Friday, September 9, 2011

BPAI gives no patentable weight to a "mental step" limitation

Takeaway: The Board gave no patentable weight to the limitation "at least one set of text that was authored not for any purpose related to creating or accessing the profile" because an objective reader of the claim could not determine the author's purpose. The Board found that the limitation amounted to a mental step and was therefore not to be given patentable weight. (Ex parte Gilmour, BPAI 2011.)

Details:

Ex parte Gilmour
Appeal 2009-003143; Appl. No. 10/135,2541; Tech. Center 2100
Decided  August 8, 2011
The technology on appeal related to profiling electronic documents. A representative claim on appeal read:
178. A machine-implemented method comprising:
   automatically constructing a profile of a first entity based on a plurality of sets of text, the plurality of sets of text including at least one set of text that was authored not for any purpose related to creating or accessing the profile;
   storing the profile in a machine-accessible storage facility;
   in response to an action of a second entity, identifying the first entity as meeting one or more criteria, based on the profile of the first entity; and
   outputting an indication to the second entity that the first entity meets the one or more criteria.
(Emphasis added.)
The Examiner rejected the above independent claim as being obvious over a combination of two references, Robertson and Barrett.

On appeal, the Applicant argued that the combination did not teach the limitation emphasized above. The Applicant argued that Barrett disclosed prompts which were authored specifically for the purpose of creating a viewer profile, "which is directly contrary to the claim limitation in question." The Applicant then noted that the final Office Action did not explain how Barrett taught the limitation, but instead only made the naked assertion that:
Barrett teaches monitoring a user's viewing preferences to create a profile. Preferences, which are viewed by a user, are included in a profile. Preferences, which are not viewed by a user, are not included in a profile, are not purposed [sic] for creating a profile (abstract, col. 2, lines 17-67).


In the Answer, the Examiner first noted that the Applicant's specification did not "support" the limitation at issue, and "thus, Examiner is entitled to give claim limitation its broadest reasonable interpretation in light of the specification."

The Examiner's Answer then explained how Barrett taught the limitation at issue, as follows:
The above information shows that only a single set of programs is selected and the other sets of programs from the programs in the viewer profile template are not selected to create the profile. In this case, the other set is program names, which are not selected, are authored not for any purpose related to creating or accessing the profile. The other set program names are represented as at least one set of text that authored not for any purpose related to creating or accessing the profile.


In a Reply Brief, the Applicant first responded to the Examiner's comment that the limitation at issue was not "supported' by the specification. The Reply Brief also rebutted the Examiner's explanation of Barrett

Finally, the Applicant argued that the Examiner had improperly dissected the claim limitation:
     Furthermore, to properly evaluate the invention as a whole, when applying the prior art, it is improper to dissect a single claim limitation into parts and then find disclosure of each part of the limitation in different references (or different places in the same reference), as the Examiner has done. Hence, with regard to claims 178 and 202, one cannot separate the concept of "a set of text [used to create a profile]" from the concept of "authored not for any purpose related to creating or accessing the profile". These concepts are inextricably linked to form a single limitation in claims 178 and 202, which cannot be dissected (i.e., a set of text that
is used to create a profile of an entity and authored not for any purpose related to creating or accessing the profile). To dissect this limitation into component parts when applying prior art vitiates its meaning.
     Accordingly, the Examiner cannot simply use some disclosure in Barrett of the general notion of "not for any purpose related to creating or accessing a profile," where that notion is unrelated in Barrett to any set of text that is used to create a profile, and then rely upon Robertson's general disclosure of "sets of text" to provide the rest of the claim limitation. To find the present invention prima facie obvious, the Examiner must first find some disclosure of a set of text that is used to create a profile of an entity but which is authored not for any
purpose related to creating or accessing the profile.


The Board affirmed the obviousness rejection by finding that the limitation at issue was not to be given patentable weight.  First, the Board noted that the limitation appeared to be intended use, as it "added no structure to the claim nor functionally changes the 'at least one set of text' that it modifies."

Furthermore, according to the Board, "authored not for any purpose related to creating or accessing a profile" was a mental step and as such, it was not entitled to patentable weight. Although the mental steps doctrine is typically used to analyze for compliance with 101, the Board found it also appropriate in assessing patentable weight.  
We find that this purpose is an undecipherable thought, fully within the mind of the author as he or she composed the text. We strongly question whether one can discern the true purpose of any text, such as an e-mail: was an author’s purpose to inform or misinform the sender or recipient; was the purpose the author’s self aggrandizement or humble flattery of the sender or recipient; was the purpose to acknowledge some debt or to seek relief from it or, as recited in this claim, to be part of a profile. No objective reader of a set of text knows for sure what the author’s purpose in authoring the text was, let alone knowing specifically whether its purpose was related to creating or accessing a profile. The purported limitation expresses a mere idea, a mental step taken by an author and unknown by any but that author, if indeed he can discern his real purpose in authoring the set of text.

