Conditional Claim Limitations

by Dennis Crouch

In re Google, 22-1611 (Fed. Cir. 2022) (non-precedential order)

In Arthrex, the Supreme Court rewrote the Patent Act, charging the USPTO Director with authority to review final written decisions stemming from inter partes and post grant review proceedings (IPR/PGR).  One open question is the Director’s role in mill run patent applications that have been rejected by the Board. There are two particular actions that Directors have taken in recent decades:

  1. Create a stacked rehearing panel that overturns the prior PTAB panel decision. This approach is typically taken when the Director wants to make a precedential statement on some matter of law or procedure.
  2. If the party appeals, admit to the Federal Circuit that the PTAB erred and seek remand to reconsider the PTAB panel decision.  This second path is the approach taken here for Google.

Google’s pending Application No 15/487,516 claims video processing method using adaptive composite intra-prediction.  In its decision, the Board construed three key  claim limitations as “conditional limitations.”  The Board generally gives no patentable weight to conditional method steps in the anticipation/obviousness analysis.  See Ex Parte Schulhauser, 2016 WL 6277792 (PTAB Apr. 28, 2016) (precedential).  Google filed its notice of appeal to the Federal Circuit and must have had some discussions with the Solicitors office because the agency filed its request for remand even before Google filed an opening brief.

I have included the claim below, but the basic setup is that the claim includes the following stylized step:

A method comprising …

in response to a determination that a first block is available, generate a pixel value …

The basic question here is whether this claim limitation requires any action.  The PTAB read it as merely conditional — effectively replacing it with the following:

A method comprising …

if the system determines that a first block is available, then generate a pixel value …

The Board explained its position that the claims did not recite a step of “determining” that the first block exists and so it is not required by the claims.

[W]e understand the phrase “in response to a determination that” a condition exists to be equivalent to a recitation of “if” that condition exists because claim 1 does not affirmatively recite a step of determining that the first prediction pixel is available prior to reciting the step that is performed in response to—i.e., when or if—such a condition exists.

PTAB Appeal 2020-005221.  The PTAB then applied Schulhauser to conclude that “the Examiner need not present evidence of the anticipation of any of the disputed conditional method steps, because they are not required to be performed under the broadest reasonable interpretation of the method steps recited in representative independent claim 1.”  Google sought reconsideration, but the Board stuck to its original decision.

Now before the Federal Circuit, the Director has concluded that the Board erred.  Through the SG, the Director submitted an interesting reason for its determination–that a close reading of the specification shows that the first determination step is present in “every embodiment.”  Thus, according to the Director, the PTAB’s reading of the claims as conditional limitations “would be inconsistent with the specification.”

Upon review, and under the specific facts of this case, the Director acknowledges that the Board erred in designating L1 and L2 as conditional limitations governed by Schulhauser because such a reading would be inconsistent with the specification, which teaches that for every embodiment a first prediction pixel is available and a determination of whether a second prediction pixel is available is made.

Dir Motion to Dismiss.  This statement from the Director appears somewhat contrary to the usual approach of Broadest Reasonable Interpretation (BRI) which avoids importing limitations into the claims simply because they are present in each disclosed embodiment.

Google did not object to the dismissal and the Federal Circuit has ordered a remand.

One important caveat to this case — the application itself appears to still be unpublished. Thus, the information that I’m reporting comes only from public documents filed with the Federal Circuit.  I don’t have the application itself or any of the briefs filed with the PTAB.  I do have the challenged claim:

A method comprising:

generating, by a processor in response to instructions stored on a non-transitory computer readable medium, a decoded current block by decoding an encoded current block, wherein decoding the encoded current block includes adaptive composite intra-prediction, and wherein adaptive composite intra prediction includes:

in response to a determination that a first prediction pixel from a first block immediately adjacent to a first edge of the encoded current block is available for predicting a current pixel of the encoded current block:

determining whether a second prediction pixel from a second block immediately adjacent to a second edge of the encoded current block is available for predicting the current pixel, wherein the second edge is opposite the first edge; and

in response to a determination that the second prediction pixel is available, generating a prediction value for the current pixel based on at least one of the first prediction pixel or the second prediction pixel;

generating a reconstructed pixel corresponding to the current pixel based on the prediction value; and

including the reconstructed pixel in the decoded current block; and

outputting or storing the decoded current block.

Google NOA with PTAB Decisions Attached.

Schulhauser involved a heart-monitoring method claim with the following conditional step:

triggering an alarm state if the electrocardiac signal data is not within the threshold electrocardiac criteria;

Ex parte Schulhauser, APPEAL 2013-007847, 2016 WL 6277792 (Patent Tr. & App. Bd. Apr. 28, 2016) (precedential).  The panel concluded that step in conditional form can be ignored for anticipation purposes.  The Board relied particularly on the Federal Circuit’s non-precedential decision in Cyber settle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) where the court explained that: “If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.”  Id.  Schulhauser distinguished this method-claim from  system claims that include the same conditional functionality since the system “still requires structure for performing the function should the condition occur.” Id.  The MPEP now reflects this same approach:

The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A. If the claimed invention requires both the first and second conditions to occur, then the broadest reasonable interpretation of the claim requires both steps A and B.

MPEP 2111.04 (II).  The Board has relied upon Schulhauser in hundreds of decisions.  However, there appears to be some ongoing debate within the PTAB about the scope of the case, with a number of cases having dissents on this point.  See., e.g., Ex Parte Botman, APPEAL 2021-004052, 2022 WL 4093710 (Patent Tr. & App. Bd. Sept. 2, 2022); Ex Parte Gopalan, APPEAL 2017-007009, 2018 WL 2386111 (Patent Tr. & App. Bd. May 21, 2018); Ex Parte Erhart, APPEAL 2019-004505, 2021 WL 195811 (Patent Tr. & App. Bd. Jan. 8, 2021).

In the appeal, Google was represented by Jonathan Tietz and Andy Dufresne (Perkins).  The per curiam order was issued by Judges Lourie, Chen, and Stark.

87 thoughts on “Conditional Claim Limitations

  1. 8

    Impressed with Wt handling the incorrigible Random.

    Sadly, Random is firmly entrenched atop his peak of Mount
    S
    t
    u
    p
    i
    d.

  2. 7

    As an aside, I looked at the Decision on Appeal [D1] and Decision on Request for Rehearing [D2]. It is classic BS from the Board.

    D1 is basically … the limitations aren’t shown by the reference so we are going to cite this case that the USPTO applies inconsistently to ignore the limitations because we don’t like reversing the Examiner. This is standard PTAB fare.

    In the Request for Rehearing, Google rightfully argues that the Board introduced a new ground of rejection. In D2, the PTAB butchers the law in denying Google’s request that this is a new ground on the basis that “we merely applied the most applicable controlling legal authority to Appellant’s conditional method claims.” Under that standard, there would NEVER be a new ground of rejection based upon the application of a new legal theory by the Board.

    This is from Rambus v. Rea citing In re Leithem: “the PTO must ‘provide prior notice to the applicant of all ‘matters of fact and law asserted’ prior to an appeal hearing before the Board.’” and “The Board may not ‘rel[y] on new facts and rationales not previously raised to the applicant by the examiner.'” The Examiner argued that the limitations were shown in the prior art. The Board said these limitations didn’t have to be shown. How is that NOT a “rationale[] not previously raised … by the examiner”?

    I chuckled when I read who wrote the D1 and D1 as I’ve seen this APJ’s work product in the past. Nothing written in D1 or D2 surprises me. There are certain APJs who stretch the letter of the law and there there are APJs who run roughshod over it. This APJ is closer to the latter than the former.

    1. 7.1

      As if anyone needs the reminders:

      The PTAB is still a part of the Office.
      The MPEP is still not legal authority, binding on applicants.

      1. 7.1.1

        Even the MPEP recognizes that all words in a claim must be considered in judging the patentability of a claim against the prior art. In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970).
        However, the evidence is clear that examiners will go to great lengths to ignore claim language and essentially re-write claims for the purpose of rejecting the re-written claims.

        1. 7.1.1.1

          Who exactly is arguing the words of the claims?

          1. 7.1.1.1.1

            “The Board generally gives no patentable weight to conditional method steps in the anticipation/obviousness analysis. See Ex Parte Schulhauser, 2016 WL 6277792 (PTAB Apr. 28, 2016) (precedential).”

            1. 7.1.1.1.1.1

              So who exactly is arguing the words of the claims? In this case? Are you an AI wannabe like anon?

        2. 7.1.1.2

          Even the MPEP recognizes that all words in a claim must be considered in judging the patentability of a claim against the prior art.

          Considered does not mean it is necessarily given patentable weight. See Printed Matter, conditional limitations, and ineligible subject matter.

          However, the evidence is clear that examiners will go to great lengths to ignore claim language and essentially re-write claims for the purpose of rejecting the re-written claims.

          Why reject something that’s allowable when it’s easier, quicker, and more rewarding to just allow it?

          1. 7.1.1.2.1

            Why reject something that’s allowable when it’s easier, quicker, and more rewarding to just allow it?
            You tell me. Why do examiners tell me (and many others) that they think a particular application is allowable but are told not to allow it.

            Anyone who deals with LOTS of DIFFERENT examiners have long experienced situations in which an examiner will go to great lengths to reject something on art that isn’t even close.

            I had an examiner call me up and we agreed to to an amendment to place the application in condition for allowance after we appealed. A couple days later I get a call from the examiner (very apologetically) saying that he was told not to allow it and we ended up maintaining the appeal. It was an easy reversal by the Board because it was a lousy rejection.

            You may not seen this kind of stuff on your end, but those of us who have worked with a multitude of different examiners have seen it on our end.

            1. 7.1.1.2.1.1

              +1

              I like the philosophy behind RandomGuy’s 7.1.1.2. It makes sense in a game-theory kind of way. It even explains ~80% of the interactions that an applicant has with the USPTO. There exists, however, a stubborn 15–20% of applications whose history defy the intuitions expressed in 7.1.1.2.

              1. 7.1.1.2.1.1.1

                it even explains

                No. No, it does not.

                It is quite evident that Greg is an inside counsel and does not deal directly with ANY (much less a plurality of) examiners.

                He has an ‘almost Academic’ naïve view of reality — very much mirroring an Ivory Tower approach.

                As Greg likes to “use his real name,” won’t someone who knows and (perhaps only pretends to) care about him let him know how very f00l1sh his posts are?

                1. “It is quite evident that Greg is an inside counsel and does not deal directly with ANY (much less a plurality of) examiners.”

                  Tell me you don’t know anything about in-house practice without telling me you don’t know anything about in-house practice.

                2. Tell me you don’t know anything about in-house practice without telling me you don’t know anything about in-house practice.

                  Ha! For whatever little it is worth, I handle all of my U.S. prosecution myself. I only use outside counsel for ex-U.S. prosecution.

                3. Breeze, have you only dealt with but a single inside counsel? I have dealt with dozens, and they call along a spectrum.

                  Greg fits the spectrum of the ones that do not understand actual prosecution.

                  Sure, he asserts that he “prosecutes his own,” but this does not change the fact that he appears c1ue1ess to reality.

                  Contrast with Wt.

                  I do not always agree with Wt, but at least his posts resonate with veracity of having personal experience.

            2. 7.1.1.2.1.2

              Well said.

      2. 7.1.2

        “The PTAB is still a part of the Office.”

        Paid to comment 9/19/2022.

        Can’t argue with that.

      3. 7.1.3

        Doesn’t it make you mean mad when everybody hands your ass to you time after time?

        1. 7.1.3.1

          Pardon Potential rePeat for the filter catch…

          Your comment is awaiting moderation.

