The Relationship between Eligibility and Functional Claiming

by Dennis Crouch

Glasswall Solutions v. ClearSwift (Fed. Cir. 2018) (non-precedential)

Glasswall’s patent claims are directed to a process of regenerating electronic files in a way that cuts-out non-conforming data. The approach here could be used as a virus filter.  U.S. Patent Nos. 8,869,283 and 9,516,045.  Although the generalized approach here is a nice goal, the Federal Circuit noted that the claims themselves did not actually claim how to achieve the goal.

The claims at issue … do not purport to claim how the invention receives an electronic file, how it determines the file type, how it determines allowable content, how it extracts all the allowable data, how it creates a substitute file, how it parses the content according to predetermined rules into allowable and nonconforming data, or how it determines authorization to receive the nonconforming data. Instead, the claims are framed in wholly functional terms, with no indication that any of these steps are implemented in anything but a conventional way.

So, taking this conclusion about these “wholly functional” terms, the next step is to ask whether that conclusion implicates any particular patent doctrine.

In O’Reilly v. Morse, 56 U.S. 62 (1853), the Supreme Court invalidated the broadest of Morse’s telegraph claims — claim 8 that had broadly claimed the process of sending messages at a distance without being limited to any particular machinery.  In Morse, the court held that the claim consisting of a single functional limitation was “too broad and cover[ed] too much ground.”  Later, in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), the Supreme Court was faced with a situation closer to Glasswall‘s.  In that decision, the Supreme Court found that the claimed oil-well measuring apparatus included a wholly functional element at the invention’s point of novelty.  That lack of specificity led the court invalidate the claim as indefinite. The Halliburton Oil court wrote that it is improper for a claim to describe its “most crucial element . . . in terms of what it will do, rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus.” Congress however rejected Halliburton in the 1952 Patent Act by adding the provision that elements of a combination claim may be drafted in functional form. 35 U.S.C. 112 p 6 (now 112(f)).

Back to the present case. in Glasswall, the court did not touch definiteness but rather focused its attention on eligibility under 35 U.S.C. 101 (as expanded by judicial decisions).  Here, the “wholly functional” language of the claims led the court to finding them directed to an unpatentable abstract idea.

Invalidity affirmed.

 

167 thoughts on “The Relationship between Eligibility and Functional Claiming

  1. 17

    The Malcolm “Look at me Look at me” posting on top (3 Times) only goes to show how deep into the weeds Malcolm is.

    Antigens…?

    Meh, no one really cares all that much.

    Software?

    You do not have anything at all correct in your rant there.

    And it’s not like you haven’t been corrected many many times. It’s just that you don’t care about the corrections. All you care about is your drive-by monologue and Internet style shout down.

  2. 16

    Because it can’t be repeated often enough:

    DC: Congress however rejected Halliburton in the 1952 Patent Act by adding the provision that elements of a combination claim may be drafted in functional form. 35 U.S.C. 112 p 6 (now 112(f)).

    Congress did not “reject Halliburton” because the prohibition against functional claiming at the point of novelty is an essential part of any sane, healthy patent system. This really shouldn’t have to be explained to patent attorneys or anyone remotely associated with the patent system.

    What Congress did in 1952 was address the (incorrect) notion that had sprung up in the wake of Halliburton that functional language anywhere in the claim was f@tal to the validity of the claim. In addition, Congress approved of a claiming paradigm that would allow applicants to use functional language in a claim, even at the point of novelty, but only when the specification recited physical structure for carrying out the recited function.

    There have been two notable exceptions to this rule. The first was the so-called “antibody exception” which was actually recognized as an “exception” and expressly referred to as such. At the PTO level, the “antibody exception” permitted applicants who discovered new antigens to claim antibodies which recognized those new antigens without providing any structures which distinguished those antibodies from prior art antibodies. The policy behind the exception was that — at the beginning days of the exception — it was easy to make antibodies which recognized a new antigen but it was difficult to obtain the amino acid sequence of the antibody. Importantly, there is not a single instance of a functional claim to an antibody that ever survived CAFC scrutiny and we can rest assured that the Supreme Court would never have approved of the exception. Most of us understood that the “exception” was pretty much worthless for enforceability purposes and, indeed, that was proven to be the case. The “antibody exception” has been put to bed, forever.

    The other major exception to the rule has, unfortunately, never been recognized as an exception by the CAFC (and we can all guess why that is). That’s the “software exception” where the CAFC has created a bizarre internally contradictory and frankly absurd hodgepodge of ever-evolving rules which permit “new” computers to be claimed solely on the basis of their functions. The policy behind this exception is based on two incredible fantasies: (1) that there is some kind of objective physical/structural “essence” which can be inferred from the recitation of logical operations to be carried out by a prior art programmable computer; and (2) that without the “exception” human beings would somehow not be motivated to program computers and progress in the “computer logic arts” would be hindered. As most of us are aware, these fantasies are the opposite of reality and the exception for software has only served to funnel money to the wealthy classes (including patent attorneys), create grifting opportunities for the least innovative people who ever walked the earth, and to erode the credibility and functioning of the system as a whole (by flooding the PTO with massive piles of “do it on a computer” g@ rb@ge).

    1. 16.1

      This is one of the reasons why many commentators and academics think functional claiming should still be improper–Halliburton was never overruled by Congress, contrary to Dennis’s statement. Congress simply created an exception allowing patentees to draft functional claims in means-plus-function format under 112(6)/112(f).

      The net impact of that development should have been, if you’re going to draft purely “functional” claims, you have to use 112(6)/112(f), otherwise Halliburton applies and they’re invalid. And 112(6)/112(f) imposes the famous “quid-pro-quo,” and limits the claim limitation to structures in the specification and equivalents thereof.

      But this argument has been made in numerous software cases, without success. Patentees continue to get away with functional claims reciting “computer code for” or “apparatus configured to”, which are really no different than classic means-for claims. But despite Williamson, courts are still very reluctant to find that anything that doesn’t recite “means” is actually governed by 112(6)/112(f). The net result is that patentees can continue functional claiming in the software realm, without having to disclose or be limited to any particular technique.

      1. 16.1.1

        Lode_Runner,

        You are wrong – see my posts passim (and especially at post 1).

        Plain and simple: Halliburton was abrogated.

        The use of terms sounding in function permeate throughout 112.

        The option under 112(f) is for the further PURELY functional claim format.

        There is a vast difference.

        One may even call that vast difference a Vast Middle Ground.

        (and please note that THAT vast middle ground is outside of the optional use of 112(f)).

    1. 15.1

      “Abstract” all on its own was not bothered to have been defined by the Court.

      Your desire to inject two “abstracts” simply will not — and cannot — help.

      1. 15.1.1

        anon you have devolved to total incoherence on this subject.

        It’s not arguable by any serious participant that abstraction means nothing to the proper functioning of the patent law. It’s a concept rooted in legislation and jurisprudence from the beginning.

        If a patent claim is not the same thing as an invention- and it’s obviously not- than there are automatically “two” kinds of abstraction. How that is recognized or not in current procedure is arguable, but that there is no difference between a claim and an invention?

        No way sister.

        1. 15.1.1.1

          It’s a concept rooted in legislation and jurisprudence from the beginning.

          It’s also in the dictionary.

          But these are patent maximalists! It’s “impossible” to figure out what “abstract” means. But “functionally related” — why, that’s the simplest concept in the world to understand and everything could be solved by 112 and 103 if it weren’t for those meddling kids.

          Funniest. Attorneys. Ever.

          1. 15.1.1.1.1

            It’s also in the dictionary.

            And yet the Justice explicitly did NOT go there (and had he done so, the discussion would be quite different).

            This is dissembling from you Malcolm, as this point had been put to you previously.

            1. 15.1.1.1.1.1

              “It’s also in the dictionary.”
              And yet the Justice explicitly did NOT go there

              He also didn’t say that the dictionary definition was irrelevant or plainly wrong.

              So what do the patent maximalists do under such a circumstance? Why, they stick their heads in the sand and pretend to be born yesterday.

              Very serious people.

              1. 15.1.1.1.1.1.1

                Tell me Malcolm, what DID he say?

        2. 15.1.1.2

          It is not a matter of “meaning nothing” and that is an odd reach for you to take my comment.

          But just “what” it means DOES matter from a “Void for Vagueness” Constitutional infirmity position (for the Court written version of the statutory law).

          That you f a i 1 to recognize this only shows that you are playing in a terrain that you just do not understand.

          As to your statement of “If a patent claim is not the same thing as an invention- and it’s obviously not,” you clearly do not understand just what Congress did in the Act of 1952 in response to a prior anti-patent Court.

          You need to get up to speed before you indulge yourself in fabricating your “help.”

          1. 15.1.1.2.1

            (PER Congress, the invention is what the applicant seems that the invention by way of the claims — the claims ARE what the invention is)

            You can “no way sister” all you want, but that means nothing.

            1. 15.1.1.2.1.1

              …the invention is what the applicant deems that the invention is by way of the claims…

              Typed too quickly…

            2. 15.1.1.2.1.2

              The invention is something real in the world, and the claims are words. A toddler can understand that.

              Object permanence typically starts to develop between 4-7 months of age and involves a baby’s understanding that when things disappear, they aren’t gone forever.

              Hmmmmmm

              1. 15.1.1.2.1.2.1

                I have to chuckle at your reply here, as you think that you are “on to something,” but in reality, you are so far away from the understanding that has already been shown by others (and notably me**).

                Yes, Marty, claims are words. Specifications are words, the entire application is made of words.

                But this applies UNIVERSALLY.
                EVERY patent, every claim, every specification, every application.

                Of what use then, do you think that you pointing this out has on distinguishing various things under the law?

                **As far as I can recall, I was the very first on these boards to share the Magritte painting of “The Treachery of Images” (Ceci n’est pas une pipe).

                NONE of this – none of the thrust of your “point” however is actually ON point to the points presented (and that Congress choose NOT the Court to determine “what the invention is” (much less, what the invention is “directed to”). Rather, Congress explicitly laid out that it is the applicant that gets to determine that – and the manner in which that is determined is (gasp) – the claims.

                Your musings and “reinvented” view of patent law remains unmoored to actual law.

                1. This notion that a court of law handling a patent litigation has no power to define “what the invention is” is self-rebutting.

                  As seen by hundreds and hundreds of Alice rulings, your assertion is a nullity.

                  As to me being “on to something”? Yes, I’m onto the fact that the system is still broken by information inventions. I’m onto the idea that the jurisprudence evolved in an unhealthy way in order to stop a raging forest fire, which is still smoldering and burning in spots.

                  It can be fixed, but not until the terms are settled upon, which they are not.

                2. self-rebutting….?

                  Do you understand the terms that you are using?

                  Do you recognize the grant of authority/responsibility BY Congress in 35 USC 112?

                  My assertion is NOT a nullity – that the score board is broken is a better description.

                  Your “information inventions” mantra is simply disassociated with the law as written by Congers.

                  Still.

                  You do have appoint here though (in the sense of even a blind squirrel may find a nut): terms are NOT settled upon.

                  But the blame for that rests fully with the Supreme Court.

