The Rare Beast: Consisting Essentially Of

In a recent post, I noted the “trap” for patent prosecutors who use the transitional phrase “consisting essentially of.” That phrase has been traditionally interpreted to indicate that an infringing apparatus (or method) would include all of those elements and may also include other elements that “do not materially affect the basic and novel properties of the invention.” The more popular and broader “comprising” transition captures as infringement an apparatus that practices all of the claim elements, regardless of what additional elements are also being practiced by the accused. The courts have also locked-down the meaning of the narrower “closed” transition “consisting of” to only find infringement when the accused apparatus practices the claim limitations and nothing more.

Following my alarmist post, Paul Morgan provided me with “calm down” commentary — writing that he “would suspect” the use of consisting essentially of “is quite small, essentially limited to some chemical composition claims.”

To follow-up with some data, I downloaded all of the utility patents issued so far in in 2020 and parsed through all of the claims.  Paul Morgan was correct — the beast is quite rare. Of the 50,000 utility patents issued thus-far in 2020, only 0.5% include the phrase within their claim sets. (Note – I searched for “consisting essentially of” or “consists essentially of”).   A prime example comes from U.S. Patent 10,525,007:

1. A preserved tea composition, consisting essentially of: green tea leaf; yerba mate leaf; peppermint leaf; honey powder; at least one of monk fruit and monk fruit extract; water; at least one of a Cannabis sativa extract and/or a Cannabis sativa extract having tetrahydrocannabinol and cannabidiol; and wherein the composition is free of nicotine, and wherein the composition is free of tobacco.

Note that some portion of the consisting essentially of limitations are not found in the transitional phrase following the claim introductions but rather in a transition leading to a sub-limitation or modified Markush group. An example of this structure is found in U.S. Patent 10,573,826.

1. An organic light emitting diode device comprising: a first light emitting layer consisting essentially of boron subphthalocyanine that emits substantially orange light; …

Comprising is obviously much more common — 98% of patents in my cohort include “comprising.” 12% of patents recite the phrase “consisting of” however, the vast majority of those are signaling a Markush group rather than an initial transition. (Note – again here, I looked for both the “ing” and “s” form of the terms). These results are shown in the chart below.

Close to 1% of claims do not use one of these three traditional transitions. Of those, it appears that the majority use some other word such as “having,” “containing,” or “including.” A small minority of patents are written without any transitional phrase at all. These typically jump from the introduction directly into wherein clauses. There are also a substantial number of chemical compound claims drafted in the following form: “A compound selected from the group consisting of: …”

84 thoughts on “The Rare Beast: Consisting Essentially Of

  1. 9

    The ‘rare beast’ of my ever-shifting historically pseudonym’d friend having a cogent point to add to a conversation…

    …will NOT be found on this thread.

  2. 8

    Better watch out. If we go into a recession, you can count on the number of patent applications dropping from 20-80 percent.

    And if China decides to reduce their patents, then the number could be far worse.

    1. 8.1

      Actually just looking at economic projections means that we can be certain that there is going to be a significant drop in patent budgets for large corporations.

      1. 8.1.1

        I wonder where Mark Lemley is to help you now? Probably living a lavish life style with the money he “earned” by burning down the patent system and innovation engine of the USA.

    2. 8.2

      Well, you might be right, overall, but it does depend on your market niche. Typically, I’ve been happy to see a downturn, as it brings out a lot of inventors to start small businesses based on patent applications for some product or technology they’ve been thinking about, but have been too busy working at their day job to do anything about. As a small firm, our business typically increases during market downturns. So far this week, the number of new client engagement letters out the door reflects the trend I’ve seen over the years, including the 2008-09 era.

  3. 7

    How is that “preserved tea” composition possibly valid? Every component is known, and it’s trivial to combine them.

    1. 7.1

      “trivial” as in “easy,” or “trivial” as in “everyone would think of it.”

      There is a big difference. Once disclosed, most inventions are “easy,” but that is not the test for getting a patent.