          September 19, 2022 at 10:45 pm

          Hi Shifty, nice to see you bring out your Tommy persona.

          Even “nicer” seeing that even in replying to another, your 0bsess10n remains on me.

    2. 7.2

      In the Request for Rehearing, Google rightfully argues that the Board introduced a new ground of rejection.

      I think it’s pretty clear it’s not a new ground. The question is weather Applicant had the opportunity to react to the thrust of the rejection being asserted. The examiner is presumed correct (Applicant has to show error) and therefore Applicant *had* to argue that the scope of the claim included a feature/limitation that was not anticipated/rendered obvious under the cited art. The “new” rejection is that the scope of the claim only includes features/limitations taught by the cited art. Applicant not only had an opportunity to but actually did argue that issue, as the scope of the claim in relation to the prior art was the issue in the appeal.

      The fact that Applicant’s argument resulted in a sideway adverse *legal* holding simply isn’t relevant – the fact that neither side (the examiner nor the applicant) cites a proper legal standard does not run afoul of due process so long as they have an opportunity to argue the issue.

      By your logic, if one party argued Case A was controlling precedent and the other party argued Case B was controlling precedent, due process would prevent a tribunal from holding Case C to be controlling precedent without allowing rebriefing. And yet tribunals (including the Supreme Court) opine a legal standard that is distinct from both side’s assertions *all the time.*

      1. 7.2.1

        I think it’s pretty clear it’s not a new ground. The question is weather Applicant had the opportunity to react to the thrust of the rejection being asserted.
        NO. It is not the “rejection being asserted.” It is the the grounds of the rejection — i.e., the factual and legal basis of the rejection. If the legal basis changes, then the grounds have changed.

        The examiner is presumed correct
        Wrong yet again. Read Ex parte Frye. The rejection is reviewed anew. The Examiner presents a prima facie case. Appellant rebuts it with evidence/argument. The Board then reviews the issues raised by appellant anew in view of all of the evidence/argument. There is no presumption of correctness given to the Examiner. Read In re Oetiker (“If examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent.”)

        The “new” rejection is that the scope of the claim only includes features/limitations taught by the cited art. Applicant not only had an opportunity to but actually did argue that issue, as the scope of the claim in relation to the prior art was the issue in the appeal.
        Wrong for yet a third time. A fair opportunity to react to the thrust of the rejection would entail arguing that the Board’s precedential opinion didn’t apply because the language was different than that in Schulhauser.

        the fact that neither side (the examiner nor the applicant) cites a proper legal standard does not run afoul of due process so long as they have an opportunity to argue the issue.
        Wrong for the fourth time. The legal standard is the ground of rejection. What is about the language from In re Leitham that “[m]ere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the Examiner” (emphasis added) don’t you understand? The Shulhauser citation was a “rationale[] not previously raised.”

        By your logic, if one party argued Case A was controlling precedent and the other party argued Case B was controlling precedent, due process would prevent a tribunal from holding Case C to be controlling precedent without allowing rebriefing.
        Wrong for the fifth time. If Case A, Case B, and Case C all involved the same issue, then there would be no new grounds of rejection. However, if Case C involved an issue not raised by the Examiner, then yes — a new grounds of rejection.

        And yet tribunals (including the Supreme Court) opine a legal standard that is distinct from both side’s assertions *all the time.*
        It isn’t a new ground because Applicant/Appellant got to argue what the legal standard should be. This is entirely different than pulling a different standard out of the hat, applying it, and then affirming based upon a “rationale[] not previously raised to the applicant by the Examiner.”

        “rationale[] not previously raised to the applicant by the Examiner.”
        “rationale[] not previously raised to the applicant by the Examiner.”
        “rationale[] not previously raised to the applicant by the Examiner.”
        “rationale[] not previously raised to the applicant by the Examiner.”
        “rationale[] not previously raised to the applicant by the Examiner.”

        a “rationale[] not previously rasied to the applicant by the Examiner.”

        a “rationale[] not previously rasied to the applicant by the Examiner.”

        a “rationale[] not previously rasied to the applicant by the Examiner.”

        1. 7.2.1.1

          “The examiner is presumed correct
          Wrong yet again. Read Ex parte Frye.”

          He’s made that argument before. Numerous times. He’s been corrected before. Numerous times. He keeps making it. He’s perfect for the job he’s in.

          1. 7.2.1.1.1

            “The examiner is presumed correct” is just so breath-takingly wrong that it is hard to know where to begin. What exactly does MPEP 2142 mean when it says that “[t]he examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness,” if the examiner is presumed correct? “The word ‘presumption’ properly used refers only to a device for allocating the production burden.” Texas Dept. of Community Affairs v. Burdine, 450 U.S. 248, 254 n.8 (1981). If the examiner is presumed correct, then—by definition—it is the applicant who has the evidentiary burden, which is the opposite of what MPEP 2142 says.

            1. 7.2.1.1.1.1

              He’s easily one of the top 3 or 4 most intellectually dishonest posters on this site.

    3. 7.3

      I had to resubmit a 181 petition to get the patent office to decide correctly regarding a new ground of rejection levied in an advisory action through the addition of references. Robert W. Bahr, the Deputy Commissioner for Patent Examination Policy stated the following in the Decision granting the petition:

      “Whether there is a new ground of rejection depends upon whether the basic thrust of a rejection has remained the same. See In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976). A new ground of rejection may be present when a rejection relies upon new facts or a new rational not previously raised to the applicant. See In re Biedermann, 733 F.3d 329, 337 (Fed. Cir. 2013) (quoting In re Leithem, 661 F.3d 1316 at 1319 (Fed. Cir. 2011 ).”

  3. 6

    Dennis, there is a third way the PTO management can overrule a PTAB decision on a patent application that is on appeal at the Fed. Cir., which is for the PTO Solicitor to concede and withdraw, ending the appeal. That happened years ago on appealed Beauregard claims.

    1. 6.1

      I remember that one.

      Although I thought the PTO should have continued, as I’ve always thought Beauregard claims were invalid.

      1. 6.1.1

        Alright, without getting snarky (or ‘offensive’), please explain why such claims are invalid (feel free to have your explanation include legal and scientific reasoning).

        Thanks.

      2. 6.1.2

        A copyright lobbyist who somehow became the head of the USPTO (I know how; it’s in the public record) decided it wasn’t worth the trouble to defend on appeal. He said he was going to teach the fed cir about parents but never did.

        1. 6.1.2.1

          I said “patents” but the spell chick knew better.

          1. 6.1.2.1.1

            … and Sammy too! No expenses spared tonight.

  4. 5

    The board’s interpretation is not how I personally would’ve treated the claims, but I am aware of examiners who understand that language to be conditional. So I would’ve much rathered Vidal had let the appeal play out so that the CAFC could conclusively resolve this “in response to…” language. Given their hanging of the new interpretation on the specification, I doubt she will be directing OPLA to clarify the MPEP. So nothing changes or is clarified, and only Google benefits.

    1. 5.1

      “only Google benefits.”

      Gee, and where have we seen that before?

      “All your justice are belong to us.”
      — Google

    2. 5.2

      only Google benefits.

      Well, Google is the one who paid the application fee for this particular application. If—as seems evident here—the PTO realizes that it has this one wrong, then the PTO owes it to Google to correct the mistake sooner rather than later.

      1. 5.2.1

        I do not object to the expedited resolution for Google but rather leaving unstated the rule by which it was determined that Google was wronged.

        Crouch gently says that the explanation here “appears somewhat contrary” to BRI policy, but I would say it flatly contradicts BRI policy. An examiner who justified a narrower than BRI interpretation by “every embodiment disclosed included this” would be handed an error.

        If the office thinks that “in response to…” is not conditional, then that should be put in the MPEP. If the office thinks that unclaimed features referenced in every embodiment limits the BRI, then that should be put in the MPEP. If they are not confident enough to put either of these positions into the MPEP, perhaps they should not be confident about whether they wronged Google, and they should let the CAFC clarify the law.

        1. 5.2.1.1

          Fair point. A revision to the MPEP is the right outcome, as you say.

          1. 5.2.1.1.1

            A revision of the MPEP because a change to Office policy or because of a change of binding precedent at the fed cir?

        2. 5.2.1.2

          “If the office thinks that unclaimed features referenced in every embodiment limits the BRI, then that should be put in the MPEP.”

          Exactly right. But what about the next Director?

    3. 5.3

      So I would’ve much rathered Vidal had let the appeal play out so that the CAFC could conclusively resolve this “in response to…”
      The USPTO probably realized that they didn’t have a (legal) leg to stand on and withdrawing the case was better than getting trounced at the CAFC.

      1. 5.3.1

        Then they should admit that as the basis for the error and move to incorporate this determination into the MPEP.

        1. 5.3.1.1

          I agree 100%. However, from my experience with the USPTO and MPEP, they are far more likely to delete (from the MPEP) citations to case law supporting an applicant’s arguments than they are to add a citation that supports an applicant’s arguments.

          1. 5.3.1.1.1

            Plus a gazillion

            1. 5.3.1.1.1.1

              Why does everybody ignore your contributions, Snowflake?

              1. 5.3.1.1.1.1.1

                … says the guy that literally (and eagerly) counts my every word.

                So precious.

                But I must say, THIS topic has lit a fire under your bonnet.

                Is this one in which your past role at the Patent Office intersected with?

  5. 4

    Schulhauser is another backdoor attempt by the USPTO/PTAB to (improperly) make substantive law with their precedential decisions. Leaving aside that it is improper for the USPTO/PTAB to make substantive law, they confuse optional limitations with conditional limitations.

    An optional limitation is something like this: wherein the motor is an AC motor or a DC motor. For anticipation, you don’t need show in the prior art both an AC motor and a DC motor. You just need to show one.
    Another example of an optional limitation is something like this: wherein the motor could be an AC motor. The “could be” indicates the language is optional.

    The critical claim language in Ex parte Shulhauser is the following:
    [L1] triggering an alarm state if the threshold tissue perfusion data is not within the threshold tissue perfusion criteria; and
    [L2] triggering an alarm state if the threshold tissue perfusion data is within the threshold tissue perfusion criteria and the heart sound data indicates that S3 and S4 heart sounds are detected,
    [L3] wherein if an alarm state is not triggered, the physiological data associated with the subject is collected at the expiration of the preset time interval.

    (Limitations labeled for convenience).

    In this instance, you have (potentially) mutually-exclusive claim language. Either the threshold tissue perfusion data is within the threshold or not. Thus, either L1 applies or L2 applies but not both — assuming that “the threshold perfusion data” refers to a single instance and not multiple instances. Also, if either L1 or L2 applies (i.e., an alarm state is triggered), then L3 does not apply since it applies “if an alarm state is not triggered.” These limitations could therefore be deemed “optional” and are not required to be disclosed by the prior art. BTW — this is an example of BAD claim drafting.

    What Schulhauser gets right is that while this analysis applies to a method claim, it does not apply to a device claim in which a processor is configured to perform these operations. I could delve into this deeper but suffice it to say that Typhoon Touch v. Dell and Nazomi v. Nokia apply.

    What the Board gets wrong all the time is that the presence of a conditional limitation (e.g., perform A based upon B, or perform A if B, or perform A responsive to B) is not necessarily indicative of an optional limitation. While the Schulhauser claims included conditional limitations, it was the combination of the mutually-exclusive limitations that made certain limitations “optional” — not the mere presence of conditional limitations. A conditional limitation establishes a relationship between two elements (e.g., “A” and “B”) and it is not intended to make these limitations optional. The way Schulhauser should be properly construed is that if the claim recites mutually exclusive limitations then one is optional. However, conditional is NOT the same as optional.