              2. 15.1.1.2.1.2.2

                Good grief Martin, you do know the ’52 Act was specifically created to overturn all that 2nd Circuit – gist or heart of the invention, etc, etc. tests and this modern incarnation of ‘abstract’ is EXACTLY what the ’52 Act abolished (well abolished but for our current lawless SCOTUS).

          2. 15.1.1.2.2

            a “Void for Vagueness” Constitutional infirmity position (for the Court written version of the statutory law).

            Taken at face value, the statute is unconstitutional.

            We’re way ahead of you, Billy. Don’t try to catch up. You’re so far behind that you think you’re winning. In fact, we’re lapping you for the second time.

            1. 15.1.1.2.2.1

              The thing is Malcolm, you are running in the wrong direction.

            2. 15.1.1.2.2.2

              Taken at face value, the statute is unconstitutional.

              Care to explain that?

              Then care to provide what the judicial powers are in relation to laws found to be unconstitutional?

              (Hint: the Judicial Branch does not have authority to re-write laws to put forth their own desired policies.

              We’re way ahead of you, Billy.

              Funny that, as you have never provided anything even remotely close to a cogent Constitutional position.

              Sure, you have mouthed “First Amendment” (without any structured support for such a claim), but you have not even come close to the details that I have put forth for at least three different Constitutional infirmities (separation of powers, no present case or controversy, and Void for Vagueness).

              Can you do more than merely play the Internet tough guy//blow hard, and actually put forth a single cogent argument to show “how advanced” you are and why my three detailed arguments “can’t catch up”…?

            3. 15.1.1.2.2.3

              No explanations…?

              Shockers.

            4. 15.1.1.2.2.4

              STILL no answers.

              And doubtless, you are “right here.”

              So much for your being “right here” as being anything meaningful.

  3. 14

    Lest the thread drift off further into the “anon” and his bff Night Wiper’s fever dreams:

    DC: Congress however rejected Halliburton in the 1952 Patent Act by adding the provision that elements of a combination claim may be drafted in functional form. 35 U.S.C. 112 p 6 (now 112(f)).

    Congress did not “reject Halliburton” because the prohibition against functional claiming at the point of novelty is an essential part of any sane, healthy patent system. This really shouldn’t have to be explained to patent attorneys or anyone remotely associated with the patent system.

    What Congress did in 1952 was address the (incorrect) notion that had sprung up in the wake of Halliburton that functional language anywhere in the claim was f@tal to the validity of the claim. In addition, Congress approved of a claiming paradigm that would allow applicants to use functional language in a claim, even at the point of novelty, but only when the specification recited physical structure for carrying out the recited function.

    There have been two notable exceptions to this rule. The first was the so-called “antibody exception” which was actually recognized as an “exception” and expressly referred to as such. At the PTO level, the “antibody exception” permitted applicants who discovered new antigens to claim antibodies which recognized those new antigens without providing any structures which distinguished those antibodies from prior art antibodies. The policy behind the exception was that — at the beginning days of the exception — it was easy to make antibodies which recognized a new antigen but it was difficult to obtain the amino acid sequence of the antibody. Importantly, there is not a single instance of a functional claim to an antibody that ever survived CAFC scrutiny and we can rest assured that the Supreme Court would never have approved of the exception. Most of us understood that the “exception” was pretty much worthless for enforceability purposes and, indeed, that was proven to be the case. The “antibody exception” has been put to bed, forever.

    The other major exception to the rule has, unfortunately, never been recognized as an exception by the CAFC (and we can all guess why that is). That’s the “software exception” where the CAFC has created a bizarre internally contradictory and frankly absurd hodgepodge of ever-evolving rules which permit “new” computers to be claimed solely on the basis of their functions. The policy behind this exception is based on two incredible fantasies: (1) that there is some kind of objective physical/structural “essence” which can be inferred from the recitation of logical operations to be carried out by a prior art programmable computer; and (2) that without the “exception” human beings would somehow not be motivated to program computers and progress in the “computer logic arts” would be hindered. As most of us are aware, these fantasies are the opposite of reality and the exception for software has only served to funnel money to the wealthy classes (including patent attorneys), create grifting opportunities for the least innovative people who ever walked the earth, and to erode the credibility and functioning of the system as a whole (by flooding the PTO with massive piles of “do it on a computer” g@ rb@ge).

    1. 14.1

      >>MM Congress did not “reject Halliburton” because the prohibition against functional claiming at the point of novelty is an essential part of any sane, healthy patent system.

      Again, we have the anti-patent judicial activists trying to delete the any person skilled in the art. Functional claiming is fine—just fine–anywhere in a claim when it is enabled. The scope of the claim is the scope of enablement.

      It never ends with these twisted dishonest arguments.

      1. 14.1.1

        Functional claiming is fine—just fine–anywhere in a claim when it is enabled.

        This is false, as has been explained to you by your betters.

        If the only novel feature recited in your claim (whether directly recited, or indirectly recited) is a new functionality, then you’ve failed the enablement requirement. You haven’t even reached the floor of the requirement.

        1. 14.1.1.1

          This is false, as has been explained to you by your betters.

          If the only novel feature recited in your claim (whether directly recited, or indirectly recited) is a new functionality, then you’ve failed the enablement requirement.

          First, you are certainly not in any wild stretch of imagination, a “better.”

          Second, you have explained nothing.

          Third, you continue to confuse and conflate multiple concepts driven by the unexplained dichotomy of you wanting to remove from patent protection the most economical form of innovation out there (while maintaining your “making money is bad” ethos).

          Items IN a claim do not necessarily control the statutory category of the claim as a whole. You have this inane script about “functionalities” not being a statutory category and that script is a strawman at best. You also here seem to think that the claim — alone — somehow must be fully enabling; but it is NOT the claim that must be enabling.

          You crow about “not reaching the floor” when you are not even in a building with a floor. Come in first from the weeds and join the legal conversation before you crow.

      2. 14.1.2

        Functional claiming is fine—just fine–anywhere in a claim when it is enabled.

        This is almost correct. I would revise it only slightly to say that functional claiming is fine when it is enabled across its full scope. As a practical matter, however, how often does it happen that an inventor uses a functional term at the point of novelty and enables every manner of enacting that functionality? Almost never.

        In other words, functional at the point of novelty is fine in theory. In practice, however, it fails §112(a). I certainly agree, however, that in the rare instance in which an application really does enable the full scope of the functional term, then the functional claiming is unobjectionable.

        1. 14.1.2.1

          I would revise it only slightly to say that functional claiming is fine when it is enabled across its full scope. As a practical matter, however, how often does it happen that an inventor uses a functional term at the point of novelty and enables every manner of enacting that functionality? Almost never.

          I agree, but I think there’s an important distinction between “functionality” and “functional language”. A claim that only recites a result of an operation to be performed describes the operation in terms of its functionality, and yes, is likely to lack enablement. But a claim that recites a specific implementation of steps to achieve the operation may use functional language, but is not directed merely to the end result, and may be both eligible and enabled.

          For example, MPEP 2173.05(g) gives the examples of “comparatively large grains of such size and contour as to prevent substantial sagging or offsetting” as indefinite, and “transparent to infrared rays” as being definite. Additionally, both Enfish’s and Finjan’s claims used functional language: “an object identification number (OID) to identify each said logical row” and “Downloadable security profile that identifies suspicious code in the received Downloadable.”

          But again, I agree – claims that recite only the desired functionality, and not the implementation of how to achieve that functionality, whether in functional or structural language – are likely to be both ineligible and indefinite.

        2. 14.1.2.2

          Except it does not – as the use of terms sounding in function is present throughout 112 and the option in 112(f) is for only the PURELY functional.

          Outside of purely functional, what Congress provided has nothing to do with the attempted “Point of Novelty” discussions.

          Things to remember:

          Many art fields use terms like “screwdriver” that are “functional.”

          Think “Vast Middle Ground.

        3. 14.1.2.3

          Greg, there is no basis for your assertions about 112(a). The famous case used the word “any.” That can cause a problem.

          Your position is just absurd. A functional claim is ALWAYS fine as long as it is enabled. You are adding across it scope, but of course it must be enabled across its scope by what any person skilled in the art knows.

          The whole problem comes in with new ways to solve the problem —and then the answer is to ask whether the new way to solve the functional claim element is non-obvious. There is case law to support my position.

          Your position is just absurd–and frankly ridiculous. You are trying to require a claim to potentially include 1000’s of solutions —every solution known to an any person skilled in the art rather than use functional language.

          It never ends with this attempt by the judicial activists to burn down the patent system.

    2. 14.2

      This really shouldn’t have to be explained to patent attorneys or anyone remotely associated with the patent system.

      Malcolm and his number one meme of Accuse Others, as he denies reality of what Congress DID DO in 1952.

      Talk about “fevered dreams”…

      1. 14.2.1

        What is the name of that case anon that goes through the reasoning of scope of enablement? It slipped my mind. But basically the issue was whether the new way of solving the problem should invalidate the claims of the asserted patent as being too broad.

        Also, the doctrine of reverse equivalence. Shameful that patent attorneys try to ignore these case and the common sense logic and the practicality.

        I actually not long ago wrote a patent for a mechanical device (big) that used hydraulics and it arguably had a point of novelty. At least conceptionally. But there were literally hundreds of ways that any person skilled in the art knew how to solve the problem. It was the combination as it always is. I can’t image having to had enabled and claimed ever possible solution. That would have been hundreds of pages.

        1. 14.2.1.1

          Not sure which case it is that you are referring to, but I am reminded that the Court’s own penchant for empowering PHOSITA (as a “keep out” for obviousness) carries with it the “need” to include less in specifications (since what a PHOSITA may comprehend need not be included).

          This is a parallel (but in the opposite direction) of the “what is to be included” notion.

          Typical anti-patentists want the heightened PHOSITA for the 103 block, but do not want the mirror side of the easing of 112.

        2. 14.2.1.2

          …additionally, that passage from KSR (that speaks as to why PHOSITA is to be empowered) need be read as also empowering the doctrine of equivalents — which deals with the “reach” of what is in a specification to that which is not (but that would be recognized BY a PHOSITA).

  4. 13

    >Paul Morgan December 24, 2018 at 9:50 am
    Criticizing individual Sup. Ct. justices is pointless given that most Sup. Ct. patent decisions in recent years have been unanimous or nearly unanimous.

    This really isn’t the story. We almost had all of this done with in the Bilski decision had Scalia signed onto all parts of the majority decision.

    And, the concurring decisions are disturbing, e.g., in Alice, Breyer, Ginsburg, and Sotomayor said they thought NO business methods were patentable.

    So the situation is a little more complex. And Oil States was 7-2, which is disappointing as had Alito signed on to the dissent and with the new justice, then we’d be at 5-4. All it would take is for Ginsburg to finally kick out of it while Trump is president and Oil States could have been reversed. Alito is a great disappoint as was Scalia.

    1. 13.1

      I think the line of civility is interesting. You see when you get judges and justices applying the law and being fair minded that it would certainly be uncivilized to hope for a justice to finally kick out of it. But, when you have judges and justices that have gone rouge and think they can just do whatever they please ’cause they have the power, then it is fine to wish that they would leave their positions and how that occurs is their problem.

