Category : Patent Prosecution Tips

A Renewed Call: Repeal the Single Sentence Rule for Patent Claims

By Stephen B. Schott

Like all elementary school graduates, I learned that a single sentence should be short. One source suggests that a well-written work should average 20 to 25 word sentences.[1] With that as the guide, sentences averaging 50 words would raise the ire of a 3rd grade teacher. Those averaging 100 words would drive a sane person mad. And a 250 plus word sentence would drive even Proust to distraction.

But sentences of such prodigious lengths are commonplace in patent law. The offending sentences are patent claims.[2] These claims are a U.S. patent’s most important feature. It is here that the inventor, or more likely the inventor’s attorney, sets forth the “metes and bounds” that define the invention. The claims serve as property lines: Cross into those lines with your product and you infringe the patent.

With such importance placed on claims, you would expect them to be readable. You would at least expect them to have been the subject of the “plain English” movement, perhaps best summed up by Albert Einstein when discussing science: “Most of the fundamental ideas of science are essentially simple, and may, as a rule, be expressed in language comprehensible to everyone.” But the claims—despite the substantial time spent drafting and interpreting them—are not a place where the discerning reader finds linguistic respite.

Why do patent attorneys write claims this way? The simple answer is that even in a plain English advocate’s hands, patent claims are doomed to obfuscation by the very authorities that require them. The U.S. Patent and Trademark Office (USPTO) almost insists that claims be unreadable. In the USPTO’s own words: “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.”[3] Thus, the plain English drafter can painstakingly weed every occurrence of “utilize.” And excise “said,” replacing it properly with “the.” And even strike “of the” in favor of possessives. But after all this careful work, the drafter may be left with an impenetrable sentence of a length not seen since Matthew begatted Jesus’s lineage back to Abraham.

The consequence of the USPTO’s “single sentence rule” requires the patent drafter to cram several paragraphs of description into a single sentence. The rule forces claim drafters to convert otherwise sensible sentences into multiple clauses beginning “wherein,” such as: “wherein the stringed instrument includes a vibrato bridge movable to vary the tension of each of said one or more strings wherein each of said one or more strings is connected at one end to the actuating means and wherein the actuating means is carried by the vibrato bridge.” In a patent attorney’s hands, the above clause contains reasonable usage. In the hands of any other person, that clause—part of the lengthier entirety of the claim—justifiably drives them apoplectic.

Your next question will probably be: “Why doesn’t someone do something about this clearly outdated rule?” Alfred A. Fressola, patent attorney, inventor, and principled-writer did. During his application’s prosecution, Mr. Fressola, equal parts aware of and perturbed by the USPTO’s single sentence rule, wrote a claim in verboten multi-sentence form. Upon examination, the USPTO examiner formally objected to the claim but also admitted that it was “clearer” than a similar single sentence variant.

Armed with the examiner’s admission and the knowledge that he was on the side of right-writing English peoples, Mr. Fressola petitioned the then-Commissioner of the USPTO, Harry F. Manbeck, Jr., to review the examiner’s objection to his multi-sentence claim. In denying Mr. Fressola’s petition, the Commissioner quoted the Manual of Patent Examination and Procedure (MPEP) and further drew on the weight of 150-plus years of singe sentence tradition. In doing so, he concluded that the single sentence nightmare is “the proper and only way of drafting a claim in compliance with the statutory requirement of 35 USC 112, paragraph 2.”

In addition to 150 years of single sentence history, the Commissioner stated that “the courts do not appear to have had any difficulty dealing with long claims.” The Commissioner went on to argue that “[t]he single sentence requirement promotes clarity and precision…by eliminating…multiple complete sentences.”[4] With such defenses of run-on sentences, it’s no wonder Mr. Fressola (according to him, to his partners’ bemusement) appealed the Commissioner’s decision from the USPTO to the U.S. District Court for the District of Columbia.

