1. 10-06-2015Side 1 Andrew Chin chin@unc.edu AndrewChin.com What Metaphysics Can Tell Us About Law Steven D. Smith (2006): Do we hold outdated conceptions of “the Law”?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’…”

2. 10-06-2015Side 2 Andrew Chin chin@unc.edu AndrewChin.com What Metaphysics Can Tell Us About Patent Law Judge 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.”

3. 10-06-2015Side 3 Andrew Chin chin@unc.edu AndrewChin.com What Metaphysics Can Tell Us About Patent Law Judge 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]

4. 10-06-2015Side 4 Andrew Chin chin@unc.edu AndrewChin.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.”

5. 10-06-2015Side 5 Andrew Chin chin@unc.edu AndrewChin.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

6. 10-06-2015Side 6 Andrew Chin chin@unc.edu AndrewChin.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

7. 10-06-2015Side 7 Andrew Chin chin@unc.edu AndrewChin.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)

8. 10-06-2015Side 8 Andrew Chin chin@unc.edu AndrewChin.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.”

9. 10-06-2015Side 9 Andrew Chin chin@unc.edu AndrewChin.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.”

10. 10-06-2015Side 10 Andrew Chin chin@unc.edu AndrewChin.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)

11. 10-06-2015Side 11 Andrew Chin chin@unc.edu AndrewChin.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

12. 10-06-2015Side 12 Andrew Chin chin@unc.edu AndrewChin.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.”

13. 10-06-2015Side 13 Andrew Chin chin@unc.edu AndrewChin.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

14. 10-06-2015Side 14 Andrew Chin chin@unc.edu AndrewChin.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]

15. 10-06-2015Side 15 Andrew Chin chin@unc.edu AndrewChin.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

16. 10-06-2015Side 16 Andrew Chin chin@unc.edu AndrewChin.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] )