CAFC Rejects Method for Manufacturing Propshafts Under 101; Judge Moore Calls Majority Analysis ‘Validity Goulash’

By Nancy Braman
October 4, 2019

“Respectfully, there is a clear and explicit statutory section for enablement, §112. We cannot convert § 101 into a panacea for every concern we have over an invention’s patentability, especially where the patent statute expressly addresses the other conditions of patentability.” – Judge Kimberly Moore

https://depositphotos.com/4752071/stock-photo-hungarian-goulash.html

The current Section 101, according to Judge Moore

This article has been updated to include the statement of  Representative Doug Collins, Ranking Member of the House Judiciary Committee, who issued a press release on this case on Friday.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion on October 3 involving a patent infringement suit brought by American Axle & Manufacturing, Inc. (AAM) against Neapco Drivelines LLC (Neapco) in 2015. The suit involved alleged infringement of U.S. Patent No. 7,774,911 (the ‘911 patent). The opinion, authored by Judge Dyk, affirmed the U.S. District Court for the District of Delaware’s finding that the asserted claims are ineligible under Section 101. Judge Moore dissented, saying that “the majority’s decision expands § 101 well beyond its statutory gate-keeping function and the role of this appellate court well beyond its authority.”

A Method for Propshaft Vibration Dampening

Propeller shafts (propshafts) are necessary in automotives for the transmission of rotary power in a driveline. Propshafts can be subject to excitation from the driveline, resulting in bending mode vibration, torsion mode vibration, or shell mode vibration. These vibrations are known for causing excessive noise. This noise has been dealt with in the prior art using liners that dampen the propshaft vibrations by varying the liner vibration frequencies (liner “tuning”) or using weights or plugs to provide resistive attenuation that dampens bending mode vibrations. The ‘911 patent teaches a method for manufacturing driveline propeller shafts that are designed to attenuate vibrations transmitted through a shaft assembly.

Representative claims 1 and 22 recite a method for manufacturing a shaft assembly of a driveline system with two components, of which the shaft assembly transmitted torque between the components.

Claim 1 recites:

1) providing a hollow shaft member;

2) tuning one or more liner to attenuate at least two types of vibration transmitted through the shaft member; and

3) positioning at least one liner within the shaft member so that the liner is configured to dampen shell mode vibrations in the shaft member by at least 2%, and dampen bending mode vibrations where the liner is within 20% of the natural frequency required in bending mode of the shaft assembly.

Claim 22 recites:

1) providing a hollow shaft member;

2) tuning mass and stiffness of at least one liner; and

3) inserting the now tuned resistive absorber liner into the shaft member to absorb attenuating shell mode vibrations and bending mode vibrations.

Although the prior art covered attenuation methods of the three propshaft modes, the ‘911 patent focused on industry need for an improved method for the dampening of attenuations arising in each mode simultaneously. AAM argued that its method for tuning a liner to produce frequencies that dampen vibrations in shell mode and bending mode simultaneously is novel, using the potential for newly improved manufacture of propshafts as evidence of this.

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Alice/Mayo Analysis

In AAM’s suit against Neapco, the parties filed cross-motions for summary judgment, and AAM appealed the district court’s judgment that the ‘911 patent claims 1 and 22 were invalid under Section 101. The CAFC reviewed the case de novo. Referencing Alice Corp. Pty. Ltd. V CLS Bank International and Mayo Collaborative Servs. v. Prometheus Labs. Inc., the court looked applied the two-step test for patent eligibility: 1) if the claim is directed to a law of nature, natural phenomena, or abstract idea; and 2) if the claim embodies an inventive concept.

Prong One: Natural or Abstract

Under the first prong, the court relied on Hooke’s law to determine that the tuning limitations of the claim state nothing more than the law of nature involving friction damping while telling the reader to “apply it.” AAM countered this by stating that the system of the invention is too complex to be described simply through an application of Hooke’s law and pointed out that liners had not previously been used to dampen bending mode vibrations specifically. In response, the CAFC contended that it was only able to consider specific elements of the claim in its analysis, such as the dual-mode dampening discussed, and not an unidentified inventive concept of the claim. The court found that the mechanisms for achieving the desired result are not actually claimed in the ‘911 patent, as the claims do not instruct the reader on how to change the variables to achieve a dual-dampening result or dampening of bending mode vibrations, simply forcing the reader to use knowledge of Hooke’s law to engage in a trial-and-error process in changing liner specs until the desired result is achieved.

