Monday, July 8, 2013

Board decisions involving Written Description rejections of computer readable medium claims

Once Examiners started issuing lots of § 101 rejections for computer applications, Applicants started to respond with amendments to turn non-CRM claim into CRM claims. If the spec didn't contain the magic words "computer-readable medium," the amendment often triggered a rejection under § 112 First, Written Description (the "possession" requirement).

In this post, I'll take a look at some PTAB decisions involving Written Description rejections. It's a mixed bag, with some affirmances and some reversals. 

The Board reversed a Written Description rejection in Ex parte Davis (PTAB 2011).  The originally filed claims recited "a computer readable medium or media having thereon a method." The Examiner gave a § 112 First, Written Description requirement to this claim, alleging that "there is no support in the originally filed specification for a computer readable medium or media." The same claim was also subject to an indefiniteness rejection, as it was allegedly "unclear how a computer readable medium could 'have thereon' a method."

To overcome the indefiniteness rejection, the Applicant amended the claim to recite "a computer readable medium encoded with computer executable instructions which, when executed by the computer cause the computer to perform the steps of." With respect to the enablement rejection, the Applicant made two arguments.

First, the Applicant noted that "this application is drawn to computer based lookups by collisionless direct tables and CAMS and inherently includes [support] for a computer readable medium." Second, the Applicant noted that the original specification "states that the control function 18 which controls the operation of the CAM 10 and hashing function 16 is implemented in hardware or software." The Applicant concluded that "a computer readable medium necessarily flows from such a software implementation."

The Examiner maintained the rejection, and indicated that "this evidence does [not show] sufficient support in the original disclosure for the specific implementation using a computer readable medium which is current claimed."

The Applicant appealed and repeated these same arguments for the enablement rejection. In the Answer, the Examiner elaborated on the rejection:
In other words, the Applicant is stating that although explicit support for the claim limitations ... are not included in the original disclosure, this specific software limitation is inherent. [However.] the mere suggestion of a software implementation ("A control function (either hardware or software) 18 is provided...") only suggests support that software programming can be used instead of hardware and it does not provide adequate support for a computer readable storage medium or computer performing specific steps based on instructions stored in such a medium as presented in the claims. ... [T]he suggestion of a software implementation would only suggest that one of ordinary skill in the art can perform the desired function by writing the appropriate software program intead of hardware and does not provide adequate supoprt for a computer readable storage medium. ... This minor suggestion of a software implementation is the closest evidence of support for this subject matter in the application as originally filed. Examiner believes this specific implementation is new matter which was added after the original disclosure.
The Applicant filed a Reply Brief to address the Examiner's contentions:
Storing data in memory such as a content addressable memory (CAM) in the cited portion of the originally filed specification obviously comprehends storing "computer instructions on a computer readable medium" [as recited in the claims at issue.] Content addressable memory is known to one skilled in the art as a special type of computer memory that is searched to look for particular data stored therein on constrast to random access memory (RAM) which returns data stored at that address. It is inherent that computer memory such as content addressable memory is implemented in a "computer ('hardware') having computer readable storage medium" .... The Examiner's position renders the concept of interpreting the disclose as "one skilled in the art" meaningless if this language does not lead to implementations as claimed.
The Board disagreed that a computer readable medium was inherent in the specification. The Board, however, reversed the rejection on a different ground: the originally filed claims explicitly recited "a computer readable medium or media having thereon a method."

The Board affirmed a Written Description rejection in Ex parte Niemi (PTAB 2013). The Applicant added a new claim to "a computer program embodied on a computer readable medium, said computer program configured to control a processor to perform ..." The Examiner rejected the new claim under § 112 First, Written Description, alleging that "the phrase 'computer readable medium" is not properly described in the specification."

