Power of Negative Limitations

IBM v. Iancu (Fed. Cir. 2019) (non-precedential)

In two separate IPR proceedings, the PTAB found several of IBM’s claims unpatentable as anticipated obvious. U.S. Patent No. 7,631,346 claims 1, 3, 12, 13, 15, and 18.  On appeal, the Federal Circuit has vacated / reversed those opinions.  [error fixed above]

The patent here claims a  user-authentication method for a “single-sign-on . . . within a federated computing environment.”  The basic setup here is that user known to a “first system” wants access to resources on a “second system” that doesn’t know about the user.  The invention works by the first system providing an “identifier” associated with the user and the second system creating a user account using that identifier — not too complex here.  A “single-sign-on” is basically a setup for user convenience so that the user only logs-in on one system but can access the whole federation.

Both systems are part of a “federated” environment – which seems potentially complex except for the definition found in the patent:

A federation is a loosely coupled affiliation of enterprises which adhere to certain standards of interoperability; the federation provides a mechanism of trust among those enterprises with respect to certain computational operations for the users within the federation.

In the appeal here, the patentee argues that the Board too-broadly defined the terms “federated computing environment.”  Of some interest here, both IBM and the IPR petitioners (Priceline, OpenTable, etc.) agreed upon the term’s definition and that it was limiting even though it appeared only in the claim preamble.  The PTAB disagreed with the parties — and in particular held that the term “federation . . . is not limited to enterprises” but could instead more generally includes a group of “entities.”  Under the Board’s interpretation, any two computer systems could be seen as “entities” even if both are within a single “enterprise.”  That broader scope is important because the closest prior art authentication system involved two computers within a single enterprise.

On appeal, the Federal Circuit found the PTAB’s construction unreasonable – given the plain definition in the specification.  On remand, the PTAB will consider whether the prior art still anticipates the invention based upon this narrower construction.

= = = =

I considerably simplified the facts above.  It turns out that the patent specification was not as consistent in stating that a “federation” required computers from at least two different “enterprises.” In particular, the specification states that:

In the context of the present invention, a federation is a set of distinct entities, such as enterprises, organizations, institutions, etc., that cooperate to provide a single-sign-on, ease-of-use experience to a user. . . . The terms ‘entity’ or ‘party’ generally refers to an organization, an individual, or a system that operates on behalf of an organization, an individual, or another system.

Notice that this definition of federation is not limited to enterprises, but instead is tied to the broader category of “entities,” and entities include “systems” — i.e., computers.  Thus, the Board found that a federation can be created by two computer systems even if operating within the same business enterprise.

In the appeal, the Federal Circuit rejected this approach holding here that the “such as” language limits was intended as an exclusive listing of what counts as federation elements.

The column 10 passage refers to entities “such as” the ones listed and includes “etc.”—both of which, in this context, indicate that only things of a type similar to the itemized ones are covered, namely, other establishments or ventures or firms or the like. We have recognized that “such as” and “etc.” sometimes have just that meaning. (“rule of ejusdem generis). That understanding is the only reasonable one for the passage, given the plain meaning of the definitional and other language we have already discussed.

It is hard for me to say what the take-away is for patent drafters on this claim construction except – who knows what the court will decide?

I’ll note here that the IPR petitioners settled the case with IBM but the USPTO stepped in to defend the PTAB sua sponte claim construction decision.

= = = = =

Does Silence Disclose a Negative Limitation: The panel also addressed the single-sign-on element of the claims — the single-sign-on requirement is interesting because it may sound like a positive limitation but is really being interpreted as a negative limitation. Basically, once the user gives credentials for the first system, the user doesn’t need more authentication (i.e. passwords) to access the second system.  In the appeal, the Federal Circuit found that the silence on a topic was not sufficient to disclose the absence of a feature:

Even if the Board were correct that Mellmer is “silent” …  that characterization would not alone support a finding that there was no user authentication action….  Silence in that sense would not by itself suffice for the Petitioner to meet its burden to prove, by a preponderance of the evidence, that there was no user authentication action in this scenario.

