BLOGS: The High-Tech Patent Agent: A View from the Trenches in Silicon Valley



Enter your email address:

Delivered by FeedBurner



Powered by Blogger
Add to Technorati Favorites

Monday, February 13, 2017, 8:36 AM

Recursive and Iterative Algorithms in Patent Claims

Some inventions operate in a recursive or iterative manner.  This could be so of a machine that repeats actions or functions on a single article or to produce multiple articles, or operates on data.

Software-based inventions, with computer programming sometimes execute recursive or iterative algorithms.  Even so, claiming for the invention might not need to invoke recursion or iteration, as the point of novelty might involve a characteristic or a function itself, and the repetition of that series of actions or functions is a necessary for the novelty.  In that case, it may suffice to mention recursion or iteration in a dependent claim.  Or not, if it really isn’t needed.

But, what if the recursion or iteration is important to the point of novelty?  How could that be represented in a claim, without the claim becoming overly complex and wordy, or worse yet, the claim resembling a software listing?  Below is a handy template for a claim that can be written compactly and elegantly, focusing on the recursion or iteration.

[Independent claim] 1.  A method of [performing a function], performed by [a machine, possibly a computer-based machine], the method comprising:
[some preliminary action, introducing input(s)];
proceeding, starting with the [input(s) or initial value(s) or state of the machine], to [perform a function] in an iterative or recursive manner, with [some intermediate parameter value or machine state] acting as a [initial value or state of the machine] for a next iteration, until [some condition is satisfied or a result is produced];
and
[some later action, making use of the result, output or end-of-iteration or recursion final state of the machine].

Claims written with the above template capture initial values, iterative values and results in the context of an iterative algorithm tied to a machine (which could be a computing machine of some sort, for computer-based algorithms).  Variations on this can be written for tangible media and for system claims.  This approach should pass muster for arguments and subject matter patent eligibility under 35 USC §101, because the algorithm and presumably tangible result are inextricably tied to the machine that is executing the algorithm, so that a computer is not a mere field of use limitation.

Takeaways:
– Decide whether recursion or iteration is important to the novelty of an invention.
– If so, figure out what are the inputs, outputs, intermediate values or states that should be captured in the claim.
– The template provided above can be adapted for method, tangible media and system claims involving recursion or iteration as part of the novel functionality of a mechanical or computing machine.
– Emphasis on a useful result, and the necessity of the machine operating in recursion or iteration, in the claim is a vital part of this strategy.

Labels: , , ,

Thursday, September 15, 2016, 8:50 AM

Rapid Patent Application Claims Drafting Technique

Here is a technique for rapidly drafting claims, for a patent application.  This is a brainstorming mechanism that works for one person, or two, or more, and uses a free-form drawing or diagram to both gather words and prompt writing.  Patent claims, after all, are collections of words in a highly stylized format, describing an invention.  Grab a piece of paper, pencil and eraser, or pen.  Or use a whiteboard or a computer application.  While thinking about the invention to be claimed, write down a phrase that is at or near the point of novelty.  Or, write down a few sentences or a paragraph describing the invention.  Get another piece of paper, if necessary, or continue on the same paper.
On the paper, write, optionally with a circle or shape around each one, key words, phrases, actions that are part of or essential to the invention.  Draw lines connecting some of these.  Write words or phrases on some of the lines, in explanation of the connections.

Now it’s time to start writing the claim.  What is the invention?  An article, a system, a method?  Pick one type of claim, and write the preamble to the claim, naming the invention or describing a purpose or function of the invention, using some of the words from the paper.  If actions are involved, what is the actor for a system or method claim?

What are the pieces of the invention, and how do they interact or fit together?  If a method, what are the pieces that are used in the method, and what do they do or what is done to or with them?  Choose some of the words or phrases for the pieces, and some of the words for actions and/or connections.  Put these together into a sentence fragment, and write that down as part of the claim.  Repeat this step, forming other sentence fragments.  It is not necessary at first cut to connect all of the sentence fragments, although sometimes that is the way to proceed.  It is not necessary to arrange the sentence fragments in the final order for the claim, at first, although sometimes that happens.

Connect one sentence fragment and another sentence fragment, with an action or a connection, again using words from the drawing.  Any of the above may prompt adding some more words, lines for connections, or notes on the drawing.  And, that may prompt picking more words for sentence fragments are connections between sentence fragments.  Draw arrows to show rearrangement of phrases, other connections to capture.  Draw arrows to show causes, results, and attach words to these.  When you have enough written out this way, do a more formal draft of the claim using a word processor and computer screen.  Proceed from one independent claim to another and another, or to dependent claims, or back and forth among these.