The Applicant responded to the Enablement rejection by referring to FIG. 4:
     [A] process is illustrated which defines a new event package for event registrations of a user to be implemented by a registrar and used by a presence server 303.  A computer terminal 123 or laptop 112 which may include a computer readable medium (see lines 23-33 of page 7 of the specification) A  computer readable medium may be regarded as a computer memory which a computer terminal 123 or laptop is certain to include. Or, one of ordinary skill in the art is certain to conclude that a terminal 123 or laptop 112 includes a computer readable medium in order to carry out the functions of such a computing device.
... The presence server 303 may also be a computer readable medium because it also has a memory. Among the various operations performed in claims 38 and 39, each of these operations is performed with reference to the computer readable mediums provided by the presence server or the user. Therefore, the specification provides support for a computer readable medium, and claims 38 and 39 are in compliance with §112, first paragraph.
The Examiner maintained the rejection and went final. The Applicant appealed and made the same arguments in the Appeal Brief. The Examiner provided no additional information in the Answer.

The Board affirmed the rejection. First, the Board found that the particular page of the specification relied on by the Applicant did not describe a computer readable medium, and in fact referred to FIG. 1, not FIG. 4 as stated by the Applicant. Second, the Board found that computer terminal 123 or laptop 112 "is not identified to contain computer readable media for the entire process of FIG. 4 to embody the entire claimed process."

The Board reversed a Written Description rejection in Ex parte Visser (PTAB 2013). The application claimed priority to an EPO application, and the originally filed claims recited:
      11. A computer programme comprising instructions to produce and display an image ... and comprising instructions to perform the steps of ...
To overcome a 101 rejection, the Applicant amended to
     11. A computer program encoded on a computer readable medium for causing the computer to execute a method to produce and display an image ... and causing the computer to perform the acts of:
The Examiner issued a § 112 First, Written Description rejection and alleged that "the claim language pertaining to 'a computer readable medium' was not described in the originally filed specification."

Before appealing, the Applicant traversed the rejection and argued that "one skilled in the art would have no trouble whatsoever understanding that a computer program, as specifically recited on page 7, line 27, is stored in a memory or a computer readable device." When the Examiner maintained the rejection and went final, the Applicant argued again, this time referring to a paragraph in the specification reading "manipulations of the object data set take place within the central processor of the computer".

When the Examiner maintained the rejection and went final, the Applicant appealed.
On appeal, the Applicant quoted a paragraph in the specification that read "manipulations of the object data set take place within the central processor of a computer." The Applicant then argued that this shows possession:
As is universally known in the art, all processors contain on board memory and all computers need memory to function. The instructions on which computers operate are all stored in a computer readable storage medium (e.g. memory).
The Examiner's Answer responded to these arguments by noting that while the specification describes processor a enabling manipulation of an object data set, "the processor does not cause the computer to execute a method to produce and display an image of a multidimensional volume as recited in claim 11."

The Board agreed with the Applicant's statements about how a person of ordinary skill in the art would understand the specification, and so reversed the Written Description rejection.The Board used a technical dictionary to supplement its analysis:
Appellant’s “central processor of a computer,” also known as a “microprocessor” is defined as “[a] central processing unit (CPU) on a single chip” such that “[w]hen memory and power are added to a microprocessor, all the pieces, excluding peripherals, required for a computer are present” (emphasis added). MICROSOFT® COMPUTER DICTIONARY 338 (5th ed. 2002). Because the Specification discloses a “central processor of a computer,” one of ordinary skill in the art at the time of the invention would have recognized that the computer includes a memory, thus providing written description support for a “computer readable medium.”
The Board reversed a Written Description rejection in Ex parte MacKouse. The Applicant amended the computer-implemented method claims to instead recite "a computer readable media having stored therein instructions." The Examiner rejected the claims under § 112 First, Written Description. According to the Examiner, the specification did not disclose a computer-readable media, and as a result there is "no evidence that the inventor was in possession of the claimed concepts involving a computer-readable media."

The Applicant responded with two arguments in a Pre-Appeal Brief. First, "original claim 1 recited a 'computer implemented' method [and] computers inherently include computer-readable media." Second, the specification disclosed "stored procedures such as SQL procedures."

When the application was forwarded to appeal, the Applicant beefed up the stored procedures argument in the Appeal Brief:
A person of ordinary skill in art would understand the pages 46-65 of Applicant's specification to be a detailed description of stored computer programs ("stored procedures, PL/SQL stored procedure," "batch processing," "Java program," etc.) that could be used to implement the claimed invention. ... Inherently, in order for computer programs to be 'stored,' they must be stored in 'computer readable media.
The Examiner's Answer included additional information. The Examiner explained that the "program" disclosed in the specification is non-statutory subject matter, and the claimed CRM is non-statutory subject matter since that term typically covers signals, "particularly when the specification is silent."

