Patently-O Bits and Bytes by Juvan Bonni

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46 thoughts on “Patently-O Bits and Bytes by Juvan Bonni

  1. 6

    For whatever little my opinion is worth, I agree with Prof Narechania that states’ sovereign immunity does not shield their patents from the PTAB’s jurisdiction. It is surprising, however, that Prof Narechania does not mention probably the single most important reason that states’ immunity does not apply—PTAB proceedings are proceedings in rem, and sovereign immunity is not (cannot be) a defense to a proceeding in rem.

  2. 5

    Determining the “point of novelty” of a claim is indistinguishable from determining “what is different in the claim relative to what is described in the prior art”. This determination includes recognition of previously untaught combinations of prior art structures and compositions and physically transformative steps.

    Not only is this determination necessary in most instances to examine a claim, it is also necessary in most instances (and routine) for inventors themselves to make this determination and articulate the results of that determination when they are defending the validity of their claims or when they are competently drafting their claims in the first instance.

    This tiny screeching group of Internet tr-0-lls who object to the use of the phrase “point of novelty” are objecting to it primarily (or solely) because they recognize that the “novelty” in the “inventions” they favor consists of subject matter that would never be eligible for patenting on its own terms (e.g., abstractions, logic, and functionality). Any alternative explanation they provide is more accurately described as dust-kicking or outright fabrication. All of this behavior is well-documented here and elsewhere, and has been described before (years ago).

    Discuss.

    1. 5.1

      Discuss

      You could not be more wrong with your attempted spin.

      I “get” that may well be how you feel, but how you feel has zero to do with the actual legal principles, nor why the notion of “Point of Novelty” is being MISPLAYED (and being so done for purely philosophical/feelings that have nothing at all to do with protecting innovation).

      Brush aside your mindless ad hominem, and actually treat the legal points presented (instead of your number one meme of Accuse Others), and you just might recognize that groundswell reflected in the Tillis Congressional hearings.

      Or, as is your right, you can continue to delude yourself and place your feelings over reason, you can continue to Accuse Others, and you can continue to confuse and obfuscate.

      Makes no difference to reality what you do.

      Discuss, you say. That’s a joke – you don’t handle “discuss.” When counterpoints are presented to you, you do not “discuss.” You blight and run away.

      1. 5.1.1

        Would love to see a genuine “counterpoint” to what I wrote, Bildo, but there isn’t one. I’ll leave it to our gentle readers to figure out why that’s the case.

        1. 5.1.1.1

          You would love to see one eh?

          Trying opening your eyes – nearly EVERY THREAD has one.

          Maybe see the exchanges at the point that you simply disappear.

          1. 5.1.1.1.1

            nearly EVERY THREAD

            This is your brain on patent crack, kids. Yikes.

            1. 5.1.1.1.1.1

              and there it is… mindless ad hominem

              Yay 14 years plus of Malcolm blight.

    2. 5.2

      Discuss Protons, Neutrons, and Electrons in the hypothetical Big Box based on the notion of:

      consists of subject matter that would never be eligible for patenting on its own terms

      My, how this tactic fails on several fronts.

      First, the tactic does not account for the fact that patent eligibility does not rest on parsed claim elements “on their own terms.”

      Second, claims are patent eligible with claim elements each and every one when so parsed down to their “on their own” would not be eligible.

      Third, Malcolm (yet again) engages in his favorite meme of Accuse Others with his “Any alternative explanation they provide is more accurately described as dust-kicking or outright fabrication.” He is the one that has NOT actually addressed the counterpoints presented to his dreary, stale, and inept “reasoning.” It is HIS behavior that he Accuses Others of with the notion of “All of this behavior is well-documented here and elsewhere, and has been described before (years ago).” It’s as if he really believes that if he accuses someone else, no one will notice that he is doing what he accuses others of, that he is NOT ACTUALLY answering any of the counterpoints presented to him, and that he has nothing but his feelings, his empty mindless ad hominem, and his short script of stale rhetoric.

