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John Roethel
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In my opinion, §101 lists the categories that are eligible for patenting. Expressio unius est exclusio alterius. I also agree with Federico that "anything under the sun that is made by man" that falls within these categories is eligible for patenting. Notwithstanding §282, equity would seem to require that there must be some way (either a litigation defense or a PTO challenge process) to invalidate patent claims that have been granted covering subject matter that is not eligible for patenting. Just as a probate court does not have the authority to conduct a criminal felony trial, the PTO does not have the authority (subject matter jurisdiction) to grant patent claims that fall outside of the categories of §101.
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Professor Kane also notes that the decision reaffirms the non-statutory principle that "discovery does not equal invention." Curiously, the grant of power to Congress in the Constitution uses "discovery" rather than "invention."
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"Monsanto sells, and allows other companies to sell, Roundup Ready soybean seeds to growers who assent to a special licensing agreement." Is the outcome different without the special licensing agreement?
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Makes sense to me. If the applicant has discovered that there is ONE specie that works and the applicant also knows that the other species do not work, then any claims covering an invention beyond that one specie should be invalid. This seems equivalent to a US rejection under §101 for lacking utility.
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Here is the public policy argument: If you can assert this claim against a device switch that has a 600% change in resistance, shouldn't you have to show that your disclosure taught a PHOSITA how to make a device switch that has a 600% change in resistance, without undue expermentation?
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I'd be most appreciative if someone smarter than I would explain what is meant by "the degree of relationship between the claim term and the interpretation of the claim term's construction."
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Maybe the D.Ct. Judge should sign up for your class.
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Good example. I had a patent issued to a client where all the drawings were the wrong drawings. PTO would not republish the patent, but it was kind enough to issue a CofC.
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@Ned: It is sad that the adverb has died: He putts terrible. It is sad that the subjective pronoun has died: Me and Joe went to the store. Joe is older than me. It is also sad that the correct spelling of supersede is on life support. Must be hard to grade the LSAT these days.
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I tried to concoct an example that was easy enough to stimulate some discussion, even from us mechanical guys. If I were king, I think I'd write the patent statute to make my example ineligible. However, under the statute as written and interpreted by SCOTUS, I don't see a straightforward way to reject the proposed claim. It seems to me that the proposed method only applies a law of nature, but does not claim the law of nature, per se.
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the intracies of posting truncated my thoughts and your reply preempted my edit. I continue: A method of determining direction comprising: placing a magnetic needle on a surface of a pool of water and determing the direction which the needle points. The requirements of 102 and 103 would then follow based on the scope and content of the prior art.
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It would be helpful in the SC would define "law of nature." Just as it would have been helpful if the SC had defined "abstract idea." Presumably, the fact that certain metals are magnetic is a law of nature. And the fact that one of the poles of a magnet points North is a law of nature. But I would submit that the following claim is patent eligible: A method of determining direction comprising:
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TypePad HTML Email @TF: Thanks JER From: TypePad
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Please help out an old guy struggling to keep up: What is the WL in the case citation? Where can I find these decisions online so I can read them? Thanks
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When I learned patent law at the Examiner training classes and in law school in the 1970's, I was taught that each claim is a separate invention. Basis is the language of 112¶2. I was also taught that, prior to the 1952 Patent Act, that claims were often rejected/invalidated as "lacking invention." Again, I was taught that the 1952 Patent Act was passed, in part, to change this terminology. A patent application is submitted with one or more claims, each claim setting out what the applicants regards as his invention. If a claim meets the requirements of the patent statute (primarily 101, 102, 103 and 112), the claim is a "patentable" claim. I have read no cases that change any of this. One of my concerns about the new patent statute is the definition of "claimed invention." This definition suggests that there may be something that could be called an "unclaimed invention." It's not nice to add more confusion.
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Man, I am way too old to be learning §102 all over again. Nevertheless, am I correct that prior art will be broader than "printed publications" and "public disclosures"? According to the above text, "any disclosure" is the term used. This seems broader than "public disclosure." Dennis: could you provide a link on this web site to a nice clean version of §§ 100-103 of the new law? Thanks
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Ned, I must respectfully disagree with both you and Alun. The term "invention" as used in the patent statutes means only a claim. §112, ¶2. Each claim is a separate invention. Id. A specification without a claim does not disclose an invention and does not meet the statutory requirement to be a specification. Id. Now, once you have a claim, then the requirements of §112, ¶1 all make sense. You read each claim in light of ¶1 to see of all of the requirements of ¶1 are satisfied as to each claim. For those who may disagree with my analysis, my question is: where do you look to find what the invention is? Thank you for considering my argument.
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Each claim is an invention. §112, ¶2. Unless two claims are identical (which is not allowed), there cannot be more than one patent that claims "the invention."
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While Richard's talent as a musician may be moderate, his estimated wealth of 150 Million pounds is noteworthy as is his status as an MBE. http://en.wikipedia.org/wiki/Ringo_Starr
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I'm a mechanical guy, so I don't pretend to understand the subtleties of chem practice. But... If only three species have utility (because the other 9997 do not work), why is the suggested genus claim necessary? Can't you get the needed patent coverage (which would be concomitant with the disclosure) by just writing three independent species claims? The three species claims would also seem to cover exactly what the inventors discovered [alert: use of constitutional term -- "discoveries"] since the inventors did not discover any other species that worked.
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I have a Kindle 1 which includes an SD slot for transferring data to and from the Kindle. Also, the Kindle TOS allows the sharing of books across up to 6 registered Kindles. Finally, there is a Kindle app for the iPad and for a PC so you can synch your books between devices.
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There's a lot to be said for the dissent's argument that the Court has made up a new standard of liability out of thin air. Perhaps this augurs the coming "beyond a reasonable clear and convincing showing of the preponderance" standard for patent invalidity.
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If the specification is supposed to be the primary source for what a term means, and if a dictionary is supposed to be the secondary source for what a term means, wouldn't a judge's opinion of what a term means be pretty low on the resource list?
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While noting that bananas are an excellent source of potassium, Judge Rich disagrees with your characterization.
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That's SARAH PALIN(tm) to you. A new source of revenue for the trademark lawyers who otherwise represent the NFL for two weeks each year.
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