DEFINITE DYSFUNCTION: LATEST ON FUNCTIONAL CLAIMING

from IPO:

Tune in to the IP Chat Channel™ tomorrow, 6 December at 2:00p.m. ET, to earn CLE and hear a sophisticated discussion of Functional Claiming After Mastermine v. Microsoft, a recent Federal Circuit decision that reversed a lower court’s finding of indefiniteness after finding the claims were not improperly simultaneously directed to both an apparatus and a method of using the apparatus. This decision could provide helpful guidance to patent prosecutors, but the situation is tangled because some experts worry that the Federal Circuit is disregarding the Supreme Court’s finding in Nautilus (2014) that a patent is indefinite if it doesn’t describe the invention with “reasonable certainty.”

Panelists CHARLES BIENEMAN (Bejin Bieneman), PROF. DENNIS CROUCH (University of Missouri Law), and SCOTT MCKEOWN (Ropes & Gray) will also discuss this month’s decision BASF v. Johnson Matthey, involving catalytic converter technology, where the Federal Circuit reversed an indefiniteness finding. Our panel will discuss this tangled knot, and in untangling it, give their best advice for how patent prosecutors should proceed.

Hosted and produced by journalist Pamela Sherrid

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10 thoughts on “DEFINITE DYSFUNCTION: LATEST ON FUNCTIONAL CLAIMING

  1. As near as I can tell, this is the claim alleged to be indefinite. I’m reasonably certain that it is directed to an apparatus and I see no reason for anyone, least of all Microsoft, to be uncertain on that point.:

    8. A system comprising:
    a database adapted to store customer relationship management (CRM) records containing CRM data;
    a programmable processor adapted to execute a CRM software application and a spreadsheet software application;
    a reporting module installed within the CRM software application, wherein the CRM software application includes a plurality of report toolkits, each report toolkit defining one or more report templates;
    wherein the reporting module installed within the CRM software application is adapted to, in response to a report generation request, examine a schema and data structures of the CRM database and examine customized settings including local field names within the CRM application,
    wherein the reporting module installed within the CRM software application includes a user interface to receive a selection of one of the plurality of report toolkits,
    wherein the reporting module installed within the CRM software application displays a list of the report templates based on the selected report toolkit and receives a selection of one of the one or more report templates,
    wherein the reporting module installed within the CRM software application presents a set of user-selectable database fields as a function of the selected report template, receives from the user a selection of one or more of the user-selectable database fields, and generates a database query as a function of the user selected database fields,
    wherein the reporting module invokes the spreadsheet software application using an application programming interface (API) of the spreadsheet application to automatically create a new workbook, generate within the workbook an electronic worksheet viewable within the spreadsheet software application and automatically generate a pivot table within the electronic worksheet based on the CRM data by communicating the database query from the CRM software application to the spreadsheet software application and issuing the query from the spreadsheet software application to the CRM database to retrieve the CRM records and automatically create the pivot table,
    wherein, when invoking the spreadsheet software application, the reporting module is adapted to communicate report parameters from the CRM software application to the spreadsheet software application based on the schema and data structures of the CRM database and the customized settings including the local field names within the CRM application,
    wherein, in response, the spreadsheet software application generates the pivot table within the electronic worksheet to present the CRM data in accordance with the report parameters.

    1. The claim is at least somewhat interesting as it explicitly claims the software module (reporting module) as part of the system. The general approach, far from erroneous, such a move recognizes that software modules are in fact part of the machine/system.

      There might be a difficulty in “software module” … is this a portion of “software” as such, or is it implicitly a portion of a computer readable medium, (a physically embodied set of chemical/magnetic/electrical units causing specific machine function) which forms part of the system.

      Also modules do not themselves literally do things, the machine (including the portions of physical embodied…) does things according to the module which is a portion of the medium… but implicitly any sane person (with a smattering of engineering/physics) would understand what is meant.

      A machine has identity, it can only function at any one time, according to its nature, i.e. according to its physical configuration. That part of a machine’s physical configuration which is optionally and temporary but at that time physically absolute, are the causes for the effects which are its specific functioning (modularly categorized) and can be referred to as a specifically functioning software module.

      1. The term “module” is iffy at best. It’s likely going to be construed as means plus function, which means if it’s performed on a processor, there would have to be an algorithm for the function. And the algorithm MUST be disclosed, even if it would be obvious to one skilled in the art.

      2. That part of a machine’s physical configuration

        Where is the objective physical structure in the claim that is responsible for the allegedly “new” functionality?

        That’s a rhetorical question. There isn’t any such structure.

        modules do not themselves literally do things

        LOL Then why would a “sane person” describe them in terms of what they do?

        1. Your “rhetorical question” begs the point as to whether that particular optional claim format is (somehow) not an option.

          Of course, you already know this point – even as you seek yet again to dissemble upon that point.

          “Go figure”

          1. Thank you for admitting that there is no new objectively physical conformation of matter disclosed in the claim or in the specification that is responsible for this allegedly “new” functionality.

            This is, of course, why the claim is pure unadulterated junk.

            Everybody knows this. Except for your imaginary clients, of course. Keep running to the bank, “anon”! And don’t forget to m0 lest some teens on the way. That’s what the One True God wants.

            1. Thanking me for what exactly?

              For pointing out that you are STILL engaging in your fallacy of pretending that an optional claim format is somehow not optional?

              Put.
              The.
              Shovel.
              Down.

        2. :Where is the objective physical structure in the claim that is responsible for the allegedly “new” functionality?”

          Here:

          “a programmable processor adapted to execute a CRM software application and a spreadsheet software application;”

          And in the rest of the recitation describing the CRM software application and a spreadsheet software application.

          Will you say that isn’t “objective physical structure”? Then what is it, metaphysical?

          With those applications the machine does the recited stuff. Without it, it doesn’t. There is nothing that could cause a machine to do a thing or not but a physical change to the machine… so…

          1. (a patent concept that could – and should – be applied is the patent concept of inherency)

            There is – of course – a reason why the proper patent concepts are NOT pursued. It would lead to the rather obvious fallacy that ALL improvements to machines (by way of software) are somehow magically “already in there.”

            Applying this logic further would mean that once a machine was purchased, ALL software illicitly obtained would not – could not – be any type of “crime” because the “machine” already had those items “magically” already in there.

  2. Still one of my favorite lines from the Federal Circuit: “we may now steer by the bright star of “reasonable certainty,” rather than the unreliable compass of “insoluble ambiguity.””

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