by Dennis Crouch
Courts continue to struggle with their use of evidence for claim construction. The recent case of Genuine Enabling Tech. LLC v. Nintendo Co., Ltd., 2022 WL 982246, — F.4th — (Fed. Cir. Apr. 1, 2022), shows us subtle dividing lines between applicant statements (1) that create a disclaimer compared with those (2) that are merely helpful for interpretation. The decision offers solace to careful patent prosecutors that the courts should not unduly extrapolate upon arguments distinguishing the prior art.
The normal rule of claim construction is that claim terms should be given “the meaning that the term[s] would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)(en banc). That rule is tempered by the requirement that courts consider the specification and prosecution history as relevant to shape our understanding. At times a patentee will particularly define a claim term–and that definition will control its scope. Similarly, a patentee may disclaim or disavow claim scope. Disavowal generally requires a clear statement that shows “unmistakable [and] unambiguous evidence of disclaimer.” Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1332 (Fed. Cir. 2003). In litigated cases, the prosecution history rarely includes an express statement of disclaimer–“I hereby disclaim ….”–forcing courts to draw the lines in a murky field.
I see disclaimer as an examination failure. When a patentee distinguishes the prior art based upon non-apparent limitations, the examiner should require the patentee to amend the claims by adding limitations rather than permitting the patentee to re-define claim terms on the fly. If the specification would not support such an amendment, then the specification also would not support the disclaimer. In Genuine Enabling Tech., the examiner accepted a distinguishing argument and issued the patent — leading to the case at hand.
Background on GET: Nguyen’s U.S. Patent No. 6,219,730 stems from his invention of a “voice mouse.” The apparatus works like a regular computer mouse but also allows for sound input/output through the mouse. The sound signal is then combined and synchronized with the mouse movement signal to be sent to and from the computer. In the drawings sheet below, you can compare the prior art (Fig. 1A – sound connected to PC via sound-card) to Nguyen’s invention (Fig. 1B – sound connected through the mouse).
Although I described the two inputs as a mouse-movement signal and a sound signal, the patent claims actually use much broader terms: a “user input stream” (i.e., the mouse movement) and an “input signal” (i.e., the audio signal). These two signals are encoded into a “combined data stream” for transfer across a communication means. In its lawsuit against Nintendo, the patentee argues that Wii and Switch controllers embody the invention. In particular, the “user input stream” is “generated by the user pushing buttons” and the “input signal” comes from the accelerometer. At the district court, Nintendo successfully argued that “input signal” should be narrowly construed to exclude the accelerometer. In particular, the district court found that the patentee’s prosecution disclaimer required the narrow construction.
1. A user input apparatus … comprising:
user input means for producing a user input stream;
input means for producing [an] input signal;
converting means for receiving [the] input signal and producing therefrom an input stream; and
encoding means for synchronizing the user input stream with the input stream and encoding the same into a combined data stream transferable by the communication means.
US6219730, claim 1.
Input Signal. When interpreting the term “input signal,” the district court looked to the specification and also the prosecution history to limit “input signal” to signals at >500 Hz, and “excluding positional change, physiological response, or other “slow-varying information.” Nintendo argued that this construction offered two reasons for non infringement, one of which was accepted by the district court.
- Argument 1: Controller accelerometers signaled positional change and therefore cannot create the claimed ‘input signal.’ The district court rejected this argument–concluding that accelerometers measure acceleration, not position.
- Argument 2: Controller accelerometers send signals at <500 Hz and therefore cannot create the claimed ‘input signal.’ The district court agreed with this argument and thus dismissed the case on summary judgment for lack of infringement.
On appeal, the Federal Circuit has rejected that construction as unduly limiting.
During prosecution, the examiner rejected the claims as obvious based upon a prior patent (Yollin). Yollin disclosed a mouse/joystick that combined the mouse movement signal with a button-pushing signal as well as signals from potential biometric sensors (muscle tension, heart activity, brain activity, blood pressure, etc.). Those all look like “input signals”–but the patentee argued in its OA response that the “slow varying” signals were fundamentally different from the sound-related input signal he was claiming. Rather, his claimed “input signal” was directed to “signals containing audio or higher frequencies.” He also showed that the Yollin approach would not work for high frequency signals because it did not account for signal collision. The examiner accepted the distinguishing argument and allowed the case.
At the Markman hearing during litigation, Nintendo’s expert conducted an analysis of the ‘slow varying’ signals found in Yollin and concluded that they could operate at a range of up to 500 Hz. The district court concluded that by arguing around Yollin, the patentee had effectively disclaimed all input frequencies below 500 Hz.
