Flook, 437 U.S. at 594 ("Our approach to respondent's application is, however, not at all inconsistent with the view that a patent claim must be considered as a whole."); Diehr, 450 U.S. at 188 ("It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.").
As such, if you claim a DVD (an example of a computer readable medium), when the "claim as a whole" is considered, the DVD is patentable subject matter because you cannot ignore that a DVD is neither a law of nature, natural phenomena, nor abstract idea.
"If the only difference between the alleged invention and the prior art is based on content or information, then the alleged invention isn't really tied to a particular machine."
If you ask one having ordinary skill in the art, they will say that a "general purpose computer" with the DVD (or other computer readable medium) encoded with the instructions for perform a method (i.e., the typical Beauregard language) is measurably different than an identical general purpose computer in which the DVD (or other computer readable medium) does not include the encoded instructions.
There may be a difference "based on content or information," as you allege, but that difference is measurable.
FYI your statement that "the alleged invention isn't really tied to a particular machine" ignores that Beauregard claims are product claims, not method claims. Just because you burn instructions on a DVD doesn't magically convert the DVD from a product into some "abstract method."
From MPEP 2141.02:
In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. (underlining under "as a whole" omitted."
Under 35 USC 102, you have to establish that the prior art teaches ALL of the claimed limitations.
Thus, you have to look at the claimed invention AS A WHOLE, which includes ALL of the limitations. A blank DVD is not 102/103 art for the average Beauregard claim for those reasons.
The method steps merely describe the "functionality" imparted by the computer readable medium to the computer. As discussed in MPEP 2173.05(g):
"There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper."
Commenter at Patentlyo.com
Showing posts with label 102. Show all posts
Showing posts with label 102. Show all posts
Friday, March 13, 2009
Thursday, June 5, 2008
102 enablement-Ref just must be mentioned, even negatively
Summary--102 reference just needs to mention element for it to be an enabling reference.
However, this clashes with ruling that the same exact invention must be disclosed. (Ref provided later, I hope)
On the other hand, it must be noted that the CAFC has held that proving "enablement" of prior art under 102(a) or 102(b) requires less than proving enablement for 35 U.S.C. 112P1 purposes.
Also, as we know, the burden is on applicants and patentees to prove that a prior art reference is inoperable. But the CAFC has set that bar quite high.
The most interesting case in this regard is Rasmussen:
http://www.cafc.uscourts.gov/opinions/04-1191.pdf
In Rasmussen (an interference), the Board found a patent valid in view of 102(b) art, a published EP application, because (the Board concluded) the EP application was not enabled. The Board made two key findings of fact to support its conclusion: (1) there was no reasonable scientific basis for a person of ordinary skill in the art to conclude that the method in a prior art EP application would be effective [in treating prostate cancer]; and (2) a person of ordinary skill in the art as of the publication date of the EP patent would not have believed that the method described in the patent would be effective.
The CAFC **overturned* the conclusion of non-enablement based on those findings of fact, stating that "Under the legal standard set forth in Hafner and the cases that have followed it, those findings are insufficient to support the Board’s conclusion that EP ’383 is not an enabling reference
for purposes of anticipation."
In other words, a prior art method is enabled even if the reference which discloses the method "teaches away" (only relevant for obviousness); even if the reference states flat out that the method does not yield successful results; and even if as of the date of publication of the reference nobody skilled in the art believed that the method could yield the results later obtained by the patentee.
That's a very low standard.
http://www.patentlyo.com/patent/2008/06/question-on-pro.html#comment-117547596
However, this clashes with ruling that the same exact invention must be disclosed. (Ref provided later, I hope)
On the other hand, it must be noted that the CAFC has held that proving "enablement" of prior art under 102(a) or 102(b) requires less than proving enablement for 35 U.S.C. 112P1 purposes.
Also, as we know, the burden is on applicants and patentees to prove that a prior art reference is inoperable. But the CAFC has set that bar quite high.
