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[ECmax]

Would one run into trouble (say, on the grounds of teaching, or usefulness, or anything else) trying to patent an inventive concept that cannot currently be practiced because it relies on technology that does not yet exist? For instance, could one patent a vehicle utilizing a warp drive, even though warp drives haven't yet been invented? Or for a more realistic example, let's roll the clock back a few years and imagine that I have come up with the inventive concept related to windshield wipers. Could I claim -- and have a patent issued for -- something like the following, even though there is not at the time any known means of measuring the amount of precipitation falling on the windshield:

"A method for controlling a windshield wiper, the method comprising determining the desired speed and/or frequency of operation of said wiper as a function of the amount of precipitation falling on the windshield..."
--or--
"A windshield wiping apparatus comprising a piece of wiping material; a mechanism for moving said piece of wiping material across a windshield; and a controller which determines the speed and/or frequency of operation of said mechanism as a function of the amount of precipitation falling on the windshield..."

[khazzah]

Would one run into trouble (say, on the grounds of teaching, or usefulness, or anything else) trying to patent an inventive concept that cannot currently be practiced because it relies on technology that does not yet exist?

Absolutely. An invention that "cannot be practiced" does not comply with 112 1st Enablement ("make or use the invention"). This sort of fact pattern probably runs afoul of the 112 1st Written Description ("possession") requirement. An outlandish ideas like warp drives are almost certain to draw a 101 "inoperability" rejection.

"A windshield wiping apparatus comprising a piece of wiping material; a mechanism for moving said piece of wiping material across a windshield; and a controller which determines the speed and/or frequency of operation of said mechanism as a function of the amount of precipitation falling on the windshield..."

That particular claim may have a problem with 112 2nd indefiniteness too. The "controller" element may be found to invoke 112P6 and if so, the claim will be indefinite because the spec doesn't disclose a structure which accomplishes this function.

 

[ECmax]

Would one run into trouble (say, on the grounds of teaching, or usefulness, or anything else) trying to patent an inventive concept that cannot currently be practiced because it relies on technology that does not yet exist?

Absolutely. An invention that "cannot be practiced" does not comply with 112 1st Enablement ("make or use the invention"). This sort of fact pattern probably runs afoul of the 112 1st Written Description ("possession") requirement.

OK, so even though my inventive concept is limited to the automatic adjustment of the wiper speed based on the conditions (the amount of rain falling), if there's no existing means of providing a measure of those conditions to my adjuster, my patent application is dead. So let's take it a step further and say that I come up with a concept for some very rudimentary method of measuring the conditions, but I'm not really interested in patenting it (maybe because it's too expensive or unwieldy or unreliable ever to be practical). I assume this concept would be sufficient to comply with the enablement and possession requirements for my "automatic wiper speed adjuster" patent, right? If so, how would I incorporate the existence of this measurement concept into the application? I don't think I would want to include any aspects of it in the claims (since I really want my patent to address the speed adjustment, irrespective of the measurement method), so would I just discuss it in the description, or what?

[JimIvey]

so would I just discuss it in the description, or what?

Yes, in enough detail that the ordinary artisan in the relevant technology/ies could make and use your claimed invention.

I assume your claim is going to recite some sort of measurement of an amount of rain falling, but I understand that you'd want to avoid the details of your system of measurement in the claims.  Ordinarily, enabling just one embodiment is enough to satisfy 112.  And, it is as far as enablement goes.  However, there is authority out there, primarily in the chemical arts, that says that failure to narrow your claim to the embodiments you've enabled (within some unfathomable, amorphous, vague range of reasonableness) runs afoul of the written description requirement of Section 112.

I'm not sure this written description requirement has ever been applied in mechanical or electrical arts.  I hope that I would understand the issue better if I were more skilled in a chemical practice.  I honestly have no idea how the issue is applied in my arts, i.e., as to how to determine which embodiments must be enabled to meet the written description requirement.

Regards.

[khazzah]

I come up with a concept for some very rudimentary method of measuring the conditions, but I'm not really interested in patenting it (maybe because it's too expensive or unwieldy or unreliable ever to be practical). I assume this concept would be sufficient to comply with the enablement and possession requirements for my "automatic wiper speed adjuster" patent, right? If so, how would I incorporate the existence of this measurement concept into the application? I don't think I would want to include any aspects of it in the claims (since I really want my patent to address the speed adjustment, irrespective of the measurement method), so would I just discuss it in the description, or what?