The D.C. Circuit gave Mr. Fressola’s case short shrift, deciding that the single sentence requirement was nothing more than a formal—not a substantial—requirement, and thus properly administered by the USPTO. Mr. Fressola—still the inventor here as well as defender of English and patent attorney—tired of his appeals on this point and eventually secured US Patent 5,617,332.[5]

It is a rare situation that someone would take the time to appeal the single sentence rule, allowing their patent application to languish for years in the administrative and court processes while challenging a clearly written—if wrong—requirement. But kudos to Mr. Fressola for being in the unique position to take up the challenge and follow it through.

Mr. Fressola’s position that Section 112 is best-served not by tradition, but by clarity in writing that “particularly” and “distinctly” describes the invention, makes sense. With the potential arrival of a new USPTO Director, I hope that Mr. Fressola’s sensible position becomes the rule. Writing claims in multiple sentences, while perhaps flouting 150-plus years of claim-drafting tradition, promotes clarity. It further complies with the statutory requirement that claims be “particular” and “distinct.” That such claims would differ from the international one-sentence norm would only place the United States at the forefront of a sensible change in patent claim-drafting rules. Not only would the patent bar be happier for it,[7] but so would the examiners who are charged with interpreting needlessly unreadable claims, as well as the judges and juries who examine claims in excruciating detail.

[1] Garner, Bryan. Garner’s Modern American Usage, 3rd Ed. 2009.
[2] To spare you some frustration, I have not included the entire text of one of these monstrosities in this article and for that, I accept your thanks.
[3] Manual of Patent Examination and Procedure (MPEP) Section 608.01(m) (the MPEP is guidebook that provides the procedure to be used by examiners when they examine patent applications).
[4] Section 112 requires that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” The Commissioner stated that courts “do not have difficulty” parsing long claims, and as proof, noted a civil action involving a 268-word claim.
[5] I beg to differ: I have often heard judges beg on their own and on their juries’ behalves for patent attorneys to take mercy on them and not overcomplicate things with dense writing.
[6] Mr. Fressola unsuccessfully appealed another aspect of his patent application, an omnibus claim, to the Court of Appeals for the Federal Circuit.
[7] A version of this article originally published in 2009. The bar’s response to it then was skeptical, so maybe I’m wrong and patent attorneys want less clarity. If so, it may put them at odds with their clients’ wishes.

Where do ideas come from?

Chauvet Cave art

From nothing came Let It Be, Starry Night, calculus, East of Eden, Star Wars, the Taj Mahal, Oreos, the Internet. Somehow we look into the grey unformed nothingness clay in our heads–and we create. No one can explain how we do it–what makes this mundane sentence that I’m writing even possible–and yet we have been doing it for a long time. The Chauvet Caves in France hold cave paintings that date back almost 40,000 years with hints of art in bits of sculpture and paint dating back over 150,000 years. So even when humans would have struggled to find food, when were as often the hunted as the hunter, and had only a limited understanding and time for medicine, we found time to create.

How is it that we access our ability to create? Neuroscience can help identify the areas of the brain that are activated as we create. Someone coined a right brain/left brain dichotomy early on but the most in depth studies show this to be a myth. In fact, during creation many areas of the brain light up and talk. A creative idea inside the brain is therefore a neural network of electro-biological signals that has never been formed before. But what caused this network to form? And how can we form more? Neuroscientists can only hint at environs that help creativity–and not at its ultimate root cause. Which leaves science without a lot of insight into how we render a painting, write a song, make a new food combination.

Other scientists like Steven Johnson note that ideas are rarely the epiphany-eureka moment of literature. The apple doesn’t hit Isaac Newton on the head. Instead, he says, our most creative ideas arise from a “slow hunch.” One example is from Charles Darwin, who for years in his personal diaries was deeply pondering the tenets of natural selection, without linking together the simple over-arching theory. In his diaries, he is consumed with changes in birds due to environment over time. That certain birds of certain characteristics would not survive long-term and others would. These deep observations link to other insights he’s having, and yet he lacks the certainty to espouse his theory of natural selection until each piece of his network forms.