On appeal, the patentee admitted that its prosecution statements did create a disclaimer, but argued that the district court overreached. For its part, the Federal Circuit first noted that the expert testimony was not necessary and unduly stole attention from the intrinsic evidence.
Regarding the 500 Hz threshold, the district court erred by relying on expert testimony to limit the claim scope in a manner not contemplated by the intrinsic record. . . [T]he 500 Hz frequency threshold has no basis anywhere in the intrinsic record.
Slip Op. Disclaimer must be clear, and so we look to the words of the applicant. The applicant here particularly stated that its claimed “input signal” was directed to “signals containing audio or higher frequencies.” That is the disclaimer, nothing more. “We conclude that the only disavowal of claim scope that is clear and unmistakable in the record before us is Mr. Nguyen’s disavowal of signals below the audio frequency spectrum.” Slip Op.
On remand the parties will take the next step of arguing about (1) what is the low point for the audio frequency and (2) whether the Nintendo controller signals operate above that frequency. In its decision, the Federal Circuit appears to have fully construed the claim term: “We therefore conclude that the proper construction of ‘input signal’ is ‘a signal having an audio or higher frequency.'” Slip Op. That suggests to me that these arguments on remand will be part of the infringement case and thus factual questions for a jury to decide. [Note here that Nintendo will also likely argue invalidity based upon the expanded claim scope].
= = = =
Note – the court’s rejection of expert testimony here contrasts with its demand for expert testimony in the Williamson v. Citrix line of cases where the court is asking whether a particular claim term inherently includes sufficient structure.
Our usual examiner ‘experts’ appear to be confused between disclaimer and plain overcoming BAD BUI (Broadest Unreasonable Interpretation).
Be mindful that, when patent applications are filed, patent applicants are not required to divine the rejections Examiners will proffer during examination. The evidence and/or arguments traversing an Examiner’s rejections are not required to be contained within the specification at the time of filing (keeping in mind that the specification still has to meet written description and enablement requirements).
Was “input means for producing [an] input signal” somehow not interpreted under 112f?
I don’t understand how this got into the weeds of disclaimers when the claim seems to be means-plus-function and the specification does not disclose accelerometers.
Judge seems to have found thwir interpretation of “input signal” disposition, and never got to “input signal means.”
“ I see disclaimer as an examination failure. When a patentee distinguishes the prior art based upon non-apparent limitations, the examiner should require the patentee to amend the claims by adding limitations rather than permitting the patentee to re-define claim terms on the fly. If the specification would not support such an amendment, then the specification also would not support the disclaimer.”
Absolutely. Either you’ve got the necessary definition in your spec or you be got support for a narrowing amendment. As pointed out below, it’s possible to snake through the PTO with some “argument” about “what applicant clearly meant” that was pulled out of thin air after filing but at the end of the day that sort of thing is going to crush you in litigation. Of course, there’s a cost/benefit analysis there for the applicant I see disclaimer as an examination failure. When a patentee distinguishes the prior art based upon non-apparent limitations, the examiner should require the patentee to amend the claims by adding limitations rather than permitting the patentee to re-define claim terms on the fly. If the specification would not support such an amendment, then the specification also would not support the disclaimer as some “invalid” patents (I.e., patents that shouldnt have issued) have value until they are permanently tanked.
Good points by RG down thread, as usual.
Apologies — Typed that on my phone and accidentally re-pasted DC’s quote into the body my response. I’ll try again, leaving out the quote entirely:
Absolutely. Either you’ve got the necessary definition in your spec or you have support for a narrowing amendment. As pointed out below, it’s possible to snake through the PTO with some “argument” about “what applicant clearly meant” that was pulled out of thin air after filing but at the end of the day that sort of thing is going to crush you in litigation. Of course, there’s a cost/benefit analysis there for the applicant as some “invalid” patents (i.e., patents that shouldnt have issued) have value until they are permanently tanked.
Good points by RG down thread, as usual.
“I see disclaimer as an examination failure. When a patentee distinguishes the prior art based upon non-apparent limitations, the examiner should require the patentee to amend the claims by adding limitations rather than permitting the patentee to re-define claim terms on the fly. If the specification would not support such an amendment, then the specification also would not support the disclaimer. In Genuine Enabling Tech., the examiner accepted a distinguishing argument and issued the patent — leading to the case at hand.”
That’s literally just false. Not that I’ve actually done any of this myself, save maybe like once or twice that I don’t remember. But still, it is occasionally correct that the applicant will argue a “definition” (re-definition in your terms) of a claim term. If it genuinely is confusing then yes, of course a 112 should be issued for indefiniteness but otherwise that should be np.