In other words – a negative limitation can be powerful.  On appeal, the Federal Circuit has reversed the holdings based upon single-sign-on being found in this reference.

56 thoughts on “Power of Negative Limitations

  1. 5

    Hindsight reasoning is real. There are many psychological experiments that illustrate how difficult it is for people to imagine or think as if they do not know something.

    On this blog there is this group of people that look at a claim and then proclaim to us all how they could of done that and how that was so easy. Igno rant comments.

    There is no utility to having some person psychotically proclaim to us how a claim is obvious and that they could have done it.

    1. 5.1

      Especially when “thinking” is not even really there, as the “types” of people on this thread are evidence of:

      Malcolm: an ardent anti-patent propagandist;

      Random: a Kool-Aid swilling confirmation-bias addict constantly confusing and conflating the different sections of law (the scary part being that he is an Examiner);

      Ben, a lesser voice, but a nigh constant “Upvote Malcolm” examiner; and

      Marty, a person who does not respect the terrain of patent law, and brings a personal animus against a form of innovation due to his own “settled out” loss in a patent matter.

      On other threads, people have wondered why rebuttals are made against the Propaganda onslaught. The easy reason why is shown here: left alone, the poison of the propaganda will propagate.

      Of course, since these same people will not fully (and in an inte11ectually honest manner) engage on the merits of counter points presented, the easy counter is to simply reference those previous counter points presented. I “get” that this tactic may not elucidate those new readers (who have not seen the what, 14 or 15 years of Malcolm behavior, for example), but the concepts are easy to grasp and it is better to avoid the “Br’er Rabbit” game of those not engaging calling out for repeated full explications every time a topic comes up.

      1. 5.1.1

        Anon: someone who supposedly got through law school but doesn’t recognize that more than one person could use the name “Ben”.

        1. 5.1.1.1

          Except for the indicators that you ARE the same person, you may have a point.

          As it is, you do not.

      2. 5.1.2

        the “types” of people on this thread

        LOL

        The people you list here are a zillion times more intelligent and coherent than the mouthbreathing s c u m b a g s who infest Big Jeans cess p00l, Bildo.

        Go join your ridiculous entitled tribe and stop tr 0 lling here.

        1. 5.1.2.1

          What IS your 0bsess10n with Quinn all about?

          No wait, I really don’t want to know.

    2. 5.2

      Hindsight reasoning is real.

      On this blog there is this group of people that look at a claim and then proclaim to us all how they could of done that and how that was so easy. Igno rant comments.

      What a magical world you must live in, where the sale of a computing device is a nonobvious leap. I mean, it probably is terrible for your life and career, but it’s magical.

      I know whenever I stand in line at the grocery store seeing the person in front of me with their sandals and wife beater getting their tic-tacs rung up I think to myself “What I time I live in to be surrounded by all these inventors”

      There is no utility to having some person psychotically proclaim to us how a claim is obvious and that they could have done it.

      Haha, literally the entire point of the patent office.

      1. 5.2.1

        but it’s magical.

        Actually, you are talking about comments made by the single person MOST stressing that computing is NOT magical.

        The irony is delicious.

        That you compound this with your “elitist” (and malformed) views of who an inventor may be, at the same time missing the point by glossing over the word “psychotically” and equating the entire patent office with that point shows how LITTLE of critical thinking goes on in your processing.

        It really is scary to consider that you examine patent applications for a living.

    3. 5.3

      “Hindsight reasoning is real.”

      Can you point to someone explicitly saying it isn’t real, or are you beating up a strawman for attention?

      1. 5.3.1

        It does not take an explicit statement to make the contrast here with what Random is doing.

        See, Ben, this is one of the types of indicators that you are that same “upvote everything Malcolm” Ben from the DISQUS days.

        1. 5.3.1.1

          Cheering on a strawman argument is almost as sad as drafting them.

          “See, Ben, this is one of the types of indicators that you are that same “upvote everything Malcolm” Ben from the DISQUS days.”