    The Board relied upon Cyber settle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007). The language “If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed” is unaccompanied by any case citation. Cyber settle does include similar language to that found in Schulhauser. However, that language was not addressed by the opinion. Rather, the “contingent” discussion by the Federal Circuit involved language that did not include contingent/conditional language. As such, the Federal Circuit’s language appears to be dicta.

    1. 4.1

      Big +1 Wandering. Thanks.

    2. 4.2

      they confuse optional limitations with conditional limitations.

      “Optional limitation” is self-contradicting. There is no such thing as an optional limitation. Something either limits the claim scope or it does not.

      An optional limitation is something like this: wherein the motor is an AC motor or a DC motor. For anticipation, you don’t need show in the prior art both an AC motor and a DC motor. You just need to show one.

      This is a Markush limitation you’re describing. Markush limitations, like all other “consisting” scopes, limit the claims they are used in.

      Another example of an optional limitation is something like this: wherein the motor could be an AC motor. The “could be” indicates the language is optional.

      This is an example of prolix, which is objectionable because its not even proper language. The phrase “wherein the motor could be an AC motor” is not a limitation. You can be forced to remove it.

      These limitations could therefore be deemed “optional” and are not required to be disclosed by the prior art. BTW — this is an example of BAD claim drafting.

      This is entirely wrong analysis and bad thinking. You don’t have the choice (“could”) to “deem” limitations “optional” to somehow change your analysis. You do the same thing you MUST do in every claim – you find the outer bounds of a claim scope and ask if any anticipatory or obvious embodiments lie inside it.

      None of L1-L3 are “optional,” nor are they Markush. L1 states a time when an alarm must occur. L2 states a time when an alarm must occur. L3 states a result that must occur if no alarm occurs. That ignores that L1-L3 do not fill the breadth of all possible outcomes. If there was prior art that taught all the limitations but did not trigger an alarm when the threshold tissue perfusion data is not within the threshold tissue perfusion criteria, that prior art would be non-anticipatory. The claim commands that when the threshold tissue perfusion data is not within the threshold tissue perfusion criteria, an alarm is generated. The prior art does not generate the alarm. Therefore the prior art does not anticipate. This fact proves your “optional” characterization of the limitations as incorrect, as violating the conditional of L1 results in nonanticipation in all circumstances, not at the “option” of the patentee, infringer, or examiner.

      Consider instead a prior art that taught all the other limitations but triggered an alarm if the threshold tissue perfusion data is within the threshold tissue perfusion criteria. This teaching does not fulfill L1 because it is within the threshold criteria. It also does not fulfill L2 because it has no teaching about S3 and S4. It also does not fulfill L3 because it causes an alarm. And yet it would be anticipatory of the claim. That is because L1-L3 place limitations on some, but not all, of possible branching outcomes within the claim scope. They conditionally occur, but when they occur they MUST limit. There’s no choice or confusion on this – the scope DOES include this embodiment and therefore MUST be invalidated upon prior art teaching triggering an alarm if the threshold tissue perfusion data is within the threshold tissue perfusion criteria.

      While the Schulhauser claims included conditional limitations, it was the combination of the mutually-exclusive limitations that made certain limitations “optional”… The way Schulhauser should be properly construed is that if the claim recites mutually exclusive limitations then one is optional.

      No, it was the absence of limitations on possible outcomes that generated a situation where no further teaching was applicable.

      By analogy, if you had a method that said “Flip a coin, on heads do A, on tails do B” neither “on heads” nor “on tails” are optional limitations. Nor does their “mutual exclusivity” lead to the failure of the claim to require a teaching beyond “coins can be flipped.” The reason this method can be anticipated by a teaching that “coins can be flipped” is because heads and tails fail to fill the breadth of all possible outcomes. A coin that is flipped and lands on its edge completes the entire scope – it meets the flip limitation and does not trigger the A or B requirements. This is an embodiment of the claim and can be anticipated just like any other embodiment.

      Conversely, if the claim said “Flip a coin, on heads do A, on tails do B, on edge do C” the three outcomes would still be mutually exclusive – you can’t get heads and tails at the same time, nor heads and edge, nor tails and edge. But in this case “coins can be flipped” is insufficient to teach any embodiment – every embodiment requires additional teachings. The limitations describe mutually exclusive coin flip results, and the coin flip results each have their own limitation when they occur, but nothing is “optional.” If a prior art teaches “flip a coin and on heads do A” the prior art anticipates the claim, and an infringer doing so infringes – it DOES fall within the scope and therefore MUST result in invalidation/infringement. Meanwhile failing to do A or B or C MUST be noninfringing and CANNOT anticipate under any embodiment.

      In short – conditional limitations are not optional but mandatory limitations on the claim, but the context may never cause the limitation to arise for any given embodiment. The relevant context here is not “mutual exclusivity” but whether the the breadth of outcomes from the branching event are all further limited. If one branch is not further limited, at least one embodiment exists where that branch manifests and that embodiment requires no further teaching.

      Applying the correct analysis to the claim interpretation here – the court holds “in response to a determination that a first block is available” to be conditional. Whether that is a proper construction is its own issue, but assuming we accept that we traverse down that branch and find multiple additional limitations on the branch. We also recognize that there is at least one more branch within the scope of the claims – a situation where the first block is not available. That branch has no limitation placed upon it at all. Therefore one embodiment of the method is determining the status of the first block vis-a-vis availability, finding that the first block is not available, and doing anything or nothing (assuming its a comprising claim) in response. That completes the embodiment and anticipates the claim.

      Even your own application is wrong – under your own words “in response to a determination that a first block is available” and “in response to a determination that a first block is unavailable” would be “mutually exclusive” outcomes, and therefore would render doing any of their limitations “optional.”

      What Schulhauser gets right is that while this analysis applies to a method claim, it does not apply to a device claim in which a processor is configured to perform these operations.

      The “analysis” applies to all claims, it simply functions differently in an apparatus. The analysis is that all the limitations of an embodiment must be accounted for. In a method you *are travelling* through the method, meeting the branch and then resolving all the branch embodiments. In an apparatus, the claim is to the structure of a device that *can travel* through the branch and then resolve all the branch embodiments. Therefore it must account for all branches, because the embodiment of an apparatus that, e.g., flips a coin and then on heads do A, on tails do B, on edge do C requires the device to have structure capable of doing A, B and C, whereas the method only requires one of A/B/C based upon which flip result occurred. In the instant case, the claimed structure needs to be capable of doing nothing or anything at all in response to determining the first block is not available, and doing a specific set of steps in response to determining the first block is available. Therefore it must have the code for the “available” branch, even if that branch is never traversed during use.

      1. 4.2.1

        “Optional limitation” is self-contradicting. There is no such thing as an optional limitation. Something either limits the claim scope or it does not.
        It isn’t self-contradicting. Optional is defined as “available to be chosen but not obligatory.” That does not contradict the term “limitation,” which is defined as “a limit or bound; restriction.” While it isn’t self-contradicting it is poor claim drafting. Regardless, you need to talk to the people that draft the MPEP because they also use the term “optional.” From MPEP 2103: “Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation.”

        This is from In re Johnston, 435, F.3d 1381 (Fed. Cir. 2006):
        Claim 3, which depends from claims 1 and 2, contains the additional limitation “further including that said wall may be smooth, corrugated, or profiled with increased dimensional proportions as pipe size is increased.” The Board ruled that this additional content did not narrow the scope of the claim because these limitations are stated in the permissive form “may.” As a matter of linguistic precision, optional elements do not narrow the claim because they can always be omitted. We affirm the Board’s ruling that claim 3 as written is anticipated.
        This is an example of an “optional” limitation.

        This is a Markush limitation you’re describing. Markush limitations, like all other “consisting” scopes, limit the claims they are used in.
        That is what Markush claims are – a list of alternatives (i.e., different options).

        This is an example of prolix, which is objectionable because its not even proper language.
        No. Not pursuant to MPEP 2173.05(m). Prolix is a different thing.

        This is entirely wrong analysis and bad thinking.
        What are you talking about? It is bad claim drafting. It is sloppy language that need not be used. Post 3 describes how to avoid a Shulhauser rejection.

        None of L1-L3 are “optional,” nor are they Markush.
        L1 and L2 are mutually exclusive, which is my original point. Also L3 is mutually exclusive to L1 and L2. Again, bad claim drafting. However, this only applies to method claims – not a system claim in which the system is configured to perform all of the steps.

        The reason this method can be anticipated by a teaching that “coins can be flipped” is because heads and tails fail to fill the breadth of all possible outcomes.
        There is no requirement that a claim has to “fill the breadth of all possible outcomes.” In fact, it would be bad claim drafting to do so since it could make your claim impossible to infringe.

        That branch has no limitation placed upon it at all. Therefore one embodiment of the method is determining the status of the first block vis-a-vis availability, finding that the first block is not available, and doing anything or nothing (assuming its a comprising claim) in response. That completes the embodiment and anticipates the claim.
        The fundamental error in your logic is that the claims only cover what is claimed. If the claims don’t cover a “branch” (i.e., it is excluded) then it is outside the scope of the claim. Consequently, if someone practices that excluded branch, there is no infringement and similarly, if that particular branch was practiced as prior art, there is no anticipation.

        Consider the hypothetical claim of:

        performing non-obvious mitigation procedure X based upon a determination that Y characteristic is greater than Z.

        There is no requirement that the claim recite what happens when the Y characteristic is less than or equal to Z because that is prior art. In the prior art, nothing extra is performed when the Y characteristic is less than or equal to Z. Rather, the claim invention involves a special mitigation procedure that is only performed when the Y characteristic is greater than Z. The invention is NOT what happens in this other “branch” (i.e., when the Y characteristic is less than or equal to Z). Rather, the invention is the special mitigation procedure that is performed under a particular condition.

        As a matter of logic, it doesn’t make sense that the prior art (which does nothing special) would anticipate the special mitigation procedure being claimed upon the condition that Y characteristic is greater than Z.

        For a method that can take multiple different paths (i.e., because there are one or more branches), a properly written method claim should claim just a single path. If the claim covers multiple, mutually-exclusive paths, then the claim cannot be infringed. Infringement requires that ALL of the limitations be practiced. However, if ALL of the limitation cannot be practiced (i.e., because they are mutually exclusive) you’ve written a claim that cannot be infringed. FYI — claims that cannot be infringed make for very unhappy patent owners.

        The “analysis” applies to all claims, it simply functions differently in an apparatus. The analysis is that all the limitations of an embodiment must be accounted for.
        This is correct. Where you went wrong earlier is that you were trying to bring unclaimed aspects into the “embodiment.” What isn’t being claimed is not part of the claimed embodiment.

        1. 4.2.1.1

          Optional is defined as “available to be chosen but not obligatory.” That does not contradict the term “limitation,” which is defined as “a limit or bound; restriction.”

          Except what you call optional limitations ARE obligatory. Every limitation decreases the number of embodiments that are expressed in a scope. Lets take your example “wherein the motor is an AC motor or a DC motor” – that is a limitation that cleaves all non-AC/DC motors from the scope. It’s no different from “comprising a processor” which cleaves all non-processor systems from the scope. It is just as “optional” to limit the claim to two defined embodiments as it is to limit the claim to a much-larger-but-still-defined number of embodiments that include a processor. Similarly, there are hundreds of known processors, so one of skill has the “option” of selecting a first type or a second type, just as with the motors. But you wouldn’t call “a processor” an optional limitation (despite the fact that its use still allows for the “option” of selecting one of hundreds of possible embodiments that meet the feature). It seems like you’re just confusing yourself by using “consisting” language rather than “comprising.” Thinking about “is an AC motor or a DC motor” as being different in kind and requiring some different analysis from “a processor” is simply wrong.

