications are in fact enabling.

        They’re not. The disclosure required by the applicant to enable the claimed invention(s) and the disclosure required by a prior art reference to provide an enabled disclosure are different.

        Ken is right vis-a-vis this case and most cases of enablement.

        1. 3.2.2.1

          Though I should point out that if the prior art teaches one technique for doing something and the claim is directed to doing something generally, you have a scope of enablement issue.

    3. 3.3

      Except that the CCPA (!) established quite a while back that it’s NOT the same standard: prior art is held to a lower standard of enablement than your own application. See In re Hafner, 56 C.C.P.A. 1424, 410 F.2d 1403 (Cust. & Pat.App.1969), and more recently Rasmusson v Smith Kline Beecham, 413 F.3d 1318 (Fed. Cir. 2005).

      1. 3.3.1

        That’s an incomplete statement. It’s a lower standard in that there’s less total stuff to prove because there is no requirement to teach people how to use when citing prior art. It’s not a lower standard for teaching someone how to make. That’s the exact same standard.

  12. 2

    I do feel as if Judge Newman’s understanding of how computer-implementers game the system has improved slightly over the years but she spectactularly misses the boat here. She’s plainly suffering from a bad case of “I Was Born Yesterday” syndrome, that a devastating illness that afflicts susceptible individuals whenever they see “computers” mentioned in a patent claim.

    my colleagues solve this dilemma by finding the missing subject matter in the Morsa specification by stating that since the specification states that a person skilled in the art would know how to “implement” the claimed system, that person would have “knowledge” to fill the gaps in the prior art.

    That’s 100% correct. When the claim describes a pear butter and quince jam sandwich and the applicant’s specification teaches (and nobody disputes) that “making and eating butter and jam sandwiches is popular and easy for the whole family”, the PTO doesn’t need to find a reference that expressly teaches you how to open a cupboard. The PTO also doesn’t need to find a reference that teaches you how get out of bed and put your clothes on. The PTO doesn’t need to find a reference that teaches you how to open up a cupboard. The PTO doesn’t need to find a reference that teaches you how to open the refrigerator door. The PTO doesn’t need to find a reference that teaches how to identify the jar you’re looking for and pick it up off the shelf. The PTO doesn’t need to find a reference that teaches how to move the jar from the shelf to the counter. The PTO doesn’t to need a reference that expressly teaches you how to open a jar. The PTO doesn’t need to find a reference teaching how to find a loaf of bread and identify whether it needs slicing, or how to slice it. The PTO doesn’t need to find a reference that teaches putting butter or jam on a knife and spreading it onto slices bread without destroying bread. The PTO doesn’t need to find a reference telling you how to put the slices of bread together to make a sandwich.

    In a functioning patent system, this decision and its application to the sooper dooper techno universe of “use a comptuter to automate information processing!” (wowee zowee!!) would have been written 20 years ago. Everyone — including the PTO and the CAFC and maybe even the Supreme Court — could have been spared quite a bit of time.

    1. 2.1

      In 1980, the CCPA dealt with a “multi-reference” anticipation in In re Donohue, wherein the compounds in question were named in an abstract but no synthesis was provided in the full paper, and there was ambiguity as to whether they were made. Auxiliary references were cited to show that one of ordinary skill could start with a compound that was made in the paper and make the claimed compounds:

      –Nomura does not disclose a method for preparing either dicarboxylic acid TMBP or dimethyl ester TMBP. However, it does disclose a method for preparing 2,2′,6,6′-tetramethybiphenyl-4,4′-dinitrile (dicyano TMBP). The PTO relies on two additional references, Lincoln2 and Wagner et al.3 (Wagner), to show that a method of making dicarboxylic acid TMBP and dimethyl ester TMBP from dicyano TMBP would have been within the knowledge of one of ordinary skill in the art.4 The board cites this court’s recent opinion in In re Samour, 571 F.2d 559, 197 USPQ 1 (Cust. & Pat.App. 1978), as authority for making this type of multi-reference anticipation rejection. —
      The matter of taking notice of what one of ordinary skill knows is tricky. Some things, as in the above comment, may be painfully self-evident. Some not so. I observed a case wherein a hypodermic needle (no reference given) was taken as prior art to a detailed pressure pump that excluded oxygen. Taking notice of a hypodermic needle?

  13. 1

    Representative claim — and, yes, this is ineligible junk of the lowest order:

    A benefit information match mechanism comprising:

    storing a plurality of benefit registrations on at least one physical memory device;

    receiving via at least one data transmission device a benefit request from a benefit desiring seeker;

    resolving said benefit request against said benefit registrations to determine one or more matching said benefit registrations;

    automatically providing to at least one data receiving device benefit results for said benefit requesting seeker;

    wherein said match mechanism is operated at least in part via a computer compatible network.

      1. 1.1.1

        it’s a database?

        Yes … b-b-b-but this database is storing “benefit registrations.”

        That’s like a totally different … “structure.”

        At least that’s what we’re continually being told here by The Most Important People Ever.

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