Monday, August 24, 2009
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.
Copied from this web post.
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.
Copied from this web post.
Friday, July 31, 2009
No software means plus function claims anymore
http://www.patentlyo.com/08-1368.pdf
Blackboard's patent covers an internet-based educational support system and method. (U.S. Pat. No. 6,988,138). On summary judgment, the district court (Judge Clark, E.D. Tex.) found claims 1-35 invalid as indefinite, but a jury found found that Desire2Learn liable for infringement of claims 36-38. On appeal, the Federal Circuit agreed that Claims 1-35 are indefinite, and – after altering the claim construction – held that the remaining claims were also invalid as anticipated.
Means-Plus-Function: Blackboard's seemingly broadest claim (claim 1) includes several means-plus-function clauses, including a "means for assigning a level of access and control." The specification briefly discusses an "access control manager" (ACM) with an "access control list." On appeal, however, the court found that brief description to be an insufficient "disclosure of the structure that corresponds to the claimed function" and consequently indefinite under 35 U.S.C. §112 ¶2. See In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1994)(en banc).
"[W]hat the patent calls the 'access control manager' is simply an abstraction that describes the function of controlling access to course materials, which is performed by some undefined component of the system. The ACM is essentially a black box that performs a recited function. But how it does so is left undisclosed."
Important for patent drafter, means-plus-function claims require disclosure in the specification even if the means are already well known in the art.
The fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users' predetermined roles goes to enablement. The question before us is whether the specification contains a sufficiently precise description of the "corresponding structure" to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function.
Because claims 2-35 all depend upon claim 1, they are all invalid as indefinite
Claim construction: At the trial, Blackboard's expert could only identify one difference between claims 36-38 and the prior art. Namely, that the Blackboard patent identified a "single login" feature that allowed one user to have various roles within the system. "For example, Blackboard asserted that its claimed method would allow a graduate student who was a student in one course and a teacher in another to use a single login to obtain access to both courses and to obtain access to the materials for each course according to the graduate student’s role in each." However, on appeal, the Federal Circuit determined that the claims do not actually require that feature -- leading them to hold the claims invalid based primarily on the admissions of Blackboard's own expert.
[O]nce the claims are properly construed, the conclusion of anticipation is dictated by the testimony of Blackboard’s own witnesses and the documentary evidence that was presented to the jury. Based on that evidence, and in the absence of a “single login” requirement in claims 36-38, it is clear that the prior art contains every limitation of those claims.Defendant Desire2Learn wins a complete victory (after a few million in attorney fees).
Blackboard's patent covers an internet-based educational support system and method. (U.S. Pat. No. 6,988,138). On summary judgment, the district court (Judge Clark, E.D. Tex.) found claims 1-35 invalid as indefinite, but a jury found found that Desire2Learn liable for infringement of claims 36-38. On appeal, the Federal Circuit agreed that Claims 1-35 are indefinite, and – after altering the claim construction – held that the remaining claims were also invalid as anticipated.
Means-Plus-Function: Blackboard's seemingly broadest claim (claim 1) includes several means-plus-function clauses, including a "means for assigning a level of access and control." The specification briefly discusses an "access control manager" (ACM) with an "access control list." On appeal, however, the court found that brief description to be an insufficient "disclosure of the structure that corresponds to the claimed function" and consequently indefinite under 35 U.S.C. §112 ¶2. See In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1994)(en banc).
"[W]hat the patent calls the 'access control manager' is simply an abstraction that describes the function of controlling access to course materials, which is performed by some undefined component of the system. The ACM is essentially a black box that performs a recited function. But how it does so is left undisclosed."
Important for patent drafter, means-plus-function claims require disclosure in the specification even if the means are already well known in the art.
The fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users' predetermined roles goes to enablement. The question before us is whether the specification contains a sufficiently precise description of the "corresponding structure" to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function.
Because claims 2-35 all depend upon claim 1, they are all invalid as indefinite
Claim construction: At the trial, Blackboard's expert could only identify one difference between claims 36-38 and the prior art. Namely, that the Blackboard patent identified a "single login" feature that allowed one user to have various roles within the system. "For example, Blackboard asserted that its claimed method would allow a graduate student who was a student in one course and a teacher in another to use a single login to obtain access to both courses and to obtain access to the materials for each course according to the graduate student’s role in each." However, on appeal, the Federal Circuit determined that the claims do not actually require that feature -- leading them to hold the claims invalid based primarily on the admissions of Blackboard's own expert.
[O]nce the claims are properly construed, the conclusion of anticipation is dictated by the testimony of Blackboard’s own witnesses and the documentary evidence that was presented to the jury. Based on that evidence, and in the absence of a “single login” requirement in claims 36-38, it is clear that the prior art contains every limitation of those claims.Defendant Desire2Learn wins a complete victory (after a few million in attorney fees).
Tuesday, June 23, 2009
That/which
that, which (pronouns) Use that and which in referring to inanimate objects and to animals without a name. Use that for essential clauses, important to the meaning of a sentence, and without commas: I remember the day that we met. Use which for nonessential clauses, where the pronoun is less necessary, and use commas: The team, which finished last a year ago, is in first place.
(Note that this formulation folds in a recommendation against that used to refer to human beings.)
Uniquely referring NPs like the only solution to the problem can have either sort of relative:
The only solution to the problem that will satisfy them is to abandon the project. [restrictive]
The only solution to the problem, which will satisfy them, is to abandon the project. [non-restrictive]
(Note that this formulation folds in a recommendation against that used to refer to human beings.)