Because this was the only limitation argued by the Applicant, and because the Board also found the references to be properly combinable, the Board affirmed the obviousness rejection.

One ALJ dissented from the majority's position. According to the dissent:
[T]he language of claim 178 does not require that someone discern the true purpose of the text. Instead, I find that the negative limitation contained therein is directed towards discriminating whether the text is related to creating/accessing a profile or not. 
Applying the broadest reasonable interpretation in light of the specification, the dissent found that the limitation encompassed "intercepting text, such as e-mails, that is generally not inputted into a profile template."

While Appellants’ choice of terminology, e.g., “authored” and “purpose”, could possibly draw one to conclude that an intended use may be at the horizon when read in isolation, I find that when the claim is read in its entirety and read in light of the specification, it becomes apparent that Appellant is merely attempting to discriminate one type of data from another and not trying to create some mind-reading phenomenon.

The dissent also found that the limitation did affect the claimed functionality, and was therefore not intended use:
When looking at devices, it is understood that the structure of a data file does not change with the type of data placed therein. However, I am not convinced that the same analysis applies to the method steps of the present invention. ... The step of including a set of text with a particular characteristic affects the functionality depending on the type of text intercepted. Accordingly, I disagree with the Majority that the claimed “at least one set of text” should not be given any patentable weight.


My two cents: The Board's use of the mental steps doctrine to determine patentable weight seems out of left field. I don't get it. If an "objective reader" could not figure out the meaning of the limitation at issue, an indefiniteness rejection would have been more appropriate.

Nor do I see how you come up with intended use, because the use was actually claimed.

Then, with its talk about the limitation not providing any "functional changes" to the claimed text, the Board sounded like it was trying to invoke the Non-Functional Descriptive Material doctrine. But, as the dissent noted, NFDM is not applicable here, since the claimed data does affect the functionality. Namely, it affects the claimed construction of a profile.

Seems to me that the Board just didn't like this claim, but didn't know how to reject it, so it tried a shotgun approach: intended use, quasi-Non-Functional-Descriptive-Material, mental steps ...

I feel strongly that the claim was badly written from an enforcement point of view. I don't want to put intent in my claim because that gives the accused infringer plenty to argue about. Plus, what sort of proof do you use to show the author's "purpose" in creating a text?

Let's assume the limitation has patentable weight, and look at the Examiner's position. Best I can tell, the Examiner's logic is as follows:
  • Viewer is presented with information about multiple television programs
  • Viewer's choices determine which programs are included in a viewer profile
  • Those programs which are included read on "authored for a purpose related to creating or accessing the profile"
  • Those programs which are not included read on "authored NOT for any purpose related to creating or accessing the profile." 
Is the Examiner's position devious, or way off-base?

Any program not used in creating the profile is ... by definition ... "NOT for any purpose related to creating the profile". On the other hand, that doesn't take into account the claim term "authored." How does the term "authored" fit with the reference's TV programs?

The Applicant characterized the claim language as "a set of text used to create a profile" where the set includes a text NOT authored for any purpose ... " If the claim really said that, I think the Examiner is wrong. Because the unselected programs the Examiner is relying on to meet the "not authored" limitation are not included in (are not "used to create") the profile.

But the claim doesn't say that. Instead, the claim says "automatically constructing a profile of a first entity BASED ON a plurality of sets of text". And the reference does base its profile construction on the entire group of programs: those that make the cut and are selected for inclusion in the profile; and those that are not selected for inclusion in the profile. So isn't the profile constructed BASED ON the entire set of programs?

In total, I think the Examiner's position isn't off base in quite the way the Applicant argued, but does have some holes in it.

28 comments:

  1. As this decision was written by one of the worst lifer APJ's they have over there, I wouldn't put too much stock in it.

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  2. Bad claim drafting, bad claim rejection, bad decision by the majority....this is the stuff case law is made of. The applicant should take the dissent and go to the Federal Circuit. Even if the BPAI didn't given any patentable weight to the language, you can bet your bottom dollar that a federal judge will be looking at that language during claims construction.

