Patently-O Bits and Bytes No. 51

  • Business Method Public Scrutiny: Peer-to-patent public review of pending applications is expanding to Business Method Patents. [PTO Press Release][ http://www.peertopatent.org/ ] .
  • CAFC Calendar: Check out this calendar before planning your next DC trip – Perhaps you can work-in a visit to the CAFC while it is in session. [CAFC Calendar].
  • Triway Pilot Program: The USPTO, EPO, and JPO are beginning a pilot program to share work. In this program, each office will conduct searches and the results will be shared. [LINK].
  • Public PAIR Access: Although file histories are an integral part of patent analysis and are often useful as prior art, the PTO offers no search tools for PAIR access. Furthermore, the PTO has thus far prevented companies from using automated engines to obtain bulk data in order to create an accessible database. Here is the PTO’s response so far: “There are no immediate plans to remove the CAPTCHA restriction. However, we are evaluating a solution that will ease the restriction and permit limited automated access. The USPTO is committed to providing access to public data, and recognizes the urgency in implementing support for both interactive and automated access to Public PAIR. The USPTO will keep you informed and involved as we continually work to improve access to public patent information contained in the PAIR system.”

73 thoughts on “Patently-O Bits and Bytes No. 51

  1. I feel that a computer should be considered a view screen with a multitude of different options that can be accesed by different methods and procedures also optional equipment can be added there for it is far from a general purpose machine its one of the most advanced machines on the planet and each new type of program should be protected by patents.Also each new functional ability should be protectable this retardive decision will stiffle invention in yet another field of invention

  2. I thought you didn’t like money – Mooney.

    Anyway, with your bitter attitude about people in Aspen, you could be sitting on a pile of money and you would still be poor.

  3. Stop the presses!

    Mooney actually said: “frankly i’d like to see the file history”

    I think Mooney is actually learning something on this blog. Its so rewarding watching Mooney grow. Now if we could only get him to shut up and actually spend some time reading one of those file histories.

  4. The only thing one could glean from the conversation in this thread is that a lot of patent attorneys don’t know the diferential difference between the phrases ‘pro se’ and ‘pro bono’, which means ‘for free’. Also patent attorneys like to get giddy when someone uses a porn surname. You guys are a trip- but sure are fun to read.

  5. “Fact is, most of my applications are just people practicing the art in no special capacity.”

    Sort of like my clients.

    The only difference is that they are closer to a big pile of money that isn’t carefully guarded. If only I could get access to that money, I could file my own patent applications. A method of influencing USPTO policy decisions via the Internet, comprising … oh my, the possibilities are simply endless! I suppose I should wait until filing before disclosing this stuff.

  6. “I fail to see how a bachelor’s degree and having read a few thousand patents makes you one of skill in the art. One of skill in the art DESIGNS things, I would think. Being able to comprehend someone else’s design, and being able to design on your own, are completely different things.”

    And Lowly, this is what really seals the deal. No wonder I feel as I do, I have personally designed things that were “useful”, I suppose I should have gotten a patent on it, right? Well, I don’t know about that, but I most likely could have. I have also personally “designed” software used in manufacturing. I have also been involved in the design and software design of a product that, were its market larger, would be a nice little product for some $$$. So apparently now I’m a person of skill, POSHITA or an expert?

    I wouldn’t say all that, but like I said, I’m perhaps a journeyman, maybe that is what POSHITA is? There are many applications that I get that are above what I could do, this is for sure, it would take a whole team of people a long time to make it. The problem is, there are a great many more that are right at what I could design, or something I could design something better than. Fact is, most of my applications are just people practicing the art in no special capacity.

    And besides, what’s better about the POSHITA test than the expert test, except for people like pds, or people he knows, who are incapable of thinking believing that the expert test creates an elitist system? Some examiners on here don’t even think they’re a POSHITA, which I suppose might be just below a journeyman, how can they know what’s obvious to a POSHITA if they can’t know what’s obvious to an expert?

    I should add, just fyi, I took enough grad classes as an undergraduate student to take care of 1/2 of the credits for the field specific classes in a graduate program in my field if I had pursued it, so I might be above the bs level. BS (with all C’s and D’s?) seems to be largely accepted as being nearly POSHITA it seems in my art.

  7. pds writes “It is probably because I hang around different attorney circles than other attorneys on this board”

    there are other like minded attorneys here; you are not alone

  8. “nobody (with any sense) is going to be scared enough to take a license on clearly unpatentable subject matter”

    Who can argue with that?

