Prof. Radin’s Patent Notice and the Trouble with Plain Meaning

By Jason Rantanen

Professor Margaret Radin, who recently retired from the University of Michigan Law School, is a leading scholar known for her work in property theory, contracts law, intellectual property, and internet commerce.  She’s best known to my students  for her articulation of a modern personhood theory of property in Property and Personhood, 34 Stan. L. Rev. 957 (1982).

In her essay Patent Notice and the Trouble with Plain Meaning forthcoming in the Boston University Law Review, Professor Radin offers her thoughts on a topic at the heart of contemporary debates in patent law: the extent to which the words of claims can operate as boundaries that provide the same degree of notice that we expect in the real property context. The abstract reads:

In their book, Patent Failure, James Bessen and Michael Meurer took the position that notice of the scope of a patentee’s property right is usefully analogous to notice conveyed by real property boundaries. In this essay I argue to the contrary that the idea that patent claim language could be rendered determinate enough to justify an analogy with physical fences or metes and bounds is illusory. Patent claims raise the question, in a way that fences do not, of how words “read on” objects in, or states of, or events in the world. I take a small detour through the language theory of Quine as backdrop to my argument that there is no such thing as plain meaning, at least not in situations involving innovative products and processes where there is money at stake. I draw on three landmark patent cases — Markman, Phillips, and Festo — to illustrate this basic point. In my concluding Postscript I bring the big picture into play. The costs of providing better notice, even if that were possible, might outweigh the gains. Plus, even if the analogy with physical boundaries and the commitment to plain meaning were not illusory, such rigidity in interpreting claims would undermine a significant feature of the patent system: the flexibility to reward breakthrough inventions proportionately to their importance.

Professor Radin’s discussion is worth a read for the eloquent way that she captures and synthesizes the raw strands floating around in current discussions about patent claims.

Viewed through the lens of my current projects, though, her essay raises deeper questions about the meaning of claim construction itself.  Over the last two decades, patent law has experienced the emergence of the perception that claim construction is simply the process of interpreting the meaning of the words in the claims.  From Markman to Cybor to Phillips, claim construction grew into a search for linguistic meaning.  Even Teva reinforces this perception, with its focus on the role of evidence in determining the meaning of key claim terms.

But patent law’s dirty secret is that claim construction isn’t just about divining the linguistic sense of words and phrases in the claims.  That’s a seemingly fine inquiry when analyzing questions such as infringement, or anticipation or even, perhaps, nonobviousness.  Yet when it comes to other issues in patent law–enablement, written description and especially § 101–defining the meaning of words is less central to the analysis.   To be sure, sometimes the formalized procedure of Phillips does matter in enablement.  Liebel-Flarsheim and Automotive Technologies offer two examples.  But for the most part, the formalized claim construction that we’re used to is absent from the Federal Circuit’s enablement, written description and § 101 determinations.

Nevertheless, claim construction of a sort is present.  The court articulates something that it uses in its analysis.  In the enablement and written description contexts, I’ve come to call this something a target that must be enabled or adequately described.  What it really is, though, is claim construction–just not in the sense that we’ve become comfortable with.

The Federal Circuit’s opinion on Monday in Bascom v. AT&T Mobility [Download Opinion] illustrates this point.  That case involved a motion to dismiss granted by the district court on the ground that the claims were invalid on § 101 grounds.  (I’ll summarize the facts and holding in more detail in a subsequent post.)  After assuming that the claims were directed to an abstract idea under Enfish‘s statement about “close calls” at step one of the Alice/Mayo framework, the court turned to step two: the search for an “inventive concept.”  Here, the court concluded that the “inventive concept described and claimed in the []patent is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user,” a concept that the court concluded was not (on the record before it) conventional or generic.  Slip Op. at 15-16.  This determination–of identifying an “inventive concept”–is as much claim construction as the linguistic machinations of Phillips.  Indeed, the court even refered to what it is doing as construing the claims: “Thus, construed in favor of the nonmovant–BASCOM–the claims are “more than a drafting effort designed to monopolize the [abstract idea].”  Slip Op. at 17.

190 thoughts on “Prof. Radin’s Patent Notice and the Trouble with Plain Meaning

  1. The comment thread at #19 picks up on the lament by Bessen & Meurer, that Prof Radin summarises as

    “We don’t know how a claim will be construed before a judge construes it, and perhaps not until the Federal Circuit construes it – so how will a firm have notice of its vulnerability to suit if it pursues a particular course of product development”

    The #19 thread ends with Dogberry (my name for the poster who styles himself “anon”) expressing himself “not sure” why I refer to “litigation”.

    I do FTO opinions under the patent law of Europe. They are do-able, at reasonable cost with reasonable certainty. I doubt they are, in the USA.

    There is no inevitability about that. The appeal courts could sort it out, if somebody could explain to them persuasively, how they are the ones making claim construction unnecessarily problematic. But can anybody be bothered, to take on that role? Doesn’t it give domestic US an advantage over foreign players in the US market, to keep claim construction as complicated and vague as possible?

    1. My dear Huckleberry MaxDrei, your laments are indeed colored by “what you do for a living.”

      That is not a good thing.

      You STILL are not recognizing the plain facts here that the file wrapper is every bit as available as the specification, and is – in fact – something that is helpful for your own desired end state of iii).

      Stop.
      Think.
      Try to get out of your own way.

      (focusing on who is pointing this out to you will not let you open your eyes, so the “dogberry” distraction is only and merely that: a distraction)

      1. “every bit as available”, you say. Well, yes, like every leaf of every tree in the Amazon rain forest is “every bit as available” as every one of the other leaves there. It’s just that it does take some time to get round them all, to see what is written, on each one of the leaves in the USPTO file history. Necessary, every time, just in case, on one particular leaf, something is written that changes the complexion of the case, and substantiates the Radin lament.

        Time is precious and lawyer time has to be paid for. By the Clients. Are the courts a branch of the Ministry of Social Services, a work creation scheme for out of work lawyers?

        1. Wow – a plain “Wah, there is too much work” that does NOTHING to address the very disparity in your own position related to ii) and iii).

          No such thing as a free lunch.

          Stop whining.

          1. No disparity, no whining. But there is, I agree, no such thing as a free lunch.

            I also agree with that citation you are always making, about the imperative to avoid over-simplification, as you go about the business of cutting out the noise and reducing complicated issues to their inherent core simplicity and elegance. It is hard. It is a challenge. I do see that. With age-old problems though, it’s best catalysed by importing fresh thinking from outside the box, and applying that to the task.

            1. Your attempts at portraying this as “no disparity” and “no whining” are without a doubt self-serving CR@P.

              Point blank, you are wrong about the file wrapper, and merely want what you are accustomed to, and do not want to admit the fact of the matter that my observation of your ii) and iii) are incongruent with your desire of ease of what you are familiar with.

              And that is some pretty dust you are now kicking up with this “fresh thinking” catalyst. Given that your own viewpoints suffer tremendously from a LACK of “freshness” (your 6 months worth of experience repeated 80 times), your mouthing this euphemism here is rather empty.

  2. I want to download and read the Nadin Paper but before I do, can anybody here help me with a useful comment on the question I write below, a comment that will help me better to assess the usefulness of the Paper.

    The law deems the reader of a duly issued patent to be a person of the art, not a lawyer or philologist. English courts construe a claim by asking what was the claim writer using the language of the claim to mean (to its designated addressee, the person skilled in the art).

    What’s wrong with that way of construing a claim? It must be right, mustn’t it? What could be wrong with it? If something is, which part of it is not right? Which part of it is not understandable, in the USA?

    1. The law deems the reader of a duly issued patent to be a person of the art, not a lawyer or philologist.

      ??? Not sure where you got that MaxDrei.

      The reader is the reader. The legal points concerning application of the law have NOTHING to do with the reader, as reader.

      Different readers carry their own abilities, biases, and levels. Your comment appears to be far too glib and would lead in the absolute wrong direction of “well, I read the claim and this is what that means to me” which – as is plainly evident – is a very real bane to any intelligent and critical discussion of legal points.

      Perhaps you meant that the proper legal meaning of any claim is not dependent on the individual reader (chock full of what that individual reader may bring to the table), but instead is found through an artificial person “reader” – a legal “fiction” of a different “reader.”

      Your last paragraph of questions then – while appearing to be of a rather “duh, no kidding” variety, seem to miss a rather important foundation.

    2. I’ve skimmed through the Paper now. Boy is it a struggle. I’m left with the feeling that i) academics like to make a mountain out of a molehill ii) left unchecked, the courts will go on making the law more and more complex.

      Nadin valiantly takes into account a number of “givens” that the English courts have proven actually aren’t givens at all. In science, advances come when one can screen out the noise and identify the real cause of the observed effect. So too in the law, I would think.

      A doctrine of equivalents is no necessity. Nor is it necessary to have different ways of construing the claim in the PTO and in the courts. Instead, just i) construe the claim “as if the accused infringer had never been born” ii) look only at the patent and not at the PTO file wrapper, and iii) arrive at a purposive construction of the claim, by taking the patent document as a whole, as a coherent document, read the claim in context and ask yourself, “what was the writer of the claim using the language of the claim to mean (to the notional PHOSITA)”.

      In other words, no special rules for patents. The court should construe one just as it would any other document up for assessment.

      If litigators knew that the court will certainly construe the claim in this way, the would-be competitor would be able to find out, as in England, simply by reading the patent, whether its claims are i) valid and ii) infringed.

      1. You are doing that “my soveriegn is good enough so that I don’t have to understand your soveriegn” thing again, MaxDrei.

        A doctrine of equivalents is no necessity.

        Your “feelings” are duly noted.

        1. Just so you know, anon, I did reply on July 3rd to your 19.1 post of the same day. But the Dennis filter has held it back for “moderation”.

          It is beyond my comprehension why. That is why I haven’t bothered to try to out-guess the filter.

          1. Thanks MaxDrei – yes, the filter is troublesome in that way at times

            That being said, I had noticed another item in your post above that is a bit off: your desire for what you are familiar with places your item ii) in conflict with your item iii). If you are aiming for meaning of the applicant, why in the world would you NOT use the file wrapper which – with full effect (and knowing that what is said will have such full effect) of such words by the applicant? And yes, I am talking about the US soveriegn view on this US sovereign discussion.

            1. Why? Here’s an answer.

              Ms Radin is looking at the issue of “Notice”. How can the public best be put on notice, that the acts they contemplate do (or do not) constitute an infringement of the patent they find themselves reading.

              A system that frustrates any efforts to construe the patent till one has read exhaustively through the entire PTO wrapper of every patent application in the family is not helpful to the Notice requirement. Excluding the wrapper serves the Notice requirement better.

              There might be other reasons to hold the patent owner to the letter of what was said to the PTO Examiner, but optimising the Notice requirement is not one of them.

              There is no construction by file wrapper in Europe. But that does not mean that nobody reads the wrapper. Of course if you litigating with the patent owner you read the wrapper, and use it ruthlessly, against the owner. If it says “When I say black I mean white” for example, one will use that in squeeze arguments on infringement, or validity, or both, to win the case and dish the patent owner.

              1. Your “feelings” of “system that frustrates any efforts to construe the patent till one has read exhaustively through the entire PTO wrapper of every patent application in the family is not helpful to the Notice requirement.” simply are discordant with reality.

                What next? Don’t read the specification because that is “extra reading”…?

                No MaxDrei, your want of ease simply means nothing when what is available is accorded meaning and is the very meaning that your iii) seeks.

                This is just another instance where your preponderance of doing things a certain way prevent you from understanding why your “feelings” get in the way of what you say that you want.

                1. Dogberry (if I may call you that) I don’t follow you. But never mind. I’ll continue to develop my point anyway, that being obliged to base claim construction on the PTO file wrapper frustrates the public notice requirement.