      1. 7.1.1

        Trivial to combine them via known methods to achieve a predictable result.

    2. 7.2

      Just because known components can be combined does not mean there is a motivation to actually do so. There are so many components in that tea that it’s easy to see how it got allowed. How many cannabis related products are combined with monk fruit?

      1. 7.2.1

        Interesting point, Dvan.

        And directly related to one of my ‘bugaboos’ with the legal processing of obviousness in that the proper term is not the singular word “motivation,” but the compound phrase “motivation to combine.”

        Why this is a bugaboo — and a difficult one at that — is because the singular word “motivation” is every bit as easy to reach as the recently lamented word of “utility.”

        In fact, the mere presence ITSELF of utility is sufficient to satisfy the single word use of “motivation.”

        When the two (single word motivation and utility) are treated as an identity, the true required meaning of the compound term (motivation to combine) is short-circuited, and that different meaning is not reached. But those who have the single word meaning ‘stuck in their head’ cannot unstick that single word meaning, and will (blindly) assert the single word meaning AS the meaning to the compound phrase.

        What appears to be a ‘frustration’ to Prof. Crouch of the ease of meeting the utility requirement of 35 USC 101 is more than mirrored in the ‘frustration’ of the improper ease of ‘meeting’ the obviousness factor in 35 USC 103.

        And what is especially perverse, is that this mirror aspect may well be one of the reasons why the current jurisprudence of 35 USC 101 is so mired in a conflation with 35 USC 103.

        The old Supreme Court notion of “you need a spark of genius” is reflected in both utility and the improper single word motivation as evidenced with the Professor’s apparent disdain for the ease of meeting utility. Mirror the disdain for a “too easy” meeting of 101 with a “too easy” denial under a factor under 103 and “balance is restored.”

        The problem of course is that 103 mirror is not — and was not intended to be — an identity with utility. Quite in fact, Congress expressly created 103 distinct from 101 in the Act of 1952 as a direct counter to what the Court was attempting in the Court’s desire to set the level of what it takes to obtain patent protection.

        This distinction is also reflected in the fact that 103 is not merely ‘102 with multiple references’ — as if there were no Graham Factors whatsoever. When the single word motivation is used in place of the compound phrase ‘motivation to combine,’ 103 becomes that (improper) ‘102 with multiple references.’

        1. 7.2.1.1

          I see what you mean. Never quite thought about it that way though. I’ve always seen a difference between “motivation” and “motivation to combine” because there can be motivations directed at many different things, where a motivation to combine (multiple references) is very specific in the obviousness analysis. So often, patent practitioners get lazy or complacent and forget about the little things when it comes to claim drafting (the original post on “consisting essentially of” illustrates that perfectly). Those little things are often what makes a patent valuable for a business because those kinds of details can be significant in claim construction and/or interpretation during any kind of legal proceeding.

          I’m less inclined to consider “utility” though, having somewhat of a European and PCT mindset on that. I think more in terms of industrial applicability which it significantly more than simple utility. Almost all of my clients file internationally, so I have adapted my thinking and client counseling accordingly. I’m also in the life sciences/chemistry field, so this is less of an issue.

          You’re definitely right that 101/103 or 102/103 can be conflated into the same thing. That happens with 112a/112b/101 too quite often unfortunately. These are all separate issues that have different statutory and legal requirements. Most judges (not just those at the Fed Cir) don’t have any kind of a scientific background, so they don’t completely understand the issues involved. Knowing what the law says (which judges can usually figure out) is significantly different than applying it in a technical situation. I pretty much think that is why the courts are such a mess right now. The Supremes have zero scientific and technical training, yet they’re called upon to be the final arbiter on scientific and technical issues. That’s a recipe for disaster that is in progress right no.

        2. 7.2.1.2

          “In fact, the mere presence ITSELF of utility is sufficient to satisfy the single word use of “motivation.””

