10-06-2015side 1 andrew chin chin@unc.edu andrewchin.com what metaphysics can tell us about law...

18-04-23 Side 1

Andrew Chin

chin@unc.eduAndrewChin.com

What Metaphysics Can Tell Us About LawSteven D. Smith (2006): Do we hold outdated conceptions of “the Law”?“[L]aw’s metaphysical commitments pervade and inform the ways that lawyers talk and argue and predict and that judges decide and justify.”

Law’s Quandary: Ontological inventory on contemporary law-talk“[I]f we say things that we cannot account for using the materials in our [ontological] inventories, we speak ‘non-sense’…”

18-04-23 Side 2

Andrew Chin

chin@unc.eduAndrewChin.com

What Metaphysics Can Tell Us About Patent LawJudge Rader (2008): What is an abstract idea?

“[A]n abstract claim would appear in a form that is not even susceptible to examination against prior art under the traditional tests for patentability.”

18-04-23 Side 3

Andrew Chin

chin@unc.eduAndrewChin.com

What Metaphysics Can Tell Us About Patent LawJudge Rader (2008): What is an

abstract idea?

Q. When do abstract claims cause tests for patentability to “speak ‘non-sense’”?

A. When they fall outside the patent system’s ontology of “useful Arts.”

Need: Ontological inventory on patent law-talk [pp. 1-16]

18-04-23 Side 4

Andrew Chin

chin@unc.eduAndrewChin.com

The Written Description Requirement

Ariad (Fed. Cir. 2010) (en banc): “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”

18-04-23 Side 5

Andrew Chin

chin@unc.eduAndrewChin.com

Causal Powers of Embodiments

“It is for the discovery or invention of some practical method or means of producing a beneficial result or effect, that a patent is granted….”

— Diamond v. Diehr

18-04-23 Side 6

Andrew Chin

chin@unc.eduAndrewChin.com

Causal Powers of Embodiments

Embodiments possess the causal powers that are employed in use essentially; i.e., by virtue of being examples of the claimed kind

18-04-23 Side 7

Andrew Chin

chin@unc.eduAndrewChin.com

Causal Powers of Embodiments

“The presence of inoperative embodiments within the scope of a claim does not necessarily render a claim nonenabled.”

— MPEP 2164.08(b) (citing Atlas Powder)

18-04-23 Side 8

Andrew Chin

chin@unc.eduAndrewChin.com

Causal Powers of Embodiments

Essential causal powers of natural kinds are fixed, but those of more complex objects may vary because of history or circumstance:

“If the mousetrap is not set off by the taking of the cheese, then presumably the disturbance was not enough to release the causal power latent in the spring.”

18-04-23 Side 9

Andrew Chin

chin@unc.eduAndrewChin.com

Scientific Realism

Scientific realists believe that “[t]he things our best scientific theories tell us about entities and processes are decent descriptions of the way the world really is.”

18-04-23 Side 10

Andrew Chin

chin@unc.eduAndrewChin.com

Scientific Realism

USPTO does not require:

a working model (unless factual reasons would lead a PHOSITA to question operability)

a correct account of theory of operation (unless necessary to convince a PHOSITA of asserted utility)

18-04-23 Side 11

Andrew Chin

chin@unc.eduAndrewChin.com

§ 112 and Ontological Commitment

• Filing: Demand for admission into the patent system’s ontology of “useful Arts”

• Written description: Conveys ontological commitment

• Enablement: Warrants ontological commitment

18-04-23 Side 12

Andrew Chin

chin@unc.eduAndrewChin.com

The Written Description Requirement

Ariad (Fed. Cir. 2010) (en banc): “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”

18-04-23 Side 13

Andrew Chin

chin@unc.eduAndrewChin.com

The Written Description Requirement

Ariad (Fed. Cir. 2010) (en banc): “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”

Jeffrey Lefstin (2008): Not “syntactically sensible” to ask whether inventor “possessed” a class having infinite scope. [pp. 39-45]

WD requirement has definitional purpose

18-04-23 Side 14

Andrew Chin

chin@unc.eduAndrewChin.com

The Written Description Requirement

Ariad (Fed. Cir. 2010) (en banc): “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”

Adequate description:• Shows ontological possession of

claimed kind

• Conveys de dicto commitment to claimed kind by picking out a well-defined class [pp. 50-54]

18-04-23 Side 15

Andrew Chin

chin@unc.eduAndrewChin.com

The Enablement Requirement

Argument from the best explanation:

• If the world behaves as if an unobserved entity E exists, then the best explanation of this fact is that E really does exist. [pp. 36-39]

Enabling disclosure:

• Provides warrant for de dicto ontological commitment to claimed kind

• Furnishes theoretical or factual support (in addition to knowledge in the art) to justify reliance on argument from the best explanation, given unobserved embodiment(s) [pp. 54-61]

Esab

18-04-23 Side 16

Andrew Chin

chin@unc.eduAndrewChin.com

The Enablement Requirement

Argument from the best explanation:

• If the world behaves as if an unobserved entity E exists, then the best explanation of this fact is that E really does exist. [pp. 36-39]

Ellis: Scope of ontological warrant is limited to kinds of entities involved in causal processes

• Implies essential causation requirement [pp. 63-66]

• Kinematic property exclusion

(Salmon/Dowe [pp. 67-76])