                  Take the ubiquitous (but only in the USA) “Definitions Section” of the patent then, the bit where the patent owner acts as her own lexicographer. It declares (to take an extreme case, for the sake of flushing out the point) that when the claim recites “black” it means “white”.

                  Now suppose that this Definitions Section is in the File Wrapper (as opposed to being in the patent specification itself). How (given this litigator-inspired blurring of meaning) are we to construe “black” in the claim? Does it mean “black”? Does it mean “white”? Does it mean “grey”? Does it mean “black or white but not both” or does it mean “not one or the other but, rather, both black and white”?

                  I think the public has a need to know, without litigation, what any given claim means. And without having to wait every time, until the Federal Circuit tells it what the claim means.

                2. Dogberry…?

                  No thanks
                  (Unless you want me to provide my own name for you…)

                  As is, your “wanting” remains immaterial to the disconnect between your ii) and your iii).

                  Sorry, but that is just the way that it is.

                  The file wrapper is every bit as visible as anything else – no litigation required (not sure where that came from).

  3. Posted below in the midst of the 12 series of comments (to which the 14 series is related), I put the following comment to Ned (and it addresses not only Ned, but Random and the larger anti-software patent folk).

    Since the comment is germane not only to the discussions of the 12 and 14 series, but to the larger view of law and history, and to the end of not having this new comment lost below, I repeat the comment here and invite rational discussion of the identified proclivity:

    Conflation can be a difficult trap.

    Let’s take the word “Discrimination.”

    dis·crim·i·na·tion
    dəˌskriməˈnāSH(ə)n/
    noun

    1. the unjust or prejudicial treatment of different categories of people or things, especially on the grounds of race, age, or sex.
    “victims of racial discrimination”
    synonyms: prejudice, bias, bigotry, intolerance, narrow-mindedness, unfairness, inequity, favoritism, one-sidedness, partisanship;

    2. recognition and understanding of the difference between one thing and another.
    “discrimination between right and wrong”

    One of the problems with “hindsight” is that it can be very difficult to either recognize or even once recognized, to remove the effect that hindsight has on human discrimination (“discrimination” used in the sense of the definition 2 above.

    When “judges” (of any kind, including those providing comments on a patent law blog) do not recognize their own discrimination (used in the sense of the definition 1 above), they only too eagerly conflate their views and can – as has been amply seen on these boards – not only get these two meanings (wrongly) interchanged, they proudly pursue the first as if that first was the second.

    Take then this proclivity and apply it to the legal concepts being discussed here of obviousness and 103 (and the apparent lack of concern for those factors discriminating art which is prior and how (and whether) that art may be properly used for the legal purposes.

    People continue to not pay attention to the subtleties involved and want to think that 103 is merely 102 spread out through an (unlimited) number of references – with zero accountability for EACH context that EACH reference brings along with it. The view that any portion (of a reference) once shared, can – with zero error – be made a simple portion of a universal gestalt by not paying any attention whatsoever to the necessary contexts is a prime example of discrimination (definition 1) being used in place of discrimination (definition 2).

    EVEN AFTER other examiners try to point this out, the level of discrimination (definition 1) has that person remaining blinded.

    And further consider how this view of 103 ripples through the other discussions of law. That same person is blinded with his view of the perceived razor thin 103/112 “safe zone,” his view of “predictability” and 103 (yielding the logical end game of patents ONLY for Flashes of Genius or unteachable Oopsie types of inventions), and lastly – but certainly not least – the inability to see how the Act of 1952 carved out (and constrained) from what was a single paragraph pre-1952 the ability of the courts to use common law evolution for defining “invention,” “Gist of the invention,” “patentable novelty,” or dozens of other phrase used for that effect and remove the Court from this area of patent law (because the Court had become SO anti-patent).

    1. That same person is blinded with his view of the perceived razor thin 103/112 “safe zone,” his view of “predictability” and 103 (yielding the logical end game of patents ONLY for Flashes of Genius or unteachable Oopsie types of inventions),

      You’re referring to me of course, and the only response I need, as usual, is “scoreboard”. Nobody cares if you think the rules aren’t being applied properly or that the results aren’t what congress intended. The rules are the rules and they’re what are going to be followed unless there’s an extremely unlikely change in them.

      KSR is less than a decade old, it’s not going to be overruled with no statutory change. The only thing you need for obviousness is a rationale for obviousness. A suitable rationale is that a person who knows of a base reference can apply elements and techniques known to them to achieve the effects they are known to achieve, and they can do so an “unlimited” number of times until a context-specific counterpoint emerges that explains why it can’t be done an unlimited number of times. The fact that the claimed system is just one of a possible million obvious outcomes doesn’t suddenly make that a “hindsight” act, any more than me selecting a car to purchase is an inventive act – choosing from a plethora of known options doesn’t make one a non-obvious snowflake.

      1. “Unlimited times”. Interesting. I hadn’t thought of it like that before. Thanks Random, because I see your line of argument as one that strengthens the legitimacy of the EPO’s “Problem and Solution” (TSM) approach to obviousness.

        1. Strengthen the legitimacy…?

          How Fn bizarre.

          Do you really want to conflate the different sovereigns in such a manner as thinking that US case law reaches into the EP law…?

          Really?

          Come man, grow up.

      2. Your “only response” suffers from two distinct problems Random.

        First, sometimes you simply are not reading the scoreboard correctly. KSR just does not say what you think it does. I have pointed out the use of “may,” which necessitates the possibility of “may not.”

        Second, the scoreboard can be broken. When that is the case and the discussion is about the scoreboard being broken, it is more than just a little mindless to chant your “scoreboard” refrain with ZERO critical thinking.

        Here, once again, you attempt to view 103 in merely an aggregation of 102, and you (again) fail to recognize that you cannot do so because doing so ignores every context from each reference that you simply cannot ignore.

        You have a very basic misunderstanding of the legal concept of 103.

        1. I have pointed out the use of “may,” which necessitates the possibility of “may not.”

          Of course, but I’ve said the “may not” because the “may not” is also the subject of precedent – when the whole is more than the sum of the parts, or the combination creates a circumstance where application of the old is not straightforward (because of some kind of interrelationship) there is a high likelihood of non-obviousness. At a minimum, the existence of a “may not” without any logic or court decision behind it certainly can’t be a very strong argument, and instead you’re treating it like it routinely carries the day.

          Here, once again, you attempt to view 103 in merely an aggregation of 102, and you (again) fail to recognize that you cannot do so because doing so ignores every context from each reference that you simply cannot ignore.

          Again, I don’t. If you can identify a reason why the context change is relevant that is a good reason to say that the modification, while known, is not enabled or motivated. But if you can’t identify a reason then the default reasoning is that it is obvious, because the court has told us that it is rational to apply techniques from one context to another context. “Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one.” “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”

          1. Nonsense.

            I only refer to the meaning of the words actually used and contrast with the imperative that you would have had them use (but they did not use).

            The only “carry the day” is that you are not reading the case correctly. And that’s enough, as that is my point.

  4. One surefire way of making 6 look reasonable – even credible:
    have someone completely inane butcher up basic patent principles like 103.

    1. (6, that’s not to say that I don’t appreciate the time that you have taken on this thread to show Random where he has gone astray – I do appreciate that)

  5. Question for the peanut gallery on obviousness here, re Moore’s statement about 4 references –

    I just did a search for the word bicycle, which returned 307,728 documents. Let’s assume, for the sake discussion, that each of those documents is about a bicycle with some inventive feature (i.e. a bicycle is not mentioned tangentially, this is an invention about bikes) and lets assume that each of the documents describes a unique useful, inventive feature, with no overlap at all.

    Assume I build a giant warehouse, wherein I make and place each of the 307k different bicycles. Then I file an application with a system claim directed to my warehouse comprising the 307k bicycles, each of which is fully and particularly described.

    Assume there exists no greater registry of bicycles, the sole evidence of each bicycle is the previously published document. Collectively, under 103, they would each be analogous to each other such that one COULD cite a 307k reference 103 to reject the claim, and it would take 307k citations.

    Does anyone here think that the system is non-obvious over the 307k references? If so, what is the rationale for that?

    Suppose that someone comes along and compiles an encyclopedia of bicycles, each volume containing 150k bicycles. I cite volumes 1, 2, 3, which cover all 307k embodiments.

    Does anyone think that someone compiling the 307k references into 3 references changed the obviousness of the claimed system?

    Let’s say also that I file a second claim, directed to a particular bike. This bike has a particular improved type of handlebars, chassis, seat, pedal/chain system, tires and a bell. Within the 307k references is a bicycle which has none of these particular improvements (Ref A). Then, 6 other references within the 307k explicitly disclose each of the improvements: Ref B shows the claimed handlebars, Ref C shows the chassis, etc. Assume that each improved bicycle piece functions collectively in a manner that it would individually for the same result – i.e. the improved tires grip the road just as well regardless of what handlebars are being used, etc. Is Claim 2 obvious over Refs A-G?

    I then decide to remove my “base bike” reference, as all my other references have bikes in them as well. Is Claim 2 obvious over Refs B-G? Did the removal of A matter at all?

    Next, I note the art knows of Ref Z, which is a bike which has the exact opposite of the improvements in B-G. Where Ref E shows a pedal/chain system designed to maximize distance and ease of pedaling, Ref Z has a pedal/chain system designed to maximize resistance for stamina-training purposes, etc. Is Claim 2 obvious over Ref B-G+Z?

    I respond to the rejection of Claim 2 by citing 50k other documents. Each of these 50k documents utilize different handlebars, tires, etc. I argue that there are 50k teachings away from combining the elements in the manner claimed. Does that argument carry the day? I also argue that one of skill, after reading all 50k documents, would have no particular reason to choose the elements from Ref B-G as opposed to any other elements within the 50k. In fact, since many of the references explicitly use a different type of tire that is shown to have other benefits, I argue that one of skill would use the more common tire, and therefore it is unlikely that one of skill would choose the Ref F tire to put in the system. That proves that my system is unobvious because an non-Ref F system is actually the obvious one. Does this argument carry the day?

    1. “Then I file an application with a system claim directed to my warehouse comprising the 307k bicycles, each of which is fully and particularly described.”

      As will be mentioned with respect to your post below eventually when I get to responding, these simplistic examples you’re making up do not prove the overall rule that you are attempting to prove, and that is true even if we say that yes you could tots make a 307k ref rejection for “old bikes in a warehouse”. That is because what you are spilling so much ink over is, at best, “an exception” to the actual rule (that plausibility matters in a 103, or like the Gorman court said “you have to use judgement”) or what we’d call “a special case” where plausibility never the less exists because of the absurd simplicity of all of the combinations (i.e. the combo just requires each whole bike to be put in storage). Those kinds of situations are so exceedingly rare in actual examination they’re barely worth discussing. The in real life issue here is that you are thinking that these absurdly simple situations actually arise all the time.

      Also there is a special name for those kinds of rejections but I forget the word off hand.

      And I was also going to tell you in re the post below that yes, you can maybe make a 100 ref BMX bicycle rejection with 100 bike features all in BMX KidsRUs magazine issue 1-200. Again, simplistic examples of the exception do not prove the rule you want it to.

      1. The point I am making is that “plausibility” (whatever that means) is not aggregated or the product of other plausibilities.

        Let’s say that Refs A/B/C/D would literally meet all of the limitations of a claim. You have a view that if there’s a motivation for combining A and B, but that it’s a “close call”, and if there’s further motivation for combining C, but that’s a close call, that by the time you reach D, that close call is too much – the straw has broken the camel’s back. The subject matter as a whole is non-obvious.

        What I am saying is that it doesn’t matter if something is a “close call” or how many times that happens. Certainly you use judgment, but the judgment is only directed toward the question of whether the cited evidence supports a contention that the art was enabled and motivated to make a modification. Once you decide that A/B was motivated, the closeness of that call is irrelevant in further analysis. Correct obviousness analysis is a series of binary determinations. So long as you can keep answering “Yes” to the question of “Is this next modification enabled and motivated?” you can add modifications ad infinitum. Similarly, if your answer is “No” it doesn’t matter whether that no comes during the tenth modification or the first modification, it’s non-obvious. It is not a jenga tower where the first move is easy and the more and more you use obviousness the harder the next standard is to meet.

