Indefiniteness and protocols

[mbrooke]

An Examiner has issued a 112(2) rejection, alleging that various terms, such as IP protocol, VoIP, etc., are indefinite, as the protocols can change.  I understand his argument, but have also seen numerous patents the use these terms in the claims.  I've spoken with a number of my colleagues, none of whom have ever seen this basis for a 112(2).  Does anyone have a good idea how to respond to the examiner's rejection?

Thanks,

Mike

[Wiscagent]

An Examiner has issued a 112(2) rejection, alleging that various terms, such as IP protocol, VoIP, etc., are indefinite, as the protocols can change.

A proper obviousness rejection does not state that something is obvious without indicating to whom it is obvious. 

Similarly, a proper indefiniteness rejection should (at least implicitly) state that the claim is indefinite to a person of ordinary skill in the art.  Whether it is indefinite to the examiner is irrelevant.  So one approach is to show that the claim is not indefinite to this mythically skilled artisan.

Does the specification define or provide examples of the protocols?  If it does, that would be one basis to challenge the rejection.

Are there prior art references, recognized as industry standards, which clearly define the protocols?  Potentially you could cite these references as showing the state of the art, and to argue against the rejections.

[JimIvey]

I think there's a difference between reciting, in a claim, "the Internet Protocol" and "an internet protocol".  Both "internet" (as distinguished from "intranet") and "protocol" are generic terms.  Even "an Internet Protocol" or "an implementation of the Internet Protocol" should be adequately definite since it covers any implementation -- past, current, or future.  Older versions don't change; they just become deprecated in favor newer versions.

As for "VoIP", I don't think that's a specific protocol or standard.  It's a generic term for any voice communications using an internet protocol.  Of course, it's best to define that in the specification, but it's probably late in the game for that in this case.

I'd spend some time digging around techie dictionaries for evidence that these terms do not specify a specific, changing, indefinite standard but rather specify a type or category of protocol that is well understood in the art.

The only way I see the Section 112 rejection could be proper is if you recite a particular protocol (i.e., by version, RFC, IEEE, etc. number) that has not yet been decided upon.  Or, if you say "the most recent implementation of the Internet Protocol" as what that covers will change over time.  In fact, that seems to be how the examiner is reading your claim element(s) -- perhaps an interpretation of "the Internet Protocol". 

I hope that helps.

[khazzah]

An Examiner has issued a 112(2) rejection, alleging that various terms, such as IP protocol, VoIP, etc., are indefinite, as the protocols can change.  I understand his argument, but have also seen numerous patents the use these terms in the claims.  I've spoken with a number of my colleagues, none of whom have ever seen this basis for a 112(2).  Does anyone have a good idea how to respond to the examiner's rejection?

I looked into this issue recently.

I think there's a difference between reciting, in a claim, "the Internet Protocol" and "an internet protocol".  Both "internet" (as distinguished from "intranet") and "protocol" are generic terms.  Even "an Internet Protocol" or "an implementation of the Internet Protocol" should be adequately definite since it covers any implementation -- past, current, or future.  Older versions don't change; they just become deprecated in favor newer versions.

As for "VoIP", I don't think that's a specific protocol or standard.  It's a generic term for any voice communications using an internet protocol.  Of course, it's best to define that in the specification, but it's probably late in the game for that in this case.

I'd spend some time digging around techie dictionaries for evidence that these terms do not specify a specific, changing, indefinite standard but rather specify a type or category of protocol that is well understood in the art.

The only way I see the Section 112 rejection could be proper is if you recite a particular protocol (i.e., by version, RFC, IEEE, etc. number) that has not yet been decided upon.  Or, if you say "the most recent implementation of the Internet Protocol" as what that covers will change over time.  In fact, that seems to be how the examiner is reading your claim element(s) -- perhaps an interpretation of "the Internet Protocol". 

I hope that helps.

The good news is that the BPAI has considered the issue of claims that refer to standards, and has generally reversed indefiniteness rejections on these grounds. See http://allthingspros.blogspot.com/2010/07/reference-standard-not-indefinite.html

I'm not suggesting you cite these BPAI decisions -- they're not precedential -- only that you look at the reasoning used by the Board and throw that back at the Examiner.