          If the invention has utility there is motivation and thus the invention is obvious. Got it. Why is it nobody has thought of that before?

          1. 7.2.1.2.1

            Hi Shifty.

            1. 7.2.1.2.1.1

              Got it. Your defense of your axiom is “Hi Shifty.”

              1. 7.2.1.2.1.1.1

                My “axiom” needs no defense — especially in light of your games.

                Maybe raise a cognitive point….?

                All else, I was just being friendly.

              2. 7.2.1.2.1.1.2

                While certainly not an ‘axiom,’ I wonder just what the percentage is in regards to your posts in a particular manner.

                What percent of your posts are in relation to me?

                Would you say easily North of 90%?

                Is this somehow related to your line of work?

                1. We can apply Occam’s Razor, Snowflake. If what you say is true, then you are the only anonymous blog poster who is wrong 9 times out of 10.

                2. Your conclusory statement just is not a conclusion that can be drawn from the facts present.

                  What is your line of work anyway?

      2. 7.2.2

        Just because known components can be combined does not mean there is a motivation to actually do so.

        Sure, but per KSR, the motivation to combine the components can be found in that (a) they are known, (b) the methods to combine them are known, and (c) one of skill in the art would recognize the predicted results of the combination.

        There are so many components in that tea that it’s easy to see how it got allowed.

        Potentially, though improperly. Per In re Gorman, the number of references does not weigh against obviousness of the combination. But I’ve met plenty of Examiners who start thinking that once you hit 5 or more references, it must be nonobvious.

        How many cannabis related products are combined with monk fruit?

        Quite a large number. Monk fruit is widely used as a sweetener, and cannabis related products frequently taste awful. A google search for ‘monk fruit’ and ‘CBD’ turns up 591,000 hits, many of which predate this patent.

        1. 7.2.2.1

          “But I’ve met plenty of Examiners who start thinking that once you hit 5 or more references, it must be nonobvious.”

          Current PTO line management and middle management was held to the 5 reference standard when they were examiners, and so they hold their examiners to the same standard today. The fact that upper management has not intervened in this cycle means it’s unofficial PTO policy.

    3. 7.3

      “… it’s trivial to combine them.”

      When did that become the standard of obviousness?

      1. 7.3.1

        Since KSR: “Combining prior art elements according to known methods to yield predictable results”
        And specifically:
        “(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
        (2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
        (3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
        (4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.”

        Each element here is in the prior art. One of skill in the art could easily have combined them by known methods, and each element performs its original function. One of skill in the art would also readily realized that the result was predictable. And people have been mixing THC and CBD with all sorts of things for decades.

        How’s that for support, Ben?

        1. 7.3.1.1

          “(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference”

          You got a cite for this?

          “(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately”

          What evidence do you have for this?

          “(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable”

          What evidence do you have for this?

          “How’s that for support, Ben?”

          Not very good actually.

          1. 7.3.1.1.1

            “You got a cite for this?”

            MPEP 2143? It’s a direct copy-paste.

            ““(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately”

            What evidence do you have for this?”

            The Joy of Cooking provides plenty of examples of recipes combining tea leafs, extracts, and powders with each other and water. I dare say it’s even within the skill of most toddlers. The claim does not require any special processing, and nothing in the claim or the specification suggests that any element performs a different function when combined than when separate.

            ““(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable”

            What evidence do you have for this?”

            Again, see The Joy of Cooking. One of skill in the art would readily predict that combining dried leaves, extracts, sweetener, and water would result in a drinkable beverage. In fact, Applicant’s own admitted prior art mentions tea.

            1. 7.3.1.1.1.1

              Kudos to you for your patient reply. I thought you made a reasonable argument appropriate for a message board. And I don’t think I could have treated the request for citation to the individual elements as prior art, in this context rather than a office action, as anything other than bad faith.

              Perhaps the reason discussion on Patently-O is so stilted is that most participants are used to only their interlocutor providing evidence?