    Likewise, nobody (with any sense) is going to believe that they can buy a house in Irvine for $650,000, take out hundreds of thousands of dollars in home equity loans, then flip the house for $1,100,000 in a few years and walk away.

    And then there’s the United States where people earn money by leading “educational” rafting trips down the Grand Canyon where the passengers learn that the entire thing was created in one day about 6,000 years ago.

    “Simply put, writing good claims isn’t easy.”

    Either is kicking an extra point. But even amateur kickers do it routinely and when they start effing up, they are terminated and nobody makes up excuses about how hard it is. They just find someone with the discipline and skill to get it done right.

  9. “Anyhoo, while I think you should be aggressive about claiming, being so myopic that you don’t see that a claim covers obvious prior art is just bad practice (if a lawyer actually wrote those claims).”

    It is probably because I hang around different attorney circles than other attorneys on this board (particularly the ones that complain about attorneys trying to intentionally overclaim an invention), but nobody I know would claim something that they knew to be anticipated or blatantly obvious. Honestly, it would never cross my mind to do so. The claim would surely be rejected and nobody (with any sense) is going to be scared enough to take a license on clearly unpatentable subject matter.

    Similarly, when good art gets cited, I either amend or drop the claim. I have no desire to fight a clearly losing battle, and I haven’t had a client ask me to either.

    The reason I think one of the reasons for “overclaims” is that some patent attorneys (and inventors), while familiar with the art in their “space,” aren’t familiar with the art in adjacent spaces. One might think that the claims are sufficient to overcome what you think is the closest prior art. However, the claims could be sufficiently broad to bring in prior art that you didn’t even think of.

    Simply put, writing good claims isn’t easy. You don’t want to claim unnecessary features on one hand, but on the other hand, you need enough structure to provide sufficient context for the claim. This is a very delicate balancing act, even for an experienced attorney. What happens is that someone gets overzealous in removing an unnecessary limitation and, in so doing, brings in a whole slew of prior art that was never considered.

  10. Just because the assignee information field is indicated as “pro se” doesn’t mean the individual is not represented by counsel (ie, some legal brain trust might have been responsible for those claims). “Pro se” doesn’t seem an appropriate reference for an assignee anyway.

    Anyhoo, while I think you should be aggressive about claiming, being so myopic that you don’t see that a claim covers obvious prior art is just bad practice (if a lawyer actually wrote those claims).

  11. Malcolm wrote:

    “First of all, what the hell is a “pro bono inventor”? Is that like a “pro bono tax return filer”? I can’t even find a google referencee to the term.

    Second of all, the answer is no, your little run-around was not “surely more egregious” and frankly i’d like to see the file history because it seems likely to me that you effed it up if you had to appeal to fix that mistake. Use the phone.”

    First, the OP clearly meant pro se – no need to be a Dick about it.

    Second, the Examiner’s rejection is surely more egregious, and while it has not happened often, I have had to go to appeal a few times to make the Examiner recant his rejection. One time, an examiner came back with a killer 103, which, if he had been doing his job properly, he could have produced before I made him go to appeal.

    Granted with the new pre-appeal brief arguments you can make, I have now had four out of four NOA’s that resulted in reopened prosecution, so the problem is not as bad as it used to be.

    Regardless, I have seen examiners go to the wall on a clearly inadequate reference a number of times. I assume it’s the PTO’s unrealistic production goals.

  12. “I would assume that excessively broad claims are easy to reject.”

    But it doesn’t matter what you assume, or whether they are easy or hard to reject.

    What matters is that inventors sign an oath and applicants have a duty of candor and good faith when dealing with the PTO. When your claimed invention is **inarguably** reading on stuff that wasn’t invented (and probably reads on stuff that is **admitted** to be old in the background), then we have either reckless disregard of the rules or plain dishonesty.

    Which is it? Again: it’s not terribly important. What’s important is that the rulebreakers get punished with appropriate severity so the odds of it happening over and over and over again are reduced to nearly zero instead of close to 100% (i.e., the present situation).

  13. “I think that you want to be careful about mentioning “Peter North” and “sticky” in the same sentence. :)”

    that was purposeful ;)

  14. “HAHAHAHAHAHAHAHAHAHA, start by complying with 112 for us lowly.”

    My client’s sign a declaration. They have never told me that they wouldn’t sign the declaration because my claims are not the subject matter of their invention.

    You need to get off your soapbox about 112 and dependents. Nobody cares and it will never, ever, be how you want it to be.

  15. haha – good call. I actually replied to Lowly on that one but it got blocked and is waiting for DC’s approval…

  16. “Lowly”,

    I think that you want to be careful about mentioning “Peter North” and “sticky” in the same sentence. :)

    MVS

  17. “One example would be to observe experts doing the exact same process to make a product out of x material instead of z material both of which belongs to y genus.”