        The law is that there is no distinction between A/B/C when there is a motivation and ability to combine them versus Ref E, which explicitly combines ABC. If you conclude that A/B/C/D is non-obvious where E/D is obvious, you’re doing obviousness wrong, which is explicitly what you argue for when you say at 12.1.1 that “The more refs you add, the less plausible your combination becomes to have actually been made by an imaginary man.” The number of references has absolutely no bearing on the analysis.

        1. The point I am making is that “plausibility” (whatever that means) is not aggregated or the product of other plausibilities.

          From a purely logical standpoint, your statement Random is simply not correct.

          1. Is that true in all cases anon, or only in cases where there is dependency? Does the plausibility of any one statement necessarily have anything to do with the plausibility of any other statement?

            If you have a one in ten thousand chance of having your plane crash, does safely flying 9999 times mean you can never fly again?

            If the art has a difficult time making a particular modification to a particular element, but you ultimately conclude they probably can do it, does that have any bearing on whether they could make an entirely different modification to an entirely different element?

            1. Not “all cases” need to be shown to be true to bl0w your theory out of the water, Random.

              Your appreciation of statistics is nearly as bad as your understanding of the law.

        2. “The point I am making is that “plausibility” (whatever that means) is not aggregated or the product of other plausibilities.”

          Sure it is. And looking at your example(s) you’ve made up you’ve tried to make them so that the plausibility of each of the 307k combos was 100% (put a bike in a warehouse 300k times) for an ultimate product plausibility of 100% for all of them. That doesn’t normally happen in real life. Usually its more like 90% confidence for the first combo, then 60% confidence for the next combo, and finally after three combos you’re down to about 20% confidence that the combo would be plausibly made by an imaginary, all art in the area knowing, less than expert, man.

          “Let’s say that Refs A/B/C/D would literally meet all of the limitations of a claim. You have a view that if there’s a motivation for combining A and B, but that it’s a “close call”, and if there’s further motivation for combining C, but that’s a close call, that by the time you reach D, that close call is too much – the straw has broken the camel’s back. The subject matter as a whole is non-obvious.”

          In the situation you put forward that is generally a safe assumption to make, yes. Though it isn’t 100% true, it generally is. And further, it is the lawl. And the reason that it is a safe assumption to make is not because the combo magically necessarily went into “non-obviousness” (although that does happen sometimes). The reason is because in that sort of situation you cannot say with over greater than 50% certainty (prima facie case!) that it is obvious. You need to have made a case, at all times when issuing a rejection, that it is more likely than not (<important bro, you gotta hit 51%) that it was obvious. You, on the other hand, are just establishing that there was some remote possibility (1%? maybe .01%?) that it might could have been obvious and then putting the rejection forward.

          See MPEP 2142 Legal Concept of Prima Facie Obviousness

          And also

          link to en.wikipedia.org

          And also the wiki on Legal_burden_of_proof

          Bottom line is that there is a big ol "administrative lawl" grey zone between 0 and 50% likelihood of obviousness (even when all limitations are met and a motivation exists) that can sometimes be hit where the office cannot lawfully proclaim the claim to be obvious, though the office also may not outright feel it would be good to declare it non-obvious either. And it is usually easiest to hit by continuing to make the rejection less plausible by forcing the addition of references.

          And random, yes, apparently this is the legal way the system is setup. It's not so bad.

          1. “What I am saying is that it doesn’t matter if something is a “close call” or how many times that happens.”

            You’re not using judgement if you say that. Sorry bro, that’s what judgement is.

            “but the judgment is only directed toward the question of whether the cited evidence supports a contention that the art was enabled and motivated to make a modification”

            No sir. Re-read that one you cited and a million other decisions with the following in mind. Judgement here means you have to use your brain about the obviousness question as a whole, not just two little sub factors, enablement and motivation. You are the deciderer and the question you’re deciderering is the ultimate conclusion of obviousness, not merely sub-features thereof. Specifically you need to be figuring out if you can say with 51%+ certainty that it was “in the middle of the road” as opposed to, oh idk, 100% certain to be out in the middle of the woods, or 49% likely to be in the middle of the road. And technically that needs to happen before you send the rejection. Not after he responds. That technicality is what can make examiner’s jobs much more ez peasy if it would catch on at the office.

            Once you’ve at least considered my hypothesis put forth here, which I assure you is supported by 10000000% of all the lawlyers on this board and irl, come on back and reconsider what you’ve typed further.

            1. You’re not using judgement if you say that. Sorry bro, that’s what judgement is.

              You’re judging whether the evidence warrants a holding that there is a motivation. That holding is independent of other holdings.

              Judgement here means you have to use your brain about the obviousness question as a whole, not just two little sub factors, enablement and motivation.

              You are doing it about the whole, you are judging every piece – from whether the reference evidences knowledge of an element to motivation to enablement to the same thing with the next element. Once you conclude that the art knew how to do something, however, you don’t turn around and decide whether it could do something else based upon whether or not someone decided to write the known thing down.

              Once you’ve at least considered my hypothesis put forth here, which I assure you is supported by 10000000% of all the lawlyers on this board and irl,

              Funny that you can’t point to a single judge saying what you say. Being in the company of anon on here is a great way to know you’re probably saying the opposite of what the big guns will say.

              1. “you are judging every piece ”

                Yes you have to do each piece, and then at the end you have to use judgement on the whole conclusion of obviousness. That part at the end is the part I’m discussing now with you, which you apparently don’t think exists.

                As an aside (but let’s not get sidetracked) you also have to consider all evidence of record, including the things that indicate it wouldn’t be obvious.

                “You are doing it about the whole, you are judging every piece – from whether the reference evidences knowledge of an element to motivation to enablement to the same thing with the next element. Once you conclude that the art knew how to do something, however, you don’t turn around and decide whether it could do something else based upon whether or not someone decided to write the known thing down.”

                ^This entire paragraph makes no sense to me. I don’t even know what you’re talking about my good sir. But, it is late. If you can reword it more plainly I will consider it.

                “Funny that you can’t point to a single judge saying what you say.”

                I just pointed to one in the very decision you presented, they’re simply speaking language you apparently don’t yet have full comprehension of. I can point to a thousand gazillion more. They’re all saying the same thing all the time, day in, day out. Every single DC judge is literally tasked with this in literally every trial that doesn’t go to the jury. And then the CAFC judges get re-tasked with it when they do de novo review. You can ask them at a conference if you’d like if you really truly don’t believe me. PTOS has one CAFC judge come every year and they always take questions.

                Try these questions on for size:

                Judge X, if there is only a 49% or less certainty that the claimed invention before me would have been obvious on the record before me, should I, as administrative office personnel, send a rejection or not?

                Judge X, if I have all elements present in the prior art, with some elements spread out among different references, and there is a motivation to combine, and it is all enabled, is there necessarily a 100% certainty that it is obvious or do I need to ensure that it would have been plausible to make the combination (and bonus if you ask them if you have to consult all evidence of record including that tending to not show obviousness or outright show obviousness)?

                Judge X, if I find that x, y, z invention would have been nowhere near the imaginary road of obvious technological progress and was instead off in the woods somewhere should I hold that to be obvious?

                Spoiler answer key that you will get from every single last judge on the CAFC:

                No.

                No.

                You need to ensure that it is plausible, but it is likely to be obvious. (and bonus, you need to check all evidence of record).

                To a man/woman. Bet on it.

                Anyway I have program to watch. Also, Random, I know you’ve been at this for years, and you’ve sent a lot of rejections that you’d now have to consider to have at least been a tiny bit sent in err. Don’t worry about that man, just let it be in the past, move forward, don’t be concerned about the past. Frankly even if you or everyone was screwing up the responsibility barely even lies with you or any individual examiner. The fault, in truth, lies with the setup of the office before we even got here, likely before I was even born and you were in short pants.

                1. “Yes you have to do each piece, and then at the end you have to use judgement on the whole conclusion of obviousness. That part at the end is the part I’m discussing now with you, which you apparently don’t think exists.”

                  That is Random Examiner’s biggest stumbling block: he truly believes that all he has to do is conclude that each difference between the prior art and the claim(s) is obvious. Of course, you have to determine whether the claim, as a whole, is non-obvious from the prior art. You can’t just say, “Oh well, that difference is obvious. And that difference is obvious. That difference is obvious too.” That’s what Random Examiner thinks is the law. He’s wrong, of course. But try telling him that.

                  I’ve completely changed my thinking about you based on these posts of yours. You really do get it.

                2. Of course, you have to determine whether the claim, as a whole, is non-obvious from the prior art.

                  Of course that’s true, but when the whole is not more than the sum of its parts you have that answer. As I have repeatedly said – if the art can add a bell to a bike and the art can add a basket to a bike, the art can create a bike with both a bell and a basket *provided there isn’t something about the bell and the basket coming into each others orbit which creates a problem*. If a bell and a basket don’t affect each other (as we all know is the case) then adding the bell and basket simultaneously is obvious, regardless of if that modification is the first or fifth or tenth modification. If the bell + basket does create a significant problem *you have non-obviousness regardless of whether it would be the tenth or fifth or first modification.*

                  You think that because two things follow each other that one is necessarily dependent upon the other – that just evidences your statistics teacher failed you. If I modify the tires of a bike it has nothing to do with modifying the handlebars of a bike. If each modification individually is achievable and the modifications don’t interact, the “as a whole” is per se achievable regardless of the fact that each of the modifications individually had a 51% chance of achievability. You don’t multiply the chances; they’re not related to each other. Again, according to you, each modification has a non-zero chance to fail (after all, its not anticipated) which means that according to you if you just pile up enough modifications you per se have non-obviousness. We have a form paragraph that explicitly tells us thats not the case.

                3. Again, your hypotheticals or analogies, or whatever you want to call them, are so simplistic and disconnected from reality as to make them worthless. I haven’t seen an “aggregation” rejection in 17+ years of practice. That’s because nobody, not even the worst patent attorney hacks, writes “aggregation” claims.

                  Context matters. In the claim. And in the disclosures of the prior art. You clearly don’t understand that with your “always obvious” conclusions. Not even SCOTUS believes some modification and/or combination is “always obvious.” But you do.

                  Go figure.

                4. >>I haven’t seen an “aggregation” rejection in 17+ years of practice. That’s because nobody, not even the worst patent attorney hacks, writes “aggregation” claims.

                  LOL. The reason you don’t get aggregation rejections is because they were banned by Gustafson in 1964.

                5. Bob – check with Random, who somewhat recently posted an excerpt from the MPEP which shows that “aggregation” claims will not be rejected because the MPEP says they are allowed.

                6. Thanks Bob – my mis-read.

                  And thanks for the case as well.

                  Random – your thoughts on this…?

                7. You know my thoughts on this – The MPEP accurately reflects what the federal circuit says, and the federal circuit is routinely wrong. They explicitly overruled Lincoln Engineering on faulty logic that adding limitations to a claim always narrows it. Whether it narrows it is irrelevant, the question was whether adding a limitation allows liability to attach to different people, which is what Lincoln Engineering sought to prevent.

                  If you invent a new bow, and you try and re-claim the act of archery by claiming your new bow in a system with an arrow, and then you seek liabililty under any theory against an arrow manufacturer, you’re violating Lincoln Engineering’s anti-aggregation logic and the supremes will prevent you from recovering because you invented neither an arrow nor archery.

                  Regardless, its off topic as people routinely try and claim aggregations, they just do it under functional language. Alice was an aggregation claim, as are a lot of information processing software claims. The fact that the office makes up a token motivation and just rejects it under standard 103 just means we do a better job of giving deference to our superiors than others do.

                8. Lincoln is a case from what year…?

                  Was 103 even on the books then?

