Thursday, April 30, 2015

PTAB reverses indefiniteness rejection of claim using trademark Java


Takeaway: The Examiner rejected as indefinite the phrase "parsing the at least one Java annotation" on the grounds that Java was a trademark. The Examiner referred to MPEP 2173.05(u) , which directed the Examiner to reject a claim as indefinite when a trademark was used to identify a product. The Applicant appealed and argued that the relevant inquiry was whether a Person of Ordinary Skill In The Art, considering the term Java in context, could "discern the metes and bounds of the claimed subject matter." According to the Applicant, the term was not indefinite because Java was understood by a POSITA to refer to "a popular programming language that was originally developed by Sun Microsystems in the early 1990s and released in 1995.” The Board agreed with the Applicant and reversed the indefiniteness rejection.  (Ex parte Nikolov, PTAB 2015.)

Details:

Ex parte Nikolov
Appeal 20130000274; Appl. No. 12/314,706;  Tech. Center 2100
Decided:  March 25, 2015

The application on appeal was directed to web software that manipulated objects in a Service-Oriented Architecture (SoA) registry. The Specification acknowledged the existence of various application programming interfaces (APIs) that allowed programmatic access to an SoA registry. The same section mentioned one of these APIs: "the Java API for XML registries (JAXR). "

The Examiner rejected independent claim 1 as indefinite because the "trademark / trade name 'Java' [was used] to identify a programming language." The term "Java" appeared in the preamble ("accessible through a Java API for XML registries (JAXR)" and in the body ("parsing the at least one Java annotation").

The Examiner cited the (non-precedential) Board decision Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). According to the Examiner, Simpson meant that "when a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph.”

 The Applicant traversed the indefiniteness rejection, and made five separate arguments:
  • Java identifies the product (the programming language) rather than the source of the product
  • the goods associated with the Java mark do not include "programming language"
  • the mark in Ex parte Simpson was indefinite since it did not adequately convey properties of the material, where "here there is no such uncertainty regarding what 'Java' conveys"
  • it's "illogical" to treat Java and C++ differently in a claim simply because the former is trademarked and the latter is not
  • thousands of issued patents include Java in the claims
In a Final Office Action, the Examiner noted that MPEP 2173.05(u) governed the use of trademarks and trade names in a claim: "if a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph.” Responding to the Applicant's mention of C++, the Examiner indicated that an amendment to C or C++ would result in "similar 112 2nd rejections of indefiniteness regarding the use of trademarks or trade names. Responding to another Applicant points, the Examiner considered the "thousands of issued patents with Java in the claims" to be an "interesting statistic," but noted that applications are examined on a case by case basis. The Examiner therefore invited the Applicant to analyze some of these patents and to "present any common facts that trigger an exception to the rules of trademarks in claims," then explain "why this case similarly triggers an exception."

In the same Final Office Action, the Examiner discussed Ex parte Simpson in further detail:
     [Simpson] specifically provides that questions regarding a well-known meaning / satisfactory definition in the literature are questions that resolve around a 35 USC 112 1st rejection for sufficiency of written description for a "name used in trade" ... "We have considered MPEP(v) and note that all address the issue of enablement of a written description under 35 USC, first paragraph."
     Similar to Ex parte Simpson, no enablement rejection has been made. Similar to the Ex parte Simpson court, the Examiner declines to extend the enablement prong of the test of proper use of a trade name to cover indefiniteness of a registered trademark.
On Appeal, the Applicant argued that the use of Java in the claim did not render the claims indefinite per se. The inquiry for indefiniteness was whether a person of ordinary skill in the art, considering the term Java in context, could "discern the metes and bounds of the claimed subject matter." The Applicant concluded that “a person of ordinary skill in the art would understand what is meant by ‘Java annotation’ and . . . ‘Java API for XML registries’”  because Java was "a popular programming language that was originally developed by Sun Microsystems in the early 1990s and released in 1995.”

The Board agreed with the Applicant and reversed the indefiniteness rejection. The Board found this scenario "closely analogous" to a different non-precedential PTAB decision, Ex Parte O’Farrell (PTAB 2014). The Board explained as follows:
The O’Farrell panel held that the recitation of the trademark “Java” was not indefinite because “ 'Java' is a well-known and widely-used term identifying a particular programming language.” Id. Similarly, we find one of ordinary skill in the relevant art would have understood “Java” in the context of the “Java annotation” and “Java API for XML registries” to refer to the programming language known by that name at the time of Appellants’ invention.
My two cents: There's no doubt in my mind that Java is understood by a POSITA. And since that's the ultimate question when resolving indefiniteness, I say the Board got it right. The name of a programming language is fundamentally different than the name of a chemical composition. Using the trademark of a chemical composition is a problem because the nature of the composition could changes, so you don't know if you infringe or not. On the other hand, as long as a newer version of Java includes the annotation feature, a POSITA still understands "Java annotation" and is thus put on notice of infringement. And if the annotation feature is removed in a future version of Java, yet a patentee asserted against an infringer using an annotation-less Java, well, the claim could be found indefinite at that later time. 

