CAFC Judge Linn Expresses Disappointment over Failures by the BPAI and Patent Bar

In re Reuning (Fed. Cir. 2008)

The Reuning application claims to have invented a new method of targeting advertisements. In appealing a BPAI obviousness rejection, the inventors argued to the appellate panel that the claims should be allowable because they contain the limitations of “searching the internet”, “identifying web pages”, and identifying “web pages containing profile data.” During the appellate briefing, the applicant had admitted that each of those elements were already “known in the art” at the time of the invention. The CAFC applied the applicant’s admission to estop any argument that elements were not in the cited references:

“Having acknowledged that certain claimed elements are taught by the prior art, Reuning cannot now defeat an obviousness rejection by asserting that the cited references fail to teach or suggest these elements.”

This conclusion misses the somewhat subtle difference between elements being found in the art generally and those found in the cited references.

In a Concurring Opinion, Judge Linn wrote to “express . . . disappointment over the delays experienced in this case and . . . concern that the circumstances that led up to this appeal may be more symptomatic of certain failures of the patent system than merely reflective of the peculiar facts of this case.”

Here, Reuning filed the patent application in 2001, received a final rejection in 2003, and received the two-page BPAI decision in 2006. During the CAFC appeal, the PTO Director requested a remand so that the BPAI could reconsider all of the facts of the case:

After twice denying Reuning a substantive review of claims 3-66—and taking over three years in the process—the Board, via the Director, now requests that we remand so that the Board can do what it should have done in the first place; namely, substantively review the examiner’s rejection of claims 3-66. By taking nearly three years to decline to adjudicate the merits of claims 3-66 on a procedural technicality, and by forcing Reuning to appeal before recognizing the superficial nature of its actions, the Board squandered judicial resources and needlessly frustrated Reuning’s interests. This is not a reflection of the Board’s finest work. . . .

This wasteful course of proceedings does not promote the fair and efficient administration of justice and is inconsistent with the PTO’s mission “to ensure that the intellectual property system contributes to a strong global economy, encourages investment in innovation, and fosters entrepreneurial spirit.” . . . I have the utmost respect for the members of the Board, the leadership of the PTO, and the members of the patent bar, and while I would like to believe that this case represents an aberration from the standards of practice I have long admired and have come to expect, I am concerned that it does not.

 

54 thoughts on “CAFC Judge Linn Expresses Disappointment over Failures by the BPAI and Patent Bar

  1. There seems to be a major missed point in this discussion. The admission of prior disclosures of some steps was, apparently, made by counsel not during prosecution, but “during appellate breifing.” Dennis doesn’t say whether the offending brief was to the BPAI or the CAFC. Either way, counsel screwed up big time.

    But in any event, those admitted “facts” were apparently not a part of the record of the prosecution. I would suggest that it was not proper for counsel to begin introducing new facts in any appeal brief, and I’m not sure the court was right to take notice of such “facts.”

    As to the substantive issue, as has been pointed out before on this blog, the PTO has revised the MPEP post-KSR to remove the requirement that each element of a claim rejected under 103 must be disclosed in the PA cited. It was always my understanding that the examiner can’t make up elements or steps for either 102 or 103 rejections. The PTO has very quietly obviated this rule for 103.

    Dennis’ point is well taken, there is (or should be) a distinction between what is disclosed in the PA cited and what may be known generally. According to recent revisions in the MPEP, I believe the PTO has eliminated that distinction as to 103 rejections.

  2. And of course you know all of this how Mooney? Are you the parrot that sits on the shoulder of the great BPAI gatekeeper? And of course you know all about the “obvious claims” that, but for TSM, would never have issued? Once again, get over yourself. Your sense for the dramatic is tiresome. Patent law, for the most part, is boring – get used to it. You may want to investigate the many wonderful theater blogs.

    Let me put this another way. Pre KSR, if the Examiner failed to provide a motivation based on the “knowledge generally available,” then such an appeal based on the lack of an explicit TSM would be appropriate under CAFC precedent. Now, such an appeal could still be pursued, that is, an appeal for insufficient basis to support the combination, with some minor modifications to the argument.

  3. CaveMan: “strict TSM was not really the official test.”

    I never said it was.

    “I don’t think I’m alone in considering that, now that the dust has settled, KSR hasn’t really changed things that much.”

    True enough, and for historical accuracy let’s not forget that this relatively benign outcome runs contrary to the bukawking of several chicken littles around here at the time of the petition for cert (and afterwards).

    What has changed, of course, are appeals by applicants and patentees based on the “strict” application of the TSM test which required, according to the appellants, an “explicit” recitation in the prior art of the motivation to combine the cited references. Those appeals have all but dried up, as have the undesirable allowances of obvious claims that occasionally followed such appeals.

  4. Um, just to be clear Mooney, since I really h8te it when you try to sound more authoritative than you should given your modest station, strict TSM was not really the official test. In many cases, it was the default and thus became a de facto test.

    The actual test was that a TSM should be present in the references themselves … “or in the knowledge generally available in the art.” A good Examiner could make a good post KSR-style argument even before KSR based on the “knowledge generally available” part that most people kind of ignored.

    The “knowledge generally available” part was typically ignored because, in a more complex case, it would be difficult to find a motivation just floating around out there in the “general knowledge”, so it was pretty much incumbent on the Examiner to find the motivation in the references.

    I don’t think I’m alone in considering that, now that the dust has settled, KSR hasn’t really changed things that much. The Examiner is still required to have a reasoned basis for combining references and the applicant is still free to question the basis for the combination, often times sucessfully.

  5. “Just MHO on TSM standard. It is not going to be dead. SCOTUS will have follow-up, some case where there is nothing to indicate combination, and they will say “we don’t know how you could read KSR to wipe out TSM” like we are all dumb to think that’s what they were doing.”