                  Sorry, but your “use” of law here is simply off.

                9. I suggest that you concentrate and get 103 correct first (your propensity to get combinations of law wrong is part and parcel of your inability to understand the basics).

                10. Random, on Lincoln Engineering and 112(b), if you look at the authority relied on by the Court, including the authority relied on in Bassick Mfg., all was it of the type related to the lack of “invention.”

                  And, the specific problem before the Supreme Court were cases for sale of old apparatus for use with the improved part.

                  But the case does sound in 112(b), does it not? Adding old elements to a claim with no new cooperation does tend to hide the ball. Also, one sees a lot of this practice in dependent claims. Do these claims really further limit the claim?

          2. ” you can add modifications ad infinitum”

            That’s true, you “can”, and you can get away with it under the clear error standard (the later part of this is what causes problems in the office, because nobody ever gets called out for it). Indeed, this is what many literal idi ots at the office do and lawlyers cry rivers about constantly. Still yet, the person exercising judgement does not do that, because they recognize the confidence level with which they are making each determination and the determination as a whole is dropping each time they add a combo and irl it eventually drops below 50%, usually well below 50%. Most aforementioned idi ots keep soldiering on with that 1% likelihood of obviousness (because prima facie means nothing to them, they are literally ignorant of the whole concept). But there are other people that just arbitrarily boost the confidence level to 100% for each combo being made, like you are here with this “binary” determination that apparently, least in your mind, yields 100% certainty as each combo is made. This is one of the various methods I know of that are what I call “throwing the rejection”, or you could say “being a di ck”. It’s like reverse “throwing a fight” except for rejections, instead of losing on purpose, you throw the fight for yourself so that you “win on purpose” (because you’re the deciderer remember?). I’m going to go out on a limb here and say that at least 25% of rejections that issue from the office on 103 are solely this.

            1. No you *can* because it doesn’t matter how much the applicant tells the art what it already knows. The applicant has to tell the art something new. There has to be something you can point to to say “the art couldn’t/wouldn’t have done that before.” You’re suggesting that if I just fill up a claim with enough known things that the sheer amount of mundacity becomes innovation. That’s not the case.

              I think it’s very fortunate you’re in chemistry, where you’re probably not really hurting anyone with your misapplication of the rule. If you were in the mechanical arts and you went around with a thesis of “well the art knows how to do all of this but it takes me four references to show it so it must be non-obvious” you’d be allowing all sorts of terrible stuff. I guess according to you I’m an inventor because my phone has a very particular set of distinct applications providing particular features on it, amirite? A single device that initiates phone calls, messages, web browsing, driving directions, games, cameras, banking, ereading, ticket storage, blahblahblah, way too many references, nobody would think of that particular combination, patent please!

              they recognize the confidence level with which they are making each determination and the determination as a whole is dropping each time they add a combo and irl it eventually drops below 50%, usually well below 50%.

              Nope, entirely not the rule at all, and dangerous to think about it this way. You’re preferring textual examples over knowledge in the art. If the art knows how to paint a bus blue, the fact that there’s no anticipatory reference doesn’t mean that modifying the blue bus is suddenly a harder obviousness bar to make. There is absolutely no difference between an anticipated blue bus and an obvious blue bus that could be made when it comes to further modifying that bus.

              1. There is not a single computer being used by a consumer right now that isn’t loaded with enough software and containing enough hardware that if you just claimed the computer sitting there it would take hundreds of references to teach the entire thing. That doesn’t make the computer inventive, just because you or someone else selected a particular set of things the art already knew to claim. Just like you filling your house with a unique blend of items doesn’t make your house a non-obvious system. You may be a special little snowflake, but all you have done is aggregated what was already known. There are undoubtably millions or billions of ways to mix and match computer features. But mixing and matching isn’t inventive. You kind of have to give the art something new.

                1. “There is not a single computer”

                  Yes, you keep coming back to these extremely simplistic examples, consumer computers, consumer bikes, consumer x, y, z. Yes random it’s going to be very easy to make 103s (even multi-ref 103s) in the teacup art compared to the heavy machinery industry.

                  And also that is yet another issue I take with patenting upon compooter programs. Obviousness simply isn’t the same barrier that it is in most arts in the compooter arts unless you start pulling bs rejections. In the compooter arts you just add on another “imaginary” “virtual” or “detect/rule/x” feature or whatever until something doesn’t make sense about the combo and eventually you’ll stumble into non-obviousness most likely. It isn’t always quite so easy in the actual useful arts.

                2. “actual useful arts”….

                  Feel free NOT to use any “compooter” thingie because you consider such “non-useful artsy”

                  That’s the great thing about these things – no one is forcing you to use them. Just whip out your pre-compooter ways and have at it.

                  Unless of course, that won’t do – and then maybe you want to take another gander at your (too) quick-to-put-down topic here.

                  😉

                3. Look anon you can sit around and be all pis sy about this all you want, but even you must note that the barrier is much much lower in the compooter arts than the low barrier that it already is in most arts. Unless the administrative agency takes things into its own hands that is and ahem, applies the lawl with over-much gusto.

                4. 6,

                  You should stick to topics you know and leave out the anti-software philosophizing.

                  First, I am not the one that is being “all pis sy about anything. You must have missed my winky emoticon with my gentle and easy going reminder message. Methinks it was you getting “all pis sy” because my reminder hit the mark.

                  Second, the barrier itself is not lower, let alone “much much lower.” The barrier is the same. You mistake the relative ease of invention for the height of the barrier. In this regard, you are a bit like the other anti-software patent poster Malcolm. Malcolm likes to whine about “G-g-grifters” and the 1%ers and yet is against the form of invention MOST accessible to the opposite class of people. And here too, you seem to want to eliminate those same relatively less well off people from the ability to obtain patent protection for their inventions.

                  Do you have something against the non-wealthy?

              2. “The applicant has to tell the art something new.”

                The app is telling “the art” aka the whole world, to combine those features. Not that those features “can be” combined. But that it is “positively suggested” to be done, as in “do it”. That’s all that the good congress requires as they have set the bar low so that the everyman can get in on the patent action and so that it isn’t only experts/geniooses that ever get a patent.

                “There has to be something you can point to to say “the art couldn’t/wouldn’t have done that before.””

                ^Citation needed.

                “well the art knows how to do all of this but it takes me four references to show it so it must be non-obvious”

                ^That isn’t the determination. The determination is: “well the art ‘knows how’ ‘to do’ all of this but it appears extremely/very implausible that these four references that are required to make a rejection to make a rejection would be combined by a relevant imaginary man so I cannot say with greater than 50% certainty that it is obvious, thus administratively we hold it to be sufficiently distinguished from the art of record as a rejection should legally not issue”

                1. The app is telling “the art” aka the whole world, to combine those features. Not that those features “can be” combined.

                  If the art recognizes it can add a feature to achieve a beneficial effect it is legally the same thing as “telling the whole world to combine those features” because we don’t prefer textual commands to non-textual motivations in an obviousness analysis.

                  But that it is “positively suggested” to be done, as in “do it”. That’s all that the good congress requires

                  This is precisely the opposite of the KSR holding. Telling someone to do something they were already motivated to do isn’t anything inventive.

                  “well the art ‘knows how’ ‘to do’ all of this but it appears extremely/very implausible that these four references that are required to make a rejection to make a rejection would be combined by a relevant imaginary man

                  hahahaha yeah of course something “very implausible” is non-obvious. Your problem is that “knowing how to do” things doesn’t make their doing implausible, nor does the fact that there are four of them make them implausible. I’m not arguing that things can’t be non-obvious, I’m arguing that the number of things you have to do doesn’t matter. You’re being awfully smug for someone who has the MPEP directly telling them that their position is wrong – the number of references isn’t relevant for obviousness.

                  ^Citation needed.

                  Sure, A & P Tea, Sakraida, Anderson’s Blackrock. Old elements for their known functions are not inventive. You might also want to check MPEP 2143.

              3. “You’re suggesting that if I just fill up a claim with enough known things that the sheer amount of mundacity becomes innovation. That’s not the case.”

                Nah, not always. Especially if it is truly “mundane” things going in. Generally if you’re gong to “fill it up” you want to use the very least “mundane” things in the app, so as to have to add fewer (usually one “thing” will suffice if you do this perfectly) and be able to get the applicant to agree to your suggestion. Though yes, sometimes a gaggle of somewhat mundane things can eventually add up. Adding BMX bike addons to a bike is going to take quite a lot.

                1. Though yes, sometimes a gaggle of somewhat mundane things can eventually add up.

                  Perfect, you can handle my iphone claim then. Just let me know how many apps it will take for you to call it non-obvious. Facebook, Weather, chrome, banking app, news app. That could take four references right there, right? I bet I could sue 30% of the populace if you give me that one.

            2. And riddle me this while we’re at it: If I have three references that don’t mention, for example, wireless communication, and the applicant amends to put in wireless communication, am I cheating the guy out of a patent by taking official notice? If the number of references is relevant, why does the office allow for official notice? That’s making a substantive obviousness determination based upon a procedural act. That would be beyond the office’s power.

              1. “If the number of references is relevant, why does the office allow for official notice? ”

                Wow, you’re delusional. If you’re relying on Official Notice, you’re doing it wrong. And any halfway competent practitioner will let you know that.

              2. Look. According to current practice, the number of documents is not a factor. Its just that from the standpoint of practicality and reasonableness, somewhere around the fourth or fifth document it just stretches credulity to dissect phrases out of the context of a claim, find those phrases in different contexts, stitch those phrases together and assert that the claimed subject matter would have been obvious based on that stitchery. Even Martha Stewart would look at one of these 5 reference quilts and exclaim — It’s NOT a good thing.

                1. the number of documents is not a factor

                  somewhere around the fourth or fifth document it just stretches credulity to dissect phrases out of the context of a claim, find those phrases in different contexts, stitch those phrases together and assert that the claimed subject matter would have been obvious based on that stitchery

                  Your first sentence and your second sentence are in direct conflict with each other. If you agree that the number of references is irrelevant, then you have to conclude that the only relevant thing is the specific “stitching” and you can’t make an abstract or general rule. You can’t say that the number of references is irrelevant and then turn around and say “but by the fifth one” irrespective of what the other four stitchings are. It also doesn’t make sense to talk about “fifth” when someone other examiner would say “fourth” and another would say “third.” KSR said it’s an objective test, not a subjective one.

                  The only standard that is both objective (as KSR commanded) and which ignores the number of references and which applies a standard is a test which judges each “stitching” (or modification as I call it) on its own merits – if you conclude that each stitching individually was within the skill then the sum of stitchings is within the skill. It is not rational to say that the art could do each of the modifications individually but not do each of the modifications in sequence unless there is some identifiable problem that arises from the “as a whole” consideration. If you don’t have that rule you’re going to have an irrationality that each of the individual acts are obvious but the whole not being obvious despite the whole not being anything more than the sum of its parts.

                  Again, if you believe the principle that “by the fifth one” or you agree with Moore saying “wow, four references, what do we make of that?” then you necessarily have to conclude that the 300k reference obviousness rejection is per se invalid, as 300k is way higher than 4 or 5, right?

                2. I can say what the policy is then say what is logical and practical. The policy is in conflict with reason.

                  Seen from the other direction, under the rules/policy, an examiner could cite the Encyclopedia Britannica as a single reference, stitch together citations from volumes I, IX and XXI and reject a claim under 102. But, that too would stretch credulity.

                3. In reaching for an exaggeration, you picked up a falsehood. It would not conform with office policy to apply a 102 rejection under obviously disparate entries of an encyclopedia. No need to misrepresent policy.

                4. Great news Bob. Can you cite an MPEP section that says that? I would sure like to have that handy.

                5. I think your best bet would be In Re Arkley.

                  But if you don’t understand that not all embodiments are actual distinct embodiments, you may have little effect making the argument.

