Guest Post: Fixing Patent Eligibility by Limiting Scope to Disclosed Embodiments

Guest Post by Benjamin C. Stasa, Shareholder, Brooks Kushman PC, Southfield, Michigan and David C. Berry, Director, Patent Procurement Clinic, Wayne State University Law School, Detroit, Michigan

The U.S. Supreme Court decisions in Alice[1] and Mayo[2], and subsequent attempts to apply those decisions, continue to create some uncertainty in the availability of patent protection for certain technical fields. Although recent guidance has somewhat clarified the issue, eligibility questions continue to vex practitioners, and reflect an all-or-nothing approach to patentability. As a result, commentators and national intellectual property law associations have proposed amending 35 U.S.C. §101. These proposals range from eliminating § 101[3] to amending the Patent Act to codify a broader definition of eligible subject matter.[4]

We offer an alternative approach for amending § 101 to allow some range of patentability for inventions directed to judicially-recognized eligibility exceptions. Rather than attempting to redefine the line between eligible and ineligible subject matter (a revision that preserves the current all-or-nothing approach), we propose amending §101 to implement disclosure-based limits on the scope of claims directed to judicially-recognized exceptions (abstract ideas, laws of nature, and natural phenomena).

Section 112(f) as a Model

Preemption is a common concern raised in eligibility cases. For example, claims directed to a law of nature should not be so broad as to preempt subsequent attempts by other researchers to develop other applications exploiting the law of nature. But preemption concerns may be addressed adequately by disclosure-based limits on claim scope, rather than by precluding patentability in toto. Furthermore, the Patent Act already contains a workable model for disclosure-based limits on claim scope: 35 U.S.C. §112(f).

Currently, if an applicant opts to rely on functional claim language, the claims are limited by the content of the applicant’s disclosure under § 112(f). Borrowing the same approach to limit claims directed to abstract ideas, laws of nature, or natural phenomena, § 101 could be adapted to prevent an applicant from claiming a judicially-recognized exception per se, while permitting claims essentially limited to specific embodiments disclosed in the specification.

Proposed Amendment to Section 101

101. Inventions patentable

(a) Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to subsection (b) and the conditions and requirements of this title.

(b) A claim directed to a judicially-recognized exception to subsection (a) hereof shall be construed to cover the structures, materials, or acts described in the specification and equivalents thereof.

Application

Under § 101 as amended, an examiner that considers a claim to be directed to a judicially-recognized exception would identify it as being subject to § 101(b) and point out the corresponding specific structures or processes disclosed in the specification to be covered by the claims, if any. The applicant could then attempt to refute the § 101(b) characterization through amendment or argument, or both, as is common practice under the current § 101 scheme. Alternatively, the applicant could acquiesce to the examiner’s characterization and possibly identify additional specific structures or processes disclosed in the specification to be covered by the claims. So limited, the claim would be eligible under § 101(b), and the disclosure would delimit claim scope for patentability and infringement.

Advantages

This proposed amendment would not affect an application for a process, machine, manufacture, or composition of matter that is not directed to a judicially-recognized exception to eligibility. On the other hand, claims directed to a law of nature or other judicially-recognized exception per se (claims without a corresponding disclosure of a specific working embodiment) would be indefinite under § 112(b) and thus not be patentable. The proposal improves predictability during patent prosecution, since most eligibility concerns will result in narrower claim scope, rather than the prospect of across-the-board ineligibility. Additionally, this proposed amendment preserves the central role of § 101 in governing eligibility, applies consistently across all fields of invention, and can be efficiently managed by the examining corps since they are already familiar with the operation of § 112(f).

Conclusion

The evolving nature of technology makes eligible/ineligible line-drawing difficult. Rather than just focusing on that boundary, attention can be directed to the consequences of stepping over that line. The proposed amendment of § 101 would clarify the scope of claims directed to a judicially-recognized exception, rather than simply rejecting those claims as wholly unpatentable.

– – – – –

[1] Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014).

[2] Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___, 132 S. Ct. 1289 (2012).

[3] See https://www.law360.com/articles/783604/kappos-calls-for-abolition-of-section-101-of-patent-act.

[4] See http://admin.aipla.org/resources2/reports/2017AIPLADirect/Documents/AIPLA%20Report%20on%20101%20Reform-5-12-17.pdf (AIPLA proposal); https://www.americanbar.org/content/dam/aba/administrative/intellectual_property_law/advocacy/advocacy-20170328-comments.authcheckdam.pdf (ABA IPL Section proposal).

130 thoughts on “Guest Post: Fixing Patent Eligibility by Limiting Scope to Disclosed Embodiments

  1. 18

    …the “new” editorial control for the “do not have a dialogue” count filter put the kabosh on this thread…

  2. 17

    I was on committees that looked at this in detail over years. I think the AIPLA and IPO proposals are 95% there (I have a few quibbles with words, but they’re on track substantively), and the ABA approach is fine too.

    There are two problems with the Stasa/Berry approach.

    1. You can’t tell what the claim means by looking at it. Under pre-Bilski law, s 101 was amenable to resolution by study of the claims, and the law put the burden to applicants to know the law, and draft claims of predictable effect.. Bilski upset that, and this goes even further. What’s “equivalent?” Imagine a claim construction rule that said “Start with the claim, then subtract out prior art, and your patent covers what’s left.” That would be a nightmare in subsequent litigation. The Stasa/Berry approach isn’t as bad as this imaginary proposal, but it’s headed that direction.

    2. Another problem is that in order to find a valid construction, you end up with a claim that’s “hollowed out” and largely incapable of infringement.

    The ABA proposal is pretty good — it’s striking that it seems to be (at least intended) to be substantively identical to the AIPLA and IPO proposals. It’s a pity that ABA didn’t try to harmonize with AIPLA and IPO — throwing another contestant into the ring will delay resolution among the three groups.

    1. 17.1

      >>(b) A claim directed to a judicially-recognized exception to subsection (a) hereof shall be construed to cover the structures, materials, or acts described in the specification and equivalents thereof.

      Really? You think that is OK? A nebulous test for “judicially-recognized exception” puts you into Alice-land where the punishment is having claims so limited as to most likely be worthless rather than being invalidated.

      This is really bad.

      1. 17.1.1

        Really? You think that is OK?

        Mr. Boundy can speak for himself, but I read his #17 as saying that he does not favor the proposed text in the original post (“There are two problems with the Stasa/Berry approach,” emphasis added).

    2. 17.2

      This is nowhere near the AIPLA proposal for 101. Not even in the same ballpark. This is a the ballpark of the burn down the patent system by making things up ballpark.

  3. 16

    What is the difference between a doctor sitting there and looking at a test result and determining a level of a drug to inject into a patient and a metallurgist sitting there in front of a cauldron mixing metals and determining which and how much of different metals to drop into the cauldron?

    I would say none.

    1. 16.1

      Again, down below this comment there endless attempts at removing what a person skilled in the art knows for the enablement requirement. Just ridiculous. Please. Stop.

  4. 15

    If you produce a new function, you require a new structure to produce that function. A claim to the novel function absent a limitation to the structure is overbroad of the invention and violates 112a. A claim to a novel function where the specification does not disclose the structure for achieving it fails 112b. A claim to the function is a claim to a field, and violates 101 absent significantly more limitations. Limiting the claim to a particular means solves these issues, but not all particularly-claimed inventions are eligible. No amount of particularity would have saved, e.g., the Mayo claims.

    LOL at the people on this thread still arguing that just because you can use functional language outside of means plus that that functional language in per se valid in all circumstances – notably with respect to novelty.

    Nobody invents a projectile firing machine. A person can only invent a bow. Disclosure of a bow does not support a claim to a projectile firing machine, because that scope includes the as-yet-undiscovered gun, which is substantially different from a bow, and which the inventor has not proved possession of. Because machines that fire projectiles is a field, a claim to it violates 101 unless there are significant limitations (for example, the structural limitations of a bow). There is no mechanism by which a claim to a novel functional result will be upheld unless the specification proves it discloses all of the disparate means for performing the functionality, which as a general rule is unprovable.

