Details:
Ex parte Bell
Appeal 2014-009335; Appl. No. 13/050,752; Tech. Center 3700
Decided: September 28, 2016
The application on appeal was directed to a hydraulic pressure regulator. A representative claim on appeal read:
1. A system comprising:The Examiner rejected claim 1 as indefinite. The Examiner explained that the only structural limitations of the claim were parts of the regulator. This indicated that the claim was drawn to a regulator, even though the preamble read "a system comprising." It was therefore unclear whether the functional language "having a maximum deadband ..." was part of the preamble (and thus non-limiting) or part of the body (and thus limiting).
a spring-loaded hydraulic pressure regulator having a maximum deadband of less than 200 pounds per square inch when coupled to a source of pressurized fluid having a supply pressure of at least 1000 pounds per square inch,
the spring-loaded hydraulic pressure regulator comprising:
a housing having first and second inner chambers;
a spring disposed within the second chamber;
a sensing piston disposed within the housing and responsive to pressure within the first inner chamber and to a biasing force generated by the spring; and
at least one supply seal ring disposed within the first chamber.
On appeal, the Applicant argued that the deadband functional language was clearly part of the body, since it followed the preamble. The Applicant further noted the dependent claims included further elements in the system of the independent claim. Finally, the claim was definite because "it sets out and circumscribes a particular subject matter (i.e., a specific type of spring-loaded hydraulic pressure regulator) with a reasonable degree of clarity."
The Examiner responded in the Answer as follows:
[T]he claim includes two transitional phrases, and the argued limitation also precedes the second transitional phrase, under which logic the argued limitation should be considered part of the preamble, because it precedes a transitional phrase.The Examiner summarized up his stance on indefiniteness as: "reasonable artisans could disagree as to the limiting effect of the argued limitation."
The Board reversed the indefiniteness rejection as not being supported by a "rational underpinning." Referring to a dictionary definition of "system," the Board explained that the word "simply connotes the following parts are intended to move and/or work together." Since the claim clearly described a regulator as a combination of parts intended to work together, "there is nothing ambiguous with describing, in the preamble, the claimed regulator as a 'system.' "
My two cents: I suppose the Applicant could have avoided/overcome the rejection by using "regulator" in the preamble. But maybe using "system" instead avoided arguments in litigation about the meaning of "regulator" ?
Some of the Applicant's comments suggested that the use of "system" rather than "regulator" in the preamble was related to the dependent claims. "System" allowed dependent claims with additional elements (e.g., blowout preventer, fluid source) that were external to the regulator.
Would the Examiner have given the same indefiniteness rejection if the preamble recited device or apparatus?
"The Examiner rejected claim 1 as indefinite. The Examiner explained that the only structural limitations of the claim were parts of the regulator. This indicated that the claim was drawn to a regulator, even though the preamble read 'a system comprising.' It was therefore unclear whether the functional language 'having a maximum deadband ...' was part of the preamble (and thus non-limiting) or part of the body (and thus limiting)."
ReplyDeleteWhat a f#cking idiot. Fire the examiner. And the two idiot SPE's that green lighted that rejection to be sent to the Board.
Or, in the alternative, ask Karen to reproduce the actual language of claim 1.
DeleteHmmm ... not sure what you're referring to.
DeleteI did find one error in my original reproduction of the claim, and fixed it (a supply seal ring -> at least one supply seal ring). But don't see how that affects the indefiniteness analysis.
Unless you're saying the positioning of line breaks matter? I did take some liberties with that, as I often do, for readability.
Care to elaborate on your comment?
Allow me to elaborate.
Delete1. A system comprising:
a spring-loaded hydraulic pressure regulator having a maximum deadband of less than 200 pounds per square inch when coupled to a source of pressurized fluid having a supply pressure of at least 1000 pounds per square inch, the spring-loaded hydraulic pressure regulator comprising:
a housing having first and second inner chambers;
a spring disposed within the second inner chamber;
a sensing piston disposed within the housing and
responsive to pressure within the first inner chamber and to a biasing force generated by the spring; and
at least one supply seal ring disposed within the first inner chamber.
