BPAI Again Rejects System Claims under Bilski

Ex parte Atkins (BPAI 2009)

The BPAI has again raised the issue of Post-Bilski patentable subject matter sua sponte. Like most claims challenged under Section101, Atkins claims also have serious nonobvousness and indefiniteness problems.

Atkins claims a method of “converting a unidirectional domain name to a bidirectional domain name.” In reviewing the claim under Bilski, the BPAI noted that the claims do not “recite any machine or apparatus or call for transforming an article into a different state or thing. A domain name is simply a series of characters representing the address of a resource, such as a server, on the World Wide Web. All of the steps are data manipulation steps.”

Atkins also claims a parallel “system” for converting the domain name. The BPAI rejected the system claims under Bilski since “those claims encompass any and all structures for performing the recited functions. As a result, [the system claims] are at least as broad as method claims … which we have determined recite patent ineligible subject matter under Bilski.”

145 thoughts on “BPAI Again Rejects System Claims under Bilski

  1. For a reissue, you can simply say you claimed more than you were entitled and submit amended claims including whatever machine/transformation you care to come up with (assuming supported by the spec). There is no need to cite to Bilski or any other case.

  2. Most of us seem to agree that you cannot request a re-exam based on Bilksi, but isn’t it also the case that most patentees won’t be able to request re-issue either? Is relying on State Street an error in the sense required to request re-issue?

  3. Wikipedia is mostly FRE 201 judicial noticable material. Studies done of its reliability put it on a par with sources like encyclopedias, which have historically been used for the same purpose.

    As of two years ago, it had been cited in court decisions more than 100 times, including 13 appellate decisions. Of course, even if it is wrong to use Wikipedia, it is entirely possible that doing so constitutes harmelss error. As of September 2008, the number of citations exceeds 300, as explored by Lee F. Peoples in a recent SSRN posted article.

    The article in question, moreover, on Unicode, is exceptionally well sourced and describes a long standing, public industry standard terminology. While one might prefer to get this FRE 201 judicial notice information directly from the horse’s mouth (with a mere hat tip to wikipedia), this is really little different from relying upon a well known textbook rather than an obscure International Chamber of Commerce document or FASB pronouncement for a commercial shipping term or accounting definition.

  4. New Light,

    You seem to be selectively reading the statutes to support your conclusion, while, in a vacuum, you can argue “patentability” and substantial new question” are broad terms, the fact of the matter is that these terms must be read in view of the rest of the statute, which is linked to printed publications and patents.

  5. “‘Prior art is not impacted by whether or not it is patentable itself.’ Ok, I have read it and now typed it myself, yet I still cannot fathom why not?”

    “Prior art, pertinent and applicable and having a bearing can encompass that prior art no longer covering patentable material due to a change in law.”

    This is precisely the point where we’re not connecting. Here’s a conclusory statement – a change in patentability status for a prior art reference has NO relevance to the patentability of the patent for which you’re seeking re-exam. Why? Because the patentability of the material in the prior art reference was NEVER relevant.

    Consider: A reference must be enabling to anticipate under 102, but need not be enabling to qualify as prior art under 103. (Symbol Tech. v. Opticon, 1991; Amgen v. Hoechst Marion Roussel, 2003; see also In re Epstein, 1994.) A reference need not disclose substantial utility. (Rasmusson v. SmithKline Beecham, 2005.) Conclusion: A reference need not disclose patentable subject matter.

    Consider: Sections 102 and 103 both discuss prior art. Section 101 does not mention prior art, and prior art is logically unconnected to the concepts of Section 101. Conclusion: the prior art is never material to a patentable subject matter determination.

    Overall conclusion: Casting doubt on the patentability of a prior art reference, in light of new law, has no bearing on the patentability of the patent/application against which the prior art is raised. If we can’t get to agreement on this point, then we’re doomed to disagree. I apologize if it seems like handwaving, but that’s the best I can do with 5 minutes of research.

    “…are you saying I misquoted you?”
    No, I’m saying that you mis-paraphrased me when you over-generalized my statement to “a patentability issue is completely irrelevant in the process of determining whether a patent has patentability issues.” If you can’t see the difference between what I said and your paraphrase, then we’re again fated to disagree.