Before answering, I need you to clarify something.

Your original hypo stipulated that no known method of measuring rainfall existed. I said: Then you've got problems with 112 1st.

Your modified hypo says that you know of a single method of measuring rainfall. In your modified hypo, is your rudimentary method the only known method, kinda like the first attempt at a warp drive? Or is your rudimentary method the only one you know of, but there are probably other methods?

My answer turns on this distinction.

[Isaac]

I honestly have no idea how the issue is applied in my arts, i.e., as to how to determine which embodiments must be enabled to meet the written description requirement.

The most famous software arts example is LizardTech v. Earth Resource Mapping

http://scholar.google.com/scholar_case?case=14230375137700298214&hl=en&as_sdt=2&as_vis=1&oi=scholarr

[JimIvey]

I honestly have no idea how the issue is applied in my arts, i.e., as to how to determine which embodiments must be enabled to meet the written description requirement.

The most famous software arts example is LizardTech v. Earth Resource Mapping

http://scholar.google.com/scholar_case?case=14230375137700298214&hl=en&as_sdt=2&as_vis=1&oi=scholarr

Thanks, but it doesn't help.  It just says that some embodiments must be enabled for the written description requirement even if those embodiments are not required for enablement.  It doesn't say which embodiments are needed for the written description requirement or provide any guidance as to how one would identify such embodiments -- aside from perhaps that the applicant enabled "only one" embodiment (how many is enough?).  At least I didn't see any guidance; maybe others have found the key in paragraphs I might have skimmed a bit quickly.

It's no secret here that I disagree with the whole written description requirement, though I admit that current authority has established such a requirement -- I just happen to think that authority is contrary to the plain meaning of Section 112.  The reading of Section 112 to divorce the written description from the qualifying phrase that it must be enabling is a tortured reading of the statute.  In addition, the standard is completely amorphous and impossible to follow, and I see no policy served by that interpretation.

As far as I can tell, the only take away is "don't claim too broadly" (without "too broadly" being defined in any useful way).

Regards.

[Isaac]

Thanks, but it doesn't help.  It just says that some embodiments must be enabled for the written description requirement even if those embodiments are not required for enablement.  It doesn't say which embodiments are needed for the written description requirement or provide any guidance as to how one would identify such embodiments -- aside from perhaps that the applicant enabled "only one" embodiment (how many is enough?).

I agree that the case does not provide guidance on how many embodiments would be needed.   A single embodiment would have sufficed here if it had been the right one.  Alternatively, we could say that the single described embodiment would have been fine absent the patentee's attempts to stretch the claims beyond the scope possessed by the inventor at the time of filing.  I know you the "possession" stuff does not sit well with you.

During the claim construction phase of the litigation, Lizardtech successfully argued for a claim interpretation for claim 21 that encompassed Earth Resource Mapping product.  Unfortunately the specification did not provide written description support for claim 21 using the interpretation proposed by Lizardtech. 

Claim 21 omitted steps recited in the other independent claims.  The specification did not describe any way to calculate a seamless DWT without the omitted steps.   Yet the patentee had argued that claim 21 recited a method that produced a seamless DWT.  See section III of the opinion.

[ECmax]

Your modified hypo says that you know of a single method of measuring rainfall. In your modified hypo, is your rudimentary method the only known method, kinda like the first attempt at a warp drive? Or is your rudimentary method the only one you know of, but there are probably other methods?

My answer turns on this distinction.

I was thinking in terms of the former; i.e., it is the only known method, a first attempt. But now you've got me curious as to how your answer would differ in the second case...

[JimIvey]

During the claim construction phase of the litigation, Lizardtech successfully argued for a claim interpretation for claim 21 that encompassed Earth Resource Mapping product.  Unfortunately the specification did not provide written description support for claim 21 using the interpretation proposed by Lizardtech. 

Yeah, but the spec enabled claim 21.  The court just deemed that more embodiments were required without saying why.

Claim 21 omitted steps recited in the other independent claims.  The specification did not describe any way to calculate a seamless DWT without the omitted steps.   Yet the patentee had argued that claim 21 recited a method that produced a seamless DWT.  See section III of the opinion.

Yeah, I read all that.  The spec described how to perform seamless DWT.  The court didn't like that the spec didn't describe enough different ways to do it.  So, the court decided that claims not limited to the particular embodiment(s) described in the spec were invalid.  Yet, the law is clear that the spec isn't required to enable all embodiments of the claims.