Ah, you're right, of course. Not apparent from your elaboration, but my post said "the ... regulator including" where the claim on appeal actually read "the ... regulator comprising".
DeleteI'm glad you brought that error to my attention. I've revised the blog post.
Do you think it changes the analysis? I don't see that it does. While it's true that every word in a claim matters, it's also true that "including" and "comprising" are synonymous.
The word "comprising" is synonymous with "including" except when it's not. See, for example, In re Skvorecz.
DeleteI got a chuckle when I saw the PTAB opinion (from which you quote) says the indefiniteness rejection was not supported by a "rational underpinning." The phrase "rational underpinning" comes from In re Kahn (and picked up by SCOTUS in KSR), dealing with obviousness rather than indefiniteness.
In this case, there were more interesting questions than the effect of the nested "comprising." For example, the examiner pointed out that dependent claim 9 recited the "system of claim 1, comprising the source of pressurized fluid," suggesting that the "source" was not a limitation of base claim 1 but could be part of mere preamble verbiage. Would that have changed the analysis? We do not know, because there's no indication in the decision that claim differentiation was considered. But let's leave the claim ambiguous so that parties can litigate about whether an infringing "system" must have a source of pressurized fluid having a supply pressure of at least 1000 pounds per square inch, or not.
"Do you think it changes the analysis?"
DeleteOh noes!!!!! The magic word is in the claim twice!!!!!!!!!!
I guess those sounds you're hearing are all of the heads exploding in the examining corps.
Lulz
Oh noes!!!!! The magic word is in the claim twice!!!!!!!!!!
DeleteArticulate, as always. Thank you for your service.
"Articulate, as always."
DeleteWell, he said he did apply for an APJ position. And although he doesn't know a lot about patent law . . . seems I lost my train of thought.
H
But let's leave the claim ambiguous so that parties can litigate about whether an infringing "system" must have a source of pressurized fluid having a supply pressure of at least 1000 pounds per square inch, or not
ReplyDeleteIt does not in claim 1 but it does in claim 9. This is hardly ambiguous and took me about 30 seconds to figure it out.
Consider the language of:
1. A lighting apparatus, comprising:
a light bulb including a filament, wherein
the filament produces 100 lumens when coupled to a 12V power source.
2. The lighting apparatus of claim 1, further comprising
the 12V power source.
The power source is not a necessary element to infringe claim 1, but it is a necessary element of claim 2.
Delighted to hear it's all clear to you. Spend about 30 seconds on this . . .
Delete"A controller of a communication device adapted for requesting data from a data processing computer via a server, the controller comprising:
a memory to store information received from the data processing computer via the server."
Does the claim require a "data processing computer?"
It's not clear to you? Are you Drew Hirshfeld? Or Michelle Lee?
DeleteLulz
Ha ha ha lol. Just admit you can't answer the question. It'll increase your stature.
DeleteDoes the claim require a "data processing computer?"
DeleteThat, in itself, is an ambiguous question.
A similar question could be asked of the claim "a stapler configured to receive staplers." Does the claim require staples? What do you mean "[d]oes the claim require a 'data processing computer?'"?
To infringe the claim, the infringer does not have to possess the data processing computer. However, the communication device still must be adapted to request data from the data processing computer. Back in the day, those types of elements were called "environmental" limitations. They provided context for the actual limitations of the claim, but they were not "required." I could easily think of dozens and dozens of examples.
This is pretty standard claim drafting practice. While it may not be applicable in all fields, an experienced patent attorney should be familiar with its application.
Same anonymous who provided "lighting apparatus" example.
Does the claim require a "data processing computer" in the anticipation context. In infringement, the question would be "is a data processing computer required in an infringing system?" That which infringes if later anticipates if earlier.
Delete"To infringe the claim, the infringer does not have to possess the data processing computer."
I might tend to agree with you, but the folks who make patent law (Federal Circuit judges) do not. The claim is from the first case I came across that proves the point, In re Motorola Mobility (Fed. Cir. 2013). The claim called for a controller and a data processing "host" in the same arrangement as above. The panel determined that the "host" has to do more than send information to the communication unit (device). If the claim does not require a "host," why should it matter what else the "host" does?