The Applicant filed a Reply Brief and argued that the word "stored" in the the preamble excluded signals.

The Board reversed the rejection. The Board first found that the specification "provided a detailed description of stored computer programs (e.g., stored procedures, PL/SQL stored procedure, Java program, etc.)" to implement the processes of the claims at issue. As a result, the Board found that  "the Specification sufficiently demonstrates that the inventor had possession of a tangible medium to store the software program."

The Board affirmed a Written Description rejection in Ex parte Ohwadi (PTAB 2010). Claim 15 was originally directed to "a software element ... operative to effect or permit a download of a polling element." In response to a § 101 rejection, the Applicant amended to recite "a software element on a computer readable medium." The Examiner maintained the § 101 rejection and also added a rejection under § 112 First, Written Description. According to the Examiner, there was no disclosure for the CRM, only a mention that "the application may be stored on a device" and a PC 10 illustrated in FIG. 1.

The Applicant appealed. The Appeal Brief argued that a POSITA would understand from the specification that the "computer method disclosed therein may be provided on a computer readable medium." The Applicant further argued that the "disclosure of computer implemented methods would imply to the skilled person the use of computer readable media."



The Examiner elaborated on the rejection in the Answer as follows:
The disclosure of  [device with storage and a PC] is not similar in scope to the term "computer readable medium" ... [According to the Dictionary of IEEE Standards Terms], the term "computer readable medium" includes both storage and transmission medium, this scope is different from what was disclosed in the instant specification. 
The Board affirmed the rejection with the following explanation:
Appellants’’ arguments supra (App. Br. 7) fail to point to any specific portion of the Specification that would have purportedly conveyed with reasonable clarity to those skilled in the art that Appellants were in possession of the disputed claim limitation (a computer readable medium). Thus, we find Appellants have made no showing explaining why a person of ordinary skill would have understood, at the time the application was filed, that the description requires a computer readable medium.
(Emphasis added, original citations omitted.)
My two cents: Every one of these rejections should have been reversed.

The Board doesn't give the person of ordinary skill in the computer arts enough credit. When such a POSITA comes across "computer implemented method" or similar phrasing, the POSITA immediately appreciates that this encompasses a software implementation of the method. The POSITA further appreciates that a software implementation requires a processor to execute the instructions making up the method, and storage from which to execute the instructions. The POSITA further appreciates that "computer readable medium" (and variants of that phrase) covers such storage.

I just don't see how anyone who has ever programmed a computer can question the truth of these statements, or the conclusion drawn from them that a mention of "computer implemented method" does show possession of claims to a CRM.

Now, the Board does go off track if the phrasing of the Applicant's arguments suggest that the CRM is "obvious" in light of the spec. Don't say this, as obvious is the wrong standard for Written Description. I've also seen the Board treat Applicant arguments about what the spec "implies" as "obvious" arguments. (See my post here for my thoughts on why the Board is mistaken, and stuff implied by the spec do suffice for written description.) So you gotta stay away from the word "obvious" and I'd probably stay away from "implied" also. Point to where computers are mentioned in your spec, point to where the spec ties those computers to the claimed functionality, and explain all that a POSITA takes away from these sections.

To increase your chances of winning, don't rely solely on attorney argument. Refer to definitions or technical encylopedias. Or if you really want to have the best shot at winning, get a declaration under § 1.132 to explain this stuff.

33 comments:

  1. See? What did I tell you? Not one of these jackof fs knows sht about 112 first. They go on and on about "new matter" where no CRM is disclosed. And that may or may not be given the specific case, but the bigger issue is that, undoubtably, not one dam application amongst them gives any indication as to what the species encompassed by all these functionally recited genus claims encompass are, or how they are related to one another. Indeed, not a dam one of them shows one dam species. Doing so would be known as showing possession of the entire genus. And not one dam application does so. They lack possession at an even more basic level than the "new matter" the examiners like to harp on about.