The process is iterative, free-flowing, dynamic.  There is no one correct way to do this, if any of it helps you write a claim, it’s useful.  Alternatively, you can do all of this in your head, and use the above as a conceptual framework for claims drafting.  Of course, claims refinement should be practiced along the way.  Decide what claim terms, actions, connections etc. should be moved to dependent claims, and which claim terms can be simplified or broadened, as well as which claim terms need to be narrowed or made more specific.  Crosschecking back to client disclosure, original thoughts or notes, to make sure that claiming is on track with best understanding of the invention and client needs is a good process to do more than once.  All part of the art of patenting.

Labels: , , , ,

Tuesday, August 2, 2016, 9:05 AM

A Response to Rejections Under 35 USC §101

By Christopher Hall & Mike Gencarella

Here is an argument we are using in response to rejections under 35 USC §101 that allege the claims are directed to an abstract idea and are patent ineligible.  This is useful in Office action responses, and appeals.

The situation we have seen multiple times is that the Examiner, in an Office action, rejects the claims and cites a small number of the claim elements such as “a processor” “a memory” “a module,” and an alleged abstract idea such as an algorithm or data processing, and states that the claim limitations, considered individually and as a whole, are not significantly more than the abstract idea.

The argument, submitted in a response to the Office action or in an appeal, is that the Examiner and/or the Office action have committed a procedural error, and failed to analyze all of the claim limitations.  The assertion that the claim limitations considered as a whole are not significantly more than the abstract idea is an unsupported allegation, because the claim limitations as a whole have not been considered.  The only claim limitations cited in the rejection are the above-mentioned small number of claim elements, and the remainder of the claim limitations have neither been cited nor analyzed.  Because the Office action has a procedural error, the rejection is improper and invalid, and should be withdrawn.

Labels: , , , ,

Tuesday, May 3, 2016, 9:03 AM

Prior Art and Continuation-in-Part Claims

What are the dates to which prior art must adhere, in examination of claims in a continuation-in-part (CIP) nonprovisional patent application?  Each claim in a CIP, whether independent or dependent, has its own priority date.  Each claim in a CIP that is fully supported in the parent application should be examined in comparison with prior art that has a filing date preceding the filing date of the parent application.  Generally, any claims in a CIP that are not supported in the parent application (i.e., which would have been new material and disallowed in a continuation or divisional application) can be examined in comparison with prior art that has a filing date preceding the filing date of the CIP.  This can get messy if there is a long chain of continuations mixed with one or more CIP applications.  Even the parent application itself can be cited as prior art for any CIP claims not supported in the parent (see, e.g., Dennis Crouch, Patentably-O, “Continuations-in-Part (CIPs) and Priority Claims”, September 7, 2012, and “A Higher Written Description Standard for Negative Claim Limitations?”, September 6, 2012, both writing about Santarus v. Par Pharma (Fed. Cir. 2012), brought to my attention by a colleague, Patent Attorney Reg Ratliff).

It is hypothetically possible that a CIP application, during examination, could have an allowed independent claim supported in the parent application, and a dependent claim not supported in the parent application and rejected with art that is newer than the parent application filing date but older than the CIP application filing date.  This would appear to contradict the common (and usually believed inviolable) situation that when an independent claim is allowed, its dependent claims are almost always automatically allowed (e.g., unless they suffer from an objection or some other, non-art related rejection such as under 35 USC §112).  And, the above is the opposite of the occasionally seen rejected independent claim and allowed dependent claim.  Would this seeming paradox be resolved by moving up the independent claim to have the same priority date as the dependent claim, since the independent claim is inclusive of the dependent claim?  But then, two claim sets, one with just that independent claim, and the other with that independent claim (or a slight variation of it) and the dependent claim supported in the CIP but not supported in the parent application would have two different priority dates for the (relatively) same independent claim.  The single independent claim (or one followed by parent-supported dependent claims) would have the priority date of the parent application, and the variation independent claim with the newer dependent claim would have the priority date of the CIP application.  Another paradox.

This curious situation aside, there are some subtleties worth exploring in terms of claim strategy, and which may prove advantageous towards getting claims allowed, which the following genericized examples elucidate.

Suppose the parent application discloses A, B and C, and prior art preceding the filing date of the parent application only shows A and B in combination, but not the combination of A, B and C.  The CIP discloses and claims a method of using A and B, and discloses variation methods for using A and C, and using A, B and C.  During examination of the CIP, prior art preceding the filing date of the CIP is found showing a (similar enough) method of using A and B, which thus anticipates or makes obvious the present claim.  What are some options for amending and arguing the claims?