The claim is from the first case I came across that proves the point, In re Motorola Mobility (Fed. Cir. 2013).
ReplyDeleteYou'll have to give me a cite. Motorola is involved in quite a bit of litigation and the 2013 Federal Circuit I found doesn't seem to match.
There was only one In re Motorola Mobility opinion in 2013. Search "Motorola" on the Fed. Cir. website. 545 Fed. Appx. 983. 2013 WL 5977359.
DeleteThere was only one In re Motorola Mobility opinion in 2013
ReplyDeleteThe one I found was a Rule 36 affirmance -- i.e., it means very little. I wasn't able to find your cite, but I don't have access to court reporters. Regardless, a Fed. Appx. citation likely means it is the Rule 36 affirmance I found.
Although I've seen the USPTO do some divining of tea leaves in Rule 36 affirmances in the past, it is mostly a useless endeavor -- an entirely useless endeavor if what one has divined is a new interpretation of the law.
A Rule 36 is a judgment without opinion. I am referring to the opinion in In re Motorola Mobility. I'm sorry you do not have Internet access.
DeleteFound it. Yeah, you're right.
DeleteI'm sorry you do not have Internet access.
DeleteI finally found it -- it is nonprecedential -- which means ignore it. Also, the case involved interpretations of "host" and "summary store." I'm not sure how the Federal Circuit's interpretation supports your points from above.
I could easily provide dozens and dozens of other examples. But if you don't understand that case you won't understand the others, either. We're done.
DeleteI could easily provide dozens and dozens of other examples. But if you don't understand that case you won't understand the others, either. We're done.
DeleteThat's a great internet argument -- oh, I know of lots of evidence that supports my positions -- I just don't want to tell you about it.
I read "that case" and it doesn't support what you think it supports. If you think otherwise, you are more than free to point out the passages that support your interpretation. However, I suspect you'll decline.
BTW -- I deal with Examiners all the time that act like you. They THINK they know what a case means because somebody told them what it means. However, they never bothered to read the case. If an Examiner cites me a non-standard case (e.g., outside of KSR, Bilski, Alice, etc.), I'm going to look it up and read it. I don't need to read the standard ones because I've read them many times over.
I read the case, too. Odd that you would write a lot of irrelevant nonsense and avoid answering the simple question asked. "If the claim does not require a 'host,' why should it matter what else the 'host' does?"
DeleteReply
Odd that you would write a lot of irrelevant nonsense and avoid answering the simple question asked. "If the claim does not require a 'host,' why should it matter what else the 'host' does?
DeleteMy first response got eaten, so I'll make this shorter.
The Federal Circuit agreed with Motorola's argument that the term "host" requires that it to host something. This does not support your argument.
Still spewing, still not answering the question.
DeleteStill spewing, still not answering the question.
DeleteLOL -- the case doesn't support your position. I doubt you are an attorney, but if you want to act like one, you can actually present a reasoned explanation as to why this case supports your position.
Whining about "lot of irrelevant nonsense" and "still spewing" is not a winning argument. That might work in the playground at middle school, but that isn't going to work here. Let me repeat something that your middle school teachers probably wrote all over your tests -- SHOW YOUR WORK!!
BTW -- if a limitation is in the claim, it needs to be shown in the prior art absent very specific circumstances. I would have thought they taught you that within the first week of Examiner's school -- perhaps I was wrong. It may be an advanced topic not covered until you became a primary.
Still spewing, still not answering the question.
DeleteHey Anonymous, have you met AAA JJ? He gets flummoxed when he can't answer simple questions, too. I can provide dozens and dozens of examples.
DeleteI can provide dozens and dozens of examples.
DeleteI'll just take 2 examples please. Also, while you are at it, you can explain what particular point of law you think these two examples support.
BTW -- are you related, by chance, to d0c87888-5010-11e0-8352-000bcdcb8a73? He was big on expanding printed matter rejections.
Odd that you would write a lot of irrelevant nonsense and avoid answering the simple question asked. "If the claim does not require a 'host,' why should it matter what else the 'host' does?"