    This isn’t a hard concept, the Supremes expressly put out just such logic in Morse in the context of a machine that “prints at a distance.” It’s pretty clear why they were afraid of Morse’s claim, because since Morse we’ve developed several machines that print at a distance that are nothing like Morse’s machine. Neither the invention of 112f nor any other jurisprudence limits the logic of the Morse case or its parentage. You can’t distinguish your invention from the prior art by reference to the result of using it, you have to distinguish it by what it actually is.

    1. 15.1

      “If you produce a new function, you require a new structure to produce that function. ”

      Hardly. Where do you come up with this stuff?

      Read MCRO, BASCOM, and so forth. In MCRO new animation rules applied to a technical problem using only a general purpose computing device were held eligible. Old processor configured to produce a new function is eligible if the new function is an improvement in a technical art or solves a technical problem.

      1. 15.1.1

        I agree that Random’s first sentence is a weak start. As it happens, however, nothing else in his #15 rests on a premise established in that first sentence, and the rest of it holds up pretty well in my estimation.

        1. 15.1.1.1

          If by “holds up” you mean that it is held up by the “Ends justify the Means” internally eternally self-conflicted flotsam and jetsam of the Supreme Court writing their own version of the law, then maybe I could agree with you.

          Of course, this means opposite of the normal use of the term “holds up,” as in, “is sustained under critical scrutiny” (which it does not).

        2. 15.1.1.2

          I agree that Random’s first sentence is a weak start.

          Can you name me one thing that performs a different function absent different structure? The whole point of the quid disclosure is that the disclosed structure will produce the useful effect.

          Absent extreme situations like quantum dynamics, performing A + B in context C will always yield D. If you don’t get D, it’s because you changed A, B or C. That’s how the world works.

          Here’s a quote from General Electric: The Circuit Court of Appeals below suggested that “in view of the difficulty, if not impossibility, of describing adequately a number of microscopic and heterogeneous shapes of crystals, it may be that Pacz made the best disclosure possible, . . .” But Congress requires, for the protection of the public, that the inventor set out a definite limitation of his patent; that condition must be satisfied before the monopoly is granted. The difficulty of making adequate description may have some bearing on the sufficiency of the description attempted, but it cannot justify a claim describing nothing new except perhaps in functional terms. It may be doubted whether one who discovers or invents a product he knows to be new will ever find it impossible to describe some aspect of its novelty.

          That’s not a flippant statement that the Supreme Court threw in for funsies. If a new result is achieved, it is because some sort of structural change took place, and in all likelihood it is possible to convey that structure. Functions don’t arise out the aether like magic, they are called by a structural formation: Compress a spring, it’s stored energy can be converted; Operate a lever, the opposing side moves. Use of functional language is simply an attempt to expand the monopoly beyond the structural change by claiming other structures which achieve a similar result, without any proof as to whether any of those structures were posited.

          I’m aware of no situation outside of quantum dynamics where a function cannot be described by a knowable, and conveyable, structure change.

          1. 15.1.1.2.1

            Can you name me one thing that performs a different function absent different structure?

            Aspirin for analgesia and aspirin for anticoagulation. Same structure (2-acetylbenzoic acid), two different functions.

            I’m aware of no situation outside of quantum dynamics where a function cannot be described by a knowable, and conveyable, structure…

            Sure. I agree. U.S. patent law has always insisted—and rightly so—that an invention be both described and claimed in structural terms for patent purposes. This encourages the advance of the art by leaving open the possibility of designing around a claim.

            1. 15.1.1.2.1.1

              Same structure (2-acetylbenzoic acid), two different functions.

              Your structure is incomplete. The analgesia function is combination of the 2-acetylbenzoic acid structure and what I assume is a nerve structure, while the anticoagulation function is a combination of the 2-acetylbenzoic acid structure and what I assume is a blood cell structure.

              This is common sense – aspirin sitting in the bottle neither makes you feel less pain nor affects your clotting. That’s true even if you put the bottle really close to your body. You have to introduce the medicine to the different structures of your body in order for it to have an effect(s). A system that comprises the 2-acetylbenzoic acid Aspirin performs absolutely no function absent other limitations.

              1. 15.1.1.2.1.1.1

                Common sense? Alas, look to what is claimed (there are no nerve and blood systems claimed)

                Oops.

              2. 15.1.1.2.1.1.2

                Fair enough. I withdraw the “weak start.” As I said, I agree with the rest of #15, so I stand behind everything else I said in #15.1.1.

              3. 15.1.1.2.1.1.3

                It’s a terrible example and does not address the points made. All capabilities/uses of a drug are inherent unless it’s being used in a way that is non-obvious. A processor configured to perform a telecommunications protocol is different in terms of function than the exact same processor configured to perform homomorphic encryption method. Same hardware, completely diffferent functions.

                1. “Same hardware” does not capture ALL of the differences in the computing system – all of the components of that system.

                  Push comes to shove, those who are anti-software patent continue to operate in a dissembling manner because they are not being inte11ectually honest about what software is.

                  The entire discussion here is a bit of a smokescreen with the underlying premise that ONLY “objective physical structure” can “save” a patent claim.

                  This elevated the optional claim format into something that it is not: a NON-optional claim format.

                  Right from the start, the anti-software proponents have engaged in a fallacy.

                2. Same hardware, completely different functions.

                  Whoa, there. There are structural differences between a processor running a telecommunications protocol and a processor running a homomorphic encryption. The processor, after all, is not thinking different thoughts. Rather, its various switches are being flipped (structure!) by structures on the physical software medium. There is, in other words, definitely a different structure responsible for the different function in this particular example.

                  (My apologies if my embarrassingly rudimentary understanding of computer science is reflected in factual errors above, but I hope that this is broadly accurate in material respects.)

            2. 15.1.1.2.1.2

              Greg, I also thought of the aspirin as analgesic/anti-coagulant example. But note that Random’s original first sentence stated “new” function. Was it ever “new” after people started taking aspirin for their headaches, that its function as anti-coagulant was ever “new”?

              Perhaps we need to distinguish what is “new” from what remains “novel” under the patent law? Perhaps Random would agree that stuff can still be patentably novel even when it is nothing “new” in an absolute physical sciences context?

              New use of an old thing? The EPO case EXXON “fuel additive” case is interesting. The use of the particular fuel additive in the claim, as a corrosion inhibitor, was known, old. The contribution to the art was its use as a lubricant. Nobody knew it did that, till the inventor demonstrated that valuable effect. It took a petition to the highest level (Enlarged Board of Appeal) to get the claim approved. It gave rise to an entire branch of the claim drafting arts, namely “use claiming”.

              1. 15.1.1.2.1.2.1

                MaxDrei hints at inherency of function (new use being a discovered one, rather than an invented one – cf the shortcut at 35 USC 100(a)).

                He misses though with his usual EPO myopia, and oddly celebrates that it took a petition to the highest level to recognize what Congress did in our sovereign in the Act of 1952 (see 35 USC 100(b)).

              2. 15.1.1.2.1.2.2

                Perhaps we need to distinguish what is “new” from what remains “novel” under the patent law?

                Like the late Ned Heller, I definitely believe that it is necessary to distinguish “new” from “novel.” For better or worse, however, that is a distinctly minority viewpoint among my fellow patent lawyers, and runs flatly against what little case law exists on the point.

      2. 15.1.2

        new animation rules applied to a technical problem using only a general purpose computing device were held eligible. Old processor configured to produce a new function is eligible if the new function is an improvement in a technical art or solves a technical problem.

        But “old processor configured to produce a new function” is indefinite absent disclosure of a structure that performs the function, and is undescribed absent some rationale that the full scope of the function is defined. You’re limiting my argument to 101 when I begin by talking about the other standards.

        I just got through explaining to you a few posts back that you can’t say that “skill in the art” is sufficient to support novel functionality. The specification must describe, and the rule limiting that requirement is that the specification need not describe that which is well-known in the art.

        1. 15.1.2.1

          You “explained” nothing. It’s you who can’t seem to understand that the Fed Ct has time and time again explained that the structure of a functional feature can include disclosure in the form of mathematical formula, prose, or as a flow chart or signal diagram and other similar examples. Any requirement for new structure is errant. A standard processor disclosed is sufficient, assuming the functionality is described as well.

