By Jacqueline Wright Bonilla, PhD, JD. Ms. Bonilla is a partner at Foley & Lardner and filed an amicus brief supporting Myriad's position.
In entering the fray of this discussion, I note that I, along with two of my colleagues at Foley & Lardner LLP, submitted an amicus brief in the AMP v. PTO (a/k/a ACLU v. Myriad) "gene patenting" case on behalf of our clients Rosetta Genomics and George Mason University. In addition to our brief, other colleagues at our firm submitted a different amicus brief on behalf of a different client, Alnylam Pharmaceuticals. Both briefs, along with Myriad's brief and a number of other amicus briefs filed last week, support a reversal of the district court opinion as it pertains to "isolated DNA" composition claims. These briefs agree that such claims are patent eligible under current law, and should continue to meet the threshold of 35 U.S.C. § 101 as a matter of policy and social considerations. We are sensitive to dire consequence to biotech innovation in the face of a possible alternative outcome.
As it turns out, however, while such briefs agree on patent eligibility of "isolated DNA" claims, a number of briefs differ in viewpoints regarding applicable law, and even which cases are relevant versus not. As such, a reading of just the briefs filed with the Federal Circuit so far—even without considering the ACLU brief yet to be filed, much less amicus briefs filed in support of the ACLU's position—underscores a point worth mentioning.
The point is this: reasonable minds can differ on an interpretation of what constitutes relevant case law and how it should be interpreted in this case. This point is often missed in the hubbub we see in the press. For instance, many have commented on the amicus brief filed by the Department of Justice last week. Some have accused the DOJ of misreading the law entirely and attempting to eviscerate biotechnology innovation altogether. Such viewpoints misread the point of the DOJ brief, in my opinion.
Look what the DOJ brief actually says. It argues that the district court got it wrong in certain important respects. As stated in the DOJ brief:
… the district court erroneously cast doubt on the patent-eligibility of a broad range of manmade compositions of matter whose value derives from the information encoding capacity of DNA. Such compositions—e.g., cDNAs, vectors, recombinant plasmids, and chimeric proteins, as well as countless industrial products, such as vaccines and genetically modified crops, created with the aid of such molecules—are in every meaningful sense the fruits of human ingenuity and thus qualify as "'human-made inventions'" eligible for patent protection under section 101. [] The district court therefore erred in invalidating the challenged composition claims, such as claim 2 of the '282 patent, that are directed solely to cDNAs.
DOJ brief, pages 9-10 (citations omitted). As part of this discussion, the DOJ likewise agrees with our position that claims directed to recombinant vectors comprising any isolated DNA—even DNA having a sequence exactly as it exists in nature—constitutes patentable subject matter. See DOJ brief, page 16, discussing claim 8 of the '282 patent. Thus, unlike the district court opinion, the DOJ proposal does not throw the entire biotech baby out with the bath water.
That said, it appears that the DOJ may cut off a hand of the biotech baby. It argues that "isolated DNA" comprising a sequence from genomic DNA as it exists in a body does not constitute patentable subject matter. The DOJ brief (pages 10-11) argues that the "chemical structure of native human genes is a product of nature," even "when that structure is 'isolated' from its natural environment."
This position presents a slippery slope of considerable concern to those affiliated with biotech innovators responsible for actually getting medical products to patients. For example, the DOJ sidesteps an important scientific fact: all isolated nucleotide compositions—regardless of sequence—are, in fact, engineered DNA molecules. Such DNA molecules are necessarily, by definition of their existence in an isolated form, "human made" inventions. These products simply do not exist without human intervention. Thus, how does one successfully distinguish what is really "human made"? Moreover, human involvement is needed to identify valuable isolated nucleic acid molecules, such as DNA vaccines, PCR probes, interfering or micro RNA, etc., and then isolate them. When exactly is the human involvement sufficient to meet § 101? An additional slippery slope in the DOJ position is that many non-nucleotide compositions also exist as "products of nature" in a human body or other natural physical state. These compositions include many valuable small molecule pharmaceuticals, proteins, antibodies, just to name a few. Such compositions could likewise be subject to the same legal reasoning propagated in the DOJ brief. In other words, the fallout of the DOJ's position has wide-sweeping implications, even if not as flabbergastingly debilitating as the district court opinion.
This all said, I propose that it does no good to simply assert that the DOJ (or any party or judge for that matter) incorrectly reads relevant case law and/or misunderstands the science wholesale. As mentioned already, reasonable minds can differ on case law interpretation in this case, and how to apply scientific facts to the law. The sheer number of briefs and differences in positions—see DOJ versus USPTO as just one example—indicates this phenomenon in vivid color.
