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You missed a bit
Authored by: Ian Al on Saturday, March 16 2013 @ 04:37 AM EDT
If a divisional application is directed solely to subject matter described and claimed in the original application as filed, the Director may dispense with signing and execution by the inventor. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.
This has appeared in a previous Groklaw article, although I could never find it. The article explained that, if the multiple inventions used the same subject matter described and claimed in the original application, the distinct and independent inventions could be covered by one patent. As you say, the Director, at his discretion, can require the inventions to be split among multiple patents and those patents can duplicate or cite the subject matter descriptions in the original application.

This article reports on the courts bearing down on a well known abuse of the concession.

§112 says
(b) Conclusion.— The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
In the patent in question, the machine and method claims are technically independent, but are not independent inventions. The specification does not meet the requirement of §112 of distinctly claiming the invention subject matter. The invention cannot, according to §101 (as opined by major contributor, Judge Rich) be a combination of the four statutory subject matter classes.

Neither the 'Transport Format Combination Indicator (TFCI) encoding apparatus in a CDMA mobile communication system' nor the 'Transport Format Combination Indicator (TFCI) encoding method in a CDMA mobile communication system' are independent inventions in their own right because the machine does not do anything without the rest of the system and the method does not do anything in its own right, without both the machine and the system.

I'm surprised that dio gratia did not chime in to point out that the patent defines the mobile phone part of generating signals that are exchanges, as a protocol, between phone and network. The patent uses abstract terms to describe the way the mobile phone takes part in the defined signalling protocol. The invention is the signal and not the means of signalling. It is dressed up with an imagined machine and an imagined method with no technical means given. Signals are not statutory subject matter.

---
Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid!

[ Reply to This | Parent | # ]

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