6 you remind me of that well-known quote from Alice (the one in Wonderland, but perhaps also the one that’s been through the SCOTUS):
“When I use a word,” Humpty Dumpty said in rather a scornful tone, “it means just what I choose it to mean — neither more nor less.”
“The question is,” said Alice, “whether you can make words mean so many different things.”
“The question is,” said Humpty Dumpty, “which is to be master – – that’s all.”
6 you remind me of that notorious quote from Alice (the one in Wonderland, but perhaps also the one that’s been through the SCOTUS):
“When I use a word,” Humpty Dumpty said in rather a (redacted) tone, “it means just what I choose it to mean — neither more nor less.”
“The question is,” said Alice, “whether you can make words mean so many different things.”
“The question is,” said Humpty Dumpty, “which is to be master – – that’s all.”
When a patentee distinguishes the prior art based upon non-apparent limitations, the examiner should require the patentee to amend the claims by adding limitations rather than permitting the patentee to re-define claim terms on the fly. If the specification would not support such an amendment, then the specification also would not support the disclaimer.
Unquestionably correct. But that would lead to a situation where the claims are unfixable, and the office hates it when claims are unfixable for reasons other than prior art.
Teaching moment for both prosecutors and examiners here. Suppose Applicant wants a claim term to be less broad than what the Examiner wants the claim term to mean, in an effort to get around the prior art. Here is generally how the back and forth would go (multiple steps may and often do occur at the same time):
Applicant complains.
Examiner cites that office takes broadest reasonable interpretation (mpep 2111)
Applicant states interpretation is unreasonable
Examiner cites arguments of counsel cannot take the place of evidence where evidence is necessary (2145(I))
Applicant cites technical dictionary
Examiner cites requirement that interpretation be at time of effective filing (2111.01)
Applicant cites another technical dictionary from the correct timeframe
Examiner counter cites a different technical dictionary or cites how technical dictionary definition would be inconsistent with previously cited reference to show scope is reasonably broader, Examiner makes 112b rejection (or calls for a sua sponte 112b in appeal) in addition because now scope is arguably ambiguous
To avoid the 112b, applicant argues there is no ambiguity by conceding examiner’s broader interpretation, Applicant disclaims scope and cites as support their dictionary definition
At this point, most Examiners stop. In actuality, the correct thing to do is 112a written description rejection based on new matter.
—–
Because the board hates to raise new grounds of rejection, the odds of overcoming a 103 based on the above procedure are practically nil unless the examiner does not raise the 112b concern. In other words, even if an Applicant has a proper technical definition in hand and properly cites it in their initial brief (something most applicants don’t actually achieve), they will still lose so long as examiner can find a competing definition – which they will almost always be able to do or they wouldn’t have thought to search the different language that produced the prior art reference.
Conversely, the odds of overcoming a 112a (or not having a 112a made) if applicant disavows are decently high. Examiners are used to fixing nonstatutory double patenting with a terminal disclaimer, and therefore improperly assume a disclaimer allows them to select the non-broadest reasonable interpretation. But a disclaimer is functionally the same thing as amending the specification to add limiting language that one of skill would not view as having already been present (indeed, if it was already present they wouldn’t need the disclaimer to begin with). But because it does so without actually amending the specification, it tends to work – especially if the disavowal is made without any claim amendments. The MPEP actually supports a conclusion that a disavowal without claim amendments would require a new non-final, (706.07a – new rejection in final must be “necessitated by applicant’s amendment of the claims” or based on IDS information) if one ignores that the disavowal necessarily involves a concession that the broader scope is appropriate and the disavowal amends the scope even though it is not changing the words – but most examiners are not lawyers.
tl;dr – Applicants should almost never be challenging the Examiner’s interpretation because it won’t work and will almost certainly make your record worse, and Examiners should be more aware that a claim construction dispute should trigger 112a/b scrutiny.
The only time a 112a/b rejection would not be proper while a 103 is overcome is either:
a) There was always an express definition present and the examiner missed the definition, so the 103 was never proper to begin with; or
b) Examiner was just making up a meaning of a term in their head and also misread the reference, and there is absolutely no basis for the interpretation; or
c) there is an exemplary embodiment definition and the applicant amends the claims to textually include the definition, which overcomes the current 103 but triggers a new search and invites new rejections
If you’re thinking you’re in (b), you might want to check that that’s the case, and then double-check again. All other situations should be a maintained 103 and likely also trigger 112a/b.
