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March 25, 2010

Preamble

"In July of 1990, Jeffrey and Claudia Griffin conceived of the idea of using a scratch-off label to mark beverage containers and cups so that attendees of a gathering or party could keep track of their beverage cups." And so they got 5,154,448. Michael Marrin formed Upardi to make labels, and containers with labels, under license of '448. "The relationship between Michael Marrin and the Griffins broke down swiftly, due primarily to differences in opinion about the appropriate payment obligations under the license." The Griffins terminated the license. Marrin filed a DJ, and the Griffins countered with complaint of willful infringement. Summary judgment found the patent invalid as anticipated, based upon the claim preamble not carrying any weight. The Griffins appealed.

Michael Marrin and Etch-It v. Jefferey Griffin & Claudia Griffin, and vice versa (CAFC 2009-1031) precedential

The claimed invention:

1. A scratch-off label for permitting a user to write thereon without the use of a marking implement, comprising:

a permanent base having a colored near side which is normally visible to the user and having a far side; and

a coating of scratch-off non-transparent material having a color which contrasts with the color of the near side of the permanent base, which coating is applied directly onto the near side of the permanent base with sufficient thickness so as to obscure the color of the permanent base, and which when scratched off reveals the color of the near side of the permanent base.

The district court ruled that the preamble was not limiting.

The Griffins' main argument on appeal is that the preamble's "for permitting" language should have been construed as a limitation on the scope of the claims and that the asserted prior art therefore does not anticipate. The Griffins acknowledge that the prior art disclosed scratch-off devices. However, the Griffins contend that the prior art did not disclose the ability of a user of a scratch-off device to write without the use of a marking implement, which was disclosed in the preamble to the claims of the '448 patent. The district court ruled that the "for permitting" language in the preamble was not a claim limitation based on its findings that (1) the preamble language added in the amendment only added a statement of a purpose or an intended use for the invention, and (2) the patentee did not demonstrate clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art. Marrin, 2008 U.S. Dist. LEXIS, at *2, 7. We agree.

The preamble described a use for the claimed invention.

But use descriptions such as this are rarely treated as claim limitations. As we said in Bicon, Inc. v. Straumann Co., "[p]reamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim." 441 F.3d 945, 952 (Fed. Cir. 2006). For apparatus claims, such as those in the '448 patent, generally patentability "depends on the claimed structure, not on the use or purpose of that structure." Catalina Marketing Int'l v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Here, the preamble language only added an intended use, namely, that the scratch-off layer may be used for writing.

Clear reliance on a preamble during prosecution can distinguish a claimed invention from the prior art and render the preamble a claim limitation, id. at 808, but there was no such reliance here. The prosecution history establishes that the Griffins did not consider the writing use for their claimed invention as being patentably significant.

[T]he mere fact that a structural term in the preamble is part of the claim does not mean that the preamble's statement of purpose or other description is also part of the claim.

There was more to argue over than just the preamble.

The Griffins also now argue that the asserted prior art fails to anticipate additional limitations from the body of the claims--namely, that the patented device includes a scratch-off coating that contrasts with the color of the device's permanent base. The law of anticipation is clear: "A prior art reference anticipates a patent claim if the reference discloses, either expressly or inherently, all of the limitations of the claim." Finnigan Corp. v. Int'l Trade Comm'n, 180 F.3d 1354, 1365 (Fed. Cir. 1999). We agree with the district court that all of the limitations present in the claims of the '448 patent were present in the prior art references.

Affirmed.

Cogent as ever, Judge Newman dissented. The preamble matters.

I respectfully dissent, for the court has misunderstood the law of "anticipation" and has misapplied the rules of claim construction. The law of "anticipation" requires that the same invention was previously known and described in the prior art. The law of "claim construction" requires that the claims are construed in light of the specification and the prosecution history. When the prior art does not show the same invention, correctly construed claims are not deemed "anticipated." It is incorrect to construe a claim so as to delete limitations stated in the claim--including the "preamble" clause--and then to hold the claim "anticipated" by subject matter that is excluded by the limitations stated in the preamble clause.

Nonetheless, my colleagues on this panel delete material limitations in the claim because they appear in the preamble of the claim, and then find the claim anticipated, although the claim is not anticipated when the deleted limitations are considered. These deleted limitations distinguish the invention that is described and claimed in the patent in suit. It is incorrect to construe the claims contrary to the deleted limitations so as to broaden the claims into invalidity.

Precedent establishes that the preamble limits the claims when it distinguishes the use of the claimed article from the prior art, see Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1323-24 (Fed. Cir. 2009), as well as when it contains language that is essential to the description of the invention, see In re Bulloch, 604 F.2d 1362, 1365 (CCPA 1979) ("The introductory claim language 'stable color developer concentrate' is more than a mere statement of purpose; and that language is essential to particularly point out the invention defined by the claims."). The preamble limits the claimed invention if it is "necessary to give life, meaning, and vitality to the claim." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999); see also Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (same). Our predecessor court articulated the "life, meaning, and vitality" standard in Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951), borrowing this congenial phrase from the Seventh Circuit's decision in Schram Glass Manufacturing Co. v. Homer Brooke Glass Co., 249 F. 228, 232-33 (7th Cir. 1918). This basic rule of claim construction has never been erased, and its utility in various situations has reinforced its vitality.