    Expert what – expert examiners? I don’t see how you can observe experts while you are sitting at your little desk thinking you are where it’s at in the world of patents.

  18. I would assume that excessively broad claims are easy to reject. The examiner quickly locates two or three dead on references and makes alternative 102 rejections. I was just looking on Public Pair yesterday at an application which had been published a couple of years ago to check on its status. The first (relatively short) OA was alternative 102 rejections, no response was filed and the case went abandoned. And now my client has the benefit of the disclosure of the application (and the cited 102 art) to design help him design his product.

  19. “Hey, look, it’s our resident lying tool and exceptionally proud commenter, pds, once again starting his comment with a potshot at yours truly.”

    MM … who doesn’t take pot shots at you? Come on … we’ve got a separate private board set up to just to tally the results and comment on who got the best shot in. There is also a thread on “most asinine MM comment of the week” and we’ve got prizes for best slam of MM in a thread. I’ll have to double check, but I think we get higher traffic on that board than this board gets. Most of us only come over here to get our potshots in and then go back to the other board to laugh at them.

    We also have a yearly contest going, and I was way behind for the year, so I had to step it up recently. However, like it has been for a couple years, the mantle of best MM basher gets passed along from one person to the next quite frequently. I might have a hot steak going now, but I’m sure somebody will step in when I get bored.

    BTW: We were thinking about starting a 6K board as well, but decided not too. There isn’t much sport in shooting fish in a barrel.

  20. “And anyone who thinks the claims being ridiculed above are out of the ordinay needs to read more applications.”

    I would never file such crap. Then again, I usually get my client’s applications allowed…

  21. “The fee argument is a joke, because more fees doesn’t translate into proportionally more time or proportionally more examiners.”

    That’s the PTO mismanagement’s fault. More application should = more money which should = more examiners hired.

  22. Anyone who thinks examiners have time or incentive to d*ck around with attorneys “out of spite” has zero clue about how the Office operates.

    The fee argument is a joke, because more fees doesn’t translate into proportionally more time or proportionally more examiners. For the former, you file giant applications with ### claims, pay $$$ extra fees, and get the same 10 hours of examination. For the latter, you file more and more applications and the backlog balloons because the hiring rate isn’t in line with fee income.

    And anyone who thinks the claims being ridiculed above are out of the ordinay needs to read more applications. And pds, the Cisco claim you cited at 09:21 AM is a joke also, especially given that it has a filing date of October 2007. Run that by any IT administrator and see if they can keep a straight face.

  23. “Surely that more egregious than some pro bono inventor who doesn’t know how to write claims.”

    First of all, what the hell is a “pro bono inventor”? Is that like a “pro bono tax return filer”? I can’t even find a google referencee to the term.

    Second of all, the answer is no, your little run-around was not “surely more egregious” and frankly i’d like to see the file history because it seems likely to me that you effed it up if you had to appeal to fix that mistake. Use the phone.

  24. Lowly said ” We are supposed to work together to carve out the legal rights an applicant is entitled to, not fight each other out of spite.” I agree, Lowly, but those days may be behind us because of current PTO management.

  25. “Classic MM. He finds a pro se applicant with a very broad independent claim, which arguably isn’t directed at the inventive aspect”

    Hey, look, it’s our resident lying tool and exceptionally proud commenter, pds, once again starting his comment with a potshot at yours truly. I’ll try to respond without irritating all his stalwart fans out there in internetland.

    In fact, I did not search for the garbage claims I posted above. I merely clicked on Dennis’ link to the peer-to-peer patents, I saw an application with an interesting title, and voila! there was a garbage claim. If anyone thinks that’s a “coincidence”, well, they are simply clueless.

    As I’ve said before, nobody has to look very far to find published applications (or even granted patents) that recite claims that shout out “crap!” Likewise, nobody has to look far for a deluded huffer to argue that the problem of bad patents is a “myth” and a result of “selection”. Nine times out of ten, these deluded huffers are self-interested software and/or computer types.

    “a very broad independent claim, which arguably isn’t directed at the inventive aspect”

    LOL. How unfair of me to discover a claim that “arguably isn’t directed at the inventive aspect”!

    Rule 56 says that each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office. How is filing a claim that “isn’t directed at the inventive aspect” of the invention complying with that duty?

    Either the applicant (who in the pro se case is certainly one of ordinary skill in the art) has a sincere belief that he invented the claimed subject matter or he lied when he signed the oath.