The only take-away is that the spec isn't required to enable all embodiments of the claims, except when it is.  And, when is that?  No one seems to know. 

We've been all over this issue and my thoughts on the matter are thoroughly discussed in another topic in here somewhere.

Regards.

[Isaac]

The only take-away is that the spec isn't required to enable all embodiments of the claims, except when it is.  And, when is that?  No one seems to know. 

Jim, I think the lesson is quite different than that.  In fact, the spec is always required to enable every claim unless the claim is self enabling.  Claim 21, as construed during litigation was not self enabling.

What the opinion says is that the inventor had no clue at the time of filing how to implement seamless DWT from image tiles without:

1) maintaining updated sums of said DWT coefficients.
2) periodically compressing said sums

The spec did not describe any such thing (written description).  Further, one of ordinary skill in the art at the time of filing could not have accomplished the task using only the patentees specification (enablement). 

"After reading the patent, a person of skill in the art would not understand how to make a seamless DWT generically and would not understand LizardTech to have invented a method for making a seamless DWT, except by "maintaining updating sums of DWT coefficients."

Claim 21 omitted the above steps and simply leaving them out would not generate a seamless DWT.  That probably wouldn't have been a problem if the claims hadn't been applied to an infringer who calculated a seamless DWT using a completely different principle than that described in LizardTech's patent.

I agree that during prosecution, it would not be evident that something was missing from the spec.  Even if the applicant had disclosed a dozen embodiments, if none of the disclosed embodiments indicated how you might omit maintaining updated sums, the patentee would have faced the same problem.  However, it is much easier to see the short comings of the specification at the time of enforcement. 

IMO the lesson is don't attempt to stretch the patent beyond what the inventor knew how to make at the time of filing.

[JimIvey]

What the opinion says is that the inventor had no clue at the time of filing how to implement seamless DWT from image tiles without:

1) maintaining updated sums of said DWT coefficients.
2) periodically compressing said sums

The spec did not describe any such thing (written description).  Further, one of ordinary skill in the art at the time of filing could not have accomplished the task using only the patentees specification (enablement). 

Precisely.  But Claim 21 didn't recite "in the absence of" anything.  It was deemed to cover the same embodiment as Claim 1 along with other embodiments.  So, at least one embodiment was described and enabled, just not all the embodiments.

So, if I claim a car with 4 or more wheels, does it matter that I have no idea how to make a functioning automobile with 37 wheels?  Does it matter that the ordinary artisan couldn't make a properly functioning car with 37 wheels?  Note that the claim would literally cover an infinite number of wheel counts.

Accordingly, each and every claim that recites any number of anything "or more" (or alternative claiming such as "at least" and "a plurality of") should be invalid for failing to provide a written description of the claimed subject matter.

But wait, that's not what happens.  Those claims are perfectly legit despite having a breadth that goes way beyond the disclosure.

In LizardTech, the spec enabled and described one embodiment of the seamless DWT of Claim 21 but did not enable or describe other embodiments.  It's okay to do that in some cases ("four or more wheels), but not okay in others (see LizardTech).

I just have no idea how to guess which alternative embodiments must be described and which are okay to omit.

I'll end with what I consider to be two huge considerations for this silly requirement based on a tortured reading of the statute.

First, the penalty is too harsh for an otherwise legitimate claim.  A much better remedy is the reverse doctrine of equivalents where stretched coverage is lopped off, leaving the heart of the claim in tact.

Second, I think it's bad policy to punish inventors if their claim covers things they didn't know it covers.  If I invented the flex capacitor but had no idea it could be used for time travel, do you take my patent away?  Why?  I gave the world the flex capacitor and all its benefits, even if I didn't fully appreciate all of those benefits.

Regards.

[ECmax]

I assume your claim is going to recite some sort of measurement of an amount of rain falling, but I understand that you'd want to avoid the details of your system of measurement in the claims.  Ordinarily, enabling just one embodiment is enough to satisfy 112.  And, it is as far as enablement goes. 

I had in mind a claim that would recite the use of a measurement but not the means for making the measurement, such as this:

"A method for controlling a windshield wiper, the method comprising determining the desired speed and/or frequency of operation of said wiper as a function of a measurement of precipitation falling on the windshield."

with the idea being that the measurement would be provided by a "magic genie", i.e., by a  measurement device or method outside the scope of the invention. What I wasn't sure of before starting this thread is whether a "genie" must be known (and/or shown) to exist in order to obtain the patent; based on the comments here, I see that the genie does need to exist in at least one form.