      Discuss indeed.

  3. 4

    The patent also provides an example where a car’s sensors may be able to detect oncoming vehicles, or crossing pedestrians and deliver feedback to the driver.

    Wowee zowee! S00per techno stuff!

    I’m old enough to remember when the Silly Con Valley Boys were proclaiming that bona fide “self driving cars” were going to be “everywhere” by … next year (LOL). Also old enough to remember the sober adults in the room explaining why that reality wasn’t coming for a long, long time.

    Wake me up when the self-driving car drives itself from my garage to the airport through the city during rush hour and parks itself in the passenger pick-up zone without k-lling someone, being towed away, or having a brick thrown its window. On second thought, don’t bother: I’ll be deceased, and so will all my currently living relatives.

    If only we had some alternative way to get to airports. Maybe some kind of vehicle that carries a lot of passengers and travels on a track (so it can maintain an average high speed)? Nah, too expensive. The United States can’t afford that kind of thing.

  4. 3

    Axiom : If the claim scope does not include every embodiments that is enabled by the spec and what is known by anyone skilled in the relevant art, then it is trivial to perform the function and not infringe. (The intellectual dishonest comes in not addressing this issue.)

    1. 3.1

      Notice too that I won’t get responses to this post. My post 3 says it all and captures it all. The anti-patent judicial activists will throw shxt on the wall and post all around this and yap it up. But will not and cannot address my post 3.

    2. 3.2

      posts are being blocked – all “bad words” were removed, and yet each of three attempts were not posted.

    3. 3.3

      If the claim scope does not include every embodiments that is enabled by the spec and what is known by anyone skilled in the relevant art, then it is trivial to perform the function and not infringe.

      I expect that this is true. That is why it is important that one describe those embodiments in sufficient detail to make it possible to write a claim that both (i) covers those many embodiments and (ii) complies with the written description requirement.

      1. 3.3.1

        Greg, there can be thousands of solutions. The fact is that it isn’t hard to describe them when one can depend on what anyone skilled in the art knows. I have quoted textbooks used at MIT on here that state expressly that using functional language is the way to describe known solutions to problems that are too numerous to enumerate.

        1. 3.3.1.1

          I have quoted textbooks used at MIT on here that state expressly that using functional language is the way to describe known solutions to problems that are too numerous to enumerate.

          Great. Super for those textbooks. What does this have to do with anything in discussion here? Patents are legal documents, not engineering documents. These textbooks tell us nothing worth the mentioning in the context of this discussion, notwithstanding their no-doubt excellent utility in the context of an engineering class.

          1. 3.3.1.1.1

    4. 3.4

      I have to wonder if Greg is so entranced in the picture claims of his Pharma world that he even understands the concepts of “Ladders of Abstraction” (otherwise known as, how the other 90% of innovation is actually protected with claims).

      1. 3.4.1

        Because the claims in the foldable tent arts are sooooo much broader! That’s why you see patentees in the foldable tent arts sueing car dealers, banks, hotel chains and insurance companies. Right. It’s just the pharma arts where valid claims tend to be limited to the specific structures that are disclosed and shown to be non-obvious (and shown to work).

        1. 3.4.1.1

          You absolutely miss the point here.

          Fn Hilarious.

  5. 2

    The proper “breadth” of a claim is the set of all the solutions that perform the function that are enabled by the specification and what is know by any one skilled in the art.

    If you don’t agree with this, tell me an embodiment of this that is not deserved by the inventor. Additionally, the whole notion of a “point of novelty” is inapplicable to patent law. What was the “point of novelty” in Deener? I think if I was forced to answer the question in front of the Scotus I would say a new combination of old elements. So a functional result (processing the grain) was being performed by all old elements and all old machines (which the Scotus said it did not matter the form of the machine as long as it performed its function.)