Generally stated, "terms appearing in a preamble may be deemed limitations of a claim when they give meaning to the claim and properly define the invention." In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994); see also, e.g., Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 866 (Fed. Cir. 1985) ("Although it appears in the preamble of the '012 patent claims, the term 'anaerobic' breathes life and meaning into the claims and, hence, is a necessary limitation to them."). The effect of the preamble thus varies with the way the particular invention is claimed. See Pitney Bowes, 182 F.3d at 1305 ("[A] claim preamble has the import that the claim as a whole suggests for it."). In Applied Materials, Inc. v. Advanced Semiconductor Materials America, Inc. the court observed:

Whether a preamble stating the purpose and context of the invention constitutes a limitation of the claimed process is determined on the facts of each case in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.

98 F.3d 1563, 1572-73 (Fed. Cir. 1996); see also, e.g., Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006) ("[W]hether to treat a preamble as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent."); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989) ("The effect preamble language should be given can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim."); In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987) ("Whether a preamble of intended purpose constitutes a limitation to the claims is, as has long been established, a matter to be determined on the facts of each case in view of the claimed invention as a whole.").

This vast body of precedent is directly contravened by today's ruling, where the panel majority discards the preamble and thereby removes limitations to the claim, and then holds the changed claim invalid. The proper analysis requires construing the claims in accordance with the rules of claim construction, that is, in light of the specification and the prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-24 (Fed. Cir. 2005) (en banc). When this inquiry reveals that "the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects." Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). The law of anticipation is then applied to "the invention so defined." Id.

The '448 patent specification and prosecution history make clear that the Griffins' claimed invention is not "scratch-off" technology generally, for other uses of "scratch-off" layers were known; their invention is a scratch-off label on which a user can inscribe information by scratching the surface without the need for a marking implement. The "for permitting" phrase in the preamble is the portion of the claim that makes this aspect clear. Construing the claim without reference to this important narrowing distinction would encompass admitted prior art that was considered, and distinguished, during examination.

Judge Newman chides her colleagues, in this case Judges DYK and Bryson, for not doing the necessary spadework.

Departing from precedent, the panel majority does not "review the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim," Corning Glass Works, 868 F.2d at 1257, and instead engrafts a meaning on the claim that the inventors did not present and the Patent Office did not examine. The majority's excision of the very portion of the claim that distinguishes the invention from the prior art, only to invalidate the claim on the basis of that prior art, is contrary to law. See Vita-Mix, 581 F.3d at 1323-24 (language in preamble is limiting where it is necessary to effectuate the patent's distinction between the invention and the prior art); MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1329-30 (Fed. Cir. 2007) (same); In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347-48 (Fed. Cir. 2002) (same).

The panel majority acknowledges its deletion of the limitations in the preamble, protesting that the preamble "merely states the purpose or intended use" of the invention, citing Bicon, 441 F.3d at 952. However, the preamble in this case is more than a mere statement of purpose or use, for the specification's description of the invention and discussion of the prior art require the features set forth in the preamble, and the prosecution record confirms the reliance on those features for patentability. The residue of claim 1, without the limitations in the preamble, does not "define a structurally complete invention." Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). The invention claimed in the '448 patent is not completely described without the limitations in the preamble.

The Bicon case, on which the panel majority primarily relies, states that "it is not unusual for this court to treat preamble language as limiting" when the facts warrant. 441 F.3d at 952. In Bicon the court held that a "for use" preamble phrase in a claim directed to a dental implant recited essential information and thus served to limit the claim--directly contrary to the rule the panel majority seeks to extract from the case. Bicon and extensive other authority belie the majority's suggestion that preamble language is only "rarely" treated as limiting. Maj. Op. at 5. Many decisions demonstrate that purposive language in a preamble is limiting when it serves to give "life, vitality and meaning" to the claimed invention. See, e.g., General Elec. Co. v. Nintendo Co., 179 F.3d 1350, 1361-62 (Fed. Cir. 1999) (the preamble phrase "raster scan display device" limited a method for displaying computer generated information on a screen, because "[i]n light of the specification, to read the claim indiscriminately to cover all types of display systems would be divorced from reality"); Corning Glass Works, 868 F.2d at 1257 (the preamble phrase "an optical waveguide" limited claims directed to optical fibers, because "[t]he invention is restricted to those fibers that work as waveguides as defined in the specification, which is not true with respect to fibers constructed with the limitations of the [body of the claim] only"); Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 678 (Fed. Cir. 1988) (the phrase "a base for the support of equipment" was essential in giving meaning to the invention and therefore was limiting, and precluded a finding of anticipation); Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 896 (Fed. Cir. 1984) ("The system of claim 1 is one of unity magnification and is image forming. Those limitations appear in the preamble, but are necessary to give meaning to the claim and properly define the invention."); Stencel, 828 F.2d at 755 ("Stencel is not inhibited from claiming his driver, limited by the statement of purpose, and further defined by the remaining clauses at issue, when there is no suggestion in the prior art of a driver having the claimed structure and purpose."). The "for use" preamble phrase in Bicon, and analogous preamble language in General Electric, Corning Glass Works, Diversitech, Perkin-Elmer, Stencel, and countless other cases, have been recognized as providing essential limitations to the claim. The panel majority strays far from precedent, in holding that the Griffins' preamble must be ignored because it states a "use," and then invalidating the claim as anticipated when freed of the limitations in the preamble.

When a claim is written so that the preamble merely introduces the general subject matter, but does not state limitations of the specific invention, this debate does not arise. However, this general claim drafting style does not produce a "presumption" that preamble language is irrelevant to claim scope. Maj. Op. at 6.

Relying upon the preamble for distinction has always been risky business, as this facet of claim construction is problematic, as shown here. Especially given this ruling, a preamble is best not relied upon as being helpful to a claim.