Some of the Applicant arguments made during prosecution dug into trademark specifics (product vs source of product, associated goods), and I give some points to the Applicant for getting creative here. On the other hand, the "other patents use this language" argument is weak, and I didn't find the Java vs. C++ consistency argument to be compelling either. I think both the Applicant and the Examiner got derailed with the lengthy discussion of the MPEP and it's use of Ex parte Simpson. Responding to every single point made by the Examiner is not always the best strategy. The Appeal Brief would have been stronger if the Applicant had demonstrated that a POSITA understood Java, briefly distinguished Simpson, and stopped there.

The Board's finding that the meaning of Java was tied to the time of the invention highlights an interesting issue, because programming languages do change over time. With literal claim scope limited to Java at the time of filing, it would seem Doctrine of Equivalents is needed to expand to future versions of the language. But of course all claim terms are interpreted as of the time of invention, which makes the Board's finding just a reminder of something we should already know.

The PTAB decision mentioned in the MPEP and relied on by the Examiner, Ex parte Simpson, doesn't appear to be freely available online. The 1983 decision date is far too old for the PTAB's own decision database, and even too old for the BPAI decisions archive maintained by Franklin Pierce School of Law

38 comments:

  1. Well done, Mr. Roberts.

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  2. "Responding to every single point made by the Examiner is not always the best strategy."

    It's the only strategy at the "affirm at all costs" PTAB.

    "The Appeal Brief would have been stronger if the Applicant had demonstrated that a POSITA understood Java, briefly distinguished Simpson, and stopped there."

    He won. Hard to say that his brief "would have been stronger" in light of that fact.

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  3. >He won. Hard to say that his brief "would have been stronger"
    >in light of that fact.

    Nah, I form opinions (about whether arguments are good/bad/weak/strong) independent of a particular outcome. But my judgments are based on outcomes as a whole. That is, I will refer to an argument that consistently loses at the PTAB as "weak" or "loser". Occasionally I might further specify "loser at the PTAB" if I had reason to think it might win at the Fed Cir. But as any regular reader of this blog knows, I don't hold myself out as an expert on the Fed Cir or administrative law.

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  4. "But of course all claim terms are interpreted as of the time of invention, which makes the Board's finding just a reminder of something we should already know."

    Yes.

    "And if the annotation feature is removed in a future version of Java, yet a patentee asserted against an infringer using an annotation-less Java, well, the claim could be found indefinite at that later time."

    Huh?

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    1. Yeah, ok, never mind.

      I was vaguely thinking about one of those scenarios where a claim is construed broadly to catch the infringer and that broad construction backfires and results in invalidity. But on further reflection, I see that scenario doesn't apply here.

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  5. "Responding to every single point made by the Examiner is not always the best strategy."

    Yes. I learned this during my internship with a federal judge. My supervising clerk pulled up a few briefs to show the pitfalls of letting the other side frame the argument. Sometimes re-framing the argument is more persuasive than trying to rebut a solidly entrenched, erroneous, or misleading position.

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  6. One thing I love about the USPTO is that the right hand doesn't know what the left hand is doing.

    See Appeal No. 2012-012488, Application No. 11/188,551.

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    1. What it comes down to, a trademark in a claim means that the claim is (1) indefinite or (2) contains an improper use of a trademark. The examiner could reject the claim as indefinite and also object to the claim as (in the alternative) improper use of a trademark. Whichever the problem, such claims should not be issuing from the u.s. PATENT & TRADEMARK office.

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    2. >object to the claim as (in the alternative) improper use of a trademark.

      I don't see a specific trademark *objection* discussed in the MPEP, though 608 does say that a trademark in a claim should be all caps.

      I think this what you're referring to, given the capitalization in your comment.

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    3. >right hand doesn't know what the left hand is doing.
      >See Appeal No. 2012-012488, Application No. 11/188,551

      (Ex parte Cabillic), where the PTAB affirmed an indefiniteness rejection for "JAVA virtual machine."

      Wow, wrong result in Cabillic. The Applicant's Appeal Brief made the strongest and most relevant argument: Java is defined by a published specification. Moreover, the owner requires the user of the mark to adhere to this spec.

