Sorry, but who rated this asstrumpetry "Informative?"
I will respond in kind.
The poster states that they haven't bothered to read any of the application apart from the few bits they quoted. If you were to bother to read the full (or even significant portions of the) application, you would see that it is pretty clear.
You obviously no nothing about patent law. This is evidenced as much by you stating "or even significant portions" of the application. The significant portions of the application are the claims. Had you carefully read my earlier post, you would have read this. I write that after reading the claims, you should go back to figure out what the claim terms mean. I never gave meaning to the claim terms, nor did I attempt to interpret them. This is a task best left up to litigators and opinion writers.
So, please, until you've had the requisite training and experience to properly interpret claims, keep your opinions to yourself.
The views expressed herein are in no way associated with any private entity or government organization. None of the information contained herein should be construed as legal advice. If you need legal advice, please seek the advice of independent legal counsel.
This is actually a really good question. And I don't mean for this response to be a "gotcha" sort of an answer. However, during the course of examination (called prosecution in "patent-ese"), the Examiner is permitted to give claim terms their broadest possible meaning. By giving the claim terms their broadest possible meaning, the Examiner may then search for references that teach or suggest the claim terms with the applied broadest meaning.
We are now at the stage where claims have issued, and as the reader, have to decide what claim terms mean. Maybe the claim terms have retained their broadest meaning during prosecution, but maybe they haven't. I think an example will help.
Suppose I write a claim stating "An apparatus comprising a retaining member." Now, I submit this claim to the Examiner in my patent application for examination. The Examiner is now permitted to give the phrase "retaining member" its broadest possible meaning.
Suppose now, that the Examiner finds a reference that shows a screw and issues a rejection based on this reference. I write back to the Examiner, "Oh no Mr./Ms. Examiner. My retaining member is not a screw and does not cover screws. For various legal and technical reasons, a screw is not a retaining member." The Examiner may then be satisfied with this response and issues my patent with the understanding that the term "retaining member" does not cover screws.
We are now at this point with this IBM patent. As in my example, one would think that screws are covered by "retaining members." However, we see that from the prosecution history, where I disclaimed screws, that screws are not considered "retaining members." Hence, we have one possible interpretation for "retaining member." A "retaining member" is a member that retains, except for screws.
The simple answer here is that Examiner's are allowed to give claim terms their broadest meaning during prosecution. After issuance (that is, when the patent issues), we, the readers, have to resort to the claims, the specification, and the prosecution history to determine what the claim terms mean.
The views expressed herein are in no way associated with any private entity or government organization. None of the information contained herein should be construed as legal advice. If you need legal advice, please seek the advice of independent legal counsel.
One way I find helpful in determining what language means in a claim is to search the application for that exact word or phrase. I find that Firefox's search ability is extremely helpful, because you can highlight all instances of the searched or phrase.
In searching for "mode selection event," I found this nice gem:
In many embodiments of the present invention, including the exemplary embodiment of the pseudocode Appendix, a mode selection event (410) is a keypress on a keyboard (408). A keypress is used here for explanation, however, not for limitation. In fact, any event cognizable in a user interface, can be implemented as a mode selection event within the scope of the present invention including, for example, a mousepress on a radio button, a selection from a pull-down menu, a mousepress on a component in a dialogue box, and so on, as will occur to those of skill in the art.
(emphasis added).
So what does this mean? Does this mean that "detecting a mode selection" event is "detecting a keypress on a keyboard"? If that's the case, then there must be other aspects of the limitations of claim 1 that the Examiner found patentable. Could the Examiner have found claim 1 patentable because of the limitation of "changing the mode of operation in dependence upon the detected mode selection event"? I don't know.
I think, with this case especially, you would have to download the prosecution history to figure out exactly what the Examiner found patentable.
The views expressed herein are in no way associated with any private entity or government organization
Is there any possible useful method of changing the states of a "multiplicity of checkboxes" that is not obvious and trivial to develop? I don't know. However, in this case, the Examiner thought that the claims presented by the Applicant were both novel and nonobvious over the references cited.
In thinking about your question though, you've presented an interesting conundrum. You say any possible useful method that is not obvious and trivial to develop. I would argue, that, yes, there is some method out there that is nonobvious and nontrivial that is useful. I have to say though, that the standard of "useful" is pretty low. We're not discussing "most efficient," "least processor intensive," "least number of lines of code." When we say, "useful," we simply mean that exactly. The method could be inefficient, bloated, and processor intensive, but if it's minimally useful in changing the states of a "multiplicity of checkboxes," and nonobvious, then I think we've found a satisfactory candidate for patenting.
But, what is that method? I have no idea.
The views expressed herein are in no way associated with any private entity or government organization
All that's been done here, is that the Abstract and a portion of the specification have been copied and pasted. However, that still doesn't address what the limitation means. What about the rest of the specification? What about other claims? What about the prosecution history? What about the claim terms' "ordinary and customary" meaning? We're trying to figure out what the limitation of claim 1 means, and to copy and paste portions of the Abstract and specification willy-nilly doesn't focus in on what the limitation means. Copying and pasting portions of the Abstract and specification without regard to what they're trying to convey, is just copying and pasting.
The construction of claims may be a sophisticated art, but the substance is empty and clearly so. But we're not arguing about substance. We're discussing whether or not IBM has patented "checking a box." Furthermore, repeating a statement over and over again doesn't make it true.
It doesn't take legal tricks to judge the substance - just the technical validity. I'm not sure what you mean by "technical validity." However, I didn't think we were discussing technical validity. I thought we were talking about what the claims mean. Furthermore, the U.S.P.T.O. doesn't care about "technical validity." The U.S.P.T.O. wants to know what the article is useful, novel, and nonobvious. If you want to discuss "technical validity," then I suggest you review the requirements for patent applications in the European Patent Office. But, since we're not talking about either "technical validity" or the EPO, I think the issue is rather moot.
Just like a sales contract - hundreds of years have gone into the gaming of sales, but in the end the substance is I gave the man my money, and I want my stuff. Really. But we're not talking about a sales contract - we're discussing the meaning of claims. To conflate sales contracts with patent law is to confuse two totally different subject matters.
Parsing substance doesn't take a JD - winning in court does, particularly if you want to make the claim broader than what you've actually thought of. Why are we talking about "winning in court"? I thought this discussion was whether the Examiner should have granted the application in the first place. "Winning in court" only makes sense if you sue somebody where a patent is at issue. And, you only have a patent if it's been granted by the USPTO. So, why don't we focus in on whether the patent should have issued, rather than whether somebody is "winning in court."
Really, I'd be sort of embarrassed if I conflated an actual product with a contract for a product. But we're not discussing contracts, products, or contract law. We're talking about patent applications and the requirements for having a patent issue.
Law is essentially substance-free - it's about how you say things, not what you say, just like an old shaman in a village or a medieval theologian. At best, a necessary evil to minimize social conflict - at worst, an unproductive parasite designing rituals to fleece the population. I think we can see which category patent law tends to fall under... Making this statement simply ignores the body of case law that has developed in both the USPTO, the district courts, the Federal Circuit, and the Supreme Court. We've gone from discussing patent law specifically to "law" as a general concept. I don't see how this statement advances the discussion.