Thus, at the end of the day, the Federal Circuit and/or Supreme Court may ultimately decide the outcome of this case based on policy and social/economic considerations. The courts will consider case law, of course, but in reality may only apply it after the fact. I also believe that any precedential decision issued here, either way, will necessarily have at least some negative fallout. In fact, the patent system itself intends negative fallout to some people by virtue of granting a right to exclude others for a limited time. Thus, keeping the ideals of patent law in mind, it will be critical for courts to choose a course of action that provides the most amount of good, while causing the least amount of collateral damage. In other words, forget all the clever legal mumbo-jumbo—what do we want to happen here for the better collective good?
My understanding of the patent system is that it exists for the very purpose of stimulating innovation, as well as public disclosure of that innovation. As discussed at length in our amicus brief (and by others), abolishing patent eligibility of genetic inventions—not to mention inventions in other areas of health and medicine potentially impacted by a decision here—will have more of a dampening effect on research, development and innovation than any patent right could ever have.
My hope is that courts will remain ever conscious of slippery slopes created by any one interpretation of the law and application of science. No one wins if we inappropriately dampen incentives for innovators to discover, apply and provide innovation to the benefit of humans.
Documents:
as discussed at length in our amicus brief (and by others), abolishing patent eligibility of genetic inventions.
Course – there be the 112 issues too.
MM, IANAE, and 6 should spend some of their massive amounts of free time reading this article.
link to innovation.hoover.org
Watcha talkin bout, Willis?
TINLA think it’s ironic that the posters here who advocate for narrower claim scope and villify NPEs, also claim to be lefty liberals irl, when their positions favor big business in every way
Who are you talking about and what specific “positions” are you referring to?
I think it’s ironic that the posters here who advocate for narrower claim scope and villify NPEs, also claim to be lefty liberals irl, when their positions favor big business in every way.
“You still run into the little problem that Beauregard claims were invented for the very purpose of not claiming the computer.”
This is a problem… why exactly?
Feel free to correlate your answer with an example in the equivalent biologic arts.
Ned: Viewed as such, therefor, Beuregard claims are justifiable as components of a stored programmed computer,
You still run into the little problem that Beauregard claims were invented for the very purpose of not claiming the computer.
Knowledge is important for us!
And as for that OTHER infamous SPE that called me also. I sure hope that is not a grandfathered decision as to Firing them.
Well anyway getting back to my two Pea Brain thought, someone referred to him as thinking he was G.O.D. They made a mistake on one of the initials.
It is you SW. You are Malcolm Mooney.
NO SOLICITING. I gave you all the evidence ,including the Fake Patent. And if there is anything missing? Elementary! You acted as double Agent. You even talked with me on the Phone, a few times at least.
And if SW is involved that is a whole other matter. And I am stuck between a BPAI Rock and a Huge Crime. And if this were a Murder. It would be MAN 1.
So SW is into readable Data. Is MM really SW or did he just get help from SW? And SW is not initials for some worm. Although maybe that’s why his momma gave him those initials.
…and that’s even with me o so generously overlookin the lack O utility aspect of Sunshine’s posts.
Instead of the usual Bib Brother is watching you. MM is watching me EWWEEEE. He’s a computer closet Voyeur.
NWPA,
It’s hardly stunning at all – in fact, it’s so “in character“, that it’s starting to be more than a tad bit b o r i n g.
When yuz can identify a short list of predictable results, ya can say that he has become obvious.
MM:your lack of integrity is just stunning.
Yah Ned your getting it….. A Function to differentiate between who gets to read what is typed. and who does not. so therefore those that need to see what is going on may not be seeing what they need to see. I wonder if there is a case like that about tricky dickee software.
NedOrama – getting warmer…
Pingerino, ta da!,
A computer has two essential components: a CPU and a stored program. The latter consists of non transitory CPU-readable media storing a program consisting of a sequence of instructions that can be described as “steps.”
Now, assuming for the sake of argument, that the computer with a particular stored program performs a new, novel, non obvious and useful function, how does one claim the improved computer? I suggest it is quite properly claimed as a product by process, where the program steps of the stored program are laid out as steps. But traditionally, we claim the machine in terms of means plus function; but technically, the stored program itself is incapable of performing the recited function and the CPU is the same for each means element. It is the combination that performs the recited functions.
But, viewing the computer as a combination of two critical components, I can easily see justification to allow claims to just the stored program as a necessary component of a computer.
Viewed as such, therefor, Beuregard claims are justifiable as components of a stored programmed computer, but the stored program computer must itself pass 101, etc., or else.
So, in some respects, it is a red herring to ask whether the structure of the computer readable medium is changed in any meaningful way, as the real question is rather whether the structure of the stored program computer has changed in some meaningful way by including the new program.
functionally claim a method
What is that supposed to mean?