          Keep it up. I think this line of “reasoning” makes you look way worse than me.

          1. 5.3.1.1.1

            That YOU think so is only part of YOUR problem.

          2. 5.3.1.1.2

            Ben, I don’t think that is fair to say it is a strawman argument. Why? Because the argument used by Random is hindsight reasoning. And the arguments I typically see use the claim to piece together an argument were there are no or few references.

            Are you saying the 103 arguments you see on here are not typically hindsight reasoning?

            1. 5.3.1.1.2.1

              “the argument used by Random is hindsight reasoning.”

              Assuming you’re correct, it does not follow that Random’s argument “hindsight reasoning doesn’t happen ever.” It is far more likely that Random recognizes that handsight reasoning is a problem in some cases, and you both disagree about whether it is being employed in this case. In which case the effort you’re expending to smash the idea that “hindsight reasoning doesn’t happen ever” is wasted.

              “Are you saying the 103 arguments you see on here are not typically hindsight reasoning?”

              No.

              1. 5.3.1.1.2.1.1

                Ben, nice strawman. That is just ridiculous reasoning.

                I made my argument clear above.

                1. I took the time to clearly spell out the strawman you appeared to be attacking.

                  And your response amounts to “nuh-uh!! You!”.

                  Hilarious.

                2. Ben???

                  What are you talking about? I made a general statement about hindsight reasoning and said that Random was using it in this case.

                  And you are trying to move the argument to “never” and “always”. ??

          3. 5.3.1.1.3

            Contrast “Cheering on a strawman argument is almost as sad as drafting them.

            with

            Assuming you’re correct,

            ?

            If you assume correct, then the argument is NOT a strawman argument.

            Ben, come on man and THINK. Don’t just take a stand because you are an examiner and Random is an examiner.

            1. 5.3.1.1.3.1

              I’m going to assume that your reading comprehension is sufficient to understand that “assuming you’re correct” references the immediately preceeding quoted subset of his post, rather than the entirety of his position. If you didn’t get that far, the rest of the post isn’t for you.

              How does it follow from:

              “the argument used by Random is hindsight reasoning”

              That random’s position is: “hindsight reasoning doesn’t happen ever” ?

              1. 5.3.1.1.3.1.1

                reply caught in the filter, but basically, Night Writer’s post at 3:35 pm above confirms what I posted.

    4. 5.4

      there is this group of people that look at a claim and then proclaim to us all how they could of done that

      Writing patent claims is pretty easy, and that’s especially true of “do it on a computer” claims where you don’t need any technical background whatsoever. All you need to do is use are different words to describe some data content or some “association” and voila! anything goes. Come at me with your prior art and I’ll just explain how my word is “totally different” from whatever word was used in the prior art (just like substracting 1 from 10 is “completely different” from adding -1 to 10).

      1. 5.4.1

  2. 4

    Because Random Guy breathes oxygen and possesses a brain larger than that of a snail, he (like many many others) is able to quickly obliterate these junk claims which our broken patent system somehow manages to choke on. Of course, our blogtr 0ll bobbsy twins Night Wiper and his bff Bildo get extremely excited whenever that happens.

    I did want to highlight this from RG’s comment:

    Ownership is an ephemeral term that is unrelated to either the structure or functioning of the system.

    Right. It’s an abstraction and “limitations” such as “ownership” have no place in a sane utility patent system. Maybe they are appropriate in some other system. But not in a utility patent system. To understand this better, consider the following absolutely uncontroversial proposition: there are zero circumstances where you could re-patent a prior art composition by adding the limitation “wherein said composition is owned by [insert non-obvious entity]
    .” Zero. Nada. None. It’s a subject matter eligibility issue, ultimately.

    1. 4.1

      “repatent a composition… [with a new limitation]…”

      Since one must take the entire claim (claim as a whole), the argument that you appear to want to use is inherency.

      I have pointed this out to you many times now Malcolm.