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  3. " I find that when the claim is read in its entirety and read in light of the specification, it becomes apparent that Appellant is merely attempting to discriminate one type of data from another and not trying to create some mind-reading phenomenon"

    Whereas the rest of the universe finds that when the claim is read in its entirety and read in light of the specification, it becomes apparent that Appellant is merely attempting to discriminate one type of data from another BY trying to create some mind-reading phenomenon.

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  4. "The step of including a set of text with a particular characteristic affects the functionality depending on the type of text intercepted."

    There is no such step of "including" recited ya jackarse.

    I swear to go d how some of these people get to be APJ's is a mystery. It's as if they take them having been through lawlschool to somehow have prepared them to not be a jackarse.

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  5. And just FYI karen you're right about the 112 probably being more appropriate.

    However, you're probably wrong that we shouldn't just discard mental steps for the purposes of 103, it's just that no courts have had the balls to write that down for you just yet. They probably will as they become more common.

    In this particular case though, that most certainly is an intended use limitation, and if you know what they are that should be apparent to you. To be specific, in this case it is a specifically unintended use limitation. That is, a negative intended use limitation.

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  6. The "non-functional material" doctrine, whereby such material is "not given patentable weight" has grown like wildfire among APJs, even while the CAFC has ignored the issue, and earlier CAFC decisions sharply undercut it (see In re Gulack, "[T]he board cannot dissect a claim, excise the printed matter from it, and declare the remaining portion of the mutilated claim to be unpatentable.").

    For example, search the BPAI reading room for "Curry AND Nehls" - resulting in 96 decisions, apparently all or most holding that non-functional material can be ignored.

    For example, one APJ likes to quote the following:

    "The informational content of non-functional descriptive material is
    not entitled to weight in the patentability analysis. See In re Lowry, 32 F.3d
    1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the information
    content of a memory. . . . Nor does he seek to patent the content of
    information resident in a database.”). See also Ex parte Nehls, 88 USPQ2d
    1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d
    1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003)
    aff’d, Rule 36 (June 12, 2006); Ex parte Mathias, 84 USPQ2d 1276 (BPAI
    2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006)."

    Thus, the APJ is relying on:

    1. In re Lowry, the case that held that data structure mediums *are* patent eligible - a LANDMARK decision where the CAFC REVERSED the BPAI for overzealously applying the printed matter doctrine and ignoring claim language
    2. Nehls, a precedential opinion of the BPAI applying Gulack and Ngai, while citing Curry and Mathias with approval
    3. Curry, an "informative" decision followed by a Rule 36 affirmance
    4. Mathias, an "informative" decision followed by a Rule 36 affirmance

    Thus, the APJ is relying on a precedential CAFC decision that stands for the exact opposite of what the APJ relies on it for, and a precedential BPAI decision that the CAFC has never blessed (and that itself relies on CAFC decisions that were non-precedential Rule 36 affirmances).

    The fact that the CAFC made Curry and Mathias Rule 36 affirmances is telling, indeed - it means that they have no precedential value, whatsoever, presumably because the CAFC felt uncomfortable with the BPAI's reasoning. They probably also felt uncomfortable ignoring explicit claim language, and felt uncomfortable doing so because of a judge-made exclusion to patentability (try to find the printed matter doctrine in 35 USC 101, 102, or 103).

    And yet BPAI citations like these continue to grow like a wild fire.

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  7. In re "non-functional descriptive material" -- suppose a literary work (a novel) is stored in a computer memory in binary form. Would the text of the novel be given weight when comparing that computer memory to the prior art (say, a prior art computer memory that stores a different novel)?

    If so, why?

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  8. "If so, why?"

    Give us real claim language (or at least hypothetical claim language). The claim language matters.

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  9. I just looked at the BPAI decision. They talk about "mental steps" not being patentable subject matter. However, that is different than ignorning a claim limitation from a claim otherwise directed to statutory subject matter.

    I wonder how they reconcile ignoring their opinion with MPEP 2143.03, which states that "All Claim Limitations Must Be Considered." This cites a CCPA case of In re Wilson, which states "All words in a claim must be considered in judging the patentability of that claim against the prior art."

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  10. A tangible, non-transitory computer memory comprising:

    binary digits coded as ASCII text comprising the string "The claim language matters? Really? See Research Corp. v. Microsoft, 97 USPQ2d 1274, 1281 (Fed. Cir. 2010)," wherein the binary digits when loaded into the memory change the organization of charges in the memory, and wherein when loaded into a computer-resident volatile memory causes the computer to actuate a solenoid and open a press, and wherein the string is displayed on a big display when loaded into, and rearranging the charges of, a video memory of a workstation having a big computer brain.