I’ve talked about this will some of the best in the country. (And I am not just saying that, but really some of the ones that have written the books and get paid lots of money and some of the ones that set the standards for some of the boutique firms.)
Please name a single name so we can put out a special request to have one of these very important and “serious” people step forward and defend Beauregard claims in light of current Federal Circuit case law. I’d really appreciate that, NWPA.
did you know that some of the best in the industry say that the only way to protect a mechanical invention now with the sophitication of design arounds is to functionally claim a method? That comes from one of the best prep and pro boutiques in the country. I think they were rated number 1 in quality last year.
Rated by whom? Names please. “Sophistication of design around these days”. LOL.
“But it’s certainly no indication of the talent or intellect of the guy who prepared it.”
from the guy who preaches that it is all about the client – now it is all about the talent and intellect of the guy who prepared it.
W
T
F
– get over yourself already.
“transcribe/translate the infringing gene using the only possible code, and you immediately know.”
Careful with this argument – this path leads to the logical conclusion that you have merely copied what is in nature, given tha the “only possible code” already pre-exists the claim.
On the contrary, they are considered at the top of their game by corporations and by thier peers.
Those would presumably be corporations who mostly outsource the function because they don’t know any better, and who generally want comically broad claims at all costs, and their peers who have to claim as broadly as them because they’re in direct competition?
Functional claiming is a cop-out. If you can’t claim a mechanical invention structurally, you’re taking the easy way out. It’s quick and it’s lazy. Whether you’re doing it because you don’t understand the invention, because your client insists on hopelessly broad claims, or because Law Firm B does it, it amounts to the same. It’s the drafting equivalent of dumping everything you’ve ever seen into an IDS because you can’t be arsed to figure out what might be important. It’s no wonder you approve of the practice.
I mean, of course it’s the “gold standard”. It results in really broad claims. An IDS containing everything under the sun is the gold standard too. But it’s certainly no indication of the talent or intellect of the guy who prepared it.
So you can stomp your feet all you want, but I am afraid you are wrong.
IANAE: you can be pretty funny. “fan boy” and “you don’t listen a whole lot.” Good ones.
Not very good at what they do? On the contrary, they are considered at the top of their game by corporations and by thier peers. And the gold standard is a functional method claim for mech.
And, you don’t seem to have grasped that a/d converters make ee and cs merge. In fact, the last set of claims I wrote for a big product for one of the largest electronic companies (it is a big money maker for them) had to be functional claims because of the a/d problem.
And yes the claims were beater around quite a bit.
You see IANAE for those like me that do prep and pros as a big part of our practice this functional claiming is a big issue. We talk about it a lot.
You do talk about this a lot, true. But you don’t listen a whole lot.
It’s great to have your perspective, though. Because none of the rest of us do prep and pros at all.
I think they were rated number 1 in quality last year.
Let me guess, quality equals rejections?
It doesn’t sound like they’re very good at drafting structural claims, if they can’t figure out how to do it. But at least when they claim things functionally they recite the actual function of the device they’re claiming. I’m sure if they thought about it they’d realize how ridiculous it is to claim “a disk that causes a computer to have a function”, which isn’t functional claiming at all. It’s wishful claiming.
So, lots of good smoke, but I’ve got a fan bigger than your smoke machine.
Yes, you’re the Beauregard claim’s biggest fan boy.
You see IANAE for those like me that do prep and pros as a big part of our practice this functional claiming is a big issue. We talk about it a lot.
I’ve talked about this will some of the best in the country. (And I am not just saying that, but really some of the ones that have written the books and get paid lots of money and some of the ones that set the standards for some of the boutique firms.)
Go back and read Deener and then I will find some other cases and papers for you. I think you can be taught, but it will be painful for both of us.
IANAE: you are being ridiculous.
In EE there are only a few solutions? I don’t think so. And in fact one of the problems in ee claiming is that everything can be pushed into a/d converter and processed and pushed back out. So, circuits and processors can all be intermixed.
I am afraid you are not trying. You want to yap on and on about this, but you are not trying to get the big picture and want to try to minimize the problem in other areas. Sorry not true as illustrated with circuits and a/d converters.
Furthermore, sorry not true with mechanical arts either.
For mechanical arts: did you know that some of the best in the industry say that the only way to protect a mechanical invention now with the sophitication of design arounds is to functionally claim a method? That comes from one of the best prep and pro boutiques in the country. I think they were rated number 1 in quality last year.
So, lots of good smoke, but I’ve got a fan bigger than your smoke machine.