RG, how much of those prosecution problems are due to the PTO until recently discouraging examiner 112 rejections?
RG, how much of those prosecution problems are due to the PTO until recently discouraging examiner 112 rejections?
Well I would say every tc is different. I wouldn’t speak for 3600 for example. I suspect they at least partially understand 112a full-scope-of jurisprudence. But in my world (2400) I have never felt discouraged about 112b rejections. I definitely feel discouraged about 112a rejections that are not based upon new matter, even today. Especially so with enablement. It is some people’s position that in software “everything is enabled.” It is my personal view, for example, that almost every software application’s independent claim is invalid due to written description. Many of them have their whole claimset as invalid. That’s because every software claim is claimed functionally (at least in the independent) and virtually every function could be implemented in manners that one of skill in the art would find distinct, and there is no proof that applicant posited any particular one let alone examples that span the breadth of the functional scope (if you even definitively know what that is). But if I get caught making any of these rejections I’m sure it would be found to be clear error, so I only make them when it is really ridiculous, and even that puts me on the far edge of it. For most every examiner, if the claim claims a function and the specification mentions the function, there cannot be a 112a rejection to that element. Breadth is policed solely by prior art.
Part of the reason I think a 112a would not be made here is because you can see how the outcome would be: If the applicant believes a claim term means X, but in fact it would mean X+ to one of ordinary skill, and something in X+ but not X is cited as prior art, the claim is essentially dead on arrival, arguably because of counsel malpractice. There is no language to amend around and they can’t win on a claim interpretation challenge. But that’s not an enjoyable outcome – the PTO never likes it if something was allegedly invented and there’s no prior art reason it shouldn’t be allowed, and the applicant obviously dislikes it. So instead one may ignore the 112a and allow the applicant to disavow the X+ scope to proceed under the X scope. That has the initial appearance of fairness and not unduly punishing the applicant, and also makes the record clear for the future (which is just wonderful examination brownie points, we love when we can say we’re doing that) but ultimately screws the public for reasons just like this case. But, of course, there’s nowhere else in prosecution we allow an applicant to exceed the scope of the disclosure or depart from the plain meaning without express statements, so why here? The answer is the MPEP is written vaguely enough that its not clear that disavowal is something the applicant *did* at filing, before examination, and not something they *do* during examination.
There is a level of logic to the thinking – most examiners aren’t lawyers so pass on the prior art questions and leave the other issues to a better forum. So long as the record is clear that X+ would be obvious and X is not obvious, there’s a record. But that ignores that the scope may change in other ways, and that there is a presumption of validity post-issuance.
Interesting:
link to patentbots.com
You DO seem to be on the fringe.
You DO seem to be on the fringe.
Yes, thanks for proving what I’ve said – my position is uncommon.
But the important statistic to put up would be what percentage of 2400 patents are upheld versus invalid on 112a issues post-issuance. I’m either uncommonly wrong on the issue or uncommonly right. Of course, when the alternative is “everything is enabled and the same language in the spec always supports functional claim language” I don’t think you even need to resort to statistics to get good odds on which. As I’ve routinely said, you guys don’t really want an examination.
And look I’m not even saying the office is wrong to do what it does – it’s arguable everyone is better off with the blanket rule. There’s value in consistency. That’s the hallmark of how the office treats judicial exceptions, for example. But I think its to everyone’s benefit to understand the limits/pitfalls of that course of action.
“Yes, thanks for…”
The viewpoint expressed is not something to be thankful for.
But you be you.
Paul,
What is your basis for asserting that examiners are discouraged?
Mind you, they may be discouraged from the “6 style” of just mailing it in (especially as any decent practitioner knows that in order to establish a prima facie case, an examiner actually has to do more than wave her hands.
Random que-ques a couple of times about “examiners are not attorneys,” but the comparatively more difficult time TO establish a prima facie case should NOT be taken as the Office dissuading examiners from performing their duties — which includes examiner under ALL OF the law.
“Here is generally how the back and forth would go (multiple steps may and often do occur at the same time):
Applicant complains.
Examiner cites that office takes broadest reasonable interpretation (mpep 2111)
Applicant states interpretation is unreasonable
Examiner cites arguments of counsel cannot take the place of evidence where evidence is necessary (2145(I))
Applicant cites technical dictionary
Examiner cites requirement that interpretation be at time of effective filing (2111.01)
Applicant cites another technical dictionary from the correct timeframe
Examiner counter cites a different technical dictionary or cites how technical dictionary definition would be inconsistent with previously cited reference to show scope is reasonably broader, Examiner makes 112b rejection (or calls for a sua sponte 112b in appeal) in addition because now scope is arguably ambiguous
To avoid the 112b, applicant argues there is no ambiguity by conceding examiner’s broader interpretation, Applicant disclaims scope and cites as support their dictionary definition
At this point, most Examiners stop. In actuality, the correct thing to do is 112a written description rejection based on new matter.”