  6. snake and BigGuy,

    My feelings are not hurt, I am just trying to understand what you are saying and I am having difficulty with the hand waiving and conclusionary statements.

    “Prior art is not impacted by whether or not it is patentable itself”. Ok, I have read it and now typed it myself, yet I still cannot fathom why not? Even if reexam requests are solely based on printed publications and patents, patentability issues related to those printed publications and patents are fair game. Patentability issues are not limited to 102/103 issues – nowhere is this stated, yet this is continuely implicit in your replies. There is no need to rewrite a statute and Swanson has more to do with the logic presented by BigGuy, except BigGuy ignores the fact that the issue has indeed come up – in Swanson (The 2002 amendment to the statute addressed that particular issue. Since then, the issue hasn’t come up much:) How much does it need to come up? It has come up – what now?

    Again, the statute simply is not written that ONLY 102/103 issues can prompt a basis of patentability issue. If anyone is rewriting the statutes, it is not Swanson.

    from 37 CFR 1.501: At any time during the period of enforceability of a patent, any person may cite, to the Office in writing, prior art consisting of patents or printed publications which that person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability of any claim of the patent.

    All I am saying is that if something is now unpatentable by rule of law, this holding is a substantial question of patentability and surely has a bearing on many patent claims. I am using the Swanson case as basicly a skeleton key that opens any door, since any art used in prosecution of patents now has a new light.

    The continual repetition of “The statutes are clear that a reexam request is only based on printed publications and patents” seems to argue a point that is not being argued. Prior art, pertinent and applicable and having a bearing can encompass that prior art no longer covering patentable material due to a change in law. I am merely adding to Judge Newman’s pronouncement in Bilski: “Its impact on the future, as well as on the thousands of patents already granted, is unknown.” It is those thousands of patents already granted that have substantial questions of patentability being thrust on them.

    “”‘whether or not the prior art references are directed to statutory subject matter is completely irrelevant.’
    - care to explain why a patentability issue is completely irrelevant in the process of determining whether a patent has patentability issues in the conngressionally mandated process for reviewing such?”

    I didn’t say anything like what you suggest.”

    Funny – for a lawyer, it is pretty evident where I got the quote – are you saying I misquoted you?
    Maybe I am confused about the ‘completely’ part…

  7. New Light,

    Prior art is not impacted by whether or not it is patentable itself.

    You are basically arguing that you can file a reexam request and point out to the Office that the prior art does not satisfy Bilski, and therefore, this is a new light somehow relating to the patent you want reexamined.

    I am not here to insult anyone, but c’mon, that is just plain silly. The statutes are clear that a reexam request is only based on printed publications and patents, Swanson, no matter how you spin “unintended consequences” cannot rewrite a statute.

    We can agree to disagree, but if you want to give me those 6-1 odds, I’m happy to take your money :)

  8. MM:

    That looks good for if/else analysis, doesn’t pass my 101 or 112 tests, though (see below).

    Back to the 101 that the BPAI reversed. The BPAI ruled there was not a Bilski issue with the method claim because the “local unit” is a modem, hence the machine performing the method is now a particular machine (ie, one with a modem).

    Here’s a quote from the spec: “The local unit might be a modem or other similar communication device that acts as a pass-through device or data pipe to pass all data through the remote unit.” As an examiner in networking, I now have no idea whether the “local unit” is software or hardware. What is a “data pipe”? A software buffer?

    So the claim 1 as written, doesn’t inherently have to be connected to a network or inherently have a modem. To me, that’s not a particular machine. If his definitions of layers (which are conceptual garbage) are “related software”, I fail to see to see anything to make it a particular machine.

    The entire spec (11 pages) is poorly written bile. Here’s the definition for “session layer”: “The session layer … includes a GUI process as described above” … “The session layer may also include any other type of software program or process that is to be executed by the remote unit”.

    So… the session layer is any software whatsoever? Thanks for clearing that up. The case needs to be 112′d into abandonment.

  9. “Are you an examiner? Your conclusionary handwaiving makes it seem so.”

    Are you an attorney? Your dubious reasoning makes it doubtful.