This same problem arises in claiming electrical circuits. In fact, I’d say no –or almost–no electrical circuit could ever be claimed to your satisfaction without making a design around trivial.
I might add that when a circuit is claimed functionally, the claimed function is typically actually performed by the circuit itself. It’s a circuit that receives inputs, performs some operation on them, and produces an output based on those inputs. It’s not a circuit that, when inserted into a computer, causes the computer to perform a function.
This really isn’t “bigger than Beauregard” at all. Beauregard claims are the only ones that recite “a device for causing some other device to do what you want, period”, and that’s way beyond the point where functional claiming becomes problematic.
The problem is that there are so many ways to perform a functional step. Those of us skilled in the art can easily imagine many.
Yes, that’s what I was just saying. In fact, those of us skilled in the art (or even unskilled in the art) can easily imagine arbitrarily many. We can imagine that literally any sequence of bits could perform that functional step. That’s exactly the problem.
If you do, then get that this is bigger than Beauregard claims.
What, functional claiming is too big to fail? What’s good for the Syndicate is good for America? I’m sure there’s a catch in there somewhere.
In circuits, there are generally a limited number of circuit elements that can perform a (rather specific) claimed function if you’ve properly stated the function, plus a host of well-known equivalents (equivalent logic, using triodes as diodes, etc.), and that’s it. In mechanical arts, a well-claimed function quickly narrows down the scope of the claim to a manageable level.
In either art, if you claim too broad a function, or if the function can’t be ascertained without specifying the structure outside of the claim, the claim is indefinite and rightly so. If you can’t tell how the gear will work because you don’t know what kind of machine it’s going in, and literally any prior art gear could perform that function if you designed the right machine around it, your functional gear claim is well and truly invalid. You should have claimed it with the machine, at the very least.
Do you see the problem? People have come up with lots of ways of doing things and the important part is the functional claim when the function is enabled.
Do you see the other problem? Enablement is not the only requirement for patentability. It’s not even the requirement we’re talking about. Enablement is absolutely trivial for Beauregard claims. They’re generally self-enabling. They’re just hopelessly indefinite is all.
Just because functional claiming has its place, that doesn’t mean every functional claim is automatically fine.
Your isolated gene patent–interesting–don’t you need to know the structure of the copied gene to know if it infringes.
Of course not. In fact, it’s nearly impossible to even draft an isolated gene claim that would require knowing the structure of anything in vivo. You’d have to claim something as ridiculous as a Beauregard, like “a gene which, when inserted into a human genome, produces [phenotype]”. If the claim specifies the DNA sequence, you sequence the infringing gene and you immediately know. If the claim specifies the corresponding RNA or amino acid sequence, you look at Wikipedia, transcribe/translate the infringing gene using the only possible code, and you immediately know.
IANAE 2: >>The scope of the claim itself has to be >>definite, and which means that the functional >>language in a product claim has to specify >>definite structure.
IANAE 1: >>because it set definite boundaries on the >>patent protection sought
Your no. 1 is right. Your no. 2 is not. Dude, “definite structure” ?? No. The problem is that there are so many ways to perform a functional step. Those of us skilled in the art can easily imagine many.
But, you know, seriously, IANAE, do you really care about understanding this? If you do, then get that this is bigger than Beauregard claims.
This same problem arose when patent attorneys figured out that any machine could trivially be designed around when the “definite!!!” structure was claimed.
This same problem arises in claiming electrical circuits. In fact, I’d say no –or almost–no electrical circuit could ever be claimed to your satisfaction without making a design around trivial.
Do you see the problem? People have come up with lots of ways of doing things and the important part is the functional claim when the function is enabled.
You aren’t really claiming all the definite structure of your isolated gene are you? Not only that you are saying that you are copying a real gene and the structure will be (!!!)–not is–whatever the structure of the real gene is.
Sheesh. Read Deener again. Read some of the cases that talk about why functional claiming arose. And get that in computer science and ee the functional claim does set a reasonable boundary on the invention.
Your isolated gene patent–interesting–don’t you need to know the structure of the copied gene to know if it infringes. don’t you need to be able to forget all those pesky atoms that you say don’t FUNCTIONALLY change the molecule for the purposes that you want.
Man, if you have an integrity you will think about this and see why patent law has accommodatd the new inventions including your isolated gene.
“ I think his position is that the structure of the “article of manufacture” is unchanged in any functional way with respect to the article manufacture. Thus the printed matter doctrine applies.”
Ned Ol boy – There is a reason why you were banned on commenting from the printed matter doctrine until you did your homework on that doctrine with case cites exploring the boundary of that doctrine. You would see why Sunshine boy is just tilting at windmills if ya had done your homework.
Now get to it and be a good boy.