    Um, dude … let’s try to be clear.

    If you find explicit TSM in the art, you have a great obviousness argument. KSR didn’t change that. KSR was about whether explicit TSM (i.e., “strict TSM”) was the *only* way to establish obviousness.

    The answer is: it’s not.

    You can bet your sweet patootie that this answer will not change in your lifetime.

  6. Wasn’t me: The guidelines in the Federal Register are the PTO’s attempt to tell you what the augmentation to TSM is. TSM is not dead, it is just no longer the gold standard.

    Of course, the new guidelines introduce wholly new questions and open definitions, but then what can we realistically expect form the PTO?

  7. AgentG – Just MHO on TSM standard. It is not going to be dead. SCOTUS will have follow-up, some case where there is nothing to indicate combination, and they will say “we don’t know how you could read KSR to wipe out TSM” like we are all dumb to think that’s what they were doing. IMHO they are trying to take out the formal, check-box type TSM test and replace it with some standard that is not zero, but not formal TSM either. They’re not going to tell us what it is, either, but it will be TSM plus, i.e. you can follow TSM or put together a “common-sense” reason to combine, but not just ignore why references are combined.

  8. Applicant Admitted Prior Art or AAPA is defeating nearly 10% of the filed PCT applications that I review as a PCT Search Professional. Many, repeat, many in the patent bar apparently believe citing a prior art document immunizes them from having those teachings cited against the claims.

    But really, what is more damning that an admission that claimed elements are common knowledge at the time of the invention? Wait, I know… citing a prior art document reciting X, and then claiming X. You would be amazed at how often this is happening.

    The only other leg to stand on in Reuning remains then motivation to combine. Note that on Oct. 10, 2007, the PTO issued new examination guidelines in the Federal Register, Vol. 72, No. 195, pg 57526-57535, in which a vastly lower threshold for combining the prior art has been established in view of KSR. (I am assuming they will appear, or have appeared, in the MPEP at some point.) The new guidelines include standards such as ‘obvious to try’ and ‘a POSITA could have substituted known elements if the result was predictable’ and ‘variations from one field to the next’(paraphrased here).

    Thus, the SCOTUS ruling in KSR is having a demonstratable effect on examination and allowance rates. So, the TSM standard looks like history to me, folks.

    PS (IMHO): Why would anyone in their right minds ever cite or incorporate a prior art document by reference? Apparently many of you out there still do this… to your own great detriment, I believe. Note that in addition to AAPA, you are incorporating every deficiency in the cited reference and its prosecution history. Ever heard of an IDS? Also, why would you ever admit that your claimed elements are common knowledge in prosecution — is this really the kind of service a client should expect from their patent prosecutor?

  9. There is a considerable temptation when first reading the claims posted by earlier contributors to think that this patent should have been summarily rejected on the ground e.g. that everything within claim 1 was within the routine skill and common general knowledge of those working in the computer software and employment fields.

    However, if you take the trouble to look up the patent application No 20020087573 you find that it is a lengthy and carefully prepared document with considerable detail and reference to prior art. In no way can it be dismissed as a superficial application submitted by a pair of cranks.

    Justice to Michael Reuning and Nicole Bakos clearly requires that their application be carefully considered, that any patentable subject matter in it should be identified and that if there are grounds for issuing a patent then they should receive one.

    Many inventions look obvious in hindsight and this may be one of them. The recruitment industry (at least in the UK) is intensely conservative in its practices. Anyone who has suffered with his or her children having to fill out multiple individually completed application forms for numerous employers in order to make the transition from college to a first job will know just how much repetitive work they have to do and just how much worse it is for their generation than my (1960′s or baby-boom) generation. Anything that takes the pain out of the process, and facilitates putting people into suitable employment positions is greatly to be welcomed.

    In any event, this is a procedural case. These inventors deserved a fair hearing and a careful decision on their appeal. They clearly do not merit a superficial brush-off which is what the seem to have received. Judge Linn is not a person given to making inappropriate remarks and what he says merits careful consideration.

  10. He filed it with the “inventors” wife or was the boss not the inventor? Are we talking big scandal here?

  11. “I would hope that I can make an unexpected results / synergy argument.”

    BWAHAHHA! Good luck with that. Maybe succeess depends on how you administer the banana.

    “OTOH I didn’t read the application and perhaps some of the terms don’t have the meanings they appear to have to someone who simply reads the claims without glancing at the spec.”

    Each of the terms is defined broadly in the specification. For example, “normalizing” means “preparing the data for database entry” (or something like that).

    This is the worst application I’ve seen since that 10,000 claim monstrosity that attorney filed with his boss’s wife.

  12. How do you know that the references and rationale for combining and rejecting are proper when neither the references nor the rationale are given?

    I find it more difficult to see an Examiner’s point of view and argue or amend in response when the Examiner does not tell me what his point of view is than when he makes a rejection that gives references and a rationale for their combination.

  13. USDA advisor,

    If you find the art you describe, then you have a rejection, but if that art hasn’t been located by the examiner and isn’t cited by the BPAI, would the quoted admission be enough to sustain a rejection? I don’t think so. In part I think the question comes down to what the BPAI is supposed to be doing upon review. If the BPAI is primarily reviewing the examiner’s work, then the BPAI could certainly have forced the examiner to make a proper rejection or could have issued a new grounds of rejection. Either of those would have put the applicant and his rep in a better position than simply pretending to provide due process.

    But that said, I understand MM point. I don’t see much merit in the claims and perhaps that’s a reason why the application didn’t get much respect from the examiner. Maybe in a pre-KSR world, these claims were harder to reject.

    OTOH I didn’t read the application and perhaps some of the terms don’t have the meanings they appear to have to someone who simply reads the claims without glancing at the spec.

