Category: Tech

Honorable Jerrold Lewis Nadler
Chairman of the House Judiciary Committee, US Congress
201 Varick Street, Suite 669
New York, NY 10014, United States

Dear Honorable Mr. Nadler:

Greetings in the name of the Lord Jesus Christ!

I am a citizen of India, who lived in the United States for over ten years for graduate studies and work.

In 1989, while i was still doing my master’s in Computer Information Science at NJIT, i conceived of the Necktie Metaphor Persona Extender invention, which has matured, and is today called Augmented Intelligence, Internet of Things (IoT), Augmented Reality, Wearable Technology, Christocratic NWO, and Big Data in its various forms in the marketplace of technology. I happen to be the inventor to all of these technologies, which are offshoots of the initial formulation in 1989.

Today, i am the CEO and Managing Director of AgapeJUST [P] Ltd., which is a hi-tech company, started in 2017 here in India, dealing with these technologies. The company hopes to start an operations HQ in the United States very soon and employ over five hundred high skilled people and even make every user of our technology an indispensable member of the workforce amidst the “automation beast” and even amidst Corona Virus. Per our solid business plan, we expect to touch revenue of over $1B by year 2025.

I am now appealing to the US Congress from the US Supreme Court’s denial of justice on my utility patent application for these inventions of mine.

Unfortunately, the inventions have now become public domain, where everyone, including Google, Microsoft, MIT Labs, Cisco, and IBM, are helping themselves to it, while a patent is denied this inventor.

The US national stage patent application no. 13/516,443 was filed in 2012. The application passed all the three major tests for patentability, namely, Eligibility (§​101​), Novelty (§102), and Non-obviousness (§103)​. However, the USPTO’s Examiner rejected all Claims under §112 Enablement requirement, primarily because he alleges that the Specification is not enabling to “a person having ordinary skill in the art” (PHOSITA) to make and use the invention. Applicant had argued that not only was the Patent Application assigned to the wrong technology center at the USPTO, but as the invention is interdisciplinary in nature, a single examiner from Artificial Intelligence art unit will not suffice for instantaneous enablement. At least two or three persons from relevant disciplines are needed for enablement of this interdisciplinary invention. The prosecution dragged on till the US Supreme Court.

On April 20, 2020 the court of last resort has denied my petition in my patent case No. 19-8094, titled:

Caleb S. Motupalli, Petitioner
v.
Andrei Iancu, Director, United States Patent and Trademark Office.

My case stands or falls over the Pre-AIA 35 U.S.C §112 ¶ 1 Enablement Statute.

The Supreme Court has maintained its “avoidance canon.” Instead of invalidating the Pre-AIA Statute and declaring it erroneous, it has simply denied the petition and avoided making a decision on it. 

No doubt, “striking down a legislative act is the most momentously delicate thing a constitutional court ever does. The political costs of doing so can be great, and in any case, courts are often queasy about nullifying the work of a body whose democratic legitimacy seems more obvious and straightforward than their own. On the other hand, protecting citizens against unconstitutional legislation should make up a central part of a constitutional court’s raison d’être. By enjoining the Court to avoid statutory interpretations that would render a law unconstitutional, or even suspect, the avoidance canon purports to limit the use of the Court’s most fantastic power and to promote deference to the legislature.” (Appealing to Congress, Justin Collings, Law Review, Univ of California at Davis)

The US Supreme Court simply does not want to appear as ordering the legislature around. Therefore, it has simply denied my Petition without any opinion.

The challenged law, namely, Pre-AIA 35 U.S.C. 112 ¶ 1 Enablement, is erroneous(!) and perhaps even unconstitutional, and must be accepted as such by US Congress in view of the following rational:

35 U.S.C. §112 ¶ 1 (Pre-AIA) provides in relevant part (with the portion in square brackets [] added in the America Invents Act of September 2012):

“[In General,] the specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any (one) person(?) skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”

The Statute requires that the specification of a patent application describe the invention in such terms that those skilled in the art are enabled to make and use the claimed invention. The purpose of this requirement is to ensure that the invention is communicated to the interested public in a meaningful way. 