If the infringement can be ascertained, then the claim is not indefinite.
1. A composition for tungsten clamp modification, wherein said composition comprises a means capable of enhancing murastasis of a tungsten clamp.
The specification discloses that the means can be “a platinum rod modified by novel etching to enhance murastasis of a tungsten clamp.” No examples of specific etchings which enhance murastasis are disclosed. The prior art contains 100 million examples of different platinum rod etchings.
Assume that it’s easy to determine if something enhances murastasis.
You think this claim is definite? Of course it’s not, even though it is very easy to determine if you infringe.
Really moves the ball forward.
Thanks. So you didn’t want to address the substance of the discussion at all, then?
OK. Good that you can vent. Really moves the ball forward.
NWPA: Why is that you believe this when those of us with computer science/ee backgrounds do not feel this way?
Considering that you’re also an “Attorney”, and in another thread you were shocked (SHOCKED!) that I believed a plaintiff could lose a court case without his lawyer being guilty of malicious prosecution, I don’t consider it probative that you can’t wrap your head around my beliefs.
Look, the bottom line is that a software designer aware of the claim can determine whether or not the software he or she intends to write for an operating system he or she intends to write it for will infringe that claim. If the infringement can be ascertained, then the claim is not indefinite.
He can determine whether he intends to infringe, but that’s clearly not the same thing. If it were, a non-infringement opinion would be a complete defense in every case.
I could trivially design a one-time-pad decryption algorithm that would cause him to infringe despite his best efforts. It’s not even far-fetched, and it doesn’t take space aliens. Anybody could map any data onto any set of instructions using any computer, and everybody skilled in the art knows that. You can’t do that with DNA because the “computer” only has one code, and nobody skilled in the art could change that code even if they wanted to.
You can’t hang your hat on “a person skilled in the art knows the most likely way for a programmer to infringe the claim”. The scope of the claim itself has to be definite, and which means that the functional language in a product claim has to specify definite structure.
IANAE:will be doing the reading and what logic it will use to parse the data is completely indefinite.
Why is that you believe this when those of us with computer science/ee backgrounds do not feel this way?
I’m sure it would be asserted against a later-invented version of the instructions that would run only on a later-invented OS after being extracted by a later-invented decryption or decompression algorithm.
As it should be.
Look, the bottom line is that a software designer aware of the claim can determine whether or not the software he or she intends to write for an operating system he or she intends to write it for will infringe that claim. If the infringement can be ascertained, then the claim is not indefinite.
These hypotheticals in which space aliens show up with super computers that just so happen to run “discs of tron” in such a way that it inringes the one click patent do not obtain. That’s just crazy talk. You could make the same argument that those space aliens’ super computers could be biological, and that they run isolated genes as software. Now go spend your weekend using a laser pointer to play with your cat while swinging sideways on a swing.
Iza think the “three subtantially” similar reqs for infringement more than cover your argument IANAE – welcome to the dark side.
TINLA Thus, the functional limitations recited in Beauregard claims are definite,
Not in terms of defining structure they aren’t. Remember, it’s a composition claim, not a method claim. That’s the whole point. The infringing *structure* must be definite. There is nothing in a Beauregard claim to distinguish the “medium” structurally from the prior art “medium.”
This is why Beauregard claims fail. They are no different from a means plus function claim reciting a single means with a novel function, where the means recited in the specification is old. That sort of claim is either anticipated or its indefinite. Take your pick.
But in reality, where the rest of us practice, the operating systems and minimum requirements of processors with which the software is compatible are clearly listed on the product literature, advertising, and packaging, and the varieties available are few and finite.
But in reality, the claim is not limited to those few and finite varieties. In particular, I’m sure it would be asserted against a later-invented version of the instructions that would run only on a later-invented OS after being extracted by a later-invented decryption or decompression algorithm.
infringement can be redaily determined by ascertaining whether or not the software on the medium, when installed in the listed type of processor running the listed operating system and having the listed minimum requirements, has the recited functionality.
Sure, assuming the infringer is kind enough to print on the package precisely what computer and what OS are required to run the software. Which, to be fair, they often do. But it makes no sense for that to be a factor in whether your claim is definite as drafted, when your claim makes no mention of the medium having processor specs written on it.
Even a person skilled in the art wouldn’t be able to tell whether an arbitrary medium with arbitrary data infringes a Beauregard claim without knowing which arbitrary algorithms would be used by some hypothetical computer to extract, decode, and execute the instructions,
But in reality, where the rest of us practice, the operating systems and minimum requirements of processors with which the software is compatible are clearly listed on the product literature, advertising, and packaging, and the varieties available are few and finite. Thus, the functional limitations recited in Beauregard claims are definite, and infringement can be redaily determined by ascertaining whether or not the software on the medium, when installed in the listed type of processor running the listed operating system and having the listed minimum requirements, has the recited functionality.