    So, let’s take the inventor who signed the oath saying that in 2008 he believed he was the first to invent “An algorithm to be used as a subroutine or otherwise, in a computer program in an electronic system for playing the card games of poker”. Was the inventor acting in “candor and good faith” when he signed the oath of inventorship?

  26. “You have an examiner’s knowledge, which means that you know how it all works in general and can understand descriptions of the subject matter easily enough… but that’s a little different than actually designing the stuff and solving problems.”

    L O L. I’ll tell you what makes me think that I’m nearly an expert (notice that I do not currently consider myself one yet. Maybe a journeyman?). The RAMPANT stupidity and ignorance that shows up every day in things I read and in conversations I have with others. I’ve talked to the experts in my field. Worked right along side them. I work with some of them now. I know them. I’ll be one soon enough if I stay in the field, and trust me, it’s not that hard to see what would be obvious to an expert compared to a “POSHITA”. Let’s say you have a process flow right? You notice, by doing routine quality tests, that after a certain step is performed some part of the product is affected in a negative way. What are your options for getting rid of the negative effect? Change or omit the step. Could the step be done prior to it’s normal time and would it result in the same thing, perhaps without the negative effect? Perhaps be done later? All these are questions that immediately come to mind to an expert, and from what I’m told POSHITA generally isn’t smart enough to think through these basic things without someone spelling it out for him to do so.

    I routinely have attorney’s make the argument that x might be obvious to an expert but not to a POSHITA, and sometimes they’re right.

    “e6k, what is your basis for saying that the fee covers 1/4 of the cost of the examination? My understanding was that the patent office was fully funded by fees.”

    Some report management released showing where the funding comes from. Your “application” is subsidized from the very beg. by other people’s maintenance/issue/petition/etc. fees. You really think it costs 180$ to review a petition?

    “if you aren’t an expert, then you shoudn’t be inventing. That’s going to go over really well with the populists.”

    Well, not really, you just have to come up with something that isn’t obvious to an expert. Just like the experts do.

    “One question – how does an examiner know what is/was obvious to an expert, or even a POSHITA? Examiners are neither expert or a POSHITA (unless you count reading specifications and coming up with bone head objections as an art).”

    One example would be to observe experts doing the exact same process to make a product out of x material instead of z material both of which belongs to y genus. The expert knows that any of the materials in y genus could be used in his product instead of x, but the POSHITA requires “motivation” to combine a reference showing z that belongs to y and would be GOOD to substitute for x. There are about a million more of these.

    “We are supposed to work together to carve out the legal rights an applicant is entitled to, not fight each other out of spite.”

    HAHAHAHAHAHAHAHAHAHA, start by complying with 112 for us lowly.

    “No they aren’t. The USPTO has over a billion dollars in escrow. They have all the resources they need.”

    Resources = more than dollars. You must have no idea what it takes to run a business. I’ve never even done it and I know it takes more than $ and “customers”.

    And hey, I’ll propose instead of a 2000$ fee just straight up for sending in a bad claim, an invitation to pay 2000$ to have it examined. Congress can fiddle with the fee and find the sweet spot.

  27. Malcolm, can I get a penalty against the Examiner who gave me a 102 rejection when all the elements weren’t in the reference, because the missing element was just so obvious to him? In fact I want two penalties, because he made me appeal it! Surely that more egregious than some pro bono inventor who doesn’t know how to write claims.

  28. “I fail to see how a bachelor’s degree and having read a few thousand patents makes you one of skill in the art.”

    Read the claims I referred to in my 1:59 and 2:45 pm posts yesterday. I think most high schoolers with a computer class are skilled enough to evaluate those claims for novelty and obviousness.

    Stop the lying, people. Get your heads out of the sand. There are a lot of sad losers out there filing pure crap and everybody knows what art units they are filing in and why.

  29. “Am I the only one that thinks it is absurd to pass a law punishing pro se inventors that file garbage claims? They won’t know the law exists, or that the claims are garbage. Deterrence = zero.”

    Of course you know that the IRS and police do not share your views on ignorance of the law.

  30. “6k’s attitude seems to be prevalent amongst examiners nowadays. It is quite sad. We are supposed to work together to carve out the legal rights an applicant is entitled to, not fight each other out of spite. ”

    Examiners don’t have the time to fight ‘out of spite’. The PTO production system simply doesn’t reward such harmonious interactions. This is doubly so with the “Reject! Reject! Reject!” mentality.

