Thursday, August 27, 2009
Bilski Examiner Guidelines
http://www.patentlyo.com/patent/2009/08/interim-guidelines-on-statutory-subject-matter.html#comments
Monday, August 24, 2009
Don't just assert cited references don't show all claim elements
Ex Parte Dandekar:
Appeal board says that Examiner had "specific and detailed findings" while the Applicant had only "arguments not supported by further evidence...." Examiner won.
Specifically, with respect to claims
1-6, at pages 3-4 of the Appeal Brief, Appellants argue:
Lee does not teach or suggest a computer implemented
system for enabling configuration of an information handling
system which includes a configurator, a service activation
module for enabling a user to activate a service for use on an
information handling system, and a database where database
receives information from and supplies information to the
configurator and the service activation module, all as required
by claim 1. Accordingly, claim 1 is allowable over Lee. Claims
2 - 6 depend from claim 1 and are allowable for at least this
reason.
The Appeal Brief presents no other arguments with respect to claim 1.
Appeal board says that Examiner had "specific and detailed findings" while the Applicant had only "arguments not supported by further evidence...." Examiner won.
Omnibus rejection of multiple claims
From Patently Defined, here
"We have all seen rejections in which an Examiner has erroneously characterized several independent claims, grouped them together, and generically rejected the group. In situations like this in which an Examiner has grouped claims together to make a generic, omnibus rejection, §707.07(d) of the MPEP may be of interest. That section warns:"
707.07(d) Language to be Used in Rejecting Claims
*****
A plurality of claims should never be grouped together in a common rejection, unless that rejection is equally applicable to all claims in the group.
"We have all seen rejections in which an Examiner has erroneously characterized several independent claims, grouped them together, and generically rejected the group. In situations like this in which an Examiner has grouped claims together to make a generic, omnibus rejection, §707.07(d) of the MPEP may be of interest. That section warns:"
707.07(d) Language to be Used in Rejecting Claims
*****
A plurality of claims should never be grouped together in a common rejection, unless that rejection is equally applicable to all claims in the group.
Enablement rejection response examples
Examples of Enablement rejection responses thanks to Patently Defined.
Parker v. Flook
[7]
The Court did not agree with Flook's assertion that the existence of a limitation to a specific field of use made the formula patent-eligible. The majority opinion said of this argument:
A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques.
The court moderated that assertion by agreeing that not all patent applications involving formulas are patent-ineligible by saying, "Yet it is equally clear that a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm." Patents involving formulas, laws of nature, or abstract principles are eligible for patent protection if the implementation of the principle is novel and unobvious—unlike this case, in which it was conceded that the implementation was conventional.[8] Accordingly, in Flook's case, there was no "other inventive concept in its application," and thus no eligibility for a patent.
Summary Totally from Wikipedia, here.
The Court did not agree with Flook's assertion that the existence of a limitation to a specific field of use made the formula patent-eligible. The majority opinion said of this argument:
A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques.
The court moderated that assertion by agreeing that not all patent applications involving formulas are patent-ineligible by saying, "Yet it is equally clear that a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm." Patents involving formulas, laws of nature, or abstract principles are eligible for patent protection if the implementation of the principle is novel and unobvious—unlike this case, in which it was conceded that the implementation was conventional.[8] Accordingly, in Flook's case, there was no "other inventive concept in its application," and thus no eligibility for a patent.
Summary Totally from Wikipedia, here.
List of 101 Case Links
101 cases:
1854 O'Reilly v. Morse 15 How. 62. Electrical Signal itself (morse code) not patentable but repeaters to allow morse code to be transmitted long distances is patentable. Wikipedia.
Gottschalk v. Benson 409 U.S. 63 (1972). process claim directed to a numerical algorithjm , as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." BCD (binary coded decimal) to digital converter unpatentable as algorithm. Wikipedia.
Parker v. Flook 437 U.S. 584 (1978). Claims directed to "alarm limits," algorithm values that indicated catalytic converter malfunctioning.
Diamond v. Diehr, 450 U.S. 175 (1981), was a 1981 U.S. Supreme Court decision which held that the execution of a physical process, controlled by running a computer program was patentable. Wikipedia
State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), Claim eligible for patentability if "it produces a useful, concrete and tangible result." Opened door to business method patents.