              1. 7.3.1.1.1.1.1

                I think there’s also a disconnect between practitioners in the pharma arts and those of us in tech, where the former assume that everything is unpredictable (except when they’re talking about their own prophetic examples) so a lack of anticipation must inevitably mean a claim is non-obvious. On the tech side, it’s trivial for us to add an include statement to software or connect an additional component to a bus, so we only very rarely attempt (and ever more rarely successfully make) arguments that one of skill in the art could not combine known elements in a known way to achieve a predictable result. Instead, our arguments primarily rely on missing elements, or that a combination still wouldn’t achieve the claimed invention.

                In the claim we’re discussing here, there’s nothing unknown in the claim, and combining those known elements via known methods would achieve the claimed invention.

            2. 7.3.1.1.1.2

              “MPEP 2143? It’s a direct copy-paste.”

              I didn’t realize the MPEP had become the law.

              Thanks for the heads up.

              1. 7.3.1.1.1.2.1

                “I didn’t realize the MPEP had become the law.

                Thanks for the heads up.”

                The MPEP is handy because it includes concise statements of the law as well as citations to the source material. Since your web browser is apparently broken, allow me to help:
                “The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).”

                You’re welcome!

                1. “The MPEP is handy because it includes concise statements of the law as well as citations to the source material.”

                  The MPEP is chock full of misstatements of the law.

                  A determination of obviousness requires a finding that one of ordinary skill in the art had an apparent reason for combining the references, and would have combined them in the same manner as is recited in the claim. “Predictability” is not a reason one of ordinary skill in the art would combine references. The combination must predictably result in the claimed invention(s), i.e. there must be a reasonable expectation of success, but one of ordinary skill in the art does/would not combine references simply because the outcome is predictable. You should read KSR for yourself instead of lapping up the spoon fed nonsense the editors of the MPEP are dishing out.

                2. “A determination of obviousness requires a finding that one of ordinary skill in the art had an apparent reason for combining the references. . . .”

                  [Sigh]. There’s no reason to read further. A misstatement of the law in the initial portion of the first sentence to demonstrate MPEP “misstatements of the law.” On the contrary, an invention may be obvious over a single reference, e.g., Idemitsu Kosan Co., v. SFC Co. Ltd. (Fed. Cir. 2017).

                3. ““A determination of obviousness requires a finding that one of ordinary skill in the art had an apparent reason for combining the references. . . .”

                  [Sigh]. There’s no reason to read further. A misstatement of the law in the initial portion of the first sentence to demonstrate MPEP “misstatements of the law.””

                  That quote wasn’t from the MPEP, it was from AAA JJ.

                4. “That quote wasn’t from the MPEP, it was from AAA JJ.”

                  I understand that, Abstract. That why I quoted AAA JJ.

                5. AAA said: “The combination must predictably result in the claimed invention(s), i.e. there must be a reasonable expectation of success, but one of ordinary skill in the art does/would not combine references simply because the outcome is predictable. You should read KSR for yourself instead of lapping up the spoon fed nonsense the editors of the MPEP are dishing out.”

                  Perhaps you should. From KSR: “For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in
                  their respective functions . . . obviously withdraws what is
                  already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.,
                  340 U. S. 147, 152 (1950). This is a principal reason for
                  declining to allow patents for what is obvious. The combination of familiar elements according to known methods is
                  likely to be obvious when it does no more than yield predictable results.”

                  The motivation to combine the elements is because it requires only known methods and yields predictable results. It sounds like you’re looking for a motivation explicitly mentioned in the art – i.e., the old TSM test – which KSR said was not the sole test.

                6. Also from KSR: “As is clear from such cases as Adams, a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” 55o U.S. at 418.

                  “The motivation to combine the elements is because it requires only known methods and yields predictable results.”

                  That’s not reason to modify a single reference or combine references. It’s a requirement for obviousness, but it’s not, in and of itself, enough to determine obviousness.

                  “It sounds like you’re looking for a motivation explicitly mentioned in the art – i.e., the old TSM test – which KSR said was not the sole test.”