    1. 2.1

      The only tricky part of this is what if something isn’t enabled at the time of filing, but functionally is equivalent. Is this other solution patentable? The problem is that the functional claim may encompass solutions that are non-obvious and new. That is the only problem and there are ways to deal with it.

      1. 2.1.1

        You can tell that this “overly board” nonsense is being generated from the anti-patent judicial activists as they won’t even answer or respond to simple straightforward examples.

        Apparently from the pervious thread, the anti-patent judicial activists feel that if I do not disclose every known voltage comparison circuit in a patent application that a circuit that includes the voltage comparison circuit I forgot in the specification should not infringe. That is objectively absurd. It would mean that a patent application would have to be thousands of pages long. Now we can see the intellectual dishonesty as they won’t admit this and spout nonsense to confuse the ignorant.

        The fact is the only scope that is logically consistent and commensurate with what was invented is scope of enablement. The Scotus realized this in Deener, although they did not use those words. Functionally that is what the Scotus said in saying that the machine that performed the functional steps of the method did not matter.

        1. 2.1.1.1

          That is objectively absurd. It would mean that a patent application would have to be thousands of pages long. Now we can see the intellectual dishonesty as they won’t admit this and spout nonsense to confuse the ignorant.

          You are just being l@zy (per Greg) and “proper” innovation protection policy SHOULD be in place to punish all such lazy people and provide EASY paths that would otherwise infringe to escape that “fate” and NOT be held to be infringing.

          Of what harm could it possibly be to force EVERY application to be hundreds or even thousands of pages long?

          Heck, let’s double down on this and make “software” claims to avoid all “easy” (since that too is nothing but l@ziness) use of terms sounding in function, and require total “objective physical structure” claims.

          I can see it now: an easy to understand (and certainly understood claim by that legal fiction known as a Person Having Ordinary Skill In The Art can be converted to tens or more likely hundreds of pages of “objective physical structure” of a computer readable medium described in its “programmed” state) the state of having been changed and having been configured).

          Who would complain in examining patent documents that run a few thousand pages with claims that are incomprehensible to a normal human being?

          Certainly not those who are anti-patent (noting that being anti-software patent IS being anti-patent), right?

        2. 2.1.1.2

          Apparently from the pervious thread, the anti-patent judicial activists feel that if I do not disclose every known voltage comparison circuit in a patent application that a circuit that includes the voltage comparison circuit I forgot in the specification should not infringe.

          NightWriter, go back and re-read that thread. You received only two replies (11.3 from PiKa and 11.5 from me) to your question. Both of us agreed that it is not possible to design around your claims based on a failure to disclose a particular, well-known circuit. No one wrote to say that it should be possible to design around your claims based on this hypothetical omission.

          You are making up grievances for the sheer maudlin pleasure of being cross. No one is advancing the position that you are attacking.

          1. 2.1.1.2.1

            Actually Greg your argument has been that a well-written specification would include all the known embodiments of how to perform a function. I did notice you backed off a little from the specific example I used, but your position has not changed.

            1. 2.1.1.2.1.1

              Correct, my position has not change. My position remains that an inventor is allowed to claim as much useful, novel, and nonobvious subject matter as s/he describes and enables. That said, patents are an exception to the common law rule against monopolies, and like all exceptions they should be construed narrowly. Therefore, where a patentee is not careful to claim as much as s/he has described and enabled in a clear and unambiguous manner, then both law and policy dictate that we should construe the patent’s claims in favor of the public.

              1. 2.1.1.2.1.1.1

                Those who do not want to find their claims riddled with wholes through which a would-be competitor can move a design-around will do well to hire a good patent attorney who is willing to put in the work necessary to establish an enforceable set of claims. Those who fall back on the lazy short-cut of claiming the invention by what it does instead of what it is have no one to blame but themselves (or their agents) when the claim fails to afford the degree of protection to which the inventor might otherwise rightfully be entitled.

