By Dennis Crouch
Lantana Ltd. v. UK Comptroller General of Patents, [2013] EWHC 2673 (Pat)
Earlier this month, High Court Judge Colin Birss released a new opinion on the European view of software patentability as seen through the eyes of an English judge. The basic rule coming from the EPC is that "programs for computers . . . as such" are not patentable. EPC Article 52. This particular case arises from the refusal of the UKIPO (not the EPO) to grant a patent to Lantana. However, the UK Patents Act of 1977 implements Article 52 UK roughly follows the law set down by the EPO.
Digging in, the main subject-matter related question that the UK court asks in software related inventions is whether the invention offers an innovative technological contribution beyond the computer program itself. In HTC v Apple [2013] EWCA Civ 451 and Aerotel Ltd v Telco Holdings Ltd, [2006] EWCA Civ 1371, the UK Court of Appeals explained the four-step process for determining whether a particular claimed invention meets this technological contribution requirement. The steps are:
i) construe the claim;
ii) identify the actual contribution offered by the claimed invention;
iii) determine whether the contribution falls solely within the scope of excluded subject matter (i.e., programs for computers); and
iv) determine whether the contribution is actually technical in nature.
In those cases, the courts made clear that the technical contribution could be either a technological mechanism or a technological effect.
A key point in the US debate on patentable subject matter is whether the technological (or non-abstract) contribution needs to be innovative. In the UK/EPO, the answer is yes, that contribution must itself be innovative in the way that it makes a "contribution to the known art."
Here, Judge Birss followed anything but an integrative approach to patentable subject matter. Rather, the focus is on whether the elements of the invention that qualify as subject-matter-eligible (i.e., technological) also offer an innovative contribution. Lantana argued that this approach conflated the question of subject matter eligibility with those of novelty and non-obviousness. However, Judge Birss disagreed:
Mr Beresford [Counsel for Lantana] submitted that [Judge Birss's approach] conflicted with the acceptance by the examiner that the claim was novel and non-obvious. I do not agree. Those matters [decided by the examiner] apply to the claim as a whole, that is to say the entire combination of features. The point here is a different one, i.e. that the idea of an email message containing machine readable instructions as a contribution to the art in this case is wrong. The computers in the claim are not operating in a new way. . . .
The claim has been found to be novel and inventive by the examiner and in that sense it makes a contribution of some kind to the art [when examined as a whole], but the applicant has been unable to identify anything which this claim can fairly be said to contribute which has a technical character.
Thus, the focus here is on finding elements of the invention that are both innovative and have a technical character. Although Judge Birss did not cite to the U.S. case of Parker v. Flook, 437 U.S. 584 (1978), he could have so reach out for support. In Flook, the U.S. Supreme Court similarly pushed patent applicants for an inventive concept that itself is a practical application, writing:
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.
I suspect that the rule supported by Judge Birss here is not too far removed from that which the current U.S. Supreme Court would also fashion if given the chance. However, the current USPTO does not require that particular elemental linkage.
One important result of this approach – well recognized by Judge Birss is that the scope of subject matter eligibility shifts over time. The Lantana case involves a particular use of email systems. If the patent had been filed in the early days of email and was able to introduce an a technological mechanism that was new at the time then the application would be subject matter eligible. However, the reality is that email systems were already very well known by the time Lantana filed its application. In Judge Birss' words, the technological aspect of the invention was "conventional." As such, there was no technological contribution to be found.
In the end, the result here is that Lantana's appeal has been dismissed with the UKIPO's judgment of nonpatentability still standing.
= = = = =
As an aside, Lantana is a small US based company and the listed inventor John Wysham is the company CEO. The US version of the application (Serial No. 12/867825) was abandoned after a final obviousness rejection.
= = = = =
More information from:
- Outlaw
- Hal Wegner
- James Newton (MIP)
“Configured to” is structural language.
Even Malcolm has voluntarly admitted this.
Processing circuits are old. You’re wanting to convert it into something new by slapping new functionality on it. Doesn’t work in other arts, didn’t work in the Haliburton case, and yet magically does work in this art. Which you certainly already know but seem to be playing coy about.
Of course processing circuits are old. You’re telling me that old elements aren’t allowed in other arts?
For example, in the “programmed processor” “art” “functional” language is not “what the device is capable of doing” as it is in every other art every day of the week.
This is the real source of any disagreement we have. I think you need to read those claims more carefully – this is a matter of grammar and logic, not anything special about a particular art. There is a real difference between a “processor capable of doing X,Y,Z” and a “processor configured to do X,Y,Z.” That’s an objective, testable, verifiable difference. If you don’t agree, then we’ll just have to agree to disagree.