And when we think of creation as a network, we can then look at ideas as needing a culture to help form those connections. Is it a coincidence then that right now, the most networked place on earth is the Silicon Valley, our innovation hub. It became a hub of coffee house idea culture. It has an abundance of shared workspaces. Employees moving between companies act like bees spreading the pollen of ideas from one innovative place to another. Companies like Google recognize the huge benefit of idea-spreading so much that they encourage their employees to spend 20% of Google time on their passions–recognizing that a network administrator may create AdSense, Gmail, Google Maps, Google News, Google Talk–to name a few outgrowths of Google’s 20-% policy–if they follow their own passions instead of the corporate mandate. With policies like this, is it any wonder that the Silicon Valley is a cradle of ideas?

But even if scientists conceive of ideas as a neural network,  and even if we can form a petri dish of the idea coffee house as a place for the ideas to form, who can answer the title question of this article: Where do ideas come from?

If the scientists fall short, maybe we can ask the artists. When we do, we find that their answers provide fewer concrete answers, but they do give us a welcome poetical vagueness. Vague because in the end these artistic minds give no more surety than neuroscience’s “ideas come from all over the brain.” Welcome because their answers provide a metaphorical framework that feels relatable. And poetical because, well, you be the judge.

[The idea pool is] the pool where we all go down to drink, to swim, to catch a little fish from the edge of the shore; it’s also the pool where some hardy souls go out in their flimsy wooden boats after the big ones. It is the pool of life, the cup of imagination, and … different people see different versions of it, but with two things ever in common: it’s always about a mile deep in the Fairy Forest, and it’s always sad. Because imagination isn’t the only thing this place is about.

– Stephen King, Lisey’s Story

Startled by God
Not like
A lone beautiful bird
These poems now rise in great white flocks
Against my mind’s vast hills
Startled by God
Breaking a branch
When his feet

King’s and Hafiz’s otherworldy-sounding descriptions of where ideas come from, however, lodge sideways in a scientist’s mind. And being one, I get that. But consider a few spooky coincidences in the fields of scientific discovery: The 17th-century independent formulation of calculus by Isaac Newton, Gottfried Wilhelm Leibniz and others; the 18th-century discovery of oxygen by Carl Wilhelm Scheele, Joseph Priestley, Antoine Lavoisier and others; the theory of evolution of species, independently advanced in the 19th century by Charles Darwin and Alfred Russel Wallace. This coincident invention and discovery is so commonplace that it has been studied under a term called Multiple Discovery.

And consider Eat, Pray, Love author Elizabeth Gilbert’s story in Big Magic: Creative Living Beyond Fear about an idea she had. Gilbert had an idea about a midwestern pharmaceutical executive that goes to the Amazon searching for a drug, but gets tangled in a murder. Gilbert was sketching out the plot but eventually didn’t see it through. A few months later, she was talking to her friend, the author Anne Patchett, who told her she was working on a book about–wait for it–a midwestern pharmaceutical executive that goes to the Amazon searching for a drug and who gets tangled in a murder. When the authors compared notes, Patchett got her inspiration for her State of Wonder at the precise moment when Gilbert gave up on her own idea.

The Gilbert-Patchett story reminded interviewer and author Krista Tippett of Roseanne Cash’s description of how ideas are around us all ready to be caught, but “you have to have your catcher’s mitt on.” As Cash went on to playfully say, “I don’t want [fellow country music singer] Lucinda [Williams] to get this one.”

All this leaves the title question unanswered. And given science’s failure to uncover where ideas come from, and the discoverer’s own poetic answers, that gives some comfort: Maybe human creativity is a body of water whose depths we cannot fathom.

Closing such an exploration on an IP note may seem out of place, but this blog has a theme, and there may be some on-point advice to give. The multiple discovery phenomenon is well-known and documented. Why it happens is anyone’s guess but that it happens is beyond doubt. From an IP attorney perspective, the takeaway is: File now. Protect your ideas before Lucinda does.

