© Wayne Paul Amsbury     21 June 2002        UP: PATENTS.htm

The use of small word bites, or sound bites, or word pictures, or snippets, or blurbs, or quips, or slogans, or snapshots, or headlines, and many other forms of brief word description are a natural phenomenon. Call them word flashes. They can be useful, and they can toll a deep note of pleasurable abstraction, a fundamental tone in the human mind. They also have a negative side.

Quips or bon mots or punch lines in jokes are highly focused forms of word play that have something in common with poetry, even when they use the crude emotional punch of the salacious. They can also be cruel; they are intended to penetrate like a fencing lunge. They can also be deliberately misleading. In fact, in politics they are often deliberately both cruel and misleading. In these forms they are intended to attract attention away from a more detailed and balanced view. They can deliberately twist and slant the truth as a whole.

Since cruel jokes and political slogans are deliberately detracting and misdirecting, they manipulate the reader or listener.

In contrast, as a form of pleasurable abstraction, writing word flashes in the form of headlines for the media is surely an art form, as is the creation of catchy advertising slogans. Word flashes such as these serve their intended purpose of catching our attention, of providing focus. They are also the vehicle for remembering whatever they represent. However, they are clearly not the whole story, and there’s the rub. They are the hook of a meme — the taste of an idea that can be replicated — but they do not teach enough of the meme for it to actually be replicated.

The disconnect between the creator of a word flash and the receiver is often intended, but the motivation for it is not always so clear. Sometimes the disconnect is intended to reduce information in order to mislead or misdirect or twist the stream of thought, but it may also be benign, intending to provide analysis or insight or simply save labor for the receiver. In the Universities where I have taught, we called this lecturing.

Things that are complex and require detailed descriptions to lay out in all of their dignity need to be tagged with word flashes in order to give us some handle by which we can remember them, and a handle often serves as a way to partially analyze complexities. That is why newspaper items often start with the crux of a story in the first paragraph, then spread out the details after.

Word flashes are often intended as a portal to a more extensive experience, but the door may never be opened. A headline is intended to get someone to read a newspaper story or stay tuned for more details in a media broadcast. An advertising slogan is intended as a portal to further reading or to seeing or to thinking about a product, and perhaps even its attributes and advantages. At the least it is an entry to the likely sex appeal, or some other peer approval, of the product.

Headlines and slogans are deliberately attractive or seductive, they are advertising for something, but they are not the thing itself.

Word flashes claim a territory of the mind, where a flash is linked to a selected context in which it is understood. That context, and a word flash itself, can become the full universe of discourse when this occurs, and it may be a very limited universe, a toy universe. When something significant is missing from a toy universe of discourse, the attraction of the word flash has had the wrong affect.

There are areas of culture and knowledge that are complex and subtle enough that word flashes are essential, they serve as handles for us to grasp — but those handles by themselves do not carry the weight of understanding. Two such areas of interest to me as a patent examiner are the case law and patent claims. These are not toy universes.

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Sometimes what is claimed in a patent application is a step backwards in its art, in its technology. The claimed invention is not more efficient or more powerful; it is, in a word, dumb. It would not be obvious to one of ordinary skill in the art to do whatever the claim says because one of ordinary skill would do something else. One of the things that the patent statute called 35 USC 103 is interpreted to mean by the courts in their wisdom is that a valid claim must be obvious if it is not actually anticipated.

A patent examiner faced with a claim of something that is less effective than standard practice, perhaps making a keyhole furry instead of oily, would love to say: "Forget it, this is silly!" The law, in the form of the pertinent patent statute 35 USC 103, constrains the examiner to admit that the claim is not obvious, where obvious would seem to be a potential rejection; silly is not a rejection. Thus the courts agree in their own perculiar way that to be ineffective is not obvious, and such a claim may get patented.

Our legal system is one of common law, which means that individual cases decided in the courts are used as precedents to guide future court decisions and lawmakers — the case law. The records of any particular case are extensive, but of course, their salient points boil down to much less than the entire record of the case. Commentaries on the law reduce this burden, they interpret and guide the practitioner of the common law. Law commentaries are older than this country, dating at least back to those of William Blackstone in the 18th century.