6, please abstain from using any invention associated with this ‘boondoggle.’
LOL – let’s see if you can last a day.
“Nah, but a lot of that is also thus caused. The ruckus is the denouncement of the whole patent system as a sham by thousands of people because of the nonsense going on in this one area that is supposedly an “art”. Not to mention a slew of trolls, suits, a huge backlog at the PTO, the board etc. etc. we can throw all of that stuff in as well.“
that’s some serious pathological obsession against software patents, 6.
Perhaps you might want to consider that the litany of horrers is actually caused by those fighting (as you do) against software. Perhaps you might wish to join your fundamentalist friend Malcolm in abstaining from using anything that is so ‘tainted’ with this software tinge – have fun in Amish land together.
Any names so we can at least google it on our own?
“If you’re talking about the 101 “ruckus,” I think you’re mistaken.”
Nah, but a lot of that is also thus caused. The ruckus is the denouncement of the whole patent system as a sham by thousands of people because of the nonsense going on in this one area that is supposedly an “art”. Not to mention a slew of trolls, suits, a huge backlog at the PTO, the board etc. etc. we can throw all of that stuff in as well.
“If this was the true cause of the ruckus, and if this was truly a “legal fiction,” it could have been easily dealt with under Section 112, a long time ago”
It still can, but it’ll take the USSC to do that since a few judges of the Federal Circuit decided a long time ago to make it that way. Either that or a miracle will need to occur and the Federal Circuit itself will reverse course. Note though that this could happen as people who aren’t quite so old and out of touch get put on the bench.
“How come this never even comes up under Section 112?”
It does. It came up in a case just the other day, or just the other year (time flies) at the fed circ. The Federal Circuit just puts its stoic face on and soldiers on, sometimes making up brand new pronouncements to justify their earlier nonsense. For example, in the “programmed processor” “art” “functional” language is not “what the device is capable of doing” as it is in every other art every day of the week. It is instead some sort of bizarro hybrid between intended use/capable of/intentional programming product by process limitation. At least according to Newman. It’s a travesty to see this sort of nonsense every single time it happens and I feel for the defendants. And the court probably will do so until someone takes it to the supremes. The office higher ups decline to do so, though it is technically their responsibility. Why would they want to? The way things are, they’re super important and edgy, probably the sexiest bureaucracy there is. Not to mention their budget is bloated.
Though I was heartened to hear Linn in that speech someone posted the other day talking about the court revisiting some of its earlier nonsense that was too extreme.
Well then perhaps you should tell the courts about that. The people in bio will be especially glad to hear that.
6 admits of Office position:
“he relies on the finding in Alappat to try to say that the functional language in computer/b claims is actually not “purely” functional language. It is only “functional language”. In fact, he clearly stated that so far as he was aware (and this was his direct area that he worked in at the office) this was the office’s official position.“
LOL – and are you still buying that bridge from Malcolm?
LOL
And by the by, 6: the controlling law part will tie into the part that you have already professed ignorance about: Congress, the courts and the Office.
You know, our intellectual honesty ‘pooch-you-already-screwed.’
LOL
LOL – that is some serious, serious tap-dancing from you 6.
“There is a big difference between a “purely functional claim” and a claim that includes structure that is distinguished over similar prior structures using “purely functional terms.””
Obviously.
” One big difference you might notice is that the latter includes structure, while the former does not.”
Yes, it has the old structure. Agreed.
“That sounds like what your lawlyer instructor calls “functional claiming,” so if it makes you feel better to leave out the “purely,” go for it.”
No, that’s what you (and the federal circuit and some at the office) would like to be called “functional claiming” but is actually nothing more than taking the old processor and claiming it purely functionally (aka without ever telling what the structure is). It is a legal fiction, that you only get away with because you have the backing of the federal circuit. Do not worry, the practice will come to an end in due time, the government takes so very long to act on these things.
“However, note particularly the part of your quote where it says that the claims DO NOT run afoul of the rule against purely functional claiming”
Yes, and note the part in my commentary about this being them getting a pass, where other arts do not.
” However, the seven claims at issue here are means-plus-function claims, so this isn’t very helpful for the present discussion.”
True enough. But in either event, it’s the same ol same ol in other cases just like them.
“Sure it may. It may not”
Right, you don’t get a free pass, as you do with your processors, day in and day out. What I’ve been saying. This phenomena is so bad in the softiewaftie arts that a good 2/3rds of the examiners I’ve personally asked about the law in those AU’s LITERALLY DO NOT KNOW THE FIRST THING ABOUT 112. And that is simply because, in their own words “they never use it”.