  31. DC wrote: Here is the PTO’s response so far: “There are no immediate plans to remove the CAPTCHA restriction. However, we are evaluating a solution that will ease the restriction and permit limited automated access. The USPTO is committed to providing access to public data, and recognizes the urgency in implementing support for both interactive and automated access to Public PAIR. The USPTO will keep you informed and involved as we continually work to improve access to public patent information contained in the PAIR system.”

    Does anyone know how we are being kept informed and involved about this?

  32. “Ah Lowly, I have just seen your question. It’s a very valid one! I actually used to be an examiner (not at USPTO), and there is no way I would have ever admitted to being either an expert or POSHITA. 6k has an interesting take on this whole examination thing – one which is all too common with examiners in my view. It’s like they see examination as a battle, and they actually like making things as difficult as possible for attorneys and applicants. Never could figure out why really…..kind of why I left!”

    Peter North… your user name just made me spit out my coffee. Now I have a sticky keyboard. Thanks.

    6k’s attitude seems to be prevalent amongst examiners nowadays. It is quite sad. We are supposed to work together to carve out the legal rights an applicant is entitled to, not fight each other out of spite.

  33. Question from Europe: doesn’t the inventor set the PHOSITA scale when writing the app? If it is written for reading by a laboratory technician, then a lab tech is deemed the addressee, the PHOSITA. Conversely, if inventor writes for an audience of post-docs, then the PHOSITA should be taken as a post-doc. Issues of what is enabling, and what is obvious, then follow, after cross-examination on 1) who shall be the intended addressee and 2) what is obvious, or enabled, for that person. Seems fair to me, to hold inventor accountable, yet give her full faith and credit. Did not the CAFC once write “Be careful what you ask for” Might they not now add an addendum “And think about how best to ask for it”?

  34. Ah Lowly, I have just seen your question. It’s a very valid one! I actually used to be an examiner (not at USPTO), and there is no way I would have ever admitted to being either an expert or POSHITA. 6k has an interesting take on this whole examination thing – one which is all too common with examiners in my view. It’s like they see examination as a battle, and they actually like making things as difficult as possible for attorneys and applicants. Never could figure out why really…..kind of why I left!

  35. Difficult to argue with pds from Europe, where P2P has been an obscure feature of our landscape since 1978 (Article 115 EPC) and referred to from the beginning as “The Poor Man’s Opposition”. Serious players use it, occasionally. Once in a blue moon, it kills an application. Sometimes it nudges an Applicant towards an amendment path that tees the patent up for a killer opposition later. It’s a nice tool to have in the box, and deserves to be there, in the public interest. Curious that it has never been more popular, because there is no fee, the observer can remain anonymous, and it is mandatory on the EPO to delay progress to issue, to allow Applicant to comment on the 3rd party observations.

  36. “One question – how does an examiner know what is/was obvious to an expert, or even a POSHITA? Examiners are neither expert or a POSHITA (unless you count reading specifications and coming up with bone head objections as an art).”

    I just posed that very question to 6k. I await his response. I fail to see how a bachelor’s degree and having read a few thousand patents makes you one of skill in the art. One of skill in the art DESIGNS things, I would think. Being able to comprehend someone else’s design, and being able to design on your own, are completely different things.

    I can understand analog circuit design and can read a schematic and figure out what it does. I have formal education and have worked on god knows how many patents involving this subject matter. However, I never worked as an analog designer and have no experience as such. I could not design an analog circuit worth much.

  37. “Raise obviousness standard to ‘expert’ instead of ‘POSHITA’? What’s everyone’s opinion?”

    Good luck with that one, which has to bevchanged by Congress. I can see the editorials now about how Congress is making intellectual property the province of the elite … if you aren’t an expert, then you shoudn’t be inventing. That’s going to go over really well with the populists.

    How about this … if you aren’t up for consideration for a Nobel prize on your invention, then it really isn’t inventive.

    Keep those suggestions coming 6K ….

  38. One question – how does an examiner know what is/was obvious to an expert, or even a POSHITA? Examiners are neither expert or a POSHITA (unless you count reading specifications and coming up with bone head objections as an art).

  39. Classic MM. He finds a pro se applicant with a very broad independent claim, which arguably isn’t directed at the inventive aspect, and jumps with glee pointing “See!!! See!!! I told you there was a wolf out there!!” However, the alleged wolf is just a malnourished, mangy mutt in his last days.

    Is it possible that a patent will never issue on this application? I would say a very good possibility.
    Is it possible that a patent could issue on this application? Maybe not a great chance, but I wouldn’t discount it (there might be a nugget or two in the spec that might be patentable).
    Does the USPTO really need any help finding prior art on this? I very much doubt it.