Even where AAM had discovered patentable refinements of this process, the court found that these refinements were not properly disclosed within the patent in order to be claimed, as no models were included in the claims. In line with Interval Licensing LLC v. AOL, Inc. and Parker v. Flook, the CAFC reiterated that claims must recite a practical way of applying an underlying idea, and may not simply be drafted in a results-oriented way so as to encompass all methods for achieving the desired result. Additionally, in Diamond v. Diehr the Supreme Court held that a mathematical formula does not suddenly become §101 subject-matter eligible through limiting the patent’s reach to a particular technology. Therefore, the CAFC came back to AAM’s assertion that the complexities of the ‘911 patent dwarf Hooke’s law and found that even with its complexities, the patent still lacks to requisite steps for achieving the claimed result.

Prong Two: Embodiment of Inventive Concept

After a thorough analysis of the first prong of the Alice and Mayo two-step process, the CAFC turned to the second prong and found that no inventive concept existed that could transform the claims into patent eligible subject matter. The automotive industry commonly tested for natural frequencies, damping of propshafts, and positioning of liners, thus the court found that simply engaging in or reworking this well-known process did not warrant patent eligibility by itself, even where the desired result would be novel.

Validity Goulash

Judge Kimberly Moore filed a scathing dissent in which she said the majority opinion “deeply trouble[s]” her and that the Court’s opinion conflates Section 101 with Section 112. The following excerpts from her dissent are worth reprinting in full:

“The majority opinion  parrots the Alice/Mayo two-part test, but reduces it to a single inquiry: If the claims are directed to a law of nature (even if the court cannot articulate the precise law of nature) then the claims are ineligible and all evidence of non-conventionality will be disregarded or just plain ignored….

The majority’s concern with the claims at issue has nothing to do with a natural law and its preemption and everything to do with concern that the claims are not enabled. Respectfully, there is a clear and explicit statutory section for enablement, §112. We cannot convert § 101 into a panacea for every concern we have over an invention’s patentability, especially where the patent statute expressly addresses the other conditions of patentability and where the defendant has not challenged them….

Section 101 simply should not be this sweeping and this manipulatable. It should not be used to invalidate claims under standards identical to those clearly articulated in other statutory sections, but not argued by the parties. It should not subsume § 112. It should not convert traditional questions of fact (like undue experimentation) into legal ones. The majority’s validity goulash is troubling and inconsistent with the patent statute and precedent. The majority worries about result-oriented claiming; I am worried about result-oriented judicial action.”

Ultimately, the Court affirmed the district court’s finding that AAM’s claims were ineligible under Section 101.

Congress is Watching

Representative Doug Collins (R-GA), Ranking Member of the House Judiciary Committee, sent out a press release on Friday following the Federal Circuit’s decision. Collins called for a new patent eligibility test in light of the “flawed” ruling, which he said “showcases the inadequacies of [the current patent eligibility] test. He added:

“It’s unthinkable the courts found this invention, a manufacturing process for making a key automotive part, as patent ineligible. The courts have misstated the law several times, which deprives many innovative products of adequate protection. Congress must establish a new eligibility test to encourage investment in developing new U.S. technologies and ensure American inventors aren’t at a global disadvantage. I’ve been working on reforming this test with my colleagues in both the House and the Senate, and I look forward to continuing this important work.”

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The Author

Nancy Braman

Nancy Braman is a freelance legal researcher for IPWatchdog. She is also a U.S. Registered Patent Agent and a 2L at the University of New Hampshire Franklin Pierce School of Law, where she serves as the Communications Director of the UNH Patent Law Forum. Her research background in Molecular and Microbiology brings her to the realm of patent law, and in her spare time, she also works as an Alaska commercial sockeye fisherman.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 32 Comments comments. Join the discussion.