“Sure, they may. But I already told you that my claim recites a processing circuit, i.e., the particular structure.”
Processing circuits are old. You’re wanting to convert it into something new by slapping new functionality on it. Doesn’t work in other arts, didn’t work in the Haliburton case, and yet magically does work in this art. Which you certainly already know but seem to be playing coy about.
“That’s true, they may not. On the other hand, they may”
And yet, again, the exception is the softiewaftie “arts”.
” there are no special legal requirements for functionally-described limitations.”
I never said that there was a “special requirement”. Just like all other terms that are in the claims, their structure needs to be shown in the drawings and likewise described in the specification. It isn’t “special” at all. It is “standard”. Yet some people get a pass, perhaps you can tell us why that is LB.
“I’m not asking the office for any special favors regarding my apparatus claims that include functional language – please go ahead and apply exactly the same rules as you do everywhere else”
And generally that is the feeling amongst attorneys I talk to. Yet, when I do, claims to CRM’s and “processors configured to x” limitations start getting cancelled left and right.
” I do ask, however, that you not try to apply means-plus-function case law to claims where it does not apply.”
Course not. Ha te the stuff, never touch it unless I absolutely have to. A boondoogle that never should have happened.
… supposedly, a verbal description of how something was programmed to function is magically a description of its structure to an imaginary man.
This is, specifically, what has caused all the ruckus for years and years.
If you’re talking about the 101 “ruckus,” I think you’re mistaken. If this was the true cause of the ruckus, and if this was truly a “legal fiction,” it could have been easily dealt with under Section 112, a long time ago. How come this never even comes up under Section 112?
Nice vacuous post, Malcolm.
@ta boy.
But now that you are aware of the difference between functional and purely functional claiming look out for the terms in judicial decisions. They’ll pop up from time to time.
Thanks for the heads-up. However, I was already quite aware of what “purely functional claiming” is, which is why I was very careful with what I said. There is a big difference between a “purely functional claim” and a claim that includes structure that is distinguished over similar prior structures using “purely functional terms.” One big difference you might notice is that the latter includes structure, while the former does not.
Again, what I said was “When a claim includes a processing circuit, the relevant (i.e., distinguishing) aspects of that processing circuit (and of the claimed apparatus as a whole, in some cases) can be defined in solely (or purely) functional terms.” That sounds like what your lawlyer instructor calls “functional claiming,” so if it makes you feel better to leave out the “purely,” go for it.
One example:
“Those seven claims do not run afoul of the rule against purely functional claiming, because the functions of ‘processing,’ ‘receiving,’ and ‘storing’ are coextensive with the structure disclosed, i.e., a general purpose processor.).”
That’s an OK example. However, note particularly the part of your quote where it says that the claims DO NOT run afoul of the rule against purely functional claiming. However, the seven claims at issue here are means-plus-function claims, so this isn’t very helpful for the present discussion.
Notwithstanding the permissible instances, the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite.
Sure it may. It may not.
Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353 (Fed. Cir. 2010) (en banc).
Sure, they may. But I already told you that my claim recites a processing circuit, i.e., the particular structure.
Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340.
That’s true, they may not. On the other hand, they may.
You’ll note that all of the case law in that MPEP section you quote keeps coming back to the first and second paragraphs of Section 112. Once again, unless the draftsperson has invoked the 6th paragraph, there are no special legal requirements for functionally-described limitations. I’m not asking the office for any special favors regarding my apparatus claims that include functional language – please go ahead and apply exactly the same rules as you do everywhere else. I do ask, however, that you not try to apply means-plus-function case law to claims where it does not apply.
Sorry Malcolm, but your statement at 2:38 has no point (your stale script of feigned ignorance simply clashes with that ‘superb’ skill of yours with English as a first language).
Try again.
“piece of legal fiction… yes”
LOL – but tell us Malcolm and 6 – is that controlling law?
LOL
I am talking about steps that are not completely mental steps but merely have elements that are mental steps, right?
Nobody knows what you are talking about, Tr0 llb0y, including you. Maybe you could try harder to be clear instead of simply digging in your heels and screeching tht everyone else is ignorant?
Oh, right. That’s not how you were raised by Daddy Quinn.
Kookoo McPatentpants has gone off the deep end again.
6,
You do realize that ‘purely’ is a Malcolm move-the-goalpost move, just like his “completely” mental steps move when I am talking about steps that are not completely mental steps but merely have elements that are mental steps, right?