          From MPEP 2103: “Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation.”

          Um…you understand this proves my point right? It is saying that language that is optional is not a limitation. There are no optional limitations. As I said above, the example of “wherein the motor could be an AC motor” is a statement of optional language (“could be”) that is not a limitation on scope. According to you this “may be” (as whose discretion you do not say) a limitation on scope depending upon the selected “option.” That is flatly incorrect. This is optional language that is a nonlimitation. If “wherein the motor could be an AC motor” was the sole limitation of a dependent claim you would get a 112d rejection.

          As a matter of linguistic precision, optional elements do not narrow the claim because they can always be omitted. We affirm the Board’s ruling that claim 3 as written is anticipated.
          This is an example of an “optional” limitation.

          This is again explicitly stating that optional claim language does not limit the scope of the claim, and then calling the claim anticipated by prior art that does not teach the optional language. Again, not a limitation.

          That is what Markush claims are – a list of alternatives (i.e., different options).

          Under this logic everything that does not reduce the element to one single thing is an optional limitation. A 1962 Ferrari GT is an “optional” limitation because 100 were made. A processor is an optional limitation according to this. Markush claims are “consisting” sub-groups within a comprising limitation. They are no different than using a comprising-not limitation.

          Not pursuant to MPEP 2173.05(m). Prolix is a different thing.

          No, it’s not. Prolix is noneffective language in a claim. 05m simply cautions that you need not make a prolix objection unless it is extensive, but the office CAN force all prolix be removed.

          There is no requirement that a claim has to “fill the breadth of all possible outcomes.” In fact, it would be bad claim drafting to do so since it could make your claim impossible to infringe.

          Of course not, but not doing so leads to the situation here – selection of the nonlimited branch ends the claim when there is no limitation to that branch.

          If the claims don’t cover a “branch” (i.e., it is excluded) then it is outside the scope of the claim.

          Now you’re being pedantic. If it is excluded there is no branch in the claim. “Flipping a coin” branches the claim. “Flipping the coin and having it land on heads” does not branch the claim. If you claim “flipping a coin” and then further limit the “heads” branch, a flip that lands on tails fulfills the entire claim.

          There is no requirement that the claim recite what happens when the Y characteristic is less than or equal to Z because that is prior art.

          Wrong analysis. You perform claim construction based upon the words of the claim, not based upon what the prior art is. You don’t construe the claim to make it unanticipated, you construe the words of the claim according to their plain meaning and if they include an anticipated embodiment, even an anticipated embodiment disclosed by the specification, you still invalidate the claim. A claim is based on what the applicant actually claimed, not what they intended to claim.

          In the prior art, nothing extra is performed when the Y characteristic is less than or equal to Z. Rather, the claim invention involves a special mitigation procedure that is only performed when the Y characteristic is greater than Z. The invention is NOT what happens in this other “branch” (i.e., when the Y characteristic is less than or equal to Z). Rather, the invention is the special mitigation procedure that is performed under a particular condition.

          The invention is defined by the claims. If the drafted drafted claim language that reads on admitted prior art that just means the prosecution attorney malpracticed, not that the patent is valid.

          Let me change your hypothetical slightly:
          “measuring Y; and
          performing non-obvious mitigation procedure X based upon a determination that Y characteristic is greater than Z.”

          The performing step now is clearly conditional, and the claim is clearly anticipated by the prior art. The question merely becomes “does removing the step of measuring Y change one of ordinary skill’s interpretation of the performing step” and it is entirely logical to conclude that no it does not. Now I would agree that if these were the only two limitations of the claim it may also be logical to read the performing step as nonconditional, but you wouldn’t make that determination based upon what the prior art is. You don’t construe the claim to save it from prior art, that’s a backwards analysis.

          If the claim covers multiple, mutually-exclusive paths, then the claim cannot be infringed.

          That is not true. Using the coin example, the claim can be infringed by doing A on heads, B on tails and C on edge. The claim requires one of the branches to happen and any attendant limitations for the given branch. It is not uninfringeable because a coin cannot simultaneously exist in the state of heads, tails or edge. It’s extremely common (and proper) for a method claim to branch and have limitations on both branches that fill the breadth of the branch. As one simple example, “Measure A; and if A is greater than B do X; if A is equal to or lesser than B, do Y” is a perfectly fine, valid, infringable claim despite “greater than B” and “equal to or less than B” being mutually exclusive paths.

          Again the only real problem comes along when you write the claim as “Measure A; and if A is greater than B do X; if A is less than than B, do Y” because there’s unquestionably going to be prior art or simply logic that shows that A can equal B and then the claim is taught without showing the anticipation/obviousness of X or Y.

          For a method that can take multiple different paths (i.e., because there are one or more branches), a properly written method claim should claim just a single path.

          This is true only inasmuch as the method claim is as valid as its weakest branch, and therefore it is a tactically sound choice to split the branches. It is not because the method claim has a null infringement set for mutually exclusive branches or because mutually exclusive branches cause some sort of inherent invalidity.

          Infringement requires that ALL of the limitations be practiced. However, if ALL of the limitation cannot be practiced (i.e., because they are mutually exclusive) you’ve written a claim that cannot be infringed.

          This is incorrect. “Flip a coin; on heads do A, on tails do B” can be “practiced” via a flip->heads->A embodiment or a flip->tails->B embodiment. There is no requirement that flip->heads->tails->A->B (i.e. “all limitations”) be practiced, nor is the method a null set of infringement. I certainly agree with you that if all limitations were required to be practiced in that method it would be a null set of infringement, but you are not required to practice nontriggered conditional limitations. The corollary of this argument is that a claim that limits both “on heads” and “on tails” could not be anticipated (and probably could not be obvious, since according to this argument the scope would be unenabled). Yet I properly 102/103 reject scopes like this all the time.

          Let me give you some free advice – Limitations are just a means to define a scope. Infringement requires action relative to that scope. Anticipation requires prior disclosure that falls inside of the scope. Obviousness requires analysis of at least one point within the scope. You shouldn’t think in terms of “practicing” limitations, you should only think about what the scope of the claim is. Referring to a limitation may help crystalize what aspect of a scope is important to a given analysis, but its not a requirement. If you go around pointing to a claim limitation that has a blue bus and saying the only way it can be infringed is by a blue bus and the only way it can be invalidated by prior art is with a blue bus, you’re gonna have a bad time.

          My personal threshold for determining whether I am dealing with someone who may know what they are doing is whether they advance the argument that each limitation must be disclosed in a given prior art. Nothing loses standing with me faster than someone who says “The claim includes limitation X, and Ref A doesn’t teach X and Ref B doesn’t teach X and Ref C doesn’t teach X.”

          1. 4.2.1.1.1

            Except what you call optional limitations ARE obligatory.
            I see from this line of arguments that you are treating “claim limitations” and “claim language” differently. I treat them synonymously. Hence, we are arguing past one another.

            Prolix is noneffective language in a claim.
            Except you cannot cite any case law for that because there is none. It is something made up in the MPEP (and by you apparently).

            but the office CAN force all prolix be removed
            Cite the rule, statute, or case law as a basis for the rejection. Oh wait, I forgot. Many Examiners cannot be bothered with such technicalities. Using “prolix” is just a lazy way of making a 112, 2nd paragraph rejection.

            Now you’re being pedantic. If it is excluded there is no branch in the claim. “Flipping a coin” branches the claim. “Flipping the coin and having it land on heads” does not branch the claim.
            You don’t understand how to write claims. When you claim a branch, you can write it such that the branch is recognized (i.e., ‘perform A upon B happening’) without necessarily reciting what happens along all of the branches.

            A claim is based on what the applicant actually claimed, not what they intended to claim.
            Exactly. Except that is not how this claim language is being treated. Rather, they interpreted (‘perform A upon B happening’) to include B not happening, and therefore there is no requirement to show A. THAT IS NOT BEING CLAIMED. However, that is how Schulhauser is frequently being used.

            The performing step now is clearly conditional, and the claim is clearly anticipated by the prior art.
            The prior art doesn’t show the non-obvious mitigation procedure X. How can it be anticipated?

            You don’t construe the claim to save it from prior art, that’s a backwards analysis.
            I never said to – that is a strawman on your part. You construe the language as claimed in which the non-obvious mitigation procedure X is performed based upon a determination that Y characteristic is greater than Z. That is what is being claimed. That’s the invention. The invention isn’t to do nothing.

            It’s extremely common (and proper) for a method claim to branch and have limitations on both branches that fill the breadth of the branch.
            No its not proper for a method claim. The claim cannot be infringed.

            This is incorrect.
            Are you a practicing patent attorney? Have you EVER had to deal with an infringement analysis? This is the law:
            “To prove infringement, the patentee must show that an accused product embodies all limitations of the claim either literally or by the doctrine of equivalents.” Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1340 (Fed. Cir. 2013). “If any claim limitation is absent from the accused product, there is no literal infringement as a matter of law.” Id.
            Notice the use of the term “all” within “embodies all limitation.” If a method claim recites two mutually-exclusive limitations, then one is necessarily absent. Hence, the method claim cannot be infringed.

            but you are not required to practice nontriggered conditional limitations
            “All” means all – not some. I would be great amused to see you make the argument before a judge that in a claim that recites “determining B” followed by a series of “performing A upon B, performing C upon A, and performing D upon C” all the defendant has to do is perform “determining B” in order to infringe. It is silly on its face. “[D]etermining B” is not the invention.

            I [im]properly 102/103 reject scopes like this all the time.
            Fixed it for you.

            Let me give you some free advice
            Let me give you some free advice. Stay a patent examiner and resist the urge to chase the big bucks and become a patent agent. Your lousy understanding of the law is likely to get you into serious trouble. Perhaps even better advice is to read the case law and not rely upon either the MPEP or “precedential” Board decisions that improperly attempt to make substantive law. The attorneys who argue cases before the Federal Circuit as well as the judges at the Federal Circuit are far more well-versed in the law than the average attorney working for the USPTO or the average patent prosecutor. The average APJ is probably an attorney that couldn’t cut it in private practice.

            1. 4.2.1.1.1.1

              Except you cannot cite any case law for that because there is none. It is something made up in the MPEP (and by you apparently).

              Well I think citing the MPEP is all I have to do, but you might want to look into pre-52 failure to point out and particularly claim cases. But fine, I’ll make a 112b argument – Noneffective language has no legal benefit and only serves to cause confusion on the claim scope, and therefore when balancing the “reasonable” on reasonable certainty there is no rational basis for it at all, and it violates 112b.

              Using “prolix” is just a lazy way of making a 112, 2nd paragraph rejection.

              This is more correct since the law corrected itself. Prior to reasonable certainty the law was insoluably ambiguous and noneffective language was not insoluably ambiguous, so the office needed a mechanism to remove language that did not belong in a claim because it did not define the actual claim scope. I certainly agree you could re-tart most prolix as 112b. Regardless, I doubt a court would look highly upon someone who demands language be kept in a claim when they admit it does not limit the claim scope when the statutory function of the claim is to point out and particularly claim the invention. You forget that the applicant is the moving party. If I cite the MPEP and say I’m not giving you a claim because of prolix, you have to convince someone to tell me I’m wrong.

              When you claim a branch, you can write it such that the branch is recognized (i.e., ‘perform A upon B happening’) without necessarily reciting what happens along all of the branches.

              Perform A upon B happening does not limit the claim if B does not happen. Unless B *always* happens (which it does not in a branching context) then the method includes an embodiment that does not require performance of A. If A is critical to the nonobviousness of the claim, it’s going to be invalidated as obvious.

              Rather, they interpreted (‘perform A upon B happening’) to include B not happening, and therefore there is no requirement to show A. THAT IS NOT BEING CLAIMED. However, that is how Schulhauser is frequently being used.