To state that patent law is either a "necessary evil" or an "unproductive parasite" is to make ad hominem attacks on a body of law to which you've demonstrated you don't fully understand. We can only have a discussion on this topic if you're willing to keep to the topic at hand. If you want to make additional, nonsensical blanket statements on other issues, fine, but I won't respond to them.
The views expressed herein are in no way associated with any private entity or government organization
Obviously to anyone even semi-literate, detecting a mode selection event means detecting a change in the selection status - aka, when someone checks or unchecks a box. Then it easily follows that "changing the mode of operation in dependence upon the detected mode selection event" would have to mean changing whether later on you check or uncheck boxes based upon whether you initially checked the box.
As I explained to pipatron, there is an entire body of case law dealing with claim construction. Claim construction is the carefully crafted body of case law dealing with what claims mean.
Again, and as before, to simply stay that "detecting a mode selection event" is equivalent or equal to "when someone checks or unchecks a box" without reviewing the rest of the claims, the specification, and the prosecution history, there is simple no way to definitely state what these claims mean. While we can speculate what we think these claims may mean, to ascribe any sort of knowledge as to their actual meaning is to dismiss an entire body of case law going back to the 1950s.
Really.
The views expressed herein are in no way associated with any private entity or government organization
This has nothing to do with prior art or not. I read through about 10% of this, skipping what mostly looked like fillers to make it more technical....
Whoa whoa whoa. Slow down there. Patent law has EVERYTHING to do with prior art. The Examiner must have felt that, based on the claims presented before him and the references at hand, that the claims were patentable in view of those references. At this point, there is no debate on this subject. The claims are presumptively patentable. The only way to invalidate this patent at this point is either through litigation, such as a declaratory judgment that the patent is, in fact, invalid, or through re-examination, which requires that the references bring up a substantial question of patentability. To say that this has "nothing" to do with prior art is missing the point of the patent system in the first place.
This is when you click the first checkbox.
Is this what limitation means? Are you sure? Are you familiar with the case law regarding patent claim construction? Do you know what claim construction is? Did you read the claim? Did you ascribe the claim's terms their "ordinary and customary meaning"? Did you look at the specification? Did you read the patent prosecution history to determine whether the applicant/patentee disclaimed any subject matter relating to "detecting a mode selection event"?
To dismiss outright that "detecting a mode selection event" means "when you click the first checkbox" is to dismiss an entire body of case law devoted to interpreting what claims mean. This is precisely why I didn't take on that exercise in the first place. If claim construction were that simple, a lot more people would be patent litigators.
There are two modes of operation: If the first checkbox is set, you enter the "clear" mode. If it's cleared, you enter the "set" mode.
Are those the only modes covered by the claim? Are these modes even contemplated? Are there additional modes or other "mode selection events"? Without undergoing proper claim construction, how do you know that this is what the patentee, in fact, meant?
I have no wish to submit this, since doing that would just make people believe that "Hey, the system works! People can submit prior art if they aren't happy, so let's just keep giving out patents like santa on christmas day!". Something else has to be done.
While I agree that sometimes Examiners aren't as rigorous in their examination, the U.S.P.T.O. purposefully created the ex parte reexamination procedure to question those patents that may have been improperly granted. To say that "something else needs to be done," but not to participate in the procedures that have already been established is simply hypocritical. There are opportunities for you to challenge an improperly granted patent, and if you're going to complain about improper patents without actually engaging the system to correct those patents, you perpetuate those problems as much as the system itself.
The views expressed herein are in no way associated with any private entity or government organization
Exactly! You'll find that as you read Slashdot's postings on patents, you'll become more and more frustrated with how summaries are written. Patent law is completely fascinating, but the Slashdot summaries always manage to muck it up. If you're curious, take a look at some of my past postings where I've tried to clear up issues that the summary completely fails to address. I think patent summaries are one place where Slashdot could really benefit from a volunteer IP person working to review and edit them.
Good luck in your digital IP law class. Take lots of notes, do your outlines, and you'll be fine!
The views expressed herein are in no way associated with any private entity or government organization
I'm biased. I really hate patent stories on Slashdot. They're oversimplified and do not substantively address the patent at issue.
That being said, let's see what IBM really patented. First, for the time being, discount everything before the "claims." Claims protect what the patentee considers his/her invention. There are 15 claims of the '116 patent ("We" usually refer to patents by their last three digits). Claims 1, 6, and 11 appear to be the independent claims. These are, arguably, the broadest claims in that the claimed subject matter is much broader than claims 2-5, 7-10, and 12-15.
Claim 1 recites: A method for control of checkbox status, the method comprising:
selecting and deselecting checkboxes in a GUI according to a mode of operation the GUI having displayed upon it a set of checkboxes comprising a multiplicity of checkboxes, wherein each checkbox comprises a selection status indicating whether each checkbox is selected;
detecting a mode selection event;
changing the mode of operation in dependence upon the detected mode selection event.
Now, we come to the crux of the matter. What do these three limitations mean? Honestly, I have no idea. This is when we have to go back and read everything before the claims. Do these three limitations mean merely "checking a box"? Somehow, I don't think so. There seems to be a lot more going on here. For example, what does it mean to "detect[] a mode selection event"? That doesn't sound like merely "checking a box." That sounds like a bit more.
The other independent claims recite a similar limitations. For example, claim 6 recites "means for detecting a mode selection event." What does this mean? I don't know, I haven't read the rest of the patent's specification. Again, however, this seems to be a bit more than "checking a box." I live it up to another reader to figure out what this limitation means.
The lesson to take away here is that the patent stories on Slashdot are sensationalism at its finest. I read Slashdot, and often, I find the stories very interesting. However, the patent summaries are atrocious and are nothing short of informative, if not misleading.
If you think you have prior art that would invalidate this patent, then please, submit it. I invite you to read about the reexamination procedures at the USPTO. You can find them here.
The views expressed herein are in no way associated with any private entity or government organization
No, this is actually incorrect. The burden has not changed, and CaptainPatent's post did what I was afraid it would do. Please refer to my response to CaptainPatent below.
The views expressed herein in no way represent any private organization or government entity. These views do not represent legal advice and should not be relied upon as such.
First, I don't know who you're quoting with "don't have enough background knowledge." I never said such a thing and none of the replies before me ever implied such a thing.
Second, I don't know where you came up with the statement "[t]he change now puts the burden into the attorney's hands to show why a motivation would be improper and giving evidence that the improvement really never had been thought of before." The Supreme Court never uses the phrase "burden" or "attorney," so I'm not sure if you read the same opinion that I did.
To correct some of the misapprehensions your post may have created, I'll try and recapture some of the what the Supreme Court said. I'll be quoting from the Syllabus and the Opinion directly. I note that the Syllabus is not written by the Justices themselves, but usually by a clerk or other court official.
As an initial matter, it seems to me that the Supreme Court thought that the Federal Circuit was not being "flexible enough" with its interpretation of the "teaching-suggestion-motivation" ("TSM") to combine prong of the obviousness inquiry. I think you have to read the proceedings below to understand where the Supreme Court is coming from:
"The Court of Appeals held that the District Court was incorrect that the nature of the problem to be solved satisfied this requirement because unless the "prior art references address[ed] the precise problem that the patentee was trying to solve," the problem would not motivate an inventor to look at those references. 119 Fed. Appx., at 288." KSR Int'l Co. v. Teleflex Inc., p. 10.