Open your eyes, son.
Except of course in the softiewaftie arts because there they get a free pass because, supposedly, a verbal description of how something was programmed to function is magically a description of its structure to an imaginary man.
This is, specifically, what has caused all the ruckus for years and years. It’s a piece of legal fiction created based on cases that were not on point, at all, and created specifically with a goal in mind by a few people on the Federal Circuit looking to enlarge their domain of influence.
Yes.
where that particular requirement might come from.
The requirement to claim compositions of matter and articles of matter in structural terms? Where did that requirement come from?
My initial answer is “common sense.” Without that requirement, applicants might as well just claim the new “functionality” as their “invention”. And isn’t that exactly what we see in the softie-woftie arts? Does 101 permit the claiming of “new functionalities”? Just because the claim includes a magic word? My second answer is the Fed Cir’s reasoning about the purpose of composition/article claims in cases like Eli Lilly v. Ariad, and Abbot v. Sandoz and the Supreme Court in Halliburton (“The language of the claim thus describes this most crucial element in the ‘new’ combination in terms of what it will do rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus.”).
I’m aware, as I’ve stated before, of one bona fide “legally recognized” exception to the requirement and it’s the so-called “antibody exception” (an exception that should have been abolished long ago, imho).
Below you write: “the question is whether the terminology in the claim connotes (to the skilled person) enough structure so that the requirements of 112(b) are met.” I agree to the extent this means that there must be some unambiguous structure that anyone skilled in the art would understand is the structure that achieves that function and that’s what your claim should be limited to. It can’t be enough that “enough structure” is merely “some undefined structure that you’ll figure out when you try to make the new functionality I’ve described — but trust me, it’s there and it’s new!”
“But if you’re suggesting that every element that is described in functional terms is treated as a means-for limitation then you’re wrong.”
I, personally, am not suggesting anything, much less something related to means p f. The office, and the USSC, have in the past, and would conceivably in the future, suggest that you’ve got to show us what it is that is performing the function. And this is required above and beyond the make and use enablement req. I am however repeating to you precisely what they require, in fact it’s in the MPEP. Except of course in the softiewaftie arts because there they get a free pass because, supposedly, a verbal description of how something was programmed to function is magically a description of its structure to an imaginary man.
This is, specifically, what has caused all the ruckus for years and years. It’s a piece of legal fiction created based on cases that were not on point, at all, and created specifically with a goal in mind by a few people on the Federal Circuit looking to enlarge their domain of influence. Not to mention that it leads to, as anon says, courts “making findings of fact as a matter of law”. As ludicrous as that notion.
But now that you are aware of the difference between functional and purely functional claiming look out for the terms in judicial decisions. They’ll pop up from time to time. One example:
“Those seven claims do not run afoul of the rule against purely functional claiming, because the functions of ‘processing,’ ‘receiving,’ and ‘storing’ are coextensive with the structure disclosed, i.e., a general purpose processor.).”
^Right there is an example of the computer arts getting a free pass from the federal circuit. They do it rather routinely. But then pull up a case from another art. BAM, people get busted over the prohibition on purely functional claiming routinely.
You will also see people use the term “purely functional” in regards to 112 6th limitations sometimes as well. In that arena they’re talking about the claim itself being purely functional language even though there is a structure in the spec for it to refer to.
Two different usages of the same phrase. It kind of confuses things.
Here’s a quote from the MPEP about the topic that follows the office’s position exactly.
Notwithstanding the permissible instances, the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs “when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty”) (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942) (holding indefinite claims that recited substantially pure carbon black “in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior”). Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353 (Fed. Cir. 2010) (en banc). Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340. For instance, a single means claim covering every conceivable means for achieving the stated result was held to be invalid under 35 U.S.C. 112, first paragraph because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim. Hyatt, 708 F.2d at 714-715. For more information regarding the written description requirement and enablement requirement under 35 U.S.C. 112, first paragraph, see MPEP §§ 2161-2164.08(c).
link to uspto.gov
You will note that there are times where we may give people a pass even if they didn’t put the structure in the spec (I’m talking about a non-mpf limitation here). Sometimes the features that make the function happen are old and well known, and so we just consider them to be implicit in the spec and don’t worry about it. What we’re worried about is when it is a novel feature being recited purely functionally, aka when they never set forth what structure or step actually does the function.
“but I assure you that my inventors have possession of all of them.”
Your assurances are nice, now go ahead and demonstrate such in the application.
“Breadth does not necessarily suggest a written description problem any more than it suggests indefiniteness.”