In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385(Fed. Cir. 2008), “A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” Wikipedia
1854 O'Reilly v. Morse 15 How. 62. Electrical Signal itself (morse code) not patentable but repeaters to allow morse code to be transmitted long distances is patentable. Wikipedia.
Gottschalk v. Benson 409 U.S. 63 (1972). process claim directed to a numerical algorithjm , as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." BCD (binary coded decimal) to digital converter unpatentable as algorithm. Wikipedia.
Parker v. Flook 437 U.S. 584 (1978). Claims directed to "alarm limits," algorithm values that indicated catalytic converter malfunctioning.
Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application. Wikipedia
Diamond v. Diehr, 450 U.S. 175 (1981), was a 1981 U.S. Supreme Court decision which held that the execution of a physical process, controlled by running a computer program was patentable. Wikipedia
State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), Claim eligible for patentability if "it produces a useful, concrete and tangible result." Opened door to business method patents.
In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385(Fed. Cir. 2008), “A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” Wikipedia
Wednesday, August 19, 2009
Words not to use in Patent Applications
“The invention …,” essential, must, needed, desirable, usual, correct, required requirement, laborious, expected, never, must, significant, majority, peculiar, most, should, surely, none, only, rarely, "limited success with," "free of," "substiantially free of," typically, highly, absolutely, frequently, difficult, conveniently, "time consuming," commonly, generally, uncommon, usually, few, "as much as," "substantially XXX," "majority of XXXX," special, "fully", "clearly", "concisely" and "exactly." Some of then are not really NO NO, but I would think that if you use them, you better have a definition somewhere.
With respect to "surprisingly discovered," see Purdue Pharma L.P., et al. v. Endo Pharmaceuticals, Inc., et al.
With respect to "standard," "conventional,"
"normal," see PC Connector Solutions LLC v. Smartdisk. Claim terms such as "standard", conventional", and "Normal" limited the claim limitations "to technologies existing at the time of the invention."
With respect to "at least one of A, B, C, D, and E" -- not a NO NO, but proceed with caution with the rather screwy case, SuperGuide Corp. v. DirecTV Enters., Inc., 211 F. Supp. 2d 725
With respect to "contain" or "containing" not a NO NO, but why bother, why not just use "comprise" or "comprising" to avoid disputes down the road. See Mars, Inc. v. H.J.Heinz Co. 03-1617
from htp here
Regarding negative implications arising out of use of the term "invention" in the specification, see, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) ("[w]hen a patent thus describes the features of the 'present invention' as a whole, this description limits the scope of the invention."); Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1318-19 (Fed. Cir. 2006); Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (“[T]he characterization of the coaxial configuration as part of the ‘present invention’ is strong evidence that the claims should not be read to encompass the opposite structure.”); see also Andersen Corp. v. Fiber Composites, LLC, 474 F3d 1361, 1368 (Fed. Cir. 2007) (specification’s description of a “critical element” found limiting).
But in partial support of Mr. Cole's second posting, see Praxair, Inc. v. ATMI, INC., No. 2007-1483 (Fed. Cir. 9/29/2008) (Fed. Cir., 2008):
However, it is generally not appropriate “to limit claim language to exclude particular devices because they do not serve a perceived ‘purpose’ of the invention. . . . An invention may possess a number of advantages or purposes, and there is no requirement that every claim directed to that invention be limited to encompass all of them.” E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed. Cir. 2003) (citation and footnote omitted); see also Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., No. 2007-1363, 2008 WL 4072052, at *6 (Fed. Cir. Sept. 2, 2008) (quoting and applying E-Pass). The language here does not suggest that each embodiment of the invention must serve the uniformity objective.
But nearly all of the parts of the specification that discuss uniform capillaries cover only specific embodiments of the invention of the ’609 patent and not the invention as a whole. As such, these parts of the specification are not properly construed as limiting the meaning of the claim language. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2007).