This seems to imply that the Federal Circuit (i.e., "the Court of Appeals") looked only to the references themselves rather than a broader inquiry. If you read MPEP Section 2143.01, you'll see that the TSM to combine inquiry focuses on the teachings of the "prior art." In this case, the Federal Circuit was doing exactly that - looking to the prior art to determine whether there was any teaching, suggestion, or motivation to combine the references.
Now, it seems the Supreme Court is allowing a broader view of the TSM inquiry by allowing a Court (or Examiner), to look beyond the references and include the knowledge of what one of ordinary skill in the art would possess at the time the references were available. For example, the Supreme Court states:
"The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson's-Black Rock are illustrative--a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions." (emphasis added) KSR at p. 13.
The Court merely sums up this paragraph with one statement that I believe captures the essence of the "new" TSM inquiry: "[A] court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at p. 14. Hence, my interpretation of the Supreme Court's ruling, is that you still must refer to the references themselves to understand the technology and the teachings, but then a court (or an Examiner) is allowed to go beyond the explicit teachings of the references themselves and look at what a person with ordinary skill in the art would d
I'll try to address the first question, and then return later to address the second question, unless someone finishes the opinion before me.
KSR International Co. v. Teleflex Inc., isn't so much about "obviousness" per se, but about the "teaching-suggestion-motivation" prong of the obviousness inquiry. According to the Manual of Patent Examination and Procedure, an Examiner can establish a prima facie case of "obviouness" by showing that:
"First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations." MPEP Section 2143.
To understand the "teaching-suggestion-motivation" to combine prong of the "obviousness" inquiry, I would suggest reading MPEP Section 2143.01.
I've briefly read what the Supreme Court said about the Federal Circuit's decision, but I haven't had time to digest it yet. It seems somewhat amorphous to meet at this point, or in other words, there doesn't seem to be a definitive holding (e.g., "We hold that...") at this point.
The views expressed herein are in no way associated with any private entity or government organization
In this case, the application was filed September 5, 2006. Thus, the application filing date is September 5, 2006. However, the application claims priority to a provisional application filed September 6, 2005. Thus, the application has a priority date of September 6, 2005. This difference is important for 35 U.S.C. 102(e) purposes.
Under 35 U.S.C. 102(e), a prior filed U.S. patent or application can be used as "prior art" against a currently filed application. As an example, suppose Application A was filed on March 1, 2006 that discloses each and every limitation of claim 1 of the current application. Application A could then be used under 35 U.S.C. 102(e) as "prior art" to reject claim 1 because it has an earlier filing date (application date) than the current application. However, the Applicant of the current application could then rely on the priority date of the provisional application, which is September 6, 2005, to overcome the rejection. In this case, the Examiner would then have to go back to the provisional application to which the current application claims priority, and determine, whether, in fact, the provisional application discloses the subject-matter claimed by claim 1. As an additional comment to 35 U.S.C. 102(e), I briefly add that it is common for an Examiner to reject a claim in view of a reference that qualifies as "prior art" under 35 U.S.C. 102(e), where the reference is used with other art under 35 U.S.C. 103(a).
Hence, there is a difference between filing dates and priority dates, and these two dates need not always be the same. So, to say that these application has a filing date of September 5, 2006 would be correct, but then to say that this application has a priority date of September 6, 2005 would also be correct.
The opinion expressed herein does not represent the views of any government or private organization.
"Presumptively patentable" vs. "presumptively valid."
I see it now. Thanks.
And actually, in view of the previous comment by theantipop, I don't know why this statement is in the news brief.
"Any invention that is new, useful, non-obvious, and which is accompanied by a written description disclosing how to make and use it can be patented. Applicants' submissions enjoy a presumption of patentability. Thus, to reject an application the USPTO is responsible for ensuring that any evidence indicating that the invention is not new or is obvious (known as "prior art") is identified and explaining why the invention is not patentable in view of the evidence.
I checked the Accelerated Examination website, and I couldn't find anything in there about applications being presumptively patentable. As I have access to the USPQ online, I also did a quick search in the U.S.P.Q. 2d. (brief description of what the USPQ is here) for Fed. Cir. decisions holding that applications are "presumptively patentable." Nothing there either.
So, unless the release is discussing 35 U.S.C. 101 or the language of 35 U.S.C. 102, I don't know why this statement was even made.
The reason why this accelerated program is not being used as much, is because it requires the attorney to make affirmative statements that distinguish the Applicant's invention over the prior art. Under the "non-accelerated" system, an attorney does not HAVE to do a search, and may submit an application with no prior art of record. The onus is then on the Examiner to find relevant art that alone, or in combination, discloses each of the limitations of all of the claims of the Applicant's patent application.
With this accelerated program, the onus is on the Attorney (or Agent) to disclose to the USPTO exactly what the differences are between the Applicant's invention and the currently available prior art. This has severe impacts on litigation purposes, which you somewhat touched on, but its greatest impact will be on litigating equivalency (the Doctrine of Equivalents) and whether the attorney's indication of what is disclosed in the prior art constitutes prosecution history estoppel.
If anything, for examination purposes (not litigation purposes), this is a HUGE benefit for Examiners. It allows them to determine more quickly whether an application is actually disclosing a new invention. As an extreme example, under the current system, if I disclose a 4,000 page reference to the Examiner, I did not have to point out in the reference whether it discloses any or all of the limitations claimed by my application. If the Examiner determines that this 4,000 page reference does not disclose the claimed invention of my application and grants it, then I enjoy a presumption that my patent is valid in view of this reference even if it discloses in some way, shape, or form, my invention. It's then up to the litigators to make the invalidity argument. In contrast, with the accelerated program, if I submit this 4,000 page reference, I'm the one that has to show the Examiner exactly where in the reference the relevant portions to my application are.
As for this presumption that patent applications are presumptively valid, I have no idea where that comes from. PATENTS, not applications, are presumed valid. 35 U.S.C. 282.
One last follow-up that I realized I forgot to discuss:
In submitting your pre-September 26, 2002 "prior art," you should also make sure that the "prior art" is at least "prior art" under 35 U.S.C. Section 102(b). For the unfamiliar, this is "102(b)" prior art. "Prior art" that falls under the rubric of 35 U.S.C. Section 102(b) generally cannot be challenged by the Applicant of the application for patent. For example, with "102(a)" prior art, the Applicant for patent can "swear behind" the prior art to show that the the Applicant's "date of invention" is before the "prior art's" earliest effective date.
As an example, I note that the filing date of application is September 26, 2002. In this example, if you were to submit "102(a)" prior art with an earliest effective date of September 27, 2001, the Applicant of the patent may be able to demonstrate that he/she was working on the invention as of September 20, 2001, hence, overcoming the application of this art (there are some legal concerns regarding what constitutes "working on," but I'll save that discussion for a later time). Now, suppose you submit "prior art" with an earliest effective date of September 25, 2001. This is "102(b) prior art" because it's earliest effective date is at least one year prior to the earliest effective filing date of the application (there are some issues when the application claims priority to an earlier filed application, but this is not the case). In this scenario, where the "prior art" applied is "102(b) prior art," the Applicant cannot swear behind the applied "prior art," even if the Applicant was working on the invention before the earliest effective date of the "102(b) prior art."