That would be either the most tar ded prosecution since Ex Parte Frye, or nearso, that I’ve ever seen. If there was any real question of ambiguity the 112(b) should have been issued, or at least threatened should the applicant want to argue, in the initial Non-F/final that started the situation. Then you skip straight to “To avoid the 112b, applicant argues there is no ambiguity by conceding examiner’s broader interpretation” boom, you’re done. Then they make an amendment and get a patent. And they are simply claiming that they meant the definition they’re then arguing for in the first instance, and if it was genuinely contestable/questionable (remember you threatened a 112b or sent one so we know the office finds this to be the case) then that is fine save in very very few situations where one of skill in the art would not appreciate that definition being disclosed (super fcking rare as we just established that a technical dictionary would support that as a definition). Obviously it helps if the drawings already show the other definition, or the spec otherwise makes it clear what they were saying and that often happens.
” and the office hates it when claims are unfixable for reasons other than prior art.”
It’s because all the other statutes are basically just legalities to administrate the patent system and it is not the congresses intent to just stop people from getting patents with legalities for administration.
6 manages to completely prove the need for my post almost immediately.
If there was any real question of ambiguity the 112(b) should have been issued, or at least threatened should the applicant want to argue, in the initial Non-F/final that started the situation.
Applicants are mistaken about the broadest reasonable construction of terms all the time. It’s entirely possible that 112b’s are not appropriate before the applicant complains and are after they complain.
e.g. The claim claims “fruit.” The inventor comes from a company or context that only means “apples” when they talk about fruit. But the art knows fruit includes apples and oranges. “Fruit” as known generally in the art is not indefinite, and reading the specification would not clue the examiner in to the fact that Applicant is mistaken about the size of the fruit genus. That doesn’t change the fact that when applicant supports the assertion that fruit should be read as “apples” that you have to make a 112b, because now the record evidences that there are two reasonable interpretations of differing scopes, which is ambiguity. Whenever there are two definitions that both purport to be authoritative and they materially misalign you have a 112b issue.
Then you skip straight to “To avoid the 112b, applicant argues there is no ambiguity by conceding examiner’s broader interpretation” boom, you’re done. Then they make an amendment and get a patent.
They only get the patent if the amendment doesn’t make the claim invalid. They can only amend to a narrower scope when there is textual support for their narrower scope. The fact that the inventor subjectively believed “fruit” only meant “apples” doesn’t mean amending the claims to be “apples” isn’t introducing new matter for one of ordinary skill. For the same reason, they can’t concede that fruit means apples and oranges to one of ordinary skill and then disavow the oranges embodiments, that is also new matter.
And they are simply claiming that they meant the definition they’re then arguing for in the first instance, and if it was genuinely contestable/questionable (remember you threatened a 112b or sent one so we know the office finds this to be the case) then that is fine
No, it’s not fine, that’s the point. The fact that they really intended to claim just-apples but failed to do so does not save them. The claims are judged based on how one of skill would have interpreted as being disclosed, not what the applicant intended to disclose.
So again here’s the teachable moment I’m talking about: *B*RI is not an optional thing that you apply when you feel like it, you HAVE to apply BRI. The fact that you might find some other scope is ALSO reasonable just means that there may be a 112b issue, not that you have authority to accept any reasonable interpretation. There is not a single sentence in the MPEP that says the examiner may select from any reasonable interpretation at their discretion. You can’t give them the scope to be nice or because you think its fair, any more than you can just give someone a patent on claims that are rejectable because you really like them.
that is fine save in very very few situations where one of skill in the art would not appreciate that definition being disclosed (super fcking rare as we just established that a technical dictionary would support that as a definition)
Let me try a different example:
Technical Dictionary X is a reasonably authoritative source and says that a claim term means A, B or C. Technical Dictionary Y is also a reasonably authoritative source and says that the same claim term means A or B. Applicant argues convincingly that they were trained on dictionary Y, that the specification should be viewed in accordance with dictionary Y, and that Dictionary Y is reasonable to rely upon and would have been viewed by one of ordinary skill as a reasonable definition of the claim term at the time. You 100% agree in their arguments.
