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Red Monkey
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I know, but it's the best you can do without being able to see the future. At least the window of uncertainty gets a little smaller.
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Why not cut to the chase and have preambles that say "A computer readable medium of the type that is deemed statutory under 101 as of the filing date of this application, the medium comprising..." I suppose the downside is that, ironically,, given the state of the jurisprudence on this topic, that might trigger a 112 rejection for indefiniteness.
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No deference to the examiner? I wonder if that's a backhanded comment about the overall quality of the examination process. Could be worse. They could have said there is a presumption the examiner is wrong.
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In many common law jurisdictions, the statute of limitations begins running when the plaintiff learned of or should have learned of the harm complained of, not on the date the actual harm was committed. This is what enabled victims of child sex abuse by the church to sue so long after the fact. The latest D. Ct. decision doesn't seem to harmonize well with this.
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Is the orientation a feature of the design? If you rotated it 180 degrees so that the connecting bar is below, does that avoid the claim?
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Liability associated with superhero activity was explored in "The Incredibles." Wasn't there a comic book once where Lex Luthor managed to engineer Superman's arrest?
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Not supposed to, but in a world dominated by text searching, that would seem to be a logical consequence. The prize would go not to the technically creative but to the semantically creative.
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If you used the keyword "telephone", you would never have turned up Bell's original telephone patent. If an invention is truly novel, the word for it cannot exist yet.
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So the Marines are looking for "less good men"? "many are called, less are chosen" About King Alfred, the few said the better.
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It's easy. Going back to Ned's example, if you have a functional claim like "A car that can get 40 MPG" you could have a specification that sets out in gory detail exactly how to build that car. So in answer to the question "does the specification disclose how to build a car that gets 40 mpg?" the answer must be yes. Therefore the specification fully enables "a car that can get 40 mpg." Such a car is not unknown at all. One only has to read the specification to see it fully described. On the other hand, that claim does not recite any structural features of such a car, only its intended result. In reading 112, it looks like a lack of enablement is a defect in the specification, not of the claim, whereas a lack of definiteness is a defect in the claim, not of the specification.
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Yes, that's probably a more serious issue. You can't tell what is so special about the electrodes and the insulator that makes them yield more than a 10% change in R. Perhaps if they had referred to the lack of roughness that would have helped on the enablement problem. I think an indefinite claim can be enabled though.
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I am just worried that if his claim recites a top range of 11.8% and a defendant does 12% the best he can do is rely on DOE.
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But when you look at it literally, he did exactly that. His claim said "an electrical insulator between the first and second electrodes, wherein applying a small magnitude of electromagnetic energy to the junction reverses at least one of the magnetization directions and causes a change in the resistance by at least 10% at room temperature." He did show that he could go past 10% and that in fact he could reach 11.8%. How would you have drafted the claim to avoid the Magsil result? Would you have said "between 10% and 11.8%"? If so, how would you deal with a defendant who manages to get to 11.9%, or to 13%? Just rely on DOE?
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Can you think of a better way to get an open-ended range without being nailed by MagSil?
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There's a risk of what you're suggesting. But it might not be that high. For instance if I invent a new cookie recipe and the last step says "bake for a time between 10 minutes and an upper limit that any baker should be able to figure out" I am not admitting my recipe is known. I am merely saying that any baker of ordinary skill ought to know how high that upper limit is without undue experimentation. At trial, my plaintiff's expert would say "At the time of invention, any baker would have been able to note charring around the edges that would have signaled that upper limit."
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I guess I don't see that problem. The claim and spec aren't making any such admissions. The claim's upper limit is defined by the point at which undue experimentation is required. Thus, the claim is no longer to an open ended range. It defines an upper limit. This avoids the holding in MagSil. The defense's next step, with reliance on MagSil having been foreclosed, is to argue that the upper limit is indefinite. Not it is reduced to a battle of the experts. This is no slam dunk for plaintiff by any means, but it is much more promising to the plaintiff than being shot out of the water by MagSil.
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Actually, according to MPEP on enablement "a patent need not teach, and preferably omits, what is well known in the art. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991)." Therefore, the question to be resolved is this: Given the limitation "from X up to a value at which undue experimentation is required", is that upper value something that is already well known in the art. If the answer is yes, the law does not require it to be disclosed. I think the fact that a fact-finder was able to make a determination of that value is probative in suggesting that the answer to the question is "yes."
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Would there be something wrong with defining a range that says "from X up to a value at which undue experimentation is required to achieve said value"? Surely that would not be "indefinite" because as this case amply demonstrates, a fact-finder was easily able to make just such a determination.
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Nuijten, which is often cited in these signal cases, actually has this quote in footnote 6: "Of course, such a signal could be stored for later use, but the result of such storage would be a “storage medium” containing the signal. Such a storage medium would likely be covered by allowed Claim 15 of Nuijten's application, which is not before us on appeal." The claims that didn't make it in Nuijten were the ones that boldly recited "A signal". Not the case here.
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Maybe it's better to recite "A computer readable medium of the type that complies with section 101" and just get it over with. Then somewhere in the spec say "There are may kinds of computer readable media, including those not compliant with section 101 and those that are. I only intend the latter; the former are hereby dedicated to the public."
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So someone could read the patent, think of the best mode himself, convince the PTO that it's a non-obvious improvement, and get on a patent on that himself. Then he could enforce it against the patentee's competitors (but not against patentee of course, who would defend himself by saying he had been practicing the best mode all along).
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Wouldn't you need the "m" because it's not used in the nominative case but something else like accusative or genitive?
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Really? I had no idea that (H+) + (e-) -> H involved a mass/energy conversion. I guess you must get it back going the other way? Does that also happen in chemical reactions? I know there's a change in Gibbs free energy between reactants and products but is there also a corresponding change in mass? Since Gibbs free energy is the difference between enthalpy and temp*entropy, does that mean a change in mass involves a change in entropy as well?
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Thank you. It will be difficult to forget how very smart you seem to be.
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I suppose if that happens it might be applicable. Does that sort of thing happen often? Any examples? I mostly associated E=mc**2 with energy produced as a result of fission or fusion.
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