      You would be much better off (albeit, you will likely not reach your desired Ends) if you used the proper patent position.

      1. 4.1.1

        the argument that you appear to want to use is inherency.

        Interesting response. According to your “reasoning”, then, every composition and apparatus is “inherently owned” by every non-obvious entity. And you are also admitting that “ownership” itself is an abstraction, devoid of any “inherent” structure or function, and therefore doesn’t belong in the utility patent system.

        Please confirm or explain specifically (and coherently) the point of disagreement with what I just wrote.

        I think it’s time to watch The Bildo Dance, folks! Strike up the music, please.

        [grabs popcorn]

        1. 4.1.1.1

          Your attempted reply is absolutely in the weeds.

          That you want me to be “cogent” for your own lack of cogency in your reply is B$ plain and simple.

          Maybe start with replying with a cogent thought.

  3. 3

    The money already squandered on this. No doubt just the start. Really promotes the progress of the useful arts, because nobody would ever think to make credentials portable without the quid pro quo of this important disclosure. Revel in the innovation!

    1. 3.1

      Your Kool Aid stains are noted.

    2. 3.2

      Yes, but Martin it creates jobs for alleged patent attorneys like Bud, Bildo and Night Wiper, who are among the best and most deserving people on earth. They are very deep and serious people! They make the world go around because only they Truly Understand Innovation.

      That alone is reason enough to celebrate “do it on a computer” claims. Isn’t it? Surely you aren’t going to tell me that patent attorneys aren’t the best people on earth.

      1. 3.2.1

        My what lovely straw you have, man.

        and you never seem to get tired beating on that straw. Is that how you take comfort in not intelligently (or in any sense of inte11ectual honesty) actually addressing the facts of a particular form of innovation or in how Congress wrote the law to protect innovation?

        1. 3.2.1.1

          Whatever Congress may have written, what exists in practice is a situation where if you lined up ten thousand people in the software/networking business and asked if these claims were worth a squirt of pi$$, 9998 of them would say they it’s ridiculous to call them “an invention” on any level, the other two being the “inventor” and the party in interest who funded the application. These claims protect nothing except rent seeking and are the exact opposite of “innovation”.

          1. 3.2.1.1.1

            Your feelings are noted. Your appeal to a crowd of Lemmings is also noted.

            However, no matter those feelings (nor the march of the lemmings), the fact remains that innovation IS done in software, that software is not the thought of software, that software is not the execution of software, that for patent equivalency (and yes, that does NOT mean “exactly the same as”), software is merely a design choice of computing wares.

            When you want to be perfectly rationale and reasonable about the facts and the law, let me know.

            1. 3.2.1.1.1.1

              Your feelings are noted. Your appeal to a crowd of Lemmings is also noted.

              Those aren’t “feelings”, Bildo. Those are facts.

              Your appeal to a crowd of Lemmings is also noted

              F u c k you, you ign 0r ant dissembling @ h0le.

            2. 3.2.1.1.1.2

              software is merely a design choice of computing wares.

              If software is “merely” a design choice, how come it’s chosen 99.999% of the time over all the other choices? Especially when it comes to claims that allege to “improve” an existing computer that has no other purpose except to follow the logic instructions that are given to it?

              That’s a rhetorical question, Bildo. We all know the answer. The difference between you and most normal people is that we aren’t afraid to discuss it.

              1. 3.2.1.1.1.2.1

                Your apoplectic rant is noted.

            3. 3.2.1.1.1.3

              Where is the software in those claims anyway? Nowhere.

              In my scheme, they would be eligible:

              are they claimed as process? yes

              does the process result in information only? yes

              do human beings consume the information to achieve the utility?

              No, the sign-on information is machine-consumed. Eligible.

              Are the claims obvious under 103? Of course, based on a common-sense test a 6 year old would understand. They are a simple model of real world processes hundreds or thousands of years old, used on machines designed to model stuff exactly like them.