                  Combining volume 1 with volume 4 would probably be a 103. But combining article A of volume 1 with article B of volume 4 may not be 103 depending on the specific contents.

                  No hard and fast rules, sorry. Maybe if you’re lucky the CAFC will make one up and it’ll stand for a couple decades.

                6. So then, in what sense is what I said false? An examiner could cite various parts of a single publication, (e.g., the Encyclopedia Britannica) and issue a 102 rejection and I would have little recourse because a literal reading of the MPEP says that’s ok. Furthermore, if someone published every patent and patent application ever written as a single publication, then all rejections could be made under 102 and there is very little that would persuade an examiner that it was improper.

                7. Furthermore, if someone published every patent and patent application ever written as a single publication, then all rejections could be made under 102 and there is very little that would persuade an examiner that it was improper.

                  And with this Les blunders into the correct outcome – How can it be that the patentability of something is dependent upon whether some third party has *re*-printed already-known things in a single volume?

                  The answer obviously has to be that you don’t really consider the number of documents at all. Either someone has expressed a thought before (in which case there’s an anticipation rejection) or two disparate thoughts have been expressed that are motivated to lead to a predictable outcome, in which case there is obviousness.

                  The time when you reach non-obviousness is generally: when the art lacked ability to achieve something it wanted, it lacked a motivation for combining known things, or it had the ability and motivation and lacked a predictable outcome. None of those have anything to do with the number of references or how many “modifications” one makes – it is simply a question of if the art is drawing upon known uses of known elements or if the art needs to be taught something new. If you’re sticking to “known uses of known elements” then you’re doing something obvious, regardless of how many times you do it in a row, and it doesn’t matter a single lick how much evidence you have to cite (i.e. the number of references applied) in order to get there.

                8. Wow Random – you STILL do not get that 102 and 103 have different legal foundations and you STILL want to treat your (undefined) “system” as a 102-like aggregation of 103 items.

                  You really should know this stuff better, given that you are supposed to be examining to it.

              3. “If I have three references that don’t mention, for example, wireless communication, and the applicant amends to put in wireless communication, am I cheating the guy out of a patent by taking official notice?”

                Official notice depends on the context/art we’re discussing, but you shouldn’t really be “relying” on official notice. If you’re going to take official notice of a fact and use it in a 103 then it better be of something which, in the specific art at hand is pretty wide-spread and well known in a very general context. And generally I suggest only doing that for depending claims just as a matter of prudence (because no patent would be issuing anyway as the OA would still issue).

                Though, no, the office (and especially “you” in specific) isn’t “cheating” people out of a patent when they issue a rejection. Office personnel operate at x level of proficiency that is their own personal level of proficiency and make their determinations as well as they can at their level of training/experience. When office personnel issue a mistaken OA it isn’t “cheating” someone out of a patent. It will, by and large, just be a run of the mill non-clear error made by an admin agency for which there are a million remedies. First and foremost of which is appeal to the signatory and then spe. If however you find yourself in one of those positions I strongly encourage you to temper your determinations on behalf of those cases you are signing for.

              4. “If the number of references is relevant, why does the office allow for official notice?”

                It’s only supposed to be used sparingly for things that are genuinely widely known.

                “That’s making a substantive obviousness determination based upon a procedural act. That would be beyond the office’s power.”

                Welcome to why a lot of attorneys QQ a river about it. Still, admin agencies have power, and arguably do have the power to take note of facts around it. It’s controversial.

                1. It’s only supposed to be used sparingly for things that are genuinely widely known. Welcome to why a lot of attorneys QQ a river about it. Still, admin agencies have power, and arguably do have the power to take note of facts around it. It’s controversial.

                  See this is a great example of why non-attorneys can’t argue with attorneys, because you don’t even appreciate the issue. It’s not “controversial.” If what you are saying is right, the office would be acting in a blatantly unconstitutional manner, because the office cannot override Congress’ statutory command by promulgating a procedural workaround.

                  There’s a reason some decisions are petitioned while others are appealed. There’s a reason why the PTAB is given no legal deference and the Director has virtually unlimited deference. These aren’t odd quirks of the system. It has to be this way.

                  If the number of references impacted the obviousness analysis in any way, the office would not be allowed to control the number of references cited in a rejection by taking official notice. Because *that is not the case, and the law is clear that that is not the case* the office is free to take official notice as a procedural matter.

                  The office can generate its own procedure, it cannot write law. Attorneys may “QQ” about official notice the same way they might “QQ” about RCE fees going up, but there is absolutely no controversy about official notice being constitutional, because everybody knows the number of references doesn’t affect obviousness. That’s why the MPEP outright says the number of references isn’t an argument against an obviousness rejection. Not “this is a bad argument because its generally not persuasive” but not a justified argument at all. You are literally not allowed to be persuaded by a number of references argument. That’s why the question by the judge and your entire argument is ridiculous – they’re premised on the idea that what the MPEP and the courts specifically say is not the law is in fact the law.

                2. What are you babbling about? Since when does official notice have anything to do with number of references?

    2. “Does that argument carry the day?”

      That is up to the judgement and wisdom of the decision maker.

      This is not engineering where X (old) + Y (old) + Y (motivation) ALWAYS = obvious. This new thing called thinking rationally and exercising judgement enters the picture. Like the good Court you cited below instructs (even though they affirmed that very particular rejection).

      1. 6,

        I think that you have (subtly) hit on one of Random’s favorite Windmills [obv=f(predict)] with:

        This is not engineering where X (old) + Y (old) + Y (motivation) ALWAYS = obvious.

      2. You understand that there is case law that unequivocably states that adding Y for its known function is always obvious, right? So long as Y(motivation) is a true motivation (i.e. the art thought that doing Y would achieve a benefit and in fact doing Y achieves the benefit) the answer is Yes, X(old) + Y(old) + Y(motivation) always = obviousness. You can’t receive a patent for failing to add to the sum of knowledge.

        1. “You understand that there is case law that unequivocably states that adding Y for its known function is always obvious, right?”

          They can state that until they’re blue in the face, KSR done blew their tiny little house right down.

            1. KSR does not say that brosefus. I can sit and quote for half and hour and so can you but they never say it is “always” obvious. The whole decision is quite literally about freeing up judgement to be able to be made free of the arbitrary constraint that was previously put on it by the CAFC.

                1. Except patentcat, Random is getting it wrong, as abundantly noted throughout this thread.

                  So let me repeat a point here:

                  People continue to not pay attention to the subtleties involved and want to think that 103 is merely 102 spread out through an (unlimited) number of references – with zero accountability for EACH context that EACH reference brings along with it. The view that any portion (of a reference) once shared, can – with zero error – be made a simple portion of a universal gestalt by not paying any attention whatsoever to the necessary contexts is a prime example of discrimination (definition 1) being used in place of discrimination (definition 2).

                2. RGS hypothetical seems to be in the context of picking and choosing known improvements that do not conflict with each other, each in the same art, with the same context.

                  In this case, number of references doesn’t matter.

                  Yes, 103 isn’t 102 with unlimited number of refs.

                  Nobody is saying that.

                  What RG is saying is you simply can’t add known non overlapping/interacting improvements for a base article and have the result be patentable. E.g. a bike with a basket bell, etc. Is obvious no matter how many such whistles you add, as long as they do not conflict.

                3. Except patentcat, Random IS trying to say that with his own overbroad application of his stilted example to be some type of universal decree – exactly the wrong 102/103 conflation that I am pointing out.

                4. (…that “as long as” caveat IS a rather fine gloss – and IS the context of EACH individual sub-piece that necessarily comes along for the ride in his aggregated “system” (a “system” that he has yet to truly identify, and is most likely misusing what that term means)

            2. 6 is correct – Random you want to you the declarative and “ALWAYS MUST” when even the Supreme Court couched their terms in “likely” and “may” – which necessarily includes “not definite” and “may not.”

    3. I admit to no having slogged all the way through that. But I think I read enough to respond by saying :

      Yes, it would not have been obvious to one of merely ordinary skill in the art to build a bicycle that includes the 307,000 distinct feature of 307,000 different bicycles, if only because the resulting bicycle would weigh 52,437 pounds and 42 of the distinct feature for 42 of the bikes is the location or shape of the water bottle carrier and a bike with 42 water bottle carriers would not have been obvious.

    4. Then I file an application with a system claim directed to my warehouse comprising the 307k bicycles, each of which is fully and particularly described.

      I need more details on that system claim of yours.

      What exactly are you doing with that “system”…?

          1. Thanks Les, but I am hoping for an answer from Random.

            A “system” for mere storage is going to have tons of proper prior art for the 103 question, and I was (hoping) that Random’s question was a little more “meatier” than that.

            1. All I am attempting to do is test 6’s statement that “The more refs you add, the less plausible your combination becomes to have actually been made by an imaginary man.”

              Certainly 307,000 is a sufficient number to find it non-obvious, right? If 307,000 isn’t enough to render it non-obvious, then surely the conclusion must be that the number of references is irrelevant, isn’t it? I want to know why Moore’s aside about the number of references being cited has any bearing whatsoever in thinking about obviousness, as I suspect Moore mis-thinks just as 6 does.

                1. Random,

                  This is the second time that YOU are playing cute with a reference to “system” while not bothering to say what that “system” is.

                  The loss in accuracy is for you. You keep on arguing from some super-stylized idealistic place with the caveats “of course that’s understood,” except you YOURSELF are not understanding them or taking them IN CONTEXT, and instead it is you that is trying to look at this from a NON-PHOSITA version of the entire world of art that previously existed in a 102 sense.

              1. Random – your attempt fails.

                You have used the word “system” and I really doubt that you have a sense of what that word means.

                The mis-thinking is on your end.

    5. Somewhere along the line here a “the number of documents does not matter” line of thought has sprung up.

      One clearly important fallacy to this line of thought is that if in fact the number of documents do not matter, then the only difference (at all) between 102 and 103 would be that selffsame (not mattering) number of documents.

      HOWEVER, that is simply not true.

      And this cannot be somehow “made to be true” by some “magical treatment” in piecemeal fashion of each small thing – from separate items (each with its own context) into the single “warehouse” of all small things.

      Not looking for any replies – this is more for certain people to take a step back and contemplate why this is so (and that this BEING so, what does that portend to the attempted hypotheticals here)

    6. “Does anyone here think that the system is non-obvious over the 307k references? If so, what is the rationale for that?”

      You have to love the way these hack examiners try to shift the burden so they don’t have to do any work.

      1. Rationale: The fact that 307k (or even 307) references are required indicates an implicit teaching in the art against combination of such references.

  6. Has anyone proposed the idea of an optional registration system for a specimen of the invention (if available) at the Patent Office in which the applicant declares that the specimen is in-fact a non-limiting example of claims X-Y of patent Z? This sounds insane, but perhaps it could serve as a guidepost for what IS within the claim scope – as admitted by the applicant. It would also provide defendants or members of the general public with additional notice and perhaps even help to invalidate the claims, at least with respect to prior that is similar to the specimen.

    1. …because a voluntary program that can only hurt a patentee will be eagerly embraced by patented….

      No. No one has proposed such a thing (and probably for good reason).

  7. To the extent that the premise is true (the premise being that claims do not do a good job of defining metes and bounds with certainty and reliability), I suggest that some of the constraints on claiming make the construction job harder.

    The main one is the requirement that claims only be one sentence. This hoary rule forces otherwise good writers to write run-on sentences and try to conform to “because we always did it that way” thinking, rather than seek clarity.

    The claim format we have today originated 150+ years ago, and in the meantime the modes of communication available to most communicators have been augmented considerably, adding CAD, video, audio, etc. But we are prohibited from using any of these new technologies to help define an invention in a patent claim. I am not sure that they will be helpful, but creative scriveners (despite Scotus’s denunciation of them) can probably come up with useful ways to use those tools, if allowed.

    1. Silicone, claims existed from the time patents were first granted, and that goes back to at least 1600, if not earlier. What was new in 1836 was examination.