  14. Sorry USDA – that should have been directed at Malcolm. I didn’t quite follow who was saying what in your post.

  15. USDA – Those don’t have cancer curing properties, merely cancer preventing properties (except nutmeg – which I think is only used in egg nog and by kids to get high). I think this is a classic example of how examiners screw up. I find the strawberry – banana – nutmeg milkshake cure to cancer, you look up vitamin C and find out it’s an anti-oxidant (with keyword hit “cancer” of course), and throw out your 103. It’s safe to say that no one thinks anti-oxidants have the power to cure cancer, certainly not effectively, but that’s not going to stop any examiner from following your logic.

  16. —”Strawberries, Bannanas and nutmeg are all known in the art. That doesn’t mean it is obvious to combine them and use them as a cure for cancer.”

    Without a great deal of effort I can surely find prior art describing the anti-cancer properties of each of those foods, if not their substituent molecules. At that point, the prima facie argument that it’s obvious to combine them and administer the combination to cure cancer falls right out of the tree, so to speak.

    How will you respond?—

    One of the stranger examples yet made on this board. Off the top of my head, I will argue that it is not obvious to make this particular species of anti-cancer drug combinations out of the genus of possible anti-cancer drug combinations. Second, I would hope that I can make an unexpected results / synergy argument.

  17. “There’s no such thing. Or at least I’ve never seen one.”

    I’m not sure I follow. Are you saying that there is not such thing as a great invention in art unit 2600?

  18. “Name the technology, bro’.”

    Say what, Malcolm? I don’t follow your logic. (I’m sure you may think you can analyze any number of technologies, but perhaps that has more to to with how you think about yourself than with any particular technology.)

    Yet another Anon, your logic is good I think. And good logic is the first step (but not the last) in a good search. If one were to back up your logic with some real research, they might in fact be home free.

  19. GP writes:
    Get office action with bunches of rejections.
    Notice that several claims have only been rejected for obv. type double pat.
    Call examiner – “can you please confirm that you meant to do that?”
    Ex – “yes, I meant to do that.”
    “so the claims are allowable if I file a TD”.
    “yes.”
    File TD, cancel other claims.
    2 months later get 2nd non-final OA.
    about the 3rd time that has happened.

    GP, was this between two pending applications? If so, see MPEP 804:

    If “provisional” ODP rejections in two applications are the only rejections remaining in those applications, the examiner should withdraw the ODP rejection in the earlier filed application thereby permitting that application to issue without need of a terminal disclaimer. A terminal disclaimer must be required in the later-filed application before the ODP rejection can be withdrawn and the application permitted to issue. If both applications are filed on the same day, the examiner should determine which application claims the base invention and which application claims the improvement (added limitations). The ODP rejection in the base application can be withdrawn without a terminal disclaimer, while the ODP rejection in the improvement application cannot be withdrawn without a terminal disclaimer.

    I’ve used this twice with positive effect.

  20. “Here’s claim 1 as it appears in the published application:

    “1. A method for harvesting professional profiles, the method comprising: Searching the Internet, Identifying web pages and Internet postings containing professional profile data, Collecting said professional profile data, Identifying in said professional profile text strings constituting contact information data, and Storing said Professional Profile and said contact information data into a data structure. ”

    I believe I practiced this method in 1995.

    I searched the internet.
    I identified web pages and internet postings containing professional profile data.
    I collected said professional profile data.
    I identified in said professional profile data text strings that constituting contact information data (names, phone numbers, email addresses).
    I stored said Professional Profile and said contact information data into a data structure (microsoft excel or lotus 123, don’t remember which).

    Probably anyone who had a web browser in 1995 and did a job search practiced this method. Of course, many people did not get a web browser until 1996-1997.

  21. “Do you really think you are smarter than everyone else and can separate the wheat from the chaff in a given technology with 96%+ accuracy?”

    Name the technology, bro’.

  22. “There’s no such thing [as a really great invention]. Or at least I’ve never seen one.”

    2600examiner, maybe you can get Examiner#6k to teach you how to conduct a Google search, or how to read a patent specification.

    I typed “great inventions” into Google and came up with this as the first hit – you could even use “I’m feeling lucky” to bolster your confidence:

    link to corporate.britannica.com

    Are you sure you’ve never seen a great invention? I know your hard disk read head uses GMR which Peter Grünberg won the 2007 Nobel prize in Physics for. Wasn’t that a great invention? The initial patent on GMR is here (you can read it too):

    link to v3.espacenet.com

    How easy (and cheap) do you think it was to go from the lab to mass-production?

    link to research.ibm.com

    Do you think hard disks just use Grünberg’s device the way he invented it? You’d be wrong if you do.

    Maybe you could browse the National Inventors Hall of Fame web site too, to introduce you to some other great inventions. Perhaps they should have you do that in Patent Academy.

    What about the patent applications you’ve examined? How can you know whether or not they might be great inventions? Does the Grünberg patent strike you as a great invention on its face? It looks like a hundred other patents on MR sensors. [As far as I am aware, no hard disks ever used the Grünberg claimed invention, but one great invention led to another, which led to commercial success.] Do you really think you are smarter than everyone else and can separate the wheat from the chaff in a given technology with 96%+ accuracy? Can you truly be sure you’ve never seen a great invention? Can you really understand what happens in an entire field of research? Or do you just think you can? [Sigh.]

    P.S. If you really feel the need to disparage issued patents, then I’d encourage you to re-read MPEP 1701.

  23. “Strawberries, Bannanas and nutmeg are all known in the art. That doesn’t mean it is obvious to combine them and use them as a cure for cancer.”

    Without a great deal of effort I can surely find prior art describing the anti-cancer properties of each of those foods, if not their substituent molecules. At that point, the prima facie argument that it’s obvious to combine them and administer the combination to cure cancer falls right out of the tree, so to speak.