          1. 15.1.2.1.1

            He does not want to understand the “sufficiency” aspect that is NOT tied to the optional claim format of “objective physical structure.”

            This is nothing more than his quaffing of the dissembling from Malcolm that has long been allowed to run rampant here: an optional claim format being treated as if somehow it is NOT optional.

    2. 15.2

      >>A claim to the novel function absent a limitation to the structure is overbroad of the invention and violates 112a.

      Random, you have to include known solutions and the new combination from the claim.

      Just outrageous that you repeat the same stuff over and over and just ignore what one skilled in the art would know.

      1. 15.2.1

        Just outrageous that you repeat the same stuff over and over and just ignore what one skilled in the art would know.

        I said “a claim to the NOVEL function”…

        Just outrageous that you repeat the same stuff over and over and just ignore what one skilled in the art would know.

        I just had to teach Bluto this a while ago, but knowledge of skill in the art cannot be used as a substitute for a disclosure. 112 requires THE SPECIFICATION to enable and describe the invention, and the rule that you need not teach is limited to what is already well-known in the art.

        1. 15.2.1.1

          Random,

          The specification need only enable the invention to one skilled in the art.

          It does have to describe the invention, but again to one skilled in the art.

          All those known solutions to problems are included in the specification.

          1. 15.2.1.1.1

            All those known solutions to problems are included in the specification.

            But the enablement and description must be commensurate with the scope of the claim. If I claim a novel function, and describe 1 or 10 or 100 ways of achieving the function, that only fulfills 112a if there are only 1 or 10 or 100 ways of achieving the function. If there are, in fact, 10,000 distinct manners of achieving the function, the fact I disclosed 100 doesn’t support 112a. 112a is only supported when the number of distinct disclosures I made equals the number of distinct ways of achieving the function.

            As a general rule, you never know what the number of distinct ways of achieving the function is, so as a general rule you’ll never meet the 112a standard.

            I can disclose a bow, a crossbow, a catapault, a trebuchet, a long bow and a compound bow, and I might be able to argue I’ve disclosed a lot of manners for my allegedly novel function “a machine that fires a projectile” so I should be given that scope. But unless I can disprove that there is some other distinct means, I haven’t enabled or described the full scope of a claim. Because a gun is also a machine that fires a projectile, and is distinct from all the means disclosed in the specification (indeed, it’s super distinct, because you only disclosed embodiments that rely upon string tension rather than chemical explosion) the claim fails 112a. The fact that the applicant fails to disprove the possible existence of the gun means the claim to the function fails, as it should, because if the scope that included the gun was granted, research into the gun would be chilled.

            Functional language is an attempt by someone who invented the bow (a very good and useful invention, for which the inventor should be appropriately rewarded) to aggrandize themselves into also being the inventor of the gun, when there’s no proof he posited the mechanism that causes the gun to work at all. The inventor of the bow should be given rights to the bow, and the inventor of the gun should be given rights to the gun, and neither of them invented the scope of “a machine that fires a projectile” because the last word on machines that fire a projectile has not been written yet.

            That’s not an anti-patent stance, it’s just a stance that both A and B get their due, rather than indulging in A pretending to be something he isn’t.

    3. 15.3

      Patent maximalist: “But my projectile is a data projectile! And the data is about your credit card account. That changes everything right?”

      Judge Lourie and Judge Newman: “We think so but it changes everything but we are very confused and would like someone to hold our hands while we utter f 0 0 lish things that make our rich friends happy.”

      1. 15.3.1

        that make our rich friends happy.”

        More of the typical class w a r fare dissembling from Malcolm as he seeks to denigrate the form of innovation MOST accessible to the non-wealthy…

    4. 15.4

      Random <<>you have to distinguish it by what it actually is.

      And in the case of information processing that is how the information is processed and what functions are preformed.

      Random, you don’t really get it. You seem to want a turtles all the way down argument. To be clear–you put that new function there and if it is enabled then it defines a structure. You guys seem to have something like mouse that runs around in your head. Just bizarre. I could build a special purpose chip to perform the function. I could write code in a 100 different languages and with many different types of processors to perform the function. All structure.

      And, again, Random, it is like that is not enough for you. The turtle, however, is sitting squarely on solid Earth.

    5. 15.5

      Plus, Random, your there aren’t enough turtles argument is one that is supposed to an enablement argument based on a person skilled in the art.

      I can build special purpose processors (yes I am skilled in the art of EE/CS) based on these functional disclosures.

      What is going on here is anti-patent judicial activists are basically 1ying. They are intentionally misrepresenting the test for enablement and the scope of claims.

  5. 14

    It does not seem to me that this proposal would help a lot with software patents, because the structure is the algorithm, and the examiner likely to ask for some other structure that is not really important to the invention, which may not be there.

    1. 14.1

      the structure is the algorithm

      ROTFLMAO

  6. 13

    Combining Alice-Mayo and Williamson? What an ugly mess. Williamson is over-relied on as a “silver bullet” in software-related cases by just about every defendant. No matter how detailed the processing steps in the actual claim language may be, they will characterize every claim as “functional.” So every software 101 issue will devolve to a debate about this new “101(b)” nonsense. Kill it before it spreads!

    1. 13.1

      No matter how detailed the processing steps in the actual claim language may be, they will characterize every claim as “functional.”

      And they’ll be correct.

      That’s your problem.

      1. 13.1.1

        That’s a feature – not a bug.

        (But your feelings are noted)

  7. 12

    David Stein >>>My point is that nobody is ringing alarm bells over the use of purely functional, non-112(f) language in the mechanical arts – because it’s not controversial. I can easily produce similar examples in the chemical or electrical arts – again, not controversial. It’s only in the software arts that people say: “Oh no, functional language, the patent system is borken!”

    This is exactly right. And I have posted text books for information processing that expressly say that functional language is used to capture known solutions that are too numerous to enumerate.

    And yet the ignorance fest continues where we get academics pushing positions that are contrary to what is known in the art.

    1. 12.1

      Smells of Google Bucks.

    2. 12.2

      It’s only in the software arts that people say: “Oh no, functional language, the patent system is borken!”

      That’s because it’s “only in the software arts” where you can claim a “new” computer functionally without any recitation of novel objective physical structure, either in the claim directly or indirectly using “means + f” language.

      That “exception” is based on the activist assertion that “data is the essence of electronic structure”, a phrase that fell gracelessly out of a CAFC judge’s infinitely stretched bungh0le.

      1. 12.2.1

        Again, MM, you go to the position that it is possible to have new function without new structure. Function without structure is your argument.

        1. 12.2.1.1

          Nice try. The issue is not whether you can have “new function without new structure” (and of course you can — people find new uses for old things all the time). The issue is whether you can patent a new structure without describing the new structure. The answer to that question is pretty obvious unless you are high on patent crack.

          Also: this has been explained to you probably a thousand times. That’s why you’re a h@ ck and also representative of the larger problem with the patent maximalists generally.

          1. 12.2.1.1.1

            The issue is whether you can patent a new structure without describing the new structure.

            No one is saying anything different.

            Oh wait, you want to elevate a particular optional claim format for doing so into something that is not – you know – an option…

            Explained a thousand times you say…

            (maybe you should not spend so much time “explaining” when your “explaining” is nothing more than dissembling)

          2. 12.2.1.1.2

            And, MM, that structure is claimed when a person of ordinary skill in the art is included in the interpretation of the claims.

            Probably no structure when you are talking about a CAFC judge with no science training and who caries a wet warm towel back to their chambers to decide these issues.

    3. 12.3

      Again, the game is to leave out one skilled in the art. Just ridiculous.

      1. 12.3.1

        the game is to leave out one skilled in the art.

        Which “art” is that? The “art” of typing instructions into a computer?

        Or the “art” of telling your friend that you’re waiting at a coffee shop?

        1. 12.3.1.1

          “The “art” of typing instructions into a computer?”

          How is typing instructions any different from mixing chemicals?

          1. 12.3.1.1.1

            The better question is whether Malcolm wants to admit that he knows and understand the controlling law when it comes to the exceptions to the judicial doctrine of printed matter.

