Because it can’t be repeated often enough:

DC: Congress however rejected Halliburton in the 1952 Patent Act by adding the provision that elements of a combination claim may be drafted in functional form. 35 U.S.C. 112 p 6 (now 112(f)).

Congress did not “reject Halliburton” because the prohibition against functional claiming at the point of novelty is an essential part of any sane, healthy patent system. This really shouldn’t have to be explained to patent attorneys or anyone remotely associated with the patent system.

What Congress did in 1952 was address the (incorrect) notion that had sprung up in the wake of Halliburton that functional language anywhere in the claim was f@tal to the validity of the claim. In addition, Congress approved of a claiming paradigm that would allow applicants to use functional language in a claim, even at the point of novelty, but only when the specification recited physical structure for carrying out the recited function.

There have been two notable exceptions to this rule. The first was the so-called “antibody exception” which was actually recognized as an “exception” and expressly referred to as such. At the PTO level, the “antibody exception” permitted applicants who discovered new antigens to claim antibodies which recognized those new antigens without providing any structures which distinguished those antibodies from prior art antibodies. The policy behind the exception was that — at the beginning days of the exception — it was easy to make antibodies which recognized a new antigen but it was difficult to obtain the amino acid sequence of the antibody. Importantly, there is not a single instance of a functional claim to an antibody that ever survived CAFC scrutiny and we can rest assured that the Supreme Court would never have approved of the exception. Most of us understood that the “exception” was pretty much worthless for enforceability purposes and, indeed, that was proven to be the case. The “antibody exception” has been put to bed, forever.

The other major exception to the rule has, unfortunately, never been recognized as an exception by the CAFC (and we can all guess why that is). That’s the “software exception” where the CAFC has created a bizarre internally contradictory and frankly absurd hodgepodge of ever-evolving rules which permit “new” computers to be claimed solely on the basis of their functions. The policy behind this exception is based on two incredible fantasies: (1) that there is some kind of objective physical/structural “essence” which can be inferred from the recitation of logical operations to be carried out by a prior art programmable computer; and (2) that without the “exception” human beings would somehow not be motivated to program computers and progress in the “computer logic arts” would be hindered. As most of us are aware, these fantasies are the opposite of reality and the exception for software has only served to funnel money to the wealthy classes (including patent attorneys), create grifting opportunities for the least innovative people who ever walked the earth, and to erode the credibility and functioning of the system as a whole (by flooding the PTO with massive piles of “do it on a computer” g@ rb@ge).