Nope, but your failure to set forth even one single structure that you supposedly possess does.
“102/103…ineligible”
LOL – try reading your precious 9-0 dance a jig Prometheus decision again Malcolm where that idea was flat out rejected.
LOL – do you need an office link?
Once again, Malcolm attempts to obfuscate and conflate patent eligibility and patentability.
And once again, plainly busted for his dissembling B$.
You really do svck at this Malcolm.
“Not at all.”
All.
You are still missing the point (but keep those eyes clenched tight while you continue to yap)
“The genus of… configured to…”
LOL – loving it (by the way, even Malcolm self-volunteered that “configured to” is structural language).
“So, as a whole, I have to go with MM on this one”
LOL – one more sucker for you Mr. Barnum.
Love the dusty shoes.
The set being large has nothing to do with any difficulty (or lack thereof) of showing possession, 6.
You quite miss the point that Congress has distinctly NOT used 101 to outlaw this (apparently) ‘abstract’ subject matter
Not at all. The AIA says to ignore the “tax strategy” limitations under 102/103. I just wonder why Gene finds that “bizarre” when that’s exactly the statute that he has suggested over and over should be used to keep applicants from obtaining claims which protect ineligible subject matter (e.g., claims such as Prometheus’ claims).
Anyway, I’m not really interested in your opinion of Gene’s opinion. We all know that your admiration for Gene is pretty much boundless.
First I take it you mean that they were claimed thus, but that the actual structure (or method step) was set forth in detail in the specification. Second, if that be the case, you need to stop saying “purely” then, in patent parlance that isn’t “purely”. Try using “solely” instead.
I wasn’t aware that “purely” was patent parlance. I’m OK with “solely.” However, I’ve never been talking about (nor have I ever written) an apparatus claim that is “purely functional.”
Here’s the most important thing I said, edited according to your suggestion: “When a claim includes a processing circuit, the relevant (i.e., distinguishing) aspects of that processing circuit (and of the claimed apparatus as a whole, in some cases) can be defined in solely functional terms.”
You suggest that the actual structure must be “set forth in detail in the specification.” Yes, the specification must include sufficient detail that the skilled person can make and use my claimed invention. But if you’re suggesting that every element that is described in functional terms is treated as a means-for limitation then you’re wrong. Unless I use the magic words “means for,” the question is whether the terminology in the claim connotes (to the skilled person) enough structure so that the requirements of 112(b) are met. Section 112(f) is and was intended to provide a handy shortcut for the draftsperson, it’s not a separate requirement for patentability that somehow provides an extra gloss on 112(b).
The difference is between having demonstrated possession of the genus of things that will perform the function in your specification.
The genus of “processing circuit configured to carry out processing steps A, B, and C” is pretty broad, but I assure you that my inventors have possession of all of them. Breadth does not necessarily suggest a written description problem any more than it suggests indefiniteness.
So, you concede that functional claiming is used even in the “grown-up” art. Since you provided the particular example, we know that you hold that claim up as a stellar example of claiming. Therefore, you concede there is nothing wrong with functional claiming whether in be used to describe a computer implemented method of data processing or a method of creating electrical connections.
Wonderful.
Welcome to the Dark Side.
Um according to courts that actually cannot be done. You have to plug the thing in and see how it operates to determine infringement. You’re not going to take a picture of a new MS word CD and say “yep that totally infringes on patent hawks old patent”. You have to plug it in and see it working on a given computer. There’s a difference.
“The problem is that the set is very large so that functional language is used.”
And thus correspondingly difficult to show possession of. Unless of course we give you a free pass, for no reason.
“purely functional terms.”
When you throw “purely” into that phrase there are a lot of lawlyers that disagree with you. Indeed, one such lawlyer taught a class I took just the other day and clearly distinguished between what he meant by “purely functional” and “functional”. Also he notes that Haliburton back in the 40’s was right on point, and still is. Frankly I’m rather on board with those lawlyers. Also, that particular lawlyer loved software since it was his field, and he relies on the finding in Alappat to try to say that the functional language in computer/b claims is actually not “purely” functional language. It is only “functional language”. In fact, he clearly stated that so far as he was aware (and this was his direct area that he worked in at the office) this was the office’s official position.
So, as a whole, I have to go with MM on this one, you want to bring in pure functional language (i.e. where you haven’t told what actual structure(s) produce that function and shown good possession of the whole genus) you get your arse handed to you on 112 2 grounds for not definitely defining the claim. And that is, so far as I have been instructed by people who’s job it is to know exactly this, is the official position of the office.