              Are they anticipated under 102? No doubt, but not on patent references – because nobody bothered to patent stuff as obvious as sunrise- or even write it down.

              is 102/103 jurisprudence broken? Yes, of course it is, in order to protect rub bish like this.

              Are these claims fully described under 112? Of course not. They are completely nontechnical and filled with abstractions like “ownership” and “federated”.

              The irony of broken scoreboards….. information inventions are the problem. Broken jurisprudence is the problem.

              1. 3.2.1.1.1.3.1

                Marting: In my scheme, they would be eligible:
                are they claimed as process? yes
                does the process result in information only? yes
                do human beings consume the information to achieve the utility?
                No, the sign-on information is machine-consumed. Eligible.

                And in my scheme they would be ineligible:

                1) Is there any non-obvious physical structure recited in the claim, or a non-obvious transformation of matter? No, it’s just logic applied to data.

                Therefore ineligible. Doesn’t get any simpler than that. No more confusion, no more worries, no more unpredictability about what kind of logic is eligible and what isn’t. All logic and all information is ineligible, regardless of the language that the logic is couched in.

                information inventions are the problem.

                Indeed they are. And it’s a problem that’s never going to go away because language itself is an abstraction. There is no “there” there, especially in a system where patent applicants are allowed to create and define their own words “on the fly”.

                Broken jurisprudence is the problem.

                There is no judicial system in the world capable of keeping up with “innovations” (LOL) in logic and ways of describing abstractions (e.g., methods of applying logic to data) using patent claims. That’s the problem. Issues particular to the US system only make that problem a lot worse for the public. But it works great for grifters and con artists! Yay, America!

                1. I agree with you MM. Logic should not be allowed, period.

                  But because super-duper computers, and robots, and other forms of magical “innovation” must be progressed, your position will never likely find a plurality among judges, legislators, and practitioners- big and small.

                  Even I can see a case that items such as actually novel encryption, MPEG or other detailed compression schemes, or certain creative or difficult to compile algorithms should be protected from free-riding by some means. Copyright is likely the better vehicle, but there is no doctrine for functionality in copyright and that’s where we are. That’s why I propose what I do: its a political and philosophical compromise to at least keep the wheels on.

                  If we are going to have logic in the system, under any auspices, we need a better way to evaluate models and simulations under 103 and 112 (e.g. do it on a computer) faster and cheaper.

                2. Marty,

                  You have fallen into the trap of Malcolm’s “logic.”

                  An easy way to note this: you want to offer “copyright” as an alternative, and yet one cannot obtain copyright on “logic.”

                  This is why my rebuttal to Malcolm when he attempts his obfuscation eviscerates his C R P.

                3. Sometimes I wonder if you can actually read anon

                  Copyright is likely the better vehicle, but there is no doctrine for functionality in copyright and that’s where we are

                  is not, using the English language anyway, ” you want to offer “copyright” as an alternative”

                4. I can read fine – you want to use copyright “except for” the bit about functionality.

                  Elsewise, why would you bring up copyright?

                  And just because you get even that wrong (and I HAVE told you previously why and how to look at the differences between the different IP laws and how they cover different aspects of an item — and how an item can fully have different aspects that garner different protections under the different laws), YOU are the one inserting the topic here as an attempt to NOT have patent protection apply (to an aspect of utility).

              2. 3.2.1.1.1.3.2

                “Are the claims obvious under 103? Of course, based on a common-sense test a 6 year old would understand. They are a simple model of real world processes hundreds or thousands of years old, used on machines designed to model stuff exactly like them.

                Are they anticipated under 102? No doubt, but not on patent references – because nobody bothered to patent stuff as obvious as sunrise- or even write it down. ”

                In 2005?

                I mean, sure now Facebook and Google and even this web page seem to participate in this sort of thing. But was it obvious in 2005? My memory isn’t that good. But, I don’t think so, and neither did the examiner.

                1. In 2005?

                  OMG that was sooooooooooooooo long ago. Like people were just learning how to chip rocks with stone tools back then.