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    1. >not a dam one of them shows one dam species.
      >Doing so would be known as showing possession of the entire genus.

      When you say "species" in this context are you referring to the implementation mechanism, ie, an ASIC, an FPGA, a processor executing software, etc ? I'm guessing that's not what you meant, since the Spec usually does *mention* various implementation mechanisms.

      Or are you saying that the Specification didn't provide enough *detail* about how to implement the recited functionality for a given species? ie, that the Spec didn't provide enough *detail* about how to implement the recited functionality on a processor, in an ASIC, etc.

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    2. "When you say "species" in this context are you referring to the implementation mechanism, ie, an ASIC, an FPGA, a processor executing software, etc ?"

      W t f is wrong with you Karen? The Species of instructions. You know, the usually dam near infinite group (genus) of 1's and 0's that are supposedly on the medium?

      Though sure, what you mention is one group of species within the genus, but beyond that, go ahead, show us a subspecies (under your way of looking at species), i.e. show us the species of the instructions not the device type, show us the sequence of 1's and 0's. Go ahead. Show us these little instructions that are on there. And tell us how all the subspecies are related to one another in a fashion that they all produce the same "function".

      Here soon we'll have upwards of a million software patents and not a dam one shows what the structure involved is even in one mo fin' embodiment and will not be usable in the future for rejections of any other application that just so happens to want to claim yet another functionally recited genus that includes that same exact string of 1's and 0's. We'll have entire buildings worth of disclosure if they were printed out, and not one g d reference worth a da m. Whereas, if we required even one embodiment, even one, of these instructions be shown, when we hit a million softiwaftie patents it'll be all but impossible to draft around those strings of 1's and 0's. As is, software patenting can only go on forever because nobody knows w tf STRUCTURE, i.e. the species of the string of 1's and 0's is really disclosed in any of the apps. And so it is not searchable at all save with respect to an arbitrarily picked out of the sky "function".

      The quid pro quo here is absurd, the office and the public get possession of nothing but a function supposedly of a disk from the application, because that is all the applicant ever possessed (in most cases at least) and the applicant gets a product claim for an entire genus of products with little strings of 1's and 0's on where nobody even knows what all strings of 1's and 0's are covered by the patent or disclosed by it. And in no other art do we permit this, though we sure could and the people in Bio and my art would go nuts patenting functional sht all day long. There is a reason why you rarely see functional langauge in applications in many arts, and it is because they have a treasure trove of STRUCTURES (what in softie apps would be the 1's and 0's) over which you will be rejected regardless of your functional language describing. But oh no, we wouldn't want to make such a treasure trove of art in this art. That would make patenting functions on a disk all but impossible.

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    3. Show us these little instructions that are on there.
      One skilled in the art does not need them. A patent specification is written for a person of skill in the art, and such a person comes to the patent with the knowledge of what has come before. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).

      And in no other art do we permit this

      What is claimed is "a board screwed to a plank with a screw." The specification only mentions a screw.

      Where is the 112 rejection? There is no mention of the type of screw (there are hundreds/thousands), the material, the dimensions -- anything. In fact, the term "screw" sounds awfully functional to me.

      One skilled in the art knows what a screw does -- no need to explain it any further.

      What is claimed is "lighting the sign with a light." You going to 112 rejection that? There are a gazillion different types of lights? Don't they perform the same function -- i.e., lighting?

      One skilled in the art knows what a light does -- no need to explain it any further.

      What is claimed is "a computer implemented method of load balancing a server farm, comprising: measuring the load of each server; rerouting a request to a different server in the server farm when a server in the server farm reaches 80% capacity."

      One skilled in the art knows how to write code to perform these functions -- no need to explain it any further.

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    4. that just so happens to want to claim yet another functionally recited genus that includes that same exact string of 1's and 0's

      hahahahahahahahahahahahahaha ... you have no f'n clue, do you? The "exact string of 1's and 0's"? hahahahahahahahahaha Priceless.

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  2. "I just don't see how anyone who has ever programmed a computer can question the truth of these statements, "

    If you pay attention, they don't at the board. They simply note that those "truths" aren't enough to find WD in some of the claims at issue.