The difference is between having demonstrated possession of the genus of things that will perform the function in your specification.
” They are structurally different from the prior art. However, those distinguishing structural differences are described to the skilled person in purely functional differences.”
First I take it you mean that they were claimed thus, but that the actual structure (or method step) was set forth in detail in the specification. Second, if that be the case, you need to stop saying “purely” then, in patent parlance that isn’t “purely”. Try using “solely” instead.
Well if that’s the only point then lester let me just say: okayyyyyyyyyyyy.
Did you miss the day in paent class that they covered “Semantic (and Pedantic) Uses of English as a First Language”?
(that was sarcasm, Leopold)
And it’s real mature of you to aim at the wrong target, yet again.
/eyeroll.
It’s a blog Leopold.
Get over the misspellings.
(LOL – and look at who you aim your arrow at – yet again, while the actual point here is that your beloved cannot be bothered to use his vaunted English as a first language skills)
Classic indeed – just not how you thought, Leopold.
It is not ‘beliefs’ that will get you banned Malcolm.
Nice attempted spin – and my how belief-driven you become when the spin suits you – just like the fundamentalists.
Rather, what gets you banned are misstatements of law or fact.
LOL – you wouldn’t last a day. No wonder you feel the overwhelming urge to take shots at a guy who doesn’t even post here.
Come, man, use that ‘vaunted’ skill of English as a first language.
Learn to red.
Classic.
“ If the prior art is any computer running any software”
LOL – Ned – read the article.
Note the similarities as to why Stevens in Bilski lost his majority decision.
Further, note your own words here and the similarity to a certain Morse claim – and why such similarity must dictate that one cannot rule out ALL future invention by use of such terms as you would use – ‘any‘ computer and ‘any‘ software.
Also further note your pathetic misrepresentation once again of attempting to “merely run” – as opposed to configuring a machine with software.
Plain and simple Ned – our law is different and does not nudge toward Europe. Quite the contrary, Congress has shown (exactly as in Bilski that software cannot be taken out of the patent eligibility of 101.
Just like business methods.
and objectively determine through examination of its structure whether that circuit falls within the scope of your claims …
Certainly the terms I use allow one to objectively determine whether a particular apparatus falls within the scope of my claims – that’s a basic requirement of Section 112(b). However, I don’t know exactly what you mean by the limitation “through examination of its structure,” or where that particular requirement might come from. I’ve not seen it anywhere in my studies.
LOL – backpedal faster (again).
Translation: ‘configured to’ is structural language.
LOL
@ta boy
Yet another response that proves you have no argument to make against what I said.
Therefore, you clearly concede the point.
What you just wrote MM is EXACTLY what can be done with the so-called software claims. And, Lemley knows that.
backpedal faster,
Huh?
LB: They are structurally different from the prior art. However, those distinguishing structural differences are described to the skilled person in purely functional terms.
If the terms you use allow one skilled in the art to take a circuit (or any other article or composition) and objectively determine through examination of its structure whether that circuit falls within the scope of your claims, then the terms you are using are not “purely functional.” This sounds more like a disagreement about semantics than a disagreement about the underlying issue(s) …
Asked and answered many many many many times.
Anybody ever see Tr0 llb0y’s answer to the question? Anybody?
And, I am certain that those “functional” claims convey a very definite set of solutions to one of ordinary skill in the art. The problem is that the set is very large so that functional language is used.
Of course, Lemley knows that. You know that. You are both unethical, liars, and willfully ignorant.
Either stop whining or clearly state that your position is: that ALL PATENTS should be abolished
“Either stop whining or clearly explain when you stopped beating your wife!”
Max, the problem is that without defining what the prior art it, we don’t know what the drafters had in mind. If the prior art is any computer running any software, then I would agree that the statute nudges toward Europe.
Night, the British people turned on Turing, a great war hero for his work at Bletchley Park? I doubt it.
But they did turn out Winston after he won the war.
Ingrates.
Penultimate sentence should read: “However, those distinguishing structural differences are described to the skilled person in purely functional terms.
At the risk of co-mingling the legal terms with the terms of the art, one can’t claim the a new circuit solely based on its new “specifications.”
I didn’t say you could. I did say that when a claim includes a processing circuit, the relevant (i.e., distinguishing) aspects of that processing circuit (and of the claimed apparatus as a whole, in some cases) can be defined in purely functional terms.
It’s just that such a claim risks being tanked on the grounds that it’s described (or distinguished from the prior art) in purely functional terms.