    In going through the patents listed, I found U.S. Patent Publication No. 2008/0104321 (assignee is Cisco). This first claim is as follows:

    1. A method comprising:
    receiving, at a virtualizer, a write command from an initiator in a storage area network, wherein the storage area network includes the initiator and a plurality of mirrored storages;
    sending, from the virtualizer, a write command to the plurality of mirrored storages;
    receiving, at the virtualizer, a transfer ready message from a first of the plurality of mirrored storages;
    sending a transfer ready message from the virtualizer to the initiator in response to the receiving of the transfer ready message from the first of the plurality of mirrored storages;
    receiving, at the virtualizer, a data message from the initiator; and
    sending, from the virtualizer, a data message to the plurality of mirrored storage once transfer ready messages have been received from each of the plurality of mirrored storages.

    I’m not really sure what this does (I didn’t read the spec), but this is far more comparable to the types of applications I see on a day-to-day basis than MM’s example.

    The problem with the peer-to-peer project, as I’ve noted before, is that its “novelty” will wear off after awhile. People are eventually going to get bored with it, and when you change the number of patents from a couple hundred to a twenty thousand, there will be a lot of patents that will be ignored. Moreover, the ones with the most activity are likely going to be the ones in which the prior art is easiest to find.

    I’m not saying that this project should not be continued. It is essentially harmless, and if the occasional good piece of prior art is found, then so be it. However, I wouldn’t be pinning any great hopes on it.

  40. Thanks Wasn’t. Could it be that those poor abused USPTO Exrs have to cope with some prosecutors who really want to receive restriction requirements, so deliberately provoke them. Hadn’t thought of that.

  41. MaxDrei,
    That’s a straightforward restriction requirement. Only Europe-U.S. difference on that one is that the EPO Examiners go out for a beer after, and the PTO Examiners run to the blogs and complain how hard their lives are.

  42. “Nah I let many things go that would have been obvious to an expert Lowly.

    And hey, not all applications are like this one, but it’s a rare beauty that is far from it. Be honest Lowly, I don’t really mind that they send in a bad ind. Far from it. I could dispose of this type of sht all day long if not for the mountain of dependents that follows. It’s the combination of a bad ind. AND a mountain of mostly just as worthless deps that pisses me off, and them having pad a fee that covers ~1/4 of the cost of examination makes no difference. Trying to “test my mettle” or whatever you want to call it is a ridiculous practice that needs to be quashed beneath an iron boot.

    Tell you what, I might start posting a few claims from some buddies who I work with. Probably about 10% or less of the readership would appreciate the obviousness/lack of novelty of the claims though.”

    How do you know what’s obvious to an expert, or one of ordinary skill in the art? You are likely neither. You have an examiner’s knowledge, which means that you know how it all works in general and can understand descriptions of the subject matter easily enough… but that’s a little different than actually designing the stuff and solving problems.

    Where do you get the 1/4 figure from? I think that’s entirely incorrect. However, perhaps you should talk to your buddy Dudas and tell him to lobby to stop fee diversion and get the PTO a whole bunch more money.

    By the way, nobody is trying to test your mettle. Practitioners could give a crap about you. They want to get a broadest patent coverage available under the law for their client. That said, the claims posted clearly show how far some practitioners are going off the deep end. (I really hope those claims are by pro se inventors).

    By all means, post up some claims. Of course, make sure they are from a published application ;) I have no doubt that you have some awful ones like the ones in this topic. However, in some you may be not appreciating the invention. I’m currently going around and around with an examiner on a certain software patent. At first glance, the claims appear to be nothing special and perhaps obvious. However, when you read it, think about it, and fully appreciate what this thing is doing, it’s quite unique and I’ve never heard of or seen anything like it. (to be honest, I don’t know why anybody would WANT this piece of software, but that’s not for me to decide or care about) The examiner is making a terrible 103 over four patents that are not properly combinable because he’s just not appreciating this thing. I’ll end up appealing.

    (and for the record, software is not ‘my’ area. i have a masters degree in electrical engineering, although i draft and prosecute patents in a wide variety of areas)

  43. Question: when a zillion dependent claims follow an egregiously old independent, what’s to stop the USPTO adopting the EPO rubbish clearing technique? Examiner reports that claim 1 is manifestly lacking in novelty, and so provides no generic definition linking up the subject matters of the dependents. Thus, what is in fact claimed is a plurality of different inventions. For one search fee, dear Applicant, you only get one invention searched, namely, the one claimed earliest in the succession of dependents, and here’s your search report. If you want other claims searched, go file a divisional. Isn’t that an effective deterrent to claiming an untenably broad independent claim?