A method of using A, B and C, if satisfactory to the client and not shown in cited references might be a good choice for an amended claim.  What happens if a reference showing a method of using A, B and C is cited during examination?  Well, if that reference predates the filing date of the parent application, the amended claim is anticipated (and the parent application is likely at risk).  But, if that reference is later than the filing date of the parent application, albeit predating the filing date of the CIP, there may be some room for argument.  True, the method itself is now shown to predate the filing date of the CIP, but the combination of A, B and C is not shown to predate the filing date of the parent application.  One could argue that, since the combination of A, B and C appears in the parent application and is relied on in the amended claim limitations to show novelty supported by the filing date of the parent application, that the amended claim limitations should have the same priority date as the parent application.  A proper rejection of the amended claim would have to show the combination of A, B and C was known prior to the filing date of the parent application.  Success or failure of the argument may depend on the nature of support for the combination in the parent application in comparison to the claim language in the CIP, especially if negative limitations are involved (see Dennis Crouch, op. cit).

An even stronger argument can be made if a rejection of this amended claim combines multiple references, even if some of them predate the filing date of the parent application.  If these references, singly or in combination, do not show the combination of A, B and C is known prior to the filing date of the parent application, especially if some aspect of the motivation cited in the rejection relies on taking a reference that is after the filing date of the parent application, the argument can be made that these references are not properly combined to show A, B and C prior to the filing date of the parent application.

Alternatively, a method of using A and C might be acceptable to the client, and, if not shown in cited references or generally known, might be a worthwhile claim amendment to pursue.  The client might actually be interested primarily in protecting a method of using A, and most competitors would use A and C because B is more expensive or not as reliable, etc., so this would get useful patent protection for the products the client is actually going to make and sell.  These are just examples, and one could develop others with structures and/or methods to explore how prior art and CIP applications interrelate.  This is all part of the art of patenting.

Labels: , , , , , , ,

Wednesday, April 20, 2016, 9:35 AM

Formal Logic Reveals Hidden Dangers of Logical Fallacies in Patent Claim Rejections

There is no statutory requirement that formal logic be adhered to during examination of patent claims.  Examiners and patent practitioners are free to use a wide variety of discussion and argument styles and topics, and these tend to be specific to the subject matter at hand and more informal than reliance on pure, formal logic.  Yet there are times when a formal logic fallacy is committed in the rejection of a claim, and formal logic tools can be applied to the specifics to analyze and then formulate a response to refute the rejection.  The following (fictionalized) example is given in generalized specifics, and followed by a formal logic discussion.

Suppose the independent claim under examination has, as an intended point of novelty, claim limitations involving moving an object (if this is a physical machine) or some specific data (if this is a processor-based invention) to a specified location responsive to a condition that the object or the data has some specified property, and leaving the object or the data where it was if the object or the data does not have the specified property.  The Examiner, in an Office action rejecting the claims, has set forth a first reference that shows two possible locations for an object or data, and moving the object or data from the one location to the other.  The Examiner has set forth a second reference that shows various conditions and properties the object or the data could have, and various operations that could be performed on the object or the data responsive to the object or data either having or not having the various conditions and properties.  The Office action asserts that the claim limitations of “leaving the object or data where it was, and moving the object or data from where it was to the new location” are shown in the first reference, and the claim limitations of “responsive to the object or data having or not having the various conditions and properties” are shown in the second reference, therefore all of the limitations are shown in the combination of the references.  Can you spot the logical fallacy in this argument?

In terms of formal logic, there is a logical fallacy in the proposition set forth in the rejection of the claims.  The proposition is of the form of showing A in a first reference, and “responsive to condition B” in a second reference, with that assertion that this proves “A is responsive to condition B”.  But, neither reference teaches a logical connection between A and B.  The second reference teaches actions, in the second reference, that are responsive to condition B.  The first reference teaches action A, possibly responsive to conditions taught in the first reference.  But, the conditions in the first reference are not equivalent to the conditions in the second reference, and the actions taught in the first reference are not equivalent to the actions taught in the second reference.  The two teachings cannot be logically combined to prove that A is responsive to condition B.  That this is a logical fallacy can be shown by reductio ad absurdum, a formal logic proof style.  Suppose that the proposition that A shown in the first reference, and “responsive to condition B” shown in the second reference, does show that A is responsive to condition B, is true.  But, while the second reference teaches that action C is responsive to condition B, the second reference also teaches that action D is responsive to not condition B, which could be called action D is responsive to condition E.  By the logical proposition, the combination of the first reference and the second reference therefore teaches that A is responsive to condition E, which is equivalent to A is responsive to not condition B.  But, this contradicts the supposition that the combination of the references teaches that A is responsive to condition B.  The two are in logical contradiction, which now disproves the proposition, by reduction to a contradiction or reductio ad absurdum.