Hmmm… I think we’ve had this discussion before. The claims I’m talking about aren’t “distinguished from the prior art in purely functional terms.” They are structurally different from the prior art. However, those distinguishing structural differences are described to the skilled person in purely functional differences. Where does it say that I can’t do that?
DH states “and do not understand what software does”
And is exactly right.
That’s also why the dependence on the word ‘technical’ fails right form the start. Software automatically passes the technical filter – by its very nature.
Thus you see the gobbedlygook treatment of an added ‘further technical effect’ dance, and the EP conflation in an attempt to make the term ‘technical’ mean something else, something much closer to the different words used in US jurisprudence: the useful arts.
And remember, US courts have already determined that there is no ‘technical arts’ test in US patent law. US patent law – at the most basic level – is not constrained to the technical. So even importing that word into US law – as is being attempted – will still not suffice to carry the anti-software patent agenda.
WHATEVER conflation, canards of Point of Novelty, mental steps doctrine and its negation by anthropomorphication and the rest of the semantic game-playing are all evidence of a philospohical battle to limit patent eligibility of something that no rational reasoning can support.
Plain and simple: software is a machine component, a manufacture created by man with a utilitarian purpose, and thus fully falls under the intended protection of patent law.
All else – and I do mean all else – is merely smoke and mirros, dust-kicking and agenda-seeking manipulation of law that can only have ill-effects throughout the patent system.
You quite miss the point that Congress has distinctly NOT used 101 to outlaw this (apparently) ‘abstract’ subject matter – and further, much like Bilski (actually exactly like Bilski, the Court will have to rewrite the actual words of Congress if it wants to hold that software is patent ineligible.
LOL – but please, contine to close your eyes and vacuously prattle on. After all, that is your specialty.
Ned runs away from my points, do you really expect any different behavior with yours?
Feel free to use the merry-go-round metaphor.
“And of course this is not to say that you can’t obtain a patent”
Translation: backpedal faster!
LOL – and Malcolm, how about your dissembling with the distinction between manufacture and composition?
What? What? I cannot hear you. What?
I was startled to read this today on Gene Quinn’s blog:
“Tax strategy patents are still patent eligible subject matter pursuant to Section 101, but for purposes of evaluating an invention under section 102 or 103 of title 35, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, is deemed insufficient to differentiate a claimed invention from the prior art.”
Sounds like “dissection” to me! Gene Quinn says he finds the AIA provision “bizarre.” I wonder why? I thought 103 was the place where he believed that all the filtering of j*nk was supposed to take place?
Malcolm,
Your QQ here is bogus, as it is clearly you that permeates this thread (and any such thread) with vacuous rants in pursuit of your agenda and away from any substantive discussion on the merits of intellectual property.
As just one minor example, you continue to dissemble when it comes to the scope (and differences) of copyright and patent protection. Clearly, such is beyond your ken – or at least beyond the script of your agenda.
You.
F001.
No.
One.
But please, keep yapping.
The term “manufacture” refers to articles that are made, and includes all manufactured articles.
The same rules apply to compositions of matter and articles of manufacture in this fundamental context (i.e., what must appear in the claim).
it is disingenuous to purposely confuse these words
Huh?
LOL – you seriously want me to repeat my post of 4:00?
And you accuse me of wanting to fling insults?
LOL – Come, man, use that ‘vaunted’ skill of English as a first language.
Learn to red.
Then explain.
Instead of vacuous QQ and dust-kicking, let’s see something (anything) substantive from you.
Do you need me to buy you some oven mitts first?
The metes and bounds of a composition of matter can not be defined in purely functional terms and “clearly” inform anyone of anything except what the function of the invention is.
No, but the relevant aspects of a processing circuit can.
This is impossible to respond to without seeing exactly what you’re referring to. At the risk of co-mingling the legal terms with the terms of the art, one can’t claim the a new circuit solely based on its new “specifications.” It’s the physical layout and electrical connections (the “relevant aspects”, no?) that need to be recited. That’s not “pure functionality.”
And of course this is not to say that you can’t obtain a patent on a claim that fails to meet these criteria. It’s just that such a claim risks being tanked on the grounds that it’s described (or distinguished from the prior art) in purely functional terms.
errr threw….
Asked and answered many many many many times.
Why the strawman Malcolm? Why the dissembling?
Let’s see some actual answers from you – for a change.
Maybe if Tr0 llb0y would s tf u with his insults and innuendo, he’d learn from LB what a decent discussion looks like. As it stands, Tr0 llb0y and NWPA seem to willfully do everything in their “power” (I use the term loosely) to prevent that discussion from taking place. Go figure.