That being said, you should also consider whether your "102(b) prior art" discloses each and every limitation of all of the claims, not simply the independent claims (in this case claims 1, 3 and 4.) (For a discussion of "what is a limitation," see the various sub-sections of Section 608.01 of the MPEP. However, I will note that you can combine references under 35 U.S.C. 103, but again, that's a discussion for another topic.
So, to recap:
1) Make sure that your reference is before the earliest, effective filing date of the application for patent (i.e. that it is "prior art"); 2) Make sure that your "prior art" is "102(b) prior art"; and, 3) Make sure that each and every limitation of each and every claim is disclosed in the application.
These views represent my own and are in no way associated with any government organization or private entity.
First, claim 1 may be invalid under 35 U.S.C. 101 as claiming unpatentable subject matter. It has been my experience that a 35 U.S.C. 101 rejection will issue against a "software patent" where the claim is not directed to something that produces a "useful, tangible, and concrete" result (see, State Street Bank v. Signature). More often, this type of rejection will issue against a claim (not an application), where the claim is directed to purely mathematical operations with no tie-in to hardware to perform that operation. In reading claim 1, there appears to be no claimed hardware that performs the algorithm recited, and hence, I would argue that the claim is invalid. For a more thorough discussion of patentable subject-matter, please see Section 2106.1 of the Manual of Patent Examination and Procedure. However, without looking at the image file wrapper, I don't know what rejections were applied to this application to determine whether claim 1 was amended to overcome this specific rejection.
Now, that being said, if you are concerned about invalidating this patent (which I'll note issued in April 2006, almost one year ago), you should first find "prior art" before the earliest filing date of the application. In this case, that date appears to be September 26, 2002. I say "appears to be" because the application does not claim priority to an earlier filed foreign application or U.S. provisional application. Next, after gathering your pre-September 26, 2002, you should follow the re-examination procedures for submission. See Section 2200 of the MPEP. Keep in mind, that when a third-party submits prior art for a re-examination proceeding, the prior art should present a new question of patentability. After submission of the "prior art," that third-party is generally not allowed to make comments during the re-examination proceeding. Hence, if the USPTO finds that the "prior art" does not present a new question of patentability, you may have inadvertently made the patent "stronger" and less likely to be invalidated during litigation. Accordingly, you should consider whether infringing this patent may be better procedure, and thus filing a motion that the patent is, in fact, invalid.
This views represent my own and are in no way affiliated with any government organization or private entity.
Y'know, a lot of the posts in this comment section seem to be of the type "well, there's this prior art out there so there's no way a patent should have issued!"
That being said, ultimately, it is the responsibility of the patent examiner to determine whether or not the claims of the patent are indeed patentable (useful, novel, nonobvious, etc.). However, don't blame the patent examiner. These poor souls are overworked and underpaid, and the backlog for many applications awaiting examination nowadays are in the 3-5 years range. For example, if you look at the public PAIR information for this particular patent here, you'll see that this particular application (App. No. 09/113,503) was initially assigned to group art unit 2635. In general, art unit 2600 is really swamped.
So, what can you do? Rather than bitchin' and moanin' that the patent system of the U.S. is "broken," become a patent examiner! Take a look at a partial list of employment opportunities here and apply! If you want a faster link, here's the actual Patent Examiner Employment Application.
So, do your civic and scientific duty today and join the ranks of the PTO!
Yeah - I worked with MCC 004 beforehand. I believe that's either the 12x or 16x Verbatim DataLifePlus DVD+Rs (I don't remember which). All in all, I've been happy with the DataLifePlus series.
Stay away from Taiyo Yuden 16x media. I'm using a BenQ 1620 for all my DVD burning needs, and the PI/PO tests done on T-Y 16x media using DVDInfo Pro have always resulted in low quality burns. I am currently using 8x Verbatim DatalifePlus DVD+R media, and burning them at 4x. The results are truly unbelievable. The media code on the 8x Verbatims is MCC 003. I've heard through the grapevine that T-Y changed their media somehow from their 8x sets to their 16x sets, which has resulted in that the 16x DVD+Rs aren't as good. If you can get your hands on 8x T-Y DVD+Rs, then go for it; otherwise, stick with the Verbatim DatalifePlus series.
Couple of disclaimers: IAAL in IP. That being said:
A couple of posts in this thread refer to the First Sale Doctrine and lament the fact that one can buy software from Best Buy, EB, newEgg.com, etc., but then runs into legal trouble because that same person cannot turn around and sell that same software to a third party, claiming that the first sale doctrine should protect such a sale. But does it?
I think we can all understand the first sale doctrine as it relates to physical objects, e.g., chairs, tables, books, etc. Only one copy or one article of a particular object can exist at any given time. Thus, while two books, such as Ender's Game, may contain the same text, same layout, etc., and be virtually identical in every respect, there is only one copy of each book in existence. Thus, the first sale doctrine exists allowing me (or the original buyer) to sell that book to another person without repercussion from the original copyright holder for copyright infringement (specifically, the right to distribute).
However, software is a little different though. Arguably, the first sale doctrine should apply to the CDs (or DVD) on which the software resides, the box in which the CDs came, etc. Thus, I should be able to sell my original CDs to a third party without repercussion from the copyright holder. However, with respect to the software, what did I initially buy? Because the software on the CDs can exist in multiple locations at the same time (unlike physical objects), arguably, the copyright seller did not actually sell me the software, but the license to use the software. Furthermore, EULAs often contain language that the license is non-transferable. Thus, I could probably not sell my license to a third party even though I can sell my original CDs.
I could say that while the first sale doctrine applies to the physical storage medium of the software, the first sale doctrine may not apply to the license to use the software residing on the storage medium. If the EULA states that the license is transferable, so be it and I can sell that license. However, absent such terminology, it can probably be argued that the first sale doctrine, while applying to the physical absects of the sold package (CDs, manuals, packaging materials, etc.) it probably does not apply to the right to use the software.
Now, one might argue that movies on DVDs are comparable and therefore my argument with respect to software is negated or diminshed. However, I would put forth that Macrovision was designed specifically to prevent movies on DVDs from existing in multiple locations at the same time. Therefore, what you are buying from the copyright holder is not a license to view or play the movie, but an actual copy of the movie for personal use.
I just want to emphasize what rights patents confer. A patent does NOT confer the right to make anything. In fact, patents confer the right to EXCLUDE others from making "the invention" disclosed in the patent. Specifically, 35 U.S.C. Section 271 confers this right.
While a generalized rationale is that patents spur innovation by forcing others to design around the disclosure in the patent, a patent can also be used offensively to prevent others from gaining a particular foothold in a relevant market. For example, Inventor A may invent the cure to cancer (let's just say "all cancer") and assign the patent application to Company B. The patent application later issues as a patent with Company B as the sole assignee.
Now, Company B does not have to do ANYTHING at all. Arguably, it would be in Company B's interest to start manufacturing the invention disclosed in the "cure all cancer" patent, but they do not have to. Furthermore, they can PREVENT others from marketing what's disclosed in that patent.