              2. 2.1.1.2.1.1.2

                patents are an exception to the common law rule against monopolies, and like all exceptions they should be construed narrowly

                Patents are NOT monopolies.

                The patent deal is a deal between equal parties. The intent of Quid Pro Quo is NOT to have the thumb on the scale “in favor of the public.”

                THESE are elements of an anti-patent bias. Even as you choose to remain blithely unware of your bias, that bias is real. THAT you choose not to do anything about that bias, want to turn around and accuse others of inte11ectual dish0nesty, or “cannot shame the shameless” IS what is dishonest and shameful.

              3. 2.1.1.2.1.1.3

                A patent by its very nature is affected with a public interest. It is an exception to the general rule against monopolies and to the right to access to a free and open market. [internal ellipses omitted]

                Blonder-Tongue Labs. v. Univ. of Ill. Fdn., 402 U.S. 313, 343 (1971) (quoting Precision Instrument Mfg. v. Automotive Maintenance Machinery Co., 324 U.S. 806, 816 (1945)).

                1. Whoops, looks like I failed to close my blockquote. Well, you know what I meant to write.

              4. 2.1.1.2.1.1.4

                Greg likes to act as if every pronouncement of case law must be sacrosanct, even if it is plainly obvious that a term has been misused.

                Sort of like he wants patents to be considered to be merely the subset of personal property of being a franchise — and refuses to actually engage on what being a franchise necessarily carries: the presence and duties of a Franchisor to a Franchisee.

                And he is only too happy to NOT engage and yet snipe from the sidelines.

    2. 2.2

      Additionally, the whole notion of a “point of novelty” is inapplicable to patent law.

      Those who use that word should actually first find anchor in the direct text as written from Congress from which that word may be properly tied to the Rule of Law.

      One problem (and certainly not the only one), is that perfectly eligible AND perfectly patentable (and yes, the distinction is made on purpose) claims are EASILY fashioned from items that have NO “Point of Novelty” as would come from ANY attempt to dissect a claim.

      “Point of Novelty” is a canard based at least on the fact that claims must be understood on an “as a whole” basis.

      Any time I see someone advancing an argument that features the phrase “Point of Novelty” I can be sure that THAT person is not properly applying patent law in at least claims are attempting to be dissected and NOT taken as a whole.

      1. 2.2.1

        Any time I see someone advancing an argument that features the phrase “Point of Novelty” I can be sure that THAT person is not properly applying patent law

        ROTFLMAO

        1. 2.2.1.1

          Your feelings are noted.

    3. 2.3

      What was the “point of novelty” in Deener? I think if I was forced to answer the question in front of the Scotus I would say a new combination of old elements.

      You make it sound as if this were a difficult question. Deener’s patent was never actually challenged on (what would today be termed) §101 grounds, so it is more than a little strange that folks keep bringing it up in the context of §101 arguments. Deener’s patent was, however, challenged on novelty grounds, and the Court sustained it because (94 U.S. 780, 790) “[t]he parts contained in [Cogswell and McKiernan’s] apparatus are those which are patented in combination in Cochrane’s reissue 6,595… The combinations patented in reissue 6,594 embrace other parts not contained in Cogswell and McKiernan’s patent… .” In other words, Deener’s claims recite an apparatus containing parts which are not disclosed in the cited prior art.

      1. 2.3.1

        (what would today be termed)

        There’s an important point there being hidden.

        §101 was explicitly created in the Act of 1952, and it and the NEW section of §103 were explicitly there because the Supreme Court had grown FAR too anti-patent (with even its own Justices self descriptions of “The only valid patent is one that has not yet appeared before us“).

        As for Deener being a case from 1876, such necessarily then cannot track directly to 35 USC §101. But just as Morse ALSO cannot so track, there is no shortage of the Supreme Court itself making that “track” and pinning its own Common Law scrivening to that section of statutory law.