But Judge Newman got it right, which is to say that this nicely self-contained issue is ripe for en banc review. The inconsistent treatment of preambles begs for clarity.

My take is that every word in a patent claim should count.

Posted by Patent Hawk at March 25, 2010 12:13 PM | Claim Construction

Comments

I haven't yet read the opinion, but it seems to me that the court could have easily just said that the stuff beginning with the "for" in the preamble is really just a field of use limitation. In this case, it seems like the preamble is as useful as saying "for use with a writing device" or "for use with glass bottles" or "for use by alcoholics" etc. It doesn't limit anything.

Posted by: Mike at March 25, 2010 1:03 PM

I agree with Mike, and also wonder if the issue of preamble weight was conflated with the the issue of "intended use" language weight in this decision.

I.e. if the "for permitting a user to write thereon ..." clause were included in body of the claim, and not the preamble, would the intended use clause then be given weight? An examiner considering such an intended use clause, whether in the preamble or the body, in a pending app. would likely answer"no" at least because intended use "limitations" rarely have the effect of actually limiting the claim.

That the clause happened to be in the preamble seems ancillary to the larger issue: intended use language rarely limits claims.


Posted by: Arthur Dent at March 25, 2010 1:42 PM

Both Mike and Arthur both seem to be saying that a preamble per se is not, or should not, be the primary focus; rather, the "intended use" language is much more limiting.

Is this a distinction without a difference? (not a rhetorical question)

Whether the language is "a preamble" or "intended use", the majority still stripped it from the claim prior to claim construction. It does not "feel" like a fair deal, as the only time that it is permissible to so strip is when the language stripped does not have impact on the meaning of the claim. That is the point of Newman's dissent, is it not? Doesn't that logic apply whether you call the stripped out part "a preamble" or "intended use"?

Posted by: new anon at March 25, 2010 2:07 PM

"Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1323-24 (Fed. Cir. 2009)"

Who wants to bet that is a decision penned by her own hand?

Newman isn't so bad sometimes, but she has trouble with some subjects. Especially claim construction and the supposed "lawl" when it comes to anticipation. I realize she's been at this way too long to retrain her, but perhaps one day she should sit down and take a long hard look at how her colleagues have been applying the law and see if she can't bring her own more in line therewith.

"My take is that every word in a patent claim should count"

My take is that they should simply rectify the whole issue by holding in such a way that every sane applicant will simply preamble their claim by: An apparatus comprising: A method comprising: A product comprising: A composition of matter comprising. Holding any other way is jibberish because you can stick words in a preamble which will distinguish a specific claim type in an improper way. For instance, a method claim with a stand alone structural limitation, or a product claim with a process limitation (where the process is not the process by which you are making the product ala pbp).

We don't need products distinguished by method steps nor do we need methods distinguished by stand alone structural limitations. It is quite easy enough to use the age old formats and use them correctly.

Well, would you look at that, I just noticed that this claim at issue is one such claim.

The claim is to a product, but Newman wants to distinguish it in terms of a method step "permitting a user to write thereon without the use of a marking implement".

Should have 101'd it just for kicks.

That is to say nothing of the fact that this is an intended use method step limitation with "for" in front.

Would it have killed them to write down the structural features that allow for writing on the label without a marking implement and then claim them?

I doubt it.

Unless... perhaps there is nothing novel about this structure after all. Hmmm. Put that in your pipe and smoke it for a minute Newman. Mull it over and get back to us.

Posted by: 6000 at March 25, 2010 9:29 PM

"My take is that every word in a patent claim should count."

I agree. You shouldn't be permitted to ignore claim limitations -- which means if you don't want a claim limitation considered, don't put it in.

"Should have 101'd it just for kicks."
It'll be fun to see you explain that rationale.

"We don't need products distinguished by method steps nor do we need methods distinguished by stand alone structural limitations."
Sorry -- applicants get to claim their invention anyway they want. Form follows function and function follows form -- it is difficult to have one without the other.

Posted by: Passing through at March 26, 2010 5:27 AM

Passing through,

Your last comment reflects my own thoughts on what 6000 posted.

His call for the use of "age-old" formats seems to place form over substance. It seems that the majority also placed form over substance in eliminating the very substance of the claim at hand. This does not appear to be a case of ambiguity, and, as you put it in your first comment immediately above, if the applicants wanted to have the phrase parsed out, they would have left it out from the start.

It seems odd that given all the talk about the evils of claiming over-broadly, that when another tries to limit the breadth of their claim, that that attempt is so easily dismissed.

Posted by: new anon at March 26, 2010 6:34 AM

Suppose I have made a not obvious performance enhancement X that is specific to golf balls.

I could claim it thus: Golf ball, comprising X.

Or I could claim: Ball for playing golf, comprising X.

Do these two claims have the same scope?

If not, why not?

Posted by: MaxDrei at March 26, 2010 11:11 AM

I think Newman is fatiguing in her old age and having a harder and harder time of fighting back the insanities of her younger and all too eager cohorts. At some point she is going to have to retire and then the light headed youngsters will take over total control of the CAFC empire and make it their blood and sand play box. After all, Rome let Caligula become emperor. We're no different than Rome.

This was not an en banc panel. So it had no right to overturn Bell Communications. Bell stands for the proposition that, if the body of the claim relies on the preamble for antecedent basis, then the preamble is necessary for giving life and meaning to the body. In this case, the body refers to "the" user.

This is one of those cases where bad facts make bad law. The claim was badly written. The prior art was badly searched. And then the law was mangled for no necessary reason.