ReplyDeleteLike I said 2 hours ago. Read the case first. Claim 26 is representative and reproduced below:
A controller of a communication unit adapted for requesting data . . . from a further data processing host via a communication server, the controller comprising:
(a) a summary store to store identifying information received from the host via the communications server about data units not sent from the host to the communication unit and not received at the communication unit . . . .
Just so everybody is clear here, the "host" is a type of "environmental limitation" (see my discussion above). The Federal Circuit's analysis regarding the term "host":
The examiner determined that Hoshi’s MSS disclosed the recited “host.” In doing so, the examiner stated that the claims “do not require the host to . . . host anything.” The Board affirmed the examiner’s rejection and adopted the examiner’s findings.
Motorola asserts that the examiner’s construction is unreasonable because the plain meaning of “host” requires that it “host something.” It asserts that the plain meaning controls because the specification does not provide a more narrow definition.
The PTO counters that the “host” does not need to host anything and that the claim only requires the “host” send information to the communication unit via the communication server. The PTO argues that Hoshi’s MSS discloses a “host” even under Motorola’s proposed construction.
We agree with Motorola that the plain meaning of “host” requires that the host “host something.” However, Hoshi’s MSS discloses a “host” even under this construction.
Motorola argued that the host does something -- the Federal Circuit agreed. How does that support your argument? The Board was affirmed on the alternative argument (i.e., "Hoshi’s MSS discloses a 'host' even under Motorola’s proposed construction."). Again, to repeat what I wrote earlier, "I'm not sure how the Federal Circuit's interpretation supports your points from above."
Your response?
Still spewing, still not answering the question.
ReplyDeleteYawn -- must be an examiner. They know it is easier to regurgitate what they already wrote (as if it will be more persuasive the second time around) than to address the issue at hand.
Still flummoxed, still not answering the question.
Delete"must be an examiner. They know it is easier to regurgitate what they already wrote (as if it will be more persuasive the second time around) than to address the issue at hand."
DeleteThe "issue at hand" is the question. You must be an apprentice attorney. When they have no response to a rejection they make up their own and respond to that.
I'm still waiting on those two examples. You said that "I can provide dozens and dozens of examples." Backing away from your statement?
DeleteThe Patent and Trademark Office (PTO) must consider all claim limitations when determining patentability of an invention over the prior art. In re Lowry. What is confusing about that?
ReplyDelete"What is confusing about that?"
DeleteNothing. My position is that you have not answered the question. Prove me wrong.
Prove me wrong.
DeleteProve that I haven't answered the question.
I can't prove that you haven't answered the question. I can "persuade" everybody that you have not written an answer on this blog. Then I can "persuade" everybody that water is wet.
DeleteWhat a maroon.
I can't prove that you haven't answered the question.
DeleteSure you can. You can repeat the question, then explain how every statement I made didn't answer that question. I do it all the time when responding to Examiners. They go off on some tangent that isn't relevant to our arguments, and then I explain why those "responses" are relevant to the issues that we raised.
So, when you say "I can't ..." what you are really saying is that "I don't know how." That's OK -- keeping pretending that you think you know more about arguing than an attorney. If that is what keeps a smile on your face, then go for it.
"You can repeat the question, then explain how every statement I made didn't answer that question."
DeleteTry again. That doesn't even rise to the level of sophistry.
What a maroon.
"You can repeat the question, then explain how every statement I made didn't answer that question."
DeleteAnd that, dear friends, is the definition of "flummoxed."
And that, dear friends, is the definition of "flummoxed."
DeleteGet a dictionary -- it appears you do not know what flummoxed means. BTW -- I'm still waiting on my two examples.
That doesn't even rise to the level of sophistry.
Let's get a second dictionary. BTW - I see that you are incapable of proving that I didn't answer the question. Nice.
Flummoxed: perplexed, bewildered, baffled, confused, puzzled, foxed, at sea, at a loss, mystified, stymied, bamboozled, nonplussed, you can repeat the question, then explain how every statement I made didn't answer that question.
DeleteWhat a maroon.