      But I certainly would not feel any remorse if people like Taranto kicked it or Ginsburg. I would say about time that POS left.

      1. 13.1.1

        I am less concerned with “civility” and the notion of “fair minded” (which is always up to the individual level of what is “fair”), and more concerned with the use of “civility” as some type of “let’s constrain the discussion and NOT use critical thinking.”

        As I have noted, words SHOULD BE a little sharp — especially in view of things being done in an unthinking manner. See John Maynard Keynes. When “civility” is emphasized, AND the issues underlying any generation of harshness are not being fully engaged on their merits, then THAT call for “civility” is nothing but a smokescreen for “sh ut up and just take it.”

        Our ethical duty demands more – and demands that we do NOT just “sh ut up and just take it.”

      2. 13.1.2

        when you have judges and justices that have gone rouge

        Gotta love it when the truth leaks out.

    2. 13.2

      Oil States could have been reversed.

      LOL

      And then what?

      Tell everyone your maximalist fantasies, Night Wiper! You’re a very serious person.

    3. 13.3

      Thomas disappoints on patent law – time after time. Oil States just blew it. Too bad SCOTUS didn’t take Ned’s case instead.

      1. 13.3.1

        Ned (rest in peace) was NOT the champion that we needed.

        He had a rather myopic “one-plank” view and simply did not grasp all the reasons why the score board was broken.

        Personally, I am glad that his case was not chosen.

  5. 12

    Criticizing individual Sup. Ct. justices is pointless given that most Sup. Ct. patent decisions in recent years have been unanimous or nearly unanimous.
    To overrule Alice and Mayo, support a Congressional change to 101 that has been thought through and vetted more carefully for unintended consequences and prior specific unpatentable subject matter statutes than pending proposals.

    1. 12.1

      Criticizing individual Sup. Ct. justices is pointless given that most Sup. Ct. patent decisions in recent years have been unanimous or nearly unanimous.

      This is a point that cannot be repeated too often nor emphasized too strongly. Misbegotten as I may think much recent drift in patent law to be, there is an undeniably bipartisan consensus behind recent patent law developments. If I were to lay you out a dozen recent SCotUS patent opinions (whether majority opinions, concurrences, or dissents) with the authors’ names effaced, and asked you to sort which are written by conservative justices and which by liberals, you could not do it.

      Similarly, whatever one might think of the AIA, it was a very bipartisan bill. Perhaps it was the last such bipartisan bill of the last decade.

      Those of us who oppose most of the recent changes in patent law need to internalize and address this point. The patent law is changing because the American political consensus favors this change. If we want to turn this tide, we need to do the spade work around building a different consensus.

      1. 12.1.1

        Those of us who oppose most of the recent changes in patent law need to internalize and address this point.

        Most of the “recent changes in patent law” that were allegedly effected by the Supreme Court are nothing but reasonable corrections to the horrible “less recent changes in patent law” that were effected by the know-nothing patent maximalists who infested the patent bar and held the PTO and CAFC hostage. State Street Bank was one of the worst decisions in the history of the CAFC, matched only by the CAFC’s disgustingly inept decision in Prometheus v. Mayo.

        And let’s make no mistake: the worst actors in that bunch were (and are) stalwart members of the Repyu k e Party, which is officially the Trump Party now (i.e., self-absorbed glibertarians who care about nothing beyond enriching themselves). Big Jeans and his crew are quintessential examples of these rotten excuses for human beings.

        What you need to “internalize and address”, Greg, is that the profession was been turned into a cl0wn show by a pack of loudmouthed l0wlifes from East Texas. And a lot of those people are “still with us”, unfortunately. Their playthings need to be expunged. Then they will find another grift, surely, but at least the patent system will be left alone and people will be free to use computers for their intended purpose without having to deal with a zillion utterly cr@ p patents filed by patent attorneys who can’t argue their way out of a paper bag.

        1. 12.1.1.1

          Your rant is noted.

      2. 12.1.2

        Not what I got out of listening to the Oil States oral arguments. No, I heard liberal-minded nonsense coming from at least two justices and the more recently appointed conservative justices opposing said views.

        1. 12.1.2.1

          What counts is the votes, not the oral arguments. Oil States was 8-1, and the 1 was more of a rant against any kind of administrative proceeding.

          1. 12.1.2.1.1

            Paul,

            In this instance, “less” is not “more,” and the better understanding comes from taking into account the socio/political views and animus of the individual Justices.

            1. 12.1.2.1.1.1

              …and I would further add that your call would have some (minimal ) merit, IF the Bench was not legislating a desired (policy) Ends.

              The “policy” aspect necessarily implicates the “political.”

          2. 12.1.2.1.2

            7-2

            1. 12.1.2.1.2.1

              Shouldn’t we actually wait to see how Justices Gorsuch & Kavanaugh vote in Helsinn before concluding that Pres Trump has appointed justices with a different view of patent law than the rest. After all, the same Federalist Society that vouched for these two also vouched for Roberts & Alito. There has long been a bipartisan consensus behind badly deteriorating the patent law. Until I see evidence that the two newest justices are different, my default assumption is that these two are just like the rest of the GOP-appointed justices.

              1. 12.1.2.1.2.1.1

                There has long been a bipartisan consensus behind badly deteriorating the patent law.

                LOL

                What “bad deterioration” are you talking about, Greg? Be specific.

              2. 12.1.2.1.2.1.2

                Good point, Greg. I think there is only 1, though. Gorsuch I think we know is for patents.

                1. Like I said, let’s wait for his Helsinn vote before drawing any conclusions. A single swallow does not a summer make, nor a single Oil States dissent.

      3. 12.1.3

        Greg: The patent law is changing because the American political consensus favors this change. If we want to turn this tide, we need to do the spade work around building a different consensus.

        Yes, good luck convincing people that information and logic pertaining to their medical information should be protectable by patents handed out by the wealthy attorneys at the PTO to their wealthy attorney friends in Texas.

        Pretty sure that’s going to be the least popular position in the room every time.

        So what’s Plan B, Greg? How are you going to hand over ownership of correlations to the patent attorney class? Just sneak it through in the middle of the night because “you know better”?

        1. 12.1.3.1

          handed out by the wealthy attorneys at the PTO to their wealthy attorney friends in Texas.

          Done dissembling yet?

      4. 12.1.4

        Ok, let’s start by ‘trust busting’ the network effect companies. Because believe me, there is a ‘consensus’ the patent system is downright bothersome to those owning a natural monopoly.

        1. 12.1.4.1

          Notions of “consensus” should certainly NOT be accepted at face value.

          The “consensus” that Greg speaks of is the type of “consensus” that brought us to the S&L collapse.

    2. 12.2

      Criticizing individual Sup. Ct. justices is pointless given that most Sup. Ct. patent decisions in recent years have been unanimous or nearly unanimous.

      Disagree.

      Yes, most recent cases have had large (cross-aisle) majorities, but such does NOT mean that we should not be looking at the individual judges, their proclivities, AND the politics of the Bench in assessing what is going on in patent law.

      Much of the 101 landscape, for example, draws much insight by paying particular attention TO the animus and politics of the individual Justices.

      Further still, some decisions can easily be seen to garner cross-aisle support when viewed in a manner of a CAFC versus SC battle (think of the put-down of the Breyer position prior to the Court providing Breyer a bully pulpit).

      As to the other view of Paul in his post at 12, I see more of the same type of “sniping from the sidelines” in the implying of “need” for “vetting more carefully… than pending proposals.”

      Maybe Paul can actually engage on the merits of the proposals, discuss the points (and counter points) INSTEAD OF merely attempting denigrations….

      1. 12.2.1

        …to wit on the personal Justice observations, it is enlightening to remember that Justice Stevens was the protege of one of the historical worst Justices (vis a vis patent law) in Douglas, had attempted to “book-end” his career (and LOST the majority writing position in Bilski), and whose own protege is the noted Sotomayor, who has continued in the anti-patent mindset.

        To not pay attention to such matters would be a disservice to the critical thinking and the responsibility of most all attorneys (as I have also noted, with the exception of the Commonwealth of Massachusetts, most ALL state attorney oaths require attorneys to place the Constitution ABOVE the Supreme Court).

        Yes, paying attention to the animus and politics of individual Justices may “feel bad,” and may impugn the Court, but we have an ethical obligation to NOT place the Court above the Constitution itself (and remember well, that ALL three branches are designed to be of limited powers).

  6. 11

    It is interesting to compare Richard Linn’s opinion in the present case with that of the UK Patents Court in Clearswift v Glasswall [2018] EWHC 2442 (Pat)http://www.bailii.org/cgi-bin/format.cgi?doc=/ew/cases/EWHC/Patents/2018/2442.html&query=(glasswall). The patent in issue was EP-B-1891571 which is a counterpart of the two US patents in issue here. In the UK the patent was attacked on the ground of obviousness and survived challenge.

    The difference is at first sight surprising since Richard Linn is a very experienced member of the CAFC and was before that a patent attorney with a qualification (if my memory serves me right) in electronics.

    Functionality is a serious and inadequately addressed issue. If you look at the patent in issue in State Street Bank, you will see many blocks in a block diagram but very little to populate any of them. The most potent objection, which ought to have been pursued but was ignored, was not eligibility but lack of support under 35 USC 112(6) as it then was, now 112(f).

    1. 11.1

      Very interesting Paul. Thanks.

      I see that the EPO was all set to refuse the application but that Applicant asked for (ex Parte) “oral proceedings” which ran all day, finally concluding at 6:15 pm with a decision to allow a claim copiously amended during the course of the day. One might suspect that the Examining Division got tired, and wanted to go home. refusing the application involves much more work than simply letting it pass through to nissue.

      And then you say that the most potent doubt about patentability is with clarity/definiteness, exactly the issue that, in Europe is not justiciable after grant.

      Nevertheless I am reminded of another notorious case at the EPO in which an all-day Hearing resulted in the issue of a patent that in the end proved to be invalid.

      What do we learn from such cases? First, that only inter Partes proceedings can spotlight the core issues of validity.
      Second, that those who argue that a duly issued claim is not valid succeed only when they have competent representation.

      1. 11.1.1

        refusing the application involves much more work than simply letting it pass through to nissue.

        Maybe MaxDrei can explain this canard — the “wearing down” and it is somehow “easier” to allow than to properly maintain a rejection (which in the US Sovereign has always been painfully, plainly untrue).

        1. 11.1.1.1

          Explain? Here you come:

          The work is in formulating and then writing the required reasoned “Decision to Refuse” that has to be signed by all three members of the Examining Division. It has to be appeal-proof, because appeals against such decisions are customary, and the careers of the 3 Examiners will not be advanced if the Board of Appeal finds fault with their decision.

          So the reasoning has to be unassailable. And making it so takes much time and mental effort.

          Much easier just to allow oneself to be persuaded by the blandishments of the Applicant’s advocate at ex Parte oral proceedings, especially as the sun goes down, the evening sets in, and Applicant’s advocate continues tirelessly, exercising in full Applicant’s untouchable “right to be heard”.