In terms of arguments to be made during examination of patent claims, there is no teaching to combine the references.  That the second reference teaches some other actions responsive to the condition that the object or the data has or doesn’t have some specified property has no bearing on whether or not the actions of leaving the object or data where it was, or moving the object or data from where it was to a new location as taught in the first reference are to be performed responsive to the conditions in the second reference.  They are independent of one another, and neither reference teaches the connection between the actions in the first reference and the conditions in the second reference.  Therefore there is no teaching to combine.  Any Office-cited general-purpose motivation, such as that the two references are in the same or related fields, are general in nature, and do not direct or reveal that purported specific connection between the actions in the first reference and the conditions in the second reference.  A proper combination of the two references would teach that the actions of the first reference are performed responsive to the conditions in the first reference, and the actions in the second reference, unrelated to those in the first, are performed responsive to the conditions in the second reference, unrelated to the conditions in the first reference.  Only if one or both references teach a connection between actions in the first reference and conditions in the second reference would they be properly combined to show the claim limitations.

Returning to formal logic, the logical deduction from the proof by contradiction or reductio ad absurdum is that the combination of reference one and reference two shows that the actions A shown in the first reference are not dependent on the conditions B shown in the second reference, since the (fallacious) logical proposition could be used to show that action A is responsive to both B and not B.  In other words, condition B is a “don’t care” condition for action A.  Formal logic shows that the two references do not establish a connection between action A and condition B (or not B).  In formal logic terms, according to the (fallacious) logical proposition and what is shown in the two references, A is dependent upon (B or not B), which logically resolves to just A (independent of or not dependent on any state of condition B).

Thus, the formal logic proves the invalidity of the proposition in the Office action, and the validity of arguing that the references do not teach or establish any connection between the actions of the first reference and the conditions in the second reference.  Practically speaking, where formal logic is a useful tool is when it is not immediately clear how to argue against a claim rejection that somehow feels fallacious or just plain wrong.  Formal logic can point to a logical fallacy advanced in the rejection, which can then point to what specific claim terms and what specific factual findings to apply and arguments to refute the rejection.  For the patent practitioner, abstracting the rejection to formal logic terms clears away the specific details of the subject matter, and lets us look at whether or not the argument proposition or format itself, advanced in the rejection, is based on sound reasoning.  If the argument itself is employing fallacious logic, the patent practitioner can then resolve this to the specific details of the subject matter, and develop a response strategy with reference to those details.  While formal logical will not necessarily develop every possible response or argument (see, e.g., the incompleteness proof by Goedel), it can be used as good guidance and is a useful tool to have in the toolkit.  The above examples are just one application of one part of formal logic, and there are many more constructs in formal logic and many more places where it can be applicable in reasoning during patent claim examination.  This is all part of the art of patenting.

Labels: , , , , , , , ,

Monday, February 1, 2016, 9:22 AM

Claims Strategies in Patent Applications – Matching or Varied?

Up to 20 claims, including three independent claims, are paid for in the standard filing fee for a US non-provisional patent application.  Some clients prefer matching claims in the claim set, others prefer varied claims.  What are the pros and cons of each?

Matching claims have identical or near-identical claim language across the independent claims and again across the dependent claims, and near identical scope.  Varied claims have different words, phrasing, punctuation and/or scope.  For example, a claim set could have a method for the first independent claim, a tangible, computer-readable media with instructions for a processor to perform a method as the second independent claim, and a system in which components perform actions of a method, as the third independent claim.  Clearly, these claims have at least slightly different scope, as one is to a method, one is to a media and one is to a system.  In a matching claim set, these three types of claims would have different preambles, and the bodies of the independent claims would have identical or near-identical claim language tailored to meet the preamble.  In a varied claim set, different claim terms, nouns, verbs, adjectives, structures, connections among elements, actions, relationships among elements, etc., can be employed to capture various novel aspects.

Matching claim sets have the advantage that they may be relatively easier to prosecute, since the arguments need be made only once (e.g., for the first independent claim and the first of any dependent claims argued).  Arguments for subsequent independent claims and dependent claims can just reference the earlier arguments.  Amendments, similarly, need be crafted only once for the first independent claim and any dependent claims that depend from it, as needed, and then copied (or slightly modified) for the other two independent claims and respective dependent claims.  This can save costs for a client, since it should take less time to write amendments and arguments.