  6. 1

    From the Siebrasse paper: [T]he overbreadth doctrine… properly arises as an independent ground of invalidity in the context of the “roads to Brighton” problem, in which the question is whether the first inventor to achieve a result known to be desirable may claim the result itself or may claim only their particular method of achieving it… .

    Well, evidently our neighbors to the north are having the same debate as around here. Naturally, it goes without saying that the correct answer is “only their particular method of achieving it.” Otherwise, patent law does not properly serve its end of promoting the progress of the art.

    1. 1.1

      Greg, where in the world is it NOT the case, that drafters will strive mightily to get to issue with claims as wide as possible? Who shall criticise that? It’s fully legit, isn’t it? So, the “overbreadth” problem is inherent, endemic, systemic, world-wide and will always be with us. The courts have always needed to address the problem robustly. Some of them already have.

      Consider the solution found by the EPO, for example. Very early in its history it fell upon the guiding principle that the scope of a claim should not be greater than “commensurate” with the inventor’s enabled and disclosed contribution to the art.

      There remained the imperative, how pragmatically, fairly and with legal economy to implement that highfalutin’ principle, given the paucity of grounds of invalidity available within the EPC. Specifically, the old UK (Act of 1949) ground of “not fairly based” did not make it into the EPC.

      But no matter. The EPO Boards of Appeal manage perfectly well with the tools they have been given, namely Art 84 clarity, Art 83 insufficiency and (primarily, but unlike in the UK) Art 56 lack of an inventive step.

      Where there is a will there is a way, Norman, even without re-writing the Statute (and even without resort to the grotesque approach adopted by the UK courts, to divide the insufficiency ground in two, into “classical” and “Biogen-type” species of insufficiency).

      Caveat: I haven’t yet read the Siebrasse Paper. Perhaps I should, before I comment on it here.

      Final thought: how would the EPO have decided Norman’s Amfac case, I wonder.

      1. 1.1.1

        Greg,… the “overbreadth” problem is inherent, endemic, systemic, world-wide and will always be with us. The courts have always needed to address the problem robustly.

        Agreed. You are quite right that every patent system encounters this problem, and they each have developed doctrines to deal with the problem. Indeed, the doctrines themselves tend to be fairly similar.

        To my mind the interesting point is not that both the U.S. and Canada have decided to solve a similar problem in a similar manner. Rather, the interesting point is that (according to Siebrasse) “the answer to this question is controversial.” It happens to be controversial in the U.S. as well, and that is the interesting point.

        The “overbreadth” doctrine is as necessary and fundamental to patent systems as the novelty requirement. Nevertheless, one is controversial and the other not. Why is that? That is the interesting bit. It is interesting to see that the Canadians are arguing with each other about the same point about which we Yanks are arguing. I do not get the sense that the the EP or CN or AU versions of this doctrine are especially controversial (although I welcome correction if that is not correct). So why are they controversial here in North America?

        1. 1.1.1.1

          Controversial? Can’t comment on any jurisdiction outside my own but here in Europe there is no “doctrine” of over-breadth. It is axiomatic and entirely without controversy, that the breadth of a claim should not exceed the inventor’s contribution to the art. I cannot recall any learned commentator complaining about the EPO’s use of its obviousness provision (Art 56 EPC) to cut back any over-breadth.

          See the landmark EPO case Agrevo T939/92. And here a Link to the relevant chapter of the EPO’s case law book:

          link to epo.org

    2. 1.2

      Those are meaningless words.

      >>>may claim the result itself or may claim only their particular method of achieving it… .

      Reducing the scope of enablement makes infringement trivial–by definition. Scope of enablement includes all the embodiments that are enabled by the spec and the knowledge of a anyone skilled in the art.

      Axiom : If the claim scope does not include every embodiments that is enabled by the spec and what is known by anyone skilled in the relevant art, then it is trivial to perform the function and not infringe. (The intellectual dishonest comes in not addressing this issue.)