    “‘Section 101 is a threshold inquiry, and has nothing to do with prior art.’
    - um, wrong. Section 101 is a patentability issue.”

    Umm, I didn’t say that Section 101 wasn’t a patentability issue. I said that it had nothing to do with prior art. For “threshold issue,” see Bilski slip opinion, page 4.

    “‘whether or not the prior art references are directed to statutory subject matter is completely irrelevant.’
    - care to explain why a patentability issue is completely irrelevant in the process of determining whether a patent has patentability issues in the conngressionally mandated process for reviewing such?”

    I didn’t say anything like what you suggest. I said that a prior art reference doesn’t have to be directed to statutory subject matter to be relevant. However, I did say that by virtue of the congressionally mandated re-examination statutes, a patent can only be re-opened for examination on the basis of a substantial new question of patentability that is based on prior art.

    “While I’m waiting for snake to provide the case law outlining why only 102/103 can be raised for SNQ, perhaps you have examples of this to share…”

    You’ll have to keep waiting. There is no case law, because the patent office follows the statute and doesn’t order re-examinations based on issues other than 102/103. (I don’t believe that a failure to order a re-exam is appealable.) There is a little case law prior to 2002 where the Federal Circuit smacked down the PTO for re-visiting “old” and “resolved” questions of patentability. Prior to 2002, this was understood to include any issue involving already cited art. The 2002 amendment to the statute addressed that particular issue. Since then, the issue hasn’t come up much: “We have not had the opportunity to evaluate the scope of the ‘substantial new question of patentability’ requirement since the 2002 amendment.” Swanson, slip opinion p. 12.

    “…merely stating that I’m wrong really doesn’t cut it.”

    I’m sorry if I hurt your feelings, but suggesting that Section 101 has anything to do with prior art is just wrong.

  10. BigGuy,

    Are you an examiner? Your conclusionary handwaiving makes it seem so.

    “Section 101 is a “threshold” inquiry, and has nothing to do with prior art.”
    - um, wrong. Section 101 is a patentability issue. Reexam can be raised on patentability issues of art references already cited, but on different grounds. “threshold” or not, 101 is very much a SNQ.

    “whether or not the prior art references are directed to statutory subject matter is completely irrelevant.”
    - care to explain why a patentability issue is completely irrelevant in the process of determining whether a patent has patentability issues in the conngressionally mandated process for reviewing such?

    While I’m waiting for snake to provide the case law outlining why only 102/103 can be raised for SNQ, perhaps you have examples of this to share…

    I don’t mind being wrong – it’s a good way to learn, but merely stating that I’m wrong really doesn’t cut it.

  11. “1. A method for triggering a log-off of a data link layer pass-through application, the method comprising: detecting the absence or presence of activity in a session layer and aborting a data link layer pass-through application when said session layer is inactive.”

    That is how proper claims are written boys and girls.

    You guys wanting to enter reexam shouldn’t have any problem. I could raise an SNQ on just about any patent ever issued in what? Under an hour? Under a minute? There might be a small few that might take longer, but seriously, if you want a reexam it doesn’t seem that hard to get it.

  12. “Now, with the new light, that art is questionable in and of itself. An examiner may go, hmm, I OK’d that patent because I viewed it in light of the prior art. Now there’s a new light on that prior art that draws questions on the patentability (of that prior art).”

    Thanks for the really incisive hypothetical, New Light. You might want to review Bilski again, however. Section 101 is a “threshold” inquiry, and has nothing to do with prior art. Furthermore, whether or not the prior art references are directed to statutory subject matter is completely irrelevant. So the examiner may muse all day regarding whether he sees a “new light” on the prior art, if he likes, but he still can’t order a re-examination based on 101 issues with the prior art.

    Bottom line is that it is not possible to raise a SNQ, based on prior art, for Section 101 issues. Once the patent is in re-exam, however, everything is fair game.

    “12 to 2 on the current BPAI count indicates that snake is wrong on what the PTO would do.”
    The BPAI is not working under the authority of the re-examination statutes. So what exactly does the BPAI’s activity have to do with raising a SNQ of patentability for a re-exam?

  13. My hypothetical would be any typical-computer-related-now-Bilskiable prior art considered in an application that proceeded to becoming a patent. Let’s say the patent issued without amendments in light of the prior art as originally considered.