      Wonder if the Examiner would have backed off in Cabilic if the Applicant had cited to this MPEP passage:

      608.01(v) I. PERMISSIBLE USE IN PATENT APPLICATIONS
      A trademark or trade name may be used in a patent application to identify an article or product if:
      (B) its meaning is well-known to one skilled in the relevant art and is satisfactorily defined in the literature.

      That seems right on point.

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    4. I agree there's no specific trademark "objection" discussed in the MPEP. So? There's no "copyright" objection discussed, either, but some patents infringe copyrights and some do not because the examiner caught it and required that permission from the owner of the copyright be demonstrated.

      An objection would be for petition, not appeal. A supervisor or Petitions can explain to Director Lee why they decided a patent can be allowed containing a claim that tends to erode a uspTo-registered trademark. Assuming, of course, that the claim is not indefinite.

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    5. "What it comes down to, a trademark in a claim means that the claim is (1) indefinite or (2) contains an improper use of a trademark."

      So Karen proves that wrong by citing MPEP 608.01(v)1, and our resident examiner backtracks with, "I agree there's no specific trademark 'objection' discussed in the MPEP" and then inserts some hilarious non-sequitur about "some patents infringe copyrights."

      Too funny.

      "An objection would be for petition, not appeal."

      And what would be the objection? What are the grounds (i.e. under 35 USC or 37 CFR)? An baseless objection will be reversed if petitioned. But you knew that, right?

      "A supervisor or Petitions can explain to Director Lee why they decided a patent can be allowed containing a claim that tends to erode a uspTo-registered trademark."

      How does using a trademark in a claim "tend to erode" the mark?

      Sheesh.

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    6. "... but some patents infringe copyrights and some do not because the examiner caught it and required that permission from the owner of the copyright be demonstrated."

      Please provide even one example of this.

      Thank you.

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    7. "What are the grounds (i.e. under 35 USC or 37 CFR)?"

      Please cite the MPEP page that says objections must be under 35 usc or 37 cfr. Thanks in advance.

      "How does using a trademark in a claim "tend to erode" the mark?"

      So, trademark law, too, is not your area of expertise.

      "Please provide even one example of this."

      U.S. Patent 4,209,938.

      You're welcome.

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    8. >Please cite MPEP page that says objections must be under 35 usc
      >or 37 cfr.

      I request *you* cite to an MPEP page that deals with an objection based on use of a trademark, since I'm told that Examiners are bound to follow the MPEP.

      608.01(v) looks like the right place. But it doesn't use the word "objection" and instead refers to a claim *rejection* on the ground of insufficient disclosure (ie, 112 1st).

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    9. "I request *you* cite to an MPEP page that deals with an objection based on use of a trademark, since I'm told that Examiners are bound to follow the MPEP."

      That one's easy. MPEP 608.01(v), Heading II. "Every effort should be made to prevent their [trademarks] use in any manner which might adversely affect their validity as trademarks."

      There is no Title 35 statutory basis for a rejection. Hence, an objection. Say it's based on MPEP 608.01 if you want.

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    10. "So, trademark law, too, is not your area of expertise."

      That's your explanation for how inclusion of a trademark in a patent claim "tends to erode" the trademark? Very enlightening.

      "U.S. Patent 4,209,938.

      You're welcome."

      All the patent says is that the figures are used by permission of the copyright holder. There's nothing that indicates that "the examiner caught it and required that permission from the owner of the copyright be demonstrated."

      Want to try again?

      "There is no Title 35 statutory basis for a rejection. Hence, an objection. Say it's based on MPEP 608.01 if you want."

      You funny. Unintentionally so, but still. You can't object to a claim without a basis in the law. See, e.g., the Administrative Procedures Act.

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    11. "That's your explanation for how inclusion of a trademark in a patent claim "tends to erode" the trademark?"

      Not at all. That's my explanation for why attempting a discussion of trademark law would be a waste of time.

      Others can read further into MPEP 608.01(v) and ponder why ensuring that a trademark is all caps can still result in trademark misuse, such that the Deputy Commissioner for Patent Examination Policy may get involved.

      "U.S. Patent 4,209,938."

      I provided what you asked for. If you don't like the answer, that's on you.

      "You can't object to a claim without a basis in the law. See, e.g., the Administrative Procedures Act."

      Chuckle. Add Fressola v. Manbeck (D.DC 1995) to the list of cases you've never heard of. Or just present a claim in a utility patent application that is not in a single-sentence format and see what happens.