The name of one of the parties should have given hint at an arguably anticipating piece of prior art: The Etch-a-Sketch. But then again, it all depends on how the specification defines a "label".

As another piece of prior art, consider a white drywall that has been painted with a dark colored paint. A child can take a knife to the wall and thus "write" on it. Therefore the painted wall "permits" a user to write by scratching off. It appears that during litigation no one on the defense did a brain storming session on the various possibilities. Too bad. But then again, in times of Roman empire, its citizens were similarly distracted by bread and circus whereby they could not focus their minds sharply on more urgent matters.

Posted by: step back at March 26, 2010 12:35 PM

"Do these two claims have the same scope?

If not, why not?"

No, because I can play golf with a kickball. In fact, I have. The ball never goes in the hole, first one over the hole area wins. I should also note that a kickball is not a golf ball ala your first claim.

Funny you should pick that example Max.

"It'll be fun to see you explain that rationale."

I've explained it several times. Hawk did in a post himself. It's called mixing statutory categories. Don't do it.

"Sorry -- applicants get to claim their invention anyway they want. Form follows function and function follows form -- it is difficult to have one without the other."

You're right, they do get to claim their invention anyway they want. They also get it invalidated if they don't do it properly. Go ask poor ol' IPXL Holdings about that. Get your sht together loser.

Posted by: 6000 at March 26, 2010 1:17 PM

"His call for the use of "age-old" formats seems to place form over substance. "

Hardly. The "form" in this context merely ensures that you're not using improper "substance" to pull some bs that is no proper to either obtain overly broad coverage, or, all too often, put a limitation in the claim that is in fact impossible to have happen irl. It is in effect a police on your substance for outrageous nonsense.

A bike comprising:

a wheel;
a handlebar;
a seat; and
peddling down the street.

How does one have a bike that comprises peddling down the street? I'd laugh if I didn't see analogous dmb sht all the time. It's a rather prolific problem in today's era. Thanks no doubt in large part to this prolific belief in nonsense about how the applicant supposedly gets to claim their invention any way they please.

"It seems odd that given all the talk about the evils of claiming over-broadly, that when another tries to limit the breadth of their claim, that that attempt is so easily dismissed."

Maybe they should try to limit it in a permissible way. Hmmm, works 100% of the time for the firms that do it.

Posted by: 6000 at March 26, 2010 1:30 PM

"No, because I can play golf with a kickball. In fact, I have."

I would emphatically say that what you played was indeed NOT golf.

Posted by: St Andrews at March 26, 2010 3:32 PM

Maybe I'm missing something here, but why wouldn't the Examiner just say the prior art is CAPABLE of "permitting a user to write thereon without the use of a marking implement" as claimed? Assuming you have the same structure, why wouldn't the prior art be capable of performing the same function/intended use.

In interviews, I always recite my own example: Application filed drawn to a hammer "for breaking glass" comprising structure X, Y, and Z. Prior art disclose a hammer "for pounding nails" comprising structure X, Y, and Z. That claim is dead in the water because the STRUCTURE is disclosed. The prior art reference doesn't have to explicitly state the claimed intended use as long as it's capable of performing that intended use (and in this case it is, as it would have an identical structure).

Again, maybe I'm missing something. I don't think functional limitations/intended use limitations in the preambles are ignored per se, just that if the claims and prior art disclose the same structure, why can't the prior art perform the same function?

Posted by: hotelingexaminer at March 26, 2010 8:29 PM

Hotel Examiner,

Not all hammers are the same.

Consider this: hammer capable of performing music: you can't touch this. ;-)

Posted by: step back at March 27, 2010 4:17 AM

hahahaha - well played

Posted by: hotelingexaminer at March 27, 2010 4:46 AM

hotelingexaminer,

Your explanation does seem reasonable, but that does not appear to be what happened in this case. In your explanation, there need not be any stripping of language (per se or not). The language is used, but the prior art, being capable, still impacts the claim as fully written. I would not have an issue if that was what the court had done.

The case at hand did not go that route.

Instead, the case at hand rewrote the claim by actually stripping out the claim language that may or may not have distinguished. We do not arrive at the possiblity of applying your logic because the claim was altered before reaching that point.

6000 posts a mistake in not understanding the PHOSITA of golf. He is obviously not a duffer.

Is it common to post such ridiculous hypotheticals when arguing one's points? The substance versus form discussion is not about mixed claim types, is it? Functional claiming is indeed allowed in non-method claims, no?

"in this context merely ensures that you're not...obtain overly broad coverage, or,...put a limitation in the claim that is in fact impossible to have happen irl."

Neither of which are actually at issue here.

Less broad coverage is the aim, not overly broad coverage, and since the offending language that was stripped out was necessary to the meaning of the claim, the limitation was not impossible to happen in real life.

Posted by: new anon at March 27, 2010 5:19 AM

new anon -

Completely agree with most of your post - I guess what my concern was/is (and the reason I used such an overly simplistic example) that we shouldn't be making broad-brush statements that the intended use limitations either do or do not carry patentable weight to help distinguish over prior art - it's just another example of almost everything in patent prosecution being on a case-by-case basis.

I will say, I don't think claim language should ever just be stripped or ignored at all, and if examiners seem to be doing that to you, call them out on it (insert sarcastic joke here).

Posted by: hotelingexaminer at March 27, 2010 5:34 AM

"I've explained it several times. Hawk did in a post himself. It's called mixing statutory categories. Don't do it."