            And even better – why his prior admission to this fact is an admission against his interests (and widdle feelings).

  8. 11

    Congress should not be writing statutes that say “Here’s what should be patentable, but we acknowledge that the courts can override our statute with judicially created doctrines.”

    1. 11.1

      Why not?

      Heck, I know the answer, and I think that you know the answer – however, many (apparently) do NOT know the answer.

      1. 11.1.1

        If you had to boil it down to one word, it would be “Constitution”

        1. 11.1.1.1

          Please unpack that a little bit.

          (Hey, I have several points that would flow from that boiled down word, so I am not disagreeing with you, but like I said: many (apparently) do NOT know the answer, so your one word boil down is not going to help those who most need it!)

    2. 11.2

      Yup

    3. 11.3

      Wholehearted agreement with the sentiment, but the proposed statute is worse than that.

      “Can” override? The proposed statute would be an *express* authorization for the courts to create new law.

      This would be (so far as I can tell) an unprecedented abdication by Congress of its constitutional obligation to enact laws.

  9. 10

    Modify S 100(b): “A process which results in information consumed by human beings may not be patented. Processes intended to improve information processing without regard to the content or meaning of the processed information are exempt from this requirement”.

    1. 10.1

      ALL processes can result in information that may be consumed by human beings.

      Please stop your nonsense Marty.

      1. 10.1.1

        Bite me. All processes to do not result in information. Many have a chemical or mechanical result.

        Things are coming around toward my view- see recent printed matter doctrine etc.

        1. 10.1.1.1

          I neither agree nor disagree with your bigger point here, Martin, but chemical and mechanical results are information. They may not be merely information, but they are information.

          1. 10.1.1.1.1

            Marty has yet to grasp the patent law concept of utility (and how – in the end – ALL utility is merely a “result in information that may be consumed by human beings.”

            Humans, after all, ARE the metric of utility.

          2. 10.1.1.1.2

            Greg that’s not the meaning in either the vernacular or the technical community. If you want patents on intangible things, you need to have some boundary or connection to objective reality (unlike anon of course).

            If you want to debate the tangibility of bits in memory, that’s just fine, but it leads nowhere useful to solve the current problems.

            Also anon, no, not Collins. See Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP LTD., 2018 U.S. App. (Fed. Cir. 2018)

            1. 10.1.1.1.2.1

              [T]hat’s not the meaning in either the vernacular or the technical community.

              I am not sure which “technical community” you have in mind (there are more than one, after all), but I assure you that chemists do indeed perceive and rely on the information content of molecular structures, and are even using the transitions of structures to process information.

            2. 10.1.1.1.2.2

              If you want patents on intangible things, you need to have some boundary or connection to objective reality (unlike anon of course).

              Agreed as to some boundary. You, of course, are not merely advocating for some boundary, but more particularly for one specific boundary. I confess that I just do not understand the contours of the debate in which you are advancing your preferred boundary, so I can neither agree nor disagree with your proposal. Smarter folks than me (yourself, for example) will have to sort out the answer to that question.

            3. 10.1.1.1.2.3

              Ah yes, the maligned case that is being criticized for its butchering of the concept…

              Celebrating a broken scoreboard will not fix the broken scoreboard.

          3. 10.1.1.1.3

            chemical and mechanical results are information

            LOL

            Keep pulling at that thread, Greg.

        2. 10.1.1.2

          – see recent printed matter doctrine etc.

          LOL – Do you mean the recent abomination attempt by Collins that was widely – and justly – ridiculed?

          If by “Things are coming around toward my view” you mean that vested interests are plying ridiculous propaganda to warp (and weaken) patent law, then yes, “things are coming toward your view” – and have been (as I have noted) for more than fifty years of such inane attacks.

          At bottom, the anti-software patent stance remains an anti-patent stance.

          1. 10.1.1.2.1

            Do you mean the recent abomination attempt by Collins that was widely – and justly – ridiculed?

            It must be fun to live in “anon”‘s fact-free universe.

            Of course, that fact-free universe would explain why “anon” is wrong about pretty much every important question, all the time. And will continue to be wrong.

            1. 10.1.1.2.1.1

              more (and typical) Accuse Others from Malcolm…

              Fact free? Try having the “magic” that you want to have as noted above by Night Writer.

              Or maybe you want to try – you know – actually engaging on the merits and in reality, a reality of a universe wherein optional claim formats are just that: optional, and wherein software is not magic…

  10. 9

    Benjamin C. Stasa, Shareholder, Brooks Kushman PC, Southfield, Michigan and David C. Berry, Director, Patent Procurement Clinic, Wayne State University Law School, Detroit, Michigan

    Shouldn’t Rudy Guiliani be named here as well?

    LOL

    For more laughs, read David Stein’s comment below. David has trouble distinguishing the legal issues raised by a claim to a new “braking means” which is limited to objectively understood and defined novel physical structures versus a “computer implemented method of breaking” which protects logic and isn’t limited to any novel structure. One of these types of claims will necessarily corrode the patent system and create a free for all for b0ttom feeders and speculators and the other won’t. But David can’t figure this out. He can’t figure it out even though the issues have been spelled out for him numerous times.

    Here’s the deal, folks: it’s a one way ratchet. There is no “swinging back of the pendulum” because nobody except a very very tiny well-heeled population of eternally unsatisfied greedy whiners wants it.

    1. 9.1

      As I recall correctly, it was your own “having trouble distinguishing the legal issues” that resulted in your famed admissions against interests in regards to knowing and understanding the exceptions to the judicial doctrine of printed matter.

      Rather odd then of you (albeit altogether unsurprising) that you would seek out here to Accuse David of something that better describes you.

      No less odd of you also wanting to ply your own canard of an optional claim format being something other than optional (again).

      But David can’t figure this out

      You project – and do so incorrectly.

      As is typical of you these past 13 years.

      1. 9.1.1

        your famed admissions against interests

        Nobody knows what you’re talking about “anon” and nobody ever will. Get help, buddy. Next thing you know you’ll be worrying about too many brown people and “kids these days”. And then the worms will be licking your bones like so many other glibertarian Repu k k k types who get high off their own f @ rts.

        1. 9.1.1.1

          Stop the L i e s Malcolm.

          Everybody knows that your admission to knowing and understanding the law when it comes to the exceptions of the judicial doctrine of printed matter are directly against your FEELINGS as to how you want the law to be when it comes to software.

          Get help, buddy

          Accuse Others meme – nothing more.

          worrying about too many brown people

          Non sequitur and one-bucketing rant that simply does not – and never has – applied to me.

          The rest of your post?

          Yay 13 years of Malcolm “swagger.”

          Is it any wonder Malcolm that you – by a mile – have had the most posts expunged?

          Not a wonder then, that you also do not care – and have never cared.

          And yet, the “ec(h)osystem here bends over backwards for you.

          Say “La vee.”

  11. 8

    Referring to a “judicially-recognized exception” seems problematic as this is subject to change. Therefore, this would either require codification of those judicially-recognized exceptions or have to be rephrased in some way.

    That being said, this seems to be an attempt to moot § 101 rejections by incorporating § 112(f). It might be easier to just do this in reverse and strengthen § 112 so that definite claims would inherently be patentable subject matter

    1. 8.1

      It might be easier to just do this in reverse and strengthen § 112 so that definite claims would inherently be patentable subject matter

      Non-starter.

      Next.

      Referring to a “judicially-recognized exception” seems problematic as this is subject to change.

      Everything is “subject to change.”

      Next.

      1. 8.1.1

        I believe you often refer to the use of objective structural terms. Is this something that cannot be determined under § 112?

    2. 8.2

      Referring to a “judicially-recognized exception” seems problematic as this is subject to change.

      That is a very good point. This proposed text codifies the category “judicial exception” without imposing any limits on what that can be. Not that the judiciary does not already feel quite free to make up exceptions to §101, but this proposal is effectively an invitation for the judiciary to make up any “exceptions” that might tickle their fancy. Talk about an unintended (one hopes!) consequence.

      1. 8.2.1

        This proposed text codifies the category “judicial exception” without imposing any limits on what that can be.