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    12. "Not at all. That's my explanation for why attempting a discussion of trademark law would be a waste of time."

      So you can't explain why the use of a trademark in a patent claim "tends to erode" the trademark? That's what I thought. You could have just said so.
      "I provided what you asked for. If you don't like the answer, that's on you."

      I asked you to provide one example of "some patents infringe copyrights and some do not because the examiner caught it and required that permission from the owner of the copyright be demonstrated." (That's a quote from you, BTW.) What have you provided that establishes that U.S. 4,209,938 would not have issued had the examiner not required permission from the copyright owner? I don't see anything.

      "Chuckle. Add Fressola v. Manbeck (D.DC 1995) to the list of cases you've never heard of. Or just present a claim in a utility patent application that is not in a single-sentence format and see what happens."

      So if I have a claim that recites, "...wherein the widget is coated with TEFLON..." and the examiner objects to it under some MPEP section (lulz), that case is going to be apposite?

      The chuckle's on you.

      You remind me of those folks at the PTO who thought In re Bogese was going to save their proposed continuation rules back in 2007 or so. We all got a chuckle out of that.

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    13. "I don't see anything."

      Agreed.

      After pointing out Fressola v. Manbeck (D.DC 1995), the irrational exuberance of "You can't object to a claim without a basis in the law. See, e.g., the Administrative Procedures Act" now becomes the milquetoast "So if I have a claim that recites, "...wherein the widget is coated with TEFLON..."

      Got it.


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  7. "Got it."

    Probably not. Feel free to object to a claim because it has a trademark in it and then cite Fressola. Good luck with that. You'll need it.

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    1. MPEP 608.01(v) says applications can contain trademark misuse. So, what's your theory Darwin?

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    2. According to that section of the MPEP, the only thing the examiner can require is that the trademark be capitalized? Is it your position that failing to capitalize a trademark in a patent "tends to erode" the trademark? WTF are you talking about?

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  8. "According to that section of the MPEP, the only thing the examiner can require is that the trademark be capitalized?"

    That's not in the latest version. Can you quote verbatim from MPEP 608.01(v), Ninth Ed. March 2014?

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    1. "Is it your position that failing to capitalize a trademark in a patent "tends to erode" the trademark?"

      Huh?

      What's your theory as to how there is no such thing as trademark misuse in a patent application?

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    2. "That's not in the latest version."

      Yes it is. You actually have to read the section. I know that's hard, but you can do it.

      "Can you quote verbatim from MPEP 608.01(v), Ninth Ed. March 2014?"

      Sure. Here you go.

      "If the product to which a trademark refers is set forth in such language that its identity is clear, examiners are authorized to permit the use of the trademark if it is distinguished from common descriptive nouns by capitalization."

      http://www.uspto.gov/web/offices/pac/mpep/s608.html#d0e47416

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    3. "What's your theory as to how there is no such thing as trademark misuse in a patent application?"

      Again, WTF are you talking about?!

      Our resident examiner posted, on May 11, 2015, at 1:32 PM, "A supervisor or Petitions can explain to Director Lee why they decided a patent can be allowed containing a claim that tends to erode a uspTo-registered trademark" and I asked our resident to explain how allowing a claim that includes a USPTO registered trademark would "tend to erode" that trademark. And I never got an explanation.

      I'm not advancing any theory or argument about "trademark misuse" (whatever the heck you think that is).

      The MPEP is clear when and under what circumstances a trademark can be used in a claim. There's no "explanation" to Ms. Lee that is required.

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    4. "Again, WTF are you talking about?!"

      I'm talking about MPEP 608.01(v) and its discussion of the use of trademarks. You don't really need to know much about trademark law to understand the section, so you won't be bored. Read it when you get some free time. And, when you do, -- this cannot be more clear -- reproduce for us the entirety of the quote that says "the only thing the examiner can require is that the trademark be capitalized?"

      For reference, see AAA JJ post May 14, 2015, at 11:52 AM. Just to be clear.

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    5. Already did that.

      You're welcome.

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    6. "Already did that."

      Chuckle.

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    7. You've established you know about as much about trademark law as you know about patent law. Please accept this laurel and hardy handshake. We have some lovely parting gifts on your way out.

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    8. Right. Because you have such a deep and fantastical understanding of "trademark law" that it renders you unable to provide a simple explanation of the use of a trademark in a patent claim "tends to erode" the trademark or constitutes "trademark misuse."

      Gotcha.

      Now git back to dem counters!

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    9. This is pretty basic stuff. What do you understand the term "trademark erosion" to mean? What do you understand the term "trademark misuse" to mean?