[khazzah]

Oops, my last posted got kinda screwed up. I only mean to comment on OP's question. Now I'll comment on Jim's post.

I think there's a difference between reciting, in a claim, "the Internet Protocol" and "an internet protocol". Both "internet" (as distinguished from "intranet") and "protocol" are generic terms.

Agreed. What most claim drafters probably have in mind is covering THE Internet Protocol. But because of the requirements of antecedent basis we end up saying "AN internet protocol". Which could be interpreted as ... I dunno .. any protocol that can be routed between local networks? [IP being the most well known of the these.]

Maybe the generic form is ok -- it is broader -- but I'm not sure most drafters who use "AN internet protocol" really thought about the distinction. Again, I just think most folks automatically convert between THE and AN, without realizing that sometimes you lose something in the conversion.

I hadn't thought about Jim's distinction between lower case to specify generic and initial caps to specify the standard. It work for me, but I'm not sure other folks will see the distinction.

As a minor point, I interpret "IP" pretty narrowly: Layer 3/network layer. In my mind, IP does *not* include UDP, TCP or HTTP. But that's probably because I worked with network protocols for a long time in my previous life. Others with less exposure may interpret these terms more broadly.

As for "VoIP", I don't think that's a specific protocol or standard.  It's a generic term for any voice communications using an internet protocol. 

I view VoIP as a specific family of protocols (each protocol defined by a standard), where the family definitely includes SIP, RTP and RTCP (the core VoIP protocols).

[JustAnotherExaminer]

Protocals are extremely definite.  There's case law floating around that says your claim covers the current state of the art interpretation plus all future reasonable interpretations as it would improve IF the interpretation isn't the crux of your invention.

So if you claim a transmission medium, and the IEEE definition changes in 5 years because of some new medium invented, you get the benefit of the new IEEE definition.

[JimIvey]

As for "VoIP", I don't think that's a specific protocol or standard.  It's a generic term for any voice communications using an internet protocol. 

I view VoIP as a specific family of protocols (each protocol defined by a standard), where the family definitely includes SIP, RTP and RTCP (the core VoIP protocols).

Not to pick a nit, but is that family static and closed?  Or dynamic and open?  If the latter, I'd submit that it really doesn't specify any specific protocol or standard as members can come and go.  In my view, it's the latter.

Put another way, I agree that SIP would infringe but not that SIP limits the scope in any way that changes to, or newer versions of, SIP would render the claim indefinite in any way.

Regards.

[JimIvey]

Protocals are extremely definite.  There's case law floating around that says your claim covers the current state of the art interpretation plus all future reasonable interpretations as it would improve IF the interpretation isn't the crux of your invention.

So if you claim a transmission medium, and the IEEE definition changes in 5 years because of some new medium invented, you get the benefit of the new IEEE definition.

It may be that not all examiners agree on this point.  I've seen rejections for indefiniteness for including a specific protocol (in a dependent claim, of course).  It was a long time ago, so perhaps things have changed.  However, I do see a difference of opinion about these sorts of things among examiners.

Good to get your insight, though.

Regards.

[khazzah]

I view VoIP as a specific family of protocols (each protocol defined by a standard), where the family definitely includes SIP, RTP and RTCP (the core VoIP protocols).

Not to pick a nit, but is that family static and closed?  Or dynamic and open? 

At any particular point in time, the protocol set is closed. That is, at any particular point in time a POSITA would say "VoIP includes protocols W, X, Y, and Z." I don't personally know exactly what that list includes, though I do feel strongly that the list includes SIP, RTP, and RTCP. 

The set is dynamic in that, over time, protocols may be added and deleted from the set.

The individual set members also evolve over time, e.g., revisions are made to SIP.

VoIP is definite because at any one point in time, a POSITA knows what members are in the set.

All of the above is merely my opinion as a former POSITA, and as a patent attorney who currently works with VoIP apps.

I'd say the same analysis applies to other standards families, eg, Ethernet, WiFi, DSL, MPEG, DVB.

Though I'm not saying every family of standards is definite. For a particular family, a lack of consensus among POSITAs may mean the family is indefinite.