    Now, with the new light, that art is questionable in and of itself. An examiner may go, hmm, I OK’d that patent because I viewed it in light of the prior art. Now there’s a new light on that prior art that draws questions on the patentability (of that prior art). Since the patent was passed on thus seemingly false building blocks, there is a SNQ based on prior art, and the patent is contaminated by the prior art references. So it IS that simple that there is directly a link of the SNQ to the prior art and the patent is capable of being re-examined. Once in the re-exam state, 35 USC 305 hits it fully as an initial examination and Bilski strikes.

    Take the original case of this thread – the two patents used by the examiner for 103 purposes would both fail the current BPAI Bilski test. Let’s assume for a moment that this case was heard a year ago and the 103 rejections did not suffice and the application passed to a patent. Now, we take another look and see that the cited references, the two earlier patents, have a SNQ in light of Bilski. The most recent patent can be reexamined based in part on the direct question regarding patentability of the references, as the references meet the requirement of addressing “a bearing” in the patentability of the subject claims of a particular patent. Once this simple level is reached in any given prior art, the requirement for re-exam is reached. and on we go. The newer patent then is examined as in an initial examination…

    I think snake is missing the point with “it was not meant to cover any “new light” such as changes to the law. (Bilski)” – what it was meant to do and what it does may be two very different things – the law of unintended consequences!

    “I am just telling you as things stand right now, the PTO will certainly reject any such request.” – 12 to 2 on the current BPAI count indicates that snake is wrong on what the PTO would do.

  14. How about

    1. A method for triggering a log-off of a data link layer pass-through application, the method comprising: detecting the absence or presence of activity in a session layer and aborting a data link layer pass-through application when said session layer is inactive.

  15. You mean the if/else language in a rejection? There’s two schools of thought on that. One is that you need to find either the if or the else, the other is that you need to find both. I choose whichever is more convenient to me during prosecution. If it ever gets close to allowable, I usually call the attorney and tell them this…

    Point 1: In order for someone to infringe your claim, they have to perform the method twice. Once to enter the if, once to enter the else. You’ll want to remove it.

    Point 2: You don’t need the if/else to make it patentable. If the novelty is in the “if”, all you need is language inside the if. Remove the “else” and get more coverage. If the novelty is in the “else”, all you need is the language inside the else. Remove the “if” and get more coverage. If you think the novelty is the “determining if” (which inherently “determines else”), all you would need is “determining if..” (which, in the above example, would be “determining if the session layer is active” and then claiming no subsequent limitations. Or, if you’re having trouble meeting Bilksi (cough, hint) claiming subsequent limitations that are fairly trivial and have no dependency on the “determining if”. That is, don’t preface it with “when it’s inactive”.

    I’m guessing what’s inside the “else” is the asserted novelty.

    So a better drafted claim would read:
    1. A method for triggering a log-off of a data link layer pass-through application, the method comprising:

    when data is received over the data link layer, determining if a session layer is active;

    if the session layer is inactive, aborting the data link layer pass-through application in a local unit.

  16. Davie Stein:

    “I’d have expected such claims to be easily – EASILY – Bilskied, and probably with lots of insulting language.

    Yet today, this claim sailed past this particular BPAI panel without a hitch. Not one mention of the words “Bilski,” “Diehr,” “insignificant,” or “mental.” And the only mention of the word “particular” is a refutation of the examiner’s rejection for insufficiency under 112.”

    Claim 1 is bilskiable if the examiner had argued the 101 rejection with the knowledge of “particular machine” requirement (He wrote his examiner’s answer months ago). The BPAI decided it wasn’t a 101 because “local unit” makes the machine a particular machine. What’s a local unit? The spec discloses the “local unit” as being a modem. The BPAI ruled the machine performing the method is not a generic machine, it’s got to be a machine with a local unit. But does this “local unit” have to be structural? Depends on what the spec says, would be my guess. A solid argument suggesting the spec doesn’t require the “local unit” to be hardware would make it bilskiable in my opinion.

    And I’m not even going to get started on claims that refer to networking “layers”. I 112 those all the way to disposal-ville.