          1. 11.1.1.1.1

            That’s not “wearing down” as much as it is a lack of professionalism.

            If the proffered arguments are better than the examiner’s position, then it is only logical that an allowance is in order.

            No matter how much “mental effort” there may be – from either side.

            One expects — professionally — that the best effort be put forth. The sense that you advance, with this notion of “gee, my career may be limited” is utter balderdash.

            I think that this may come from an animus of yours that allowing patents must somehow naturally be “bad.”

            As often is the case, there appears to be an inordinate preoccupation with Type I errors to the exclusion of Type II errors.

            Further, you fail to recognize that THAT pressure may exist on both sides of the coin, and that applicants are just as easily — if not more so “worn down.”

            1. 11.1.1.1.1.1

              Yes, of course Applicants also get “worn down”. They abandon prosecution as soon as the game is no longer worth the candle. It’s all about money.

              Not so with PTO examiners.

              1. 11.1.1.1.1.1.1

                Two immediate thoughts, MaxDrei,

                First is that the wearing down of applicants may well happen without the “no longer worth the candle” thinking, as reality may well intrude well before the balancing of worth of candle and effort to be expended is made; as the worth of the candle, and the actual means at hand for the applicant may NOT be equivalent.

                Second, the notion of “Not so with PTO examiners” should probably be amplified (given, at least in the Sovereign of the US, that there really is NO meaningful impact back to examiners of patents and their actions post-grant. It is one of the deeper fallacies of the AIA and the “band-aid” of post grant review. As I have previously noted (from prior experience in the real world), quality is not “inspected in” with most warranty programs, and certainly not when the warranty program is disassociated with the product manufacturing process.

                I will agree with your views here that it makes sense to try to get the examination process better. There are also “points” as to the economy of not pursuing perfect examination (which is a bit more subtle than what is being discussed here). Lastly, the mention of “just use a registration system” (not by you), MAY have merit if the denigration of what “grant” means continues.

                IF “grant” has no forceful impact (as to the strong rights of the person receiving the grant),
                THEN the money spent in the process BY that person is wasted money (another type of error outside of the “patents are bad” mindset).

                Our patent office is supported ENTIRELY by the monies of innovators. That support runs to the tune of some four BILLION dollars.

                Annually.

                I can easily see a (much better) registration system built and maintained for a miniscule fraction of that amount. IF we wanted to take those spent funds and move that money to innovation (as opposed to the oft-decried-anyway examination), THEN a registration system is something that should be on the table.

                Of course, any “gold standard” of application development (outside of the Office) would well still apply, even as the economies of “Perfect” would ALSO apply. But such would be at the discretion of the applicant, and the Billions now spent strictly at the Office would not need be so spent.

                Additionally, since “vetting” by an examiner corp would no longer be present, I could easily see that the presence (and more particularly, the level) of the presumption of validity most likely would need to be revisited (and removed or decreased down to an “even” playing field).

                But since our Court (and courts) seem intent on ignoring that Congress-decreed level anyway, perhaps some new “reality” may be better struck with registration and saving innovators the BILLIONS in “carrying costs” for the Office.

                1. …and a thought not so immediate, but no less important:

                  Let me stress (in relation to my first paragraph above) that for our Sovereign – and in purposeful distinction from the other patent systems of the day (as has been captured by others with historical award winning writings), that We (the Royal We of our Sovereign) wanted to have people of limited means being able to partake in the patent system.

                  This too is something that should be noted when we discuss changes to the patent system that have costs associated with them. Our original system was very cognizant of the difference between those with money (typically established businesses that tended to operate more on a serf/guild basis) and those whose innovation would threaten the established businesses.

                  As can be seen in our (bi-laterally supported – read that as ‘captured’) AIA machinations, this fundamental premise has taken a back seat of late, and a return to the originating principles should be not only kept in mind, but actively pursued and protected.

  7. 10

    So the subjective 101 standard is now swallowing up enablement. Is there nothing the 101 abstract idea test can’t solve? Isn’t it apparent, at this point, the old 2nd Circuit ‘gist or heart of the invention,’ inventive concept, point of novelty, etc etc. you know, the law that specifically rejected with the codification of the ’52 Act, is back with all it’s pernicious force? Justice Thomas is doing great harm to the patent laws.

    1. 10.1

      Yup. The Scotus was thwarted by the 1952 Patent Act, but has come roaring back and just used different words.

      They are well on their way to making nothing patentable except that which has not been looked at by the CAFC or the Scotus.

    2. 10.2

      It will be good when RBG goes. I hope she goes when Trump is still president so we have some hope of getting someone in there that respects patents. Another Sotomayor would be horrible or Breyer.

      It does seem at this point that the only hope is Congress.

      1. 10.2.1

        It will be good when RBG goes. I hope she goes when Trump is still president

        I hope she stands up during the State of the Union and blows Trumps and Pence’s brains out.

        1. 10.2.1.1

          Oh and Merry Xmas to everyone!

        2. 10.2.1.2

          I know I am conflicted. There is much to Trump that I do not like. I wish the Democrats would get patents like Jimmy Carter did. He was the one responsible for setting up the CAFC.

          1. 10.2.1.2.1

            What you say here Night Writer cannot possibly be “true” (leastwise, is not something that Malcolm and his “one-bucket” ad hominem style of “if you don’t agree with me on anything then you are the ene my and must have all attributes of that ene my”).

    3. 10.3

      So the subjective 101 standard is now swallowing up enablement. Is there nothing the 101 abstract idea test can’t solve?

      No joke. It is as if the Court cannot be troubled to keep reading past §101. The justices are determined to make §101 do all of the work of patentability and adequacy of disclosure.

      1. 10.3.1

        Appears to be “cognitively logical” — IF the Court is permitted to “get away” with re-writing the statutory law that is patent law by hand-waiving at the 101 stage, why would they NOT feel limited to use that “power” for any and all of their desired Ends?

        1. 10.3.1.1

          …NOT feel unlimited…

  8. 9

    All of these cases that don’t use 103 are just offensive. They are some judge deciding how things should be based on their own personal feelings. And in this case, again the anti-patent judges are trying to remove what a person skilled in the art knows. You don’t need to say how something is done if the how is known by a person skilled in the art. They keep trying to play this game of forcing patent applications to include all that is known. The opinion in this case illustrates a few ignorant little judicial activists putting a kni fe in the back of justice.

    And in Morse, the claim recited “any” . That was the issue. That it went beyond it scope of enablement.

    1. 9.1

      And again—-and again–and again–the way to think about these issues is scope of enablement.

      These “judges” have no intention of applying the law but of finding ways to limit patents.

  9. 8

    Oh Dennis, so much to unpack here.

    In O’Reilly v. Morse, 56 U.S. 62 (1853), the Supreme Court invalidated the broadest of Morse’s telegraph claims — claim 8 that had broadly claimed the process of sending messages at a distance without being limited to any particular machinery.

    The language used in that case was the language of written description, even though the case was a judicial exception case:

    If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know, some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff’s specification. His invention may be less complicated — less liable to get out of order — less expensive in construction, and in its operation. But yet if it is covered by this patent, the inventor could not use it, nor the public have the benefit of it, without the permission of this patentee.

    Nor is this all; while he shuts the door against inventions of other persons, the patentee would be able to avail himself of new discoveries in the properties and powers of electro-magnetism which scientific men might bring to light. For he says he does not confine his claim to the machinery or parts of machinery which he specifies, but claims for himself a monopoly in its use, however developed, for the purpose of printing at a distance.

    While the issue being discussed is the galvanic current (a physical law) the logic applies just as well to functional claims. The argument is a scope of written description argument:

    And if he can secure the exclusive use by his present patent, he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery upon the records of the patent office. And when his patent expires, the public must apply to him to learn what it is. In fine, he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of opinion that the claim is too broad, and not warranted by law.

    The complaint was not just a judicial exception, it was that Morse HAD NOT DESCRIBED AND HAD NOT INVENTED – a 112a violation – because the scope was overbroad of the actual invention.

    Later, in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), the Supreme Court was faced with a situation closer to Glasswall‘s. In that decision, the Supreme Court found that the claimed oil-well measuring apparatus included a wholly functional element at the invention’s point of novelty. That lack of specificity led the court invalidate the claim as indefinite.

    Actually the correct cases are cases that came before – General Electric v. Wabash and Perkin’s Glue. In those, the novelty was described by its function rather than what it was. The complaint there was the same – the scope swept up manners of achievement of the function different than the structure that was posited and thus were overbroad of the disclosure.

    From Perkin’s Glue:

    But an inventor may not describe a particular starch glue which will perform the function of animal glue and then claim all starch glues which have those functions, or even all starch glues made with three parts of water and alkali, since starch glues may be made with three parts of water and alkali that do not have those properties.

    The court described this as a failure to particularly claim the invention, a 112b violation, but the logic is again that of 112a, overbreadth for lack of possession of the full scope.

    The same issue was at play in Halliburton. There the novelty was defined by function, which created the overbreadth threat:

    For our purpose in passing upon the sufficiency of the claims against prohibited indefiniteness, we can accept without ratifying the findings of the lower court that the addition of “[a] tuned acoustical means” performing the “functions of a sound filter” brought about a new patentable combination, even though it advanced only a narrow step beyond Lehr and Wyatt’s old combination. We must, however, determine whether, as petitioner charges, the claims here held valid run afoul of Rev.Stat. § 4888 because they do not describe the invention, but use “conveniently functional language at the exact point of novelty.” General Electric Co. v. Wabash Appliance Corporation supra, at 304 U. S. 371.

    Walker, in some of his claims, e.g., claims 2 and 3, does describe the tuned acoustical pipe as an integral part of his invention, showing its structure, its working arrangement in the alleged new combination, and the manner of its connection with the other parts. But no one of the claims on which this judgment rests has even suggested the physical structure of the acoustical resonator…Thus, the claims failed adequately to depict the structure, mode, and operation of the parts in combination.

    Congress however rejected Halliburton in the 1952 Patent Act by adding the provision that elements of a combination claim may be drafted in functional form. 35 U.S.C. 112 p 6 (now 112(f)).

    This is dangerously incorrect. What 112f does is reverse *the claim construction* of Halliburton – when drafted in means plus the function will import the structure from the specification. Because the claim was claimed in means-plus and the spec disclosed the structure (indeed, some of the other claims in the Walker patent included the structure) the invalid claim would have been saved by importing the structure from the spec. The 1952 act ratifies the underlying invalidity logic of Halliburton – that claim that defines novelty by function is invalid. Moreover, even if your view of the law was right, the vast majority of claims today do not invoke 112f, so a blanket statement that the 1952 act “rejected Halliburton” would, at most, improperly apply an uncommon situation to universal application.

    in Glasswall, the court did not touch definiteness but rather focused its attention on eligibility under 35 U.S.C. 101 (as expanded by judicial decisions). Here, the “wholly functional” language of the claims led the court to finding them directed to an unpatentable abstract idea.