There is only one way forward here that is not error, and that is to construe the claims in accordance with Dictionary X and then make a 112b rejection to the claim. The sole question that controls the scope of the claim is whether Dictionary X is reasonable. Not whether its the most reasonable, or whether it’s what the applicant subjectively intended to mean, but simply whether it’s reasonable. The only way applicant can depart from X’s A/B/C meaning is for the specification to expressly define or exemplary embody the term as A/B or to expressly disavow C, neither of which would likely happen if it was written by someone who genuinely thought that the claim term already meant only A/B. You simply don’t have authority to construe it as A/B absent those express statements.
The fact that Applicant brings Y to your attention is the thing which most likely triggers a 112b rejection, and the argument that it is reasonable just proves the appropriateness of the 112b rejection with respect to the ambiguity of the C embodiments. That’s why Applicant usually only shoots themselves in the foot by arguing construction – It’s the production of Y, a less-broad allegedly authoritative definition, that proves the 112b, as the production of Y ordinarily doesn’t make X unreasonable.
This just makes common sense – the fact that two allegedly authoritative dictionaries disagree is the height of indefiniteness, and unsurprisingly the selection of which dictionary to cannonize isn’t left up to the whims of the examiner. Otherwise the patentability of the claims would turn on the subjective selection of the examiner rather than the objective standard of what one of skill would find reasonable.
I honestly don’t know how you could proceed with your thinking – you think its okay for them to admit to the broader construction, but then make an unsupported amendment because you agree it was a “genuinely contestable” definition? Why would a good faith basis for being wrong have any bearing whatsoever on patentability? Do you withdraw obviousness rejections because they swear up and down they thought it was nonobvious when they filed it?
It’s because all the other statutes are basically just legalities to administrate the patent system and it is not the congresses intent to just stop people from getting patents with legalities for administration.
Its statements like this that make me understand how “everything is enabled” comes to be.
“Applicants are mistaken about the broadest reasonable construction of terms all the time. ”
Yeah its fin annoying.
“It’s entirely possible that 112b’s are not appropriate before the applicant complains and are after they complain.”
I will agree that you can potentially wait, but that is just dragging things out. And it is certainly 100% always be “appropriate”, to either make outright, or note the possibility of, a 112b, if there is going to potentially be some blow up down the line.
“e.g. The claim claims “fruit.” The inventor comes from a company or context that only means “apples” when they talk about fruit. But the art knows fruit includes apples and oranges. “Fruit” as known generally in the art is not indefinite, and reading the specification would not clue the examiner in to the fact that Applicant is mistaken about the size of the fruit genus. That doesn’t change the fact that when applicant supports the assertion that fruit should be read as “apples” that you have to make a 112b, ”
Lelz, that’s a complete genus/species difference, obviously the applicant isn’t going to arguelol that you should interpret the genus fruit as the species apples. That’s tar ded, and yes, if they get that ta rded then you give a 112b, and will hit them with a 112a if they try to bring in apples into the actual claim. But you and I both know that isn’t what is at issue. The things we’re talking in this thread about is are where a word can be legit interpreted as one or more things, ITSELF, as it has more than one definition etc., this is not the situation of species within itself etc.
“They can only amend to a narrower scope when there is textual support for their narrower scope.”
Not at all. There’s drawings, there’s external evidence of the meaning of a word, etc. etc. and irl most cases are ones were everyone is already familiar with the two or more different interpretations possible and there is no need for evidence, the applicant can just say they meant the one interpretation in general and we’re supposed to accept it, within reason. Your personal more strict interpretation of 112 does not trump the office’s policy on this. And, that policy has as to date not seemed to cause any trouble in the courts. That is, no courts that I’ve heard of tend to question the 112 1st support for a term that was deemed to be interpreted in x manner by the office when it was a question of whether it should be x or y or z when the applicant states they meant the term as x and it seems reasonable in the context.
“No, it’s not fine, that’s the point.”
It most definitely is. And yes, I know your point is that you don’t agree with that. But it is. Irl it is. Tough tit ties.
“not that you have authority to accept any reasonable interpretation. ”
Um, it’s not that I have Othoritie to, it’s that I literally am obliged to. Derp. This does not change however, if they leave the offending broader word in the claim that I still will have to apply the broader meaning for art. We accept the more narrow meaning as being supported by the application as filed and allow them to make an amendment. Derp.
“There is only one way forward here that is not error, and that is to construe the claims in accordance with Dictionary X and then make a 112b rejection to the claim”
Obviously incorrect.