DeleteLet me guess ... both of you are probably recording time, at the USPTO, for writing this drivel. BTW -- If I wanted insults and childish behavior, I would go to the playground where the 4th graders hang out. The insults would be more creative, and I would find less childish behavior.
DeleteLet me know when you want to discuss the LAW sometime. I'll be more than happy to. Until then, I'm done playing this little game of yours.
Excellent. At long last, you want to discuss the law.
DeleteIn the case of In re Motorola Mobility, if the claim does not require a "host," why should it matter what else the "host" does?
I know, too complex. Let's try this.
Does the claim require a "host?"
If so, why?
If not, why not?
Just a hint -- an actual, real, un-flummoxed answer to the question will begin with the words "yes, because." Or the words "no, because." Beginning the answer with any other words other than "yes, because" or "no, because" means "I do not know."
Because you want to discuss the law, take on this simple multiple choice:
Does the claim require a "host?"
(A) Yes, because . . . .
(B) No, because . . . .
(C) I do not know.
Mr. Anonymous. It is manifest you have never argued a case at the Federal Circuit. Probably not even before the PTAB.
DeleteSlicky-boy stuff such as "You can repeat the question, then explain how every statement I made didn't answer that question" will get you laughed out of court, and maybe sanctioned. More important, your client will lose.
This is not a court. But if you present yourself as an expert by commenting on the law you should be able to defend your pronouncements. As by demonstrating that you know at least a little about the basics of claim interpretation.
Quoting snippets from cases where you clearly don't even understand the words does not demonstrate that. You say, "The Patent and Trademark Office (PTO) must consider all claim limitations when determining patentability of an invention over the prior art. In re Lowry." That's correct. That's uncontroversial. But you need to understand what the word "limitation" means. And that determining what's a "limitation" is prior to, and separate from, the step of "determining patentability of an invention over the prior art."
It may seem like fun and games, but the harm is that some noob attorneys might think stuff like "explain how every statement I made didn't answer that question" will get them by and maybe even advance their client's case. It will not. It never has.
Does the claim require a "host?"
Delete(A) Yes, because it is in the claim. “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” CONNELL v. SEARS, ROEBUCK CO, 722 F.2d 1542, 1548 (Fed. Cir. 1983). [Editor's note: this doesn't necessarily apply in TC 3600 -- they don't follow the same patent laws everybody else does].
And that determining what's a "limitation" is prior to, and separate from, the step of "determining patentability of an invention over the prior art."
oohh ... aahh. I'm sure there are thousands of Examiners who would love to have some case cites that tell them how they can ignore claim language. I know it is possible, but it would be awfully nice if you could share some cases. Didn't you say you could provide "dozens and dozens" of examples? I just asked for two. What are you waiting for?
It may seem like fun and games, but the harm is that some noob attorneys might think stuff like "explain how every statement I made didn't answer that question" will get them by and maybe even advance their client's case. It will not. It never has.
You are getting awfully worked up. Let me clue you into something -- it is A POST... ON A BLOG -- not an argument before a judge. Also, let's remember that AL said "I can't prove that you haven't answered the question" and I just explained how he could.
you should be able to defend your pronouncements
If I recall correctly, the "pronouncement" was made by Anon2 who wrote:
I might tend to agree with you, but the folks who make patent law (Federal Circuit judges) do not. The claim is from the first case I came across that proves the point, In re Motorola Mobility (Fed. Cir. 2013). The claim called for a controller and a data processing "host" in the same arrangement as above. The panel determined that the "host" has to do more than send information to the communication unit (device).
As it turns out, this case did NOT "prove[] the point." The Federal Circuit disagreed with the Board about how to interpret "host." So tell me, who needs to defend what pronouncement?
"Does the claim require a 'host?'
Delete(A) Yes, because it is in the claim."
Earlier (Oct. 31, 2016 at 1:07 PM), Anonymous said, "To infringe the claim, the infringer does not have to possess the data processing computer" --
-- even though a "data processing computer" was in the claim.
Are you lying now or were you lying then?
In re Schreiber is the first case that comes to mind that disproves your "because is is in the claim" hypothesis. Popcorn was in the claim, but not in the anticipating prior art.