    How will you respond?

    Again: rhetorical question. The goal here is to encourage frankness and honesty about the quality of many (most? nearly all?) “doing generic stuff on the Internet” applications filed around the turn of the century.

  24. “Neither does an admission that those internet or web activities are separately known mean that it is obvious to combine them for a particular purpose.”

    Good grief. Do you need to grab your ankles to bend over that far backwards or is your spine permanently bent?

    Seriously. Collecting any type of data “from the Internet” (in a **generic sense**, i.e., as recited in the claims) was obvious in 2000. How could it not be?

    Is there any non-mouthbreather besides the out there (besides the applicants) who thinks the claims at issue are non-obvious? What’s the reasoning? Is the *claimed* solution to the problem of data collecting for advertising purposes unexpectedly efficient?

    These are rhetorical questions, of course.

  25. “PTO is a nightmare of delay.”

    GP man, make sure you’re talking to a primary, the underlings saying that might get you every time.

    Oh, and hey PDS, Fen, and anyone else who was helping me out with the whole apparatus/method in the same claim issue, check this out, the exact same stuff that I had found and was relying on either was in the MPEP or is in it now I hadn’t even noticed when I read through this section so long ago. Probably because the title is so off. 2173.05p.

    II. PRODUCT AND PROCESS IN THE SAME CLAIM
    A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35  U.S.C. 112, second paragraph. *> IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005);()may< also be rejected under 35  U.S.C. 101 based on the theory that the claim is directed to neither a “process” nor a “machine,” but rather embraces or overlaps two different statutory classes of invention set forth in 35  U.S.C. 101 which is drafted so as to set forth the statutory classes of invention in the alternative only. Id. at 1551

    and phawk just did a piece on it

    http://www.patenthawk.com/blog/2008/03/mixed_claim_types.html

    BTW the Original Topic of this thread was presented correctly, the applicant’s actually admitted in their statements that all the features were known. That was the basis for the ruling.

  26. Posted by: me | Apr 28, 2008 at 08:25 AM
    “Didn’t the current administration of the Patent Office think that not reviewing Appeals for procedural reasons was a GOOD idea and still uses it on every Appeal to try to limit what they have to decide on, and bounce Appeals as often as possible?”

    Yes.

    BPAI: “Examiner/Attorney spelled Applicant wrong in the Title. We can’t figure out the rest of the Brief. Send back to Examiner. One more count for us!”

    “What the Judge does not know is this attitude and abject animosity to the Bar permeates every aspect of the current Office and Dudas needs to immediately fire every person directly under him.”

    Ummm…the whole problem starts at the top, not at the bottom. The drones and worker bees are just trying to scratch out a living in a tyrannical system ruled by despots. Get rid of the despots and tyrants and let the worker bees make honey.

  27. I assume that all of the continuation applications were filed pursuant to the PTO rules and the filing fees were paid. I don’t see how they are an “abuse of the patent system.” (The PTO might also collect a lot of terminal disclaimer fees too.)

  28. @ Jon (4:44)

    The only resources I see having been wasted in the 50 filings are the Applicant’s. He did pay the filing fees, right? All the RCE fees? I have no problem with that — free country and all.

    In most businesses, a repeat customer like that would have long ago demanded a discount, i.e., more product/service for less money. In the public sector mentality of USPTO management, a prodigious repeat customer commands less service for the same money, and the attitude that this person is “abusing” the Office by writing all those checks.

    The fees should be calculated to deliver an action the fulfils the statute for each and every application. If it doesn’t, then fix the d*** fees. You’d think that with >100 Office Actions at least one examiner would have found the time to come up with a decent reference and a cogent application of it.

  29. “talk about a waste of resources and what is a clear abuse of the patent filing system”

    I don’t understand the waste or clear abuse part.

    BTW: My count is 100 separate applications and 54 RCEs. Assuming a large entity, we are talking about $150,000 into the USPTO’s pockets, and that doesn’t count issue and maintenance fees for any issued patents.

    How is this any different than what is done by IBM, Samsung, Cannon, Matsushita, and Intel, who between them all had about 12,000 issued patents in 2007? Does the fact that these applications were continuations/continuation-in-parts make it them so much more abhorant than if 100 separate applications were filed? I don’t think so.