Patent Month in Review: February 2017

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Supplying a Single Part of Many in an Infringing Device Does not Give Rise to Infringement Liability

The Supreme Court weighed in on whether supplying a single part for export in a multi-part infringing assembly gave rise to liability in Life Technologies Corp. v. Promega Corp. (Supreme Court 2017). In finding no liability, its conclusion was succinct: “supply of a single component of a multicomponent invention for manufacture abroad does not give rise to §271(f)(1) liability.”

Board (and Examiners) Must Sufficiently Identify Elements in Prior Art and Justify Motivation to Combine References

Patent applicants sometimes feel frustrated by loose rejections where examiners don’t explicitly point out where each claim element may be found in a reference, or more often, what would motivate a person of ordinary skill in the art to combine references. In PersonalWeb Tech v. Apple (Fed. Cir. 2017), the Federal Circuit gave some support to the frustrated applicant, stating that “[t]he Board did not sufficiently explain and support the conclusions that (1) Woodhill and Stefik disclose all of the elements recited in the challenged claims of the ’310 patent and (2) a relevant skilled artisan would have been motivated to combine Woodhill and Stefik in the way the ’310 patent claims and reasonably expected success.”

“Consisting of” Still Sets of a Closed List

Careful claim drafters know that “comprising” and “comprised of” set off open lists that include the elements therein and others unidentified, and “consisting” sets off closed lists that are limited to the elements in the list and no others. Shire Development v. Watson Pharma (Fed. Cir. 2017) confirmed this reading on “consisting of:” “‘consisting’ creates a very strong presumption that that claim element is ‘closed’ and therefore excludes any elements, steps, or ingredients not specified in the claim.”

Sovereign Immunity Protects Public Universities from IPR Challenges

According to the Patent Trial and Appeals Board, the 11th Amendment shields public universities from IPR challenges. The 11th amendment reads, “The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.” The case has not gone higher than the PTAB at this point but this is good news for public universities with large patent portfolios. It will be interesting to see how this might apply to public university licensees. See Covidien LP v. University of Florida Research Foundation Inc., Case Nos. IPR 2016-01274, 01275, and -01276 (PTAB January 25, 2017).

Who is the Director of the USPTO: Solved

For reasons unknown, the identity of the USPTO director was unclear since President Trump’s inauguration. In response to FOIA requests from Patently-O’s Dennis Crouch, the USPTO now confirms that Michelle Lee is still Director.

[T]he Agency is responding that Michelle K. Lee is the Director of the United States Patent and Trademark Office and Anthony P. Scardino is the Acting Deputy Director of the United States Patent and Trademark Office.

If you have questions, contact me.


Quick Hitter: Is it Really Obvious to Combine Those References?

By Stephen B. Schott

dreamstime_xs_13876035 2One justification for a patent office rejection is the brick wall, “It would have been obvious for a person of ordinary skill in the art to combine these references.” This is a tough statement to overcome for any would-be patentee hoping to argue that an examiner improperly combined two (or more) references in issuing an obviousness rejection.

But the Federal Circuit just gave applicants a boost in In re Nuvasive, Inc.

Motivation to Combine Background

The Supreme Court, in its 2007 KSR Int’l Co. v. Teleflex Inc. case, considered the standard for when it is acceptable to combine references in forming an obviousness rejection. “[It] can be important to identify a reason that would have prompted [a person having ordinary skill in the art] to combine the elements in the way the claimed new invention does.”

Nuvasive and a Higher Threshold

The Federal circuit stated that “the PTAB “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” As most applicants know, this threshold is a higher bar than the boilerplate sentence that usually justifies the combination of references in a rejection. The Federal Circuit addressed such boilerplate rationale for combinations and found it wanting: “‘[C]onclusory statements ‘alone are insufficient and, instead, the finding must be supported by a “reasoned explanation.” (citing In re Lee.)

The next time you’re faced with a questionable combination of references, don’t despair: Cite Nuvasive and question the justification: Ask for the rational connection between the facts found and choice to combine the references.

If you have questions, contact me.

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USPTO Adds Another Final Office Action Option: P3 Pilot Program

By Stephen B. Schott

www.masterplaques.comThe USPTO recently announced a 6 month pilot program to give applicants another option for responding to final office actions. Here is a discussion of current after final options.