In summary, patents do not confer a right on the inventor (or assignee) a right to make what's disclosed in the patent, but confers a right to prevent others from making what's disclosed in the patent.
I've always thought that games would eventually break free of the confines of a TV screen to fill an entire room. But I would rather not say anything more about that.
Unless he meant the Virtual Boy, I wonder what he has in mind?
Slashdot Mirror
I will respond in kind.
You obviously no nothing about patent law. This is evidenced as much by you stating "or even significant portions" of the application. The significant portions of the application are the claims. Had you carefully read my earlier post, you would have read this. I write that after reading the claims, you should go back to figure out what the claim terms mean. I never gave meaning to the claim terms, nor did I attempt to interpret them. This is a task best left up to litigators and opinion writers.
So, please, until you've had the requisite training and experience to properly interpret claims, keep your opinions to yourself.
The views expressed herein are in no way associated with any private entity or government organization. None of the information contained herein should be construed as legal advice. If you need legal advice, please seek the advice of independent legal counsel.
Hi AC.
This is actually a really good question. And I don't mean for this response to be a "gotcha" sort of an answer. However, during the course of examination (called prosecution in "patent-ese"), the Examiner is permitted to give claim terms their broadest possible meaning. By giving the claim terms their broadest possible meaning, the Examiner may then search for references that teach or suggest the claim terms with the applied broadest meaning.
We are now at the stage where claims have issued, and as the reader, have to decide what claim terms mean. Maybe the claim terms have retained their broadest meaning during prosecution, but maybe they haven't. I think an example will help.
Suppose I write a claim stating "An apparatus comprising a retaining member." Now, I submit this claim to the Examiner in my patent application for examination. The Examiner is now permitted to give the phrase "retaining member" its broadest possible meaning.
Suppose now, that the Examiner finds a reference that shows a screw and issues a rejection based on this reference. I write back to the Examiner, "Oh no Mr./Ms. Examiner. My retaining member is not a screw and does not cover screws. For various legal and technical reasons, a screw is not a retaining member." The Examiner may then be satisfied with this response and issues my patent with the understanding that the term "retaining member" does not cover screws.
We are now at this point with this IBM patent. As in my example, one would think that screws are covered by "retaining members." However, we see that from the prosecution history, where I disclaimed screws, that screws are not considered "retaining members." Hence, we have one possible interpretation for "retaining member." A "retaining member" is a member that retains, except for screws.
The simple answer here is that Examiner's are allowed to give claim terms their broadest meaning during prosecution. After issuance (that is, when the patent issues), we, the readers, have to resort to the claims, the specification, and the prosecution history to determine what the claim terms mean.
The views expressed herein are in no way associated with any private entity or government organization. None of the information contained herein should be construed as legal advice. If you need legal advice, please seek the advice of independent legal counsel.
In searching for "mode selection event," I found this nice gem:(emphasis added).
So what does this mean? Does this mean that "detecting a mode selection" event is "detecting a keypress on a keyboard"? If that's the case, then there must be other aspects of the limitations of claim 1 that the Examiner found patentable. Could the Examiner have found claim 1 patentable because of the limitation of "changing the mode of operation in dependence upon the detected mode selection event"? I don't know.
I think, with this case especially, you would have to download the prosecution history to figure out exactly what the Examiner found patentable.
The views expressed herein are in no way associated with any private entity or government organization
This discussion is over Anonymous Coward. When you have something meaningful, intelligent, and useful to contribute, please let me know. Thanks.
The views expressed herein are in no way associated with any private entity or government organization
Is there any possible useful method of changing the states of a "multiplicity of checkboxes" that is not obvious and trivial to develop?
I don't know. However, in this case, the Examiner thought that the claims presented by the Applicant were both novel and nonobvious over the references cited.
In thinking about your question though, you've presented an interesting conundrum. You say any possible useful method that is not obvious and trivial to develop. I would argue, that, yes, there is some method out there that is nonobvious and nontrivial that is useful. I have to say though, that the standard of "useful" is pretty low. We're not discussing "most efficient," "least processor intensive," "least number of lines of code." When we say, "useful," we simply mean that exactly. The method could be inefficient, bloated, and processor intensive, but if it's minimally useful in changing the states of a "multiplicity of checkboxes," and nonobvious, then I think we've found a satisfactory candidate for patenting.
But, what is that method? I have no idea.
The views expressed herein are in no way associated with any private entity or government organization
All that's been done here, is that the Abstract and a portion of the specification have been copied and pasted. However, that still doesn't address what the limitation means. What about the rest of the specification? What about other claims? What about the prosecution history? What about the claim terms' "ordinary and customary" meaning? We're trying to figure out what the limitation of claim 1 means, and to copy and paste portions of the Abstract and specification willy-nilly doesn't focus in on what the limitation means. Copying and pasting portions of the Abstract and specification without regard to what they're trying to convey, is just copying and pasting.
The construction of claims may be a sophisticated art, but the substance is empty and clearly so.
But we're not arguing about substance. We're discussing whether or not IBM has patented "checking a box." Furthermore, repeating a statement over and over again doesn't make it true.
It doesn't take legal tricks to judge the substance - just the technical validity.
I'm not sure what you mean by "technical validity." However, I didn't think we were discussing technical validity. I thought we were talking about what the claims mean. Furthermore, the U.S.P.T.O. doesn't care about "technical validity." The U.S.P.T.O. wants to know what the article is useful, novel, and nonobvious. If you want to discuss "technical validity," then I suggest you review the requirements for patent applications in the European Patent Office. But, since we're not talking about either "technical validity" or the EPO, I think the issue is rather moot.
Just like a sales contract - hundreds of years have gone into the gaming of sales, but in the end the substance is I gave the man my money, and I want my stuff. Really.
But we're not talking about a sales contract - we're discussing the meaning of claims. To conflate sales contracts with patent law is to confuse two totally different subject matters.
Parsing substance doesn't take a JD - winning in court does, particularly if you want to make the claim broader than what you've actually thought of.
Why are we talking about "winning in court"? I thought this discussion was whether the Examiner should have granted the application in the first place. "Winning in court" only makes sense if you sue somebody where a patent is at issue. And, you only have a patent if it's been granted by the USPTO. So, why don't we focus in on whether the patent should have issued, rather than whether somebody is "winning in court."
Really, I'd be sort of embarrassed if I conflated an actual product with a contract for a product.
But we're not discussing contracts, products, or contract law. We're talking about patent applications and the requirements for having a patent issue.
Law is essentially substance-free - it's about how you say things, not what you say, just like an old shaman in a village or a medieval theologian. At best, a necessary evil to minimize social conflict - at worst, an unproductive parasite designing rituals to fleece the population. I think we can see which category patent law tends to fall under...
Making this statement simply ignores the body of case law that has developed in both the USPTO, the district courts, the Federal Circuit, and the Supreme Court. We've gone from discussing patent law specifically to "law" as a general concept. I don't see how this statement advances the discussion.
To state that patent law is either a "necessary evil" or an "unproductive parasite" is to make ad hominem attacks on a body of law to which you've demonstrated you don't fully understand. We can only have a discussion on this topic if you're willing to keep to the topic at hand. If you want to make additional, nonsensical blanket statements on other issues, fine, but I won't respond to them.