      1. 1.2.1

        Scope of enablement includes all the embodiments that are enabled by the spec and the knowledge of a anyone skilled in the art.

        The word “axiomatic” has been used by several of late, so let’s use it one more time and apply it directly to the quote that I repeat from Night Writer.

        Is there anyone who would disagree with this statement on its face?

        Where would such disagreement arise from, and how large of a gap is that disagreement? Could we adjust this quote to account for any such disagreement and arrive back at a starting place (axiom) from which all can agree?

        Let’s consider two wrinkles then:

        1) Patents are not meant to include that which is known in the art. Patents are NOT engineering documents, for which a “complete solution” is required, nor desired. That is not, nor ever has been, the objective of patents. This is NOT a “lazy” attribute, and those who would so denigrate patents as seeking “laziness” really has no business providing legal advice (or advocacy) in the realm of innovation protection.

        2) The Courts have ardently empowered those mechanisms at their disposal most nearly all of the time against the patent holder. Whether one thinks this to be a good thing or not so much a good thing is not at issue with this point, so much so as the point is presented in its “axiomatic” sense.

        Here’s a rub: from these two wrinkles, the US Supreme Court has created more than one sense of “patent profanity” that creates real world and pragmatic consequences.

        At every opportunity, courts will look into a specification and use phrases and “teachings” (inadvertent or not) AGAINST the drafter. Say (incorrectly) that something is prior art, and even if that statement is factually incorrect, that statement DOES provide the stated item to be held to be prior art against the drafter. Say that reference X (someone else’s work) teaches Y, and even if that statement is factually incorrect, that statement IS held against the drafter.

        Turn now to another “fruit” of the Court in seeking mechanisms to defeat a patent holder: empowering (or super-empowering) the legal fiction known as a Person Having Ordinary Skill In The Art. Not only is this person not a real person, but this person is not constrained by the foibles and real world limitations of time, space, and limited memory. This legal person knows ALL prior art**, across the globe, and in every language, even Secret prior art that may yet mature into full prior art.

        **Asterisks added just to let those who may be curious that the term “prior art” does NOT mean the same thing for different legal effects such as novelty and non-obviousness, even though the legal fiction through whom these different legal tests are evaluated IS the same legal person, and least in the consistent US Sovereign.

        Here’s the takeaway of combining these two wrinkles: Super-empowering PHOSITA (typically in order to make the ability to deem a patent as obvious) necessarily carries with it a “hollowing out” of what is necessary to include in a specification.

        This is NOT “laziness” as some art-type-limited specific advocates love to (incorrectly) opine. This is the pragmatic, knowledgeable, and even responsible approach that flows from the very actions of the Courts.

        It is in fact inte11ectually DIShonest to pretend that these two wrinkles do not exist. At the very least, choosing to ignore this real world pragmatic effect is to court malpractice.

        Perhaps this is why Greg recently made a comment about being limited by malpractice concerns. Perhaps not, but since Greg only has dialogues with those who are not “harsh” to his desired world views, no one will know just why Greg expressed that concern of his regarding malpractice.

        But as nature abhors a vacuum, the vacuum left by Greg can be filled with pragmatic reasoning (even if that pragmatic reasoning does not come from Greg).

      2. 1.2.2

        Second attempt – not sure which word is the “George Carlin” filter trip:

        Scope of enablement includes all the embodiments that are enabled by the spec and the knowledge of a anyone skilled in the art.

        The word “axiomatic” has been used by several of late, so let’s use it one more time and apply it directly to the quote that I repeat from Night Writer.

        Is there anyone who would disagree with this statement on its face?

        Where would such disagreement arise from, and how large of a gap is that disagreement? Could we adjust this quote to account for any such disagreement and arrive back at a starting place (axiom) from which all can agree?