        So? The statute also tells you what to do with that “exception”: ignore it and limit the claim to “structures materials and acts” in the spec.

        The problem with this ridiculous “proposal” is the circularity, Greg, as you already noted. The statute achieves nothing.

  12. 7

    This tired old canard again? Must be a slow news cycle.

    I’ll ask the obvious question: Is this principle of universal 112(f) interpretation supposed to apply to all fields of technology, or only to some fields… like software? Because I presume that proponents of these types of initiatives don’t understand that pure, non-MPF functional language – supported by no more than a handful of example embodiments – is ubiquitous in all fields of technology, and is not only common but unremarkable in all fields but software – in which it is viewed as an “o, the humanity!”-level crisis.

    Let’s take a brief meander down the path of recently issued patents in the mechanical arts.

    There’s 9,909,355 (“Door for vehicle steps”):

    A step protector for an agricultural tractor having a cab and steps adjacent the cab for an operator to climb up to and down from the cab, the protector comprising; a cover pivotally mounted to the vehicle for movement between an open position allowing the operator to climb the steps and a closed position covering the steps from top to bottom so as to prevent debris from accumulating on the steps while the vehicle is driven an actuator to move the cover between the open and closed positions, wherein the actuator extends behind the steps.

    There’s 9,937,421 (“Haptic chair for motion simulation “):

    A device for providing the illusion of motion, wherein the device comprises at least two movable parts for stimulating vestibular sense and kinaesthetic sense independently, each of the at least two movable parts being displaceable according to at least two degrees of freedom, each of the at least two movable parts being displaceable independently relative to each other, wherein the at least two movable parts include a moving headrest for stimulating the vestibular sense and at least one moving armrest for stimulating the kinaesthetic sense.

    There’s 9,918,554 (“Functional chair for human body correction and thermal therapy”):

    A functional chair for human body correction and therapeutic efficacy promotion by applying heat, comprising: a main body which includes a sitting plate and a waist plate; a heating means configured to transfer the heat to a human body and including a ceramic heating element installed in the sitting plate and the waist plate; and a control unit which maintains a temperature of the heating means at 100 to 250.degree. C. and displays an operating status, wherein the main body comprises at least one of an angle adjusting unit configured to adjust an angle of the waist plate, an up-and-down adjusting unit configured to adjust a height of the waist plate and a leg unit configured to adjust a height of the sitting plate.

    There’s 9,952,026 (“In-flight insulation generation using matrix-based heat sink for missiles and other flight vehicles “):

    An apparatus comprising: a heat sink configured to absorb heat, the heat sink comprising a matrix that includes a porous structure having multiple pores at least partially filled with one or more phase change materials; wherein the heat sink is configured to convert the matrix into an insulator that comprises an aerogel as the one or more phase change materials change state and exit the porous structure due to the absorbed heat.

    There’s 9,957,059 (“Fuel tank, fuel pipe, and aircraft”):

    A fuel supply apparatus comprising: a fuel tank that stores liquid fuel therein, wherein at least a portion of an inner wall of the fuel tank in contact with the liquid fuel is a hydrophilic surface configured to solidify water thereon; a drain port that is fluidly coupled to the fuel tank and configured to discharge the water from the fuel tank; and a fuel pipe attached to the fuel tank, the fuel pipe directing the liquid fuel in the fuel tank to a fuel supply destination, wherein at least a portion of an inner wall of the fuel pipe is made of a material having water repellency, or is subjected to surface finishing for imparting water repellency.

    Wow! Functional language everywhere! There’s “a (name) configured to (broad function)” language (without reciting “means”); there’s “a (name) that is (property)” language; there’s even “the (name) achieves (result)” claiming.

    These are but a few of maybe 25 examples that I found in a casual search of the mechanical arts. As you can tell from the patent numbers, they’ve all issued within the last two months.

    Quick, someone call Mark Lemley and the EFF to come protest all of this evil functional language in the mechanical arts! Or… don’t bother. It’s not software, so they don’t care.

    1. 7.1

      Thank y0u David Stein.

      I wonder how many Google bucks they got paid to push this tripe.

    2. 7.2

      It is remarkable as to the attempt to select out one particular form of innovation for that treatment of “0 h n 0 e s!!!” calamity.

      Almost as remarkable as the fact that this assault has been raging for nigh 50 years…

      Well, when one side is not held to employ inte11ectual honesty, this is what will happen.

      1. 7.2.1

        one particular form of innovation

        aka logic. Yes, it’s the “art” of typing instructions into a machine which exists to carry out instructions.

        Next thing you know “anon” and his cohorts will be trying to patent “new” methods of parking a car …. using information and logic! Wowee zowee! The most important and serious people ever.

        LOLOLOLOLOLOLOLOLOLOL

      2. 7.2.2

        when one side is not held to employ inte11ectual honesty,

        Says the guy who spent years here posting under hundreds of different pseudonyms in an effort to derail any discussion of the basic facts regarding subject matter eligibility and how it necessarily works in the context of a particular claim. Until he was outed by Dennis.

        Best. Axx-whupping. Ever.

        1. 7.2.2.1

          LOL – more of the Accuse others – as YOU are the single most user of multiple names in the blogosphere over the last five years – or is your stint at PatentDocs somehow being “not remembered.”

          Further, your characterization is – as typical – off, as any use by me of multiple names was NEVER for derailing conversation.

          Quite in fact – I have been the one ardently attempting to get YOU to partake in conversations (and not your typical drive-by monologues filled with ad hominem and vap1dness).

          But it’s convenient for you not to represent the full story.
          As is typical.

          1. 7.2.2.1.1

            multiple names in the blogosphere

            LOL

    3. 7.3

      Wow! Functional language everywhere! There’s “a (name) configured to (broad function)” language (without reciting “means”)…

      Did you read these examples before you posted them?

      There’s 9,918,554 (“Functional chair for human body correction and thermal therapy”):

      A functional chair for human body correction and therapeutic efficacy promotion by applying heat, comprising: a main body which includes a sitting plate and a waist plate; a heating means configured to transfer the heat to a human body

      That sure looks like a recitation of “means” to me.

      Incidentally, I am sure that in practice most of the other examples would not be construed according to §112(f), but why should they not be? It seems to me that for most of these examples that you cite, it would be fair to both the patentee and the public if the boldfaced limitations were construed under §112(f).

      1. 7.3.1

        I am sure that in practice most of the other examples would not be construed according to §112(f), but why should they not be?

        Allow me to quote from the Book of MPEP, § 2173.05(g):

        Functional language may also be employed to limit the claims without using the means-plus-function format. See, e.g., K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363, 52 USPQ2d 1001, 1005 (Fed. Cir. 1999).

        Unlike means-plus-function claim language that applies only to purely functional limitations, Phillips v. AWH Corp., 415 F.3d 1303, 1311, 75 USPQ2d 1321, 1324 (Fed. Cir. 2005) (en banc) (“Means-plus-function claiming applies only to purely functional limitations that do not provide the structure that performs the recited function.”), functional claiming often involves the recitation of some structure followed by its function. For example, in In re Schreiber, the claims were directed to a conical spout (the structure) that “allow[ed] several kernels of popped popcorn to pass through at the same time” (the function). In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). As noted by the court in Schreiber, “[a] patent applicant is free to recite features of an apparatus either structurally or functionally.” Id.

        A functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step. In Innova/Pure Water Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117-20, 72 USPQ2d 1001, 1006-08 (Fed. Cir. 2004), the court noted that the claim term “operatively connected” is “a general descriptive claim term frequently used in patent drafting to reflect a functional relationship between claimed components,” that is, the term “means the claimed components must be connected in a way to perform a designated function.” “In the absence of modifiers, general descriptive terms are typically construed as having their full meaning.” Id. at 1118, 72 USPQ2d at 1006. In the patent claim at issue, “subject to any clear and unmistakable disavowal of claim scope, the term ‘operatively connected’ takes the full breath of its ordinary meaning, i.e., ‘said tube [is] operatively connected to said cap’ when the tube and cap are arranged in a manner capable of performing the function of filtering.” Id. at 1120, 72 USPQ2d at 1008.

        1. 7.3.1.1

          As I posted last week, 112(f) remains an area vastly misunderstood.