The most interesting case in this regard is Rasmussen:
http://www.cafc.uscourts.gov/opinions/04-1191.pdf
In Rasmussen (an interference), the Board found a patent valid in view of 102(b) art, a published EP application, because (the Board concluded) the EP application was not enabled. The Board made two key findings of fact to support its conclusion: (1) there was no reasonable scientific basis for a person of ordinary skill in the art to conclude that the method in a prior art EP application would be effective [in treating prostate cancer]; and (2) a person of ordinary skill in the art as of the publication date of the EP patent would not have believed that the method described in the patent would be effective.
The CAFC **overturned* the conclusion of non-enablement based on those findings of fact, stating that "Under the legal standard set forth in Hafner and the cases that have followed it, those findings are insufficient to support the Board’s conclusion that EP ’383 is not an enabling reference
for purposes of anticipation."
In other words, a prior art method is enabled even if the reference which discloses the method "teaches away" (only relevant for obviousness); even if the reference states flat out that the method does not yield successful results; and even if as of the date of publication of the reference nobody skilled in the art believed that the method could yield the results later obtained by the patentee.
That's a very low standard.
http://www.patentlyo.com/patent/2008/06/question-on-pro.html#comment-117547596
102 enablement-Ref just must be mentioned
On the other hand, it must be noted that the CAFC has held that proving "enablement" of prior art under 102(a) or 102(b) requires less than proving enablement for 35 U.S.C. 112P1 purposes.
Also, as we know, the burden is on applicants and patentees to prove that a prior art reference is inoperable. But the CAFC has set that bar quite high.
The most interesting case in this regard is Rasmussen:
http://www.cafc.uscourts.gov/opinions/04-1191.pdf
In Rasmussen (an interference), the Board found a patent valid in view of 102(b) art, a published EP application, because (the Board concluded) the EP application was not enabled. The Board made two key findings of fact to support its conclusion: (1) there was no reasonable scientific basis for a person of ordinary skill in the art to conclude that the method in a prior art EP application would be effective [in treating prostate cancer]; and (2) a person of ordinary skill in the art as of the publication date of the EP patent would not have believed that the method described in the patent would be effective.
The CAFC **overturned* the conclusion of non-enablement based on those findings of fact, stating that "Under the legal standard set forth in Hafner and the cases that have followed it, those findings are insufficient to support the Board’s conclusion that EP ’383 is not an enabling reference
for purposes of anticipation."
In other words, a prior art method is enabled even if the reference which discloses the method "teaches away" (only relevant for obviousness); even if the reference states flat out that the method does not yield successful results; and even if as of the date of publication of the reference nobody skilled in the art believed that the method could yield the results later obtained by the patentee.
That's a very low standard.
http://www.patentlyo.com/patent/2008/06/question-on-pro.html#comment-117547596
Also, as we know, the burden is on applicants and patentees to prove that a prior art reference is inoperable. But the CAFC has set that bar quite high.
The most interesting case in this regard is Rasmussen:
http://www.cafc.uscourts.gov/opinions/04-1191.pdf
In Rasmussen (an interference), the Board found a patent valid in view of 102(b) art, a published EP application, because (the Board concluded) the EP application was not enabled. The Board made two key findings of fact to support its conclusion: (1) there was no reasonable scientific basis for a person of ordinary skill in the art to conclude that the method in a prior art EP application would be effective [in treating prostate cancer]; and (2) a person of ordinary skill in the art as of the publication date of the EP patent would not have believed that the method described in the patent would be effective.
The CAFC **overturned* the conclusion of non-enablement based on those findings of fact, stating that "Under the legal standard set forth in Hafner and the cases that have followed it, those findings are insufficient to support the Board’s conclusion that EP ’383 is not an enabling reference
for purposes of anticipation."
In other words, a prior art method is enabled even if the reference which discloses the method "teaches away" (only relevant for obviousness); even if the reference states flat out that the method does not yield successful results; and even if as of the date of publication of the reference nobody skilled in the art believed that the method could yield the results later obtained by the patentee.
That's a very low standard.
http://www.patentlyo.com/patent/2008/06/question-on-pro.html#comment-117547596
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