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  11. "If so, why?"

    Various responses:

    1. Shouldn't the question be, "why not"? Patent law is governed by the Patent Act, right? Do you find anything in the Patent Act authorizing an examiner to ignore such claim language?

    2. If you agree that, by its terms, the Patent Act requires one to consider such language - but you want to rely on a judge-made exception, like the printed-matter doctrine - then the question is: is the exception, as set forth in precedent, as strong as you suggest here?

    3. More importantly - what is the motivation for the exception? Even if it's a judge made exception now, why shouldn't it be overturned?

    4. In view of 3, ask yourself: suppose the printed matter doctrine was to be abolished, what's the worst thing that would happen? What is the nightmare scenario that would keep you up at night?

    5. Here's my answer: if we abolished the printed matter doctrine, it means that inventor/authors could obtain another kind of intellectual property - a utility patent - to protect works that traditionally would be protected by copyright. But the patent would be far more expensive to obtain, and its term would be far, far shorter. The patent would also be almost impossible to infringe, because a modification, as little as a single ASCII character modification, could avoid infringement - especially so if the text is necessary to overcome the art (e.g. by amendment), thereby denying the DOEquivalents.

    In my view, a world in which inventor/authors can also get much more expensive IP rights, with far, far shorter terms, that are almost impossible to infringe, for works that they genuinely did invent and that are not anticipated or obvious - that is not such a nightmare scenario at all.

    6. The situation here, with the printed matter doctrine, is very similar to that in JEM Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc. (534 US 124). There, Ag Supply argued that sexually reproducing plants are not patentable subject matter within 101, because the Plant Patent Act of 1930 (PPA) and the Plant Variety Protection Act (PVPA) are the only, exclusive means of obtaining patents for plant life (or so Ag Supply argued).

    The Supreme Court disagreed - you can get a utility patent as well as a plant patent on plant life. The nightmare scenario that Ag Supply painted was nothing to be afraid of at all.

    See MPEP 2105.

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  12. The CAFC has provided a complete response to points 1-6.

    "If we were to adopt Ngai's position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product. This was not envisioned by Gulack. Ngai is entitled to patent his invention of a new RNA extraction method, and the claims covering that invention were properly allowed. He is not, however, entitled to patent a known product by simply attaching a set of instructions to that product." In re Ngai, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004).

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  13. This wouldn't be the first time that the CAFC made a mistake.

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  14. "Really? See Research Corp. v. Microsoft, 97 USPQ2d 1274, 1281 (Fed. Cir. 2010)."

    Nice case ... stands for the proposition that a method, OBVIOUSLY performed by a computer, is statutory subject matter. Anyone skilled in the art wouldn't think of performing any other way. A method performed by a computer passes the MOT test. No need to explicitly recite a machine when it is evident that a machine is used. Claims are used to distinguish the invention -- not enable it. Pretty simple.

    "A tangible, non-transitory computer memory."
    Sounds like a machine to me.

    FYI -- a nice little quote from In re Lowry:
    "A “printed matter rejection” under Section 103 stands on questionable legal and logical footing. Standing alone, the description of an element of the invention as printed matter tells nothing about the differences between the invention and the prior art or about whether that invention was suggested by the prior art"

    BTW -- the claims aren't talking about "printed matter." Printed matter isn't being claimed per se. What is being claimed is "automatically constructing a profile of a first entity," and the profile is based upon a characteristic of the texts.

    Regardless, the claim language was sloppy, and the claim language probably should have been ignored, but not based upon a "mental step" analysis.

    If I claim "forming a plastic widget with saddened heart because the operator's football team lost that day," the question to be answered is the "plastic widget" that was formed, as claimed, any different? Did the "saddened heart because the operator's football team lost that day" change anything about the widget? The answer to those question are very likely no.

    The important language is "the plurality of sets of text including at least one set of text that was authored not for any purpose related to creating or accessing the profile."

    What they should have claimed "the plurality of sets of text including at least one set of text that, as created, was not related to creating or accessing the profile."

    Now that I look at the language, I see the problem faced by the attorney. You are trying to claim creating a profile based upon a set of text that was never intended to be used to create/access the profile. The easy way to get around that is to add the step of creating the set of text to the method, but it could probably be created by a third party, which means you don't want to add that step in for infringement purposes.

