|Authored by: Ian Al on Saturday, March 16 2013 @ 04:37 AM EDT|
If a divisional application is directed solely to subject matter
described and claimed in the original application as filed, the Director may
dispense with signing and execution by the inventor. The validity of a patent
shall not be questioned for failure of the Director to require the application
to be restricted to one invention.
This has appeared in a previous
Groklaw article, although I could never find it. The article explained that, if
the multiple inventions used the same subject matter described and claimed in
the original application, the distinct and independent inventions could be
covered by one patent. As you say, the Director, at his discretion, can require
the inventions to be split among multiple patents and those patents can
duplicate or cite the subject matter descriptions in the original
This article reports on the courts bearing down on a well
known abuse of the concession.
The specification shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the inventor or a joint
inventor regards as the invention.
In the patent in question, the
machine and method claims are technically independent, but are not independent
inventions. The specification does not meet the requirement of §112 of
distinctly claiming the invention subject matter. The invention cannot,
according to §101 (as opined by major contributor, Judge Rich) be a combination
of the four statutory subject matter classes.
Neither the 'Transport
Format Combination Indicator (TFCI) encoding apparatus in a CDMA mobile
communication system' nor the 'Transport Format Combination Indicator (TFCI)
encoding method in a CDMA mobile communication system' are independent
inventions in their own right because the machine does not do anything without
the rest of the system and the method does not do anything in its own right,
without both the machine and the system.
I'm surprised that dio gratia
did not chime in to point out that the patent defines the mobile phone part of
generating signals that are exchanges, as a protocol, between phone and network.
The patent uses abstract terms to describe the way the mobile phone takes part
in the defined signalling protocol. The invention is the signal and not the
means of signalling. It is dressed up with an imagined machine and an imagined
method with no technical means given. Signals are not statutory subject
Software Patents: It's the disclosed functions in the patent, stupid!
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