If you explained it a couple of times, you did so poorly. That is not a 101 issue. Regardless that it isn't a 101 issue, and this claim langauge doesn't fall under IPXL.

"Go ask poor ol' IPXL Holdings about that."
They had a sloppy attorney, I don't disagree with that ... but the loser is the one who doesn't understand the difference between IPXL's claim language, and the claim language used in hundreds of thousands of issued patents that would pass muster under 112. Besides, IPXL was dealing with an issued patent. Who is the loser Examiner that allowed it?

Posted by: Passing through at March 27, 2010 6:03 AM

"I've explained it several times. Hawk did in a post himself. It's called mixing statutory categories. Don't do it."

That is a 112 issue. Not a 101 issue. Try to get your statutory sections straight.

"Go ask poor ol' IPXL Holdings about that."
First, IPXL holdings was an issued patent, so there is an examiner and primary on the hook for that one as well. Second, a loser is somebody that doesn't understand the difference between the claim language used in IPXL holdings and claimed language used in hundreds of thousands of issued patents.


a wheel;
a handlebar;
a seat; and
peddling down the street.

If you have morons that employ that type of language, then they deserved to be rejected under 112. However, the following language is perfectly OK.

a wheel configured to rotate down a street;
a bar configured to be handled;
a seat configured to be sat upon; and
a peddle configured to be peddled.

Posted by: Passing through at March 27, 2010 6:25 AM

"However, the following language is perfectly OK."

No it's not. Peddle is not a noun. You both phail at grammer.

Posted by: Perfesser at March 27, 2010 6:55 AM

I prefer to count the Perfesser as a personal phriend.

Let's peddle some pedals down the street. They have pretty petals on them.

Posted by: Pedantic Pete at March 27, 2010 7:41 AM

"? Functional claiming is indeed allowed in non-method claims, no?"

One would think so. But take a look at the Ariad case's explanation of how functional language is to be used. It seems, on its face, to be a more hardcore position than even I take.

"If you explained it a couple of times, you did so poorly. That is not a 101 issue. Regardless that it isn't a 101 issue, and this claim langauge doesn't fall under IPXL."

It isn't so long as we take the court's route, if we take Newman's outta the sky route it sure as f is and does. If she wants to make it a limitation beyond an intended use limitation/functional limitation then guess what it is? A method step.

And fyi, my explanations are simply at a level that's far above your head. When you can keep up you'll think differently about my explanations.

"First, IPXL holdings was an issued patent, so there is an examiner and primary on the hook for that one as well. "

What's your point? There was also an attorney. Probably you judging by your level of understanding.

"Second, a loser is somebody that doesn't understand the difference between the claim language used in IPXL holdings and claimed language used in hundreds of thousands of issued patents."

You? I don't understand where you're going with this... I just told you that you were a loser and now you're confirming it? Thanks, I guess, but I don't need validation from someone like you.

"If you have morons that employ that type of language, then they deserved to be rejected under 112"

So glad that you agree. Look for one in your next OA.

"However, the following language is perfectly OK."

What's your point? Where was any "configuration" language in the instant claim under discussion? Note also that, while I agree with you, that a recent BPAI panel ruled against your bs configuration language somehow magically changing an improper limitation into a proper one. We'll see eventually how the CAFC feels about this nonsense. Form v substance and all that you know.

If you're going to waste my time, at least try to make a good point eventually. k? thx bye.

Note also that I was peddling down the street, you need to have a pedal configured.

Posted by: 6000 at March 27, 2010 4:03 PM

"was necessary to the meaning of the claim"

A claim reading:

"
1. A scratch-off label comprising:

a permanent base having a colored near side which is normally visible to [a] user and having a far side; and

a coating of scratch-off non-transparent material having a color which contrasts with the color of the near side of the permanent base, which coating is applied directly onto the near side of the permanent base with sufficient thickness so as to obscure the color of the permanent base, and which when scratched off reveals the color of the near side of the permanent base.
"

Is meaningless? Give me a break. At most it lacks antecedent basis.

Posted by: 6000 at March 27, 2010 4:07 PM

6000

Reading comprehension was never your forte.

My comments were never specifically directed to the correctness of this decision. So, I can care less what Newman thinks.

My specific comment to you was about your belief that these claims could be rejected under 101. The best you can do is to reference explanations that are "at a level that's far above your head," which is Examiner code for "I'm just making up shit as I go along which is so stupid that nobody can understand it." Trust me, it is better that you don't share your rationale – too many Examiners who try that route get busted by the BPAI. Your best bet is to say nothing and then hope that the BPAI bails you out.

"that a recent BPAI panel ruled against your bs configuration language somehow magically changing an improper limitation into a proper one"
Do you have an application number on that one? Or are you making up shit again?

BTW dude, if we had to comment on every one of you spelling errors, we would have to set up an entire message board.

Why don't you try looking at MPEP 2173.05(g).

Posted by: Passing through at March 27, 2010 4:51 PM

6000,

That's what's wrong with you people.

You're always re-writing the claim to be that which YOU regard to be the unpatentable invention.

It said "the" user.
The article "the" has a meaning different from "a". You're analyzing a claim that the applicant did not present for examination. How about, for once, analyzing the claim he actually did present?

Posted by: step back at March 27, 2010 8:13 PM

6000 was never good at "a" and "the".

Reminds me of a story...

Posted by: Sunny Side Up at March 28, 2010 6:46 AM

Query: instead of using the word "for" the words "constructed to," "adapted to," "configured to," "structured to," or similar words had been used?

any ideas/thoughts?