The views expressed herein are in no way associated with any private entity or government organization
Obviously to anyone even semi-literate, detecting a mode selection event means detecting a change in the selection status - aka, when someone checks or unchecks a box. Then it easily follows that "changing the mode of operation in dependence upon the detected mode selection event" would have to mean changing whether later on you check or uncheck boxes based upon whether you initially checked the box.
As I explained to pipatron, there is an entire body of case law dealing with claim construction. Claim construction is the carefully crafted body of case law dealing with what claims mean.
Again, and as before, to simply stay that "detecting a mode selection event" is equivalent or equal to "when someone checks or unchecks a box" without reviewing the rest of the claims, the specification, and the prosecution history, there is simple no way to definitely state what these claims mean. While we can speculate what we think these claims may mean, to ascribe any sort of knowledge as to their actual meaning is to dismiss an entire body of case law going back to the 1950s.
Really.
The views expressed herein are in no way associated with any private entity or government organization
This has nothing to do with prior art or not. I read through about 10% of this, skipping what mostly looked like fillers to make it more technical....
Whoa whoa whoa. Slow down there. Patent law has EVERYTHING to do with prior art. The Examiner must have felt that, based on the claims presented before him and the references at hand, that the claims were patentable in view of those references. At this point, there is no debate on this subject. The claims are presumptively patentable. The only way to invalidate this patent at this point is either through litigation, such as a declaratory judgment that the patent is, in fact, invalid, or through re-examination, which requires that the references bring up a substantial question of patentability. To say that this has "nothing" to do with prior art is missing the point of the patent system in the first place.
This is when you click the first checkbox.
Is this what limitation means? Are you sure? Are you familiar with the case law regarding patent claim construction? Do you know what claim construction is? Did you read the claim? Did you ascribe the claim's terms their "ordinary and customary meaning"? Did you look at the specification? Did you read the patent prosecution history to determine whether the applicant/patentee disclaimed any subject matter relating to "detecting a mode selection event"?
To dismiss outright that "detecting a mode selection event" means "when you click the first checkbox" is to dismiss an entire body of case law devoted to interpreting what claims mean. This is precisely why I didn't take on that exercise in the first place. If claim construction were that simple, a lot more people would be patent litigators.
There are two modes of operation: If the first checkbox is set, you enter the "clear" mode. If it's cleared, you enter the "set" mode.
Are those the only modes covered by the claim? Are these modes even contemplated? Are there additional modes or other "mode selection events"? Without undergoing proper claim construction, how do you know that this is what the patentee, in fact, meant?
I have no wish to submit this, since doing that would just make people believe that "Hey, the system works! People can submit prior art if they aren't happy, so let's just keep giving out patents like santa on christmas day!". Something else has to be done.
While I agree that sometimes Examiners aren't as rigorous in their examination, the U.S.P.T.O. purposefully created the ex parte reexamination procedure to question those patents that may have been improperly granted. To say that "something else needs to be done," but not to participate in the procedures that have already been established is simply hypocritical. There are opportunities for you to challenge an improperly granted patent, and if you're going to complain about improper patents without actually engaging the system to correct those patents, you perpetuate those problems as much as the system itself.
The views expressed herein are in no way associated with any private entity or government organization
Exactly! You'll find that as you read Slashdot's postings on patents, you'll become more and more frustrated with how summaries are written. Patent law is completely fascinating, but the Slashdot summaries always manage to muck it up. If you're curious, take a look at some of my past postings where I've tried to clear up issues that the summary completely fails to address. I think patent summaries are one place where Slashdot could really benefit from a volunteer IP person working to review and edit them.
Good luck in your digital IP law class. Take lots of notes, do your outlines, and you'll be fine!
The views expressed herein are in no way associated with any private entity or government organization
That being said, let's see what IBM really patented. First, for the time being, discount everything before the "claims." Claims protect what the patentee considers his/her invention. There are 15 claims of the '116 patent ("We" usually refer to patents by their last three digits). Claims 1, 6, and 11 appear to be the independent claims. These are, arguably, the broadest claims in that the claimed subject matter is much broader than claims 2-5, 7-10, and 12-15.
Claim 1 recites:
A method for control of checkbox status, the method comprising:
Now, we come to the crux of the matter. What do these three limitations mean? Honestly, I have no idea. This is when we have to go back and read everything before the claims. Do these three limitations mean merely "checking a box"? Somehow, I don't think so. There seems to be a lot more going on here. For example, what does it mean to "detect[] a mode selection event"? That doesn't sound like merely "checking a box." That sounds like a bit more.
The other independent claims recite a similar limitations. For example, claim 6 recites "means for detecting a mode selection event." What does this mean? I don't know, I haven't read the rest of the patent's specification. Again, however, this seems to be a bit more than "checking a box." I live it up to another reader to figure out what this limitation means.
The lesson to take away here is that the patent stories on Slashdot are sensationalism at its finest. I read Slashdot, and often, I find the stories very interesting. However, the patent summaries are atrocious and are nothing short of informative, if not misleading.
If you think you have prior art that would invalidate this patent, then please, submit it. I invite you to read about the reexamination procedures at the USPTO. You can find them here.
The views expressed herein are in no way associated with any private entity or government organization
Porcupine8,
No, this is actually incorrect. The burden has not changed, and CaptainPatent's post did what I was afraid it would do. Please refer to my response to CaptainPatent below.
The views expressed herein in no way represent any private organization or government entity. These views do not represent legal advice and should not be relied upon as such.
CaptainPatent,
First, I don't know who you're quoting with "don't have enough background knowledge." I never said such a thing and none of the replies before me ever implied such a thing.
Second, I don't know where you came up with the statement "[t]he change now puts the burden into the attorney's hands to show why a motivation would be improper and giving evidence that the improvement really never had been thought of before." The Supreme Court never uses the phrase "burden" or "attorney," so I'm not sure if you read the same opinion that I did.
To correct some of the misapprehensions your post may have created, I'll try and recapture some of the what the Supreme Court said. I'll be quoting from the Syllabus and the Opinion directly. I note that the Syllabus is not written by the Justices themselves, but usually by a clerk or other court official.
As an initial matter, it seems to me that the Supreme Court thought that the Federal Circuit was not being "flexible enough" with its interpretation of the "teaching-suggestion-motivation" ("TSM") to combine prong of the obviousness inquiry. I think you have to read the proceedings below to understand where the Supreme Court is coming from:
"The Court of Appeals held that the District Court was incorrect that the nature of the problem to be solved satisfied this requirement because unless the "prior art references address[ed] the precise problem that the patentee was trying to solve," the problem would not motivate an inventor to look at those references. 119 Fed. Appx., at 288." KSR Int'l Co. v. Teleflex Inc., p. 10.
This seems to imply that the Federal Circuit (i.e., "the Court of Appeals") looked only to the references themselves rather than a broader inquiry. If you read MPEP Section 2143.01, you'll see that the TSM to combine inquiry focuses on the teachings of the "prior art." In this case, the Federal Circuit was doing exactly that - looking to the prior art to determine whether there was any teaching, suggestion, or motivation to combine the references.