  44. Am I the only one that thinks it is absurd to pass a law punishing pro se inventors that file garbage claims? They won’t know the law exists, or that the claims are garbage. Deterrence = zero.

  45. “Malcolm, do you really support applying penalties to pro bono applicants?”

    Sure, just like I support applying penalties to pro bono tax evaders. I’d prefer that they’d apply them to those who can actually afford to pay the penalties but they should be applied regardless.

  46. e6k, what is your basis for saying that the fee covers 1/4 of the cost of the examination? My understanding was that the patent office was fully funded by fees.

    Malcolm, do you really support applying penalties to pro bono applicants?

  47. Professor Crouch is preparing to assess you a $2000 penalty, Malcolm, for posting a stoopid suggestion on his blog.

  48. My suggestion is the “iron boot” that e6k referred to.

    Specifically, filings that contain claims that are so broad they “shock the consciences” of ordinary artisans should be subject to monetary (or other) penalties. It’s frivolous and abusive behavior and it doesn’t matter that these people are paying a “filing fee”. The resources are limited and are intended for examination of credibly patentable inventions, not ridiculously broad and plainly invalid baloney. Give Rule 56 some teeth. Start charging extra money (say a $2000 penalty) for submitted claims that *nobody* could credibly argue are invalid.

    You’ll see those claims disappear in no time.

    Otherwise, the PTO has no choice but to keep raising the fees until at least the relatively poor trolls just give up.

  49. As stated above, the Applicants paid for examination and they are thus entitled to it. The focus should be on providing the proper tools to the examiners. I am not an examiner but I would guess that improvements to the classification system are needed and maybe additional search software such as the EP examiners have. What else would you examiners suggest?

  50. I agree with Lowly and Anon-Inhouse that these folks paid for examination and should get it. The focus should be on providing the proper tools to examiners so they can as quickly as possible nix these very broad claims. Quick count, quick disposal, quick movement of apps.

    Also, Patent Prospector had an interesting article a while back about peer to patent, noting that scaling up the program could pose some issues. See: link to patenthawk.com

  51. “Instead of running around getting his picture taken, Dudas should be focused on how to institutionalize”

    He was doing diamond pushups sweating and drooling/spitting on the gym floor today. What can I say? He’s the man.

  52. Nah I let many things go that would have been obvious to an expert Lowly.

    And hey, not all applications are like this one, but it’s a rare beauty that is far from it. Be honest Lowly, I don’t really mind that they send in a bad ind. Far from it. I could dispose of this type of sht all day long if not for the mountain of dependents that follows. It’s the combination of a bad ind. AND a mountain of mostly just as worthless deps that pisses me off, and them having pad a fee that covers ~1/4 of the cost of examination makes no difference. Trying to “test my mettle” or whatever you want to call it is a ridiculous practice that needs to be quashed beneath an iron boot.

    Tell you what, I might start posting a few claims from some buddies who I work with. Probably about 10% or less of the readership would appreciate the obviousness/lack of novelty of the claims though.

  53. “setting up a special research team to build a compendium of standard art to apply against crappy claims” — I think I like that AllSeeingEye

  54. OK Mooney, for once I will agree that this claim, pretty much on its face, is bogus. I hope they find a few meaningful limitations to throw in before it issues.

    Instead of running around getting his picture taken, Dudas should be focused on how to institutionalize the ability to easily reject these sorts of claims by setting up a special research team to build a compendium of standard art to apply against crappy claims. Good Examiners do this already, the PTO on an art unit-by-art unit basis should institutionalize this practice.

    However, due to its uncertifiability, wiki-style examination is NOT a great idea. Better to find certifiable art. For the above type claims, textbooks would be a great start.

    Someone thought being in the Top 50 most influential people in IP was a compliment. What that someone didn’t realize is that it was like Yassir Arafat or Saddam Hussein being named Man of the Year. It was only based on his proven ability to do a lot of damage.

  55. “Raise obviousness standard to “expert” instead of “POSHITA”? What’s everyone’s opinion?”

    Wouldn’t change anything but a word you use in your 103 rejections ;)

  56. “It is interesting to see you all ripping on these types of claims. It appears that it is OK when you all do it. When examiners, or other PTO personnel, complain about this type of garbage that we have to waste our time on, we get B$ answers back that if the claims are so bad then it should be easy to find prior art for them. Even if it is (which it isn’t always easy to find even though “we all know it has been done”), it still takes a lot of time to examine these case and takes away time, and produces more delay, for “real” inventions. And, based on what you all have said above, you clearly do not think these are “real” inventions.”