  17. New Light,

    I think you are reading a bit too much into the Swanson “new light on patentability.” This statement was made in connection with a re-presentation of PREVIOUSLY CONSIDERED ART in a new light, it was not meant to cover any “new light” such as changes to the law. (Bilski)

    An argument that a claim covers non-statutory subject matter because Bilski is a “new light” is not based on printed publications, it’s that simple. The law requires the SNQ be linked to published art. I am not limiting anything to 102/103, but, instead, to the language of the staute which is printed publications and patents.

    If you think you can file a request injecting Bilski issues to the Office as a “new light”, please do. Extensions of the law are always a possibility, I am just telling you as things stand right now, the PTO will certainly reject any such request.

  18. snake,

    I appreciate your patience, but by parsing my responses I believe that you have missed the bigger picture.

    I am not saying that 101 necessarily by itself is sufficient for invoking re-exam. I am not dismissing the need of prior art in the form of patents or printed publications. However, the requirement for citing prior art only needs to address “a bearing” in the patentability of the subject claims of a particular patent. Patentability being addressed is not limited to 102/103 at the Law or Rule levels. “Examination on the basis of prior art” as indicated in the rules does not explicitly limit itself to 102/103 – I think you have parsed that phrase too finely and are stuck on the definition of what constitutes prior art, rather than the big picture that the basis of prior art can come from “new light on patentability” as the focus of the patent that is being re-examined.

    Congress intended re-examination as a process for taking away patent rights if those rights were granted in error – that the patent does not possess patentability. I am very interested in any case law that defines explicitly that ONLY 102 and/or 103 can be used with the prior art to establish this basis. You do have to apply the prior art, but the basis can be any issue of patentability. This includes 102/103, but can also include 101.

    In re Swanson is the key to the door of the china shop. This key allows ANY prior art to serve as the required art that is to be cited in the request for reexamination. In re Swanson allows previously cited art to be cited again, if that previous cited art was not used in the same light.

    The Bilski sledgehammer is that new light. Let’s think of it this way – prior art was used in the initial examination and the application was allowed to proceed to patent. That same prior art can now be used, in the new light of Bilski, to reexamine the now patented item because there exists a substantial question of patentability in the new light. That’s the key – In re Swanson basically allows a free re-do to every patent every time a substantial new light on patentability arises.

    This may be why Neumann was so concerned with Bilski.

    35 USC 301 and 35 USC 302 are met. I think that you are limiting the substantial question of patentability to ONLY the 102/103 arenas. That is not what the Law or the rules say. In 35 USC 303, the Director can use the substantial new question of patentability (by the holdings of Bilski and the BPAI) applied through the originally cited art in this new light and order reexamination under 35 USC 304. At 35 USC 305 “reexamination will be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133 of this title.”

    Under these initial examination procedures, the Bilski sledgehammer can apply the 101 nullifications, and thus kill the patent.

  19. “But, Leopold, it’s practically impossible to establish a definition of ‘particular machine’ that isn’t radically out of sync with several recent BPAI cases.”

    Is it? How about this definition (this is a very rough proposal): a “particular” machine is any machine, including a general purpose computer programmed to carry out the steps of the method, unless: (a) the machine is used only for insignificant post-solution activity, (b) the machine is used only for mere data collection, or c) the method is directed to an abstract principle or algorithm and the tying to the machine effectively preempts every known use of the abstract principle or algorithm.

    Which several BPAI cases are radically out of synch with this definition? (It would be helpful if you could reproduce an exemplary claim for each, so I don’t have to go and read the case again…)

  20. New Light,

    I think it is easier to just go through your reasoning:

    –To base your view on the MPEP is in error – the MPEP does not carry the force of law and can be changed rather quickly.
    ***Irrelevant, the statutes are just as clear.

    –Further, you only quote for the Inter Partes Re-exam. No such limitation appears in the MPEP for Ex Partes Re-exam.
    **See 2258
    –I am not certain that your view is in the correct light. The Law (35 USC) is quiet on this matter.
    **The legislative history of the reexam statute is not silent, there is a reason printed publications are called out.