It was held that the limitation used to define a radical on a chemical compound as “incapable of forming a dye with said oxidizing developing agent” although functional, was perfectly acceptable because it set definite boundaries on the patent protection sought. In re Barr, 444 F.2d 588, 170 USPQ 33 (CCPA 1971).
There you have it. The functional language is acceptable if it sets definite boundaries on the patent protection sought.
I’ve already explained why that’s the case for gene sequence listings coding for a protein, but not the case for instructions for telling a computer to do a thing. Specifying the function of a set of computer data without specifying what computer will be doing the reading and what logic it will use to parse the data is completely indefinite.
Even a person skilled in the art wouldn’t be able to tell whether an arbitrary medium with arbitrary data infringes a Beauregard claim without knowing which arbitrary algorithms would be used by some hypothetical computer to extract, decode, and execute the instructions, and any computer could be programmed such that any code would infringe any claim. You can’t do that with genes, because all genes code for proteins in exactly the same way in all circumstances.
You guys need to read the MPEP. Here, I’ll help you.
2173.05(g) Functional Limitations [R-3] – 2100 Patentability
2173.05(g) Functional Limitations [R-3]
A functional limitation is an attempt to define something by what it does, rather than by what it is (e.g., as evidenced by its specific structure or specific ingredients). 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. In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971).
A functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step. >In Innova/Pure Water Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117-20, 72 USPQ2d 1001, 1006-08 (Fed. Cir. 2004), the court noted that the claim term “operatively connected” is “a general descriptive claim term frequently used in patent drafting to reflect a functional relationship between claimed components,” that is, the term “means the claimed components must be connected in a way to perform a designated function.” “In the absence of modifiers, general descriptive terms are typically construed as having their full meaning.” Id. at 1118, 72 USPQ2d at 1006. In the patent claim at issue, “subject to any clear and unmistakable disavowal of claim scope, the term ‘operatively connected’ takes the full breath of its ordinary meaning, i.e., ‘said tube [is] operatively connected to said cap’ when the tube and cap are arranged in a manner capable of performing the function of filtering.” Id. at 1120, 72 USPQ2d at 1008.< Whether or not the functional limitation complies with 35 U.S.C. 112, second paragraph, is a different issue from whether the limitation is properly supported under 35 U.S.C. 112, first paragraph, or is distinguished over the prior art. A few examples are set forth below to illustrate situations where the issue of whether a functional limitation complies with 35 U.S.C. 112, second paragraph, was considered. It was held that the limitation used to define a radical on a chemical compound as "incapable of forming a dye with said oxidizing developing agent" although functional, was perfectly acceptable because it set definite boundaries on the patent protection sought. In re Barr, 444 F.2d 588, 170 USPQ 33 (CCPA 1971). In a claim that was directed to a kit of component parts capable of being assembled, the Court held that limitations such as "members adapted to be positioned" and "portions . . . being resiliently dilatable whereby said housing may be slidably positioned" serve to precisely define present structural attributes of interrelated component parts of the claimed assembly. In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976).
Oh, but that would be so “unfair”.
But it would be a valid “Beauregard” claim, wouldn’t it?
Now, all we need to figure out is where to draw the line between the sequence listing claim and “an isolated gene comprising a sequence which, when inserted into a human genome, causes breast cancer”.
What if you claimed a CD ROM (or other specific type of storage medium) with a sequence listing of the bits stored thereon? That’s kind of structural. You could even claim a bit string that is meaningful to a standard Windows computer or something.
Indeed. What if? What if the PTO required software applicants to submit a CD ROM with exemplary bits and with the disclosed utility, and then limited the claims thereto? Then patentees could rely on the doctrine of equivalents to guard against “design arounds.”
Oh, but that would be so “unfair”. Plus there’d be no more “innovation” and nobody would ever invent a way to automatically send NWPA’s mom an instant message and a coupon to buy more cheetohs when the stockpile is depleted.
Again: there are no structural components whatsoever in a Beauregard claim except for the recitation of an invariably old computer-readable medium.
What if you claimed a CD ROM (or other specific type of storage medium) with a sequence listing of the bits stored thereon? That’s kind of structural. You could even claim a bit string that is meaningful to a standard Windows computer or something.
TINLA It’s not a problem.
Uh, yes it is.
It’s fair.
No, it isn’t.
Get over it.
Never.
Functional limitations are permitted in apparatus claims, and they do have limiting effect and patentable weight in any apparatus claim, so long as they limit how the structural components of the apparatus are operatively connected.