Put another way, I agree that SIP would infringe but not that SIP limits the scope in any way that changes to, or newer versions of, SIP would render the claim indefinite in any way.

Definitely agree with your second point. I said as much above.

As for your first point [SIP would infringe] -- which version of SIP? IOW, if I file an app in 2002 and SIP is at v1, does SIPv8 infringe in 2010? Or is the meaning of the term "SIP" frozen at the time of filing?

[JimIvey]

As for your first point [SIP would infringe] -- which version of SIP? IOW, if I file an app in 2002 and SIP is at v1, does SIPv8 infringe in 2010? Or is the meaning of the term "SIP" frozen at the time of filing?

If I recite "a voice over internet protocol" in a claim, I believe that all versions of SIP infringe, past, present, and future.

At any particular point in time, the protocol set is closed. That is, at any particular point in time a POSITA would say "VoIP includes protocols W, X, Y, and Z." I don't personally know exactly what that list includes, though I do feel strongly that the list includes SIP, RTP, and RTCP. 

The set is dynamic in that, over time, protocols may be added and deleted from the set.

The individual set members also evolve over time, e.g., revisions are made to SIP.

VoIP is definite because at any one point in time, a POSITA knows what members are in the set.

I believe the same can be said for a number of other generic protocol descriptions.  Consider, for example, "a file transport protocol", "a hypertext transport protocol", "an extensible markup language", etc.  All of those "groups" have specific members now and may have additional specific members in the future and those who work with those protocols would likely be able to arrive at consensus when determining whether a given protocol/standard/language is a member.

The inquiry at enforcement won't be "list all voice over internet protocols."  It will be "the accused system uses X protocol; is X protocol a 'voice over internet protocol'?"  That's really no different than any other claim term evaluation.  However, you're right that being able to list all protocols/standards/languages that fit the description makes the term definite.  My point is that VoIP is not an exceptional case, as far as I can tell.

Regards.

[khazzah]

I believe the same can be said for a number of other generic protocol descriptions.  Consider, for example, "a file transport protocol", "a hypertext transport protocol", "an extensible markup language", etc.  All of those "groups" have specific members now and may have additional specific members in the future and those who work with those protocols would likely be able to arrive at consensus when determining whether a given protocol/standard/language is a member.

Agreed.

My point is that VoIP is not an exceptional case, as far as I can tell.

Agreed.

[khazzah]

If I recite "a voice over internet protocol" in a claim, I believe that all versions of SIP infringe, past, present, and future.

I'm inclined to agree with you. Though when researching this issue, I discovered the BPAI suggested otherwise

The Board discussed (in dicta) the effect that referring to a standard has on claim construction in Ex parte Ly:

    Even if the common definition of that term should change over time, the ordinary meaning of the term as it would have been understood by one having ordinary skill in the art at the time of the invention controls. In the same way, should the French standard of claims 5 and 17 change over time, the scope of the claims remains tied to the standard in effect at the time the application was filed. By referencing the type of copper in French Standard NF A 51-050 in the claims, the claims incorporate that standard as it existed on the effective filing date.

Now, the BPAI was referring to claim construction during prosecution, as opposed to litigation. And there are differences in claim construction in these two contexts. But I would think the Board's reasoning ("the claims incorporate that standard as it existed on the effective filing date") applies equally to either context -- if the reasoning is correct, that is.

I haven't looked into this issue any further.

[JimIvey]

Now, the BPAI was referring to claim construction during prosecution, as opposed to litigation. And there are differences in claim construction in these two contexts. But I would think the Board's reasoning ("the claims incorporate that standard as it existed on the effective filing date") applies equally to either context -- if the reasoning is correct, that is.

I suspect you're right.  I don't see how patent law could properly function otherwise.  Here's Claim 5 from Ex parte Ly.

   5. A spark erosion machining electrode wire comprising a metal core coated with a coating layer of diffused zinc alloy, wherein:

• - the core is of unalloyed copper,
• - the coating layer is of diffused copper and zinc alloy, and
• - the thickness of the coating layer of copper and zinc alloy is greater than about 10% of the diameter of the electrode wire;
• wherein the unalloyed copper constituting the core is selected from the group consisting of the following coppers, which are designated by the reference used in French standard NF A 51050: Cu-a1; Cu-a2; Cu-C1; and Cu-c2.