          Claim language sounding in function is quite a different thing that a TOTALLY FUNCTIONAL claim.

          An element that has structure – such as a computer processor – that ALSO can be modified and configured so as to have a new or different capability is NOT an item that falls into 112(f).

          There is a seemingly purposeful obfuscation about “objective physical structure” and any such place of such in different – and optional – claim formats, ANY OF WHICH OPTIONS are fully amenable and are such outside of the control of the optional claim format as provided by 112(f).

          For all of those thinking that David’s point is “fail” because perhaps one of two of his examples ARE properly examined under 112(f), your myopia misses the larger point here of just what is permissible OUTSIDE of 112(f).

          The late Ned Heller simply could not grasp this point either, but the point remains: words sounding in function, coupled with an item of structure, are sufficient in and of themselves WITHOUT resorting to 112(f).

          It is utter fallacy to think that clams ONLY with objective physical structure are legitimate (or even such claims and claims falling under 112(f) are the ONLY types of claims permitted).

          Why is this point even up for discussion?

          (that last question is rhetorical, as it is quite clear that the only reason why this comes up for discussion is the purposeful obfuscation due to attempts at dissembling aimed at one particular form of innovation that certain people “feel” should not be granted the protection of patents.

          1. 7.3.1.1.1

            “An element that has structure – such as a computer processor – that ALSO can be modified and configured so as to have a new or different capability is NOT an item that falls into 112(f).”

            A car has structure.
            If I modify a car to hover above the ground, and disclose one embodiment, you think: “A car configured to hover” is not 112(f)?

            The correct question is “at the time of filing, was the structure of a ‘car’ sufficient to carry out the recited function of hovering.” If it was, then there is no novelty. If it wasn’t, then there is 112(f) issues.

            1. 7.3.1.1.1.1

              Absolutely wrong

            2. 7.3.1.1.1.2

              If I modify a car to hover above the ground, and disclose one embodiment, you think: “A car configured to hover” is not 112(f)?

              It’s not, but it’s not valid either and as a practical matter it never can be.

              A car configured to hover is a claim directed to all manner of making a car hover. As a practical matter, one can’t disprove the negative. One of skill would not believe that possessing a single manner of making a car hover means that the patentee/applicant has ALL manners of making the car hover.

              It makes no more sense to say that because I disclosed structure X, which makes a car hover, I possess all means of making a car hover than for me to say I possess an orange, therefore I must possess all fruit, or all food.

              He’s right that “a car configured to hover” does not invoke means-plus, but that just means the claim has gone from covering the structure in the spec + equivalents to covering nothing at all.

              1. 7.3.1.1.1.2.1

                If I modify a car to hover above the ground, and disclose one embodiment, you think: “A car configured to hover” is not 112(f)?

                It’s not, but it’s not valid either and as a practical matter it never can be.

                As an intuitive matter, I think that this is right, but I am having a hard time articulating why. Is it because this is (in effect) a single-means claim, and thus runs counter to the §112(f) requirement that the claim be “[a]n element in a claim for a combination…”?

        2. 7.3.1.2

          Allow me to quote from the Book of MPEP…

          Naturally, I cannot stop you from quoting anything you wish to quote, but this does not actually answer my question. My question is not “does the law treat those cited limitations as means+function limitations?”. I agree (as per the law your quotation cites) that few if any of them will be treated as means+function limitations. My question is why should they not be treated as means+function limitations?

          Consider, for example, “heating means configured to transfer the heat to a human body and including a ceramic heating element installed in the sitting plate and the waist plate.” It is clear enough why this one should not be treated as a means+function—viz. because the claim itself specifies a structure (“heating element… in the sitting plate…”) to carry out the function, so clearly this should not be construed to be broader than the specified structure.

          In the case of (e.g.) “a cover pivotally mounted to the vehicle for movement between an open position… and a closed position…,” however, why would it be unfair or otherwise undesirable to construe this limitation as limited to the configurations shown in the patent, and art-recognized equivalents thereof?

          1. 7.3.1.2.1

            Let’s recap. Your question was:

            “I am sure that in practice most of the other examples would not be construed according to §112(f), but why should they not be? It seems to me that for most of these examples that you cite, it would be fair to both the patentee and the public if the boldfaced limitations were construed under §112(f).”

            My response is that they would not be interpreted under § 112(f) because:

            (a) Applicants are permitted to present claims in a function but non-MPF format.

            (b) As noted in the MPEP, the absence of a term like “means” raises a rebuttable presumption that the claims do not involve 112(f):

            A claim limitation that does not use the term “means” or “step” will trigger the rebuttable presumption that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph does not apply.

            The examples that I posted above (with the exception of the “heater means” limitation) do not use the term “means.” Therefore the rebuttable presumption is in effect, and 112(f) probably does not apply to at least some of them.

            If you want to see how far the courts will go to avoid imputing a 112(f) interpretation to claims in non-software-related fields, check out Lighting Ballast v. Philips Electronics, in which this phrase was found not to invoke 112(f):

            “voltage source means providing a constant or variable magnitude DC voltage between the DC input terminals.”

            Why?

            The district court cited testimony from an expert for Lighting Ballast, both of whom testified that one of skill in the art would understand the claimed ‘voltage source means’ to correspond to a rectifier which converts alternating current to direct current, or other structure capable of supplying useable voltage to the device.

            The district court determined that ‘while the “voltage source means” term does not denote a specific structure, it is nevertheless understood by persons of skill in the lighting ballast design art to connote a class of structures, namely a rectifier, or structure to rectify the AC power line into a DC voltage for the DC input terminals.’

            The district court further noted that ‘it is clear to one skilled in the art that to provide a DC voltage when the source is a power line, which provides an AC voltage, a structure to rectify the line is required.’ … We defer to these factual findings.

            So the term “voltage source means” does not invoke 112(f) because it provides “structure.” And that “structure” is: anything that fulfills the recited function, because PHOSITA in the field would be capable of determining whether any component fulfills that function.

            This kind of circular, solipsistic nonsense reveals the vacuousness of jurisprudence around 112(f).

            1. 7.3.1.2.1.1

              Your question was… “why should they not be… construed under §112(f)[?]”

              My response is that they would not be interpreted under § 112(f) because… [emphases added]

              Once again, we are in agreement that most courts would not construe any of your cited examples as §112(f) limitations, but that is not my question. I agree with you that “courts will go to [great lengths to] avoid imputing a 112(f) interpretation to claims in non-software-related fields…,” mostly out of laziness (it can be a lot of work figuring out “equivalents” in a §112(f) construction—much easier just to pretend that §112(f) is not implicated).

              It seems to me that both the public and the patentee would be well served if §112(f) were more widely implicated than it presently is. I take it, however, that you do not agree. I am trying to elicit an explanation of why you think it better if courts give in to their lazy instincts and resist §112(f) constructions of functional claim limitations.

              1. 7.3.1.2.1.1.1

                I see. You didn’t mean “should” as a prediction, but “should” as a desire to see the law changed.

                I don’t agree with you, but I understand your point. At least we agree about how the law currently operates.

            2. 7.3.1.2.1.2

              in a function but non-MPF format.

              Some people absolutely refuse to understand that simple concept.

        3. 7.3.1.3

          You might want to read the cited General Electric v. Wabash case in 2173.05(g) before you go throwing it around so casually to support your position.

          Wabash states that describing the novelty of the invention by the result of using it (functionally) rather than by what it is (without structure) is indefinite.

          1. 7.3.1.3.1

            Three little words to deflate your bubble, Random:

            Vast Middle Ground

            This is NOT a new concept, son. Heck, I’m not even the one that coined that phrase.

            1. 7.3.1.3.1.1

              Neither you nor that coiner (with due respect to him) are members of the Supreme Court. And lest you wonder which has more value, the former can’t even match my scoreboard of what the law is, while the latter have never been reversed by any court.

              1. 7.3.1.3.1.1.1

                are members of the Supreme Court.

                Funny that you reach for the wrong branch of the government when it comes to writing patent law…

                I have as much legitimate power as the Justices in this regard.

    4. 7.4

      David:

      What point are you trying to make? If these were litigated at least half would likely be interpreted under 112(f).