  30. Wow the CAFC now looks back on the patent process and says It is broken when it was the graham ruling requiring explicit mention or suggestion in a patent to combine to references that has caused the patent filing bubble. After all, if the prior art doesn’t say the exact words then it is allowable.. what a joke. This ruling really doesn’t change things. How about fixing a bigger problem. Look at the no joke 50 continuations filed off of 6745234. talk about a waste of resources and what is a clear abuse of the patent filing system. 09382375 , filed on 08/24/1999 and having 3 RCE-type filings therein, is a continuation in part of 09378221 , filed on 08/19/1999
    09382421 , filed on 08/24/1999 and having 3 RCE-type filings therein, is a continuation in part of 09378221 , filed on 08/19/1999
    09382427 , filed on 08/24/1999 and having 1 RCE-type filing therein, is a continuation in part of 09378221 , filed on 08/19/1999
    09537530 , filed on 03/29/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09539596 , filed on 03/31/2000 and having 1 RCE-type filing therein, is a continuation in part of 09378221 , filed on 08/19/1999
    09568293 , filed on 05/10/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09568150 , filed on 05/10/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09568205 , filed on 05/09/2000 and having 3 RCE-type filings therein, is a continuation in part of 09378221 , filed on 08/19/1999
    09568148 , filed on 05/10/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09580848 , filed on 05/30/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09602468 , filed on 06/23/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09705514 , filed on 11/02/2000 and having 3 RCE-type filings therein, is a continuation in part of 09378221 , filed on 08/19/1999
    09703705 , filed on 10/31/2000 and having 1 RCE-type filing therein, is a continuation in part of 09378221 , filed on 08/19/1999
    09379700 , filed on 08/24/1999 and having 1 RCE-type filing therein, is a continuation in part of 09378221 , filed on 08/19/1999
    10619822 , filed on 07/15/2003 is a continuation in part of 09378221 , filed on 08/19/1999
    09382376 , filed on 08/24/1999 is a continuation in part of 09378221 , filed on 08/19/1999
    09382420 , filed on 08/24/1999 is a continuation in part of 09378221 , filed on 08/19/1999
    10828037 , filed on 04/20/2004 is a continuation in part of 09378221 , filed on 08/19/1999
    09382424 , filed on 08/24/1999 and having 2 RCE-type filings therein, is a continuation in part of 09378221 , filed on 08/19/1999
    10996120 , filed on 11/23/2004 is a continuation in part of 09378221 , filed on 08/19/1999
    09703465 , filed on 10/31/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    11023847 , filed on 12/28/2004 is a continuation in part of 09378221 , filed on 08/19/1999
    11039370 , filed on 01/18/2005 is a continuation in part of 09378221 , filed on 08/19/1999
    11294634 , filed on 12/05/2005 is a continuation in part of 09378221 , filed on 08/19/1999
    11289768 , filed on 11/29/2005 is a continuation in part of 09378221 , filed on 08/19/1999
    09382373 , filed on 08/24/1999 and having 4 RCE-type filings therein, is a continuation in part of 09378221 , filed on 08/19/1999
    11619139 , filed on 01/02/2007 is a continuation in part of 09378221 , filed on 08/19/1999
    11868596 , filed on 10/08/2007 is a continuation in part of 09378221 , filed on 08/19/1999
    11868598 , filed on 10/08/2007 is a continuation in part of 09378221 , filed on 08/19/1999
    09382371 , filed on 08/24/1999 and having 4 RCE-type filings therein, is a continuation in part of 09378221 , filed on 08/19/1999
    11868599 , filed on 10/08/2007 is a continuation in part of 09378221 , filed on 08/19/1999
    11872524 , filed on 10/15/2007 is a continuation in part of 09378221 , filed on 08/19/1999
    11943523 , filed on 11/20/2007 is a continuation in part of 09378221 , filed on 08/19/1999
    11876208 , filed on 10/22/2007 is a continuation in part of 09378221 , filed on 08/19/1999
    12021802 , filed on 01/29/2008 is a continuation in part of 09378221 , filed on 08/19/1999
    09382423 , filed on 08/24/1999 and having 2 RCE-type filings therein, is a continuation in part of 09378221 , filed on 08/19/1999
    09568754 , filed on 05/11/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09580793 , filed on 05/30/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09597131 , filed on 06/20/2000 and having 3 RCE-type filings therein, is a continuation in part of 09378221 , filed on 08/19/1999
    09598886 , filed on 06/21/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09611161 , filed on 07/06/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09602034 , filed on 06/23/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09615686 , filed on 06/21/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09594292 , filed on 06/15/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09594276 , filed on 06/15/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09627197 , filed on 07/27/2000 and having 1 RCE-type filing therein, is a continuation in part of 09378221 , filed on 08/19/1999
    09608859 , filed on 06/30/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09642891 , filed on 08/21/2000 and having 1 RCE-type filing therein, is a continuation in part of 09378221 , filed on 08/19/1999
    PCT/US00/20911 , filed on 08/01/2000 is a continuation of 09378221 , filed on 08/19/1999
    10857233 , filed on 05/28/2004 is a continuation of 09378221 , filed on 08/19/1999
    10874145 , filed on 06/22/2004 and having 1 RCE-type filing therein, is a continuation in part of 09378221 , filed on 08/19/1999
    10941052 , filed on 09/14/2004 is a continuation in part of 09378221 , filed on 08/19/1999
    10940585 , filed on 09/14/2004 is a continuation in part of 09378221 , filed on 08/19/1999
    11039154 , filed on 01/18/2005 is a continuation in part of 09378221 , filed on 08/19/1999
    11069837 , filed on 03/01/2005 and having 1 RCE-type filing therein, is a continuation in part of 09378221 , filed on 08/19/1999
    11329425 , filed on 01/10/2006 is a continuation of 09378221 , filed on 08/19/1999
    11329416 , filed on 01/10/2006 is a continuation in part of 09378221 , filed on 08/19/1999
    11426897 , filed on 06/27/2006 is a continuation in part of 09378221 , filed on 08/19/1999
    09490336 , filed on 01/24/2000 and having 2 RCE-type filings therein, is a continuation in part of 09378221 , filed on 08/19/1999
    09494925 , filed on 02/01/2000 is a continuation of 09378221 , filed on 08/19/1999
    09489879 , filed on 01/20/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09494956 , filed on 02/01/2000 and having 2 RCE-type filings therein, is a continuation of 09378221 , filed on 08/19/1999
    09491136 , filed on 01/26/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09496208 , filed on 02/02/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09494924 , filed on 02/01/2000 and having 4 RCE-type filings therein, is a continuation of 09378221 , filed on 08/19/1999
    09491142 , filed on 01/26/2000 and having 1 RCE-type filing therein, is a continuation of 09378221 , filed on 08/19/1999
    09497252 , filed on 02/03/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09614937 , filed on 07/11/2000 and having 1 RCE-type filing therein, is a continuation in part of 09378221 , filed on 08/19/1999
    09491089 , filed on 01/20/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09583134 , filed on 05/30/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09593094 , filed on 06/13/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09594651 , filed on 06/15/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09659520 , filed on 09/12/2000 and having 1 RCE-type filing therein, is a continuation in part of 09378221 , filed on 08/19/1999
    09659167 , filed on 09/11/2000 is a continuation in part of 09378221 , filed on 08/19/1999
    09659170 , filed on 09/11/2000 and having 1 RCE-type filing therein, is a continuation in part of 09378221 , filed on 08/19/1999
    09496222 , filed on 02/01/2000 and having 2 RCE-type filings therein, is a continuation of 09378221 , filed on 08/19/1999
    10690223 , filed on 10/21/2003 is a continuation in part of 09378221 , filed on 08/19/1999
    10690485 , filed on 10/21/2003 is a continuation in part of 09378221 , filed on 08/19/1999
    09496790 , filed on 02/02/2000 and having 1 RCE-type filing therein, is a continuation in part of 09378221 , filed on 08/19/1999
    10780109 , filed on 02/17/2004 is a continuation in part of 09378221 , filed on 08/19/1999
    10785377 , filed on 02/24/2004 is a continuation in part of 09378221 , filed on 08/19/1999
    10791665 , filed on 03/02/2004 is a continuation in part of 09378221 , filed on 08/19/1999
    10791678 , filed on 03/02/2004 is a continuation in part of 09378221 , filed on 08/19/1999
    10881725 , filed on 06/29/2004 is a continuation in part of 09378221 , filed on 08/19/1999
    10884377 , filed on 07/02/2004 is a continuation in part of 09378221 , filed on 08/19/1999
    10796793 , filed on 03/09/2004 is a continuation in part of 09378221 , filed on 08/19/1999
    11006324 , filed on 12/07/2004 and having 1 RCE-type filing therein, is a continuation in part of 09378221 , filed on 08/19/1999
    11000175 , filed on 11/30/2004 is a continuation in part of 09378221 , filed on 08/19/1999
    11080338 , filed on 03/15/2005 is a continuation in part of 09378221 , filed on 08/19/1999
    11093886 , filed on 03/29/2005 is a continuation in part of 09378221 , filed on 08/19/1999
    10664201 , filed on 09/16/2003 is a continuation in part of 09378221 , filed on 08/19/1999
    11264675 , filed on 11/01/2005 is a continuation in part of 09378221 , filed on 08/19/1999
    11685698 , filed on 03/13/2007 is a continuation in part of 09378221 , filed on 08/19/1999
    11692109 , filed on 03/27/2007 is a continuation in part of 09378221 , filed on 08/19/1999
    11758518 , filed on 06/05/2007 is a continuation in part of 09378221 , filed on 08/19/1999
    11768838 , filed on 06/26/2007 is a continuation in part of 09378221 , filed on 08/19/1999
    11775714 , filed on 07/10/2007 is a continuation in part of 09378221 , filed on 08/19/1999
    11838714 , filed on 08/14/2007 is a continuation in part of 09378221 , filed on 08/19/1999
    09379699 , filed on 08/24/1999 and having 3 RCE-type filings therein, is a continuation in part of 09378221 , filed on 08/19/1999
    11838716 , filed on 08/14/2007 is a continuation in part of 09378221 , filed on 08/19/1999