  1. concerned October 4, 2019 11:32 am

    “In line with Interval Licensing LLC v. AOL, Inc. and Parker v. Flook, the CAFC reiterated that claims must recite a practical way of applying an underlying idea”

    and

    “Additionally, in Diamond v. Diehr the Supreme Court held that a mathematical formula does not suddenly become §101 subject-matter eligible through limiting the patent’s reach to a particular technology.”

    I read these CAFC statements and become even more bewildered by the USPTO examiners. My patent application does apply a practical application with a “first ever” inventive step not used anywhere in commerce (not in dispute). Therefore, the examiner’s argument of limiting an abstract idea to a particular environment is baseless. I am applying an inventive step to particular environment, to effect a particular solution on a particular problem. And I placed the evidence squarely in the USPTO official record to debunk the kind of arguments here in American Axle that the industry already does the process.

    If I can see these arguments, read support of my arguments everywhere, I know the examiner can as well. What is going on at the USPTO that puts out official memos that support my position, then rejects claims in the opposite of said memos?

  2. Anon October 4, 2019 12:05 pm

    With all due respect to Bon Jovi,

    You give goulash a bad name.

  3. Anon October 4, 2019 12:08 pm

    Can anyone – any engineer – tell me how to apply something that is not a law of nature?

    “Apply magic “X” but “X” must not be found in our universe.

  4. Pro Say October 4, 2019 1:42 pm

    “Respectfully, there is a clear and explicit statutory section for enablement, §112. We cannot convert § 101 into a panacea for every concern we have over an invention’s patentability, especially where the patent statute expressly addresses the other conditions of patentability.” – Judge Kimberly Moore

    That. Says. It. All.

    Congress — it’s now October.

    A new decade is just around the corner.

    Where are you?

    Where? Are? You?

  5. B October 4, 2019 1:47 pm

    The zingers provided by Judge Moore are priceless. It took five months after oral argument for Judges Taranto and Dyk to cobble together their poor excuse for an analysis, but Judge Moore nails them.

    The one issue Judge Moore fails to address: the “fact-finding” by the majority violates Constitutional due process as it presents evidence and arguments no one briefed. There is no opportunity to be heard.

    This is an unfortunate process that occurs sometimes in the most smug, yet ignorant, judges who think that their superior intellects will produce the right result – and don’t bother to correct them with reality because that just pisses them off.

  6. Benny October 4, 2019 2:45 pm

    Anon ,@3, not a great deal of natural in US3161462 (well you did ask.)

  7. Curious October 4, 2019 3:19 pm

    Anon ,@3, not a great deal of natural in US3161462 (well you did ask.)
    Shortest independent claim ever. That being said, it appears to be the result of a natural law and nothing else.

  8. Anon October 4, 2019 3:20 pm

    Benny,

    An element is your answer?

    Sorry, but no. Humans may not have seen this, but how much of the universe have we seen?

    Your try is denied (and fails miserably to grasp the point). I DID ask – just not the asking that you think that I asked.

  9. B October 4, 2019 3:29 pm

    Benny

    I analyzed that patent yesterday. It’s pretty short, but the dumbbell-shaped insert relies on at least some natural law to be effective.

  10. Benny October 4, 2019 3:31 pm

    Anon – an un-natural element.
    Engineering humor, generally lost on lawyers..

  11. angry dude October 4, 2019 4:36 pm

    On July 31, 1790 Samuel Hopkins was issued the US Patent 1 for a process of making potash, an ingredient used in fertilizer. The patent was signed by President George Washington.

    The Founding Fathers are rolling over in their graves…

  12. Anon October 4, 2019 5:08 pm

    Benny,

    Your attempt at stating this is engineering humor falls (far) short, as — like typical TRUE patent attorneys — I am BOTH an engineer and an attorney.

    You missed for the reasons given. The element may indeed BE man-made, but there was NO *magic* involved. To be humorous, you would have had to show SOME humor, You did not. All that you did was show that you did not get the point.

    I “suppose” that there is some humor in your speaking up and showing that you don’t get things, but that’s not the type of humor that I think that you were going for (or even aware of).