      “An angle adjusting unit for…” = 112(f)
      “A heating means configured to…” = 112(f)

      Intended use statements = intended use, no patentable weight, but not 112(f).

      Again, what point is it you are trying to make? That 112(f) claiming also exists in mechanical arts? Deep.

      1. 7.4.1

        The point is far more simpler eightnineteneleven – see above.

      2. 7.4.2

        “A heating means configured to…” [would likely be interpreted under 112(f)].

        This is a small quibble, because I definitely agree with the broader point that you are trying to make, but I think that this particular example is a bad one to cite. I expect that this particular limitation actually would not be construed under §112(f).

        Under Williamson v. Citrix Online LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) the word “means” creates a rebuttable presumption that the limitation be construed under §112(f). Because there is a “means” here, that implies that the limitation by default will be construed under §112(f), unless the patentee resists this construction by adducing evidence that the claim itself recites sufficiently definite structure to perform the recited function. In this case, however, the claim recites “a heating means configured to transfer the heat to a human body and including a ceramic heating element installed in the sitting plate and the waist plate.” The structure (“ceramic heating element installed in the sitting plate and the waist plate”) is entirely sufficient to perform the recited function (“transfer[ing] the heat to a human body”), so if the patentee wants to resist a §112(f) construction, it seems to me that they are fairly well positioned to rebut the §112(f) presumption.

      3. 7.4.3

        These claim limitations have no specification support for an explicitly recited range of embodiments. They are simply presented, optionally with some examples. So they aren’t valid under any 112(f) interpretation.

        Yet, they issued anyway. And if you think they have no patentable weight, then look at the claims without those elements and tell me why they were allowed and what is the point of novelty. What you’ve got left is linguistic shrapnel that does not support a patent.

        My point is that nobody is ringing alarm bells over the use of purely functional, non-112(f) language in the mechanical arts – because it’s not controversial. I can easily produce similar examples in the chemical or electrical arts – again, not controversial. It’s only in the software arts that people say: “Oh no, functional language, the patent system is borken!”

        1. 7.4.3.1

          These claim limitations have no specification support for an explicitly recited range of embodiments. They are simply presented, optionally with some examples. So they aren’t valid under any 112(f) interpretation.

          Does it seem logical to you that something be invalid under a small scope (embodiments + equivalents) because of the lack of disclosure, but would be valid under a much larger scope (anything which achieves the result) under the same disclosure?

          Yet, they issued anyway. And if you think they have no patentable weight, then look at the claims without those elements and tell me why they were allowed and what is the point of novelty. What you’ve got left is linguistic shrapnel that does not support a patent.

          Every patent that was eventually struck down was originally granted. The office doesn’t do a very good job of providing properly scoped patents. And here the issue is not an engineering question of what is new, but the legal question of whether what is new is properly worded. The Office requires engineering degrees, not legal degrees, which ought to be clear in how we handle Alice questions.

          My point is that nobody is ringing alarm bells over the use of purely functional, non-112(f) language in the mechanical arts – because it’s not controversial. I can easily produce similar examples in the chemical or electrical arts – again, not controversial. It’s only in the software arts that people say: “Oh no, functional language, the patent system is borken!”

          I am from the software arts, so I can’t speak to the mechanical arts, but I would assume the structure/function relationship is both more well-known and more limited than in computers.

          Regardless, I can speak to computers, and there’s a clear problem that code that performs a function (outside of 112f) is a serious issue. If I told you to write a book on subject X and I told 20 other people to do so, I’d get 21 completely different takes on the subject of varying degrees of usefulness. It would be, let’s say “disingenuous at best” that because you wrote one of the books that you should be given credit for all of the books. If I went around claiming your writings of the subject of patent law as my own, simply because I got to the field of patent law before you did (I didn’t, but hypothetically if I did) you would be understandably upset. I should be entitled to my writings and to similar writings, not to my writings and any genus I wish to draw which describes my writings in some vague way. Computer functionality is no different – a claim to computer functionality is an attempt to say that because I have written on the issue first, all of your thoughts are the same thing as mine.

          Nobody questions whether Lizardtech is proper law, for example, but yet if you actually applied Lizardtech virtually every claim I’ve signed off on would be invalid.

    5. 7.5

      You don’t seem to realize that some of those patents you cited were explicitly mentioned by the examiner as invoking 112(f)… You didnt read the prosecution history to see this, evidently, but it makes your entire point worthless.

      1. 7.5.1

        it makes your entire point worthless.

        Clearly not so – all it needs be for the point to be had is but one of the examples to legitimately show the use of functional language outside of 112(f).

        Are you seriously doubting this proposition?

        1. 7.5.1.1

          Anon,
          His point was somehow “look, all these cases would be MPF in computing arts but are not in mechanical arts.” Well, gee, the claims were also interpreted as MPF in mechanical arts, so his point — at least with respect to some of his examples– doesnt hold.

          You seem to think any structure gets you past 112(f). This is not true. *Sufficient* structure for the recited function gets you past 112(f). “A keyboard for inputting data” is not 112(f), because a keyboard is recognized as *sufficient* structure for the function of inputting data. “A keyboard configured to releive carpotunnel syndrome” is 112(f), because the structure implied b “a keboard” is *not sufficient* for the recited structure.

          Just like “a pipe for transporting fluid” is not 112(f). There is no fundamental difference here between computing arts and mechanical arts, as David Stein seems to suggest with his flawed examples.

          This is not controversial.

          1. 7.5.1.1.1

            Well, gee, the claims were also interpreted as MPF in mechanical arts

            Except – as he showed – they were not.

            Try reading the rest of my post – as well as David’s rebuttal at 7.5.2. It might save you from eating your words.

            For example, “at least with respect to some of his examples” absolutely misses the point that I presented.

            You seem to think any structure gets you past 112(f). This is not true.

            I never said nor indicated that.

            *Sufficient* structure – As I have ALWAYS indicated (hint: Vast Middle Ground).

            Please put away the strawman, Thanks.

            A keyboard configured to releive carpotunnel syndrome” is 112(f),

            Cite please.

          2. 7.5.1.1.2

            Post 7.5.2 below requires your reply.

      2. 7.5.2

        Here’s the prosecution history.

        9,909,355 has one office action and a notice of allowance. No mention of 112(f) in either.

        9,937,421 has three office actions and a notice of allowance. No mention of 112(f) in any of them.

        9,918,554 has one office action and a notice of allowance. 112(f) is mentioned solely with respect to the one element (the “heating means”) that is explicitly characterized as MPF. Nothing in the prosecution history suggests that 112(f) applies to the “control unit,” the “angle adjusting unit,” the “up-and-down adjusting unit,” or the “leg unit” – all of which are recited only by a name and a function.

        9,952,026 has literally one item: a notice of allowance. No mention of 112(f).

        9,957,059 has two office actions and a notice of allowance. No mention of 112(f) in any of them.

        In summary: Throughout the prosecution history of these five patents, only one mention occurs of 112(f) – relating to the single element that is explicitly claimed as “heating means.”

        JamesFisher, please point to the portions of the prosecution history that you examined before writing your post.

        1. 7.5.2.1

          Not only has he not done so, he doubled down on his error by replying to me above without even bothering to note that you had debunked his post.

          You can bet that James is done with the conversation here, and is not capable of acknowledging his error or learning the point presented.

    6. 7.6

      I wish that more folks read and studied In re Fuetterer, 319 F.2d 259, 263 (C.C.P.A. 1963). It is a case that repays careful study. As Judge Rich’s opinion for the court explained, “the only portion of Title 35… which makes any reference to the use of statements of function specifically authorizes such use. If we are to affirm the Patent Office rejection based on ‘functionality,’ therefore, we must do so on the basis that (1) the type of ‘functionality’ involved here is neither comprehended nor authorized by the third paragraph of 35 U.S.C. § 112… .”

      In other words, the permissibility of functional claiming is founded in and depends on §112(f). It is only because of §112(f) that functional claiming is even statutorily possible, so the validity of a functional limitation must necessarily conform to §112(f), or else fail and drag the claim down with it.