  31. I haven’t read this whole decision, but did the CAFC really just say that hindsight is a permissible rationale for combining references and that KSR and John Deere are inherently overruled?

    I have a hard time believing that the Applicants were arguing that the elements were not present in the art. I’m betting that they WERE arguing that the elements were present, but that no one had combined them, or provided any rationale (other than hindsight) for combining them.

    Did they not address the Applicants’ arguments at all?

  32. Strawberries, Bannanas and nutmeg are all known in the art. That doesn’t mean it is obvious to combine them and use them as a cure for cancer.

    Neither does an admission that those internet or web activities are separately known mean that it is obvious to combine them for a particular purpose.

  33. “Here’s claim 1 as it appears in the published application:

    “1. A method for harvesting professional profiles, the method comprising: Searching the Internet, Identifying web pages and Internet postings containing professional profile data, Collecting said professional profile data, Identifying in said professional profile text strings constituting contact information data, and Storing said Professional Profile and said contact information data into a data structure. ”

    On what planet is that claim non-obvious in view of the prior art circa 2000? Not Earth. Nobody could credibly argue the patentability of that subject matter in 2000.”

    Malcolm, obviously the PTO needs to hire you to find prior art – the claim you quoted was apparently the claim on appeal for which the Examiner apparently could not set forth a proper prima-facie rejection.

    Yes, I know everyone has “gut” feelings about what was obvious or not in 2000 (or 1996, vis-a-vis the priority bar date), and yes, many folks can talk loudly… but it would be much more *helpful* if you would find the prior art (or give the “reason” under KSR for the obviousness) rather than simply verbalizing you feeling.

    There is a reason we have set up due process in this country, and there is a reason why (even if an individual abuses the legal process) we do not let our government gravitate to the lowest common denominator of the populous and do the same. [The solution in those instances is not to give the government a "pass" to ignore due process (because, "By golly, faith need not be kept with heretics, so we can act however we darn-well please with that individual!"); rather, it is to strengthen the legal process against such abuses - which takes a just little more work, and knowledge.]

  34. Get office action with bunches of rejections.

    Notice that several claims have only been rejected for obv. type double pat.

    Call examiner – “can you please confirm that you meant to do that?”

    Ex – “yes, I meant to do that.”

    “so the claims are allowable if I file a TD”.

    “yes.”

    File TD, cancel other claims.

    2 months later get 2nd non-final OA.

    about the 3rd time that has happened.

    PTO is a nightmare of delay.

  35. I agree with Mooney to the extent that what the heck is Linn making such comments in a decision. As Mooney says they are dicta.

    I have no problem with Linn making these comments in a speech before the patent bar, but in a decision it just does not feel right. The CAFC, while reviewing PTO decisions does not have oversite of the PTO.

  36. “The failure of the patent office was in not tossing this garbage out in short order at the very beginning.”