The USPTO often releases its ideas for pilot programs, asking the public for comment, but in this case it announced that the program will open immediately and will close on January 12, 2017.

How to Participate in the P3 Program

The applicant must file:

  1. A Certification and Request for Consideration under the Post-Prosecution Pilot Program (P3) Form within two months of the mailing date of the final rejection and before filing a notice of appeal.
  2. A response of no more than 5 pages of arguments with no claim amendments and/or optionally, a proposed non-broadening amendment to one or more claim(s).
  • Applicant cannot have previously filed a proper request to participate in the Pre-Appeal or the AFCP 2.0 programs in response to the same outstanding final rejection.
  • Once a P3 Request has been accepted, no additional response(s) under 37 CFR 1.116 will be entered, unless requested by the examiner.
  • It is also impermissible to request to participate in the Pre-Appeal program or request consideration under AFCP 2.0 once a P3 request has been accepted.

The USPTO will contact the applicant to schedule a P3 conference, which is a conference of a panel of examiners (for example, three, although the number is not specified), one of whom is the examiner of record.  The initial contact from the USPTO will be to schedule a conference within ten calendar days of the initial contact.

The applicant will make an oral presentation to the panel of examiners, with such participation being limited to 20 minutes and following these rules:

  1. Any materials used by the applicant will be placed in the file.
  2. Applicant may present on appealable, but not petitionable, matters.
  3. Applicant may present arguments directed to the outstanding record or the patentability of the amended claim(s) as proposed.

After applicant’s presentation, the panel will inform the applicant of its decision, in writing.

The P3 process will be terminated if applicant files any of the following after the filing of the P3 Request but before a the panel decision:

  • A notice of appeal
  • A Request for Continued Examination (RCE)
  • An express abandonment under 37 CFR 1.138
  • A request for the declaration of interference, or
  • A petition requesting the institution of a derivation proceeding
Following a panel decision rejecting the applicant’s argument, the applicant will have the option of filing an RCE, an appeal, or continuation applications.

If you have questions, contact me.

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2016 May Patent Law Update

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By Stephen B. Schott

Immersion Corp. v. HTC Corp, Civil Action No. 12-259-RGA, (D.Del 2015)

This case is now on appeal to the Federal Circuit and could have wide ramifications. The statute at issue is 35 USC 120.

An application for patent … in an application previously filed in the United States…shall have the same effect… as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application …

The debate between the parties focused on whether a continuation application filed on the issue date of a priority application was filed before the patenting of the priority application. This debate arises out of the USPTO’s interpretation of Section 120, in that the USPTO reads “before” as “not later than.” Judge Andrews found found that such an interpretation contradicts by the ordinary meaning of “before.”

One article states that there are 30,000 priority claims at stake.

Enfish, LLC v. Microsoft Corp. 2015-1244 (Fed.Cir. 2016)

(This blog covered Enfish in detail here.)

The current Alice two-part test of patentable subject matter: (1) Determine whether the claim is directed to an abstract idea, and (2) If an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.

From the case: “Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.”

In other words, is the claimed invention something that makes a computer work better?  If yes, not abstract. Or are computers merely being used to do another task?

If you have questions, contact me.

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Federal Circuit: Software Not an Abstract Idea—Is Patentable

By Stephen B. Schott

dreamstime_xs_17536982Software patents are alive. Again. Many pundits have been saying it since the Supreme Court’s Alice decision on patentable subject matter in 2014 but there has been little guidance on the topic from the leading courts until now.

On Thursday, the Federal Circuit ruled unanimously that software and data structures were not inherently abstract ideas and were therefore patentable under the Supreme Court’s two-part Alice test. Enfish, LLC v. Microsoft Corp (Fed. Cir. 2016).

The Technology: Self Referential Database

Software and database-related patents have taken a beating in the post-Alice world, so it’s interesting that this case relates to a database, and in particular a self-referential database. To set the technical context, the Federal Circuit explained the more common relational database in contrast to the claimed self-referential one.