The exception is statements such as the language in the Summary of the Invention section of the ’609 specification that “[t]he apparatus of this invention provides a flow restrictor in the storage container in the form of a tube having multiple uniformly shaped capillaries . . . .” ’609 patent col.3 ll.54-56. A somewhat similar statement appears in the Detailed Description of the Preferred Embodiments. See id. col.7 ll.27-29 (“A useful feature of this invention is the provision of the essentially round outer
cross section of the tube with the relatively uniform internal capillary passages.”); see also id. col.9 l.66-col.10 l.9 (“A number of other forming techniques and material properties can be important to obtaining a uniform multi-capillary structure. . . . Uniformity of the resulting capillaries also improves as the alignment of the conduits in the drawing stock becomes more parallel.”).
Although these statements appear to pertain to the invention overall, rather than a specific embodiment of the invention, they are contradicted by a number of express statements in the ’609 specification clearly indicating that uniformity of the capillary tubes is a feature only of certain embodiments, and not of all embodiments, of the invention. The Summary of the Invention states “in a limited apparatus embodiment this invention is an apparatus for controlling the discharge of pressurized fluids . . . . The apparatus comprises . . . [a] tube defining multiple and uniformly sized capillary passages . . . .” Id. col.4 l.66-col.5 l.17 (emphasis added). Another passage from the Summary of the Invention confirms this understanding, describing capillary uniformity as an aspect of “a broad embodiment [of] this invention”. Id. col.4 ll.22-34 (emphasis added). Likewise, the Detailed Description of the Preferred Embodiments section of the specification explains that “[t]he preferred structure of this invention is a uniform multi-capillary assembly that virtually eliminates the presence of irregular capillaries. . . . The most preferred
With respect to "surprisingly discovered," see Purdue Pharma L.P., et al. v. Endo Pharmaceuticals, Inc., et al.
With respect to "standard," "conventional,"
"normal," see PC Connector Solutions LLC v. Smartdisk. Claim terms such as "standard", conventional", and "Normal" limited the claim limitations "to technologies existing at the time of the invention."
With respect to "at least one of A, B, C, D, and E" -- not a NO NO, but proceed with caution with the rather screwy case, SuperGuide Corp. v. DirecTV Enters., Inc., 211 F. Supp. 2d 725
With respect to "contain" or "containing" not a NO NO, but why bother, why not just use "comprise" or "comprising" to avoid disputes down the road. See Mars, Inc. v. H.J.Heinz Co. 03-1617
from htp here
Regarding negative implications arising out of use of the term "invention" in the specification, see, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) ("[w]hen a patent thus describes the features of the 'present invention' as a whole, this description limits the scope of the invention."); Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1318-19 (Fed. Cir. 2006); Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (“[T]he characterization of the coaxial configuration as part of the ‘present invention’ is strong evidence that the claims should not be read to encompass the opposite structure.”); see also Andersen Corp. v. Fiber Composites, LLC, 474 F3d 1361, 1368 (Fed. Cir. 2007) (specification’s description of a “critical element” found limiting).
But in partial support of Mr. Cole's second posting, see Praxair, Inc. v. ATMI, INC., No. 2007-1483 (Fed. Cir. 9/29/2008) (Fed. Cir., 2008):
However, it is generally not appropriate “to limit claim language to exclude particular devices because they do not serve a perceived ‘purpose’ of the invention. . . . An invention may possess a number of advantages or purposes, and there is no requirement that every claim directed to that invention be limited to encompass all of them.” E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed. Cir. 2003) (citation and footnote omitted); see also Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., No. 2007-1363, 2008 WL 4072052, at *6 (Fed. Cir. Sept. 2, 2008) (quoting and applying E-Pass). The language here does not suggest that each embodiment of the invention must serve the uniformity objective.
But nearly all of the parts of the specification that discuss uniform capillaries cover only specific embodiments of the invention of the ’609 patent and not the invention as a whole. As such, these parts of the specification are not properly construed as limiting the meaning of the claim language. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2007).