    Word. But at the end of the day, I shed not a tear for this particular travesty of an application.

    Seriously: I doubt anyone at the PTO gives a hoot about Judge Linn’s dicta. I sure don’t. Judge Linn is “concerned”? Why? Why is Judge Linn “concerned” that a total pile of garbola received less than immaculate attention at the PTO? Who cares? Did the prosecuting attorney go all the way to try to expedite this thing? Or are we looking at one of those nutty clients who want the world and won’t listen to reason? I note that the appeal (not the Response) seems to have been rather half-axxed, forcing the CAFC to guess at what the heck is going on. Is that the PTO’s fault, too?

    Frankly, it pleases me to know that the applicants were forced to spend a lot of money trying to foist their baloney on the honest people of the United States. That means they’ll have less money to spend on this sort of bullcr*p in the future.

    This application was filed at the height of the Great Bubble of Crap Patents and is pure baloney from top to bottom. That obviously that didn’t stop the applicants from pushing it like it was the greatest thing since computer-sliced bread (“but our bread is sliced with a COMPUTER, Examiner!!!”).

    Here’s claim 1 as it appears in the published application:

    “1. A method for harvesting professional profiles, the method comprising: Searching the Internet, Identifying web pages and Internet postings containing professional profile data, Collecting said professional profile data, Identifying in said professional profile text strings constituting contact information data, and Storing said Professional Profile and said contact information data into a data structure. ”

    On what planet is that claim non-obvious in view of the prior art circa 2000? Not Earth. Nobody could credibly argue the patentability of that subject matter in 2000.

    What about claim 36 as filed?

    “36. A system for normalizing data from a document containing professional profile data, the system comprising: Obtaining said document, Reading said document, Identifying in said document text strings constituting contact information data, and Storing said professional profile data and said contact information data into a data structure. ”

    Don’t bother searching the dependent claims for an algorithm, folks. You ain’t going to find it.

    And then there’s this:

    “Reuning characterizes the Board’s decision as concluding
    that the prior art fails to teach or suggest three claim limitations: “searching the internet,” “identifying web pages and postings,” and “web pages containing profile data.” After asserting that these three limitations are “allowable,” Reuning points to twenty-eight other claims that Reuning asserts are non-obvious because they each contain at least one of these “allowable” limitations.”

    Try to believe it. Try to believe that someone actually put that argument down on paper and filed it with the Federal Circuit. You wonder why the PTO treated this application like doo-doo? I won’t even bother to address the admission regarding the prior art except to say that such candor is remarkable given the exceedingly low level of creativity that preceded the filing of this application and its claims.

  37. “The failure of the patent office was in not tossing this garbage out in short order at the very beginning.”

    Rat, honestly, the failure of the patent office has been in not faithfully executing the laws – start with 35 USC 2 and 3. Why can’t you see that the role of the PTO is not to formulate policy, or to second-guess the lawmakers or the courts? What we need it is a PTO management that ain’t misbehaving, and one that trusts (and respects) the Constitutional form of government that has been set up in this country. I believe the Founding Fathers were much wiser than you when they divided powers between the branches of government. I hope you weren’t implying (by your tossing this garbage comment) that it is right for the PTO to be the “judge, the jury, and the executioner” in the patent process. Our government simply doesn’t work that way, and never will. If you want that kind of power, I hope you will find another country to “help”, soon. (May I suggest China, so that we who remain stateside can maintain our worldwide IP lead just a little longer? Thx.)

    I believe the inability of the inexperienced PTO management to even know where to begin improving the PTO’s role in faithfully executing the laws has caused it to (perhaps out of necessity, or out of arrogance, or out of boredom, having nothing else “interesting” or “significant” or “impacting” to do) wander into the policy questions that the Constitution reserves to Congress alone. Rat, if the PTO would only find its fulfillment in “faithfully execute the law” and issuing (only) valid patents, then you would see that *most* of the other problems of the patent system would very soon disappear! That would be an executive branch of government working at its very best! You already have the tools and resources to issue valid patents at your disposal – work with those rather than delving into policies that you do not fully understand and *should not* be attempting to control even if you did.

    As Judge Linn said at the ABA-IPL Spring Conference in Arlington, VA, the (single) most pressing current need for the patent system is to provide the USPTO with patent-experienced/qualified leadership.

  38. The concurring opinion also notes that this patent application had been early-on granted a petition “to make special” [which is supposed to give it priority treatment]. That makes these [finally judicially criticised here] long years of PTO delays (with obvious absence of PTO management docket-priority-management), even more inexcusable in this case.
    [Just as in many pending important patent reexaminations, especially inter partes, which the patent statute orders the PTO to handle with "special dispatch," yet the PTO clearly does not.]

  39. re: “If an element is known in the art, then please cite a reference that shows it!”

    Yes. During examination, the examiner should show it (either a reference OR AAPA).

    Here, it sounds like the applicant admitted (at least at this stage) that the various steps/elements ARE all known in the art. Once it is admitted by applicant, there is no need to show additional prior art that ALSO shows it.

    re: “This conclusion misses the somewhat subtle difference between elements being found in the art generally and those found in the cited references.”

    This point is not as subtle as you attorneys want to point out. Actually, it is very clear & easy to understand. They are two different things. And both are ways to show what is, or is not, known by one of ordinary skill in the art.

    Both leave open the question of obviousness to put it all together (assuming no one reference already does). But, both go to the showing that the elements are known in the art.

    Saying that the office has to find what the applicant already admits is known is like saying once a defendant in a criminal case admits to performing the crime they are charged with and pleads guilty that the prosecution STILL needs to then prove beyond the shadow of a doubt that the defendant did the crime. Not necessary. While the evidence, etc., still needs to be collected, it is not necessary to go thru the whole trial to PROVE the facts that were already admitted to. IT is redundant and a waste of everyone’s time & money.

