tag:blogger.com,1999:blog-6733236595417664807.post1097026850721108281..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: BPAI finds "configured to be housed within or detached from the bay" requires both configurations, despite use "or"Karen G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger15125tag:blogger.com,1999:blog-6733236595417664807.post-86945097697667014512012-10-23T18:16:16.762-04:002012-10-23T18:16:16.762-04:00In Miyazaki, a claim element was amenable to two p...In Miyazaki, a claim element was amenable to two possible definitions, neither of which made sense in view of the rest of the claims. On the other hand, requiring one or the other, or both, is definite in that the claim is met by any of three different combinations.<br /><br />Today's Flo Healthcare CAFC opinions say there are two (or three) different lines of cases to follow with respect to claim interpretation at the PTO. However, even in infringement and validity proceedings, the CAFC is fond of pointing out that it's not proper to read disclosed embodiments into the claim (except when they do it). Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-33835149439574556952012-10-23T11:43:52.653-04:002012-10-23T11:43:52.653-04:00meh, I don't bother with this nonsense, miyaza...meh, I don't bother with this nonsense, miyazaki >>>>> all such issues. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-49328767968079502182012-10-21T21:15:29.989-04:002012-10-21T21:15:29.989-04:00Examiners ignore or incorrectly apply case law all...Examiners ignore or incorrectly apply case law all the time. I have one Examiner now who incorrectly cites in re Hutchinson to reject "configured to" clauses as having no patentable weight. When I argued why that case was not applicable and cited case law that was on point, he simply cited in re Hutchinson again and issued a final rejection.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-11826348666251019472012-10-21T19:21:37.199-04:002012-10-21T19:21:37.199-04:00"it's very interesting that neither the E..."it's very interesting that neither the Examiner nor the Board made an issue of the 'configured to' clause as having no patentable weight."<br />Why should they? The Federal Circuit has stated time and time again that you cannot ignore claim limitations.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-53357411069649515212012-10-21T17:34:17.907-04:002012-10-21T17:34:17.907-04:00In view of the spirited discussion of "config...In view of the spirited discussion of "configured to" language on one of the Forums you visit, Karen, it's very interesting that neither the Examiner nor the Board made an issue of the "configured to" clause as having no patentable weight, only to the "or". But this claim uses a whole mix of "configured to" "for" and "-able" constructions and got away with it. Interesting.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-17313412365456420402012-10-18T15:39:11.697-04:002012-10-18T15:39:11.697-04:00... which brings us to not reading embodiments int...... which brings us to not reading embodiments into the claims. The BRI consistent with the specification is requiring one or the other, or both.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-27003760245531849222012-10-18T15:35:16.269-04:002012-10-18T15:35:16.269-04:00Agreed, those are always killer arguments.
"...Agreed, those are always killer arguments.<br /><br />"Who you gonna believe, me or your lyin' eyes? The claim says 'AND.' If we had meant to use the English conjunction 'OR,' we would have done so."Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-49156153433551307292012-10-18T15:21:00.264-04:002012-10-18T15:21:00.264-04:00I haven't read the spec., but an "explici...I haven't read the spec., but an "explicit requirement" would be rare. After all, the applicant might want to allege infringement at some point. Where does the spec. "explicitly" provide for "requiring" both?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-68376203044449592452012-10-18T14:20:04.054-04:002012-10-18T14:20:04.054-04:00Not many of us are counting on them to get it righ...Not many of us are counting on them to get it right. That's why we have J. Newman just in case.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-71645263670895328472012-10-18T13:28:42.045-04:002012-10-18T13:28:42.045-04:00That's the correct interpretation. The other ...That's the correct interpretation. The other interpretation that could be applied would be worded differently. You would say configured to 1 or configured to 2. Not configured to 1 or 2. Because we're talking about one monolithic configuration. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-11276767420453172912012-10-18T11:09:51.960-04:002012-10-18T11:09:51.960-04:00"Or" --
— - used as a function word to ..."Or" -- <br />— - used as a function word to indicate an alternative , the equivalent or substitutive character of two words or phrases , or approximation or uncertainty . Merriam-Webster Dict.<br /><br />- - used to join alternatives: apples or pears ; apples or pears or cheese ; apples, pears, or cheese. World English Dict.<br /><br />Yes, the Bored will _occasionally_ re-draft an applicant's claims so that they can distinguish over the prior art.<br /><br />Just don't count on it.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-5801373649105579482012-10-18T09:14:39.695-04:002012-10-18T09:14:39.695-04:00I think you mean the normal "canons" of ...I think you mean the normal "canons" of claim construction. Lulz.<br /><br />They didn't enter a new grounds under 112, 2nd because the claim, when read in light of the specification, and by one of ordinary skill in the art, and not an examinertard looking to make a rejection, was not indefinite.<br /><br />Maybe you should actually review the case law on the "normal cannons of claim construction" and educate yourself a little before posting silly comments that confirm what most of us already know: examiners don't know squat about claim construction.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-81603729992064397652012-10-17T17:59:25.668-04:002012-10-17T17:59:25.668-04:00If the Board is going to take the position that &q...If the Board is going to take the position that "or" isn't to be construed according to its normal use in english and contrary to the normal cannons of claim construction, then they should have entered new grounds of rejection under 112, 2nd. <br /><br />This was a failure on the part of the board. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-41878181866695007252012-10-17T11:29:22.900-04:002012-10-17T11:29:22.900-04:00The claims were construed to include both because ...The claims were construed to include both because it was explictly provided for in the specification as requiring both, however, is the general rule that when using "or" anticipation requires one or the other?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-68523787607157460422012-10-17T09:47:19.663-04:002012-10-17T09:47:19.663-04:00I pretty much agree on this one. This was a claim...I pretty much agree on this one. This was a claim construction issue and I see the point argued by Appellants. This also highlights one of the inherent problems with patents -- the English language can be imprecise.<br /><br />However, I'm glad they stuck to their guns regarding the claim language. Some patent practitioners are all too willing to amend claims. However, there are at least two downsides to that: (i) you've Festo'd away DOE and (ii) you've given the Examiner an excuse to make the next Office Action final. Granted, there are instances in which it is better to fix the claim language than to risk having the language being misconstrued at the PTAB (should they appeal). However, these factors should be considered before amending.Anonymousnoreply@blogger.com