However, there is authority out there, primarily in the chemical arts, that says that failure to narrow your claim to the embodiments you've enabled (within some unfathomable, amorphous, vague range of reasonableness) runs afoul of the written description requirement of Section 112.

Since my hypothetical claim deals with how the measurement is used and not with how it is obtained, would the measurement device or method be considered to be part of the embodiment? If not, it seems this shouldn't be an issue. It would be analogous to inventing a new way of processing a TV signal, regardless of whether that signal came from an antenna, a cable box, or a PC. Even if a new signal source were later developed, applying the patented signal-processing technique to the signal from that new source would still infringe, right?

[Isaac]

So, if I claim a car with 4 or more wheels, does it matter that I have no idea how to make a functioning automobile with 37 wheels?  Does it matter that the ordinary artisan couldn't make a properly functioning car with 37 wheels?  Note that the claim would literally cover an infinite number of wheel counts.

Anyone could add wheels to a car.   We've all seen 18 wheels on a vehicle and the vehicle does continue to work with one flat wheel.  The example is making my head hurt!!   I d

Let's say that the disclosure of a patent described how to catch and juggle 4 balls tossed   simultaneously at a juggler.   Let's also suggest that it was not obvious from the spec how to catch and juggle 37 simultaneously thrown balls.   

Somebody later figures out the process of juggling the 37 tossed balls.   The method is completely different from the method of catching and juggling 4 balls.  Still the original patent has a broad claim that covers juggling any number of balls.

Is the infinite claim enabled?  I really don't think so, and the problem isn't the fact that there is only one embodiment in the patent.  The problem is that there is no evidence that the patentee had any clue how to juggle 37 balls.

I agree that the penalty is harsh.  But I've never seen a case where someone simply made up a fictious invention that was within the scope of the claim and argued that the spec did not enable or describe the fictious embodiment.  The test embodiment is always the defendant's product, and the claim construction has always been the one argued by the patentee in order to cover the defendant's product. 

[JimIvey]

Anyone could add wheels to a car.   We've all seen 18 wheels on a vehicle and the vehicle does continue to work with one flat wheel.  The example is making my head hurt!!   I d

I haven't seen an 18-wheel car.  I've seen 10-wheel truck pulling trailers with 8 wheels to all add up to 18 wheels.  I don't think it's obvious how to make a car with 37 wheels track and steer properly.

But every claim that recites any number "or more" covers an embodiment of a ridiculously large number -- such as a car with 3,432,567,001 wheels.

The problem is that there is no evidence that the patentee had any clue how to juggle 37 balls.

Same with just about every "or more" claim.

And, of course, if patents only covered precisely what was directly enabled or obvious in view of what was directly enabled, there would be no such thing as blocking patents.

I agree that the penalty is harsh.  But I've never seen a case where someone simply made up a fictious invention that was within the scope of the claim and argued that the spec did not enable or describe the fictious embodiment.  The test embodiment is always the defendant's product, and the claim construction has always been the one argued by the patentee in order to cover the defendant's product. 

I believe it's pretty clear that enablement of the accused device/method is not required for validity.

Evaluation of written description in the context of the accused is all the more reason to use the reverse doctrine of equivalents rather than invalidity.  A claim is either valid or invalid independent of the accused product/method.  The argument always appears to be that the accused shouldn't infringe because it represents a significant departure from the essence of the claimed invention -- that's a fairly precise description of the way the reverse doctrine of equivalents works.  However, this reasoning walks you right up to the reverse doctrine of equivalents then he decisions just jump straight over to written descriptions.

I think you're suggesting that an infringing accused that's non-obvious in view of the spec is evidence of invalidity for lack of a written description.  There is some authority (one concurring opinion I've read long ago and a paper I wrote back in law school among it) that there is a relationship between obviousness and the doctrine of equivalents.  Accordingly, non-infringement for non-obviousness suggests RDoE to met.

I suspect the answer is in the pleadings.  If the same logic that leads to a narrow finding of non-infringement can also lead to invalidity of the claim(s), why plead reverse doctrine of equivalents?  Plus, I imagine the factual showing required to show no enablement of the accused device is much easier than that for the RDoE.  Without a pleading of non-infringement by RDoE, the court can't really hold that.

Regards.