      Incidentally, the technology at issue in that case was a car tire—i.e. not software. In other words, while you are certainly correct that people presently seem only to care about functional claims in the context of software, back when Judge Rich sat the bench and courts really understood patent law, functional claims were policed under §112(f) in all art fields. That is the way it is supposed to be.

      1. 7.6.1

        I significantly disagree with your view of Fuetterer. The sentence just before your quote is “‘Functional’ language in claims is not expressly condemned by the patent statutes. On the contrary, the only portion of Title 35, U.S.C., which makes any reference to the use of statements of function specifically authorizes such use.”

        The remaining part of the sentence you quoted is “and (2) there exists a body of extra-statutory case law which specifically condemns the type of ‘functionality’ involved in the instant claims” (the and is italicized).

        In other words, Fuetterer (correctly) holds that there is nothing per se wrong with claiming by function. Not every limitation outside of 112f is invalid, therefore there is nothing per se wrong with claiming by function.

        However, there “exists a body of case law which specifically condemns” claiming novelty by functional result. (Notice I removed “extra-statutory” because it is in fact based on the statute) Claiming novelty by functional result is commonplace in certain technology sectors today, and a patent prosecutor who reads “not per se improper” as “therefore, proper” is doing the client a disservice.

        Fuetterer is very much a problem case even though it was the correct result. In that case, well-known salts were referred to by function. Although the Fuetterer court specifically pointed out “(2) that cases cited in support of the Patent Office’s condemnation of the statements of function used in the instant claims are inapplicable to the situation here; ” Fuetterer has been used to completely whitewash those cases – cases cited to Fuetterer to say functional language was proper even though they were clearly cases where previously cited cases were clearly applicable.

        It is only because of §112(f) that functional claiming is even statutorily possible, so the validity of a functional limitation must necessarily conform to §112(f), or else fail and drag the claim down with it.

        All 112f is a rule of construction wherein the functional language in the claim is substituted out and the structural language from the spec is substituted in, together with equivalents. 112f ensures that there will be no scope of enablement or scope of possession issues. There’s no need to try and make special rules, just apply claim construction and then apply the same patentability rules all the time.

        1. 7.6.1.1

          However, there “exists a body of case law which specifically condemns” claiming novelty by functional result. (Notice I removed “extra-statutory” because it is in fact based on the statute)

          Not so. Notice that the lineage of the statute that you reach for is ALL pre-1952 (even judge-made cases post 1952 reach to before 1952). As I have amply noted, Congress changed that in the Act of 1952, and even Frederico commented upon that in the part of his dissertation in which he shared his feelings.

          You ARE correct in that the use of functional terms in claims is not limited to – nor dependent upon – 112(f). But you err in understanding what that means as you then quaff the Court’s Kool-Aid.

        2. 7.6.1.2

          I significantly disagree with your view of Fuetterer.

          Fair enough, although I do not disagree with anything in your #7.6.1, so perhaps I was not as clear as I might wish in my #7.6.

          All 112f is a rule of construction wherein the functional language in the claim is substituted out and the structural language from the spec is substituted in, together with equivalents.

          Agreed. I did not mean to imply that §112(f) imposes a substantive requirement for patent validity, although I certainly see how “a functional limitation must necessarily conform to §112(f), or else fail and drag the claim down with it” would leave that impression. Mea culpa.

          What I should more precisely have said is that some functional limitations can run afoul of §112(a)/(b), and sometimes §112(f) can rescue those claims from invalidity. In those circumstances, one must conform to the rules of §112(f) or else the claim fails. It is quite correct, however, that in those circumstances the claim does not fail under §112(f), but rather under §112(a) and/or (b).

          Indeed, this is exactly what Fuetterer explains, and everyone would do well to consider Fuetterer more closely and carefully (not least the CAFC judges who are supposedly bound by Fuetterer, but who rarely seem to notice its existence). As Judge Rich explains, in order for a claim to fail for functional limitations, there are two things that both must happen: “(1) the type of ‘functionality’ involved… [must be] neither comprehended nor authorized by the third paragraph of 35 U.S.C. §112 and (2) there [must] exist[] a body of extra-statutory case law which specifically condemns the type of ‘functionality’ involved in the… claims… .”

          In other words, there must be both an interpretation of §112(a)/(b) that lands the claim in the soup, and a reason (single means claim, lack of disclosed structure, etc.) why §112(f) cannot rescue the claim back out of the soup. Naturally, however, where a functional limitation does not run afoul of §112(a)/(b) in the first place, it cannot fail for lack of conformity to §112(f).

      2. 7.6.2

        In other words, the permissibility of functional claiming is founded in and depends on §112(f).

        CLEARLY not so. – your deisre for “study” is one misapplied, as you seek to merely confirm that which you wish were the law.

        Your own studies then are deficient.

        112(f) provides an option for PURELY functional claiming.

        As already noted: Vast Middle Ground blows a huge hole in your premise.

      3. 7.6.3

        a comment is stuck in the new “non-moderated” count filter, but I was going to indicate there that I had led off the comments here with noting how often and how deeply people (apparently including Greg) simply misunderstand 35 USC 112(f).

        I omitted the comment when I could not find it below. It turns out that I made the comment on another thread preceding this entire story line (but that led directly to this story line):

        link to patentlyo.com

  13. 6

    This is one of the most poorly thought out posts I’ve seen here in a long time. Wow.

    What’s a “specific process”? Please tell everyone.

  14. 5

    News flash for the kool aid drinking authors: many many people, attorneys included, would like to see 101 written to narrow the scope of eligible subject matter.

    1. 5.1

      WE are all very much aware that there are anti-patent forces, Malcolm.

      How are you dealing with your cognitive dissonance issue?

      1. 5.1.1

        anti-patent

        LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

        Love it when you do this, “anon.” You’re very very serious!

        Now watch, folks, as “anon” and his cohorts tell us a story about the super d00 per important need for “clarity”.

        1. 5.1.1.1

          O’Tay – you love when your duplicity is exposed…

          I guess that might be one way of dealing with your cognitive dissonance.

  15. 4

    A few thoughts:

    1) “[T]he claim would be eligible under § 101(b), and the disclosure would delimit claim scope for patentability and infringement.” Please point out the language in this revised § 101 that says that the claimed subject matter would be eligible. I do not actually see any such provision in this statutory text. I see only a rule of claim construction.

    2) Assuming that this text confers eligibility on the claimed matter, why exactly do we want this outcome? Imagine that I discover a novel protein in the human body, and I disclose and claim it with exquisitely narrow particularity. Because this proposed statute permits the eligibility of this narrow claim, every human being instantly becomes an infringer, even though they are doing nothing more than the ordinary physiological reactions that they had been doing from time immemorial before my patent. Why is this a desirable public policy outcome?

    3) “[T]his proposed amendment… applies consistently across all fields of invention, and can be efficiently managed by the examining corps since they are already familiar with the operation of § 112(f).” I take it that the authors do not practice much in the Art Unit 1600s. I assure from personal experience that the folks who examine applications most likely to implicate the natural product exception are not robustly familiar with § 112(f). Every time I write a means+function claim, it is as if I had set off a stink bomb. Most of the examiners there never see § 112(f) claims and do not know what to do with them.

  16. 3

    So, if you discover that pressure equals density times absolute temperature times a constant, and that you disclose a process involving measuring pressure with a pressure sensor, measuring temperature with a thermometer and determining density of a gas by dividing the pressure by the absolute temperature and by the constant using a computer, then a claim reciting this process would be eligible? That does not look like something that Congress would pass.

    1. 3.1

      IDK. Section 101 says “Whoever invents or discovers…” The whole natural law judicial exception is kinda atextual.

      1. 3.1.1

        Section 101 also says “new.” Laws of nature—even newly discovered laws of nature—are quite old.

        1. 3.1.1.1

          …alas, you too appear to partake in the fallacy that the universe is unchanging.

          There is no “law” that demands such.

  17. 2

    Another “fix” by making patents weaker…

    I will completely pass here, as there is nothing of merit present.

  18. 1

    Seems like a decent proposal on the face of it, but then you may just start seeing jumbo specs which still for all intents and purposes allow domination of the abstract idea itself.

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