Now, it seems the Supreme Court is allowing a broader view of the TSM inquiry by allowing a Court (or Examiner), to look beyond the references and include the knowledge of what one of ordinary skill in the art would possess at the time the references were available. For example, the Supreme Court states:
"The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson's-Black Rock are illustrative--a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions." (emphasis added) KSR at p. 13.
The Court merely sums up this paragraph with one statement that I believe captures the essence of the "new" TSM inquiry: "[A] court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at p. 14. Hence, my interpretation of the Supreme Court's ruling, is that you still must refer to the references themselves to understand the technology and the teachings, but then a court (or an Examiner) is allowed to go beyond the explicit teachings of the references themselves and look at what a person with ordinary skill in the art would d
Porcupine8,
I'll try to address the first question, and then return later to address the second question, unless someone finishes the opinion before me.
KSR International Co. v. Teleflex Inc., isn't so much about "obviousness" per se, but about the "teaching-suggestion-motivation" prong of the obviousness inquiry. According to the Manual of Patent Examination and Procedure, an Examiner can establish a prima facie case of "obviouness" by showing that:
"First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations." MPEP Section 2143.
To understand the "teaching-suggestion-motivation" to combine prong of the "obviousness" inquiry, I would suggest reading MPEP Section 2143.01.
I've briefly read what the Supreme Court said about the Federal Circuit's decision, but I haven't had time to digest it yet. It seems somewhat amorphous to meet at this point, or in other words, there doesn't seem to be a definitive holding (e.g., "We hold that...") at this point.
The views expressed herein are in no way associated with any private entity or government organization
In this case, the application was filed September 5, 2006. Thus, the application filing date is September 5, 2006. However, the application claims priority to a provisional application filed September 6, 2005. Thus, the application has a priority date of September 6, 2005. This difference is important for 35 U.S.C. 102(e) purposes.
Under 35 U.S.C. 102(e), a prior filed U.S. patent or application can be used as "prior art" against a currently filed application. As an example, suppose Application A was filed on March 1, 2006 that discloses each and every limitation of claim 1 of the current application. Application A could then be used under 35 U.S.C. 102(e) as "prior art" to reject claim 1 because it has an earlier filing date (application date) than the current application. However, the Applicant of the current application could then rely on the priority date of the provisional application, which is September 6, 2005, to overcome the rejection. In this case, the Examiner would then have to go back to the provisional application to which the current application claims priority, and determine, whether, in fact, the provisional application discloses the subject-matter claimed by claim 1. As an additional comment to 35 U.S.C. 102(e), I briefly add that it is common for an Examiner to reject a claim in view of a reference that qualifies as "prior art" under 35 U.S.C. 102(e), where the reference is used with other art under 35 U.S.C. 103(a).
Hence, there is a difference between filing dates and priority dates, and these two dates need not always be the same. So, to say that these application has a filing date of September 5, 2006 would be correct, but then to say that this application has a priority date of September 6, 2005 would also be correct.
The opinion expressed herein does not represent the views of any government or private organization.
Ah.
"Presumptively patentable" vs. "presumptively valid."
I see it now. Thanks.
And actually, in view of the previous comment by theantipop, I don't know why this statement is in the news brief.
"Any invention that is new, useful, non-obvious, and which is accompanied by a written description disclosing how to make and use it can be patented. Applicants' submissions enjoy a presumption of patentability. Thus, to reject an application the USPTO is responsible for ensuring that any evidence indicating that the invention is not new or is obvious (known as "prior art") is identified and explaining why the invention is not patentable in view of the evidence.
I checked the Accelerated Examination website, and I couldn't find anything in there about applications being presumptively patentable. As I have access to the USPQ online, I also did a quick search in the U.S.P.Q. 2d. (brief description of what the USPQ is here) for Fed. Cir. decisions holding that applications are "presumptively patentable." Nothing there either.
So, unless the release is discussing 35 U.S.C. 101 or the language of 35 U.S.C. 102, I don't know why this statement was even made.
Any thoughts?
Wow. Simply wow. You are so far from the mark.
The reason why this accelerated program is not being used as much, is because it requires the attorney to make affirmative statements that distinguish the Applicant's invention over the prior art. Under the "non-accelerated" system, an attorney does not HAVE to do a search, and may submit an application with no prior art of record. The onus is then on the Examiner to find relevant art that alone, or in combination, discloses each of the limitations of all of the claims of the Applicant's patent application.
With this accelerated program, the onus is on the Attorney (or Agent) to disclose to the USPTO exactly what the differences are between the Applicant's invention and the currently available prior art. This has severe impacts on litigation purposes, which you somewhat touched on, but its greatest impact will be on litigating equivalency (the Doctrine of Equivalents) and whether the attorney's indication of what is disclosed in the prior art constitutes prosecution history estoppel.
If anything, for examination purposes (not litigation purposes), this is a HUGE benefit for Examiners. It allows them to determine more quickly whether an application is actually disclosing a new invention. As an extreme example, under the current system, if I disclose a 4,000 page reference to the Examiner, I did not have to point out in the reference whether it discloses any or all of the limitations claimed by my application. If the Examiner determines that this 4,000 page reference does not disclose the claimed invention of my application and grants it, then I enjoy a presumption that my patent is valid in view of this reference even if it discloses in some way, shape, or form, my invention. It's then up to the litigators to make the invalidity argument. In contrast, with the accelerated program, if I submit this 4,000 page reference, I'm the one that has to show the Examiner exactly where in the reference the relevant portions to my application are.
As for this presumption that patent applications are presumptively valid, I have no idea where that comes from. PATENTS, not applications, are presumed valid. 35 U.S.C. 282.
One last follow-up that I realized I forgot to discuss:
In submitting your pre-September 26, 2002 "prior art," you should also make sure that the "prior art" is at least "prior art" under 35 U.S.C. Section 102(b). For the unfamiliar, this is "102(b)" prior art. "Prior art" that falls under the rubric of 35 U.S.C. Section 102(b) generally cannot be challenged by the Applicant of the application for patent. For example, with "102(a)" prior art, the Applicant for patent can "swear behind" the prior art to show that the the Applicant's "date of invention" is before the "prior art's" earliest effective date.
As an example, I note that the filing date of application is September 26, 2002. In this example, if you were to submit "102(a)" prior art with an earliest effective date of September 27, 2001, the Applicant of the patent may be able to demonstrate that he/she was working on the invention as of September 20, 2001, hence, overcoming the application of this art (there are some legal concerns regarding what constitutes "working on," but I'll save that discussion for a later time). Now, suppose you submit "prior art" with an earliest effective date of September 25, 2001. This is "102(b) prior art" because it's earliest effective date is at least one year prior to the earliest effective filing date of the application (there are some issues when the application claims priority to an earlier filed application, but this is not the case). In this scenario, where the "prior art" applied is "102(b) prior art," the Applicant cannot swear behind the applied "prior art," even if the Applicant was working on the invention before the earliest effective date of the "102(b) prior art."
That being said, you should also consider whether your "102(b) prior art" discloses each and every limitation of all of the claims, not simply the independent claims (in this case claims 1, 3 and 4.) (For a discussion of "what is a limitation," see the various sub-sections of Section 608.01 of the MPEP. However, I will note that you can combine references under 35 U.S.C. 103, but again, that's a discussion for another topic.