    The best reading of the law is as follows:

    Prior to 1952, the court took two similar but distinct positions: An invention that sought to claim a particular manner of achievement of a function but used claim language that allowed for any means of achieving the function failed to point out and particularly claim the invention, and was invalid under what today is 112b. (GE, Perkins, Halliburton) Conversely, an attempt to argue that one had invented the entire functionality was subject a judicial exception because there was simply no way of proving that what was conveyed filled the scope (a 101 rejection).

    After 1952, the CCPA and federal circuit gutted both ends of this logic, holding that even though the point out and particularly claim language hadn’t really been touched the invention was whatever the claim said it was, i.e. it was impossible to fail to point out and particularly claim the invention. This led to the incorrect logic that 112b is only violated by indefiniteness, which the supremes recently attempted to fix with Nautilus. Conversely, 101 was held to allow as eligible anything under the sun made by man.

    The result was ridiculously overbroad claims. In order to counter this, the court eventually had to come up with written description logic (Ariad). The Supreme Court has never endorsed the written description logic or test. So when a specification only discloses some means of achieving a new function and the claim simply limits by function rather than means, it seems the entire patent bar thinks that there is no violation, or that there might be a “crazy” 101 violation because of mysterious judicial exception logic.

    Instead, I think it’s pretty clear what is invalid – an overbroad claim. A claim that someone invented new functionality, not limited by means, is always invalid. It’s invalid whether you want to call the claims a failure to particularly point out the novel structure, or directed to an abstraction (the functional result) without significantly more, or whether the written description fails to support the scope claimed. The Supremes would invalid under the 112b/101 dichotomy, the federal circuit may (because some of the federal circuit are just terrible) invalidate under 112a WD, and the patent bar keeps generating applications that say that the invention is new functionality and (if they are even generous enough to disclose a single means) that the invention is not one means, but the result.

    If only someone had been saying this for, oh I dunno, five years…

    1. 8.1

      The 1952 act ratifies the underlying invalidity logic of Halliburton

      You could not be more wrong.

    2. 8.2

      RG, thank you for the substantive researched response to mere unsupported repetitions of personal opinions.
      I have a minor quibble here only with the separate 112 “written description” requirement. It does not necessarily relate to overbroad function or result claims, or to claims elements for which there is no 112 specification enablement at all. For a hypothetical, assume a patent specification containing embodiments 1-6 of 6 different items and a non-original claim [added by amendment] to the combination of embodiments 3-6. There was no “written description” for that combination being the invention.

      1. 8.2.1

        There was no “written description” for that combination being the invention.

        Well technically that’s an enablement rejection. The rule that a specification need not disclose what is known to the art only applies to conventional subject matter. If the claim has parts working in concert when they did not work in concert previously (i.e. the novelty is in the combination) then the specification has to particularly say it. I agree most people would call this a WD new matter rejection, though.

        1. 8.2.1.1

          And most people (as has been put to Paul several times now) include relatively standard boiler plate that provides that any combinations of elements disclosed and discussed are considered to be included.

          I would really be surprised if any professional fell into the trap of what Paul suggests. Yes, a trap for the unwary pro se applicant, but not that big a deal.

    3. 8.3

      The 1952 act ratifies the underlying invalidity logic of Halliburton – that claim that defines novelty by function is invalid.

      This is a great point. As P.J. Federico said of the final §112 paragraph, “some measure of greater liberality in the use of functional expressions in combination claims is authorized… and… decisions such as that in Halliburton Oil Well Cementing Co. v. Walker,… 329 U.S. 1,… (1946), are modified or rendered obsolete…” (emphasis added). N.B. that Federico does not say that Halliburton is “abrogated” or “overturned,” but rather (at most) “rendered obsolete.” Why “obsolete”? Because, in a world in which functional limitations are construed as if they were structural, the invalidity conclusion of Halliburton will never be triggered. It is not that Halliburton is being eliminated from the law, but rather the conditions precedent for Halliburton‘s application are being made less likely (or even impossible, if the courts choose to give §112(f) an aggressive application).

      Moreover… the vast majority of claims today do not invoke 112f…

      How could any of us possibly know this? Has anyone made a meaningful survey of issued claims contemporaneously in force, and quantified how many have §112(f)-invoking language?

      1. 8.3.1

        It is more than just the final paragraph….

        The final paragraph is for the option of TOTALLY functional claims (that is, not the Vast Middle Ground.

      2. 8.3.2

        Greg, Dennis published a chart on the decline of “means for” claims a year or so ago.

        1. 8.3.2.1

          Second Paul’s post – the decline was not nearly as precipitous as the decline of the optional Jepson claim format, but the notion in the article is well supported.

        2. 8.3.2.2

          (1) If I recall correctly, Prof Crouch’s data set was from claims in prosecution, not all claims.

          (2) Under Williamson v. Citrix the world of claims that “invoke 112f” is plausibly much larger than the world of “means for” claims.

  10. 7

    Ben, down below: There’s definitely an argument that the full scope [of the instant claim] isn’t enabled, but that argument would unleash patent-ragnarok if the PTO adopted it.

    Another reminder to everyone that McRo’s junk claims went up in enablement flames on remand for exactly this reason, i.e., full scope not enabled. The amount of money wasted on this worthless “innovation” and other similar innovations (use a computer and a look up table!) is flabbergasting. The only thing more flabbergasting is that the CAFC is so easily sandbagged by claims which plainly cover the most basic logical efforts that one could possibly imagine. You can almost sense the panel imagining the spectacularly realistic animation that “was only made possible” by McRo’s super genius computer wizards. What a bunch of rubes.

    1. 7.1

      I wasn’t aware that McRo’s claims ultimately failed for enablement. A link or case cite please? Thanks.

      1. 7.1.1

        link to durietangri.com

        It’s called “being painted into a corner”.

        Kudos again to the defense team here. They should have won on eligibility at the CAFC but they drew a terrible, clueless panel. But they were well prepared and when they dropped the other shoe it dropped hard.

        Every patent attorney should read this case. Textbook stuff.

      2. 7.1.2

        And a reminder: Enfish’s claims, too, went up in flames on remand. They were obvious junk, i.e., there was no “innovation” there. The CAFC bent over backwards and created a ridiculous absurd “rule” to rescue a claim that was pure cr @p and everybody who wasn’t drunk on the patent k00l aid knew it.

        1. 7.1.2.1

          Both of which actually make the point that the Ends do not justify the Means.

          Both cases had you de@d wrong on 101, highlighting that for all of your feelings/concerns, the proper Means may be used to address those feelings/concerns withOUT messing up the words of Congress in 35 USC 101.

  11. 6

    “Here, the “wholly functional” language of the claims led the court to finding them directed to an unpatentable abstract idea.”

    Claim 16: “… a computer processor in communication with the memory, the processor executes a program stored in said memory to perform the steps of…”

    Huh?

    1. 6.1

      processor in communication with the memory

      That, too, is functional language.

      What is the structure of that “processor”? What is the structure of this “memory”? Does it cover any structure that “processes”? Does it cover any structure that “remembers”?

      Did the specification provide one single example of a working implementation of this claimed “innovation” on a contemporary computer, running a specific operating system? Any unexpected results demonstrated versus the closest prior art running on the identical system?

      Or are we to believe that the described logic is “revolutionary” and there is simply no way to do the comparison? I hope not because the last time I checked the concept of identifying “unwanted” info in a larger collection of info and then creating a “substitute” collection of info without the unwanted info is … about as old as human intelligence itself. There’s nothing else in the claim except for this concept. Sure, there’s more words but any scrivener can dump more words into a description and make it look “complicated.”

      I can tell the PTO how to decide whether to drink a glass of milk using ten thousand words! Can I haz patent now? Oh but wait! There’s a “processor” and a “memory” involved, and some “predetermined stuff.” That makes all the difference because … silly con valley bros polish Iancu’s boots.

      1. 6.1.1

        Does it cover any structure that “processes”? Does it cover any structure that “remembers”?

        Those questions almost sound like you are aiming for a proper patent doctrine of inherency.

        Almost.

        But we both know that you won’t engage with that proper doctrine since you refuse to engage with the Grand Hall experiment.

        Let everyone know when you want to stop playing your dissembling games.

    2. 6.2

      GE v. Wabash –
      The Circuit Court of Appeals for the Ninth Circuit relied on the fact that the description in the claims is not ‘wholly’ functional. Anraku v. General Electric Co., 80 F.2d 958, 963. But the vice of a functional claim exists not only when a claim is ‘wholly’ functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.

      A limited use of terms of effect or result, which accurately define the essential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable, but a characteristic essential to novelty may not be distinguished from the old art solely by its tendency to remedy the problems in the art met by the patent. And we may doubt whether the language used in claim 25, taken by itself, conveyed definite meaning to those skilled in the art of incandescent lighting.

      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 * * *.’ Page 905 of 91 F.2d. 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 be knows to be new will ever find it impossible to describe some aspect of its novelty.

      The claim is a processor and memory, which is true of every computer apparatus claim. He’s not claiming to have invented the processor and memory. He’s claiming to have invented functionally-defined code.

      1. 6.2.1

        Try the Grand Hall experiment…

        (and stop dissembling with your Morgan-script “substantive researched” malarkey) V0mitting forth a bunch of pre-1952 cases completely detached from what happened in 1952 f00ls no one (and Morgan’s patting you on the back likewise f00ls no one)

        1. 6.2.1.1

          Nobody is arguing that a programmed computer running program x is identical to the same computer running program x and y. That’s not the issue so your Monte Hall experiment is just another pile of straw for you to lay in while you fondle your soft yet grubby thumb.

          1. 6.2.1.1.1

            Putting aside the mindless ad hominem, you have — once again — said nothing on point and nothing meaningful.

            Try again, or perhaps more accurately, try for the the first time.

            1. 6.2.1.1.1.1

              Shorter “anon” : “I feel small when my pants are pulled down to my ankles.”

              1. 6.2.1.1.1.1.1

                ?

                Your penchant for the odd and per verse is noted.

                Are you feeling a withdrawal for want of your posts to be expunged?

  12. 5

    DC: Congress however rejected Halliburton in the 1952 Patent Act by adding the provision that elements of a combination claim may be drafted in functional form. 35 U.S.C. 112 p 6 (now 112(f)).

    Congress did not “reject Halliburton” because the prohibition against functional claiming at the point of novelty is an essential part of any sane, healthy patent system. This really shouldn’t have to be explained to patent attorneys or anyone remotely associated with the patent system.

    What Congress did in 1952 was address the (incorrect) notion that had sprung up in the wake of Halliburton that functional language anywhere in the claim was f@tal to the validity of the claim. In addition, Congress approved of a claiming paradigm that would allow applicants to use functional language in a claim, even at the point of novelty, but only when the specification recited physical structure for carrying out the recited function.