    –As I indicated, the only link required is In re Swanson. Once any existing art is cited “in a new light”, re-exam for any substantial issue of patentability is allowed by Law:

    ***I fail to see how Swanson has anything to do with 101, previously submitted ART was the focus there, not changes to the law.

    –35 U.S.C. 302 Request for Reexamination.
    Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301 of this title.

    –As mentioned, in 35 USC, this “basis of any prior art” is not defined to exclude 101 issues.
    **Incorrect, 301 is based on printed publications ONLY

    –In reviewing the Rules (37 CFR), I do find the following, which leaves an incomplete picture (there may be validity to your points in this shade):

    § 1.552 Scope of reexamination in ex parte reexamination proceedings.
    (c)
    Issues other than those indicated in paragraphs
    (a) and (b) of this section will not be resolved in a reexamination proceeding. If such issues are raised by the patent owner or third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may consider the advisability of filing a reissue application to have such issues considered and resolved.
    **Agreed, this is what happens for 112 and 101.

    –Section (a) deals with 112 requirements. I do not know what force these “issues raised by the examiner” may have, although once in re-exam, new grounds of rejection are permissable – at least in theory opening the door to the Bilski sledgehammer. It seems the rules open a door that the method of closing is not covered.
    ** New and amended claims are subject to 101 and 112, that’s it.
    –Perhaps there are those more seasoned in this area that can shed further light on this subject.
    ** I am about as seasoned as they come, also, this is hardly a controversial topic.

  21. Leopold Bloom wrote:

    “Or perhaps there is a fourth: (4) The sky is not really falling, and a claim can’t properly be rejected under Bilski when that claim is clearly tied to a computer unless the claim is directed to an abstract idea or otherwise preempts entirely the use of a abstract algorithm.”

    Of course, I’m hopeful that this is the case. But, Leopold, it’s practically impossible to establish a definition of “particular machine” that isn’t radically out of sync with several recent BPAI cases.

    The BPAI, treated collectively, is treating Bilski as if it provides a bundle of platitudes – “insufficient extra-solution activity,” “preempts every known use,” “tied to a particular machine,” etc. Whichever result the BPAI wants in a particular case, it simply selects and recites the corresponding platitude. Call it Dial-a-Holding: press “1″ for abstract, press “2″ for preemptive…

    Of course, this “bundle of platitudes” results-oriented technique has been tried often – the doctrine of equivalents, 112p6, Markman’s extrinsic vs. intrinsic nonsense, and “obviousness.” It’s even been tried before with software – all of that “algorithm” junk from Gottschalk and and again with Freeman-Walter-Abele.

    Inevitably and invariably, it causes a nonsensical jumble of contradictions. Bilski is only three months old, and already we’re seeing the same symptoms of decay.

    - David Stein

  22. >>Or am I asking the wrong person?

    You should assume that all of MM’s post are policy based and that he does not care about applying the law.

  23. “You don’t think that one skilled in the art would understand that claim to be directed to a multi-pass process that selectively processes the data or aborts, based on the determination of whether the session layer is active?”

    Skilled in the art of what? It’s a method claim, not an apparatus claim. Are you going to try to read the word “if” out of the claim?

    What if my computer receives data over the data link layer, “determines” (LOL) that a session layer is active; and processing the received data?

    Does the computer infringe the claim? Why wouldn’t such steps, alone, constitute infringement of the claim?

  24. “My questions: if a prior art method included the steps of receiving data over a data link layer, ‘determining’ that a session link layer is active, and ‘processing the data’, does that anticipate the claim?”

    Not in my opinion, although I would draft the claim to be a bit more precise. You don’t think that one skilled in the art would understand that claim to be directed to a multi-pass process that selectively processes the data or aborts, based on the determination of whether the session layer is active? Or am I asking the wrong person?

  25. “Only three explanations exist:”

    Or perhaps there is a fourth: (4) The sky is not really falling, and a claim can’t properly be rejected under Bilski when that claim is clearly tied to a computer unless the claim is directed to an abstract idea or otherwise preempts entirely the use of a abstract algorithm.

  26. >>”Realizing that these rules are indeed policy >>based, it could well be that only policy >>arguments will have any effect in this sphere.”

    MM wrote: >DING DING DING!!!!