      1. Claims such as “as herein described” cannot be treated at the same level of today’s claims Ned.

        I think your answer shortchanges the concern expressed by SVG.

        1. anon, agreed.

          And, may I add, I wish to thank you for being so respectful and polite in discussions. I really appreciate it even if we do not see eye to eye.

          Given my time constraints, I cannot even read all your posts, let alone respond to them. My apologies.

          1. While I recognize that I post a lot – you as well post a lot.

            If you cannot be bothered to read, understand, acknowledge and integrate the counterpoints raised, may I suggest that you save some time by not posting the same initial tripe that you blanket the threads in time and time again? The “excuse” that you want to use is just not accepted. There is no excuse from your run-away tactics on points that you merely find “inconvenient.”

    2. Agreed. I for one could make claims clearer if I could use hash tags, emoticons and emoji. :-p~~~~~~~~~~ @))—‘—;—‘—;—

  8. “But for the most part, the formalized claim construction that we’re used to is absent from the Federal Circuit’s enablement, written description and § 101 determinations.”

    That would be too much work for the judges. Easier just to wave the magic wand and be done with it.

    Here’s an excerpt of J. Moore questioning some hapless assistant/associate solicitor from the PTO about a 4 reference obviousness rejection (which J. Moore claims to have never seen come out of the PTO; you need to get out more, your honor). She’s clearly pretty skeptical about whether such a rejection is proper. But she joins in a Rule 36 affirmance anyway. She alludes to the “generous standard of review” but, meh, I think she was just too lazy to write a decision reversing the rejection. (And a newsflash for you, your honor, the standard of review for questions of law, e.g. obviousness, is de novo. In other words, no deference.)

    link to 717madisonplace.com

    1. about a 4 reference obviousness rejection

      What a terrible question anyway, as if the number of references has any relevance whatsoever. The MPEP has a form paragraph for just such a question, because its not even an issue.

      Either one of skill knew of stuff and had a reason to do it or they didn’t. It doesn’t matter if it takes you two references or two hundred to build the evidence pool, the only question is if the difference is an obvious difference or not.

      1. “What a terrible question anyway”

        The more refs you add, the less plausible your combination becomes to have actually been made by an imaginary man.

        1. The more refs you add, the less plausible your combination

          No, it’s not. The number of references is irrelevant, the only thing that matters is what is said. We’ve had this discussion before. Obviousness is not a function of some sort of percentage-chance product rule, where each time you add a reference the sum drops a little bit until it passes some sort of theoretical line.

          A person of skill doesn’t recognize “references,” a person of skill has prior art knowledge. “References” are evidence as to what that pool of knowledge is. If a person of skill knows that you can mount a bell on a bike, and they know that you can mount a basket on a bike, and that you can put handlebar tassles on a bike, and can add a racing flag to a bike, it doesn’t matter one single bit if that knowledge comes from a single document or ten documents or one hundred documents.

          If I claim a bike with a bell, basket, tassles and flag, the obviousness analysis is exactly the same whether one inventor in one document says “I have considered these four embodiments: a bike with a bell, a bike with a basket, a bike with tassles, and a bike with a flag” or whether four inventors in four documents each consider an embodiment. The person of skill is all of the inventors merged anyway.

          Once we know the phosita knows of the four bike features, a claim to the four bike features together is obvious so long as a motivation exists for adding each of the features. There’s no “plausibility” of the claimed subject matter that gets more and more tenuous the more modifications you add. If there exists a motivation for the modification, the modification is obvious. If there are four modification motivations, the system modified four times is obvious. The same is true if there are one hundred motivations. There is absolutely no difference from an obviousness analysis standpoint whether you cite Ref A teaching bike+bell+basket or Refs B/C, where B teaches bike+bell and C teaches bike+basket so long as there was a motivation and ability to combine B/C. The only difference is that Ref A is 1) aggregating information, which is a built-in feature of the phosita and 2) textually explicitly motivating the combination, which has not been a requirement since KSR.

          Similarly, when there’s no motivation or enablement, there’s an invention regardless of if that lack occurs at the tenth or fourth or second reference. It’s not difficult – if the art had a reason and the ability to do something, and what results from doing it is what the art thought would happen, there is no teaching and the applicant is not an inventor. When the art lacks motivation, enablement or a predictable outcome and the applicant teaches the art something by providing that missing piece, the applicant is an inventor.

          Now a person challenging a claim can certainly screw up – One might assume a motivation or enablement exists when in fact none does (e.g. in more complicated systems it might be that when the “bell” and the “basket” are brought into orbit of one another one behaves differently than it would alone) or might misconstrue what a reference means (and therefore lack evidence to prove their reasoning) and therefore the more references you add the less chance it is actually obvious because you, as a person, have a non-zero chance of screwing up every act you take. But there is no mechanism by which a fact finder can say negate all of the knowledge, enablement and motivation in the art by some sort of subjective viewpoint that “its gotten too implausible to apply it.” If a rationale is put forward and there is no error in that rationale, the subject matter is obvious.

          In re Gorman, 933 F. 2d 982 – Claim rejected as obvious in view of 13 references upheld. Deere commands when it is proven that sub-elements all preexisted in same configurations for same functionality achieving same results, claim is obvious. Number of references used absolutely irrelevant to the inquiry.

          1. “A person of skill doesn’t recognize “references,” a person of skill has prior art knowledge. “References” are evidence as to what that pool of knowledge is.”

            In reality, this cannot be true and even a half-brained kid would know this cannot be true.

            The level of skill in the art varies, but the prior art is determined by the technology and problems. This disconnect between the person of ordinary skill in the art and what that person would actually know in the relevant prior art is, to me, a flaw in 103.

            In reality, we always take the level of skill element out of the equation and put it into the trash. The requirement of 103 to determine a level of skill in the art makes no sense in reality although it sounds good when you read it in print.

            Recall that in Hotchkiss v. Greenwood, the Supreme Court found that it was known to at least some with ordinary skill in the art that clay knobs were useful as doorknobs. The clay was functionally identical to other materials with respect to the mechanical elements of the claimed knob, which were old. Therefore the court found the combination to be the work of the ordinary mechanic.

            Putting the test of this case into the statute should have been straightforward. However, somewhere we got into our brains that the legal requirement was “obviousness” when the test really was whether the functionality was known to least some with ordinary skill in the art.

            Now for my experience, we actually use the Hotchkiss test in day-to-day practice because we never actually bother with a determination of the level of ordinary skill in the art. That is completely irrelevant. And furthermore, as any half-brained kid would know, anybody who had total knowledge of all references within a field is not one of ordinary skill, but an expert.

            1. That has to be the most bizarre rendition of obviousness yet.

              The easiest way to remember this “prior art” situation is to first recognize that just because “art” is “prior” does not make that “art” into legal (note the terrain) “prior art.”

              EVERY piece of art that is prior is legally “prior art” for the legal concept of 102 novelty.

              That just is not the same for the legal concept of 103 obviousness.

              This distinction is critical for the legal understanding.

              The plain matter of fact that seems to go over people’s heads is that there very well can be “known” art (known in the non-legal sense) that cannot serve for a 103 purpose.

              First and foremost, THAT concept in and of itself needs to be recognized and understood.

              After accepting that concept, and only after accepting that concept, can the notion of what discriminates and determines what art that is prior may serve as the “prior art” for the legal 103 obviousness analysis.

              Far far far too many people attempt to treat “prior art” for 103 and for 103 as if there was no difference.

              There is.

              Pretty sure that this legal concept is not even fully grasped by the Supreme Court (and is one of the reasons why we tend to experience the Broken Scoreboard situations).

                1. Almost correct Ned.

                  The lead in was to you. Your version here is just bizarre.

                  The rest is a general comment and applies to all (and certainly to Random, who seems to occupy his own special universe, somewhere between the “nothing is really patentable Reject-Reject-Reject Office training and the realization that there is a law written outside of the Office training manuals).

              1. “anon” EVERY piece of art that is prior is legally “prior art” for the legal concept of 102 novelty.

                That just is not the same for the legal concept of 103 obviousness.

                Where is that in the statute?

              2. EVERY piece of art that is prior is legally “prior art” for the legal concept of 102 novelty. That just is not the same for the legal concept of 103 obviousness.

                Well of course subject to these limitations, that goes without saying anon.

            2. the prior art is determined by the technology and problems

              The prior art is indeed determined by the technology and problems, but the knowledge of a phosita is aggregate. If Ref A notes that a problem of their bike is that it can’t carry books but Ref B knows of a bike with a basket, and one of skill would recognize that the basket solves the carrying problem, the phosita does not have a problem carrying books on a bike regardless of what Ref A says. That was an exact issue in KSR – Ref B didn’t textually recognize it was solving Ref A’s problem, but it did. The CAFC said that B wasn’t concerned with A’s problem, but the Supremes didn’t care, they only cared that the art knew of B and would appreciate its value.

              Starting with a “base machine” and then making modifications to it may simplify the analysis and how one discusses it, but the obviousness analysis is not cabined to that approach. The only requirement is that you give a rationale why it is obvious, based upon the knowledge of the phosita prior to the instant filing, which is evidenced by references. If one person wants to cite a complicated machine like a computer, and another person wants to extrude the computer and cite each individual component and give a reason why they would be combined in a computer configuration-manner, the fact that the former used one reference and the latter used thirty has no bearing whatsoever on the further analysis as they have both demonstrated the same prior art knowledge: The art knew how to make a computer.

              1. “but the knowledge of a phosita is aggregate.”

                ^Citation needed.

                But beyond a citation being needed, even if we can say it is “aggregate” you’re reading too much into “the knowledge” being “aggregate”. You’re doing this at least two ways that I can see in this one thread. You’re taking x sub-feature out of the context of the larger whole workpiece/assembly/whatever larger device that it is a part of, and considering that x, now divorced from its context in which it was disclosed in an actual ref, “part of the aggregate” that the imaginary man “knows”. That isn’t good bro. Your making the “pool of knowledge” too magical. You’re making it a “magical pool” instead of a “realistic pool”. Second, you also seem to be thinking that the imaginary man’s knowledge crosses the boundaries of analogous art. Also, not good.

                Doing this, and a few other things, appear to be leading you down all kinds of bizarre paths where you start thinking things out in “the middle of the forest” are “tots obvious”.

                “Ref B didn’t textually recognize it was solving Ref A’s problem, but it did.”

                Yes but they established that with EVIDENCE in a TRIAL. Which you generally are hamstrung from doing in the office unless the perfect piece of evidence falls in your lap.

                1. ^Citation needed.

                  Application of Winslow, 365 F. 2d 1017, 1020; “Section 103 requires us to presume full knowledge by the inventor of the prior art in the field of his endeavor.”

                  You’re taking x sub-feature out of the context of the larger whole workpiece/assembly/whatever larger device that it is a part of, and considering that x, now divorced from its context in which it was disclosed in an actual ref, “part of the aggregate” that the imaginary man “knows”.

                  By definition knowledge of the whole means knowledge of the parts. As I say, it is true that a part may function differently when placed in another context, and that may lead to a lack of or improper motivation, or it may lack enablement in some other context but then you have a missing motivation or enablement. What you can’t have is knowledge of the part, a proper motivation and ability for using it, and then conclude that obviousness isn’t met anyway. If I know of something that achieves a benefit, it’s obvious for me to use it.

                  Second, you also seem to be thinking that the imaginary man’s knowledge crosses the boundaries of analogous art. Also, not good.

                  Nah, clearly it has to be analogous, that’s a given.

                  Yes but they established that with EVIDENCE in a TRIAL. Which you generally are hamstrung from doing in the office unless the perfect piece of evidence falls in your lap.

                  What do you think references are? If Applicant claims AB and the art had a motivation for adding B to A, then AB is obvious. The fact that the applicant is doing AB for one reason and the prior art would do AB for another reason is irrelevant, because motivations different from the applicant’s are permissible. Not only does that regularly occur, but we have a form paragraph for differing motivations being irrelevant.

