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[Isaac]

• wherein an address field in the packet is an Internet Protocol address

Does that only read on IP (as IP is understood in plain English)? Or does it read any any address in use with any protocol associated with the Internet?

I don't believe so.  The capitalization does convey meaning, and does distinguish Internet Protocol from some protocols used on the Internet.

[smgsmc]

Lot’s of good stuff here.  I don’t have time to reference individual quotes from specific posters.  But here are some key points.

(a) Internet vs. Intranet.  If you’re strictly concerned about a network protocol, it’s irrelevant whether IP is implemented on the Internet or an intranet.  Internet Protocol does not imply that it refers to the Internet.  It's just the name of the protocol (talking just network layer protocol here as in the original post).  Most of the time I just use “data network”, or “packet data network” if I need to distinguish between “circuit-switched” and “packet-switched”.  The distinction between Internet vs. intranet will often arise in applications on secure access and firewalls.  Most of the time, I just use “a first domain” and “a second domain” and  access permissions between them.  Why reference the nebulous “Internet” if you don’t have to?

(b) OSI Layers.  There’s a classic text by Tannenbaum on computer networks.  In one edition, he declared the OSI model to be a failure.  One of the most common architectures in use is TCP (or UDP) over IP over Ethernet.  This does not map directly into the OSI model.  The Ethernet MAC layer is sometimes referred to as layer 2.5, whatever that means.  And I’ve yet to come across practical instances of layer 5 and layer 6.

(c) Standards and Quasi-Standards.  If you state that the Internet Protocol requires no further clarification, then it’s really because you are implicitly falling back on a reference to a standard or quasi-standard such as an RFC.  This also holds true for FTP, HTTP, SIP, Ethernet.  You then run into the tricky bind of unnecessarily limiting yourself to a particular standard (especially when a standard is abandoned and replaced by another one).  If an Examiner issues a 112 because “IP” is indefinite for lack of written description, are you going to respond that IP has a well-known dictionary (=RFC in this case) definition? 

(d)  As usual, the context is critical. 

What if the prior art is IPv4, and the invention is IPv6?  What is the (or an) IP address?  Well, for IPv4 it is a 32-bit address.  The well known problem is that there aren’t enough addresses to go around, so one feature of IPv6 is to expand the address space to 128 bits.  Do you want your claims to cover other hypo network routing protocols that use an n-bit address space?

Similarly, what is Ethernet?  Is Ethernet well-defined outside of IEEE 802?  It has evolved from 802.0X to 802.11X.  Are you interested in the physical layer aspects (thicknet vs thinnet vs twisted pair vs wireless)?  If the invention is Ethernet transport over a new media (e.g., free-space optics), do you want your claims to cover other hypo protocols over new physical media?  Are you interested in multiple access and collision detection?  If the invention is an improved method for reducing the probability of collisions on second and subsequent re-transmission attempts, do you want your claims to cover other hypo non-802 MAC layer protocols that use multiple access and collision detection? 

Added:  There are at least two file transfer protocols, FTP and TFTP; don't know if there are others.  So, again, you need to be careful about what "file transfer protocol" refers to.  What aspects are the claims actually using? 

(e)  Even with "North Pole" the situation isn't all that straightforward.  There is a "geographical North Pole" and a "magnetic North Pole".  Furthermore, the magnetic North Pole is not fixed relative to the geographical North Pole.  So, we actually have a plurality of magnetic North Poles as a function of time.  If my invention concerns a correction factor for navigation instruments, I would need to maintain this distinction.  For that matter, I think the geographical North Pole varies with time relative to some celestial reference frame, but the details are too hazy for me now.

[JimIvey]

(d)  As usual, the context is critical. 

What if the prior art is IPv4, and the invention is IPv6?  What is the (or an) IP address? 

First, if the prior art teaches using an IPv4 address and our point of novelty is using an IPv6 address instead, we have serious obviousness problems.  Regardless, I wouldn't recite "an IP address" in that context.

(e)  Even with "North Pole" the situation isn't all that straightforward.  There is a "geographical North Pole" and a "magnetic North Pole". 

Excellent point.  As a (non-current) pilot, I should have caught that.

Regards.

[Isaac]

(e)  Even with "North Pole" the situation isn't all that straightforward.  There is a "geographical North Pole" and a "magnetic North Pole".  Furthermore, the magnetic North Pole is not fixed relative to the geographical North Pole.

So if you saw the term earth's "North Pole", you believe that it would not be clear that the geographic north pole was meant?   Even if that were true, you would not clarify what was meant by using an indefinite article.  You would instead add an adjective or two.

this distinction.  For that matter, I think the geographical North Pole varies with time relative to some celestial reference frame, but the details are too hazy for me now.

No, the location of the north pole does not change.  What changes is the direction towards which the geographic north pole points.  So the pole star or constellation changes, but the north pole does not wander about the earth.