              That *is* what is Schulhauser said and *is* what is being claimed. A statement that requires conditional action does not exclude the condition not occuring from the claim scope. If I assert the method includes an embodiment of Non-B, you cannot dispute that by pointing to the “perform A upon B happening” limitation.

              The prior art doesn’t show the non-obvious mitigation procedure X. How can it be anticipated?

              Because X is not a limitation on every embodiment. It is only a limitation on certain embodiments. I’m not required to show that every embodiment is anticipated or obvious, just a single one within the scope. It is true that if I was trying to show the A>B branch was obvious I would need a reference to disclose X, but I’m not trying to show *that* embodiment is anticipated. I’m simply trying to show that the A=B embodiment is anticipated. That embodiment requires neither X nor Y be disclosed.

              No its not proper for a method claim. The claim cannot be infringed.

              I can’t teach you basic patent law, but ask around and anyone on this board will explain it to you.

              Are you a practicing patent attorney? Have you EVER had to deal with an infringement analysis? This is the law:
              “To prove infringement, the patentee must show that an accused product embodies all limitations of the claim either literally or by the doctrine of equivalents.” Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1340 (Fed. Cir. 2013).

              I’m enough of an attorney to know that its unpersuasive to cite a statement relating to product claims when we’re talking about method claims, especially when there’s a case on method claims that distinguishes their treatment from product claims on this very topic of conditional limitations, and the MPEP procedure you’re complaining about distinguishes its application of use between method and product claims, and I explained above at 4.2 that product claims would generate a different result. But please, go on talking about how good of an attorney you are, I’m enthralled. Is this an example of well-versed attorneys who argue before the CAFC, or are you less than average?

              And for the record, when we’re talking about single party infringement most examiners are superior to litigators, as they map features to claim language for anticipation analysis constantly, for a much larger amount of claims, for a much larger amount of comparisons than litigators. Litigators can spend hundreds of hours on a single product mapped to a single claim. Examiners map dozens of claims to dozens of disclosures weekly. I certainly agree they have no training in the finer points of infringement law and procedure, but on the question of “does this widget meet this claim scope” I would take an examiner over a litigator with equal years of experience any day, and so would you if you’re smart.

              Notice the use of the term “all” within “embodies all limitation.”

              The court that said that “all” product limitations need to be taught also said that there are situations where you don’t give patentable weight to limitations (In re Ngai, 367 F.3d 1336), so slow your roll on “all means all.”

              That being said, to repeat the above, the product claim wouldn’t have a null infringement set either. That’s because while any given coin flip has only mutually exclusive outcomes, the machine may be designed such that it is capable of performing all three branches in anticipation (the nonlegal use of the term, perhaps “preparation” should be used, although that term misses the mark) that any of the three branches could be traversed during operation. Again, to use the coin example, it is entirely possible to have a machine that is capable of all of A and B and C, and code it so that when heads is the result it uses its A functionality, when tails is the result it uses its B functionality and when edge is the result it uses its C functionality. That machine embodies all limitations despite them being mutually exclusive branches.

              I would be great amused to see you make the argument before a judge that in a claim that recites “determining B” followed by a series of “performing A upon B, performing C upon A, and performing D upon C” all the defendant has to do is perform “determining B” in order to infringe. It is silly on its face. “[D]etermining B” is not the invention.

              Oh I wouldn’t make that argument as the plaintiff, I’d make it as the defendant, because “determining B” is obviously going to be in the prior art, and therefore its going to be anticipated and invalid. Your subjective view of what is and is not the invention is not relevant, and I would “be great amused” to see you arguing that words that do not exclude an embodiment in fact exclude the embodiment because “Determining B is not the invention.” If you try and write a claim that requires A C and D but in fact only write a claim that requires determining B, then the claim infringes and is anticipated based on B. Applicants often write overly broad scopes (whether intentionally or accidentally) and they don’t get automatically shrunken to what the specification says. And guess what? Applicants at the office make the same argument that “that is not what the invention is” and they lose those arguments too, because the mechanism for solving overbroad language is amendment to proper language, not begging really really hard. If subjective statement of invention scope was the standard then Written Description wouldn’t exist as a rejection.

              Now I certainly agree as I said above that if you had a situation where it was the only claim limitation one might be inclined to interpret the claim as requiring B to occur, but just as that would not happen because the spec cited some prior art it also would not happen because the attorney got up and said “determining B is not the invention.” It would only happen because that is how one of ordinary skill in the art would construe words of the claim. Because you take the wrong message away from it, you start treating completely different situations where the PHOSITA would clearly not construe the claim in that manner as being similar. The example I said, where you flipped a coin and did A or B based on heads or tails would be infringed or anticipated upon a showing that a coin could landed on its edge, without showing A or B, because the POSITA would not view the claim as excluding that embodiment. That is true regardless of what the spec identifies as prior art, and that is true regardless of what the patentee’s lawyer claims is the claim scope.

              Your lousy understanding of the law is likely to get you into serious trouble.

              There is indeed some lousy understanding of the law going on here, I’ll give you that. Just to scoreboard – There’s been one case accurately cited to conditional method limitations here, Schulhauser, and it supports me. For all your bluster about being well-versed in the law you could point to a case where the federal circuit overruled Schulhauser but you didn’t, because you can’t, because no such case exists. Instead, the closest the federal circuit has come is to go FURTHER than Schulhauser and find that conditional limitations may not be given patentable weight even in system claims (see MPHJ Tech., 847 F.3d 1363, nonprecedential). You, much like my friend anon, apparently like to invoke a court’s name to lend credibility where your own credibility is too small to carry the day, even when they don’t support you and haven’t said what you say. If you know what a court will do on an issue cite a (relevant) case. Until then, you don’t know anything.

              To that, I’ll help you out with some procedural fact here: I stamp your claims rejected if I think I’m right, and you don’t get a patent until I relent. It’s unlikely you’re going to get the Board to get me to relent, as you agree I am doing nothing more than what they said and what the MPEP tells me to do. You have the right to go over their head, but you don’t know what the CAFC will do and (unsurprisingly) they tend to lay down the same standards the MPEP does because the MPEP isn’t put together without reason either. If your position is so widely shared and so clearly correct it seems odd that nobody has brought a case to right such a clear wrong, which ought to give you pause about whether other attorneys believe you’re right. In the meantime, the standard *is* that conditional method limitations are not limiting on nontriggered embodiments and your statements to the contrary about the one true law according to Wandering Through are awfully arrogant for someone whose elite experience has led them to only cite support that is in my favor or irrelevant to the current argument. If you want me to believe you’re good at what you do, you should demonstrate some mastery of the basics, like not citing a distinguished case, or a case of only general language that is clearly not correct for the situation we are in. Show me a case that considers the Schulhauser/MPEP position and overrules it and I’ll admit you’re right.

              1. 4.2.1.1.1.1.1

                Applicant as “moving party”….

                👋

                This is not the patent law that you are looking for.

              2. 4.2.1.1.1.1.2

                Well I think citing the MPEP is all I have to do
                The MPEP does not have the force of law. Again, “prolix” is just a lazy way to avoid making a 112, 2nd rejection.

                Noneffective language has no legal benefit and only serves to cause confusion on the claim scope, and therefore when balancing the “reasonable” on reasonable certainty there is no rational basis for it at all, and it violates 112b.
                Then explain Markman claims to me. I also suggest you look at MPEP 2173.05(h) and the discussion of Ex parte Cordova.. Not cited in the MPEP is also Ex parte Gross (Appeal No. 2011-004811). Your compadres do not take the same position that you do.

                If I cite the MPEP and say I’m not giving you a claim because of prolix, you have to convince someone to tell me I’m wrong.
                I’m not going to write a claim that has “prolix” in it. However, I have no problems filing a petition.

                Perform A upon B happening does not limit the claim if B does not happen.
                Except B not happening is not claimed. This is where your analysis falls completely on its face. You are incorporating into the claim a non-claimed element (i.e., B not happening). Again, this is just a lazy way for the Board to (inconsistently) find ways to ignore claim elements. I say “inconsistently” because these limitations are very frequently given patentable weight. The vast, vast majority of examiners don’t make these kind of rejections.

                If I assert the method includes an embodiment of Non-B, you cannot dispute that by pointing to the “perform A upon B happening” limitation.
                Then you are reading into the claims limitations that are not present.

                Because X is not a limitation on every embodiment.
                Don’t confuse the embodiments being disclosed (i.e., all of the paths) with the embodiments being claimed (i.e., a single path – if properly claimed). In Schulhauser, there were multiple mutually-exclusive paths being claimed. i.e., L1 and L2 are mutually exclusive and L3 is mutually exclusive from L1 and L2. You could reject the Schulhauser method claim for not being enabled (i.e., how can all of those limitations be performed?) but ignoring limitations is just being lazy. However, being lazy with rejections is what the USPTO is all about.

                when there’s a case on method claims that distinguishes their treatment from product claims on this very topic of conditional limitations
                What precedential decision at the Federal Circuit is there? I was talking about infringement, and PTAB cases are not precedential to a district court.

                And for the record, when we’re talking about single party infringement most examiners are superior to litigators, as they map features to claim language for anticipation analysis constantly, for a much larger amount of claims, for a much larger amount of comparisons than litigators.
                Sorry, most examiners have a rudimentary knowledge of the law. The vast majority don’t read case law that they are citing. They read the one or two or three sentence synopsis presented in the MPEP that are frequently very misleading and usually missing a whole bunch of context.

                Litigators can spend hundreds of hours on a single product mapped to a single claim. Examiners map dozens of claims to dozens of disclosures weekly.
                And both do so terribly given my experience. Regardless, mapping limitations is not knowing the law.

                I would take an examiner over a litigator with equal years of experience any day, and so would you if you’re smart.
                Based upon the huge percentage of times I have convinced an examiner they were wrong on a mapping (without amending the claims) I would say not. You may be good (or not, I don’t know), but I have far more experience knowing the wide range of quality present at the USPTO than you. Even if you were a SPE, I have vastly more experience with the wide variety of examiners out there than you would have.

                The court that said that “all” product limitations need to be taught also said that there are situations where you don’t give patentable weight to limitations (In re Ngai, 367 F.3d 1336), so slow your roll on “all means all.”
                Printed matter is the only exception, and we aren’t talking about printed matter here.

                Oh I wouldn’t make that argument as the plaintiff, I’d make it as the defendant, because “determining B” is obviously going to be in the prior art, and therefore its going to be anticipated and invalid.
                SMH. What if A is not disclosed in the prior art? You think a defendant is going to ever argue that all of the other limitations are not required. Again, stay at the USPTO.

                There’s been one case accurately cited to conditional method limitations here, Schulhauser, and it supports me.
                Then why did the USPTO not stand its ground in In re Google? If the case law was so good, why did the Solicitor’s office admit (with its tail between its leg) that the PTAB erred and take the case back down?

                If your position is so widely shared and so clearly correct it seems odd that nobody has brought a case to right such a clear wrong, which ought to give you pause about whether other attorneys believe you’re right.
                See my comment immediately above. Why did the USPTO turn tail and run after Google appealed?

                Show me a case that considers the Schulhauser/MPEP position and overrules it and I’ll admit you’re right.
                You need the right client, the right facts, and the right (or wrong depending upon your POV) decision to take a case to the Federal Circuit. I would be more than happy to take Schulhauser to the Federal Circuit. I have already taken one of the Board’s “precedential” opinions to the PTAB and the Solicitor’s representative got reamed a new one during oral argument. Regardless, Google took that case to the Federal Circuit and they won. Your rant seems to have overlooked that fact.