    That is good to know. We can just ignore any argument you make from now based on law and assume that you are basing your arguments on policy reasons. We can assume that you don’t care about the rule of law.

    Nice to know. I’ll keep it in mind.

  27. breadcrumbs wrote:
    “David, you might find the following to be interesting:”

    Wow. Wow. “Interesting” is an understatement.

    Here is claim 1:
    “A method for triggering a log-off [sic] of a data link layer pass-through application, the method comprising:
    when data is received over the data link layer, determining if a session layer is active;
    if the session layer is active, processing the received data in the session layer; and
    if the session layer is inactive, aborting the data link layer pass-through application in a local unit.”

    I’d have expected such claims to be easily – EASILY – Bilskied, and probably with lots of insulting language.

    Yet today, this claim sailed past this particular BPAI panel without a hitch. Not one mention of the words “Bilski,” “Diehr,” “insignificant,” or “mental.” And the only mention of the word “particular” is a refutation of the examiner’s rejection for insufficiency under 112.

    Only three explanations exist:

    (1) This opinion was authored pre-Bilski, and got caught in some kind of bureaucratic delay and/or temporal vortex.

    (2) These admin judges simply didn’t get the Bilski memo… ANY of the Bilski memos.

    (3) The USPTO is collapsing under the crushing weight of the Bilski illogic and its misshapen progeny.

    Breadcrumbs, this is awesome. Thanks.

    - David Stein

  28. Re Kasper, here is a representative claim

    1. A method for triggering a log-off of a data link layer pass-through application, the method comprising:

    when data is received over the data link layer, determining if a session layer is active;

    if the session layer is active, processing the received data in the session layer; and

    if the session layer is inactive, aborting the data link layer pass-through application in a local unit.

    My questions: if a prior art method included the steps of receiving data over a data link layer, “determining” that a session link layer is active, and “processing the data”, does that anticipate the claim?

    It seems to me that it should.

  29. Daivd Stein at Jan 30, 2009, 04:30 PM asked

    “Anyone keeping score of CAFC/BPAI 101 cases since Bilski? I think it’s 12 invalidations and probably one validation (Ex parte Bo Li.)”

    David, you might find the following to be interesting:

    Ex parte DAVID J. KASPER, II
    Appeal 2008-2297
    Application 10/147,116
    Technology Center 2400
    Decided: February 2, 2009

    link to des.uspto.gov

  30. Actually, elaborating the my previous post, one of the qualifiers for 102a is “known by others in this country”. Clearly a Wikipedia article written before the EFD and replicated to US servers was “known in this country”.

    Nothing like testing the waters and seeing how applicant responds.

  31. What’s the difference between Wikipedia and technical forums (which I’ve used for rejections on multiple occasions)?

    Of course, whenever I use forum/blog postings I reject based on public use and evidence it with the forum/blog posting (they’re generally talking about features of a specific product). Same could be said for wiki, right? As long as I use the version of the wiki article that was prior to the EFD. Why not reject on a generic public use by not restricting to a specific product and evidence it with the Wiki article. Because if the wiki article had it, then by all means, it had to be out in the public.

  32. “Realizing that these rules are indeed policy based, it could well be that only policy arguments will have any effect in this sphere.”

    DING DING DING!!!!

    Except that the policy reasons for promoting patenting of abstract computer-based crap are really, really weak.

  33. “The most frustrating aspect of the entire saga is the continued refusal by anyone involved to admit the extent that developing 101 precedent is guided by policy objectives.”

    Allowing Beauregard claims was 100% guided by policy objectives, i.e., the objective to allow the patenting of software.

    This recent 101 wrangling guided by two objectives. One is to get rid of crap. I’ll let you guess what the other one is.

  34. New Light,

    I’m not sure that the statutes are quite as silent as you suggest. Look at it from the point of view of what the PTO (Director) is authorized to do. Under Sections 303(a) and 304, the Director is authorized to order a reexamination based on (i) a request filed under Section 302, which MUST be on the basis of prior art, or (ii) “patents and publications” discovered by the Director. Although the statutes don’t expressly prohibit a request based only on 101 (or 112, for that matter), the Director is simply not authorized to order a re-exam based on such a request. Nor may he order one “sua sponte” based on a 101 issue. I think snake is right that the substantial new question of patentability must be based on art. Whether or not it’s proper to raise additional issues in a request is another matter I suppose. I raised a few indefiniteness issues in the last request I did, but only as an aside. The request was granted, but the 112 issues were not mentioned by the PTO.