    There have been two notable exceptions to this rule. The first was the so-called “antibody exception” which was actually recognized as an “exception” and expressly referred to as such. At the PTO level, the “antibody exception” permitted applicants who discovered new antigens to claim antibodies which recognized those new antigens without providing any structures which distinguished those antibodies from prior art antibodies. The policy behind the exception was that — at the beginning days of the exception — it was easy to make antibodies which recognized a new antigen but it was difficult to obtain the amino acid sequence of the antibody. Importantly, there is not a single instance of a functional claim to an antibody that ever survived CAFC scrutiny and we can rest assured that the Supreme Court would never have approved of the exception. Most of us understood that the “exception” was pretty much worthless for enforceability purposes and, indeed, that was proven to be the case. The “antibody exception” has been put to bed, forever.

    The other major exception to the rule has, unfortunately, never been recognized as an exception by the CAFC (and we can all guess why that is). That’s the “software exception” where the CAFC has created a bizarre internally contradictory and frankly absurd hodgepodge of ever-evolving rules which permit “new” computers to be claimed solely on the basis of their functions. The policy behind this exception is based on two incredible fantasies: (1) that there is some kind of objective physical/structural “essence” which can be inferred from the recitation of logical operations to be carried out by a prior art programmable computer; and (2) that without the “exception” human beings would somehow not be motivated to program computers and progress in the “computer logic arts” would be hindered. As most of us are aware, these fantasies are the opposite of reality and the exception for software has only served to funnel money to the wealthy classes (including patent attorneys), create grifting opportunities for the least innovative people who ever walked the earth, and to erode the credibility and functioning of the system as a whole (by flooding the PTO with massive piles of “do it on a computer” g@ rb@ge).

    1. 5.1

      Congress did not “reject Halliburton” because the prohibition against functional claiming at the point of novelty is an essential part of any sane, healthy patent system.

      Sadly for you, that is exactly what happened.

      This really shouldn’t have to be explained to patent attorneys or anyone remotely associated with the patent system.

      What shouldn’t have to be explained is that THIS DID HAPPEN – and your prevarications to the contrary should not be confused with reality.

      Your attempt to align this “purely” with the form of innovation most accessible to the non-wealthy (a dichotomy you have been steadfast in refusing to acknowledge, let alone explain), is also simply false (as has been repeatedly put to you by any number of posters).

  13. 4

    Congress however rejected Halliburton in the 1952 Patent Act by adding the provision that elements of a combination claim may be drafted in functional form. 35 U.S.C. 112 p 6 (now 112(f)).

    This rather begs the question. Did Congress reject Halliburton? Or did Congress merely codify a savings clause that will protect some claims that might otherwise have fallen under Halliburton, while leaving others to die a well-deserved death-by-Halliburton? The assertion above merely assumes one of these two answers, without establishing it.

    There is a reason that the assertion above does not establish its conclusion—the conclusion asserted is incorrect. As the CAFC recently explained, Halliburton is still good law. Amdocs (Israel) Ltd. v. Openet Telecom, 841 F.3d 1288, 1295 n.3 (Fed. Cir. 2016).

    1. 4.1

      “As the CAFC recently explained, Halliburton is still good law.”

      Whoops, I hit post before I had finished revising. That should read “As the CAFC recently explained, a modified version of Halliburton is still good law.”

      1. 4.1.1

        Greg, thanks for the reminder of why the examiner should have rejected claims with purely functional “limitations” not supported by any spec enablement as indefinite under 112(f) inadequacy and thus Halliburton. [Instead, kicking the can down the road to a federal judge for a messy expensive judicial Alice “abstraction” rejection & appeal.]

        1. 4.1.1.1

          I think that MPEP2181 and recent PTO training leans towards a “processor” being sufficient to avoid 112(f).

          Of course it’s completely absurd that “processor configured to {specialized function}” avoids 112(f) because it is ‘sufficiently definite’, but that an identical description of a processor in the specification would not be sufficient structure to support an actual 112(f) invokation.

          1. 4.1.1.1.1

            I think that MPEP2181 and recent PTO training leans towards a “processor” being sufficient to avoid 112(f).

            … which is absolutely ridiculous if the “configured” processor is the only novel structure in the claim.

            “Functionality” is ineligible subject matter, whether it’s claimed as such (i.e., “A functionality, wherein said functionality is characterized by …) or claimed as some generic “configuration” that achieved the functionality.

            1. 4.1.1.1.1.1

              “Functionality” is ineligible subject matter, whether it’s claimed as such…

              While I agree that many of the claims discussed in these cases (and these in particular) are ineligible, I don’t think you can make a blanket determination that “‘functionality’ is ineligible subject matter.” Processes are statutory subject matter, and explicitly include “a new use of a known… machine” under 35 USC 100. A new use of a known machine would only be distinguishable by its functionality, so unless we’re just blatantly ignoring Congress’ words, the test for eligibility must go farther than just “if there is no new structure, it is ineligible.”

              No, these claims are properly examined as the court did here, and as they’ve said in Finjan, and McRO, and SAP: the claims must recite an implementation of a solution – the “how” – and not just the result – the “why”.

              I think the reason we see so many of these is partly because litigators love vague claims that cover any way to achieve a desired result, and partly because there are some lazy prosecutors who don’t take the time to understand the invention they’re writing about. It’s very easy to describe and claim a desired result. Heck, older applications even do that in the background, stating that “it would be desirable to have a system that achieves the following benefits.” Claiming “a method, comprising achieving these benefits” does not recite any implementation, but just the desired solution, and should be ineligible.

              1. 4.1.1.1.1.1.1

                iDan:

                I don’t think you can make a blanket determination that “‘functionality’ is ineligible subject matter.”

                Well, I did just that and others in this thread have done so well. I don’t get how anyone can defend the opposite viewpoint. First, “functionality” isn’t listed among the statutory categories. Second, allowing applicants to claim “functionality” is driving a bus through the entire system, the point of which is to reward people for disclosing solutions that yield new functionality, not for simply dreaming up the functionality itself (which is how most “do it on a computer” grifters have been operating in our broken system for years).

                From the GE v. Wabash case above:

                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.

                The Supreme Court has never suggested otherwise, and they never will. The CAFC dances around the issue whenever they can, which is when they think they can get away with pointing at some abstract logic in the specification and pretend that it’s a “structure” when it’s the furthest thing from a structure.

                iDan: Processes are statutory subject matter, and explicitly include “a new use of a known… machine” under 35 USC 100. A new use of a known machine would only be distinguishable by its functionality

                Huh? The “new use” of a known machine is a new process claim. And since logic and information are ineligible subject matter the “use” in question must not be “new” logic or the transmission/storage/receipt of “new” information. I can’t claim “An old golf club, wherein the golf club has [insert non-obvious correlation] printed on the handle.” That’s definitely a “new use” for that old club. But it’s an ineligible claim. That’s in contrast to “A method comprising [non-obvious combination of physically transformative steps using a device], wherein said device is an old golf club.” Nobody believes that such a claim is ineligible, and nobody except the fearmongering patent maximalists have ever suggested otherwise.

                1. “Printed on the handle…”

                  Looks like more of the typical Malcolm dissembling (on a point that I presented first over on the Hricik side of the blog, inviting Malcolm directly to discuss on the merits, provided numerous hyperlinks to, and even repeated on this side of the blog numerous times, ALL of which only saw (each and every time), Malcolm running away from having any type of inte11ectually honest attempt at addressing the explication provided.

                  This is the type of drive-by monologue, internet style “shout down” blight that should be addressed through editorial means.

                2. Shorter “anon”: “Waaah! It’s not fair to provide straightforward examples that prove your point!”

                  Seriously, you need to get over yourself. Nobody knows what you’re talking about. Nothing I said is incorrect or misleading in any way. You’re just a little whiny baby arguing with your strawmen and doing everything you can to avoid the issues put squarely before you.

                  Grow up.

                3. I point out that you are dissembling and you double down with an attempt to dissemble on what my post contains.

                  Your Accuse Others f001s no one as you are the one that had refused to honestly treat the subjects at point.

                4. Huh? The “new use” of a known machine is a new process claim. And since logic and information are ineligible subject matter the “use” in question must not be “new” logic or the transmission/storage/receipt of “new” information. I can’t claim “An old golf club, wherein the golf club has [insert non-obvious correlation] printed on the handle.” That’s definitely a “new use” for that old club. But it’s an ineligible claim.

                  The printed matter is functionally unrelated to the substrate, so it has no patentable weight, and all you’re left with is “an old club.” It’s a statutory machine, but not patentable.

                  That’s in contrast to “A method comprising [non-obvious combination of physically transformative steps using a device], wherein said device is an old golf club.” Nobody believes that such a claim is ineligible, and nobody except the fearmongering patent maximalists have ever suggested otherwise.

                  But if I claim “A method comprising [non-obvious combination of physically transformative steps using a device], wherein said device is a processor,” you would and have complained that it’s ineligible.

                5. The printed matter is functionally unrelated to the substrate, so it has no patentable weight

                  LOL “Functionally unrelated”? Seems perfectly “functionally related” to me. The information is right there on the substrate, which functions to expose the information to light so it can serve its informing purpose. It doesn’t get more “functionally related” than that!

                  Where did you dig this “functionally unrelated” stuff up, IDan? Show me the statute, please. And whatever happened to “claims as a whole”? Somehow you are permitted to “dissect” claims in this context because …. why?

                  It’s a statutory machine, but not patentable.

                  But you dissected the claim and ignored a limitation to reach that result. The logic and analytic procedure is identical to the eligibility analysis … which is (according to your cohorts) impossible to understand.

                  Yes, I’m laughing at you because you’re a hypocrite, iDan. Also laughing because you don’t understand 101 at all, nor do you supposed that you understand that the so-called “printed matter doctrine” is not limited to “printed” matter.

                  if I claim “A method comprising [non-obvious combination of physically transformative steps using a device], wherein said device is a processor,” you would and have complained that it’s ineligible.

                  No, I wouldn’t have complained at all because reciting
                  “a processor” does not automatically make a claim ineligible. And your suggestion to the contrary is exactly the sort of fantastic cluelessness that never ceases to amaze me.

                6. MM Said: “The printed matter is functionally unrelated to the substrate, so it has no patentable weight

                  LOL “Functionally unrelated”? Seems perfectly “functionally related” to me. The information is right there on the substrate, which functions to expose the information to light so it can serve its informing purpose. It doesn’t get more “functionally related” than that!

                  Where did you dig this “functionally unrelated” stuff up, IDan?

                  Hi, Mal, check out MPEP 2111.05. Always happy to help a novice learn patent law, and have a nice Christmas.

                7. …and the poker tells of Malcolm going into the weeds with his rants on “functional relatedness,” replete with calls as to the “words of Congress” (while ignoring those self same words when his desired Ends are reached by the Means of a broken scoreboard) — and here in particular, THIS was explained to Malcolm in the easy to understand, plain English Set Theory explication of the exceptions to the judicial doctrine of printed matter, to which I repeatedly invited Malcolm to discuss on the merits, and to which Malcolm refused time and again (and again, and again, and again…)

              2. 4.1.1.1.1.1.2

                I don’t think you can make a blanket determination that “‘functionality’ is ineligible subject matter.”

                I think the argument is more correctly termed as “Functionality does not impart eligibility.” i.e. Functionality, even novel functionality, is still an ineligible abstraction. That functionality can be limited by particular structure, and that structure would be significantly more than the abstract idea.