                1. The MPEP does not have the force of law. Again, “prolix” is just a lazy way to avoid making a 112, 2nd rejection.

                  You go ahead and make that argument at the board and see how far it gets you.

                  Then explain Markman claims to me. I also suggest you look at MPEP 2173.05(h) and the discussion of Ex parte Cordova.. Not cited in the MPEP is also Ex parte Gross (Appeal No. 2011-004811). Your compadres do not take the same position that you do.

                  Are you asking me why cases from 1989 and 2011 don’t respect the 2014 Nautilus reasonably certain standard?

                  Sorry, most examiners have a rudimentary knowledge of the law.

                  I agree, but so do most patent practitioners.

                  The vast majority don’t read case law that they are citing. They read the one or two or three sentence synopsis presented in the MPEP that are frequently very misleading and usually missing a whole bunch of context.

                  And most don’t even read that. But as Socrates opined, it’s better to know you don’t know than to be certain of an incorrectness. You won’t see an examiner so confidently misconstruing Schulhauser like you are.

                  You may be good (or not, I don’t know), but I have far more experience knowing the wide range of quality present at the USPTO than you

                  What a self-defeating argument. I have far more experience knowing whether attorneys are good or not for the same reason you know more examiners. Regardless, I don’t assert that examiners are better debaters – clearly they are not – simply that they are better at doing a mapping. The question isn’t if you can convince them to cite new art, the question is whether you could map better than them. They’ve been doing it their entire careers, and your legal knowledge is a minimal advantage when it comes to mapping.

                  Printed matter is the only exception, and we aren’t talking about printed matter here.

                  Hate to break it to you, but limitations applicable to only certain embodiments are also exceptions when you are not “talking about [those embodiments] here.”

                  What if A is not disclosed in the prior art? You think a defendant is going to ever argue that all of the other limitations are not required. Again, stay at the USPTO.

                  You don’t have to invalidate every embodiment, just one embodiment. If you say the claim covers both AC and DC motors, and I can show an AC motor, I don’t really care whether DC motors are disclosed in the prior art. Conceding a broader scope to argue invalidity instead of infringement happens every day.

                  Then why did the USPTO not stand its ground in In re Google? If the case law was so good, why did the Solicitor’s office admit (with its tail between its leg) that the PTAB erred and take the case back down?

                  ? Because this is not an example of a conditional limitation. Your post was on the (absurd) notion of an “optional” limitation and a bunch of wrong conclusions about Schulhauser and conditional limitations. I’m not here to argue that the language *in this case* is properly described as a conditional limitation. I’ve said so on multiple posts.

                  Regardless, Google took that case to the Federal Circuit and they won. Your rant seems to have overlooked that fact.

                  Yeesh. 1) Google didn’t make any arguments, as the office reversed itself before Google filed a brief, so consequently 2) the order does not say anything and 3) is non-precedential. So there is no statement about no argument in a nonprecential document that you are now citing as evidence that you’re correct?

                  Why did the USPTO turn tail and run after Google appealed?

                  Notably, while the Director reversed the “conditional”ity of L1 and L2, they did not reverse the determination that L3 was a conditional limitation, so even the wild accusation that this was to avoid a review of Schulhauser would make no sense.

                  Stop trying to take a case-specific claim construction question (Are these conditional limitations?) and turn it into not only an attack but a victory on Schulhauser’s logic (Conditional limitations are not limiting on method claims). For all you know Google completely agrees with Schulhauser.

                2. You go ahead and make that argument at the board and see how far it gets you.
                  LOL. Objections are not appealable. I thought you were supposedly good at this stuff.

                  Are you asking me why cases from 1989 and 2011 don’t respect the 2014 Nautilus reasonably certain standard?
                  LOL. You do realize that Nautilus is not employed by the USPTO during normal examination? See www[dot]uspto[dot]gov/sites/default/files/documents/IndefinitenessMemo[dot]pdf. Regardless, nothing about a conditional limitations renders a claim indefinite under either standard.

                  I agree, but so do most patent practitioners.
                  Patent agents – yes, I agree. Patent attorneys – no.

                  You won’t see an examiner so confidently misconstruing Schulhauser like you are.
                  Schulhauser is bad law. I am confident enough in my ability as a lawyer to see the flaws in the decision – particularly when the key aspect of Schulhauser relies upon a couple of non-precedential Federal Circuit decisions. Leaving the fact that most Examiners (properly) ignore Schulhauser aside, most Examiners have no way of knowing whether a USPTO “precedential” decision was proper rendered or not.

                  What a self-defeating argument.
                  Obvious, you don’t know what “self-defeating” means.

                  simply that they are better at doing a mapping
                  I disagree. A mapping made by a defendant’s attorney is going to be FAR BETTER than an average examiner’s mapping. A defendant’s attorney isn’t going to wing it like I’ve seen hundreds of times (and that is not hyperbole) at the USPTO. The defendant’s attorney is going to face a Markman hearing in which they are going to tell the judge why their claim construction is right and the other side’s claim construction is wrong and their defense is going to be based upon that claim construction. The stakes are FAR HIGHER. Far more work is going to be put into it. What an Examiner might put 2 minutes into something, a defendant might have an attorney spend an entire day working on it.

                  Hate to break it to you, but limitations applicable to only certain embodiments are also exceptions when you are not “talking about [those embodiments] here.”
                  Have a case cite for that?

                  You don’t have to invalidate every embodiment, just one embodiment. If you say the claim covers both AC and DC motors, and I can show an AC motor, I don’t really care whether DC motors are disclosed in the prior art.
                  You aren’t addressing my point. Granted, that is a fairly common thing at the USPTO. I cannot count how many times I have written “non-responsive” next to an Examiner’s argument in a “Response to Argument” section of an Office Action.

                  Your post was on the (absurd) notion of an “optional” limitation and a bunch of wrong conclusions about Schulhauser and conditional limitations.
                  Oh yes, the absurd notion about optional limitations that are discussed in the MPEP and Federal Circuit case law.

                  Yeesh. 1) Google didn’t make any arguments, as the office reversed itself before Google filed a brief, so consequently 2) the order does not say anything and 3) is non-precedential.
                  LOL. Google won because the USPTO didn’t want to lose. The decision was all about Schulhauser. Why didn’t the Solicitor’s Office back the PTAB? You seem to have the inside scoop because the file isn’t public record.

                  Notably, while the Director reversed the “conditional”ity of L1 and L2, they did not reverse the determination that L3 was a conditional limitation, so even the wild accusation that this was to avoid a review of Schulhauser would make no sense.
                  That’s a lot of speculation on your part.

                  For all you know Google completely agrees with Schulhauser.
                  Google, as a whole, probably agrees with any case law that makes it easier to invalidate patents, but that is a different issue.

                  Regardless, there is no good logic behind Schulhauser. It is trivial exercise to amend around it. Instead of “performing A based upon a determination of B” you write “determining B, and performing A based upon the determining.” The default assumption should be that when an applicant includes claim language in a claim that it is intended to be limiting – not some “optional” language that can be ignored. Looking at it differently, what harm is done if these conditional limitations are given patentable weight? What is the USPTO attempting to prevent using Schulhauser? Aside from having the ability to ignore limitations that were not intended to be ignored, I see no reason for Schulhauser.

                3. Schulhauser is bad law. I am confident enough in my ability as a lawyer to see the flaws in the decision – particularly when the key aspect of Schulhauser relies upon a couple of non-precedential Federal Circuit decisions.

                  Is your position that it is impossible to generate conditional language? Or is it that language when in the context of a claim cannot be given a conditional meaning? There must be thousands of contract cases interpreting the plain meaning of language to result in a conditional requirement, and there are surely hundreds of patent law cases that say claims are construed according to the plain meaning of their language. I mean, it’s possible you can win, but you are lying to yourself if you think you’re got the conventional versus pioneering position.

                  most Examiners have no way of knowing whether a USPTO “precedential” decision was proper rendered or not.

                  Nor do they need to. It’s not the examiner’s function to independently verify their administrative rules.

                  A defendant’s attorney isn’t going to wing it like I’ve seen hundreds of times (and that is not hyperbole) at the USPTO. The defendant’s attorney is going to face a Markman hearing in which they are going to tell the judge why their claim construction is right and the other side’s claim construction is wrong and their defense is going to be based upon that claim construction. The stakes are FAR HIGHER. Far more work is going to be put into it. What an Examiner might put 2 minutes into something, a defendant might have an attorney spend an entire day working on it.

                  Oh well obviously I agree if you give the examiner 2 minutes the attorney will do better. I thought we were talking about who would do better at the same job. You give the examiner all the time and resources and importance that attaches to a multimillion dollar action and they will do better than the attorney. Are you seriously comparing the work product of an examiner having 13 hours to read a spec and map 20 claims to the work product of having nearly unlimited resources to map a single claim?

                  Have a case cite for that?

                  You know I do. You just acknowledged it by saying it’s bad law. I don’t know what you expect me to do beyond point to controlling authority for me. I get you don’t like it, but you can’t pretend it doesn’t exist. Btw, that’s one more cite than you have for your argument.

                  Google won because the USPTO didn’t want to lose. The decision was all about Schulhauser. Why didn’t the Solicitor’s Office back the PTAB? You seem to have the inside scoop because the file isn’t public record.

                  The Director’s filing is right up top in the post. Google did not say they were challenging Schulhauser. The Director stated that they were remanding because they overruled two of the three claim construction issues. An entirely reasonable reading of the situation is that there was a claim construction error. If one wanted to insulate from Schulhauser review, one would pull the third conditional claim construction as well, as it would take Schulhauser out of the case. Instead Schulhauser is still in the case. That seems like a poor way of avoiding review of Schulhauser, as Google can simply appeal again on the third limitation if they don’t get an allowance.

                  That’s a lot of speculation on your part.

                  I appreciate that facts might complicate your narrative that this was a victory for your personal belief, but both the motion to dismiss and the board decision are linked to in this post.

                  The default assumption should be that when an applicant includes claim language in a claim that it is intended to be limiting – not some “optional” language that can be ignored.

                  That IS the default position. You just ignore that construing a limitation as conditional doesn’t mean you ignore it, it just affects the scope in a different manner. Nobody is suggesting that the limitation is ignored or that it doesn’t affect claim scope.

                  Looking at it differently, what harm is done if these conditional limitations are given patentable weight?

                  The harm is that if I examine only a subset of the actual claim scope that the part that I don’t examine might include obvious embodiments. Do you think if you do a Markush limitation I should stop examining if I find the first option nonobvious? Or maybe should I keep going and see if another embodiment might be obvious?

                  What is the USPTO attempting to prevent using Schulhauser?

                  Bad patent quality.

                  Aside from having the ability to ignore limitations that were not intended to be ignored, I see no reason for Schulhauser.

                  You do not want me subjectively telling you what you intend, I assure you. Unsurprisingly, the name of the game is the claim and we examine the claim scope and not what we think you intend all the time.

                  Regardless, the opposite is more true – A clear patent scope benefits your client, so why don’t you just change the language if you don’t like it? Can you literally think of only one way of saying something?

                  But just regarding the casual slander here – I don’t understand attorneys who think like you. You understand I do a lot less work and get a lot more credit for allowing something, right? You think examiners are rejecting you for funsies? Or do you think its because we dislike you or something? I literally don’t care whether you get a patent or not. It matters to me not one bit. I’d be thrilled to be able to walk in monday morning, stamp two applications allowable, fill out some forms and be ready for my six day weekend by lunch. But it turns out I’m hired to apply rules and do an analysis to benefit both sides by making sure only claims that pass the rules get allowed, so I have to spend all week working. If you’re being rejected its because someone thinks you deserve it. Are they always right? Of course not. But the notion that the office or an examiner is maliciously out to “get you” by generating and applying inappropriate rejections is ridiculous when top to bottom we make more money for less work if we just allow everything and sit back on maintenance fees. I have not met a single person who I disliked so strongly I thought I would do extra work just to see them not get a claim they were entitled to, and I have never heard of anyone who has. I guarantee to that not a single examiner has ever said to themselves “I could allow this but instead I’ll use my little conditional limitation trick to write out a multi-page rejection that he’s going to make me argue over just to delay his patent by three months, mwahahaha.”