  13. Benny October 4, 2019 5:52 pm

    US6025810 also strains the bounds of nature beyond credibility. But that is just the failings of the USPTO. I’ve seen far more nebulous method patents than AAM’s granted. As an aside, Anon, in the numerous comments you have posted over the years, I can’t recall any evidence that you possess a sense of humour.

  14. Anon October 4, 2019 7:47 pm

    Benny,

    Your“ evaluation of what constitutes humor is suspect from the start.

    You wouldn’t know humor if it smacked you upside the head.

  15. Pro Say October 5, 2019 11:04 am

    Anyone have Doug’s full press release … or a link to it?

    Thanks!

  16. PTO-Indentured October 5, 2019 12:50 pm

    Stranger than fiction.

    I was about to say, ironically “You can’t make these things up” — but stopped myself seeing, the CAFC just “Makes these things up”.

    Err…just makes these things up (inserting the knife) then renders them presidential (twisting the knife).

    Irony aside, the sad thing is, this is yet another significant blow weakening the U.S. patent system, strangely, as if made by a Person(s) of Vacuous Skill in the Art, as if made by a person(s) having failed: ‘patent 101’.

    Congress: Don’t take my word for it — see former head of the CAFC’s words literally: “The CAFC has failed, and failed, and failed…”

    How long? How much longer? O, that you would step up now as fitting, good-faith stewards to bring back a former-best in the world patent system intentionally thrashed via AIA doings unleashed by former non-stewards (of congress).

  17. Paul Johnson October 5, 2019 10:39 pm

    The irony of this and many other 101 cases is that you can use the Alice/Mayo test to invalidate any process claim. (Yes, I am open to challenges.)

    One settled rule of statutory interpretation is that “[a] statute should be construed so that effect is given to all its provisions, so that no part will be inoperative or superfluous[.]” The Alice/Mayo test violates this rule.

  18. TFCFM October 7, 2019 9:42 am

    This seems like a relatively “easy” case of ineligibility. The patent claim recites:

    positioning at least one liner within the shaft member so that the liner is configured to dampen shell mode vibrations in the shaft member by at least 2%, and dampen bending mode vibrations where the liner is within 20% of the natural frequency required in bending mode of the shaft assembly.

    This is nothing more than a naked attempt to monopolize ALL methods of achieving these desired ends — not an attempt to claim only the methods (if any) that the patentee invented.

    At best, the claim ought to have been interpreted as a means-plus-function claim, even if one were inclined to ignore or forgive the applicant’s attempt to foreclose all methods (whether or not by-then invented) of achieving the desired ends. That the claims might *also* have been insufficiently disclosed or enabled (for failing to identify and instruct regarding not-yet-invented methods) does not change the conclusion regarding ineligibility.

    “I claim the mere idea of achieving *this*, however accomplished,” is not the sort of “invention” (a.k.a. wishful thinking) that the patent statute was, should have been, or should now be written to monopolize.

  19. Ternary October 7, 2019 12:43 pm

    Let me make a wild guess about TFCFM as well as the other Goulash Cooks: They are unable to describe, measure and distinguish between shell mode and bending mode vibrations in terms of Hooke’s Law. Hooke’s Law states that “… the force needed to extend or compress a spring by some distance is proportional to that distance.” Further “This can be expressed mathematically as F= -kX, where F is the force applied to the spring (either in the form of strain or stress); X is the displacement of the spring, with a negative value demonstrating that the displacement of the spring once it is stretched; and k is the spring constant and details just how stiff it is.”

    You can model the mechanical vibrations of a shaft with (partial) differential equations, which do not follow in any way automatically from Hooke’s Law. You can then modify certain parameters in the equations related to physical properties of the shaft system to minimize transfer of vibrations.

    This is typical (but practically difficult) mechanical engineering stuff and my guess is that an undergraduate trained engineer (one of ordinary skill) would have considerable problems deriving the correct equation system to determine correcting the mechanical filter characteristics of the shaft. It is upfront not even clear (or obvious) that a liner would do the trick. You can also do the above in an empirical way. Just add amounts of liner and see if it limits certain modes of vibration. (not any law is applied then). The way a lot of (independent) inventors did their breakthrough inventions.