You simply let them put “A or B” in the claims and go about prosecution, IF it is reasonable. Which in real life it almost always is. Although your particular example appears to be more of another bs species situation rather than a “different meaning” for the initial term situation. That is, usually the situation is claim term x means meaning A, or it means meaning B. The prior art shows meaning A, but the applicant actually meant the term as meaning B, and it’s clear from the record that such is likely the case. They then say “we meant meaning B”. You then let them put “meaning B” in the claims and they get a patent. Yay, end of discussion. And yes, you’re obligated to do this. And you’re not going to change that.
“You simply don’t have authority to construe it as A/B absent those express statements.”
I never said that you just “construe” it that way, in your claim construction that is, when applying art. You obviously don’t. You do “construelol” the term that way in the application as a whole for WD support purposes for them to make the amendment if it is reasonable.
You require them to make the amendment. And yes, you have the “lolauthority” to do so, in fact, you have the obligation to do so.
“you think its okay for them to admit to the broader construction, but then make an unsupported amendment because you agree it was a “genuinely contestable” definition?”
They don’t “admit a constructionlol” lol (or they don’t have to anyway and rarely do). What they are doing is effectively stating that they made an administrative boo boo in not being specific as to the correct term to use in the drafting as they were using the term x to mean specifically meaning A (or meaning B etc.). And, if it is reasonable to use the term x to mean meaning A etc. then we say oh ok, it looks reasonable here, put “meaning A” in the claim thx (prosecution then proceeds, maybe to allowance or another rejection etc). Or, rarely we say, nah man it doesn’t look reasonable in this particular rare instance, I can’t let you put “meaning A” in with only x used originally (as it would be a 112a problem). Why this is particularly difficult for you I cannot understand.
“but then make an unsupported amendment because you agree it was a “genuinely contestable” definition?”
It’s not “unsupported”, it only lack literal support. If it is reasonable for x to likely have been meant to mean meaning A as of filing then we are supposed to consider that adequate support under 112. I’m really not sure why this blows your mind.
“Why would a good faith basis for being wrong have any bearing whatsoever on patentability?”
It doesn’t necessarily have “any bearing on patentabilitylol”, at least in terms of art. It has bearing on whether a potential claim amendment will be deemed to have WD support under 112. And it does, as aforementioned, a thousand times, because it is the office’s policy. That is, a high level muckity muck said so back in the day.
In any event I’ve told you what the proper muhpolicy is, and you can either accept it or not, I’m not discussing it further. Talk to a QAS if you don’t believe me, they’ll tell you the same. And no, your bizarro attempts to make weird examples that don’t happen irl, but barely, do not change such.
“It’s because all the other statutes are basically just legalities to administrate the patent system and it is not the congresses intent to just stop people from getting patents with legalities for administration.
Its statements like this that make me understand how “everything is enabled” comes to be.”
Correct. That is where much of the bizarro stuff in legal thinking of the courts regarding 101/112 reasoning comes from.
The 112 tests for broadening amendments of original claims are not the same as the tests for narrowing amendment of such claims, but in both cases one needs to go back and check the specification for adequate support, and I do think there are too many examiners or applicant-attorneys who do not always take the time needed to do that.
I have also seen rare applications being called “continuations” having examiner-unchallenged spec changes that were significant enough as to subsequent claim interpretation to create “new matter” or 112 issues for their assertion.
I have also seen rare applications being called “continuations” having examiner-unchallenged spec changes that were significant enough as to subsequent claim interpretation to create “new matter” or 112 issues for their assertion.
This has come up for me but frankly I for the life of me can’t figure out what I’m allowed to do about it.
If a document is truly a CIP but the applicant calls it a continuation, the sole mechanism by which I can deal with that is by giving a later date to the -IP claims when I search them (which may be all claims). Hopefully the examiner correctly documents the record. I don’t appear to have a form paragraph for requiring them to delete the word “continuation” and replace it with “CIP.” Objections to the specification would be in MPEP 608 and are limited to defined things – hyperlinks, trademarks, improper incorporations by reference, nonenglish, etc. I have no ?falsehood? (I guess it would be) or otherwise freestanding objection.
I don’t even appear to have authority to order the removal of a benefit claim when they are not entitled to the benefit AT ALL. As near as I can tell, anything the Applicant enters on the ADS sheet will appear on the face of the patent and I have no mechanism to require a new ADS sheet. The most I can do is fill out a sheet that marks whether the foreign priority elements were complied with. I don’t get a sheet for US priorities.
…form paragraph:
¶ 2.06 Possible Status as Continuation-in-Part
This application repeats a substantial portion of prior Application No. [1], filed [2], and adds disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.