Posted by: Patent prosecutor at March 28, 2010 12:18 PM

As to Max’s hypothetical:

"Golf ball, comprising X," viz a viz "Ball for playing golf, comprising X."

Do these two claims have the same scope?, asks Max.

Dunno’, says I, but I think this illustrates one issue that is never discussed per se: the strength of scope assertion as opposed to breadth.

So often applicants bend over backwards to broaden the scope, and they end up diluting the strength of the assertion. What they end up with is a weakly asserted claim with admirably broad scope. If it passes examination, the infringer’s attorney will beat the claim into the ground.

Let’s pretend it’s 1900 and Max’s “X” is dimples. So we’re a few years ahead of Taylor’s US Pat. 1,286,384, and we can re-state Max’s example as:

Claim #1: A golf ball, comprising dimples.
Claim #2: A ball for playing golf, said ball comprising dimples.

[I know, Max. He patented first in GB.]

Even if, arugendo, the scope of these claims is equivalent, the second claim is weaker. The reason it’s weaker is because it includes an unnecessary limitation – for playing golf.

I don’t care what aspect of patents you’re involved in – claim drafting, claim construction, appeals, litigation, examination, emptying waste baskets at the PTO – limitations are always, always, always weaker than elements. The more limitations you have, the weaker your assertion of scope.

I think “professer” was only being half-facetious about the grammar, but grammar rarely fails you in this claim business. Elements are structure. They are physical things. They are nouns and predicates. Nominative. Subjective case. [I am ignoring methods claims here, but the same principles apply.]

Limitations are modifiers. They are micro-descriptions (and sometimes macro-descriptions) of the elements. They are adjectival. They are the weak links – sometimes they are absolutely necessary to avoid art, but they always make the claim more vulnerable to attack.

The quick test: If you remove just the elements you have no claim -- you have gerbil-talk. If you remove just the limitations, you still have a grammatical claim, but it’s probably DOA because it’s anticipated.

So as to Max's revised Claim #1, some may argue that “golf” is a modifier of “ball” and therefore “golf” is as much a limitation as “for playing golf.” Wrong.

In some languages that might be right, but in English, “golf ball” is the subject. A space in a string of characters does not necessarily signify adjective-noun, much like airplane used to be air plane, then it was air-plane, and now it’s airplane. The grammar of US claims is crapped up from the git-go, but if this claim were a sentence, “golf ball” would be the subject. [To help drive this point home, I almost always eliminate any ambiguity by either joining the words or throwing in a hyphen, even if it’s not normally done. I would probably claim “golf-ball” or "golfball", ignore my spell-checker, and use that construction faithfully throughout the spec. ]

Still looking at Claim #1, “dimples” is also a noun. Great, strong claim. No limitations, no modifiers. Two elements connected by the required participle, “comprising.” Nike will want to buy this claim if they ever start backing Tiger again.

I can’t imagine that someone even as whacked out as 6000 would argue that a kickball is a golf ball. Even if a kickball can be kicked toward a golf hole, that potential human behavior does not convert structure well known as a “kickball” into structure well known as a “golf ball.” If you think you need limitations to avoid goof-balls – like the USGA specifications, 1.68 inch diameter, etc. – put them in the spec and define golf ball in the spec. But leave the limitations out of the claim.

Claim #2 may have the same scope, but it’s weaker because now you have a limitation in the preamble – for playing golf – and limitations 1) beg interpretation, and 2) can be expendable, as the Griffins found out. Besides you get nut cases coming out of the woodwork arguing that “playing golf” includes kicking a kickball at a hole in the ground. Still way out in left field, but it's an argument you didn't have with "golf ball." So now you have to burn the client’s money arguing what "playing golf" means, and who knows whether you will get a 6000 nut-case on the bench for your Markman hearing.

So, I’m suggesting that limitations – any thing that acts as a modifier or descriptor – not only narrow claims, they weaken the assertion of whatever scope the claim has.

I’ve been blowing this grammar horn for a couple years on these blogs, and I can’t get anyone to come to the party. If I’m obnoxious, at least I’m persistent in pursuit of clearer claiming.

While I’m on the subject of obnoxious, if 6000 is an examiner as he promotes himself, and if he looked at Max's golf ball example and concluded that kicking a kickball over a golf hole is equivalent to or analogous to playing golf and therefore the kickball would anticipate a golf ball, that is frightening. Very frightening.

And I'm talking about his lack of understanding of patent principles more than I am his flawed thought processes or vivid imagination. We all have to scan our imaginations for alternatives and analogies in order to try and shoot down or bullet proof claims, but when an examiner comes back with such a bizarre result and then jumps up and down about it publicly, you know some poor applicants are having a problem.

Assuming 6000 is an examiner, then his kickball analogy epitomizes why Dudas was not the problem over the last X years after all. Doesn't matter who's driving the stage coach; if the horses are all lame, nobody's goin' anywhere.

As to the case at issue, Dyk’s opinion is basically a combination of twisted non-sequitur and red herring. The only question is whether a statement of purpose in a claim – wherever it appears – can be relied upon to distinguish over art. I think the Europeans refer to this as verbotten claiming a result. The EPO examiners I’ve had are rabid on this point. They don’t just ignore such limitations, they make you take them out of the claim altogether.

Dyk goes to great lengths to explain why you can’t distinguish over the art on the basis of use or purpose, and then he inexplicably dives into the irrelevant preamble issue – irrelevant because he just said it doesn’t matter where the use limitation is found, it’s a non-starter.