Again: there are no structural components whatsoever in a Beauregard claim except for the recitation of an invariably old computer-readable medium.
So: it is a problem, it is fair to recognize the problem, and the problem should be dealt with by eliminating it.
That’s a solution wherever it is impractical to disclose every possible variation of structure of an invention.
No, the problem is that you’re trying to claim structure when the invention is a series of method steps performed by a computer.
There isn’t any meaningful structure to the invention at all. A list of steps is not a structure. It’s not a method either. You only get a semblance of structure by writing the idea down on some structure, and even that isn’t the actual method – just a recipe for performing the method.
Other equivalent structures not specifically disclosed but required for use with other types of earth movers and variations between models thereof would also be covered by the claim. And you would have the same issue of looking at a component and not knowing if it infringes the claim unless you know which model and type of machine it is to be used with.
If you claim the function of a mechanical component in such a way that you can’t tell what devices infringe without inspecting all possible unclaimed parts they might possibly attach to, that’s not a valid structural claim either. And for the same reason – the functional language doesn’t specify the structure.
The problem with software is that what the function is depends on the machine.
That’s not a problem. That’s a solution wherever it is impractical to disclose every possible variation of structure of an invention.
I’m a bit tired of the protests over the functional limitations in Beauregard claims. Functional limitations are permitted in apparatus claims, and they do have limiting effect and patentable weight in any apparatus claim, so long as they limit how the structural components of the apparatus are operatively connected.
For example, you could functionally claim a component of an earth moving device, and disclose different embodiments for back hoes than for bull dozers. Other equivalent structures not specifically disclosed but required for use with other types of earth movers and variations between models thereof would also be covered by the claim. And you would have the same issue of looking at a component and not knowing if it infringes the claim unless you know which model and type of machine it is to be used with.
It’s not a problem. It’s fair. Get over it.
But, as others have observed, are not parts of a machine are patentable even if they have no function except in a machine?
Pretty much any device only has a function by interacting with the outside world. But that function is inherent in its structure (or should be nearly so, if you have a valid functional claim), and generally there aren’t very many ways for the device to interact with the outside world to perform that function. There’s only one way to put a gear in a machine, no matter what the machine does. Two if it’s a helical gear, but still. The teeth mesh with the teeth of another gear, and that’s the function.
The problem with software is that what the function is depends on the machine. And not just in the sense of meshing gears having to have the same sized teeth. The machine has to be programmed to understand your software, and that programming is completely arbitrary. You can take any Beauregard claim and program a computer such that 11010110 on an otherwise blank disk infringes the claim. You can program a compression algorithm such that 11010110 on an otherwise blank disk auto-extracts to instructions per that Beauregard claim in any standard format. You can’t look at a series of ones and zeros and definitively say that it doesn’t infringe any Beauregard claim you choose, in the same way that you can look at a gear and immediately know whether it is capable of performing its claimed function when you stick it in a machine.
Thanks Malcolm.
I think you are on the right track. The program has a function only in the computer.
But, as others have observed, are not parts of a machine are patentable even if they have no function except in a machine?
Good question, this. I’d like to see a case.
And, let’s be honest, the program of a computer is not structure, but steps.
“and isolated means separated from a computer.”
I thought it was understood that Beauregard claims were written to cover a “disk-in-a-box” separated from the computer. Excluding the computer from the claims doesn’t make the claims any better. In fact, including the computer would make the claims better, because then at least you’d have a functional relationship between the printed matter and something else in the claim.
NWPA Let’s start with Malcolm Mooney giving the explicit statement that functional language is an appropriate way of claiming structural differences
Only where the recited function is unambiguously associated with a defined structure or structures that would be recognized by a PHOSITA, as is the case with “DNA encoding protein of SEQ X”.
This has been explained here at least a dozen times, txrdbrain. It’s not a difficult concept. Hence, the recognition by myself and others of your dishonesty and/or utter cluelessnees.
end italics?
Ping, et al., regarding Malcolm and Beauregard claims:
I do not think that it is Malcolm’s position that functional language cannot be used to claim structure, and that that’s the problem is with Beauregard claims. I think his position is that the structure of the “article of manufacture” is unchanged in any functional way with respect to the article manufacture. Thus the printed matter doctrine applies.
Knowing his position on Beauregard claims, I would still like Malcolm to tackle the following claim:
“An isolated stored program comprising:” followed by a list of program steps, wherein both isolated and stored program are defined terms, where stored program is defined to mean a program stored in a non-transitory way on a computer-readable medium, and isolated means separated from a computer.
“Sock puppet. check.”
Translation: “Someone called me on my preemptive character attacks and hypocrisy. That proves I’m right!”
OK.
Sock puppet. check.