                A new use of a known machine would only be distinguishable by its functionality, so unless we’re just blatantly ignoring Congress’ words, the test for eligibility must go farther than just “if there is no new structure, it is ineligible.”

                No. Functionality is an end result. The fact that an old machine that performs a new function would be non-obvious does not change the fact that a claim to a machine performing a new function abstract structure is ineligible.

                For a concrete example – Spoons were not invented for the purpose of doing illegal drugs. Someone repurposed spoons for that function. But the manner in which a spoon is used for drugs is still easily describable in terms of structural steps rather than simply the functional of result of “I claim a spoon used for drug intake.” Those steps are significantly more. A claim to a machine simply performing a new function is ineligible absent the further limitations of those steps.

                1. For a concrete example – Spoons were not invented for the purpose of doing illegal drugs. Someone repurposed spoons for that function. But the manner in which a spoon is used for drugs is still easily describable in terms of structural steps rather than simply the functional of result of “I claim a spoon used for drug intake.” Those steps are significantly more.

                  Yes, but that’s more about claiming the result, rather than claiming the implementation. I submit that a claim to “a method of drug intake, comprising: collecting a liquid drug within a bowl of a spoon; placing a terminal end of the bowl at an opening of an ear of a patient; and tilting the spoon to an angle that exceeds an angle of repose of the liquid drug,” would be eligible under 101 as a new use of a known machine, distinguishable only by its functionality, without involving any new structure (it of course would be unpatentable under 102 or 103, but that’s a separate argument). Hence my statement that “new structure” cannot be a requirement for 101 eligibility, unless we’re disregarding 100’s definition of process.

                2. iDan: I submit that a claim to “a method of drug intake, comprising: collecting a liquid drug within a bowl of a spoon; placing a terminal end of the bowl at an opening of an ear of a patient; and tilting the spoon to an angle that exceeds an angle of repose of the liquid drug,” would be eligible under 101 as a new use of a known machine, distinguishable only by its functionality, without involving any new structure

                  As I and others have explained ad nauseum, the recitation of “non-obvious structure” that is responsible for the new functionality is one way of avoiding the tar pit of (ineligible) claims that protect the new functionality itself (divorced from any art-distinguishing, recited structure).

                  The other way is to recite non-obvious physically transformative method step(s). These claiming strategies are guaranteed to get you out of nearly every eligibility issue out there.

                  Note again what does not work: reciting only non-obvious information, and/or reciting only non-obvious logic. And when I say “work” I mean “work” up to the very top, or “work” in an inter partes context where the patent’s feet are held to the fire. I don’t mean “get past the Examiner at the PTO” because that’s something that a five year old can do if he gets lucky.

                3. As I and others have explained ad nauseum, the recitation of “non-obvious structure” that is responsible for the new functionality is one way of avoiding the tar pit of (ineligible) claims that protect the new functionality itself (divorced from any art-distinguishing, recited structure).

                  The other way is to recite non-obvious physically transformative method step(s). These claiming strategies are guaranteed to get you out of nearly every eligibility issue out there.

                  I believe the courts said something about the machine-or-transformation test… What was it? Was it something like “this is the only test, and anyone who claims it’s the only test is absolutely correct and s00per seri0us”?

                4. Note again what does not work: reciting only non-obvious information, and/or reciting only non-obvious logic.

                  And hence such claims should be rejected under 35 USC 103 as lacking nonobviousness, right?
                  No, they should be ineligible under 101? And this is not confusing two different statutes? Hmm…

                5. Malcolm AGAIN floats his various canards:

                  1) “As I and others have explained ad nauseum, the recitation of “non-obvious structure” that is responsible for the new functionality is one way of avoiding the tar pit of (ineligible) claims that protect the new functionality itself (divorced from any art-distinguishing, recited structure).

                  This is nothing more than Malcolm’s attempt to elevate an optional claim format into something NOT optional.

                  Sorry Malcolm, you have to pay attention to the meaning of the word “optional,” – and when you do, you can easily see that your desire to elevate just cannot be correct.

                  2) “The other way is to recite non-obvious physically transformative method step(s). These claiming strategies are guaranteed to get you out of nearly every eligibility issue out there.

                  This is nothing more than trying to make the “Machine or Transformation clue into being a legal requirement.

                  As has been pointed out to Malcolm, this too — in Bilski was one of the 9-0 decisions of his own broken scoreboard Court in being DENIED.

                  How many times must we ride the Malcolm Merry-Go-Round of deception and dissembling in his trying to take a legal position that not even the broken score board of anti-patent Justices would take?

                  Why is such legal advocacy seemingly encouraged in this forum?

                  It is NOT as if he acknowledges the controlling decisions, and advances some new manner of implementing some (any) legal reasoning in view of what is known — all we get is the SAME old claptrap in a drive-be monologue, Internet “shout down” style.

                6. iDan I believe the courts said something about the machine-or-transformation test… What was it?

                  They said that claims that lack a machine or transformation are almost certainly going to be ineligible. The Court was unable to identify a greater signifier of ineligibility than this observation. Accordingly, Bilski’s claims were tanked as ineligible and they failed to recite a machine or transformation.

                  This is also true: the Supreme Court has never upheld the validity or eligibility of any claim that failed to recite either a new distinguishing physical structure, or a transformation of matter achieved by novel steps. And they never will because all heck would break loose if they did that.

                  The patent maximalists never cease to amaze. Blinding entitlement makes for some really really silly discourse. Poor Big Jeans and his sweaty echo chamber. The mold is starting to multiply on those greasy walls.

                7. iDan I believe the courts said something about the machine-or-transformation test… What was it?

                  MM They said that claims that lack a machine or transformation are almost certainly going to be ineligible.

                  Nope. They said, “the Court is unaware of any ordinary, contemporary, common meaning of “process” that would require it to be tied to a
                  machine or the transformation of an article.”
                  They also said ” §100(b) already explicitly defines “process,”… and nothing about the section’s inclusion of those other categories suggests that a “process” must be tied to one of them.”
                  They also cited Benson and Flook affirmatively, noting that both of those decisions mentioned that processes could be eligible without requiring a machine or transformation.

                  Maybe you can’t imagine a claim that lacks a machine or transformation that is eligible, but the Court clearly can.

                8. I submit that a claim to “a method of drug intake, comprising: collecting a liquid drug within a bowl of a spoon; placing a terminal end of the bowl at an opening of an ear of a patient; and tilting the spoon to an angle that exceeds an angle of repose of the liquid drug,” would be eligible under 101 as a new use of a known machine, distinguishable only by its functionality, without involving any new structure

                  That is a new structure. You’re describing concrete acts of a method, which is the structure. It is eligible. (And a method is all you can claim, as you have not invented a new device, you have a new method for an old device)

                9. describing concrete acts of a method, which is the structure.

                  ?

                  The execution of software is not software.

                  Random, you are W A Y out of your league here.

                10. Maybe you can’t imagine a claim that lacks a machine or transformation that is eligible, but the Court clearly can.

                  LOL

                  There is a difference between “not reaching an issue” and “addressing the issue head on.” What happened in Bilski is the former. When the Supreme Court gives an example of an eligible claim that both fails to recite a tangible composition/machine and which also fails to cause or recite a new transformation of physical matter, then I’ll stop laughing at this silly rhetorical game you’re playing.

                  The post-Bilski universe is a far harsher one than the pre-Bilski universe for all kinds of reasons. Start from first principles, please, and stop pretending that some Supreme Court dicta protects what can’t be protected.

                11. The Court said that the machine or transformation test is a “useful and important clue for determining whether some claimed inventions are processes under 101.”

                  They didn’t walk that back in any way. They underscored it. Why do you suppose the lack of a machine or transformation is a “useful and important clue”? Did you ever think about that? You must have thought a lot about it. So answer the question. Why is it a “useful and important clue”?

                12. They didn’t walk that back in any way.

                  Your dissembling know no bounds.

                  The matter of MoT being a clue (and remember, a clue is NOT a legal requirement)** is NOT the item that is being referred to as being walked back by the Supreme Court.

                  What IS being walked back (and walked back hard at a 9-0 clip) is the notion that MoT WAS a legal requirement (as put forth by the [fractured] en banc CAFC court below).

                  does not change the fact that a claim to a machine performing a new function abstract structure is ineligible.“***

                  And yet again, you float your canard of attempting to make an OPTIONAL claim format into something not optional.

                  This is not a new development, and you are – and should – be well aware of both the limitations of your canard and of the actual law.

                  As for your other dissembling (the pretending that somehow people are placing “functionalities” as a separate patent category), NO ONE is doing so. Please put your straw man away.

                  As I have (properly) noted many times now, you seem to want to use a (proper) patent doctrine of inherency, but never actually get there.

                  This is exemplified by your failure to even attempt to take on the Grand Hall experiment.

                  It is more than painfully evident exactly WHY you refuse to do so.

                  ** and *** – you seem unable to even get out of your own way when it comes to legal concepts of clue (not requirement) and optional claim formats. You are full of wanting answers as to why the Court may have provided these as clues, yet you fail to even grasp what the Court did in designating this as a clue instead of as a legal requirement. UNTIL you grasp the difference (legally) between a clue and requirement, between an option and a requirement, ALL of your bleating questions are quite frankly meaningless because you have not shown even the slimmest grasp of the context of the questions that you are putting forth.

                  Before you ask questions, you really should educate yourself to the level that you will be able to appreciate any answers that may come forth for your questions.

                  You are clearly not there yet. You have to first get out of your own way.

      2. 4.1.2

        Halliburton was abrogated.

        Revisionist Zombie attempts do not – and cannot – change that.

        Also, see post 1 below in regards to how the use of terms sounding in function extends throughout 112, and is not limited to the special optional choice afforded by 35 USC 112 (f).

    2. 4.2

      Did Congress reject Halliburton? Or did Congress merely codify a savings clause that will protect some claims that might otherwise have fallen under Halliburton, while leaving others to die a well-deserved death-by-Halliburton? The assertion above merely assumes one of these two answers, without establishing it.

      The “savings clause” was simply a command to treat the invalid structureless functional language as being drawn to the structure in the specification, and it only applies *when it is invoked*. The claim at issue in Halliburton did not appear to want to limit itself to structure (because dependent claims not at issue DID limit themselves to structure), but assuming it had, that is not a “rejection” of the Halliburton functional invalidity logic, that is accepting it and providing people with a means to not trip over that landmine.

      The only thing the 1952 act rejected was the claim construction, and that’s only because the patentee used the magic 112f invoking words. Had the patentee not used those words the claim would be invalid today as it was then, which shouldn’t be surprising, because nobody suggests the law outside of 112f was changed.

      1. 4.2.1

        Again, you are absolutely clueless to what happened in the Act of 1952.

        1. 4.2.1.1

          Prove it, Billy.

          1. 4.2.1.1.1

            Asked and answered — many, many, many times.

            That you want to engage in drive-by monologue, Internet style shout downs won’t change that.

            1. 4.2.1.1.1.1

              Asked and answered — many, many, many times.