Newman, being Newman, bless her, sees red, misses the point, and argues limitations in preambles are fine. Her “examples” of the court relying on use limitations are devious – they are not about use limitations at all.

Maybe the EPO guys are right and use or results limitations should be stripped during examination. If all you have is a new use, claim it as a method claim as required by section 101.

[Can you tell it’s Sunday and I don’t have any appointments or deadlines today?]

Posted by: Babel Boy at March 28, 2010 12:19 PM

"So often applicants bend over backwards to broaden the scope, and they end up diluting the strength of the assertion. What they end up with is a weakly asserted claim with admirably broad scope. If it passes examination, the infringer’s attorney will beat the claim into the ground."

I often see this problem in claims that I prosecute but did not write. An Examiner, like 6000, will misread the claim language at all opportunities. As such, if you use wishy-washing language, the Examiner will pretty much ignore it. My suggestion to anybody who drafts claim language is to not be afraid to define claim terms and use very distinctive terms.

Covering 90% or even 60% of possible infringment with your claims is better than covering 100% with claims that likely won't pass examination (or reexamination). Particularly with method claims, even if you catch only 60% of possible infringment instances with your claims, you probably still catch 95+% of "infringers."

Dependent claims are of particular value in these instances. If you have a phrase that may be very broad, have a dependent claim that tightens up the breadth to something you would be happy getting.

Posted by: Passing through at March 28, 2010 5:29 PM

Babel,

Thanks. Top notch advice.

Passing and Hoteling - thanks too.

Nice to see some intelligence out there.

Posted by: new anon at March 28, 2010 6:49 PM

Max here again. The discussion above reminds me of the (real) English case of the blue squash-racquets ball.

The invention (stripped to its essentials)was

"Squash ball, coloured blue"

This subject matter was new. further, it was not obvious that one can play squash to a higher standard if you use a blue ball instead of a black one (against a white wall, you see it earlier).

But if the claim had recited:

Ball for racquet sports, coloured blue?

would that have been patentable? Surely not.

Posted by: MaxDrei at March 29, 2010 1:56 AM

- Surely not.

Why not?

Or better yet, for the US, the "Squash ball, coloured blue" would fail KSR, given the blue ball available for raquetball as an "obvia" issue.

Posted by: Pedantic Pete at March 29, 2010 4:15 AM

So, Pete, even though nobody could ever have guessed that you play better with a blue ball, it would still be obvious to use blue instead of black. Predictable, or what?

Posted by: MaxDrei at March 29, 2010 6:21 AM

MaxDrei,

The predictableness comes from the similar sport of raquetball, which has long used blue balls (at least in my hypothetical - it's been ages since I actually played). Thus the field of use limitation, no matter how couched (for squash, or as a squash ball), would still run afoul of the KSR ruling.

Posted by: Pedantic Pete at March 29, 2010 6:38 AM

"limitations are always, always, always weaker than elements"

Here we go with the elements v limitations nonsense once again.

Posted by: 6000 at March 29, 2010 7:43 AM

"6000

Reading comprehension was never your forte.
"

I see you've taken a new name Noise. NAL suits you better.

Posted by: 6000 at March 29, 2010 7:44 AM

"It said "the" user.
The article "the" has a meaning different from "a". You're analyzing a claim that the applicant did not present for examination. How about, for once, analyzing the claim he actually did present?"

Um, I was merely making a point that the claim does not require the preamble to give it meaning. I was not formally "analyzing it". My point remains, the claim has plenty of meaning without the preamble. The whole "I referred back to the preamble" nonsense is just that, nonsense. All it does is make problems as the lawl on that point is far from clear. Does the referal back to the preamble have to be done in such a way as to cause the claim only to have meaning with the preamble included? I think yes. Does mere antecedent basis cause a claim to lack meaning? Mmmmm, I think that if I told my boss that I simply could not examine a claim that had some antecedent basis missing because the claim thus had no meaning he might not agree with me. Based upon that, and simply being reaonable, I don't think lack of antecedent basis should mean that the body lacks life or meaning.

Let's pick one example amongst the many problems that arise. I get claims that have half a page of preamble laying out in detail a structure that is made by a method that is being claimed, and then another half a page of limitations that specify forming the nearly (but not quite) the exact same structure with only ONE limitation relying on the preamble for antecedent basis. The claim dam well has plenty of meaning (i.e. life) without the preamble, and if you include the preamble as limitations then 1. applicant improperly distinguished the method (i.e. in terms of stand alone structural limitations (zam 101) and 2. many of the limitations will be repeats of things already found in the claims (I believe this falls under a form of prolix claiming although I myself have not used this) and 3. you're not really sure if all the structure in the preamble is limiting so it's guesswork as to which prior art might be best to apply and finally 4. the metes and bounds of the claim are nowhere near clearly defined (112).

So which is it? Is the preamble in that case limiting? Do I consider the preamble limiting, send a 101, 102 with art A, 112 and prolix objection/rejection? Or, do I not consider the preamble limiting and simply send a 102 with art B showing with my wording in the rejection that I clearly disregarded the preamble?

Which is it "I'm so bright that it hurts" guy?

Bottom line, we do analyze your whole claim. Then we decide how we feel that the lawl would feel about your claim (See USC 151) and whether it should issue. Just put your limitations in the claim body where they belong and stop trying to f with everyone's brain.

I should note, just fyi, that in all the cases where this is a real issue (save one, which thinks that they have a prayer with their body at the board lolololol) the applicant amended the claim to put it in the body. They could also argue that it was a limitation and so long as it was reasonable I would allow them to have it thus. Big whoop. Small price to pay to maybe have a deceptive claim issued.