                4. Is your position that it is impossible to generate conditional language?
                  What made you think that?

                  Or is it that language when in the context of a claim cannot be given a conditional meaning?
                  Conditional is not optional. A condition is a limitation.

                  It’s not the examiner’s function to independently verify their administrative rules.
                  It is not “administrative rules.” This is substantive law-making, which is outside the bounds of the USPTO. Regardless, it is an attorneys job to determine whether the USPTO has correctly described the law. We are trained to do so.

                  You give the examiner all the time and resources and importance that attaches to a multimillion dollar action and they will do better than the attorney.
                  No. They won’t because they haven’t been taught to do a good job. They’ve been taught to push out rejections as quickly as possible in order to make their counts. Also, the stakes are far higher. Nothing bad happens to an examiner that subsequently agrees (after attorney argument) that the examiner made a bad rejection or the examiner gets reversed by the Board. A litigation attorney that loses an argument (because of a weak analysis) in district court usually doesn’t get a second bite at the apple.

                  You know I do.
                  Then where is it? Hide the ball – one of the favorite tools in an examiner’s bag of tricks.

                  The Director’s filing is right up top in the post. Google did not say they were challenging Schulhauser.
                  The decision was based upon Schulhauser. What were they going to challenge?

                  If one wanted to insulate from Schulhauser review, one would pull the third conditional claim construction as well, as it would take Schulhauser out of the case.
                  Not necessarily. If Google wins as to L1/L2, there is no need to address L3. I’ve seen this happen before at the Board – they reverse on one argument and ignore the others.

                  You just ignore that construing a limitation as conditional doesn’t mean you ignore it, it just affects the scope in a different manner.
                  Of course you are ignoring the limitation. Not giving the limitation patentable weight is ignoring – it is writing it out of the claim.

                  The harm is that if I examine only a subset of the actual claim scope that the part that I don’t examine might include obvious embodiments.
                  LOL. You are basically saying that for an invention that recites L1, L2, L3, and L4 that the “scope” includes portions in which L3 and L4 are not giving patentable weight and you need to “examine” that “subset” of the “claim scope” (i.e., just L1 and L2). Why the f_ would an applicant include that language if the USPTO was going to ignore it? IT MAKES NO SENSE.

                  Bad patent quality.
                  LOL. It is only bad because the USPTO made its own decision to ignore certain limitations. This is a USPTO-generated problem. If the USPTO didn’t ignore the limitations in the first place, these patents would be bad.

                  Unsurprisingly, the name of the game is the claim and we examine the claim scope and not what we think you intend all the time.
                  Yeah, we put language in and you cross it out for no good reason.

                  You understand I do a lot less work and get a lot more credit for allowing something, right?
                  You understand I get paid a lot more when examiners make bad rejections? My clients are sophisticated and know bad rejections when they see them. USPTO incompetence has put a LOT of money in my pocket. However, I still get indignant because I would rather have a quick allowance than make $20K extra (because of prolonged prosecution) because some examiner doesn’t understand the law. There was an article written several years ago (unfortunately I cannot find it) that talked about how minor functionaries (of which an examiner is an example) have a tendency to abuse the power they are given. When I read that article, the USPTO immediately came to mind. I’ve run across examiners who are literally drunk on their power to make life difficult for an examiner. Forget examiners, I have the Board deliberate misrepresent the law/facts in order to affirm a rejection. This isn’t just a disagreement over the law (as in our discussion regarding Schulhauser), I’m talking about a deliberate fabrication of law/facts.

                  You think examiners are rejecting you for funsies? Or do you think its because we dislike you or something?
                  Don’t make the exceedingly common error of thinking that you are representative of all examiners. You are not. The fact you even entertain the thought that you might be representative is evidence of your obliviousness to the whole situation.

                  But the notion that the office or an examiner is maliciously out to “get you” by generating and applying inappropriate rejections is ridiculous when top to bottom we make more money for less work if we just allow everything and sit back on maintenance fees.
                  Never worked in TC3600, have you?

                  Ever go to patentbots[dot]com and look up your statistics? What is your 3 year grant rate? What is the 3 year grant rate of your art unit? You don’t have to give precise numbers (to avoid outing yourself). Where do you stand?

              3. 4.2.1.1.1.1.3

                Consider this proposed claim language:

                [L1] “stirring the ground pepper into the broth.”
                [L2] “stirring, upon the pepper being ground, the pepper into the broth.”

                These are essentially identical limitations yet you would argue that L2 is “conditional” and need not be performed (i.e., optional). There is a difference between being conditional and being optional.

                Look at thesaurus dot com. The word “condition” is a synonym for “limitation.”

                Consider the language:
                [L3] stirring the pepper into the broth after grinding the pepper.
                In this language, the stirring is conditional upon the grinding. Would you ignore that language?

                Let’s go back to L1, the term “the ground pepper” is also conditional in that the condition is that the pepper being stirred into the broth must have already been ground (i.e., it is a past action). Are you saying that this can be ignored now.

                How about this language?
                [L4] “heat treating the carbonized alloy to greater that 400 Celsius for at least 30 minutes.”
                In this instance, the condition is that the alloy has been carbonized. Are you going to ignore that limitation as well?

                My point about referring to the thesaurus is that a condition is a limitation.

                1. [L1] “stirring the ground pepper into the broth.”
                  [L2] “stirring, upon the pepper being ground, the pepper into the broth.”

                  These are essentially identical limitations yet you would argue that L2 is “conditional” and need not be performed (i.e., optional). There is a difference between being conditional and being optional.

                  They are not identical limitations, though I would not necessarily call L2 conditional. You’re using the term “*the* ground pepper” in both limitations, which leads to believe that you had a prior limitation that required grinding of pepper. In that case there is no conditionality in either L1 or L2 and both would require stirring be performed.

                  Assuming, for purposes of argument, that the rest of the method does not explicitly state “grinding pepper” as a limitation, L1 becomes a standard limitation with an antecedent basis problem, and L2 becomes a conditional limitation with an antecedent basis problem. The plain meaning of L2 is that it limits the claim by requiring an act occur (“stirring [] pepper into the broth”), and requires the occurrence of the act at a certain time (“upon the pepper being ground”). If the claim does not have a limitation requiring the pepper to be ground, i.e. it contemplates an embodiment without the condition precedent, then the limitation requiring stirring is never triggered. This is because the method could be performed without grinding pepper (by doing all of the other limitations) and that embodiment does not require stirring, since the stirring would occur “upon the pepper being ground.” Thus the claim has two general “branches” of embodiments: Those that do not grind pepper and do not require stirring, and those that do grind pepper and do require stirring. A reasonable reading of the L2 limitation is that it seeks only to strike the embodiment where pepper is ground but stirring is not performed. That is in keeping with the plain meaning of the words, and moreover it is the broadest reasonable interpretation, as it only cleaves one particular embodiment from the claimed scope. This is an entirely appropriate scope for an Applicant to want to have: All of A (every non-ground pepper embodiment compliant with the other limitations) and some of B (ground pepper embodiments that also require stirring).

                  But apparently what you want me to do is tell YOU what scope YOU want by applying a not-BRI. Even though the claim does not include a grinding pepper step, you want me to change the meaning of “upon the pepper being ground” to include the act of grinding pepper. That tells you “Sorry, but you cannot claim the all-of-A, some-of-B setup, you HAVE to claim JUST some-of-B.” The problem with me doing that is that is not the plain meaning of those words. And even if it was a “reasonable” interpretation of those words (and it is not) it certainly isn’t the *broadest* reasonable interpretation, because just some of B (requiring grinding + stirring in all cases) is unquestionably a smaller scope than that scope + all non-grinding scopes.

                  Conversely, you seem to have made arguments above that suggest that I should go into the specification and make some sort of subjective judgment that “boy it sure seems like the stirring is important to this invention” and, based on my own subjective view of what limitations *I* think are important to this invention, construe the phrase “upon the pepper being ground” to be BOTH a timing limitation and a command to do the underlying act. You want me to put a limitation into the claims that does not exist there. I’m not allowed to do that either, because I can’t read spec limitations into the claims when the words do not appear.

                  So lets not get confused here – assuming the specification touts the importance of stirring the ground pepper I surely KNOW what you INTEND to claim. But knowing what you intend does not change the rules of construction. I know the plain meaning of “upon,” as does everyone else, and it is not a command to do the thing, it is a timing command similar to “on the occurrence of.” You point me to a dictionary that defines “upon” to mean a command to do the thing, and I’ll back down on that. Until you do that the conditional limitation is reasonable and therefore ought to be selected as the controlling construction because it is the BRI. And, I should point out, that unless every major dictionary definition says I’m wrong about “upon” you (1) haven’t defeated the reasonableness of my construction, as at least one authoritative source finds it reasonable and (2) have just created an indefinite, ambiguous scope for yourself because conflicting authoritative sources disagree about the scope of the claim.

                  Consider the language:
                  [L3] stirring the pepper into the broth after grinding the pepper.
                  In this language, the stirring is conditional upon the grinding. Would you ignore that language?

                  I would read L3 as a normal, non conditional limitation, but I don’t like it and there is wiggle room here. For example, if an examiner came to me in an appeal conference and said “I construed the words ‘grinding the pepper’ as a condition precedent to ‘stirring the pepper into the broth'” my thought process would be: Is that a reasonable interpretation of those words? Because if it is reasonably conditional it certainly results in a broader scope that if it was not conditional.

                  Moreover, I know that we are examiners, and this is an examination. If Applicant intends to only claim embodiments where the pepper is both ground and stirred, they certainly could write language that would unquestionably do so – by making them two separate steps as they should be. If Applicant is willing to go to appeals on the issue I would view the issue as being important enough that the public should have clarity on it (after all, Applicant is willing to go to the mat on it). I’d be inclined to green light the appeal, but I wouldn’t like that either.

                  Its a regrettable situation, because Applicant doesn’t like losing out on an amendment because they put in near-ambiguous-scope language (the punishment does not fit the crime), and the examiner doesn’t like having to write an appeal or possible doing a second non-final. The ideal situation is for the examiner to anticipate that such an issue might pop up or for the applicant to fix it on their own. Long story short – I’d call it unconditional in the first instance, but I wouldn’t necessarily label someone who called it conditional as wrong.

                  Let’s go back to L1, the term “the ground pepper” is also conditional in that the condition is that the pepper being stirred into the broth must have already been ground (i.e., it is a past action).

                  But not necessarily a past action contemplated as being within the method. The antecedent basis problem has some hand in this, but even if L1 said “stirring ground pepper into the broth” the fact that ground pepper had to be created at some point in the past does not make it a condition precedent, because the plain meaning of Stirring X is a command to Stir X. Stirring X upon Y means something different. You’re trying to pretend that the words “upon Y” have no meaning within the claim. But generally all words are construed to have meaning.

                  The main thrust of your argument here appears to be that “the words “stirring” and “broth” and “pepper” are in all of L1, L2 and L3, so isn’t L1=L2=L3?”, and the answer to that is obviously no. Unsurprisingly, not all uses of the same verb, subject and object result in the same meaning.

                  How about this language?
                  [L4] “heat treating the carbonized alloy to greater that 400 Celsius for at least 30 minutes.”
                  In this instance, the condition is that the alloy has been carbonized. Are you going to ignore that limitation as well?