MM. Waiting.
NWPA will likely make some off topic remark about how even though MM hasn’t actually done a particular bad thing yet, he’s a horrible enough person that he’s likely to do it in the future.
With the usual implication, of course, that NWPA would never do any such thing.
MM will likely make some off topic remark in response and a sock puppet will defend MM.
(swiveling towards the camera and tapping the sheath of papers on the desk)
Here at the Daily Watch, we pride ourselves on covering the hard-hitting news of the day. In this instance, one Malcolm Mooney has been asked to provide a short, single unambiguous declarative statement on functional language as an appropriate way of claiming structural differences…
(lays papers flat, drops head, then slowly lifts head and smiles)
…as a sign of integrity.
(guffaws, and leans toward camera)
Not. Going. To Happen.
(under his breadth, as he scribbles out the story line on the paper)
The most integrity shown by Malcolm is his silence – and it’s a blessing at that.
Personally, I am tired of the hand-waiving and poor legal arguments on this blog, wherein the mere “I said so” is taken as persuasive. It is not.
Let’s start with Malcolm Mooney giving the explicit statement that functional language is an appropriate way of claiming structural differences, that he at the same time claims he has done (and led) dozens of times and yet still holds that Beauregard claims are somehow illegal. And let’s have this simple statement unencumbered with provisios of being applied to a particular art unit, or couched in similar weasel words.
I am asking for just a little integrity here.
Iza offer an observation onthat question – itabe jus too damm boring.
“Why can’t we all just get along?”
IANAE: it is sad if you really believe all that–except for the last bit.
NWPA: “You’ve made no attempt to explain why the DC argument is wrong where the DC’s arguments are fairly treated.”
I’m sure I’ve discussed the DC decision at length. Have you checked the thread about the DC decision?
If it turns out I haven’t, tell me what issues you’d like to hear about, and I’ll try to explain them. Very slowly.
NWPA: “What you do is take a position and then stone wall.”
Huh. Yet another similarity between this topic and your beloved Beauregard claims. I don’t suppose you’ve changed your mind yet?
NWPA: “Very much what examiners do. Maybe you work with them too much.”
I find it more productive than working against them.
NWPA: “Other than that you seem to be a decent person.”
Why, thank you. I, too, would eventually run out of bad things to say about you. Other than those, you’re quite a remarkable individual.
Personally, I am tired of the hand-waiving and poor legal arguments on this blog, wherein the mere “I said so” is taken as persuasive. It is not.
Let’s start with Malcolm Mooney giving the explicit statement that functional language is an appropriate way of claiming structural differences, that he at the same time claims he has done (and led) dozens of times and yet still holds that Beauregard claims are somehow illegal. And let’s have this simple statement unencumbered with provisios of being applied to a particular art unit, or couched in similar weasel words.
I am asking for just a little integrity here.
Other than that you seem to be a decent person.
IANAE: You don’t address the issues. You’ve made no attempt to explain why the DC argument is wrong where the DC’s arguments are fairly treated. Furthermore, you don’t try to fairly address all the issues which is always necessary to get a good resolution.
What you do is take a position and then stone wall. Very much what examiners do. Maybe you work with them too much.
This is why you have a muddy brain that spews forth cloudy watery arguments that one desperately wants to avoid tasting.
“You can’t seem to follow the facts anyway.”
Awww, ya gonna spoil the love-in. Specially when Iza ask ya to back up such flippant statements and ya find that ya cant. Go ahead and show how Iza cant follow facts – which facts? how not followed? Hey, don’t blame me if ya find out ya cant handle your horse as well as ya thought and ya keep getting lost in Middle Earth. I done gave you my advice – stay out of those area’s ya don’t know the background to. Simple. Easy peasy japanesey.
Sucks to be you sometimes.
“Was that a responsive answer IANAE?”
Responsive to what? I’m still waiting for a question that makes any sense. The DC didn’t do any “damage” at all, because this is a question of law.
Besides, I and others have said enough about the DC decision that I hardly need to revisit it here for your benefit. You can’t seem to follow the facts anyway.
Was that a responsive answer IANAE? Let’s find someone who knows how litigation works and ask them.
“The burden is now on the patent owner. The DC did its damage.”
I don’t think you understand how litigation works. Or logic, for that matter.
The argument is made. Try to use some intelligence and come up with ways to refute the argument. Stone walling doesn’t work. The burden is now on the patent owner. The DC did its damage.
“You know the argument the DC is putting forth.”
I didn’t even realize Dennis was a party to this case.
IANAE: come and confess your sins and start dealing with issues honestly.
You know the argument the DC is putting forth. Deal with it and stopping trying to make an end around. That doesn’t work in court.