With current computer applications, it is not unusual for the claimed invention to involve two or more prior art areas, or more than one technology area. Typically, corporations have separate departments that deal in specializations, and are collectively enabled to make and use such inventions. It is also reason why patent offices elsewhere have three examiners examining a single patent application for maintaining objectivity. “Where different arts are involved in the invention, the specification is enabling if it enables persons skilled in each art to carry out the aspect of the invention applicable to their specialty.” In re Naquin, 398 F.2d 863, 866, 158 USPQ 317, 319 (CCPA 1968)). Also, “the Board stated appellants’ disclosure must be held sufficient if it would enable a person skilled in the electronic computer art, in cooperation with a person skilled in the fuel injection art, to make and use appellants’ invention.” In Ex parte Zechnall, 194 USPQ 461 (Bd. App. 1973). See USPTO’s own MPEP 2164.05(b).

The Federal Circuit Court had retroactively (?) applied Pre-AIA, which possesses this US Congress-acknowledged legislative drafting error, and shockingly overturned the aforementioned precedent (Naquin & Zechnall) by insisting that it be a single person working alone having a single skill who must be enabled to make and use the full scope of the specification. See In re: Motupalli, No. 19-1889 (Fed. Cir. 2019).

Clearly, the 35 U.S.C. §112 Statute is in principle as well as per precedent fully satisfied when the specification of a patent application is enabling to an interdisciplinary team of two or three persons, working in cooperation, to make and use the claimed invention. That is, said PHOSITA, in addition to taking the form of a single person, can also take the form of a two-or-three-persons-PHOSITA, and still satisfy the §112 Enablement requirement. 

The US Congress itself became cognizant of the above legislative drafting error and made amendments/corrections in the America Invents Act (AIA) of September 2012. However, since my application had a filing date of June 2012, the Federal Circuit applied Pre-AIA and disqualified my patent application from the benefits of the amendment to the §112 Statute that came with the AIA.

This retroactive application of Pre-AIA by the Federal Circuit is clearly erroneous because the US Congress itself made the pertinent amendment by qualifying the Statute with the phrase, “IN GENERAL,” which was prefixed to ¶ 1 of the Statute. The amendment now allowed for exceptions such as a team of two-or-three-persons-PHOSITA, who would need to be enabled by the disclosure. Though it was clear that the Pre-AIA Statute has this legislative drafting error, the court refused to apply legislative intent that conflicted with the Pre-AIA text of the law. Instead of deferring to the Legislature, the court should have taken the high ground and invalidated the Pre-AIA Statute from being applied retroactively. The Federal Circuit preferred applying the Pre-AIA Statute even though the legislative intent of the Statute itself pointed in the other direction, and even though it was actually corrected by the US Congress in the AIA. The Federal Circuit’s retroactive application should have been struck down at least by the court of last resort–the US Supreme Court. Appellant had hoped that in the interest of justice the Supreme Court would make a favourable decision on it. But it denied the Petition.

The US republic has a rich history, a noble goal, and is magnanimous. Appellant therefore appeals to the higher virtues present in the United States Congress.

In conclusion, the Appeal to US Congress can be summarized as: 

Even though the US Congress made corrections to the 35 U.S.C §112 Statute in America Invents Act, the Federal Circuit Court has shockingly overturned precedent (Naquin & Zechnall) and said the erroneous Pre AIA Statute applies for my case since my application falls 3 months before the Amendments to the law, took effect. Apparently, its hands were tied. And the US Supreme Court avoided making a decision on it, deferring the case to the legislature.

This retroactive application to an erroneous Pre-AIA law is also erroneous.

Since the AIA already has the requisite amendment/correction in place for the §112 Statute, now it is just a matter of ordering that: 

• The Pre-AIA not be applied retroactively in this case because the intent of §112 Statute is self-evident that allows for a team of two-or-three-persons-PHOSITA for ensuring that the interdisciplinary invention is communicated to the interested public in a meaningful way, as even the precedent declares; and
• USPTO reopen prosecution of my patent application or better still, outrightly allow all Claims.

Thank you very much,

Respectfully,

​Caleb Suresh Motupalli
Founder |AgapeJUST [P] Ltd. | 29-37-31 El-ur Road | Vijayawada-520002, AP, India