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    1. WD in some of the claims at issue
      WD in the claims? WD applies to the specification -- not the claims. 112 2nd applies to the specification, not the claims. Regardless, all that need to be mentioned is a computer and you have WD of a computer storage device/medium.

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    2. "112 2nd applies to the specification, not the claims."

      Yeah, right.

      "The specification shall conclude with one or more _claims_ particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention."

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    3. my bad ... you are right about the citation -- it is 112 first. However, the rest is correct. WD applies to the specification -- not the claims.

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    4. "my bad ... you are right."

      You admit you made a mistake? You do not belong here.

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  3. What is the difference between an objection that written description is lacking and (at the EPO) that subject matter has been added?

    I need to know whenever I have to explain to instructing associates in the USA why the amendments they want me to make at the EPO are destined to fail.

    They tell me that i) the amendments do not add matter and ii) the EPC lacks any provision equivalent to the written description requirement of the US patent statute. Can I tell them that the EPO's prohibition on adding matter is the same thing as their requirement for a written description? When (if ever) might it NOT be the same thing, please.

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    1. My understanding of this issue is that both regimes (US and EPO) have similar limits on claim amendments, in that both require "support in the spec" (informally speaking). The difference is how strictly that limit is applied. In the US, you certainly don't need verbatim support in the spec for claim amendments. That's because in the US, both enablement and WD take into account (to some degree) the knowledge of a POSITA. My understanding is that the EPO is much more strict, and that any words added to your claim via amendment need to be present, almost word for word, somewhere in the spec.

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    2. Thank you Karen. The test in the EPO is also by reference to the POSITA, asking what is (to such a notional reader of the appln as filed) "directly and unambiguously derivable". It is a novelty rather than an obviousness test, but then so is the WD requirement, I think.

      Interesting for me is the "intermediate generalisation" issue. Imagine claim 1 as an onion and the illustrated embodiment as a diamond somewhere within the onion, near the middle. Europe thinks the dependent claims are defining intermediate levels of generalisation, successive onion layers, closer and closer to the diamond. A prosecution amendment to a level of generality not corresponding to a dependent claim of the application as filed brings Applicant into difficulty, because that amended claim is to subject matter (example: composition ranges in a sophistiated alloy) not perceived as the invention at the time of filing. If you like, in US terms, there was no "written description" of that invention on the filing date.

      Yet American patent attorneys get very agitated, when the EPO finds of an amended claim to such an intermediate generalisation that subject matter has been added.

      Just curious. Perhaps you want to comment? Would be great. Regards from Munich.

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    3. Perhaps you want to comment?

      In the US, we don't believe that an Applicant needs to "claim" the invention with the initial claims in order for there to be "written description" of the invention. The written description requirement applies to the specification -- not the claims. "The specification shall contain a written description of the invention" – first paragraph of 35 U.S.C. § 112.

      A mistake made by practitioners and examiners alike is a failure to realize that the claims are not intended to describe the invention. Claims only need distinguish the invention over the prior art. What I see, for example, is unnecessary language added to claims that "describe" the invention but do little to distinguish the invention.

      Getting back to issue at hand, in the US, you can start with a simple claim: "I claim what is in the specification" and then subsequently amend it so long as there is written description of what you claim in the specification.

      In the US, we have realized that specifications typically describe far more things than that can be reasonably claimed. Moreover, until the best prior art is revealed, it is difficult for an applicant to best claim the invention. As such, the law does not provide a "gotcha" penalty to an applicant for not knowing the best prior art at the time of filing (particularly considering since some "prior art" wasn't even available for review because it wasn't published) and drafting claims that reflect the prior art.

      While the EPO system may have efficiency benefits, it is hardly fair. This is why American attorneys get very agitated.

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    4. Thanks for that fair and thoughtful reply.

      To further discuss intermediate generalisations, we should focus on what are often called "selection inventions". We can see these most clearly in the field of alloy compositions. One starts out claiming widely, then comes the PTO search and the need to claim more narrowly. At that point, stuff that was within the ambit of the invention the subject of the patent application is suddenly outside the amended claim and, from that point on, the amended claim is presented as an inventive selection. What is inside the amended claim is inventive, relative to what is outside the Claim, because what is inside the claim delivers results that are surprising and unexpected relative to what is now outside the claim. But none of that was part of the original filing. Thus, one is claiming an invention which was not perceived on the filing date.

