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I have an Invention ... Now What?
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   Re: CIP applications
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   Author  Topic: Re: CIP applications  (Read 3528 times)
Anon
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Re: CIP applications
« Reply #30 on: Jul 16th, 2006, 7:43pm »
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on Jul 16th, 2006, 1:33am, Stedham Ronger wrote:

From your posts I do not think Anon knows what he is talking about.

Mr. Ronger, do you agree with the below as stated by Mr. Ivey?
 
on Jul 11th, 2006, 3:05pm, JimIvey wrote:
I don't understand how you can fail to support the broad genus but succeed in supporting the specific species.  The species would require all the support required of the broader genus and support for the distinctive characteristics of the species, those that differentiate the species from other species of the genus.

 
If you don't agree with Mr. Ivey, then what is your position on this topic?
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JimIvey
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Re: CIP applications
« Reply #31 on: Jul 17th, 2006, 12:54pm »
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on Jul 13th, 2006, 5:40am, Isaac wrote:
It can be argued that the CAFC's recent decisions depart from the principle that in the predictable arts such as electronics, a single species generally provides adequate basis to support generic claims.

Ah, that may be the problem.  The bulk of my practice has been in what one might call the predictable arts.  If I get too far afield from digital logic, I start feeling like I'm swimming in the deep end without my floaties.  Not really, but I liked the analogy given the weather here today.
 
I still have some concern about all this.  Underneath all the neat and clean digital logic is some esoteric analog mysterious stuff going on -- stuff that might not be considered "predictable."  For example, consider that a tri-state transistor is invented and a whole new era of trinary logic is born.  Not many computer-related claims limit themselves to binary logic and I doubt any computer-related applications enable doing anything using trinary logic (at the chip level, anyway).  So, invalid for lack of enablement?  Seems harsh.
 
I suspect the answer comes down to one of two "outs" for this situation.  First, perhaps conversion from binary logic to trinary logic is straightforward once trinary logic chips are available.  Second, perhaps the underlying machine logic is just too far from the essence of the invention to be "essential" for inclusion in the claims.
 
This latter point echos something I noted years ago in law school while writing a paper on the doctrine of equivalents.  While there is no protectible heart, gist, or essence of the invention, you had better have one in mind when writing the application.  The essence of the invention influences a lot of things and provides a good, strong structure around which to build your application.  In a related vein, litigators like to have a single "Wow!" statement of the invention.  That's easier to do if you have a good sense for the essence of the invention.
 
Regards.
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James D. Ivey
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Isaac
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Re: CIP applications
« Reply #32 on: Jul 17th, 2006, 1:19pm »
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on Jul 17th, 2006, 12:54pm, JimIvey wrote:

Ah, that may be the problem.  The bulk of my practice has been in what one might call the predictable arts.  If I get too far afield from digital logic, I start feeling like I'm swimming in the deep end without my floaties.  Not really, but I liked the analogy given the weather here today.
 
I still have some concern about all this.  Underneath all the neat and clean digital logic is some esoteric analog mysterious stuff going on -- stuff that might not be considered "predictable."  For example, consider that a tri-state transistor is invented and a whole new era of trinary logic is born.  Not many computer-related claims limit themselves to binary logic and I doubt any computer-related applications enable doing anything using trinary logic (at the chip level, anyway).  So, invalid for lack of enablement?  Seems harsh.

 
That would be harsh, but I don't think think just introducing trinary logic creates the problem we're discussing.   The harsh result require that trinary logic allowed skipping some step or omitting some feature that was not recited in a claim but was required for binary logic.  
 
I think the CAFC is trying to distinguish between a "sketchy" claim written to state only the elements required to find infringement of an invention and a claim drawn to more invention than the applicant possessed at the time of filing.   I don't know if such an distinction is possible.
 
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Isaac
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