    The 101 issue is completely made up. It is not even goulash, it is a bad tripe mix. It is “anything goes” to reject. What TFCFM and the Court have in common is that they don’t like the claims, but they cannot come up or don’t bother to come up with the right arguments and thus fall back to 101, even if it does not make sense. TFCFM above starts with “easy case of ineligibility” but makes no realistic arguments that pertain to 101.

    There is nothing abstract in the claimed invention and there is most certainly not any “just apply Hooke’s Law” in there.

  20. Anon October 7, 2019 2:54 pm

    Ternary,

    I am no fan of TFCFM, but he DOES have a “realistic” argument that pertains to 101.

    That “realistic” argument resides in the difference between claiming a result and claiming something else (either of any of the four statutory categories).

    The problem of course comes (as it must) with substantiating exactly what a “result” is.

    This is of course a problem BECAUSE any proper claim that IS to a statutory category item can also be said to be TO “a result.”

    MANY items (for easy example, hammer or screwdriver) are words for BOTH an item and an action that the item does (or colloquially, “a result”).

    People (and here I generously include TFCFM) lack a full grasp of patent law and engage in your “bad tripe mix” of what has turned into a “I know it when I see it” “catch-all” of “but that should not be patent eligible.”

    And the critical factor here is that the Supreme Court is a critical entity to blame for this mess!

    One of the larger points here (or pretty much anywhere that 35 USC 101 discussions come up) is that the current score board is broken.

    Referring to a broken scoreboard will almost always BE wrong, and will certainly BE wrong from an “application of law” sense.

    What you see in TFCFM’s post at 18 is the “witch” test of what the “scrivener” was “really attempting to do. Of course, it is ALWAYS “easy” for the person devising the “witch test” to obtain a pre-determined End.

    Let’s do a quick and dirty mental model: Let’s say a “hammer” was never a thing, and I come up with the very first hammer. Let’s say I claim my innovation in multiple categories (as I am permitted to under the law as written by Congress). I have Process claims that capture the action of “hammer,” as well as Machine claims that capture an objective physical structure (a TOOL that can be used in the process claims).

    Does my Machine claim capture “any way to make a hammer?” Would the objective physical structure claim cover ways of making a hammer by removing material from a larger block of material (hint: yes). Would the objective physical structure claim cover ways of making the hammer by sintering raw materials, carving other raw materials, and fastening multiply differently manufactured materials together in yet a different manufacturing process step? (hint: yes).

    Now here’s a tricky part:
    Would my objective physical hammer claim capture a hammer made by a THEN not even invented computer-printing additive manufacturing process? (hint: YES).

    In essence then, an item of one statutory category DOES cover a “no matter how accomplished” type of thing.

    To return to discussions of eligibility, one MUST understand where the Supreme Court has stepped off the deep end and MUST understand that the score board is indeed broken.

    TFCFM is simply NOT capable of recognizing, let alone understanding WHY the scoreboard is broken, and thus is not capable of having a discussion of patent law that may serve to fix the broken scoreboard. ALL that he is capable of doing is parroting a score from a broken score board.

    It is NOT a matter of “NO” realistic — it is a matter of not understanding the nuances of WHEN realistic is just not being properly applied.

  21. Ternary October 7, 2019 10:49 pm

    Anon. The claim requires a hollow shaft (that is a special structure by itself) provided with a liner. That is a physical structure. And thus the claim is and should be patent eligible. Other issues should be dealt with separately. The specification provides an example of a liner. It also teaches tuning. I am not an expert in mechanical systems, but it reads like tuning a filter. One of ordinary skill should be able to do the tuning. The trick, as I understand it, is to attenuate 2 vibrational frequency modes at the same time by placing a liner in a hollow shaft. That seems valuable (hence the case) and patent eligible to me. Nothing abstract there. There is and should really be no issue in how one came to the invention, either by using a mathematical model or by trial-and-error or other empirical insights.