                2. ““Section 103 requires us to presume full knowledge by the inventor of the prior art in the field of his endeavor.””

                  Nothing in that says anything about aggregating or an aggregate. He does have “full knowledge” in his field.

                  That said, what is important for you here is that he doesn’t have “piecemeal” knowledge of every single sub-feature in his field (or an “aggregate” thereof), and he especially doesn’t have such knowledge of every sub-feature divorced from the context of the reference which serves as evidence for that feature (lets call this the “context of the secondary ref as a whole”). And that’s something you rely on the imaginary man having when you make your 100% certainty “binary” mini-step obviousness conclusions for multi-ref combos. I’m very familiar with the process, take x out of secondary ref B and divorce it from the context of ref B then stick into ref A and proclaim this combo 100% obvious! Repeat the process for limitation C D E etc. Weeee! Without that piecemeal knowledge of every sub-feature of the prior art, that kind of “100% certain” rejection cannot happen in 99.9% of combos irl, because the context of ref B drags down the certainty. And utilizing that procedure of coming to 100% certainty is illegal technically speaking.

                  “By definition knowledge of the whole means knowledge of the parts.”

                  But not knowledge of the parts DIVORCED from the whole. Which is what you’re relying on to get your 100% certain obviousness determinations.

                3. “As I say, it is true that a part may function differently when placed in another context, and that may lead to a lack of or improper motivation, or it may lack enablement in some other context but then you have a missing motivation or enablement. ”

                  Those are separate issues, but yes they exist also. There’s a thousand and one issues in 103, not just 2.

                  “What you can’t have is knowledge of the part, a proper motivation and ability for using it, and then conclude that obviousness isn’t met anyway.”

                  It’s rare, but not completely unheard of. But what we’re discussing here is knowledge of 2+ MISSING parts that can only be found in separate refs. That’s a whole easier ball park to fail to find obviousness in.

                4. “What do you think references are? ”

                  For one thing, references that talk about the problems that are being faced in an art that come in handy are one big thing: rare. Which is why they had to use other evidence at trial in KSR.

                  “If Applicant claims AB and the art had a motivation for adding B to A, then AB is obvious.”

                  Again we’re not really talking about AB. We’re talking about ABCD where B-D aren’t known in the primary and we need like 3 extra refs or whatever.

              2. Random, I still think that the level of skill in the art is substantially irrelevant. What a POSITA personally knows or what they do not know irrelevant — which is why the level of skill issue is phony.

                All one needs to focus on is the technology involved and the problems addressed by the invention. If the art demonstrates that elements A-B were known to be combined in the field, that element C was known to solve the alleged problem the invention is trying to solve, then it would be the work of the ordinary mechanic to combined them to produce C. The only rebuttal would be that workers in the one field would not look to the field of the secondary reference for a solution. The secondary reference (C) itself was probably found using the claimed invention as a roadmap — hindsight.

                In your example of the bike and the basket, the simple combination of the two would be legally obvious. However, if the way the inventor added the basket to the bike was new, then we might have something.

                1. Ned – level of skill of PHOSITA substantially irrelevant?

                  Not sure if you mis-typed or if somehow you really believe that…

            3. I hope you did not mean to imply that Hotchkiss is bad law: Hotchkiss v Greenwood is still good law. Using Westlaw’s CaseCheck, there is ONE negative reference: Distinguished by Procter & Gamble Co. v. Paragon Trade Brands, Inc., D.Del., December 30, 1997. Against that KSR says: “Yet the principles laid down in Graham reaffirmed the “functional approach” of Hotchkiss, 11 How. 248, 13 L.Ed. 683.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007).

              I don’t think there is any legal model that well-describes how we determine whether someone could take disparate pieces of information and assemble them into the claimed invention. If anything, KSR’s more-or-less description of whether a brute-force approach would work is an effort at that but too limiting.

              The real problem is the reductionist one where you take an invention from the world, put it in a specification (one level) and then take another approximation in separating the invention from the rest of the world (second level). Expecting that to be reasonably accurate without looking at the original context is absurd. But that is what we do. But justice is rough in other fields as well.

              1. Erik, what we do know that with hindsight everything seems obvious. So with obviousness as the legal standard, we truly need a legal test that is all but hindsight proof.

                The trend in the Federal Circuit to require a demonstration in the prior art itself that the problems addressed by the patent were known provides at least one such barrier. Without a demonstration that the problem is known in the prior art, the reconstruction of the prior art by looking at the patent claims or the specification will almost always result in a determination of obviousness so long as the references can be found showing all the elements.

                1. Conflation can be a difficult trap.

                  Let’s take the word “Discrimination.”

                  dis·crim·i·na·tion
                  dəˌskriməˈnāSH(ə)n/
                  noun

                  1. the unjust or prejudicial treatment of different categories of people or things, especially on the grounds of race, age, or sex.
                  “victims of racial discrimination”
                  synonyms: prejudice, bias, bigotry, intolerance, narrow-mindedness, unfairness, inequity, favoritism, one-sidedness, partisanship;

                  2. recognition and understanding of the difference between one thing and another.
                  “discrimination between right and wrong”

                  One of the problems with “hindsight” is that it can be very difficult to either recognize or even once recognized, to remove the effect that hindsight has on human discrimination (“discrimination” used in the sense of the definition 2 above.

                  When “judges” (of any kind, including those providing comments on a patent law blog) do not recognize their own discrimination (used in the sense of the definition 1 above), they only too eagerly conflate their views and can – as has been amply seen on these boards – not only get these two meanings (wrongly) interchanged, they proudly pursue the first as if that first was the second.

                  Take then this proclivity and apply it to the legal concepts being discussed here of obviousness and 103 (and the apparent lack of concern for those factors discriminating art which is prior and how (and whether) that art may be properly used for the legal purposes.

                  People continue to not pay attention to the subtleties involved and want to think that 103 is merely 102 spread out through an (unlimited) number of references – with zero accountability for EACH context that EACH reference brings along with it. The view that any portion (of a reference) once shared, can – with zero error – be made a simple portion of a universal gestalt by not paying any attention whatsoever to the necessary contexts is a prime example of discrimination (definition 1) being used in place of discrimination (definition 2).

                  EVEN AFTER other examiners try to point this out, the level of discrimination (definition 1) has that person remaining blinded.

                  And further consider how this view of 103 ripples through the other discussions of law. That same person is blinded with his view of the perceived razor thin 103/112 “safe zone,” his view of “predictability” and 103 (yielding the logical end game of patents ONLY for Flashes of Genius or unteachable Oopsie types of inventions), and lastly – but certainly not least – the inability to see how the Act of 1952 carved out (and constrained) from what was a single paragraph pre-1952 the ability of the courts to use common law evolution for defining “invention,” “Gist of the invention,” “patentable novelty,” or dozens of other phrase used for that effect and remove the Court from this area of patent law (because the Court had become SO anti-patent).

          2. That’s a lot of bluster, but as usual your analogy is so silly that it almost defies belief that you would even rely on it for your argument.

            1. It is not that bad – and for Random, it is actually pretty good.

              It is even “technically” correct – although he does seem to miss the nuance and wants to apply the “unlimited” portion without regard to the more fundamental limitations.

            2. “That’s a lot of bluster, but as usual your analogy is so silly that it almost defies belief that you would even rely on it for your argument.”

              ^That’s pretty much what my whole response was going to be but I got caught up in the specifics.

        2. Yeah, what 6 said. Remember, you’re allegedly showing how OBVIOUS the claimed invention was to one of merely ordinary skill. Most of those guys go home at 5 and don’t hang around to read 200 patents to find the solution to their latest assignment.

          1. you’re allegedly showing how OBVIOUS the claimed invention was to one of merely ordinary skill. Most of those guys go home at 5 and don’t hang around to read 200 patents to find the solution to their latest assignment.

            No, you’re asking if someone is obvious to a hypothetical person that knows all of the patents anyway.

              1. I am not of ordinary skill. I am of super-ordinary skill, so the attempt to use me in place of one of ordinary skill will not work for its intended purposes.

                😉

                (joking aside, that is kind of Random’s mistake in massively aggregating everything without concern of the level of the PHOSITA – his examples need to be scaled back to “aggregating” only those pieces of art in the “prior world” that may be properlyaggregated – instead of treating ALL of the art in the “prior world” as equally ‘fair game.’

                That’s the “treating as 102” malady he suffers from.

          2. Please hand over your car keys Les.

            “Time to read” is not a limitation to PHOSITA.

            (Naturally, that might be a non-law “common sense” limitation, but we are talking about legal things here)

    2. “which J. Moore claims to have never seen come out of the PTO; you need to get out more, your honor”

      She probably just means they never make it past the board because they all get overturned.

      Though there was the “Thunderchopper” case where it was a big ol mash of like 4-5 refs iirc all smashed up into a big ol rejection.

      1. Hah after I listened to the clip Moore actually says “and smooshing them together” just like I was saying about the thunderchopper rejection. She’s very right about that, it’s just picking and smooshing.

        I think she meant a defferential standard of review on the facts.

    3. (And a newsflash for you, your honor, the standard of review for questions of law, e.g. obviousness, is de novo. In other words, no deference.)

      I think she meant a defferential standard of review on the factual findings because the references were vague.

      1. She doesn’t need to find any errors in the fact finding to conclude that the PTO got it wrong on the law. The ultimate issue was obviousness, which is a question of law, which is reviewed de novo.

        1. “She doesn’t need to find any errors in the fact finding to conclude that the PTO got it wrong on the law. The ultimate issue was obviousness, which is a question of law, which is reviewed de novo.”

          That’s true, but was that what was being argued? I don’t know from the clip, they might have been arguing that the PTO erred in their fact findings ala X ref doesn’t show Y or X ref doesn’t provide good evidence to back up Y motivation.

          1. It doesn’t matter. As an appeals court judge she could have said, “I don’t have any disagreement with the facts you found, but I’m going to substitute my own legal judgment for yours because I don’t have to give your legal judgment any deference whatsoever.”

            1. She is an inveterate uptalker with a notable verbal fry. It comes across as condescending. I give peoplez benefit of the doubt on mismatched verbal tics, although she certainly was on the fine line in the TC Heartland arguments.

                1. Maybe she didn’t think it was tots bs. I’m still not aware of whether the arguments were directed solely to a factual finding under 103 or to the ultimate conclusion itself?

  9. I think the premise of the article under discussion by this pos is fundamentally unsound. The simple day to day experience of all in the patent system would indicate that in the overwhelming amount of cases words suffice just fine to provide the fence that would be required in real property. The fact that they sometimes fail is somewhat besides the point.

    “The costs of providing better notice, even if that were possible, might outweigh the gains. ”

    I’m glad to hear that more people are starting to come to this conclusion about proposed “upgrades” to the patent system. It is the same way for many “improvements” that are proposed.

    “Plus, even if the analogy with physical boundaries and the commitment to plain meaning were not illusory, such rigidity in interpreting claims would undermine a significant feature of the patent system: the flexibility to reward breakthrough inventions proportionately to their importance.”

    I’m not sure that such is a “significant feature” of the patent system. I see it nowhere in the statute. If it is significant, surely they would have put at least a passing reference to it in the statute.

    “Nevertheless, claim construction of a sort is present. The court articulates something that it uses in its analysis. In the enablement and written description contexts, I’ve come to call this something a target that must be enabled or adequately described. What it really is, though, is claim construction–just not in the sense that we’ve become comfortable with.”

    I’m not even sure what Jason is talking about here. Claim construction generally happens first, then we turn to enablement/WD etc.

    “This determination–of identifying an “inventive concept”–is as much claim construction as the linguistic machinations of Phillips”

    I don’t think so.

    “Indeed, the court even refered to what it is doing as construing the claims:”

    I think the court used the word “construing” here differently than we formally use “claim construction”.

    1. I think the premise of the article under discussion by this pos is fundamentally unsound

      Who exactly are you referring to as a “pos”?