                  Again this depends on the context and the antecedent basis issue with “the carbonized alloy.” The only question is whether the plain meaning of the words make a conditional construction of the term reasonable or not. Does the claim refer to carbonizing an alloy? Does the claim refer to an alloy? Does the claim refer to a carbonized alloy before this limitation? This looks like a normal non-conditional limitation because nothing is a condition precedent, but I can certainly imagine contexts where it would be a conditional limitation, the most obvious being a previous limitation that reads “deciding whether to carbonize the alloy or not.” In that situation the claim branches into a first set of embodiments that include “all of the other steps + deciding not to carbonize” and a second set that include “all of the other steps + deciding the carbonize + heat treating >400c for 30m.”

                  The important thing for your deficiencies in thinking here is that if I conclude that it is conditional the sole argument you can prevail upon (at the office at least) is that the plain meaning of the terms does not warrant a construction that the term is conditional. And, I should add, the mechanism for proving this is by citing dictionary definitions such that it is clear that the term means what you say it means. You cannot win on a “Schulhauser is not law” or “You must teach every claim term” argument (though I suppose you could try that in the CAFC). You cannot win on a “this is what the invention is” argument (even at the CAFC). You can’t seek limitations from the spec if they are not definitional. You can’t ask to depart from plain meaning if there is no definition in the spec. The determination of whether language is conditional is based upon the plain meaning of the claim words as interpreted by one of ordinary skill. The result of conditional language is determined by a precedential opinion. The rest of what you are saying is, frankly, talking out of your behind on what you think the rule should be.

                2. They are not identical limitations, though I would not necessarily call L2 conditional.
                  They aren’t “identical” in that they use different words, but the scope is identical. A good claim drafter can cover identical limitations using different combinations of words.

                  You’re using the term “*the* ground pepper” in both limitations, which leads to believe that you had a prior limitation that required grinding of pepper
                  Not necessarily. The pepper being ground is inherent when the term “ground pepper.” I don’t need to recite that limitation. Regardless, the pepper being ground is a condition to be met before the “stirring” operation. It is not “optional” – it is conditional. They are not the same.

                  Assuming, for purposes of argument, that the rest of the method does not explicitly state “grinding pepper” as a limitation, L1 becomes a standard limitation with an antecedent basis problem, and L2 becomes a conditional limitation with an antecedent basis problem.
                  This is why examiners make terrible claim drafters. Preceding L1 is L0, which is “obtaining ground pepper,” which is the first limitation of the claim. The claim doesn’t explicitly recite grinding the pepper. However, L0 is conditional upon the pepper being ground.

                  The plain meaning of L2 is that it limits the claim by requiring an act occur (“stirring [] pepper into the broth”), and requires the occurrence of the act at a certain time (“upon the pepper being ground”)
                  Technically, it is not “at a certain time” but “after a specific occurrence.”

                  If the claim does not have a limitation requiring the pepper to be ground, i.e. it contemplates an embodiment without the condition precedent, then the limitation requiring stirring is never triggered.
                  You really haven’t thought this through, have you?

                  This is because the method could be performed without grinding pepper (by doing all of the other limitations) and that embodiment does not require stirring, since the stirring would occur “upon the pepper being ground.”
                  This is the silliness of your claim construction. The “stirring, upon the pepper being ground, the pepper into the broth” is part of the intended claimed invention yet you are ignoring it for no good reason.

                  A reasonable reading of the L2 limitation is that it seeks only to strike the embodiment where pepper is ground but stirring is not performed.
                  It isn’t reasonable because you are deliberately reading those limitations out of the claim. This is from In re Sabatino 420 F2d. 911 (CCPA 1973) and cited by Exxon v. Lubrizol, 64 F.3d 1553 (Fed. Cir. 1995):
                  To accept appellants’ interpretation would amount to reading the phrase “wherein the diameter of the said shanks” out of the claim. Claim limitations defining the subject matter of the invention are never disregarded. See Smith v. Stone, 420 F.2d 1065, 57 CCPA 884 (1970).
                  Reading the limitations out of the claim is precisely what you are proposing to do. Unlike Schulhauser, which doesn’t cite to Federal Circuit precedential law, this case law is still precedent. Moreover, where the USPTO precedent conflicts with Federal Circuit precedent, the USPTO loses. You interpretation is unreasonable because it reads limitations out of the claim.

                  This is an entirely appropriate scope for an Applicant to want to have:
                  LOL. I love how the USPTO (and its representatives) twist themselves up in knots to justify untenable positions. If the scope of “do nothing” was scope an Applicant wanted to have, the limitation would have been omitted in its entirety. You (i.e., the USPTO) omit it because it makes it easier to reject.

                  YOU want by applying a not-BRI
                  The BRI of claim language at the USPTO is whatever it takes to reject the claim using the prior art at hand. Examiner has been so indoctrinated into this that they have no concept of the difference between reasonable and unreasonable. Interpreting a claim language to meaning nothing (i.e., it isn’t limiting) is not reasonable. See the case law I cited above.

                  Conversely, you seem to have made arguments above that suggest that I should go into the specification
                  Classic examiner – address arguments I never made.

                  I surely KNOW what you INTEND to claim
                  No. Because you think it is reasonable to interpret language to have no meaning. Trust me, language was put into the claims to be limiting.

                  If Applicant intends to only claim embodiments where the pepper is both ground and stirred, they certainly could write language that would unquestionably do so
                  They did. You just chose to ignore those limitations.

                  But not necessarily a past action contemplated as being within the method.
                  It is part of the invention as a whole – that the pepper is ground. If you showed prior art with unground pepper, then it wouldn’t be anticipatory.

                  The only question is whether the plain meaning of the words make a conditional construction of the term reasonable or not
                  A condition is a limitation. Actually, a condition is a subset in the genus of limitations.

                  the sole argument you can prevail upon (at the office at least) is that the plain meaning of the terms does not warrant a construction that the term is conditional
                  No. The argument is to cite precedential Federal Circuit case law that says that it is improper to read limitations out of the claim when those claim limitations define the subject matter of the invention. Whoever at the PTAB responsible for the creation of the Schulhauser “precedent” improperly relied upon dicta in a nonprecedential Federal Circuit decision to the exclusion of precedential Federal Circuit case law to the contrary. Probably, someone at the Solicitor’s Office eventually figured this out and that’s why they decided to request for Remand of In re Google.

  6. 3

    Dennis – the Schulhauser link is broken.

    I’ve changed my approach to these kinds of claims. I stay away from using “whether” or “if” in claims in favor of reciting actual performance. I tend to use the following format:

    determining [something];
    in response to determining [something], [performing an action]

    YMMV

    1. 3.2

      YMMV indeed — “single actor” concerns definitely impact that approach

      1. 3.2.1

        But certainly not in this situation, Anon.

        1. 3.2.1.1

          Not so. Retain as Prof Ccrouch pointed out – this is still under non-publication.

          1. 3.2.1.1.1

            Auto correct – not so certain…

            1. 3.2.1.1.1.1

              You’ve admitted that you get paid extra if somebody “engages” with you. Tell us more.

              1. 3.2.1.1.1.1.1

                Thank$ – misrepresenting our past discussions on how I enterprise off of how YOU choose to 0bsess over me IS one of the payout categories.

                But you already knew that, eh?

    2. 3.3

      Isn’t that what they do? “in response to a determination that a first prediction pixel from a first block immediately adjacent to a first edge of the encoded current block is available for predicting a current pixel of the encoded current block:”…

      (I’m not sure I see why you need the “determining [something]”, when you already say “in response to determining [something],…” Seems redundant.)

      1. 3.3.1

        I suppose the examiner can say that since you don’t have a determining step , then the ‘In response to …’ step may never occur, and thus not give it patentable weight!

        1. 3.3.1.1

          That was the position that the Office explicitly recanted.

          1. 3.3.1.1.1

            Nope. Maybe read the filings?

            1. 3.3.1.1.1.1

              My comment is accurate.

              Thanks anyway.

        2. 3.3.1.2

          Odd – had error saying post was “duplicate” but ‘neither’ shows up.

    3. 3.4

      Given the app was pending, why not just add the “determining” step and be done with it? why go through an appeal and then a fed cir appeal? seems they were trying to get precedent set, but why?

      If divided infringement is a concern, the correct way would be to claim: “receiving a signal indicative of [condition]; in response to receiving said signal, [action].” (which is actually a better description of what the system would do anyway).

      If the examiner really wanted to reject the claims as written (with a “in response to determination” claim language, without a “determining” step), it seems like a 112 rejection for “unclaimed essential matter” is more appropriate. MPEP 2172.01– seems like the determining step is arguably essential matter and, if not claimed, the claimed method itself is not useful . Its a better rejection than the conditional/optional language, but still seems silly here.

  7. 2

    I agree that the examiner should not need to account for optional limitations, but this one does not look so optional to me. Glad to see the PTO admit its mistake and try to correct it before any more resources are wasted.

    1. 2.1

      Because of the language of the claim? Or what?

    2. 2.2

      Not optional in the language of the claims or not optional because of something else?

    3. 2.3

      There are no such things as optional limitations.

      1. 2.3.1

        Fair enough. Strictly speaking, you are correct that the “optional” language is not properly a “limitation.”

        I agree with your contention in 4.2 above that when you have a claim recite something like “… comprising an active ingredient according to formula I, a gelling agent, a lubricant, and optionally a vitamin,” the “and optionally a vitamin” should draw an objection for prolixity. For as long as this phrase is in there, the convenient way to describe it is as an “optional limitation.”

        The examiner who makes the objection should—in the spirit of compact prosecution—examine the claim for novelty at the same time. Any rejections for novelty/obviousness should not need to account for the “vitamin,” because it is listed as “optional.”

        1. 2.3.1.1

          The examiner who makes the objection should—in the spirit of compact prosecution—examine the claim for novelty at the same time.

          Of course

          Any rejections for novelty/obviousness should not need to account for the “vitamin,” because it is listed as “optional.”

          But that is, of course, why it should be removed. Similar to the phrase “and/or” or anything appears in a parenthesis which I always push out of a claim when I see it. Their remaining in can only be used as an attempt to represent an allowed claim as being something different from the scope that was examined.

          This most comes up with nonfunctional descriptive material. Why would a properly-practicing office allow language to remain in the claim to chill later public action because the scope is only reasonably determined after a court hearing. If language isn’t operative it should be removed so that there is not unnecessary ambiguity of the claim scope. Canons of construction give weight to every word.

        2. 2.3.1.2

          “and optionally a vitamin” should draw an objection for prolixity.
          Cite the statute, rule, or case law regarding “prolixity.” BTW, the MPEP is a not a basis for an objection since it does not have the force of law.

          1. 2.3.1.2.1

            Asking for the “statute, rule, or case law” that undergirds an “objection” is category error. “Objections” to claims are not legal matters in the first place. There is neither statute nor case, for example, that says that a spelling error in a claim constitutes a legal defect, but the examiner corps is charged to review for such matters anyway by way of “objections” (not “rejections”) to claims. The MPEP is as much guidance as you are going to find on objections, but one does not really need to cite chapter and verse to support objections, which are meant to be flexible and informal mechanisms of review.

            1. 2.3.1.2.1.1

              You can reject based upon a statute. You can object based upon a rule. Absent either, you’ve got nothing but a request that can be completely ignored.

  8. 1

    Andy Dufresne — literally, a Classic name.

    1. 1.1

      I had to look it up, Shawshank Redemption – great movie. Original was much better than the renake imo.

      1. 1.1.1

        I hate renakes.

        1. 1.1.1.1

          Hmmm – somebody even attempting Nym theft….?

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