Uniquely referring NPs like the only solution to the problem can have either sort of relative:
The only solution to the problem that will satisfy them is to abandon the project. [restrictive]
The only solution to the problem, which will satisfy them, is to abandon the project. [non-restrictive]
Passive voice
Identifying the passive voice is simple. It is formed by auxiliary verb "to be" and the -N form of the verb (the "past participle" if you like that name), which, of course, may actually end in -T or -ED.
BOTH elements must be present for the sentence to be passive voice, not just the participle (which is used in the perfect) and not just "auxiliary to be" which is used in the progressive, and certainly not just plain "to be" all by itself as the main verb.
And Dan T., I'm not sure how correct this is, but the way I've been checking whether a sentence is passive is by adding "by John" (or whomever) to it and seeing if it still makes sense. So, "The cake was made" becomes "The cake was made by John", so I think it's in the passive voice, but "There are salt and pepper shakers that have come into the house over the years" doesn't work. I have no idea if this is correct, but I think it's worked every time I've used it so far.
On checking my copy of Strunk & White (sorry - it's a long story) for this implausible clause I found: "My first visit to Boston will always be rememembered by me."
On the other hand, if it said "My first visit to Boston will always be remembered by the Mayor, the City Council, and the Boston Police Department", it would be much more difficult to rewrite it into the active voice without, at the very least, radically altering the emphasis of the sentence, possibly greatly disserving the narrative which the reader is led to expect from such a beginning.
Which goes to show that the passive voice (even in the strict grammatical sense) has its uses, and teachers ought to adopt a more nuanced approach to it. Even if a given student is using the passive voice badly, telling them not to use it at all doesn't address the real problem and potentially deprives them of a useful tool for some situations.
'He was exhausted by the journey' is clearly in the passive voice; 'He was exhausted', on the other hand, is the verb 'to be' with the adjective 'exhausted' as complement.
[In the vast majority of cases it will work very nicely indeed. There may be a few cases of actives where accidentally an irrelevant by-phrase can be added, and perhaps the occasional passive that doesn't sound right when a by-phrase is explicitly added (if I was born in Oregon is a passive, it is one that does not allow an agent by-phrase); but those will be highly unusual cases. In general, John's test is very useful. And it completely negates the idea that passive clauses are vague about agency, of course, since the whole point of the by-phrase that you can usually add is to lay emphasis on the identity of the agent. —GKP]
[I'm sorry to say it is much more complicated than this. What Karen has said would not cover the passive clauses (underlined) in sentences like She went out and got herself arrested by the vice squad or I'll have your bags brought up to your room by the porter or This change went unnoticed by most people, where there is no auxiliary be; and it would not cover "concealed passives" like This thing really needs repairing by a professional, where there is no past participle.
Defining the class of passive clauses in English is not that simple, and I never suggested that it was. I'm only drawing attention to the fact that people keep using the term when they have not idea at all how it is defined or employed in the field of grammar but they throw the term around anyway. —GKP]
BOTH elements must be present for the sentence to be passive voice, not just the participle (which is used in the perfect) and not just "auxiliary to be" which is used in the progressive, and certainly not just plain "to be" all by itself as the main verb.
And Dan T., I'm not sure how correct this is, but the way I've been checking whether a sentence is passive is by adding "by John" (or whomever) to it and seeing if it still makes sense. So, "The cake was made" becomes "The cake was made by John", so I think it's in the passive voice, but "There are salt and pepper shakers that have come into the house over the years" doesn't work. I have no idea if this is correct, but I think it's worked every time I've used it so far.
On checking my copy of Strunk & White (sorry - it's a long story) for this implausible clause I found: "My first visit to Boston will always be rememembered by me."
On the other hand, if it said "My first visit to Boston will always be remembered by the Mayor, the City Council, and the Boston Police Department", it would be much more difficult to rewrite it into the active voice without, at the very least, radically altering the emphasis of the sentence, possibly greatly disserving the narrative which the reader is led to expect from such a beginning.
Which goes to show that the passive voice (even in the strict grammatical sense) has its uses, and teachers ought to adopt a more nuanced approach to it. Even if a given student is using the passive voice badly, telling them not to use it at all doesn't address the real problem and potentially deprives them of a useful tool for some situations.
'He was exhausted by the journey' is clearly in the passive voice; 'He was exhausted', on the other hand, is the verb 'to be' with the adjective 'exhausted' as complement.
[In the vast majority of cases it will work very nicely indeed. There may be a few cases of actives where accidentally an irrelevant by-phrase can be added, and perhaps the occasional passive that doesn't sound right when a by-phrase is explicitly added (if I was born in Oregon is a passive, it is one that does not allow an agent by-phrase); but those will be highly unusual cases. In general, John's test is very useful. And it completely negates the idea that passive clauses are vague about agency, of course, since the whole point of the by-phrase that you can usually add is to lay emphasis on the identity of the agent. —GKP]
[I'm sorry to say it is much more complicated than this. What Karen has said would not cover the passive clauses (underlined) in sentences like She went out and got herself arrested by the vice squad or I'll have your bags brought up to your room by the porter or This change went unnoticed by most people, where there is no auxiliary be; and it would not cover "concealed passives" like This thing really needs repairing by a professional, where there is no past participle.
Defining the class of passive clauses in English is not that simple, and I never suggested that it was. I'm only drawing attention to the fact that people keep using the term when they have not idea at all how it is defined or employed in the field of grammar but they throw the term around anyway. —GKP]
Subscribe to:
Posts (Atom)