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    10. AAA JJ, In "trademark law" this is pretty basic stuff. What do you understand the term "trademark erosion" to mean? What do you understand the term "trademark misuse" to mean?

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  9. If it's so basic, why can't you explain what the terms mean? Or more likely, what you think they mean. And then explain how using a trademark in a patent claim constitutes "trademark erosion" or "trademark misuse." I mean, I've only asked you to explain that like 5 times now. But you won't. You'd rather remain the cryptic d##che bag who continues to pollute the comments here.

    Sorry to leave you hanging for 4 days. But I got a life outside of this. But now that I'm back you can pull your pants back up and resume typing with two hands.

    So are you going to explain your position or argument or whatever it is to us? Or are you going to just give us the typical obtuse sh!t like, "Go read Rambus" that you always do.

    G#d d#mn, you're ponderous. F#cking ponderous, man.

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    1. AAA JJ, when you have nothing of substance to contribute you go direct to the insults. What line of work are you in, sir?

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  10. There seems to be a lot of attorneys who are are intentionally, or accidentally, misrepresenting what MPEP 608.01(v) states. That section, helpfully in the SPECIFICATION section of the MPEP, deals with trademarks used in the specification. In contrast, MPEP 2173.05(u) ("Trademarks or Trade Names in a Claim") deals with trademark use in the claims.

    Frankly, I've seen different board decisions go the opposite way on this exact issue of Java, and the rationale for why Java is indefinite is no different than when the rationale for why you cannot use Coke in the claims. The Java mark is owned by Oracle (previously Sun Microsystems). What constitutes Java is subject to change over time and at the whims of the trademark owner which leaves the metes and bounds of the claim uncertain to a potential infringer, just as the use of Coke does (New Coke, Clear Pepsi, etc.). If you think it is clear as to what constitutes Java, it's not. Many of the original classes in the JDK 1.0 have been depreciated while each newer version has added new classes, methods, etc. (and some of those have in turn been depreciated). What constitutes java is a moving target (and a fast moving one at that), and I'm not sure that this panel of the Board ruled correctly (as opposed to other Board panels that have gone the other way).

    I'm also surprised so many attorneys aren't familiar with the rule considering it is one of the potential patent bar exam questions. http://mypatentbar.com/2007/12/13/q25-velcro-trademark/

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    1. >What constitutes Java is subject to change over time and
      >at whim of trademark owner which leaves metes and bounds of the
      >claim uncertain to a potential infringer, just as the use of Coke
      >does (New Coke, etc.).

      I think this is a bad analogy -- changes the formulation of Coke don't necessarily have anything to do with the introduction of New Coke. But I get your point ... that the formulation of the underlying product can change.

      Even so, I see Java as distinguishable from Coke. The ingredients in the product identified by the mark "Coke" are not known. (In fact, a trade secret.) Whereas the programming language Java is nailed down precisely by a (public) specification. [Yes, the spec changes over time, I'll get to that in a minute.]

      Does that affect your analysis?

      Or do you say that while Java *the language* as loosely understood by programmers is specified and therefore not indefinite, Java *the trademark* is indefinite because the underlying "goods" (here, a programming language) referred to by the mark can change?

      That amounts to saying that the trademark owner (Sun now Oracle) can divorce the mark from the spec. Which might well be true, in the sense that the owner has the legal right to do so. OTOH, there's no good reason to believe the owner *will* do this, and plenty of reason to believe the mark is, in reality, tied to the spec.

      Shouldn't what happens in the real world be a big factor in determining definite/indefinite? IOW, wouldn't a programmer (POSITA) understand that the word "Java" refers to a specification and is therefore definite?

      Now to address specs changing over time ...

      >Many original classes in JDK 1.0 have been depreciated while
      >each newer version has added new classes, methods, etc.
      >What constitutes java is a (fast) moving target

      Ah, but that has nothing to do with Java being a trademark. It's because Java is defined by a spec, and specs evolve over time.

      From this standpoint, having Java in a claim is no different than having "IEEE 802.11" in a claim. Is 802.11 indefinite?

      I find this to be a very interesting question. I blogged about standards and indefiniteness a long time ago (see link below). The takeaway was "In some of these cases, the BPAI also said that the claim was to be interpreted according to the standard in effect at the time of filing."

      http://allthingspros.blogspot.com/2010/07/reference-standard-not-indefinite.html

      >I'm also surprised so many attorneys aren't familiar with the rule considering
      >it is one of the potential patent bar exam questions.

      Uh-uh. Well, the patent bar covers plant patents and I'm not afraid to admit I don't know anything about plant patents.

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