              LOL

              Here on planet earth, Billy, that never happened even once. Your views of the 1952 patent act are almost as silly as the idea that Giles Rich knew what he was doing.

              1. 4.2.1.1.1.1.1

                Funny how you want to denigrate Rich at the same time that you dissemble about my position – based clearly on understanding what Congress (with help of Rich) did.

                Clearly, you attempt to denigrate Rich because you know — but do not like — what Congress DID with the help from Rich.

                You confirm my correctness, even as you may not be aware that THAT is what you have done.

                1. Don’t know why you are waiting for something that has been given many times.

                  Heck, you once crowed about the ability to review every one of my posts in a four hour window.

                  This should be easy for you.

                  Of course, you are not interested in that (and this is just one of your Br’er Rabbit games).

  14. 3

    Another “Jules Verne” 112-enablement-free patent issued by an examiner. Unfortunately, once improperly issued, there does not seem to be any available PTO post-grant proceeding to keep it out of a Federal Court suit. Thus, far worse than examiners missing patent or publication prior art. It cannot be challenged in an IPR or reexamination, and PGR is limited to only newly issued patents, long before most patents are ever asserted.

    1. 3.1

      What specifically looks unenabled?

      1. A method for processing an electronic file to create a substitute electronic file containing only allowable content data, the method comprising:
      receiving an electronic file containing content data encoded and arranged in accordance with a predetermined file type;
      determining a purported predetermined file type of the received electronic file and an associated set of rules specifying values or range of values of allowable content data;
      determining at least an allowable portion of the content data that conforms with the values or range of values specfied in the set of rules corresponding to the determined purported predetermined file type;
      extracting, from the electronic file, only the at least an allowable portion of content data;
      creating a substitute electronic file in the purported file type, said substitute electronic file containing only the extracted allowable content data;
      forwarding the substitute regenerated electronic file only if all of the content data from within the electronic file conforms to the values or range of values specified in the set of rules; and
      forwarding the incoming electronic file if a portion, part or whole of the content data does not conform only when the intended recipient of the electronic file has pre-approved the predetermined file type when associated with the sender of electronic file.

      Seems like it’d be easy enough in 2005 to put together a simple implementation falling within these claims. So the claim isn’t fully not enabled.

      There’s definitely an argument that the full scope isn’t enabled, but that argument would unleash patent-ragnarok if the PTO adopted it.

      1. 3.1.1

        There’s definitely an argument that the full scope isn’t enabled, but that argument would unleash patent-ragnarok if the PTO adopted it.

        Yeah that’s the point.

        The office should, you know, apply the law instead of deciding not to.

        1. 3.1.1.1

          The law as written by Congress, you mean, right?

          Not the one re-written by those scriveners of the judicial branch, eh?

      2. 3.1.2

        There’s definitely an argument that the full scope isn’t enabled, but that argument would unleash patent-ragnarok if the PTO adopted it.

        I second RandomGuy here. The PTO should apply the statute, and let chips fall where they may. Besides, it would be “patent-ragnarok” for approximately 6 months. Then—once everyone realizes how the system is going to work going forward—they will draft accordingly (with specs that actually support the claims), and no one will be any the worse.

        1. 3.1.2.1

          Specs support the claims as much as necessary under the patent profanity of the “super” induced PHOSITA.

          And that’s beyond the point that Random has the statutes absolutely wrong.

        2. 3.1.2.2

          [T]hey will draft accordingly (with specs that actually support the claims)…

          Or, as is perhaps more likely, with claims no broader than that which is supported by the spec…

  15. 2

    Agreed, many of the patent claims rejected under 101, really raise section 112, P1 issues and in some instances, 112, P2. This is more of a 112, P1 lack of written description case. Don’t forget to link your function with structure, in claim or specification.

    1. 2.1

      Don’t forget to link your function with structure, in claim or specification.

      There is no structure to “link to” for an innovation whose sole distinction with respect to the prior art is software.

    2. 2.2

      Isn’t that because the supremes always dealt with functional language with 101/112b, and then after 1952 the federal circuit gutted both 112b and 101, and then had to make 112a WD up to fill the void?

      There’s several pre-52 cases where the novelty is claimed by function: GE v. Wabash, Holland Furniture v. Perkin’s Glue, Morse, Halliburton. All of them decided on 112b or 101.

      The federal circuit just made up WD, and they’ve been doing it wrong for so long you’re saying that up is down and the Supremes should really be doing it like the federal circuit.

      Here’s an important difference: In 101 logic, it’s the threat that in the future, new means for achieving the function may be invented. In 112a logic, the defendant has a burden of providing evidence that at the time of filing the disclosure didn’t fill the scope of the functional claim. That’s a pretty significant distinction, don’t you think? The former requires the inventor to prove he invented something (shocking, I know), the latter requires the defendant to provide proof of counter-invention at the time of filing.

      The whole point of the system is that if a defendant later achieves the same general functional result through entirely different means he is not an infringer. If you invent the gun, you can’t infringe a valid claim on the bow, because there is no claim that a bow’s specification would support that would reach the gun structure. The federal circuit, entirely backward, requires the gun inventor to prove that someone invented the gun at the time of the bow, rather than the correct act of asking if the person who invented the bow also invented the gun.

      1. 2.2.1

        It was not the federal circuit doing any “gutting” – it was Congress IN the Act of 1952.

      2. 2.2.2

        Isn’t that because the supremes always dealt with functional language with 101/112b, and then after 1952 the federal circuit gutted both 112b and 101, and then had to make 112a WD up to fill the void?

        Hm, this seems both incomplete in its presentation of the issue, and uncharitable into the bargain.

        The problem that the 1952 act was meant to solve was that the SCotUS had created a bizarre and unworkable body of “inventiveness” case law that combined some genuinely important insights with a mess of conclusory nonsense and scientific illiteracy. The goal of the 1952 act was to codify the good part of this body of case law, and to ditch the rest.

        Because so much of the previous case law was built around saying “there is no invention in [fill in the nonsensical blank]” (e.g., Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 132 (1948)), the only way to retain the best of the invention requirement without allowing it to devolve back into conclusory nonsense was to force the requirement to apply to the claims. That is to say, instead of letting the Court say “nothing inventive here,” the new statute required that one start with the premise that the “invention” is whatever the patentee claims as the invention, and then ask whether that thing (whatever the patentee specifies) includes obvious subject matter.

        In other words, it was not possible to clean up the “invention” mess without redefining what the claims are supposed to do. Once one makes that change, however, then the 112(b) case law has to adjust accordingly. The results was that work that had once been done by 112(b) was moved over to 112(a).

        This is not squirrley business on the part of the CCPA. This was just the only way to set up the statutory regime in a way that would clear out the worst of the SCotUS’s mistakes while retaining the best insights of the old SCotUS. From where I am standing, I see only improvement.

        1. 2.2.2.1

          in a way that would clear out the worst of the SCotUS’s mistakes

          The worst of?

          Some here absolutely refuse to acknowledge the possibility of SCOTUS to even make A mistake, let alone note that the mistakes may lay along a spectrum.

          You are going to lose people trying to be reasonable there Greg.

        2. 2.2.2.2

          the new statute required that one start with the premise that the “invention” is whatever the patentee claims as the invention,

          This has been hand waived away by the Supremes with their animus against “damm scriveners” and their deciding what the claim really is “directed to” — the “Gist” leading edge of the “Gist/Abstract” sword.

  16. 1

    This is a classic misrepresentation of the Act of 1952:

    Congress however rejected Halliburton in the 1952 Patent Act by adding the provision that elements of a combination claim may be drafted in functional form. 35 U.S.C. 112 p 6 (now 112(f)).

    Halliburton was rejected in the 1952 Patent Act in MORE than just the option of using 35 USC 112(f).

    The use of terms sounding in function – regardless of whether or not a “Point of Novelty” is involved – is allowed throughout 35 USC 112.

    The use of 35 USC 112(f) is an optional claim format for those particular instances of a PURELY functional claim term that has no indication of a ‘means’ (or step) and for which, the choice is a conscience choice to instead use a shortcut because the specification may contain a much more detailed explication.

    Given the fact that there are those only too willing to run rampant and obfuscate on this point (while seemingly denying even the existence of the Vast Midle Ground, being clear on this point at the onset would seem to be a critical thing for ALL to recognize.

    1. 1.1

      …that being said, and this case NOT addressing any actual 112 issues, what this case IS doing in the realm of 101 only shows the broken-ness of the “ping-pong” now ongoing in a very panel dependent CAFC mess (that the panel here indicates a non-precedential status is neither a help for future panels, nor an inoculation of the observance that this panel is merely arriving at its own “Desired Ends” and that a different panel could fully arrive at a completely different (and equally “non-precedential) “Desired Ends.”

      The (clear) bigger issue in all of this is that the scoreboard is broken.

      1. 1.1.1

        I already know how this ping pong game is going to end. Hint: you won’t like it.

        1. 1.1.1.1

          You absolutely miss the point that there being a ping pong game and an absence of Rule of Law are things that no decent attorney would like (and by decent, I mean one that does not engage in an Ends justifies the Means (lack of critical) thinking mode).

    2. 1.2

      The use of terms sounding in function – regardless of whether or not a “Point of Novelty” is involved – is allowed throughout 35 USC 112.

      Only if you ignore the words “point out and particularly claim” (language which was virtually unchanged from the pre-52 act) and all the caselaw around that, which the federal circuit did a wonderful job of.

      Then, of course, the federal circuit realized how terrible it was and went ahead and “discovered” 112a Written Description, and essentially put the same logic back into the law.

      Nobody can ever prove they invented all manners of achieving a result, so it seems kind of silly we’re issuing patents that render all manners of achieving a result infringing.

      1. 1.2.1

        The use of terms sounding in function – regardless of whether or not a “Point of Novelty” is involved – is allowed throughout 35 USC 112.

        Whoopy d00py. That’s not the issue we’re discussing, and it’ s definitely not the issue in this case.

        [pats “anon” on the head]

        Have a cookie and run along. The grown-ups are trying to have a conversation here.

      2. 1.2.2

        Only if you…

        No.
        Wrong.

        No such conjecture needed.

        What is needed is understanding what Congress did.

        As to Malcolm, lol, a nice little of Accuse Others thrown in (because HE does not get how the Point of Novelty item is in play here).

      3. 1.2.3

        IMHO, ‘written description’ was invented by CAFC in an attempt to deal with so called ‘late claiming’ or the submarine patent. Isn’t ‘written description’ test as to whether the inventor ‘possessed’ the ‘claimed invention’ at the ‘time of filing?’ <– that's a temporal test. Since the statutory change in the patent term removes the submarine and the late claiming 'issue' 'written description' IMHO should collapse back into enablement and the fight over whether the 'written description' enables the POSITA.

        e.g., inventor discloses and claims AM radio. Claims read as means for wireless electromagnetic communication [via amplitude modulation of a signal]. Is now reading the claim on the new invention of FM radio. Which was the crux of the issue in Moorse – IMHO. Should fall to 'written description' not 101, 102, 103 or enablement in the first case, but be valid and non-infringed in the second case.

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