With regard to the north magnetic pole, isn't there only one of those at a given time?  What would its wandering have to do with whether there was antecedent basis.

[JimIvey]

So if you saw the term earth's "North Pole", you believe that it would not be clear that the geographic north pole was meant?   

If an examiner could make a rejection by interpreting "the earth's North Pole" one way or the other or ambiguous, I have no doubt that the examiner would do so.

Regards.

[JustAnotherExaminer]

Us networking guys prefer you don't use "Internet" anywhere in your claim. It's vague, indefinite, and more of an abstract concept than anything else. Same with network layers.

And unless you're modifying a specific standardized protocol in a non-obvious manner, there's no reason to ever have a specific protocol name in your claims either.  Just say "a communication protocol", because it's obvious to use any of them.

Also, a "file transfer protocol" is any protocol. Because a file is "an arbitrary block of information", and since every protocol transfers arbitrary blocks of information, they're all file transfer protocols.

[Isaac]

Us networking guys prefer you don't use "Internet" anywhere in your claim. It's vague, indefinite, and more of an abstract concept than anything else. Same with network layers.

Have you ever rejected a claim as indefinite for referring to an OSI networking layer?  Were you able to sustain the rejection when faced with a stubborn practitioner?  I used to examine in the network area and I find these two statements to be a bit suspect.   I would not recommend using the word "Internet" as a thing in a claim, but as an adjectively kind of word to identify protocols (like TCP/IP) I think Internet is just fine.

And unless you're modifying a specific standardized protocol in a non-obvious manner, there's no reason to ever have a specific protocol name in your claims either.  Just say "a communication protocol", because it's obvious to use any of them.

I disagree that there is no reason.  Perhaps specifying a specific protocol may not distinguish over the prior art, but it can clarify the meaning of a broader claim from which the claim with the seeming useless limitation depends.

Also, a "file transfer protocol" is any protocol. Because a file is "an arbitrary block of information", and since every protocol transfers arbitrary blocks of information, they're all file transfer protocols.

I suppose you'd say this even if the spec made it clear that file transfer protocol meant "ftp" according to blah, (i.e., RFC 959 or whatever?)

[khazzah]

And unless you're modifying a specific standardized protocol in a non-obvious manner, there's no reason to ever have a specific protocol name in your claims either.  Just say "a communication protocol", because it's obvious to use any of them.

I disagree that there is no reason.  Perhaps specifying a specific protocol may not distinguish over the prior art, but it can clarify the meaning of a broader claim from which the claim with the seeming useless limitation depends.
[/quote]

Isaac makes a great point. We prosecutors are concerned with more than just getting a patent -- we think about how claims will be construed in litigation. So these sorts of limitations may seem pointless to an Examiner, but nonetheless have value to patentees.

[khazzah]

Us networking guys prefer you don't use "Internet" anywhere in your claim. It's vague, indefinite, and more of an abstract concept than anything else. Same with network layers.

And as an Examiner, you don't like "abstract concepts"?

Is a "file system" an abstract concept, so that you're bothered when I put it in a claim? What about a "protocol"? Is that an abstract concept that has no place in a claim?

Note that I'm not talking about literally claiming a protocol ("A protocol comprising") or a file system ("A file system comprising"). I'm talking about reciting protocol or file system within a claim.

Us networking guys prefer you don't use "Internet" anywhere in your claim. It's vague, indefinite ...

Apparently you networking guys don't "prefer" enough to give a 112 2nd rejection. Because there are tons of issued patents that include "internet" in the claims. Though in most of the ones I found, "internet" was in a dependent claim. Perhaps dependents don't get the same sort of scrutiny from Examiners.

[JimIvey]

Us networking guys prefer you don't use "Internet" anywhere in your claim. It's vague, indefinite, and more of an abstract concept than anything else. Same with network layers.

And as an Examiner, you don't like "abstract concepts"?

Is a "file system" an abstract concept, so that you're bothered when I put it in a claim? What about a "protocol"? Is that an abstract concept that has no place in a claim?

Note that I'm not talking about literally claiming a protocol ("A protocol comprising") or a file system ("A file system comprising"). I'm talking about reciting protocol or file system within a claim.

Us networking guys prefer you don't use "Internet" anywhere in your claim. It's vague, indefinite ...

Apparently you networking guys don't "prefer" enough to give a 112 2nd rejection. Because there are tons of issued patents that include "internet" in the claims. Though in most of the ones I found, "internet" was in a dependent claim. Perhaps dependents don't get the same sort of scrutiny from Examiners.

FWIW, this is the sort of "preference" I spend a lot of time traversing.  There seems to be a pervasive belief in this area in the PTO that all things are vague and obvious.

"Internet" has a well-known, well accepted definition in the networking arts (check any technical dictionary).  It's not vague or indefinite at all and is no more abstract than any other term in a claim.