                  Computers were just a fantasy then. Of course everything changed in 2006. And the year after that, some crayzee dudes even tried to go to the moon! But of course they failed because they couldn’t figure out how to get the onboard computer to talk to the computer on the ground.

        2. 3.2.1.2

          actually addressing the facts of a particular form of innovation

          That was done by RG below at 2, who provided a thoughtful and well written summary of the issues.

          Your “discussion of the facts” in response to RG’s comment was this:

          You are wrong factually.
          You are wrong legally.

          So put a sock in it, hypocrite. These claims are pure cr @p0la.

          1. 3.2.1.2.1

            You are confusing facts and feelings.

            This kind of mirrors your “one-bucket” approach.

            Any feelings that you like are elevated to “facts,” while actual facts that you don’t like (in that ‘one bucket’) you do not recognize as facts.

            No doubt, this is tied to your cognitive dissonance as to providing a vehicle for (gasp) making money.

  4. 2

    On appeal, the Federal Circuit found the PTAB’s construction unreasonable – given the plain definition in the specification. On remand, the PTAB will consider whether the prior art still anticipates the invention based upon this narrower construction

    It doesn’t matter whether the prior art anticipates. The question is what is obvious. The ownership of entities is known to be fungible. i.e. A computer system designed to network with another computer system is capable of networking to share information regardless of the legal status of “ownership” of the first device and the second device. Ownership is an ephemeral term that is unrelated to either the structure or functioning of the system. Even if one construed the prior art as teaching two “entity” devices within the same “enterprise” as executing a single log-on (which the Federal Circuit seems to suggest is the correct and more-limited teaching), that *renders obvious* two devices *outside* of the same enterprise executing a single log-on for the simple reason that a sale of the second device and the resulting change in legal title would not change the functioning of the system. The art understands that the legal concept of ownership imparts absolutely zero difference to the actual functioning of the system.

    Basically, once the user gives credentials for the first system, the user doesn’t need more authentication (i.e. passwords) to access the second system. In the appeal, the Federal Circuit found that the silence on a topic was not sufficient to disclose the absence of a feature

    This should go without saying, but because the word “function” is not really susceptible to non-ambiguous definition (i.e. What person A would call one function person B might call two functions) every log on to a system provides for multiple functions, and as above, since the ownership of devices doesn’t really distinguish between how devices act, that is obvious as well.

    In other words, it should be unsurprising to anyone, whether in 2005 or now, that once I buy a wristband to enter the concert I can both listen to the band and buy the beer, regardless of whether you call that the single function of “entertainment” or the twin functions of “listening” and “drinking” and regardless of whether the venue “owns” both or merely engages in a “federated enterprise” contract with the band. Computers clearly provided for multiple functions (a word processor and a calculator for example) and that “federating” the “enterprise” ownership of the functionality is a legal, not a structural or functional, distinction. Because single-logons already allowed for multiple distinct functions and, in a networking context, devices could already talk to each other for functionality, the question of whether it is the user or the first device which provides authentication for the second device is merely a matter of obvious to try – Joe knows who Joe is, and Device 1 knows who Joe is, so either one would be an obvious candidate to tell Device 2 that this is Joe.

    One should never forget that there is a distinction between *what the references anticipate* and what is *rendered obvious by their anticipation*. Obviousness is not a series of anticipation rejections. One need not get hung up on what a reference anticipates, as if every lay person has not heard some version of the introductory phrase “This is my friend Joe, he’s cool” before. Proxy authentication preexisted, and there is no non-obvious distinction between Joe introducing himself to two networked devices, and Joe introducing himself to a first networked device, which makes the introduction to the second network device for him.

    In other words – a negative limitation can be powerful.

    Regardless, that is unquestionably true. If the claim was construed as “comprising at least one logon” the universe of prior art would be every combination of two devices that individually required authentication.

    1. 2.1

      So again we see Random use hindsight reasoning and his oh so clever self to contend that the claim is obvious. Such a smart examiner. Once given an invention he/she is able to psychotically claim that he could have done that and that the whole thing is oh so easy to understand.