A problem arises, however, when a case is characterized "in twenty-five words or less." Let us call this a caselaw snapshot. Caselaw snapshots are used routinely when decisions are made in the courts, when part of the justification for a decision is taken from previous court decisions, as it must be. Even the Supreme Court indulges in this. One can safely assume that the author of the snapshot has in fact read and digested the case being characterized, but the reader almost always has not done so. The intent in fact, is to prevent the reader from needing to do so.

Some examples were cited in one particular patent case that in part dealt with whether or not something must be an improvement in order to be obvious (Demaco v. Von Langsdorff, 851 F.2d 1387). The question that arose in this case is: Is it obvious to do something that does not appear to be an improvement, something that might be a step backward in the art of an invention? In the patent world this is decided in the context of 35 USC 103, which has a historical context of its own, the common law derived from previous cases.

This court decision in Demaco included snapshots from previous case law such as this: "The patent statute does not require that a patentable invention be superior to all prior devices."; "Finding that an invention is an ‘improvement’ is not a prerequisite to patentability"; discussing "the unsound notion that to be patentable an invention must be better than the prior art"; "Nor does the patent statute require that an invention be complex in order to be nonobvious."

Unfortunately, these snapshots of previous cases failed to address whether or not they were explicitly confined to 35 USC 103, and in particular whether they also explicitly addressed the question of "improvement" in another statute, 35 USC 101. This is "improvement" in a different context, the body of law arising from 35 USC 101, not from 35 USC 103. The court in this case did not address 35 USC 101, and the answer to the question above was no: It is not particularly obvious to take a step back unless you are sparing with Mike Tyson.

The failure to address 35 USC 101 as well is unfortunate, because the common law of 35 USC 103 dictates that patent examiners should not reject claims that are retrograde — it teaches that such claims are not rejectable as being obvious, precisely because they are not an improvement. In contrast, 35 USC 101 might provide a mechanism for rejecting some claims on the same basis — precisely because they are not an improvement. It is not really rare for case law to be this uncertain, but this is part of the dynamic that makes the common law flexible, an organic and never-finished tool for resolving disputes.

Common law is messy, and dynamic, and fluid, and above all it is directed to explicit contexts — individual cases. This is why caselaw snapshots are nearly always misleading on some level and with regard to some of the facts.

The courts can generally be trusted to choose caselaw snapshots with great care, but judges and justices do disagree with each other, and they do view the record distinctly. That is why there are often more than one of them, comprising a panel.

Lawyers, including Intellectual Property (IP) lawyers, tend to have an agenda when they choose caselaw snapshots. So do those with whom they spar in negotiation, patent examiners. (Dueling caselaw snapshots are not in the same league with dueling banjos.) In practice, it is usually a new cogent argument that carries the day, or even the technical facts at hand, as it should be.

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One of the curiosities of word flashes is the extent to which people allow themselves to be limited by them, to be dumbed down, to be manipulated. A case in point is a patent referred to even by many Engineers and Scientists and other worthy and educated people as the "FTL patent." Here FTL means Faster Than Light. (Shades of StarTrek.)

The question of whether or not a particular patent is valid is one that as a patent examiner I cannot address, but I can address the sniggers. As any freshman Physics text will verify, radio transmissions may travel faster through a window pane than does visible light — and both generally travel slower in a medium than the constant equal speed with which both of them travel in a vacuum. Recently, however, scientists have transmitted light 300 time faster than its speed in a vacuum.

Making fun of a patent simply because it claims: "FTL transmission," is showing both ignorance and arrogance, whatever the patent claims may say. At the minimum, it requires the addition of: "in a vacuum" to make those two words, (or four words if you like), clearly incorrect by the current theories and now experiments as well. Word flashes can be blinding.

Patents are vehicles that provide the support, with the help of technology in general and some technological art in particular, and several other things, to interpret the claims placed at the end. Thus those inventions that are formally recognized by the U. S. Patent system appear as claims in issued patents, after having satisfied formal constraints and survived an examination called prosecution. The claims are then formal descriptions of some concrete embodiment of what they describe, the claimed Inventions.

A very large amount of structure and information is focused into perhaps 200 words, often less. Claims are crafted with a lot of constraints, and typically they are unreadable without a great deal of work and knowledge. Actually, a worse problem occurs when they appear to be readable without the help of the supporting envelope, but they really are not. In that case, it is much easier to misinterpret them or paraphrase them than to find out what they really mean.