Posted by: 6000 at March 29, 2010 8:37 AM

"Do you have an application number on that one? Or are you making up shit again?"

Stick around, I'm sure I'll come across it again in the next few months.

Posted by: 6000 at March 29, 2010 8:40 AM

"My specific comment to you was about your belief that these claims could be rejected under 101. The best you can do is to reference explanations that are "at a level that's far above your head," which is Examiner code for "I'm just making up shit as I go along which is so stupid that nobody can understand it." Trust me, it is better that you don't share your rationale – too many Examiners who try that route get busted by the BPAI. Your best bet is to say nothing and then hope that the BPAI bails you out.

...

Why don't you try looking at MPEP 2173.05(g)."

Hardly the best I can do. That's the best I'm willing to do for you, ya tard. You bungle everything, my straightening out this issue for you will do little in the grand scheme of things.

My best bet would have been to ignore you. Then let the BPAI affirm meh later lolololz.

I'll make you a deal though, even with you being as tarded as you are. If you can explain how at MPEP 2173.05(g) is relevant to the instant claim I will explain to you under what circumstances this claim would then be rejected under 101.

Posted by: 6000 at March 29, 2010 8:49 AM

"stop trying to f with everyone's brain."

hahahahahahahaha

Dude -- my guess is that you think that about a whole lot of things -- not just claims.

"Stick around, I'm sure I'll come across it again in the next few months."
OK ... you were making up shit again. Thanks for admitting it.

Posted by: Passing through at March 29, 2010 8:49 AM

Oh dear, oh dear. Sorry Pete. I had no idea that "racquetball" and "squash raquets" are two different games, so I missed the significance of your comment. Both games are played against white walls, I take it.

I was supposing that my inventor's blue ball is new for both games. On my assumed art, where the balls for both sports were either black or green, is there a difference between "Squash ball, blue" and "Ball for playing squash, that is blue"

Posted by: MaxDrei at March 29, 2010 9:35 AM

6000, aka 6, aka nimrod,

I have been much too busy to happily bother with your tripe.

I will say that I am not "Passing through".

Your famoosity is not limited to me recognizing your weaknesses. You are only too proud of your abundance of rope.

Posted by: Noise above Law at March 29, 2010 10:29 AM

"OK ... you were making up shit again. Thanks for admitting it."

Hardly. Go read the last 3 months worth of posts on PO, 271, 1201, hawk, docs, and watchdog and you will stumble across it. Just because I didn't fav it for uninformed people like yourself is hardly any reason to infer I made anything up. I have better things to do than to worry about whether or not "configured to" as a lawlyer's trick is a good way to weasel out of x rejection. If you're that interested, it is probably on 271 or 1201.

One other place it may have been, which is a bit off the beaten path is:

http://allthingspros.blogspot.com/

And Noise, ok, fine. But I had thought that the reason you were probably laying low was your astonishing (truly) loss in the Ariad proposition. And yes, I'm laughing irl.

You're quite right that I'm quite famoose here of late. I went to a random blawg yesterday and posted and I was immediately recognized.

Posted by: 6000 at March 30, 2010 4:23 PM

Everybody knows 6. Patent baller, shot caller, twenty way rejection in the Impala.

Seriously though, rumor has it that 6 will be a TC director some day. Noise, you would do well to show the man some respect and grovel properly.

Posted by: Average Examiner at March 31, 2010 5:36 AM

LOL - average examiner,

6 cannot find his way out of a paper bag. NO ONE is wrong more often than he - including the one and only Michael R. Thomas. 6 is the only one I know that has been banned from a blog because he is wrong so often. Remember, "famoosity" is not a good thing.

"grovel" - funny that you want to use that term, when you are the servants (some never learn what public service means). Did you not get Lord Kappos'es notice about how you are to serve us as your customers? Now, chop chop.

I am not asking for you to grovel, mind you. I am more than willing to work with the examining corp in a courteous and professional manner - most examiners that I deal with are at least capable of that.

Posted by: Noise above Law at March 31, 2010 6:24 AM

It is true that it is our duty to see that righteous applicants receive their due. However, we have another function, and that is defender of the patent system against those who wish to pervert the process. By being vigilant and aggressive rejectors of unworthy applications, we also serve the public by ensuring that the people are not burdened with unjustified monopolies.

And we do this under the guidance of our fearless leader, a man known to smite entire attorney dockets with a deft stroke of his creative interpretations of case law. His name is 6, and he rides a white horse.

But then you wouldn't care about any of this, as you are one to pal around with known patent process perverts, such as the treacherous Actual Inventor, who seeks to control the bodily functions of the proletariat (see "Punctilious Practitioner Purports to Prevent Public from Peeing on Planes," Business Week, Oct. 2009).

Posted by: Average Examiner at March 31, 2010 7:25 PM

"And we do this under the guidance of our fearless leader, a man known to smite entire attorney dockets with a deft stroke of his creative interpretations of case law. His name is 6, and he rides a white horse."

By no means are you a mere "Average" Examiner (whether I am accusing you of being a sockpuppet or not, I will leave to your creativity and your fearless leader - perhaps one day you may aspire to be the slime under the lint between the toes of a mere average examiner).

It is not his (or any examiner's) job to make up "creative interpretations" of case law. It is your job to apply the law as it is already understood.

Famoosity is not a good thing. 6 is not a leader. 6 does not ride a white horse. You may be confused between riding and being as well as a horse and an ass.

Posted by: Noise above Law at April 1, 2010 4:55 AM