"let's remember that AL said 'I can't prove that you haven't answered the question' and I just explained how he could."
DeleteWrong again.
You said "You can repeat the question, then explain how every statement I made didn't answer that question."
We don't know every statement you made. We only know what you posted here.
"Let me know when you want to discuss the LAW sometime. I'll be more than happy to. Until then, I'm done playing this little game of yours."
DeleteYou're wasting your time. They don't understand the law.
Ah, yes, your "law." Anonymous, you can learn from AAA JJ. He has been embarrassed so many times he no longer attempts to answer any question about patent law (even easy multiple choices).
DeleteRight. That's why I'm out here getting case after case allowed. And why you're in there doing you're "I'm not an attorney, but I play one at the Patent Office" routine.
DeleteI take joy in educating examinert#rds like you.
You're prolly that examiner who thinks the burden of proof is substantial evidence.
DeleteLulz
You're prolly the AAA JJJ who has conclusively demonstrated you do not know the meaning of (a partial list) . . .
Deletepreponderance
allegation of fact
substantial evidence
traverse
Rule 105
preponderance
Star Fruits
Fed. Cir. panel decisions v. precedents
preponderance
principal
Official Notice
preponderance
harmless error
Lulz (not part of the list)
We don't know every statement you made. We only know what you posted here.
DeleteDid you really think I meant to include statements outside this blog? That's either sad or a lame excuse -- probably both. BTW -- I'm still waiting on your "dozens and dozens" of examples.
Are you lying now or were you lying then?
DeleteLOL ... Examiner likes to think he is capable of playing attorney -- how cute. To establish infringement or anticipation, all limitations must be shown. However, as I explained at the very beginning, some limitations are "environmental" limitations. If, I claim "a mobile telephone, comprising a transmitter connected to a cell tower," to establish infringement (or anticipation), the transmitter has to be connected to a cell tower. However, an infringer does not have to have possession of the cell tower to infringe. Changing the example a little, perhaps I clarify that the cell tower supports CDMA2000 (i.e., 3G). It is still a limitation and it still needs to be shown for infringement and anticipation.
Your "In re Schreiber" is not a good case for you to cite. The problem with reading the MPEP (where most Examiners get their case law) is that the one or two sentence "holding" presented in the MPEP frequently presents a poor representation about what the case was about. From time to time, I'll have an attorney say "well, the MPEP says 'this and this' about the case." My typical retort is "Did you read the case? What does it really say?"
So, let's looking at what the Federal Circuit really said in In re Schreiber (the "popcorn kernel" case). Interestingly enough, Schreiber states the following "[t]o anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently." That seems to support MY position. What the Court determined that the ability to "permit the dispensing of only a few kernels" was an inherent characteristic of the prior art. It wasn't that those limitations were ignored -- they were determined to be an inherent part of the prior art.
A side note, based upon the language of claim 1 (reproduced in the decision), the "container" is an environmental limitation. An infringer (if the claim was patented) wouldn't have to possess either the popcorn or the container to infringe. However, the dispensing top still needs to meet the limitations associated with the popcorn and the container.
Consider the hypothetical claim language of "a rubber hose have a circular opening and the circular opening is sized to pass a penny." The limitation "sized to pass a penny" cannot be ignored. The prior art doesn't have to show a penny, but if the prior art shows an opening that inherently is capable of passing a penny, then there is infringement.
Another thing to ponder. When attorneys review a particular case, one thing they should also look at is what other cases cite the particular case they are looking at. In this instance, my quick and dirty google search found very little for Schreiber. However, I found the Appellant's Appeal Brief in In re Giannelli in which they argued that the USPTO has misapplied Schreiber. Interestingly enough, the USPTO was reversed in that case. While Schreiber is probably good law for the specific fact pattern at issue, I don't see the Federal Circuit expansively interpreting that decision.
"Did you really think I meant to include statements outside this blog?"
DeleteWe can't really comment on what you "meant" to include.