    It is somewhat like reducing transmission modes in optical fibers for certain wavelengths of light by reducing the diameter of the core of a fiber. That is: you reduce the diameter of the core inside a cladding until the transmission mode changes from multi-mode to single mode or mono-mode. Is that useful? You bet. This “invention” allows the transmission of signals in the tera-hertz range. Nobody would question at that time if the inventor knew how to measure the signals or that the invention is a consequence of Maxwell equations to wave transmission systems. Or, making the comparison with Hooke, alleging that the whole invention is simply derived from Snell’ Law.

    Quickly reading the ‘911 patent, I got the impression that this probably is very clear to one of ordinary skill, with structures explained and such a person would have no problem at all to construct the claimed invention. Using answers from experts who admit that mass influences vibrations does not say one iota about the invention. It is like asking if current can flow through a resistor. Yes it can. So what?

    There may be 112 problems, but we have 112 to deal with that. There also may be 103 or even 102 problems. Again, we have 103 and 102 to deal with that. The way I read the Opinion is that the Court reduced the 101 issue to one of novelty and/or obviousness over prior art. That has to do with validity, not eligibility.

    I like your example of hammers. The consequence of a good invention captured in good claims is that it “may” cover a broad field. Preferably a very broad field. That infuriates many. I am not sure why. But it is the consequence of doing the invention. Nobody invents (or claims) vibration mode suppression in vertical coffee grinders for personal use not grinding more than half a pound of coffee beans.

  22. CP in DC October 8, 2019 11:14 am

    This is a reach-through claim. It was long settled as a 112, description issue in 2004. Remember the COX-2 inhibitors case? University of Rochester v GD Searle 358 F3d 916 Fed Cir 2004.

    Moore is right, not a 101 issue.

  23. IP Lawyer October 8, 2019 1:04 pm

    When the Highest Court of the Land confuses a patent with a franchise all the rest is irrelevant. Ice on the cake. In the meanwhile, they produce laughable reports like this one (GIPC – affiliate to the chamber of commerce) https://www.theglobalipcenter.com/ipindex2019-chart/ PATHETIC

  24. Anon October 8, 2019 1:46 pm

    Thanks CP in DC.

    To which, if I may offer a pun, to a man with a hammer, everything looks like a (101) nail.

  25. TFCFM October 8, 2019 1:59 pm

    Ternary: “Let me make a wild guess about TFCFM as well as the other Goulash Cooks: They are unable to describe, measure and distinguish between shell mode and bending mode vibrations in terms of Hooke’s Law…

    This is typical (but practically difficult) mechanical engineering stuff…

    The claim requires a hollow shaft [ ] provided with a liner. That is a physical structure. And thus the claim is and should be patent eligible.

    You are certainly correct that I am not a shaft-vibration-dampening expert. However, that is immaterial to the ineligibility issue.

    The issue that makes the claim abstract is not whether it recites items that are physical, but WHICH items (physical or other) it recites. Here, the claim recites ALL shaft/liner combinations that “work” (i.e., dampen the recited vibrations by the recited amounts). Even assuming that the specification discloses SOME shaft/liner embodiments that satisfy the dampening limitations, the patentee claimed ALL combinations which do, but did not disclose all which do (including those embodiments not yet invented by anyone). THAT is what makes this claim an “easy” call on ineligibility.

    Anon: “What you see in TFCFM’s post at 18 is the “witch” test of what the “scrivener” was “really attempting to do.

    The patentee’s (and/or his patent attorney’s) intent is irrelevant. When I describe the claim as “a naked attempt to monopolize ALL methods of achieving these desired ends…,” I am describing the scope of the claim, not the intent of the claim’s drafter. It is the “everything-that-works” scope of the claim which renders it abstract and therefore ineligible.

  26. Ternary October 8, 2019 3:21 pm

    Yep. The claims require a hollow shaft (” It will be appreciated that the structural portion 300 could be formed of any appropriate material, including cardboard, plastic resins, carbon fiber, fiberglass, metal and combinations thereof.”) One may apply other materials that were not recited and that can be used to create the hollow shaft. How many materials do you want disclosed? One of ordinary skill would understand that any material that will suffice to perform the function of a propshaft will suffice. Some of them may not be able to have vibration modes suppressed. Accordingly, they are not covered by the patent claims.