If the French standard changes over time, I don't see how you can have reasonable notice of what the claim covers unless you fix the standard in time at the time of effective filing (i.e., priority date for that claim).

At the same time, I don't think "a voice over internet protocol" is a standard.  I don't believe that such a phrase should be limited to those protocols considered to be "a voice over internet protocol" at the time of filing.

At the time of Festo, the example of claims reciting vacuum tubes just prior to invention of the transistor came up often.  Consider something a little different.  What if the claim in question recited "a voltage controller" and, in the spec, described vacuum tubes as being voltage controllers?  Imagine that EEs would all agree, at the time of filing, that vacuum tubes were the only known voltage controllers at the time of filing.

I think "voltage controller" should read on and cover transistors when accused devices come around a few years later and implement exactly the claimed invention but for the substitution of a known substitute for vacuum tubes.  Incidentally, I think claims reciting "vacuum tube" should sometimes cover accused devices using transistors under the doctrine of equivalents -- in fact, such a situation appears to be the poster child for the DoE.

The coverage of transistors by "voltage controller" wraps around to our recent discussion on the written description requirement.  Under that rule, any such claim that was clever enough to realize that some other type of voltage controller might be invented in the future to replace vacuum tubes in a manner that doesn't affect other aspects of the claimed invention would be invalid for failing to accurately predict what device might be invented to fill that role.

Turning now to an example that might play right into Karen's and my technical expertise, consider an application that recites, in just one element, "an internet protocol address" or "an IP address" and that was filed prior to establishment of the IPv6 standard.  I understand that IPv4 exhaustion is expected some time next year.

First, should such a claim cover accused devices/systems/methods that use IPv6?

Second, if so, should such a claim be ruled invalid for failing to contain a written description of IPv6 addresses?

Third, if "yes" to both or "no" to the first, how can anyone effectively protect technology that involves changing technologies?

Regards.

[MYK]

Turning now to an example that might play right into Karen's and my technical expertise, consider an application that recites, in just one element, "an internet protocol address" or "an IP address" and that was filed prior to establishment of the IPv6 standard.  I understand that IPv4 exhaustion is expected some time next year.

First, should such a claim cover accused devices/systems/methods that use IPv6?

Second, if so, should such a claim be ruled invalid for failing to contain a written description of IPv6 addresses?

Third, if "yes" to both or "no" to the first, how can anyone effectively protect technology that involves changing technologies?

Regards.

My opinion?
1. Yes
2. No
3. Mu
0. I thought we weren't even close to exhausting the IPv4 space -- I just read something over the weekend that said it was expected to last until around 2100.  Companies may be exhausting it by hoarding blocks of unused addresses (back in college, I thought about requesting a Class A block for myself, just for laughs -- now I wish I'd done it!), but I didn't think we were even close to having billions of (functioning) IP-enabled devices.

[JimIvey]

0. I thought we weren't even close to exhausting the IPv4 space -- I just read something over the weekend that said it was expected to last until around 2100.  Companies may be exhausting it by hoarding blocks of unused addresses (back in college, I thought about requesting a Class A block for myself, just for laughs -- now I wish I'd done it!), but I didn't think we were even close to having billions of (functioning) IP-enabled devices.

I heard this yesterday.

And, one minor point:

... I didn't think we were even close to having billions of (functioning) IP-enabled devices allocated IP addresses.

Not billions of devices (though those are probably on the way).  But billions of reservations for expected devices.

I imagine a number of people and companies are worried about exhausting their own IP addresses and tend to stock up as much as possible.  Imagine a company hoping to make "smart dust" -- things about the size of pagers that you'd throw into a shipping container to track its movement and conditions.  How many IP addresses should they reserve if each one needs its own address?

Then there are wireless data network providers that need to assign IP address to every phone, PDA, portable TV, etc.  And each one wants a giant market share.  How many IP addresses to reserve there?

I've been wondering about IPv4 exhaustion for a while, but didn't expect it so soon.  I thought we had a few more years.

Regards.