Varied claim sets have the advantage that they cover more scope for the invention.  They can also allow for exploration of different amendments, to see which one has better success during examination.  For example, if one independent claim has allowed subject matter, and the other two don’t, the strategy followed in the successful independent claim can be propagated to the other two independent claims.  A varied claim set may have a (slightly) better chance of surviving legal challenge, with one branch of claims surviving, although claims often stand or fall together in the courts.

A varied claim set can get restricted during examination.  This isn’t necessarily good or bad, just something to be aware of.  A restriction requirement, and the paperwork to elect an invention and select corresponding claims, followed by submitting additional claims to fill out the claim set again for examination, can add to costs and delays for a client.

Matching claim sets can be easier to handle for PCT (patent cooperation treaty) and foreign applications.  It is easier to meet the unity requirement, and likely also easier to communicate across different languages, with a matching claim set.  There are also licensing considerations, however licensing issues are beyond the scope of this article.  Ultimately, with all the above considerations, it can also just come down to personal preference.  Write them the way they want them.  All part of the art of patenting.


Labels: , , ,

Tuesday, December 15, 2015, 8:38 AM

Patent Claim Preambles Post-Alice

What is in the preamble of a patent claim?  And, can the contents of the preamble influence the claim examination process?  Ever since the US Supreme Court ruling in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., patent claims have faced an elevated possibility of being rejected under 35 USC §101 as being directed to an abstract idea, or being not significantly more than an instruction to implement an abstract idea on a generic computer.  The preamble introduces the limitations of the patent claim, and in so doing, sets the stage for interpretation of the claim and examination of the claim.  Often, the preamble acts as a sort of title for the claim, and suggests a focus or primary subject matter for the claim.

We patent practitioners have seen, in Office actions from the USPTO (United States Patent and Trademark Office), rejections of claims in which the material in the claim preamble is paraphrased or even quoted word for word as an abstract idea to which the claim is allegedly directed.  This suggests a strategy for claim preambles.  We may consider writing claim preambles that set forth just enough of an abstract idea to where there is plenty of material in the claim limitations, outside of the claim preamble, that can act as the “significantly more” that the Alice ruling suggests claims that have patent eligible subject matter should have.  Too narrow a claim preamble might leave not enough in the claim limitations to convince an Examiner that the claim has significantly more than an instruction to implement the abstract idea (as set forth in the preamble) on a generic computer.  Too broad a claim preamble, for example claiming just A method, comprising:, or A system, comprising:, does not set forth anything that the Examiner could grab as an alleged abstract idea and so does not shape the examination process.

An article, “Judge Lourie Suggests Jepson Claims For Patent Eligibility”, by Courtenay C. Brinckerhoff (December 8, 2015), reviews the suggestion that returning to Jepson format claims might be helpful in patent eligibility.  Although this suggestion is made with regard to diagnostic methods in medical innovations, it might apply to other types of claims.  Generally, a Jepson format claim (to review) is of the form, An improved [article, method, system, etc., having certain features, often a quite detailed description], wherein the improvement comprises: [the limitations of claim].  This has a similar effect of setting forth the subject matter of the claim, by introducing in a preamble a brief description of subject matter from which the remaining claim limitations distinguish.

So, in both of the above ideas for preambles, the first of setting forth in the claim preamble a just right level of detail to frame an abstract idea, the second of setting forth in the claim preamble a known subject, presumably with patent eligible subject matter, the presentation of the remaining claim limitations has a similar effect.  The remaining claim limitations distinguish from the material in the claim preamble.  During examination, if the claim is rejected as patent ineligible, directed to an abstract idea without significantly more, the argument is then to show that the remaining claim limitations constitute the significantly more.

And that is where inventiveness comes in.  When the claim limitations have tangible aspects, and show inventiveness (for example, as argued in the Office action response under 35 USC §102 and 103 rejections), this can be argued as showing substantially or significantly more than an instruction to implement an alleged abstract idea on a generic computer, in the claims.  This can be a stronger argument, if the preamble of the claim shapes perception of what the abstract idea is.  It can then be argued in a straightforward manner that the distinguishing limitations, showing the inventiveness, are not shown anywhere in the abstract idea in and of itself.  The abstract idea, per se, doesn’t say how the generic computer implements the abstract idea, and doesn’t say anything about the new distinguishing limitations, so these distinguishing limitations are substantially more.  If the Examiner says otherwise, this can be challenged as not factually shown by the Examiner.  In the Jepson format, one could even argue that the preamble shows the claim is directed to patent eligible subject matter, and the further limitations narrow that and show an improvement to a known process or article, which is patentable subject matter.  This is all part of the art of patenting.

Labels: , , , ,

back to top