    The fact that not all potential materials are recited does not render the claim ineligible as being abstract. You yourself suggested that a means-plus-function approach may be required. Anyway, that is not an eligibility issue. That is a 112 issue. Did you actually read Judge Moore’s dissent?

    The majority goes on and on about “inventive concept” referring to prior art, which is also not an eligibility issue. You invent (congratulations) an entirely new reason for ineligibility which is that the claim does not list all materials from which the shaft/liner should be made. It seems that you are really an anti-patent person, who just makes up reasons to deny inventors valuable and enforceable patents.

    When I claim a gear, a shaft, an axle, a rod, a spindle, even a motor, it is often pretty clear what the purpose is to one of ordinary skill and I am not required to exhaustively recite all materials and versions that meet requirements. Perhaps 4 or 5 would do it. And that is exactly what the ‘911 patent does. And again, that is a 112 issue.

  27. Curious October 8, 2019 4:25 pm

    Even assuming that the specification discloses SOME shaft/liner embodiments that satisfy the dampening limitations, the patentee claimed ALL combinations which do, but did not disclose all which do (including those embodiments not yet invented by anyone).
    That’s enablement.

    It is the “everything-that-works” scope of the claim which renders it abstract and therefore ineligible.
    That is an enablement issue.

    If the problem is a nail, you don’t use a screw driver. You use a hammer. Enablement issues are addressed under 35 USC 112, 1st.

    When you use a tool in a manner not intended, then you get very messy results, and 101 jurisprudence is chock full of messy results.

  28. Anon October 8, 2019 5:06 pm

    When I describe the claim as “a naked attempt to monopolize ALL methods of achieving these desired ends…,” I am describing the scope of the claim,

    The scope of the claim “hammer” includes ALL (invented and future invented) methods of achieving the end of the physical hammer.

    As I said — you just do not have the understanding of patent law and can only parrot a broken scoreboard.

  29. Anon October 9, 2019 9:37 am

    TFCFM,

    I just noticed that you misapplied a point that I provided:

    (“The patentee’s (and/or his patent attorney’s) intent is irrelevant.”)

    Your reply “moves the goalposts” as my point was NOT about the inventor’s intentions, but rather my point reflects how the Court has approached the issue.

    It is the Court’s approach that delves into your identified “irrelevancy.” Your reply spins my comment out of its context.

    I do wish that you put as much effort into understanding the nature of innovation protection as you put into crafting your spin.

  30. TFCFM October 10, 2019 10:57 am

    TFCFM: “Even assuming that the specification discloses SOME shaft/liner embodiments that satisfy the dampening limitations, the patentee claimed ALL combinations which do, but did not disclose all which do (including those embodiments not yet invented by anyone).”

    Curious: “That’s enablement.

    TFCFM: “It is the “everything-that-works” scope of the claim which renders it abstract and therefore ineligible.”

    Curious: “That is an enablement issue.

    More correctly, each of these issues is BOTH an enablement issue and an eligibility issue. A claim to “everything that works” is both abstract (in that it merely claims the abstract idea of all current-and-future embodiments) and non-enabled (to the extent if fails to teach how to make-and-use any embodiment encompassed by the claim).

    Each is also a written description issue {haven’t described everything-that-works} and likely an anticipation and/or obviousness issue, too. The fact that there may be multiple valid reasons for rejecting a claim does not preclude a court from applying ANY of the valid reasons. Here, the abstractness of the claims is apparent on their face.

    Unlike many written description, enablement, and prior-art-based invalidity grounds which might equally have been raised, no fact questions precluded the court from deciding non-eligibility on summary judgment.

  31. Paul Johnson October 10, 2019 2:43 pm

    TFCFM:
    As I posted right before you, “you can use the Alice/Mayo test to invalidate any process claim”. Every process claim directed to a method of making something can be invalidated just by reducing it to its reliance on a law of nature, such as one of Newton’s laws, Maxwell’s laws, the Schrödinger equation, etc. The test is inherently flawed–and the way the (liberal arts graduate) judges have been applying it adds another layer of flaws.

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