    MVS

  40. does this mean that you no longer need a primary reference; all you need are all of the elements known in the prior art?

  41. What is the “somewhat subtle difference between elements being found in the art generally and those found in the cited references?” Is it the need for a KSR “reason” to combine the elements found in the art generally with the references? Isn’t that a pretty straightforward rather than a subtle difference? I mean that the fact that a reason is required is straightforward, not what the reason has to be or how strong a showing of the reason is required, which don’t seem to be straightforward questions at all. Perhaps I’m missing the mark and Dennis is referring to a subtle difference between applying the reason requirement to admittedly generally known elements and applying it to specific references.

  42. “What scares me is that the distinction *is* clearly lost on some PTO personnel, like e6k, who seem to think that subtle differences like what the PTO has to show versus what an applicant admits are trivialities that can safely be ignored”

    Um, I understand the difference thanks. What I’m saying is that you’ll see cases like I was referring to above where the applicant will say “sure, x y z are known in the art in different pieces of art, but they weren’t known in m configuration” or whatever. I see this all the time. Guess what they’re admitting when they say that?

    “Scarier still is the fact that Judge Linn’s comment seems to have gone straight over e6k’s head, which means that its import is likely to be lost on scores of other PTO personnel as well.”

    I read what he said and it makes perfect sense to me. Nothing all that complicated about it. He says the applicant admitted that elements were known in the prior art and cannot overcome an obvious rejection by arguing that they were not shown in the specific references cited. What you don’t seem to understand is what I wrote above.

    “e6k — If an element is known in the art, then please cite a reference that shows it!”

    Who says I do not? Who says the cases I heard about in the lecture did not? What I said was that the elements were all shown in the prior art, but in different peices of far flung art, and they were still combined together for obviousness (in ways that I would not have held “obvious” even, much less legal obvious, and normal obvious is a pretty high standard to beat). Why are you guys reading things into stuff I say that just are not there?

  43. The failure of the patent office was in not tossing this garbage out in short order at the very beginning.

  44. Didn’t the current administration of the Patent Office think that not reviewing Appeals for procedural reasons was a GOOD idea and still uses it on every Appeal to try to limit what they have to decide on, and bounce Appeals as often as possible?

    What the Judge does not know is this attitude and abject animosity to the Bar permeates every aspect of the current Office and Dudas needs to immediately fire every person directly under him.

  45. e6k — If an element is known in the art, then please cite a reference that shows it!

    What the court apparently did (i.e., hold the Applicant to admitted prior art by estoppel) is no different than an Examiner citing the Background section as Applicant Admitted Prior Art. That’s fine and as it should be.

    But if there’s no reference (including Applicant’s own statement/application) cited at all, prosecution isn’t being advanced. We’re just starting an expensive p!ssing contest (pardon the expression, but nothing else describes it so well) b/w the Examiner and the Applicant. I’d much rather have a good reference I can take to the client to adjust expectations.

    Put yourself in an inventor’s shoes — her “invention” is important to her personally, sometimes both emotionally and financially. She doesn’t want to hear that all her hard work was “obvious.” Often she needs to see proof that someone else beat her to it.

    It’s only fair.

  46. Thank you, Judge Linn, for pointing out another failure of the current administration of the Patent Office. While compliance with the Rules of Practice is of course necessary, the unduly narrow reading, interpretation and implementation of the Rules that so frequently emerges from the Patent Office does nothing but impede progress and “does not promote the fair and efficient administration of justice and is inconsistent with the PTO’s mission ‘to ensure that the intellectual property system contributes to a strong global economy, encourages investment in innovation, and fosters entrepreneurial spirit.’”

  47. patently circuitous, i agree with what you are saying, except for that the prior art combination does not need to teach the elements. It only needs to “suggest” them.

  48. Dennis, read the cited statement carefully: the CAFC didn’t say that the cited references themselves teach the disputed elements. The CAFC said that since the applicant admitted that the elements were known in the art, it is futile for the applicant to continue to argue that the claimed invention is not obvious just because the *cited* references don’t teach the elements in question. In other words, the applicant may be correct that the refs cited by the PTO don’t teach the elements, but since the applicant admitted that these elements were known, the PTO/board no longer needs to find a reference that does teach these elements. So I don’t think the subtle distinction between what the PTO needs to show in a reference and what an applicant admits was lost on the CAFC.

    What scares me is that the distinction *is* clearly lost on some PTO personnel, like e6k, who seem to think that subtle differences like what the PTO has to show versus what an applicant admits are trivialities that can safely be ignored, and that it’s ok for the PTO to fail to do its job – at great expense to applicants, to itself and ultimately to the public – and then gripe later about a self-created backlog. This is precisely the view Judge Linn rejected, far too diplomatically IMHO, in the richly-deserved smack-down that he handed the PTO.

    Scarier still is the fact that Judge Linn’s comment seems to have gone straight over e6k’s head, which means that its import is likely to be lost on scores of other PTO personnel as well.

  49. “This conclusion misses the somewhat subtle difference between elements being found in the art generally and those found in the cited references.”

    No, it reflects the current attitude that if all the elements are known and there is a reason for one to combine then it is obvious. Trust me, I just got through sitting through a lecture all about how the board is now upholding more and more decisions where the old “the elements are in art that isn’t combinable” argument is used to no effect. Art being pulled with little or no similarity in the scope of the art, nor even field of endeavor, and certainly no explicit motivation, and then combined. Which actually, that’s pretty much the way I would have thought the system should, and did work before I got here. Then of course I was introduced to the concept of this subtle difference (aka bs). One of ordinary skill has had his ordinary creativity and observation skills spat upon for too many years now already wouldn’t you agree good sir?

Comments are closed.