                  No. I’m looking for a reason to modify a single reference or combine references.

                  As KSR also says: “The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” 550 U.S. at 417.

                  The “these cases” the court is referring to are Adams, Anderson’s-Black Rock , and Sakraida.

                  Design incentives. Market forces. Not just “predictability.” There’s nothing in KSR that says, “If one of ordinary skill in the art can predictability modify a reference or combine references, then the claim is obvious.”

                  Predictability is not a reason one of ordinary skill in the art modifies a reference or combines references. It’s required to establish obviousness, but it’s not enough all by itself to establish obviousness.

              2. 7.3.1.1.1.2.2

                “’A determination of obviousness requires a finding that one of ordinary skill in the art had an apparent reason for combining the references. . . .’

                [Sigh].”

                From KSR: “Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed [by the patent at issue].” 550 U.S. at 418.

                Sigh.

                1. From right before that quote:
                  “Following these principles may be more difficult in other
                  cases than it is here because the claimed subject matter
                  may involve more than the simple substitution of one
                  known element for another or the mere application of a
                  known technique to a piece of prior art ready for the improvement.”
                  KSR, and this tea patent, is the simpler type that involves the mere application of a known technique to a piece of prior art ready for the improvement.

                  I notice you didn’t respond to my post at 7.3.1.1.1.3.1… Is that because you can’t actually dispute any of those factors that indicate that this patent is obvious?

                2. “KSR, and this tea patent, is the simpler type that involves the mere application of a known technique to a piece of prior art ready for the improvement.”

                  So there are multiple standards of obviousness? There’s “simpler” obviousness and what? “not simpler” obviousness.

                  There’s one standard of obviousness.

                  Ready for improvement? Doesn’t it require some “design incentives” and/or “market forces” (i.e. reasons) to arrive at the conclusion that the prior art is “ready for improvement”?

                  “I notice you didn’t respond to my post at 7.3.1.1.1.3.1… Is that because you can’t actually dispute any of those factors that indicate that this patent is obvious?”

                  Did your post include a reason why one of ordinary skill in the art would have combined the prior art?

                3. And if you actually read KSR you will see that the court discussed the reasons why it would have been obvious to provide the pedal of Asano with a sensor in the fashion encompassed by the claim. And none of those reasons was simply because it could predictably be done.

                  As the court stated: “The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit of upgrading Asano with a sensor.” 550 U.S. at 424.

                  It’s not enough that one of ordinary skill in the art could predictably modify/combine the prior art.

                4. There’s one standard, but as SCOTUS said, sometimes it’s easy to follow the principles and see that combining known elements via known techniques to achieve predictable results shows that one of ordinary skill in the art would be motivated to make such a combination to achieve the claimed invention.

                  “Ready for improvement? Doesn’t it require some “design incentives” and/or “market forces” (i.e. reasons) to arrive at the conclusion that the prior art is “ready for improvement”?”

                  No, there is no “market forces” test, and the reasons to combine known elements to achieve a predictable result are not only “market forces”. Perhaps you meant “e.g.” there? In this case, however, there *are* market forces – as I showed, there are many, many pre-existing products that combine teas and sweeteners.

                  “I notice you didn’t respond to my post at 7.3.1.1.1.3.1… Is that because you can’t actually dispute any of those factors that indicate that this patent is obvious?”

                  Did your post include a reason why one of ordinary skill in the art would have combined the prior art?”

                  Yes, to make a tasty beverage. That’s a solution to a known problem of being thirsty.

                5. “And if you actually read KSR you will see that the court discussed the reasons why it would have been obvious to provide the pedal of Asano with a sensor in the fashion encompassed by the claim. And none of those reasons was simply because it could predictably be done.”

                  The problem of thirst is addressed by the solution of making a beverage, and a known technique is to combine tea, sweetener, and water. As I noted, there were plenty of such products on the market.