"LOL ... Examiner likes to [yada yada yada maybe nobody will notice if i change the subject]
DeleteWhy are you going off on Schreiber? Schreiber was cited only to show the demonstrative falsity, or cluelessness, or whatever you want to call it, of the answer to
"Does the claim require a 'host?'
(A) Yes, because it is in the claim."
Care to defend that?
I didn't think so.
Were you lying then or are you lying now?
Anonymous, ummm, are'nt "environenmental" limitations in the claim? Jus trying to hep you out, bro.
DeleteYou can search patent cases for "environmental limitations" and get zero hits. We have a new AAA JJ!!!! Just make this sh##%$ up!!!
DeleteWe can't really comment on what you "meant" to include.
DeleteNothing substantive to add -- how typical.
Were you lying then or are you lying now?
DeleteNothing original to say I see. You must be an Examiner -- keep repeating the same sh&% over and over and over again.
You can search patent cases for "environmental limitations" and get zero hits. We have a new AAA JJ!!!! Just make this sh##%$ up!!!
DeleteYawn -- did you search Landis? My copy of his book ("Landis on Mechanics of Patent Claim Drafting") got lost in a move over a decade ago. However, I did find the following in "Reading Notes" prepared by somebody on the book and posted online:
"Workpiece” or “environment” element: Many apparatuses work on a particular item, or interact with the environment in which it is used – these include fuel on which a claimed engine operates, and celestial bodies that a claimed telescope is intended to present for observation – such an element is not recited as a proper element in its own subparagraph, but must be mentioned to make the claims operative – it might be first mentioned in the preamble (“a juicer for squeezing citrus fruit, comprising…”), or might be left out if the device is intended for broader use (“a juicer comprising…”) – it is helpful to imagine what the patentee (and competitors) will sell as the invention, and what might be included separately (e.g., replaceable parts); this may be the difference between suing a competitor as a direct infringer, and as merely a contributory infringer (if he sells the actual invention, but omits workpiece/replacement parts that are included as claim elements)
"Yawn -- did you search Landis?"
DeleteIs that In re Landis? Landis v. Microsoft? Landis v. Claim Drafting? My , but you have an expansive definition of "patent case."
[maybe somebody should point out that even that snippet he says some unnamed person made up and posted online does not contain the phrase "environmental limitation." But I won't.]
Did you mean to include more?
"You must be an Examiner -- keep repeating the same sh&% over and over and over again."
DeleteThose pesky examiners just won't quit when you can't answer and try to change the subject. Those bas*urds.
I feel your pain. If only the Office gave out participation trophies.
So,
"Does the claim require a 'host?'
(A) Yes, because it is in the claim."
Care to defend that?
I didn't think so.
Allegation of fact.
DeleteLulz beyond lulz beyond lulz.
I enjoy educating examinert#rds like you. My favorite is when you make an "allegation of fact" or take "Official Notice" and I explain to you why that won't cut it, and you tell me my arguments are "not persuasive" and make it final, and then I appeal and your SPE sends you out of the conference with your tail between your legs to research the whole case and send me a new OA. For ZERO counts. I do enjoy making examiners work for no counts. You're probably one of the examiners I've done that to. Multiple times.
Is that In re Landis? Landis v. Microsoft? Landis v. Claim Drafting? My , but you have an expansive definition of "patent case."
DeleteDid I say "patent case"? Oh wait, I didn't. Not being an attorney you probably don't know that most legal fields have many treatises associated with them. Landis is a well-known treatise in patent law regarding claim construction.
does not contain the phrase "environmental limitation."
Must be one of those Examiners that does examination-by-keyword-searching (i.e., not an exact match in terminology -- just ignore it).
Care to defend that?
Delete"I have -- with case citations in multiple instances. Burden shifted. Your turn."
You have proven the statement "Yes, because it is in the claim" demonstratively false. I don't think "defend" means what you think it means.
"Did I say "patent case"? Oh wait, I didn't."
Delete-- "You can search patent cases for "environmental limitations" and get zero hits."
- - "Yawn -- did you search Landis?"
Written records are such pesky things.
"just ignore it"
DeleteAgreed.
Care to defend that?
ReplyDeleteI have -- with case citations in multiple instances. Burden shifted. Your turn.