    The more I think about claim, the more I just cannot see how it can be patentable. All it takes is to find some "profile generation device" that goes out and automatically generates a profile from data that wasn't specifically intended to be included within a profile. Everything else is fluff.

    What I really dislike about many Examiners and many members of the BPAI is that instead of going out and finding a good reference, they just half-ash the analysis and hope the BPAI bails them out, which many do.

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  15. September 11, 2011 3:26 PM
    d0c87888-5010-11e0-8352-000bcdcb8a73 quoted the CAFC in Ngai:

    "If we were to adopt Ngai's position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product."

    But the Federal Circuit is misstating the law. A utility patent requires much more than "new"-ness. It also requires compliance with the non-obviousness standard of 103 and the specification standard of 112. If someone obtains a patent on an instruction manual, and then alters a single ASCII character, he doesn't necessarily get a second patent. The new application must also satisfy 103 and 112. The new application could potentially raise serious concerns about (obviousness-type) double patenting. The author in Ngai appears to be oblivious to all this.

    More importantly, I asked you about the *policy* behind the printed matter judge-made exception (a normative question), rather the state of the exception (a descriptive law). If the exception is the current law, but a bad law, it should be changed.

    Suppose that a person can get a new patent just by creating a new and non-obvious instruction manual. Why would that be such a terrifying thing? Would the world stop?

    After all, I can obtain millions of copyrights by making relatively small changes to my own instruction manual, over and over again - and these copyrights are much less expensive and have far, far longer terms than utility patents. In fact, over the course of my life, I probably have created millions and millions of copyrights. These millions of copyrights haven't hurt the U.S. economy or innovation in the arts, not a bit. Why should utility patents be rationed out so much more than copyrights? There is no good answer.

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  16. "The nightmare scenario that Ag Supply painted was nothing to be afraid of at all."

    Tell that to all the farmers getting sued over seeds now. That decision laid the groundwork for the nonsense we have going on now.

    Just because you, in your ivory tower of patent prosecution aren't affected by something doesn't mean it isn't a nightmare for other people ya tard.

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  17. "The new application could potentially raise serious concerns about (obviousness-type) double patenting. The author in Ngai appears to be oblivious to all this."

    The author in Ngai is simply not as ret arded as you are. They are aware that people who are not reta rded will simply wait until the first patent is expiring to file their new application and thus avoid double patenting.

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  18. Let me get this straight, you want judges to create and enforce limitations on patents because some person might wait roughly 17 years to obtain a patent on an improvement to an instruction manual that provides about the same protection as a copyright, but costs $10,000 more and has a term ~80 years shorter? And you're afraid that they're going to do this three, four, or five times over the course of their life? Even though they could get millions of copyrights in the same period without paying anything?

    You're kidding, right?

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  19. "They are aware that people who are not reta rded will simply wait until the first patent is expiring to file their new application and thus avoid double patenting."

    Talk about tarded????? Who the F cares if someone patents an old product with "new" instructions attached to it. A patent's primary value is its ability to prevent someone else from practicing the invention. If I sell the same f'n product with the old instructions (or no instructions at all), I don't infringe.

    Anybody who is concerned about this issue is a tard. Any patent obtained on an old product with "new" printed matter is about as value as the paper it is printed on.

    Now that we are through disposing of this issue ... why don't yu work down the backlog 6? In the meantime, I'm going to generate several thousands dollars of profit today.

    "You're kidding, right?"
    No ... 6 isn't kidding. His ability to see the "big picture" is hampered by the kaleidoscope he is looking through.

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  20. "Let me get this straight, you want judges to create and enforce limitations on patents because some person might wait roughly 17 years to obtain a patent on an improvement to an instruction manual that provides about the same protection as a copyright, but costs $10,000 more and has a term ~80 years shorter?"

    No I don't want them to create it. They already did. I would prefer for them to maintain it though.

    "And you're afraid that they're going to do this three, four, or five times over the course of their life?"

    I'm not afraid of this happening no. That's because the courts will maintain their position.

    No, I'm not kidding.

    "Who the F cares if someone patents an old product with "new" instructions attached to it."

    Pharma companies for one care a lot about that. Indeed, currently there are cases involving just that situation where they're trying to determine if the one company induced someone else into infringing. If the courts recinded the PMD then the pharma companies would simply claim pill bottles with new instructions for each new treatment regime for old drugs and then make direct infringers out of the bottle manufacturers or have a very clear case of inducement if the bottle manufacturers induced someone else to attach such instuctions.