                6. “No, there is no ‘market forces’ test,…”

                  I never said there was.

                  “… and the reasons to combine known elements to achieve a predictable result are not only ‘market forces’.”

                  You seem to agree with me that there must be reasons why one of ordinary skill in the art would modify/combine.

                7. Yes, to make a tasty beverage. That’s a solution to a known problem of being thirsty.

                  ?

                  Talk about an unreasonable assertion.

                  ALL medicine is per se obvious based on that rationale.

                8. “ALL medicine is per se obvious based on that rationale.”

                  Medicine that is a combination of known elements according to known techniques to achieve a predictable result? Yeah, I think most people would balk at the idea of saying that combining aspirin with, say, a teaspoon of sugar to help the medicine go down (the medicine go down, the medicine go down) would be independently patentable.

                9. [Sigh]

                  AAA JJ said: “A determination of obviousness requires a finding that one of ordinary skill in the art had an apparent reason for combining the references.”

                  When challenged, AAA JJ quoted from KSR: “to determine whether there was an apparent reason to combine the known elements in the fashion claimed [by the patent at issue].”

                  So, everybody take a note. When AAA says “references” he means “elements.” When he says “elements” we do not know what he means. But he might tell us at some point in the future.

                10. Ai,

                  While certainly your comment covers Mary Poppins, it covers so very much more (as in, like I said, ALL medicine).

                  You might want to think about why your comment simply argues too much.

                11. Hi Shifty — I don’t think that you will be successful in having AAA participate in your nits-games.

                12. “having AAA participate in your nits-games.”

                  So, Snowflake believes that in patent law the difference between a reference and an element is a “nit.” Explains a lot. [not in a good way]

                13. Anon, only those medicines which are created from combinations of known elements with known techniques to arrive at predictable results. Unknown elements, new techniques, unpredictable results? I think we all would agree that such things are potentially patentable.

                14. Ai,

                  You here overplay the “predictable” angle (and how do you feel about Artificial Intelligence as a PHOSITA?)

                  Shifty, that was not MY nit. This is a blog, and I can easily imagine that AAA was simply being a bit colloquial. YOUR game is trying to make a big deal out of it. My comment should be read as my merely letting you know that I don’t think that AAA is going to play your game. I was just being friendly. That YOU jump in the direction that you do says a lot about you.

                15. ” I don’t think that AAA is going to play your game ”

                  The “game” is calling out misstatements of the law from the Internet’s “I’ms an Important Guy I Knows What I’m Talking About” that the uneducated think must know the actual law and then get Rule 36’ed at the Federal Circuit. Or Cert. Denied with a lot of snickers. No offense.

                16. Shifty,

                  No offense taken. Is that your line of work?

                  I’m curious as to why you have such a selective vision of that “the Internet’s “I’ms an Important Guy I Knows What I’m Talking About” that the uneducated think must know the actual law and then get Rule 36’ed at the Federal Circuit. Or Cert. Denied with a lot of snickers

                  I wonder why you think that the Federal Circuit is (apparently) is infallible (when we both know that with the presence of an abundance of conflicting case law, they simply cannot be so. I also wonder how long your list is.

                17. and then get Rule 36’ed at the Federal Circuit. Or Cert. Denied with a lot of snickers

                  I do wonder just which poster(s) on Patently-O fit this list qualifier of yours, my shifting historical pseudonym’d friend.

                18. Maybe you’re right about no harm, no foul when you’re just making things up on the Internet. AAA has never alleged that his comical take on the law of obviousness would ever win at the PTAB, ITC, District Courts, Federal Circuit, or Supreme Court.

                19. Shifty,

                  Do you see the irony in your answer to having a portion of your post noted as appearing to be something just made up as one of accusing someone of just making something up…?

                  I really doubt that even that will entice AAA to return, though.

                20. Nothing in the post was “made up,” Snowflake. You will, of course, not rebut by pointing out facts to the contrary but you will, of course, flap around and squawk a lot.