        Let’s consider two wrinkles then:

        1) Patents are not meant to include that which is known in the art. Patents are NOT engineering documents, for which a “complete solution” is required, nor desired. That is not, nor ever has been, the objective of patents. This is NOT a “l@zy” attribute, and those who would so denigrate patents as seeking “l@ziness” really has no business providing legal advice (or advocacy) in the realm of innovation protection.

        2) The Courts have ardently empowered those mechanisms at their disposal most nearly all of the time against the patent holder. Whether one thinks this to be a good thing or not so much a good thing is not at issue with this point, so much so as the point is presented in its “axiomatic” sense.

        Here’s a rub: from these two wrinkles, the US Supreme Court has created more than one sense of “patent prof@n1ty” that creates real world and pragmatic consequences.

        At every opportunity, courts will look into a specification and use phrases and “teachings” (inadvertent or not) AGAINST the drafter. Say (incorrectly) that something is prior art, and even if that statement is factually incorrect, that statement DOES provide the stated item to be held to be prior art against the drafter. Say that reference X (someone else’s work) teaches Y, and even if that statement is factually incorrect, that statement IS held against the drafter.

        Turn now to another “fruit” of the Court in seeking mechanisms to defeat a patent holder: empowering (or super-empowering) the legal fiction known as a Person Having Ordinary Skill In The Art. Not only is this person not a real person, but this person is not constrained by the fo1bles and real world limitations of time, space, and limited memory. This legal person knows ALL prior art**, across the globe, and in every language, even Secret prior art that may yet mature into full prior art.

        **Asterisks added just to let those who may be curious that the term “prior art” does NOT mean the same thing for different legal effects such as novelty and non-obviousness, even though the legal fiction through whom these different legal tests are evaluated IS the same legal person, and least in the consistent US Sovereign.

        Here’s the takeaway of combining these two wrinkles: Super-empowering PHOSITA (typically in order to make the ability to deem a patent as obvious) necessarily carries with it a “hollowing out” of what is necessary to include in a specification.

        This is NOT “l@ziness” as some art-type-limited specific advocates love to (incorrectly) opine. This is the pragmatic, knowledgeable, and even responsible approach that flows from the very actions of the Courts.

        It is in fact inte11ectually DIShonest to pretend that these two wrinkles do not exist. At the very least, choosing to ignore this real world pragmatic effect is to court malpractice.

        Perhaps this is why Greg recently made a comment about being limited by malpractice concerns. Perhaps not, but since Greg only has dialogues with those who are not “h@rsh” to his desired world views, no one will know just why Greg expressed that concern of his regarding malpractice.

        But as nature abh0rs a vacuum, the vacuum left by Greg can be filled with pragmatic reasoning (even if that pragmatic reasoning does not come from Greg).

    3. 1.3

      From the Siebrasse paper (emphasis added):

      But is the converse possible? If the invention claimed is new, useful and non-obvious across its full scope, and the specification sufficiently discloses how to make and use it, how can it be said that the patentee has claimed more than he has disclosed?

      Unless this is possible, then overbreadth is a redundant doctrine. This is a doctrinal puzzle.

      And if overbreadth is not redundant, what is the principled justification for striking down, without any statutory justification, a claim to an invention which is in fact new, useful, non-obvious and sufficiently disclosed? This is the corresponding policy puzzle.

      Mind you, the article is talking about a Canadian law topic. The emphasis shifts (perhaps just a little, but no less critically) the moment you start talking about US statutory law that is — by Constitutional design — expressly allocated to only one of the three branches of the government (and thus, there is NO place for judicial policy, aka, legislating from the bench, aka Common Law law writing), unless under well known and explicit conditions in which the Legislative branch appropriately shares its power.

      1. 1.3.1

        further:

        Canadian law runs the risk that overbreadth will turn into a
        new version of the promise doctrine – under which an invention’s actual
        utility was required to match the utility promised by the specification

        Hmm, sounds a bit like my position as to possession of utility claimed that PLAGUES Pharma patents…

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