    I would never draft such a claim and would never sign my name to this crap. However, these applicants PAID for examination. It doesn’t matter how awful these applications are — they should just be rejected. I have no problem with 140,000,000 of these being filed, as all applicants have paid the fee.

    I get angry at 6k’s whining about having to examine these patents, and I get angry at his broad assertions that all applications are of this dubious quality. If he posted up a claim, such as these, and ragged on it, however, I would join in with him.

  57. MVS I believe those cases are pro se.

    Raise obviousness standard to “expert” instead of “POSHITA”? What’s everyone’s opinion?

  58. It is interesting to see you all ripping on these types of claims. It appears that it is OK when you all do it. When examiners, or other PTO personnel, complain about this type of garbage that we have to waste our time on, we get B$ answers back that if the claims are so bad then it should be easy to find prior art for them. Even if it is (which it isn’t always easy to find even though “we all know it has been done”), it still takes a lot of time to examine these case and takes away time, and produces more delay, for “real” inventions. And, based on what you all have said above, you clearly do not think these are “real” inventions.

    Is this a case of “family” (other attorneys) being able to bash one of their own, but outsides (non-attorneys) get trashed if they try to do it?

    MVS

  59. This wiki-style patent examination is a fantastic idea. It allows industry to police itself and prevent garbage patents, and if your application survives it is likely a rock-solid patent. However, I’m afraid this idea is simply too innovative and revolutionary to ever get implemented. Wouldn’t implementation require a law change, not just USPTO rule change? Neither the USPTO nor Congress generally comes up with any good ideas.

  60. I am not as worried about those claims because they are simply in an application. If they were in an issued patent, then I would start to be concerned and embarrassed. For example, claim 1 of 2008/0076502

    1. An algorithm to be used as a subroutine or otherwise, in a computer program in an electronic system for playing the card games of poker.

    We have all seen our share of pro se applications that just make you laugh, but there is no sense in wasting much thought on them unless they start to issue.

  61. “Those two claims are embarassing.”

    No – the existence of claims like that and the nearly hysterical defense of such claims by a substantial number of “inventors” and patent attorneys are a threat to the continued existence of the current patent system because they make people like me want to see scorched earth reform on the system.

  62. It looks like David Daryl Couts is one of those super genius guys who invents stuff left and right. Here’s claim 1 from his recently filed USPTO Patent Application 20080168371:

    1. A method of selecting an ad provider for a computing device, the computing device having a display and the ad provider involved in a process of providing ads for display on the display, the method comprising: providing a user interface on the display, the user interface configured to allow selection of an ad provider; receiving an indication of a first ad provider; and storing data corresponding to the first ad provider in a memory associated with the computing device.

    Does anyone honestly think that it is possible for a technically experienced fellow like David Daryl Coutts to not recognize that his claimed invention has … issues? I mean, is it possible for a professional computer geek to have a sincere belief that the above claim is a new invention?

    Just curious.

  63. Interesting. You might as well throw in an additional step or two in the method, such as “eating a ham sandwich.” Such a step would be no less connected to the others than the first step “sending identity information to a first server,” and it might help with respect to novelty and non-obviousness.

    Seriously – the sending of identity information is apparently unconnected to everything else. It could occur weeks earlier, twelve years later, who knows… Similarly, the inventors probably intended that the step of “playing the video file” was to be done according to the schedule, but the claim doesn’t say that.

    Perhaps Daryl and Steve could have used some professional help? (Leaving aside the obviousness issues.)

  64. I’m just a sad loser with a Ph.D. in biochemistry and a law degree but I had to peak at one of those applications up for peer-to-peer to review:

    Pre-Grant Publication Number: 20080134090
    Systems and methods for information presentation
    Filing Date: November 28, 2007
    Priority Date: November 29, 2006
    Inventors: Daryl David Coutts, Stephen Harrison Johnston
    Assignee: Pro se
    Current U.S. Classification: 715, 715/810000

    Claim 1. A method implemented on a computing device with an associated display, the method comprising:
    sending identity information to a first server;
    receiving information corresponding to a video file from one of the first server and a second server;
    scheduling one or more actions at a first time corresponding to first scheduling information, the one or more actions including the action of playing the video file; and
    playing the video file.

    Now, I’ve been told that I lack the qualifications to opine on claims in this art unit. Nevertheless, I do have a very strong opinion about the novelty of this claim.

    I think this peer-to-patent system has a lot of potential. More information should equal fewer garbage patents. All submissions of information and prior art should be anonymous, for obvious reasons.

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