                  [Just between you and us, are you paid by the word?]

                  BTW, the word “entice” does not mean what you think it means. And maybe “irony.”

                  But, we’re just being friendly.

                21. Shifty,

                  So you were not ‘walking back’ from (and thus, are willing to answer):

                  wonder just which poster(s) on Patently-O fit this list qualifier of yours, my shifting historical pseudonym’d friend…?

                22. … and lastly, as you already know that I am not paid to post (by the word or otherwise), your quip of:

                  [Just between you and us, are you paid by the word?]

                  merely reflects the (rather p00r) Malcolmish Accuse Others meme.

                  More than just a bit of a boor.

                  (do you need a definition for that…?)

                23. “(do you need a definition for that…?)”

                  Me? I do not, but . . .

                  plural those\ ˈt͟hōz \
                  Definition of that (Entry 1 of 5)
                  1a: the person, thing, or idea indicated, mentioned, or understood from the situation
                  that is my fatherb: the time, action, or event specified
                  after that I went to bed
                  c: the kind or thing specified as follows
                  the purest water is that produced by distillation
                  d: one or a group of the indicated kind
                  that’s a cat — quick and agile
                  2a: the one farther away or less immediately under observation or discussion
                  those are maples and these are elms
                  b: the former one
                  3a—used as a function word after and to indicate emphatic repetition of the idea expressed by a previous word or phrase
                  he was helpful, and that to an unusual degree
                  b—used as a function word immediately before or after a word group consisting of a verbal auxiliary or a form of the verb be preceded by there or a personal pronoun subject to indicate emphatic repetition of the idea expressed by a previous verb or predicate noun or predicate adjective
                  is she capable? She is that
                  4a: the one : the thing : the kind : SOMETHING, ANYTHING
                  the truth of that which is true
                  the senses are that whereby we experience the world
                  what’s that you say
                  bthose plural : some persons
                  those who think the time has come
                  all that
                  : everything of the kind indicated
                  tact, discretion, and all that
                  at that
                  1: in spite of what has been said or implied
                  2: in addition : BESIDES entry 2
                  that conjunction
                  \ t͟hət, ˈt͟hat \
                  Definition of that (Entry 2 of 5)
                  1a(1)—used as a function word to introduce a noun clause that is usually the subject or object of a verb or a predicate nominative
                  said that he was afraid
                  (2)—used as a function word to introduce a subordinate clause that is anticipated by the expletive it occurring as subject of the verb
                  it is unlikely that he’ll be in
                  (3)—used as a function word to introduce a subordinate clause that is joined as complement to a noun or adjective
                  we are certain that this is true
                  the fact that you are here
                  (4)—used as a function word to introduce a subordinate clause modifying an adverb or adverbial expression
                  will go anywhere that he is invited
                  b—used as a function word to introduce an exclamatory clause expressing a strong emotion especially of surprise, sorrow, or indignation
                  that it should come to this!
                  2a(1)—used as a function word to introduce a subordinate clause expressing purpose or desired result
                  cutting down expenses that her son might inherit an unencumbered estate
                  — W. B. Yeats
                  (2)—used as a function word to introduce a subordinate clause expressing a reason or cause
                  rejoice that you are lightened of a load
                  — Robert Browning
                  (3)—used as a function word to introduce a subordinate clause expressing consequence, result, or effect
                  are of sufficient importance that they cannot be neglected
                  — Hannah Wormington
                  b—used as a function word to introduce an exclamatory clause expressing a wish
                  oh, that he would come
                  3—used as a function word after a subordinating conjunction without modifying its meaning
                  if that thy bent of love be honorable
                  — William Shakespeare
                  that adjective
                  plural those
                  Definition of that (Entry 3 of 5)
                  1a: being the person, thing, or idea specified, mentioned, or understood
                  b: being the one specified —usually used for emphasis
                  that rarity among leaders
                  that brother of yours
                  c: so great a : SUCH
                  2: the farther away or less immediately under observation or discussion
                  this chair or that one
                  that pronoun (2)
                  \ t͟hət, ˈt͟hat \
                  Definition of that (Entry 4 of 5)
                  1—used as a function word to introduce a restrictive relative clause and to serve as a substitute within that clause for the substantive modified by the clause
                  the house that Jack built
                  I’ll make a ghost of him that lets me
                  — William Shakespeare
                  2a: at which : in which : on which : by which : with which : to which
                  each year that the lectures are given
                  b: according to what : to the extent of what —used after a negative
                  has never been here that I know of
                  3aarchaic : that which
                  bobsolete : the person who
                  that adverb
                  \ ˈt͟hat \
                  Definition of that (Entry 5 of 5)
                  1: to such an extent
                  a nail about that long
                  2: VERY, EXTREMELY —usually used with the negative
                  did not take the festival that seriously
                  — Eric Goldman
                  Synonyms & Antonyms
                  that, which, or who?: Usage Guide
                  More Example Sentences
                  Learn More about that