The exception is statements such as the language in the Summary of the Invention section of the ’609 specification that “[t]he apparatus of this invention provides a flow restrictor in the storage container in the form of a tube having multiple uniformly shaped capillaries . . . .” ’609 patent col.3 ll.54-56. A somewhat similar statement appears in the Detailed Description of the Preferred Embodiments. See id. col.7 ll.27-29 (“A useful feature of this invention is the provision of the essentially round outer
cross section of the tube with the relatively uniform internal capillary passages.”); see also id. col.9 l.66-col.10 l.9 (“A number of other forming techniques and material properties can be important to obtaining a uniform multi-capillary structure. . . . Uniformity of the resulting capillaries also improves as the alignment of the conduits in the drawing stock becomes more parallel.”).
Although these statements appear to pertain to the invention overall, rather than a specific embodiment of the invention, they are contradicted by a number of express statements in the ’609 specification clearly indicating that uniformity of the capillary tubes is a feature only of certain embodiments, and not of all embodiments, of the invention. The Summary of the Invention states “in a limited apparatus embodiment this invention is an apparatus for controlling the discharge of pressurized fluids . . . . The apparatus comprises . . . [a] tube defining multiple and uniformly sized capillary passages . . . .” Id. col.4 l.66-col.5 l.17 (emphasis added). Another passage from the Summary of the Invention confirms this understanding, describing capillary uniformity as an aspect of “a broad embodiment [of] this invention”. Id. col.4 ll.22-34 (emphasis added). Likewise, the Detailed Description of the Preferred Embodiments section of the specification explains that “[t]he preferred structure of this invention is a uniform multi-capillary assembly that virtually eliminates the presence of irregular capillaries. . . . The most preferred
Tuesday, August 11, 2009
Process defines product by process claims
Abbott Labs v. Sandoz, 566 F.3d 1282 (Fed. Cir. 2009),
In Abbott Labs, the Federal Circuit resolved this long-standing inconsistency and upheld the view expressed in Atlantic Thermoplastics that “process terms in product-by-process claims serve as limitations in determining infringement.” 566 F.3d at 1293 (citing Atlantic Thermoplastics, 970 F.2d at 846-847). The Court expressly overruled Scripps to the extent that it conflicted with this ruling. Id. The Court determined that this view comported with the Supreme Court’s opinion in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), in which the high court stated that “(e)ach element contained in a patent claim is deemed material to defining the scope of the patented invention.” 520 U.S. at 19.
The Court acknowledged the validity of product-by-process claims, though it made clear that the process terms are limiting in terms of enforcement. The court based its holding on the public notice function of patent claims, holding that where a patent holder claims a new product solely in terms of a particular process, infringement must be determined by “comparison of the claimed and accused infringing processes.” 566 F.3d at 1294.
Three judges led by Judge Newman filed a long dissent, arguing that the majority opinion overturned a century of precedent that allowed patent applicants to protect a new product whose structure is not fully known or readily described by merely including sufficient reference to the process required to create it. 566 F.3d at 1299-1300. The dissent calls for a “rule of necessity” for difficult-to-define inventions. Id. at 1300.
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In Abbott Labs, the Federal Circuit resolved this long-standing inconsistency and upheld the view expressed in Atlantic Thermoplastics that “process terms in product-by-process claims serve as limitations in determining infringement.” 566 F.3d at 1293 (citing Atlantic Thermoplastics, 970 F.2d at 846-847). The Court expressly overruled Scripps to the extent that it conflicted with this ruling. Id. The Court determined that this view comported with the Supreme Court’s opinion in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), in which the high court stated that “(e)ach element contained in a patent claim is deemed material to defining the scope of the patented invention.” 520 U.S. at 19.
The Court acknowledged the validity of product-by-process claims, though it made clear that the process terms are limiting in terms of enforcement. The court based its holding on the public notice function of patent claims, holding that where a patent holder claims a new product solely in terms of a particular process, infringement must be determined by “comparison of the claimed and accused infringing processes.” 566 F.3d at 1294.
Three judges led by Judge Newman filed a long dissent, arguing that the majority opinion overturned a century of precedent that allowed patent applicants to protect a new product whose structure is not fully known or readily described by merely including sufficient reference to the process required to create it. 566 F.3d at 1299-1300. The dissent calls for a “rule of necessity” for difficult-to-define inventions. Id. at 1300.
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