Regards.

[Isaac]

FWIW, this is the sort of "preference" I spend a lot of time traversing.  There seems to be a pervasive belief in this area in the PTO that all things are vague and obvious.

I have a new appreciation for your comment back in reply #19.

[JustAnotherExaminer]

Us networking guys prefer you don't use "Internet" anywhere in your claim. It's vague, indefinite, and more of an abstract concept than anything else. Same with network layers.

And as an Examiner, you don't like "abstract concepts"?

Is a "file system" an abstract concept, so that you're bothered when I put it in a claim? What about a "protocol"? Is that an abstract concept that has no place in a claim?

Note that I'm not talking about literally claiming a protocol ("A protocol comprising") or a file system ("A file system comprising"). I'm talking about reciting protocol or file system within a claim.

Us networking guys prefer you don't use "Internet" anywhere in your claim. It's vague, indefinite ...

Apparently you networking guys don't "prefer" enough to give a 112 2nd rejection. Because there are tons of issued patents that include "internet" in the claims. Though in most of the ones I found, "internet" was in a dependent claim. Perhaps dependents don't get the same sort of scrutiny from Examiners.

Here is the difference:
"protocol" and "file system" are generic terms that can be reasonably interpreted with clear metes and bounds.

"Internet" and any networking layer, say, "the transport layer" can not be reasonably interpreted with clear metes and bounds.
There is no list of networks that make up the Internet.  There is no way for me to prove any network or device is part of or connected to "the Internet". There is no way for you to prove anything is/isn't part of or connected to "the Internet".  If you claim "wherein the device is connected to the Internet", short of finding a similarly abstract specification that says something identical, how do I prove that my prior art's device connected to 72 different WANs in figure 3 is connected to "the Internet"?

The closest reasonable use/interpretation would be using "an internet", and the examiner interpreting it as "any two networks connected together".

[JimIvey]

The closest reasonable use/interpretation would be using "an internet", and the examiner interpreting it as "any two networks connected together".

I'd say that's fair.  Of course, I haven't taken the time to look up with technical dictionaries say about that, but it's not inconsistent with the term as I understand it.

If I had a case in which more than that was important (e.g., specifically relying on aspects of TCP/IP or UDP/IP), I'd do my best to make that clear in the spec and claims.

Regards.

[smgsmc]

Here is the difference:
"protocol" and "file system" are generic terms that can be reasonably interpreted with clear metes and bounds.

"Internet" and any networking layer, say, "the transport layer" can not be reasonably interpreted with clear metes and bounds.
There is no list of networks that make up the Internet.  There is no way for me to prove any network or device is part of or connected to "the Internet". There is no way for you to prove anything is/isn't part of or connected to "the Internet".  If you claim "wherein the device is connected to the Internet", short of finding a similarly abstract specification that says something identical, how do I prove that my prior art's device connected to 72 different WANs in figure 3 is connected to "the Internet"?

The closest reasonable use/interpretation would be using "an internet", and the examiner interpreting it as "any two networks connected together".

With respect to "connected to the Internet" I tend to agree with you.  But I think "Internet" in that context is moot.  I don't see any good reason, either from a patentability or an infringement perspective, to use "Internet" as opposed to "a communications network" (or some other similar term) in a claim, and I do see good reasons not to use "Internet" in an independent claim.  I often see dependent claims of the form:  "The system of claim 1, wherein the data network is the Internet."  I really don't understand the purpose of those.

I do disagree with "any networking layer, say, "the transport layer" can not be reasonably interpreted with clear metes and bounds."  Within the context of the OSI model (and other data network architectures), "the transport layer" is well-defined.  As a hypo, let's say the prior art was transport layer/network layer = UDP/IP  My "invention" could be transport layer/network layer = TCP/IP (assuming TCP/IP didn't exist yet and putting aside any 103 issues).  Assuming the spec lays out a proper discussion of OSI or standards such as RFCs, use of "a network layer" and "a transport layer" in claims should be free from 112 rejections.

[bald & chained]

I do disagree with "any networking layer, say, "the transport layer" can not be reasonably interpreted with clear metes and bounds."  Within the context of the OSI model (and other data network architectures), "the transport layer" is well-defined.  As a hypo, let's say the prior art was transport layer/network layer = UDP/IP  My "invention" could be transport layer/network layer = TCP/IP (assuming TCP/IP didn't exist yet and putting aside any 103 issues).  Assuming the spec lays out a proper discussion of OSI or standards such as RFCs, use of "a network layer" and "a transport layer" in claims should be free from 112 rejections.

I'd be very cautious about tying your claims to exact OSI layers because of the future infringement issues.  In the networking industry, OSI model is often violated and you have lots of protocols which span multiple layers or reside somewhere in-between.

EDIT: I see this was already mentioned above.... I need to read the whole thread before I post