    2. The fact that they sometimes fail is somewhat besides the point.

      Isn’t this exactly the point? A fence may not always follow the property line, but the property line can be determined with a high degree of precision.

      The simple day to day experience of all in the patent system would indicate that in the overwhelming amount of cases words suffice just fine to provide the fence that would be required in real property.

      Do you mean that most words don’t need to be construed? If so, that is true. However, the need for any form of claim construction could be considered a failure, and that is quite common. “Suffice” may be true in the abstract, but nothing bordering (see what I did there) on what would be required in real property. In any case, “overwhelming” is not as good as “almost always”.

      1. “Isn’t this exactly the point? A fence may not always follow the property line, but the property line can be determined with a high degree of precision.”

        Maybe? If they’re that worried about the off-chance random bad situation where you can’t tell then they can simply empower the PTO to have more plenary oversight authority over the drafting style of claims instead of allowing for the current “wild wild west” paradigm with claim drafting done by near solely by applicants with very little input by a non-biased professional.

      2. “Do you mean that most words don’t need to be construed?”

        No but it is true that most words don’t need extensive construction.

        “However, the need for any form of claim construction could be considered a failure”

        I’m going to have to disagree with you there skipper. The arts have long past the point of complication where words will get all crazy like on occasion or require some background knowledge of the art.

        “but nothing bordering (see what I did there) on what would be required in real property.”

        Perhaps.

        “In any case, “overwhelming” is not as good as “almost always”.”

        True, but you have to look at it from a governability/enforcement standpoint. As in, whatever corrective measure we might want to implement will come with costs. Either in the applicant’s ability to get all wild on his drafting (and thus at least occasionally there will be at least small amounts of scope that are lost) or in terms of $$$, or both. And perhaps still other issues. And you have to look at how few patents that such a thing will ultimately matter for. As I understand it, the vast vast majority of IP disputes are settled, many times with licensing. That means they were able to work things out. And even those times are on like what, less than 5% of patents? When we look at how many make it to litigation it’s like less than 1%. For those few we can afford to take some time to look to see what they were trying to convey in their claims. Especially if the trial is going to cost 1mil anyway.

        1. I don’t think you can do a district patent trial for less than around $2M- $2.5M if both sides are using outside counsel.

    3. It really depends. I think a lot of the problem is simply that claims are intentionally being written indefinitely in an attempt to secure broader protection over inventions the patentee never actually contemplated. Thus, one attempts to not only gain the legal monopoly over what he invented, but also over all inventions that utilize a similar concept.

      1. the patentee never actually contemplated

        Wrong in many ways Alex.

        First and foremost, an oath accompanies EVERY application which refutes your point.

        Second, IF you are instead wanting to say “the patentee initiallynever actually contemplated” and is an attempt to impugn attorneys for what our legal obligation is in more fully fleshing out the invention beyond what an inventor may have originally considered to be “the invention,” your view if not only an anti-patent attorney view, but is an anti-patent view. You would hold in disdain the fact that our profession is doing what it is legally obligated to do – as if what we as attorneys are doing is somehow NOT fully fleshing out the deserved level of protection, but that we are somehow “conning” the system out of what is deserved.

        If this is your viewpoint, and if you are an attorney practicing in this legal field, may I suggest that you refund all of your clients’ payments and seek a profession in a different area of law.

    1. Anybody, or any academics?

      That other academics continue to use them after they have been so thoroughly debunked and have had their biases so critically displayed is merely a sign of how incestuous the academic world is in regards to the patent world.

      Over at IP Kat on the “Brexit and UK copyright: the story of a loss” thread, I comment on the attempt to elevate academics to some level of unreproachable (and unchallenged) “objectivity” when NO such level of objectivity can even remotely be provided.

      Those who may not (openly) share a very obvious agenda DO share that same agenda when they merely presume that the work of other academia can be presumed (assumed?) to be objectively “true,” as the author being discussed here does.

  10. Re: “more than a drafting effort designed to monopolize the [abstract idea].”

    A “monopolization design” unfairly impugns the motives of the vast majority of claim drafters who are simply expressing a claim in terms of its functional end result. Especially when they have to because there is no other good way to do so, such as a shortage of specific novel structures or steps in the disclosure.

    1. …or simply choosing a type of approved and optional type of claim format (no need to even impugn a “shortage” of anything there Paul).

    2. who are simply expressing a claim in terms of its functional end result

      Can you name a single person who invented a functional end result?

      such as a shortage of specific novel structures or steps in the disclosure

      Wait, is this post sarcastic? Did I miss the sarcasm? This isn’t a real argument is it?

      1. “Can you name a single person who invented a functional end result?”

        I saw it like once irl, but I can’t remember the case.

  11. I can remember hearing about some very old land deeds that sounded something like “3 chains NE from ye old oak tree to a large granite rock, then 7 rods West to the source of a spring, then ….

    But more to the point, “plain meaning” never was that plain. It is usually expressed as being read in “light of the specification,” and as understood by a POSITA [i.e., its meaning in that technology at that application time]. Furthermore a “plain meaning” can be overridden by a specific definition in the specification or disclaimers in the prosecution. [And contrary to some Cuozzo amicus allegations, all of these apply in a BRI “reasonableness” test as well.]
    Then, in litigation, there may be asserted what is left of the doctrine of equivalents to possibly convert plain vanilla to chocolate.

    1. Well let’s just shoot down the obvious mistake of “And contrary to some Cuozzo amicus allegations, all of these apply in a BRI “reasonableness” test as well.] with the notice that if this is so “interchangeable,” then you won’t mind NOT using “BRI” (and watch how all-of-a-sudden-like, something is “different enough” not to do that…)

  12. Yet when it comes to other issues in patent law–enablement, written description and especially § 101–ascribing meaning to words is less central to the analysis.

    That is one MAJOR assumption that quite frankly is untenable.

    Nothing like trying to find an academic way to insert the ability to mash wax noses.

    Talk about scrivining…

    Yes, I can see enablement and written description which necessarily involves more than the claims, but the idea that “especially § 101” obliviates the historical context of the single pre-1952 paragraph into the multi-section 1952 structure and the emphasis that it is the applicant that defines the invention WITH the claims.

    There is NO need to try to buttress the illegitimate “Gist” that Congress sought to remove from the courts with the passage of the Act of 1952.

    1. Yes, I can see enablement and written description which necessarily involves more than the claims, but the idea that “especially § 101” obliviates the historical context of the single pre-1952 paragraph into the multi-section 1952 structure and the emphasis that it is the applicant that defines the invention WITH the claims.

      Huh?

  13. This is  why I insist that the result of a method must be formally construed, and furthermore, why information inventions inherently cannot provide notice or practical boundaries as property when the economic utility (i.e value of the infringement) arises from direct human use of that information.

    I think sooner or later, the law will come around to something like this recognition.

  14. Radin: In this essay I argue to the contrary that the idea that patent claim language could be rendered determinate enough to justify an analogy with physical fences or metes and bounds is illusory.

    I haven’t read the essay yet but, generally speaking, every analogy has a breaking point. It’s true that many patent claims are less exact in their “boundaries” than many property lines. But there are plenty of patent claims out there whose “boundaries” are far clearer than many of the invisible “property lines” people deal with on a daily basis. The utility of the “claims-as-boundary-lines” analogy (and the utility of every other analogy) depends on the purpose for which the analogy is invoked.

    there is no such thing as plain meaning, at least not in situations involving innovative products and processes where there is money at stake

    As noted already in the comments, where there’s money, there’s lawyers. And where there’s lawyers, there are going to be fights over words and numbers and how to interpret them.

    Dennis writes: for the most part, the formalized claim construction that we’re used to is absent from the Federal Circuit’s enablement, written description and § 101 determinations.

    One explanation for this is that in many instances there is no need for a “formalized claim construction” to resolve the issues presented. For example, if the applicant threw the term “solidifying non-plastic matrix particle” into the claim during prosecution to overcome the prior art and the term appears nowhere in the specification, does the court really need to do a “formalized claim construction” to find a written description failure? I hardly think that’s necessary. Likewise, if the claim recites “A method of analyzing data, comprising evaluating said data for rho-square default attributes”, there is no “formal claim construction” necessary to find a lack of eligibility. “Evaluating data” isn’t a patent eligible process. Courts don’t need to waste time trying to “formally” determine what the term “evaluate” means to reach that conclusion. Of course the patentee’s lawyer is going to beg them to do that but capitulating turns the entire system into a farce.

    1. Your discrimination (definition 1) is showing.

      As is your oft-repeated attempt to move the goal posts and omit elements of the claim.

      Once again, enjoy: link to xkcd.com

      A computer is not – and cannot be – a proxy for a human being when it comes to a claimed invention (the principle and principal shortcoming of the “Gist/Abstract” sword, under any guise including “directed to”).

      To do so is to look at a broken scoreboard and claim that the scoreboard is accurate. Once again, I invite the “academics” to explore and devote a column to the patent doctrine (deceased, but efforts abound to make into a zombie) of the Mental Steps Doctrine.

      The farce is NOT what you claim – the farce is letting the philosophical wolf in through the backdoor of statutory law writing by the Supreme Court.

  15. May I add add to the landmark cases that do not treat patent claims literally the Supreme Court case of Winans v. Denmead, 56 US (15 How.) 330 (1854). Even when claims are construed, during infringement the jury is trying to determine whether the accused device is substantially the same. How else are they going to do this except by understanding that the accused device is doing substantially the same thing, using substantially the same means in substantially the same way.

    1. except by understanding that the accused device is doing substantially the same thing, using substantially the same means in substantially the same way.

      If people who drafted specifications understood this, my job would be very easy. Failing that, if people who prosecuted applications understood this, my job would be very easy.

      My job is not very easy.

  16. Judge Chen, extending a broom handle from the deck of the Titanic: the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user

    Ah yes. A “tool” with “customized filtering features.” Like the kind you use to clean your pool.

    In fact, this “tool” is just “logic” but, hey, that’s just another term for “the essence” of electronic tools. Besides, it’s installed “remotely” which was, like, s00per d00per hard and totally unprecedented when the application was filed.

  17. The idea that claims cannot impart “plain meaning” might rely too heavily on cases that are litigated in courts rather than deals that are made out of the public eye. These litigated cases necessarily represent a sample of patents for which a large sum of money is at issue. In these cases, defendants are going to raise each and every conceivable issue, such as “it depends on what the meaning of the word ‘is’ is”. While patents are drafted using human language that can raise questions of interpretation, the entire patent landscape probably isn’t as bleak as this article would have us believe.

  18. “But for the most part, the formalized claim construction that we’re used to is absent from the Federal Circuit’s enablement, written description and § 101 determinations.”

    Well, that’s just the problem, isn’t it? Looking for “the gist” of the invention instead of what is actually claimed, because I can view “the invention” at successively greater levels of abstraction until there’s nothing left, at which point I can say “the invention” is a law of nature or abstract idea. It’s difficult to do that when one focuses on the actual claim language.

    Ditto for enablement and written description: if you abstract “the gist” of the invention to a high enough level, it’s easy to assert that the invention is not enabled or lacks written description. Whatever happened to the (old) case law that said that a patent is only presumed enabling for what is claimed?

    The Federal Circuit needs to change its focus in 101 and 112 analyses to be more claim-based. But with the ignorant eight sitting above them, it’s clear that’s not going to happen any time soon.

    1. Atari, Alice step 1 is an inquiry as to whether the claim includes ineligible subject matter. The Federal Circuit repeatedly says this, and quotes Alice.

      I am not sure you understand this.

    2. Bingo Atari Man – Ned, it is you that misses the point here – and badly so.

      Your own quote: “Alice step 1 is an inquiry as to whether the claim includes ineligible subject matter.

      And NOT:

      Alice step 1 is an inquiry as to whether the GIST of the claim includes ineligible subject matter.

      Can you spot the difference?

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