tag:blogger.com,1999:blog-6733236595417664807.post2467045171404160244..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: Ex parte Rodriguez (precedential): 112 is the new 101Karen G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger5125tag:blogger.com,1999:blog-6733236595417664807.post-62010817629638550932010-04-12T17:05:44.083-04:002010-04-12T17:05:44.083-04:00>not happy about the loss of future structural ...>not happy about the loss of future structural <br />>equivalents due to the "means plus function" <br />>interpretation<br /><br />Are you referring to the "after arising equivalents" rule from Chiuminnata? That rule limits only literal infringement under 112P6. Infringement under DoE is still available if you lose on already-existing-equivalents analysis of literal infringement. See Al-Site Corporation v. Vsi International Inc 174 F3d 1308.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-52041136171394537972010-04-12T16:46:45.912-04:002010-04-12T16:46:45.912-04:00Broje, great to have you as a contributor.
>no...Broje, great to have you as a contributor.<br /><br />>not concerned about lacking an algorithm<br />>because of the detailed flow diagrams <br /><br />Are you sure about that? Suppose your claim has 3 M+F elements: MF Xing; MF Ying; and MF Zing. Then under Rodriguez, it's absolutely *not* enough that you have a flow chart with steps X, Y, and Z. <br /><br />Instead, Rodriguez says should have a flow chart for X, another for Y, and another for Z. Or a single flow chart with multiple steps for X, multiple steps for Y and multiple steps for Z. Or no flow chart at all, but some other sort of description. The important thing being that you describe details of how each claimed function is implemented. <br /><br />Such details may add no value whatsoever in explaining how the system works. For example, suppose my claim is:<br /><br />a) MF multiplying a first factor by a second factor to produce a product; <br />b) MF inserting the product into a list; <br />c) MF sorting the list;<br /><br />Under Rodriguez, I have to show an ALGORITHM for multiplying and another ALGORITHM for inserting into a list and another ALGORITHM for sorting the list. <br /><br />Ridiculous.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-73725863143709525122010-04-12T15:37:07.517-04:002010-04-12T15:37:07.517-04:00The requirement for an example algorithm can be a ...The requirement for an example algorithm can be a mathematical formula, detailed flow chart, psuedocode, or source code.<br /><br />There are plenty of "system" claims reciting "_____ing modules" as elements that will be interpreted as "means plus function" claims. I've written many of them myself, but I am not concerned that any of them will be found lacking a disclosed algorithm because of the detailed flow diagrams that were provided. I'm not happy about the loss of future structural equivalents due to the "means plus function" interpretation, or how that will impact their value. "Worthless?"<br /><br />broje TINLA IANYLAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-62728819276431226922009-12-15T13:34:58.406-05:002009-12-15T13:34:58.406-05:00>Aristocrat says that the spec must have an >...>Aristocrat says that the spec must have an >example algorithm <br /><br />Yes, that's exactly what Aristrocrat said (citing the 1997 decision WMS Gaming).<br /><br />>to provide enablement for functional language <br />>in claims? <br /><br />Nah, it's separate from enablement. The rejection is Indefiniteness. <br /><br />>And enablement only requires that [a POSITA] <br />>can implement the invention without undue >experimentation.<br /><br />Agreed. But 112P6 includes requirements *separate from* enablement: you can write shorthand claims with reference to function as long as you tie that function to structure described in the spec. <br /><br />Unfortunately the Federal Circuit decided in its infinite wisdom that in the context of a function implemented by a computer, the "structure" is AN ALGORITHM. [I won't even get started on how stupid that sounds to a former software developer like myself...]<br /><br />>[POSITA] can come up with several algorithms <br />>to perform a particular function. <br /><br />Indeed. And your method claim -- if you can get past 101/Bilski -- covers all of them. But your M+F does not. <br /><br />For example, "sorting the results by score" covers a myriad of sorting algorithms known to a POSITA (bubble sort, quick sort, etc. etc.)<br />but "means for sorting the results by score" is INVALID if you didn't describe an algorithm for doing this and LIMITED TO the algorithm if you did. As well as the algorithm's equivalents, as specifically provided for in 112P6. <br /><br />I don't recall a single Fed Cir decision where a software M+F claim was found Valid. Plenty of invalid ones: Aristocrat v. Int'l Gaming; Finistar v. DirecTV; Net MoneyIn v. Verisign; and Blackboard v. Desire2Learn.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-18488923273218212932009-12-15T12:38:20.427-05:002009-12-15T12:38:20.427-05:00So Aristocrat says that the spec must have an exam...So Aristocrat says that the spec must have an example algorithm to provide enablement for functional language in claims? There will be thousands of worthless software applications, then. It doesn't make sense at all, because then in the means plus function claims, which, at least in this case, the Examiner read even the apparatus claims as such, are you tied to that one algorithm in the spec. That's the reason we've rarely put algorithms in software specs - one of ordinary skill in the art can come up with several algorithms to perform a particular function. And enablement only requires that one of ordinary skill in the art can implement the invention without undue experimentation. See MPEP 2164.01.Benjie Balserhttp://www.bgiplaw.com/benjie.htmnoreply@blogger.com