So, to recap:
1) Make sure that your reference is before the earliest, effective filing date of the application for patent (i.e. that it is "prior art");
2) Make sure that your "prior art" is "102(b) prior art"; and,
3) Make sure that each and every limitation of each and every claim is disclosed in the application.
These views represent my own and are in no way associated with any government organization or private entity.
I'll make a couple of quick comments:
First, claim 1 may be invalid under 35 U.S.C. 101 as claiming unpatentable subject matter. It has been my experience that a 35 U.S.C. 101 rejection will issue against a "software patent" where the claim is not directed to something that produces a "useful, tangible, and concrete" result (see, State Street Bank v. Signature). More often, this type of rejection will issue against a claim (not an application), where the claim is directed to purely mathematical operations with no tie-in to hardware to perform that operation. In reading claim 1, there appears to be no claimed hardware that performs the algorithm recited, and hence, I would argue that the claim is invalid. For a more thorough discussion of patentable subject-matter, please see Section 2106.1 of the Manual of Patent Examination and Procedure. However, without looking at the image file wrapper, I don't know what rejections were applied to this application to determine whether claim 1 was amended to overcome this specific rejection.
Now, that being said, if you are concerned about invalidating this patent (which I'll note issued in April 2006, almost one year ago), you should first find "prior art" before the earliest filing date of the application. In this case, that date appears to be September 26, 2002. I say "appears to be" because the application does not claim priority to an earlier filed foreign application or U.S. provisional application. Next, after gathering your pre-September 26, 2002, you should follow the re-examination procedures for submission. See Section 2200 of the MPEP. Keep in mind, that when a third-party submits prior art for a re-examination proceeding, the prior art should present a new question of patentability. After submission of the "prior art," that third-party is generally not allowed to make comments during the re-examination proceeding. Hence, if the USPTO finds that the "prior art" does not present a new question of patentability, you may have inadvertently made the patent "stronger" and less likely to be invalidated during litigation. Accordingly, you should consider whether infringing this patent may be better procedure, and thus filing a motion that the patent is, in fact, invalid.
This views represent my own and are in no way affiliated with any government organization or private entity.
Y'know, a lot of the posts in this comment section seem to be of the type "well, there's this prior art out there so there's no way a patent should have issued!"
That being said, ultimately, it is the responsibility of the patent examiner to determine whether or not the claims of the patent are indeed patentable (useful, novel, nonobvious, etc.). However, don't blame the patent examiner. These poor souls are overworked and underpaid, and the backlog for many applications awaiting examination nowadays are in the 3-5 years range. For example, if you look at the public PAIR information for this particular patent here, you'll see that this particular application (App. No. 09/113,503) was initially assigned to group art unit 2635. In general, art unit 2600 is really swamped.
So, what can you do? Rather than bitchin' and moanin' that the patent system of the U.S. is "broken," become a patent examiner! Take a look at a partial list of employment opportunities here and apply! If you want a faster link, here's the actual Patent Examiner Employment Application.
So, do your civic and scientific duty today and join the ranks of the PTO!
Yeah - I worked with MCC 004 beforehand. I believe that's either the 12x or 16x Verbatim DataLifePlus DVD+Rs (I don't remember which). All in all, I've been happy with the DataLifePlus series.
-BB
Here's my two cents:
Stay away from Taiyo Yuden 16x media. I'm using a BenQ 1620 for all my DVD burning needs, and the PI/PO tests done on T-Y 16x media using DVDInfo Pro have always resulted in low quality burns. I am currently using 8x Verbatim DatalifePlus DVD+R media, and burning them at 4x. The results are truly unbelievable. The media code on the 8x Verbatims is MCC 003. I've heard through the grapevine that T-Y changed their media somehow from their 8x sets to their 16x sets, which has resulted in that the 16x DVD+Rs aren't as good. If you can get your hands on 8x T-Y DVD+Rs, then go for it; otherwise, stick with the Verbatim DatalifePlus series.
-BB
Apparently, Diebold actually did comment on the wrong documentary and screwed up factually too. Already reported on the BRAD BLOG .
Couple of disclaimers: IAAL in IP. That being said:
A couple of posts in this thread refer to the First Sale Doctrine and lament the fact that one can buy software from Best Buy, EB, newEgg.com, etc., but then runs into legal trouble because that same person cannot turn around and sell that same software to a third party, claiming that the first sale doctrine should protect such a sale. But does it?
I think we can all understand the first sale doctrine as it relates to physical objects, e.g., chairs, tables, books, etc. Only one copy or one article of a particular object can exist at any given time. Thus, while two books, such as Ender's Game, may contain the same text, same layout, etc., and be virtually identical in every respect, there is only one copy of each book in existence. Thus, the first sale doctrine exists allowing me (or the original buyer) to sell that book to another person without repercussion from the original copyright holder for copyright infringement (specifically, the right to distribute).
However, software is a little different though. Arguably, the first sale doctrine should apply to the CDs (or DVD) on which the software resides, the box in which the CDs came, etc. Thus, I should be able to sell my original CDs to a third party without repercussion from the copyright holder. However, with respect to the software, what did I initially buy? Because the software on the CDs can exist in multiple locations at the same time (unlike physical objects), arguably, the copyright seller did not actually sell me the software, but the license to use the software. Furthermore, EULAs often contain language that the license is non-transferable. Thus, I could probably not sell my license to a third party even though I can sell my original CDs.
I could say that while the first sale doctrine applies to the physical storage medium of the software, the first sale doctrine may not apply to the license to use the software residing on the storage medium. If the EULA states that the license is transferable, so be it and I can sell that license. However, absent such terminology, it can probably be argued that the first sale doctrine, while applying to the physical absects of the sold package (CDs, manuals, packaging materials, etc.) it probably does not apply to the right to use the software.
Now, one might argue that movies on DVDs are comparable and therefore my argument with respect to software is negated or diminshed. However, I would put forth that Macrovision was designed specifically to prevent movies on DVDs from existing in multiple locations at the same time. Therefore, what you are buying from the copyright holder is not a license to view or play the movie, but an actual copy of the movie for personal use.
I just want to emphasize what rights patents confer. A patent does NOT confer the right to make anything. In fact, patents confer the right to EXCLUDE others from making "the invention" disclosed in the patent. Specifically, 35 U.S.C. Section 271 confers this right.
While a generalized rationale is that patents spur innovation by forcing others to design around the disclosure in the patent, a patent can also be used offensively to prevent others from gaining a particular foothold in a relevant market. For example, Inventor A may invent the cure to cancer (let's just say "all cancer") and assign the patent application to Company B. The patent application later issues as a patent with Company B as the sole assignee.
Now, Company B does not have to do ANYTHING at all. Arguably, it would be in Company B's interest to start manufacturing the invention disclosed in the "cure all cancer" patent, but they do not have to. Furthermore, they can PREVENT others from marketing what's disclosed in that patent.
In summary, patents do not confer a right on the inventor (or assignee) a right to make what's disclosed in the patent, but confers a right to prevent others from making what's disclosed in the patent.
Here's an interesting tidbit:
From TFA:
I've always thought that games would eventually break free of the confines of a TV screen to fill an entire room. But I would rather not say anything more about that.
Unless he meant the Virtual Boy, I wonder what he has in mind?