In any case, there is generally a need for some accessible description of an invention other than the claims, in order to talk about them. In order to address the nub of the matter of word flashes applied to inventions, we coin the term inventogram, (small I). Word flashes which act as stand-ins for claimed Inventions we call Inventograms, (capital I).

A real problem occurs when a generic word flash is used to describe a claimed Invention in such a way that it is misleading if not wrong. This sets up a straw man, something to attack without having to understand or think about what the real claim behind the flash actually says, or what it does not say. Often the word flash in this case is abstract and very short indeed, but such inventograms can be useful so long as they are not substitutes for the real thing. So long as they are not used for political purposes.

The emphasis is on claim here, as distinct from invention. Within this terminology, a generic Inventogram is a mistake, by its very definition. Generic Inventograms are used, frequently on the Internet, by those who we might call Web Clowns, they are used in order to attack individual patents or the Office itself. Web Clowns cater to an audience that apparently does not realize that there is a distinction between the inventogram and the claim, or that it matters. Nevertheless, very brief descriptions of claimed Inventions can be useful and even delightful.

A Thought Experiment can be used to illustrate the positive side of an inventogram.

Suppose that a geneticist named Kim follows up on the idea of cookies, those snippets of code placed into her PC from Internet sites that she has visited. The cookies provide feedback to the originating site.

It happens that various processes can place nucleic acids, substrings of DNA, into an existing DNA molecule. This is routinely used, in fact, to introduce useful genes into organisms in which they are not at all native.

One or more molecules are used to snip open a DNA molecule and one or more molecules are used to insert a new polypeptide chain into the gap. There is feedback from this change in the most general sense when it is effective. Since this is a Thought Experiment, we will suppose further that there is a single agent of some kind that directs and monitors this process within a cell. In that case, a claim in Kim’s patent might look this:

What we claim is:

The details of exactly what a cookie-cutter nuclease promoter and monitor is and does, and how one really makes and uses it, are left to the Specification of the patent and to the enormous amount of technology that is the context for the Specification.

The claimed Invention is a concrete object or system that is only meaningful in its full technical context. The claim is a description of that concrete invention. Of course, it is unlikely that someone with just an undergraduate degree in Biology would really understand this claim in a few minutes, or even a few hours. The claim is itself an inventogram, as they all are.

In this case, referring to "the cookie-cutter nuclease promoter and monitor claim" or the "cookie-cutter nuclease promoter and monitor patent" makes good sense. Under the conditions of the Thought Experiment, these Inventograms can convey as much information as such a brief word flash can be expected to carry. It may be that only a geneticist would fully understand what lies behind these word flashes, but for many people they would evoke the explanation above, and that would be quite suitable. These appear to be fine Inventograms, but they are awkward.

It is only natural to want to abbreviate these Inventograms, but largely for the wrong reasons — it is not that they are too long, but that they carry information that most people do not want to think about. The inevitable result is: "the cookie-cutter claim" or the "the cookie-cutter patent." So be it. However, when this is done in order to provide a better target for ridicule, that is another matter.

The typical member of the Flat Earth Society is probably quite willing to believe that the Patent Office has just discovered cookie cutters. The real concern is when the media, CEO’s, and even technical people, do not recognize that they have been diverted from an intelligent view by a seductive word flash. Perhaps the shorter word flash caries the echo of cinnamon sugar cookies at Christmas, but it can also evoke the blind production of clones by some simple process. Neither of these evokes an intelligent, searching question, such as: "How is the promotion and monitoring done?"

Much of the flak aimed at the Office involves generic Inventograms. The deepest fear of those of us who work at the Office perhaps should be that this flak will bedazzle the eyes and minds of legislators.

The patent system has been a driving engine of the U.S. economy and part of its competitive edge for over two hundred years. It is a working system that was designed before Gregor Mendel was born, but it is flexible enough to deal with molecular genetics. It was designed 150 years before the algorithm became the explicit base of computing, but it deals with aplomb with new machines that are in the form of executing computer programs. It was designed at a time when all technological methods were recognized as methods for doing business, and the current computerized methods fit right into that mold.

The patent system is not broken, but the signals that the public generates about its work could use a bit of honest heft.

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