      WARNING. Unfair comment follows:

      It is not unfair. It is just First to File, red in tooth and claw. I think you might have to get used to it. Quality drafting rules, OK? What is it you say "Suck it up"?

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    5. It is not unfair. It is just First to File
      What does that mean? First to file? Who cares?

      I think you might have to get used to it. Quality drafting rules, OK? What is it you say "Suck it up"?
      Maybe you need to do a better job cleaning up the application before it you file it? If you see issues with the claims, shouldn't you be identifying those issues before you file it?

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    6. What does "First to File" mean, you ask, anonymous. It means that the contest for a patent, between you and your rival filers, will be decided exclusively on what you respectively disclosed and claimed on your respective PTO filing dates. That being the case, prosecution amendments, to improve your position relative to those rival filers, is inherently problematic. Because the AIA introduces FtF, sooner or later you will have to get used to what is implicit in a FtF law. If you care about how you are going to earn a crust, as a patent attorney under the AIA, you will care. I don't understand why you don't care.

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    7. will be decided exclusively on what you respectively disclosed and claimed on your respective PTO filing dates
      Oh ... we are talking US patent law now? Remember, written description applies to the specification -- not the claims. As long as the invention is disclosed, we are good under US patent law.

      That being the case, prosecution amendments, to improve your position relative to those rival filers, is inherently problematic.
      Not in the US ... at least not for the issues you are concerned about.

      If you care about how you are going to earn a crust, as a patent attorney under the AIA, you will care.
      It'll be an issue after they amend 35 USC 112. Since they haven't, I'm not particularly concerned.

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    8. If you scroll back, you will see that my comments were in reply to the accusation that the EPO is "unfair". I think not and i was trying to explain why.

      Relevant to you sir? It might be, at least when the AIA starts to bite.

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    9. Relevant to you sir? It might be, at least when the AIA starts to bite.

      Mr. M. Drei ... I tell my clients to not bother with the EPO. Their money is far better spent on getting more U.S. Applications. The EPO godawful expensive for the value they are getting. Plus, their attorneys are entirely unhelpful.

      Regardless, you have no clue about the AIA if you think it substantively changes 112.

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    10. Anonymous, you have sussed me out as MaxDrei and revealed yourself as the anon of the Dennis Crouch blog. Small world. Greetings.

      On the Crouch blog, many (including me) have difficulty figuring out what point you try to communicate. You find them all worse than "entirely unhelpful". And they at least have English as their first language. Therefore it surprises me not one jot that, when you communicate with mainland Europe, you find that the people there are all "entirely unhelpful" and that what your clients get out of the European patent system represents poor value for money. Have you tried perhaps shouting a bit louder?

      You are welcome to your views but my hard-nosed US corporate clients go on filing huge numbers of cases at the EPO. Of course, they don't have to pay any more those translations at grant that until recently used to be so cripplingly expensive. So when those cases go through to issue after the FAOM, I'm not aware which ongoing element of the EPO system is so expensive or such poor value for money.

      Unless of course communication between inventor and EPO Examining Division breaks down, somewhere along the chain of communication.

      Now how about those poor clients of yours, paying such outrageous costs. How much value for money are they getting for the services you provide to them, I can't help wondering.

      I understand that S 112 is what it is. But the caselaw on written description will evolve and, mark my words, in the direction of harmony with what the EPO does.

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    11. revealed yourself as the anon of the Dennis Crouch blog
      Wrong (again) ... I would never engage in the senseless battles that he was with MM et al.

      On the Crouch blog, many (including me) have difficulty figuring out
      Many = you, MM, 6, and Ned. Wow, we've got an EPO lover (US law sucks) preacher, all patents suck except biotech preacher, an all patents suck (and the USPTO is great) preacher, and a paid shill. Some of us have stopped bothering going there because of the likes of you.

      my hard-nosed US corporate clients go on filing huge numbers of cases at the EPO
      They've got money to burn ... good for them.

      when those cases go through to issue after the FAOM, I'm not aware which ongoing element of the EPO system is so expensive or such poor value for money
      Well duh ... any case that goes through to issue after the FAOM is going to be cheap. However, that is about the claimed invention ... not the EPO.