With the relational model, each entity (i.e., each type of thing) that is modeled is provided in a separate table. For instance, a relational model for a corporate file repository might include the following tables: document table, person table, company table. The court went on to explain how users and programs populate these tables and relate them to one another through defined relationships between the tables.

 A self-referential database like those described in US Patents 6,151,604  and 6,163,775  at issue, “has two features that are not found in the relational model: first the self-referential model can store all entity types in a single table, and second the self-referential model can define the table’s columns by rows in that same table.”

The Claims in US Patents 6,151,604  and 6,163,775

The Federal Circuit looked at both patents but used the ‘604 patent claim 17 as its example in its analysis:

17. A data storage and retrieval system for a computer memory, comprising:
means for configuring said memory according to a logical table, said logical table including:
a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;
a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and
means for indexing data stored in said table.

This claim has two means plus function elements, which means that it incorporates even more limitations into the claim. Means plus functions claims force a court into a two-step inquiry during claim interpretation: (1) identify the function, for example in this claim one function is “indexing a data stored in said table,” and then (2) identify the structure in the specification that performs the function—which is where the additional limitations may be added to the claim itself.

The Federal Circuit’s Analysis

The Federal Circuit, which has been on the wrong side of almost every subject matter case appealed to the Supreme Court, started its analysis by noting that the Supreme Court and Federal Circuit have together grappled with the issues of patentable subject matter, presenting an argument that to an outside observer would almost seem like the two courts are in sync on this topic, contrary to the track record of their differences.

th-enfish-logoThe Federal Circuit introduced the Supreme Court’s Alice two-part test of patentable subject matter: (1) Determine whether the claim is directed to an abstract idea, and (2) If an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Unlike the Federal Circuit’s earlier DDR Holdings case that only analyzed the second part of this test, the Enfish court focused solely on the first part.
The Supreme Court has suggested that claims “purport[ ing] to improve the functioning of the computer itself,” or “improv[ing] an existing technological process” might not succumb to the abstract idea exception. While it is true that the Court discussed improvements to computer-related technology in the second step of its analysis in Alice, that was because the Court did not need to discuss the first step of its analysis at any considerable length, (“Petitioner acknowledges that its claims describe intermediate settlement….”).
But then the Federal Circuit offered the quote that will be part of every subject matter case and response to a subject matter rejection for the near future:
We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two. Indeed, some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis. Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.
 The court then dove a little deeper into the ‘604 patent’s specification to support how the claimed technology improves a computer’s functionality.
The specification also teaches that the self-referential table functions differently than conventional database structures. According to the specification, traditional databases, such as “those that follow the relational model and those that follow the object oriented model,” ’604 patent, col. 1 ll. 37–40, are inferior to the claimed invention. While “[t]he structural requirements of current databases require a programmer to predefine a structure and subsequent [data] entry must conform to that structure,” id. at col. 2 ll. 10–13, the “database of the present invention does not require a programmer to preconfigure a structure to which a user must adapt data entry.” Id. at col 2 ll. 27–29. Moreover, our conclusion that the claims are directed to an improvement of an existing technology is bolstered by the specification’s teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements.

 The Federal Circuit went on to note that just because the claimed technology could be run on any general computer, it was not doomed by Alice’s warning that well-known business practices carried out on general purpose computers are unpatentable subject matter. “[T]he claims here are directed to an improvement in the functioning of a computer.”

Practice Notes for Practitioners

Enfish replaces DDR Holdings as the “must-cite” case when prosecuting patents at the USPTO. It avoids Alice’s “substantially more” vagueness as long as the skilled practitioner can convince a court that what is claimed improves a computer’s functionality. Claims and specifications in software-related arts should be carefully crafted with Enfish in mind.

We will keep a watch for any appeal to the Supreme Court.

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2 Minute IP: How Can I Get My Patent Faster?