I provided two phrases that describe two different acts
So Tr0 llb0y says. But rather than simply tell us what those ‘two phrases’ are, Tr0 llb0y would rather fling insults. Then again, that’s all Tr0 llb0y really does here, all day long. THat’s his specialty.
‘ve answered this
No, you haven’t. If you’d answered it so many times we’d all know the answer. So what’s the answer? Yes or no?
It’s yes, right? You believe that purely mental processes should be eligible for patenting? Right? Yes or no?
Simple question. Why not just answer it? What’s the problem, exactly? Ashamed? That seems the most likely explanation for your strange refusal to simply spit it out.
Doubtful, MacDrei, but then again why not just shovel some more CRP against the wall to see if it sticks.
“was being sincere”
So sincerity is a character trait you wish to have but intellectual honesty you disdain.
And you don’t see a problem with this?
LOL – you want to be genuinely disingenuous.
“Without any attempt to address the substance of my comment, Les merely requests an example of a claim of the type I referred to. ”
The request of a concrete example, was to aid in addressing the “substance” of your comment. If I had found the example on my own, you would have accused me of cherry picking.
6 provided an example since you couldn’t or wouldn’t and I showed how, just as in the case of software, claims in the “grown-up” arts are functionally claimed.
Both the gas and the “energy beam” of the “grown-up” art claim that 6 provided are functionally specified.
The claim preempts all uses of energy beams and gases with those functional properties whether known or contemplated by the inventor or not.
Either stop whining or clearly state that your position is: that ALL PATENTS should be abolished, comrade.
NWPA,
If only Leopold was consistent in this manner.
But far too often he acts like Malcolm’s personal lapdog and is more a party to the shenagins than a voice of reason against such dissembling.
I was startled to read this today on Gene Quinn’s blog:
“Tax strategy patents are still patent eligible subject matter pursuant to Section 101, but for purposes of evaluating an invention under section 102 or 103 of title 35, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, is deemed insufficient to differentiate a claimed invention from the prior art.”
because it reminded me of the EPO way of handling claims to business methods and programs for computers.
I wonder, did Rader CJ influence that particular piece of statute-drafting?
Let’s count some blue cars.
(said in the best Dishwalla tones)
The point was that the gas in the claim was functionally claimed. Sorry if the sarcasm through you.
One other point about this that I would make:
MM, 6, and AEAEAEIO, do behave abysmally on this board. They clearly lie, misrepresent, remain willfully ignorant, and have no desire to narrow the issues. They kick up dust and love it.
But, this board is a microcosm of what is going on in the broader world. We have Posner who pschotically makes up findings of fact. Lemley who remains willfully ignorant and commits ethical violations with none of the professors on this board caring. It is about taking home the money. We have Lourie who has devised a test where all the facts and law go on with one giant whoosh in his filthy brain. Frankly, Lemley, Posner, Lourie are worse than 6, MM, and AEAEIO.
They are far worse. Lemley is unethical and yet is cited by the SCOTUS.
Frankly, anon, I thought that LB’s response to MM was really good. It focused the discussion on the fact that it was MM’s burden to show why there was something wrong with the claims rather than go into the depths of MM’s bizarre misrepresentations.
MM tried to throw out a bunch of red herrings, but LB brought the discussion right back where it belonged. What is the matter with this claim. And, MM’s response. Sheer nonsense.
Perhaps you disagree but only feel compelled to voice your disagreement with others.
Or perhaps I disagree, so I express my disagreement by responding to MM with “No, but the relevant aspects of a processing circuit can.”
Perhaps you don’t understand what a grown-up conversation is like.
So, another thread ends with the Palin boys spewing forth endless nonsense. Anyone really care? If you do, read the whole thread. The Palin boys are ridiculous.
Somehow Ned I am sure that you won’t engage in a debate with me because you views are ridiculous.
I wonder if you English have a hard time with information processing (you seem stuck pre-1950) because you turned on the greatest computer scientist (Turing) ever to live because of his sexual orientation.
LOOK Palin boys (MM, 6, IAEAEAE)!!! Someone finally articulated your beliefs for you.
“can’t even bring himself to state his beliefs on the subject one way or another.‘
Blatant 1ie Malcolm. I’ve answered this and explained your strawman now hundreds of times.
But since you seem to now want to be big on explanations, explain (and that means more that derisively throw out a one-liner concerning sight-impaired squirrels) who was right in the Myriad case and why.
LOL – 30,000 plus mewling words of QQ and you have yet to use your ‘mastery’ of English as a first language to explain this.