    But that's just one situation in the absurd regime you propose, and the fact that there are many absurd situations in the absurd regime you propose is reason enough for courts to never take back what they've put in place.

    "Now that we are through disposing of this issue ... why don't yu work down the backlog 6?"

    I am.

    "In the meantime, I'm going to generate several thousands dollars of profit today."

    Filing your PMD invalidated patents? Gl with that.

    "No ... 6 isn't kidding. His ability to see the "big picture" is hampered by the kaleidoscope he is looking through."

    My kaleidoscope is better than yours, objectively speaking.

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  21. "Indeed, currently there are cases involving just that situation where they're trying to determine if the one company induced someone else into infringing."

    Oh pleasuh ... stop making up sheet. Anybody who gets caught infringing a claim because they weren't smart enough to put in different "printed matter" wins the knucklehead award from 6. Granted, I don't think it'll ever happen, so the award will stay with you.

    "the pharma companies would simply claim pill bottles with new instructions for each new treatment regime for old drugs and then make direct infringers out of the bottle manufacturers or have a very clear case of inducement if the bottle manufacturers induced someone else to attach such instuctions."
    I'm not sure who is credible -- you or the guys on the TV show "Ghost Adventures."

    "Filing your PMD invalidated patents? Gl with that."
    Written over ten thousand claims -- none of which should have a problem with PMD.

    "My kaleidoscope is better than yours."
    I don't look at the world through a kaleidoscope.

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  22. "Oh pleasuh ... stop making up sheet"

    What are you drunk? I'm not making this up. The case involves a company that claimed a method of treating some condition with some specific amount of some drug on some schedule. They sued a company doing nothing but making the old drug who was putting instructions on their labels to use that specific amount of drug on that specific schedule for inducing infringement. If you'd been paying attention at PO you'd remember the case, ask MM about if you want the name, I'm sure he remembers. If the company that "invented" that treatment method could patent pill bottles with instructions on them they'd be overjoyed.

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  23. The argument and the claim which was made over here seems purely wrong, I think the weightage should be given to mental step as they are productive too at some point.

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  24. In re Xiao

    “printed matter” obviousness no need to follow KSR analysis.

    Is it 101 rejection???

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  25. >In re Xiao “printed matter” obviousness no need
    >to follow KSR analysis. Is it 101 rejection???

    The Fed Cir didn't frame it as a 101, and I don't see that it should have.

    Printed matter is an old 102/103 doctrine which says some limitations are not given patentable weight: “patent applicants cannot rely on printed matter to distinguish a claim unless ‘there exists [a] new and unobvious functional relationship between the printed matter and the substrate.’” No patentable weight means not considered in the obviousness analysis ... it's as if the limitation wasn't even there.

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  26. but if KSR analysis indicates an invention is unobvious (as in In re Xiao), can the invention still be obvious?

    In determining if the limitation was there, is 103 analysis (unobvious functional relationship)involved? If yes, why not KSR to prevent hindsight reasoning or to prevent decision makers personal preferences?

    In In re Xiao, Examiners and Judges believe computer geeks would NOT feel DOS/UNIX wild-card ("*") a convenience substitute, therefore no patentable weight.

    “false label” in In re Miller would reduce mental burden for Cooks, while wildcard label “*” would not reduce mental burden for Computer geeks ( they know “*” is “false label” already? )

    should the old 102/103 doctrine be modified after strict TSM is gone??

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  27. >In determining if the limitation was there,
    >is 103 analysis (unobvious functional
    >relationship)involved?

    I haven't thought much about that specific question.

    But the way I read Xiao, the court didn't reach the question of whether the relationship with UNobvious. Because the Fed Cir found no functional relationship at all:

    "More importantly, the wild-card labels lack a true functional relationship with the claimed lock."

    The Fed Cir distinguished the facts of Xiao from earlier cases Gulack and Miller, where functional relationships did exist. And were novel and non-obvious.

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  28. >>Because the Fed Cir found no functional relationship at all:

    In Miller “the legend yielded a new and nonobvious invention”, whereas “the wild-card labels lack a true functional relationship with the claimed lock”

    That is, to establish “a true functional relationship”, “the wild-card labels” must yield a new and nonobvious invention.

    In other words, we feel “the wild-card labels” does not “yield a new and nonobvious invention,” therefore, it does not have “a true functional relationship”; consequently, we do not have to consider the issue of UNobviousness.

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