      I understand that S 112 is what it is. But the caselaw on written description will evolve and, mark my words, in the direction of harmony with what the EPO does.
      You've been peddling that "EPO is great" BS for how long now? 5, 6, 7, 8 years at least???? FYI -- that is why it is so easy to pick you out. You peddle this BS from blog to blog to blog. From time to time I find a new patent blog and lo and behold, you are peddling your BS there as well. Moreover, there is only ONE PERSON peddling this BS -- you. That should make you stop and think.


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  4. Appellants’’ arguments supra (App. Br. 7) fail to point to any specific portion of the Specification that would have purportedly conveyed with reasonable clarity to those skilled in the art that Appellants were in possession of the disputed claim limitation (a computer readable medium). Thus, we find Appellants have made no showing explaining why a person of ordinary skill would have understood, at the time the application was filed, that the description requires a computer readable medium.
    APJ was Courtenay ... a loose cannon if I ever saw one.

    First paragraph of the detailed description:
    As explained in the introduction, this invention relates generally to a technical support service whereby a user of a client device such as a PC 10 may interact with a support provider 11 via a web-based connection indicated generally at 12-- see FIG. 1.

    The case law cited: "Accordingly, “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”

    The thing called a "PC 10" necessarily has a computer readable medium. Anybody with half a brain in the computer arts knows that. Hence, the specficiation "reasonably conveys" that those skilled in the art had possession of a "computer readable medium" and that software is stored thereon.

    What does the PTAB think -- that software magically shows up when a computer is turned on?

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    1. "Appellants’’ arguments supra (App. Br. 7) fail to point to any specific portion of the Specification. . . ."

      There's your explanation. I didn't read any of your speculation or allegations or arguments or whatever after you pointed to a specific portion of the specification.

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    2. There's your explanation. I didn't read any of your speculation or allegations or arguments or whatever after you pointed to a specific portion of the specification.
      Doesn't the burden of establishing unpatentability rest with the Patent Office? You forgot that one ... huh?

      The Board assumed the Examiner was right (procedural failure) when the Examiner couldn't possibly meet that burden, then (wrongly) put the onus on Applicants to prove the Examiner was wrong.

      Applicants don't need to prove the Examiner is wrong until the Examiner presents some evidence to prove the Examiner is right -- which the Examiner couldn't possibly do here.

      I didn't read any of your speculation or allegations or arguments or whatever after you pointed to a specific portion of the specification.
      Don't lie -- you read them and decided not to rebut them because you would look like a fool if you did.

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    3. JS, take some time and read In re Jung and In re Lovin. Get back to us in a few days.

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    4. take some time and read In re Jung and In re Lovin
      Good attorneys don't worry about case law generated in response to the questionable patent prosecution practices of "meh" attorneys.

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    5. "Good attorneys don't worry about case law."

      Yep, that's JS.

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  5. Yep, that's JS.
    An Examiner that doesn't read what was written -- yep, that's 6.

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    1. Yep, that's JS. Looks the record square in the eye and denies its existence.

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    2. Appellate court panels are not bound by earlier panel decisions.

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  6. Testing if I can post.

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  7. It's easy to say "all of these rejections should've been reversed".

    But, in some of these cases, the examiner has a point, and the attorney is doing a pathetic job, and that's a combination that can't end well for the applicant/appellant :-(

    I looked over the file of the Ex parte Ohwadi case in more detail.

    What struck is me is, the Examiner was clever to frame the WD issue as a difference in scope, and point out, with an IEEE definition cite (!), for "medium", that a computer readable medium could encompass a transmission medium. That's a pretty solid case, and the attorney should've advised the applicant to amend with "non-transitory" rather than continuing with the appeal, or, failing that, gee gosh, -actually put together an argument that can address this issue to the extent that the facts permit rather than verbally rolling his eyes at it-.

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