By Stephen B. Schott

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On Octopi and Myths of Claim Drafting: Negative Limitations and Empty Spaces

By Stephen B. Schott

dreamstime_xs_49086497The plural of octopus is a funny word. Ask most people and they’ll tell you that it’s octopi. That conclusion is born from how to properly make Latin words plural. For example, the plural for the Latin-origin word radius is, when pluralized in Latin, radii. Many people and even the excellent Webster’s Third New International Dictionary naturally follow the Latin usage when tackling the plural form of octopus.

But there are at least three problems with octopi. First, besides the moment when some pretentious know-it-all tells you about “octopi,” your opportunities to  use a plural form of octopus in your life are seldom. (If you often need the plural for octopus, congratulations Jacques Cousteau–you need not bother with this article–you have a more interesting life than my normal reader.) The second problem with octopi is that no matter how they pluralize in Latin, we are talking about making plurals in English. And in English, the plural of octopus is octopuses.

It’s at the third problem of octopi that you can pop the pretentious bubble that surrounds the person with the upturned-pinky-while-drinking-tea. You see, octopus is not a Latin word. Not ever. Octopus is a Greek word. The plural of octopus in Greek is octopedes. An octopus traveling with friends would never would turn to octopi, even in the Mediterranean of 1200 years ago. FN1

Octopi is a myth that’s been busted. And the very same grammar-wannabes who advocate for it are probably also pushing claim drafting myths like “You can’t claim negative limitations” and “You can’t claim holes.” While these pieces of advice may be good in specific claim-drafting situations, there’s no “can’t” attached to them.

The Myth of Claiming Negative Limitations

A negative claim limitation reads like nails on a chalkboard to most claim drafters. There’s almost always a better way to draft a claim, but such a limitation is permitted. Take for example the following claim that the Federal Circuit recently considered in Inphi Corp. v. Netlist, Inc.:

1. A memory module comprising: a plurality of memory devices, …a second number of chip selects equal to twice the first number of chip selects, wherein the plurality of memory devices comprises double-data rate (DDR) dynamic random-access memory (DRAM) devices and the chip selects of the first and second number of chip selects are DDR chip selects that are not CAS, RAS, or bank address signals.

The Federal Circuit found this negative limitation not invalid because the patent’s specification supported it. As a claim drafter, the only questions to consider when looking at such a limitation are whether they provide advantageous claim scope and whether the specification supports the limitation. Whether the negative limitation itself is valid on its face is well-settled: Negative limitations are acceptable.

Myth. Busted.

The Myth of Claiming Holes and Empty Spaces

dreamstime_xs_40295571Once upon a time I had to claim a certain kind of nut and bolt combination. When claiming the nut, I recited the “hole” that ran through it. The partner overseeing my work delivered a stern lecture to me that “you can’t claim what’s not there. It’s impermissible in patent law.”Charmer that I was, I researched what sounded legally baseless and found it was. I returned the claim to the partner as I had drafted it with the research to support my position.

Grooves, apertures, openings, and similar empty spaces are acceptable elements and may be seen in thousands of patent claims. “Hole” appears in the claims of over 250,000 patents. Groove and aperture appear in almost 200,000 patents’ claims each. Opening appears in 640,000 patents’ claims.

In spite of this evidence, I don’t recommend my approach to dealing with your bosses.

Myth. Busted.

FN1. What then to make of Webster’s acceptance of octopi? Octopi pains me to my core. But English evolves over time and sometimes we accept new words and usages. Still, let’s beat this one back people.

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What is a Provisional Application’s Prior Art Date?

By Stephen B. Schott

dreamstime_xs_49801971Provisional applications have a filing date and a publication date. How do you decide which date to use as prior art when using a provisional to invalidate or challenge a patent claim? Enter the Federal Circuit’s recent Dynamic Drinkware v. National Graphics decision.

Claiming Priority to a Provisional Patent Application

The law that governs a priority claim to a provisional patent application is a monster to parse but boils down to this: A nonprovisional patent application is entitled to its provisional application’s filing date if the nonprovisional application:

(1) was filed within 12 months of the provisional filing, and
(2) claims subject matter described in the provisional.