Examiner Note:
1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
2. This form paragraph should only be used if it appears that the application may qualify as a continuation-in-part, but no benefit claim has been properly established.
3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a “continuation-in-part” of the provisional application.
That is a) not an objection and therefore has no force; and b) designed to inform someone who did not claim any priority that this could be a CIP.
When there is clearly material new matter in an application called a “continuation” cannot an examiner require a CIP oath?
As to to “continuation” claims that require such spec new matter for claim support, if the parent application or a foreign equivalent was published more than a year before the “continuation” was filed, the parent may even be citable 103 prior art to those claims, in addition to any other art prior to the “continuation” filing date.
“When there is clearly material new matter in an application called a “continuation” cannot an examiner require a CIP oath?”
Not that I’ve ever heard of, nor is there any real need to do so. As long as the claims are supported then whether it is formally a CON or a CIP doesn’t matter AFAIK as to whether they get x effective filing date for those claims. If the claims are not supported back in the parent then they will only get the later date.
“As to to “continuation” claims that require such spec new matter for claim support, if the parent application or a foreign equivalent was published more than a year before the “continuation” was filed, the parent may even be citable 103 prior art to those claims, in addition to any other art prior to the “continuation” filing date.”
Correct, or even if I take your example correctly, that might be 102 art since they did the after a year or more filing. I actually have this happening in one of my cases right now, but it isn’t the “best art” due to spec/disclosure differences (and I have other art to use so I’m just not going to bother arguing about it, I just made a note regarding the situation that the ref supposedly claimed as a valid parent appears to be available as prior art).
“Continuations” that don’t abandon the parent should probably also be getting some double-patenting rejections.
Your animosity is looking for a problem.
““Continuations” that don’t abandon the parent should probably also be getting some double-patenting rejections.”
That would depend on the claims wouldn’t it bruh?
“Continuations” that don’t abandon the parent should probably also be getting some double-patenting rejections.
Well that doesn’t necessarily follow. But of course the odds of a DP are higher when you’re relying upon the same disclosure.
Yes, I see that the PTO does not require a new and different oath for post-AIA CIPs [making it even easier to conceal “new matter” in “continuations” until exposed in IPRs or litigation.]
Maybe check link to mpep.uspto.gov
before you get all “applicants are BAD”…
Yes, I see that the PTO does not require a new and different oath for post-AIA CIPs [making it even easier to conceal “new matter” in “continuations” until exposed in IPRs or litigation.]
I would assume your best bet is that the ADS is signed by a person who (I believe) is also charged with the knowledge of the specification. Assuming you’re looking to attack a malicious act it would be the person who signed the ADS after nominating a continuation rather than a CIP that made the misrepresentation.
“If a document is truly a CIP but the applicant calls it a continuation, the sole mechanism by which I can deal with that is by giving a later date to the -IP claims when I search them (which may be all claims). ”
That’s all you need. They can correct things in the claims to priority and/or ADS if they want, or they can correct the claims and/or spec as they please. No need for the examiner to force them. Could note the issue tho.
“I don’t appear to have a form paragraph for requiring them to delete the word “continuation” and replace it with “CIP.””
No need to do so.
“I don’t even appear to have authority to order the removal of a benefit claim when they are not entitled to the benefit AT ALL.”
No need to do so. They’re just making a legal claim to that priority date. Either they will be successful in the claim or they will not be, tis but a legal question that can be decided as a legality as the situation demands later on it any substantive legal/prosecution procedures.
“As near as I can tell, anything the Applicant enters on the ADS sheet will appear on the face of the patent and I have no mechanism to require a new ADS sheet. ”
Yes their claims to priority will appear, that is np.
“I don’t get a sheet for US priorities.”
No need for one. But you can make a note that you don’t think they get a domestic date in your action if you like just so everyone is clear and they can adjust claims/spec etc as they please.
The noted en banc [controlling] Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) decision is cited for an even stronger statement, that “the specification is the single best guide to construing a claim.” [I.e., intrinsic rather than extrinsic evidence such as litigation hired expert opinions or even contemporary technical dictionaries, if possible.]
In contrast to some examiners being convinced to allow claims by argued-distinctions that are not in the claim itself, historically a common question at Board oral arguments was “where is that distinction shown in the claims?” Especially since “broadest reasonable construction” is how pending application claims are supposed to be construed.
“where is that distinction shown in the claims?”
The board loves this because it allows them to kick it back but still gives applicant a mechanism for going forward. But see my post at 3 as to how this gets confused during prosecution.
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