      Such a smart boy/girl—when it looks backwards and is given the answer.

    2. 2.2

      There is a typo in Professor Crouch’s brief, because the opinion states that the claims were found invalid as anticipated, not invalid as obvious.

    3. 2.3

      Random,

      Could you be more wrong?

      You are wrong factually.
      You are wrong legally.

      You seem destined to keep on deluding yourself and your errors in one domain feed your errors in the other and then both reinforce the errors over again.

      Sprinkling in a few correct statements (not anticipation at point here) does not staunch your ability to get both the little things and the big picture wrong.

      Stop your error cycle.

      I am truly embarrassed for you.

      1. 2.3.1

        >>Stop your error cycle.

        I’d say stop your ego cycle.

    4. 2.4

      “Ownership is an ephemeral term that is unrelated to either the structure or functioning of the system. ”

      No it isn’t. If I own a thing and I am the only one that has access to it, I don’t require that I enter a password to use the thing. If am going to grant access to others (people that don’t own it), then I need to modify it to address security concerns. Of course ownership is related to the structure and function of the system.

      1. 2.4.1

        If I own a thing and I am the only one that has access to it, I don’t require that I enter a password to use the thing. If am going to grant access to others (people that don’t own it), then I need to modify it to address security concerns. Of course ownership is related to the structure and function of the system.

        Careful Les, this is the kind of mistake that will get you fired during your freshman year of examining. We’re not starting from the place of “I own a thing that I want to protect with security.” We’re starting from the place of “I own two things and I’m not worried about security when they talk to each other.”

        Let’s do a basic Graham analysis –

        1. Determine the scope and content of the prior art

        The complaint (by the CAFC) is that the prior art teaches exactly the system as claimed, but that two devices are owned by a single enterprise.

        2. Determine the difference between the claimed invention and the prior art

        Whether a second enterprise owns one of the devices.

        3. Resolve the ordinary skill in the art

        Even lay people understand the concept of selling. Is there evidence that prior to the instant invention, the art knew of selling (i.e. a transfer of ownership)? Abundantly. One could take official notice.

        So is the claimed system obvious? Or, put more simply – If I have a (anticipated) system of two devices owned by one person, and I understood the concept of selling, is a system with the same two devices owned by two different people obvious, or not? Of course it is.

        The fact that it might not be obvious over some other system that you want to hypothesize is irrelevant. I could cite you a motorcycle publication (or any other of a million references) and that would also lead to a conclusion of non-obviousness *as to that reference.*

        I’m going to make this as basic as I can – if I have a wifi router, and I have a laptop, and my laptop has authorization to use the wifi, does me selling you the laptop inherently cause the laptop to lose authorization to use the wifi? Of course not. Neither the laptop nor the router know they are no longer co-owned. The system works exactly the same, because there’s no suggestion that any functionality of any device turns upon legal ownership. The fact that legal ownership motivates a certain non-necessary security stance when you’re starting from scratch doesn’t change the fact that there is no motivation for that security when devices are co-owned, and a known technique for changing ownership does not inherently generate the security.

        Do your Graham.

      2. 2.4.2

        “Unrelated” seems like an overstatement. But what structure does ownership actually import into the claim?

  5. 1

    Is a new claim to “(old processor claim unrelated to bananas), wherein the processor’s determination is not based on a number of bananas” non-obvious?

    1. 1.1

      A very important question. The answer is clearly no.

      A negative limitation needs actual language to anticipate, but does not need actual language to render obvious. Something that works due to A, C and D but does not require B(ananas) renders obvious a system that does not include B because elimination of an unnecessary element while achieving the same functionality is obvious (see MPEP 2144.04 and Ex Parte Wu, In re Kuhle).

      Wu is literally a case where the claim *consisted of* ACD, and the combined references generated ABCD, where B was used to guard against corrosion. Because the claim didn’t require guarding against corrosion, and there were uses where corrosion would not be an issue, it was obvious to omit B and meet the “negative” “consisting of” limitation.

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