Of course, Congress wrote this out in an endearingly more complicated way.

35 U.S.C. 119 Benefit of earlier filing date; right of priority.

(1) An application for patent filed under section 111(a) or section 363 for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b), if the application for patent filed under section 111(a) or section 363 is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application under section 111(a) or section 363 within the 12-month period was unintentional. No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this subsection.
(2) A provisional application filed under section 111(b) may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) has been paid.
(3) If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day. For an application for patent filed under section 363 in a Receiving Office other than the Patent and Trademark Office, the 12-month and additional 2-month period set forth in this subsection shall be extended as provided under the treaty and Regulations as defined in section 351.

As a practical matter, the USPTO only checks if the nonprovisional application’s filing date is within 12 months of the provisional’s—it rarely checks whether the provisional application provides a written description of what is claimed in the nonprovisional. The USPTO leaves that task for the time when another party challenges a priority date in post-grant proceedings or litigation.

The Complication of Using a Provisional as Prior Art

The Dynamic Drinkware case brings up a wrinkle: When and how can a provisional application be used as prior art?

National Graphics Lenticular Lens ExplanationDynamic Drinkware cited a patent called the Raymond patent as prior art against a National Graphics ‘196 patent involving lenticular lenses. The Raymond patent could only effectively be used as prior art against the ‘196 patent by going back to Raymond’s provisional filing date. FN1

As background to the non-patent attorney, provisional patent applications are not available to the public until a nonprovisional that claims priority to them publishes. Because of this provisional application unavailability, provisionals cannot be used as prior art against another patent or application until publication of the priority-claiming nonprovisional.

In this case, the Federal Circuit faced the question of whether the Raymond provisional could be used as prior art as of the provisional filing date against the ‘196 patent and took a route not seen before to answering “no.” The Federal Circuit adopted a two-step inquiry about whether the Raymond provisional application (on its filing date) was prior art to the ‘196 patent: (1) Determine whether the Raymond provisional provided written description to the Raymond patent claims and thus whether the Raymond patent had a proper priority claim, and (2) compare the provisional application disclosure to the ‘196 patent claims to determine invalidity (this second step was not necessary in this case).

In the first step, the Federal Circuit determined whether the Raymond provisional application had a written description that supported the Raymond patent claims. This inquiry looks to 35 USC 112’s requirement that “[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” In comparing the Raymond patent claims with the Raymond provisional, the Federal Circuit found no such support existed. The court then concluded that the Raymond patent was undeserving of its provisional priority filing date.

That the Raymond patent was undeserving of its priority claim is not a point of particular interest for practitioners but the Federal Circuit’s conclusion based on it may be. The court went on to conclude the following: “A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.” This conclusion has created some confusion in patent circles  and needs the following insert to be exactly proper: “A provisional application’s effectiveness as prior art [as of the provisional’s filing date] depends on its written description support for the claims of the issued patent of which it was a provisional.” The reason for the insert there is that the moment a provisional becomes publicly available, that is, on the nonprovisional publication or grant date, the provisional application becomes potential prior art on that publication—not its own filing—date.

The Federal Circuit supports my revision because it did not care about whether the Raymond provisional showed every element in the ‘196 patent:

Dynamic failed to compare the claims of the Raymond patent to the disclosure in the Raymond provisional application. A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1. In re Wertheim, 646 F.2d 527, 537 (CCPA 1981). As Dynamic acknowledges, it provided charts to the Board comparing the claims of the ’196 patent to the disclosure of the Raymond patent and claim 1 of the ’196 patent to the disclosure of the Raymond provisional application. See, e.g., Appellant’s Br. at 22. Nowhere, however, does Dynamic demonstrate support in the Raymond provisional application for the claims of the Raymond patent. That was Dynamic’s burden.

This case will be fodder for future patent law class exams. Sorry in advance, law students.

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FN1: Only a patent practitioner would care to read this footnote. There is a little more to this because this is a Pre-American Invents Act case. The actual date conflict was between the Raymond provisional date and the ‘196 patent’s “reduction to practice” date.