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The President's Executive Action Addressing Overbroad Functional Claiming ~pj | 457 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
The President's Executive Action Addressing Overbroad Functional Claiming ~pj
Authored by: PolR on Friday, June 07 2013 @ 12:38 PM EDT
The very same rejection that Lemley has recommended: 112(b) indefiniteness on
the grounds that the specific structure required by 112(f) is not present in the
specification. The assumption is all functional claiming automatically triggers
112(f).

This view will have to be argued in front of the Federal Circuit when someone
challenges such a rejection. But once the Federal Circuit accepts this view the
reform becomes the current case law.

[ Reply to This | Parent | # ]

The President's Executive Action Addressing Overbroad Functional Claiming ~pj
Authored by: Anonymous on Saturday, June 08 2013 @ 05:52 PM EDT
As a Patent Examiner (not speaking on behalf of the Office):
Bingo. The proper rejection would be a 112 1st rejection
over "Enablement not Commensurate in Scope With the Claims",
see MPEP 2164.08. Such a 112 1st rejection for enablement
is a very very hard rejection to make, mostly because case
law isn't friendly to it and requires showing that you can't
use the invention without undue experimentation. "Undue
experimentation" is a murky concept and very difficult to
nail down. It even varies by subject area: a programmer
would be expected to be able to write code so you could say
that (and the Applicant's council will) having to write code
to implement some function isn't "undue".

There is a tendency to blame Examiners for stupid claim
forms but nearly every time there is case law requiring us
to act that way and we think it is stupid as well.
Functional claims are the bane of our existence.

112(f) (aka 6th paragraph) case law is about as clear as mud
but I don't see it supporting a change in claim
interpretation because everything is so fact-specific.
Check out all the citations in MPEP 2181 to get a good feel
for how much of a mess it is.

[ Reply to This | Parent | # ]

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