                24. “(do you need a definition for that…?)”

                  I do not.

                  pronoun, plural those.
                  (used to indicate a person, thing, idea, state, event, time, remark, etc., as pointed out or present, mentioned before, supposed to be understood, or by way of emphasis)

                25. You’ve done the flapping around and the squawking. Now will come the pointing out facts to the contrary? Nahhh.

                26. Shifty,

                  I will give your various splintered personalities the last words, as there is NO such NEED for “Now will come the pointing out facts to the contrary? — as the points have been already put to you (along with the deflation of your attempted putdowns vis a vis dictionary meanings.

                  Any further game playing on your part won’t change what is already in front of you.

                  Have fun and please clean up after yourself.

                27. The last word? You are such a liar. Aren’t you tired of the flapping around and the squawking?

            3. 7.3.1.1.1.3

              “The claim does not require any special processing, and nothing in the claim or the specification suggests that any element performs a different function when combined than when separate.”

              Neither of those is required to be in the claim.

              1. 7.3.1.1.1.3.1

                All of the elements in the claim were known in the prior art.
                One skilled in the art could have combed them as claimed with known methods with no change in their respective functions.
                The combination of those elements yields nothing more than predictable results to one of ordinary skill in the art.

                Do you dispute any of that? If so, please provide a citation, as I have done multiple times in response to your demands.

    4. 7.4

      So iDan’s unsupported assertion of obviousness gets thoroughly shredded by 3 people in 24 hours, but when other people drop totally unsupported assertions that claims are ineligible there’s not a peep.

  4. 6

    I am reminded of Emily Litella.

  5. 5

    I have a hard time concluding that HZNP Finance changed anything regarding claim interpretation. MPEP 2111.03(III) already states that “The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976)” This case has been on the books and in the MPEP for quite a while. Many people, including myself, have taken this interpretation of the phrase “consisting essentially of” as a given, and have either avoided it (my preferred choice) or written applications with this specifically in mind. The main issue I think, based on my reading of HZNP, is that the Fed Circuit focused on the “basic and novel characteristics of the claimed invention” as required under Herz when many claim drafters have gotten lazy and forgotten about that aspect of the claim language.

  6. 4

    Thanks for this expanded research study of current claim formats Dennis.

    1. 4.1

      Yes and it is fine to destroy the patent claims of “consisting essentially of” since so few people actually own patents with this phrase.

      /sarcasm off

      1. 4.1.1

        Exactly. It only matters when it matters.

        What this case, and others, have done is require not only that the basic and novel characteristic be identified, but also that they be definite. worse, in this case, the basic and novel characteristic was deemed indefinite because the specification described two ways to measure it.

  7. 3

    IIRC, another rarely used transition term is “composed of”.

  8. 2

    Subtitle: “The Creation of New Patent Profanity.”

    or

    Why “Consisting Essentially Of” was never used again after 2/26/2020.

  9. 1

    How are Jepson claims doing?

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