  35. snake,

    To base your view on the MPEP is in error – the MPEP does not carry the force of law and can be changed rather quickly. Further, you only quote for the Inter Partes Re-exam. No such limitation appears in the MPEP for Ex Partes Re-exam. I am not certain that your view is in the correct light.

    The Law (35 USC) is quiet on this matter.

    As I indicated, the only link required is In re Swanson. Once any existing art is cited “in a new light”, re-exam for any substantial issue of patentability is allowed by Law:

    35 U.S.C. 302 Request for Reexamination.
    Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301 of this title.

    As mentioned, in 35 USC, this “basis of any prior art” is not defined to exclude 101 issues.

    In reviewing the Rules (37 CFR), I do find the following, which leaves an incomplete picture (there may be validity to your points in this shade):

    § 1.552 Scope of reexamination in ex parte reexamination proceedings.
    (c)
    Issues other than those indicated in paragraphs
    (a) and (b) of this section will not be resolved in a reexamination proceeding. If such issues are raised by the patent owner or third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may consider the advisability of filing a reissue application to have such issues considered and resolved.

    Section (a) deals with 112 requirements. I do not know what force these “issues raised by the examiner” may have, although once in re-exam, new grounds of rejection are permissable – at least in theory opening the door to the Bilski sledgehammer. It seems the rules open a door that the method of closing is not covered. Perhaps there are those more seasoned in this area that can shed further light on this subject.

  36. Babel, I think not, but am open to other points of view. Suppose a standards setting body meets in June each year, and publishes its annual List of Definitions soon afterwards. Suppose a patent application filed in the spring of 2007 refers in its Example 1 to Standard AA-xxxx. Applicant “meant” the 2006 List (of course). After filing the app, the 2007 List publishes some updating amendments, including one to Standard AA-xxxx. I don’t see how you can reasonably assert that, in the patent application, the meaning of AA-xxxx is the meaning to be found in the 2007 List. Same logic for dictionaries, as far as I can see.

  37. New Light,

    see MPEP 2617

    Substantial new questions of patentability must be based on prior art patents or printed publications. Other matters, such as public use or sale, inventorship, 35 U.S.C. 101, 35 U.S.C. 112, fraud, etc., will not be considered when making the determination on the request and should not be presented in the request.

  38. The most frustrating aspect of the entire saga is the continued refusal by anyone involved to admit the extent that developing 101 precedent is guided by policy objectives. Pretending that the developing case law does not represent an express departure from prior precedent is bad enough, but pretending that it is actually a logical development therefrom is absurd.

    I will not pretend to have enough knowledge to opine on the need and efficacy of utilizing 101 rejections to achieve policy objectives, but it is frustrating and insulting to practitioners to have precedent be developed in this manner. If there is not adequate art to enter appropriate 103 rejections, and this is the best solution that can be found, so be it. If it is impossible to maintain skilled enough Examiners who are able to decipher an application and determine whether it meets 112, so be it. But by creating meaningless distinctions in order to uphold policy objectives, and then cloaking these objectives with non-sensical and arbitrary rules, well, is it any surprise so many practictioners are frustrated?

    The answer, however, may not be to argue with the absurdity of these arbitrary rules. Realizing that these rules are indeed policy based, it could well be that only policy arguments will have any effect in this sphere. Unfortunately, a majority of practitioners who are well equipped to point out the logical discrepancies and inconsistencies in developing precedent have no relevant experience with such policy arguments and, just as importantly, no clout with those who do.

  39. “Well, you can’t be sure in this witch-hunting era we live in, but I don’t see why it would be. Imagine if I wrote a chapter of a book and was prosecuting a patent application, would I have to point out to the examiner that I was the author of that book? I don’t see why I would.”

    You would if you wrote that chapter after filing the application! That’s the sequence of events I understood from the original posting. The fact that the “evidence” was created by the applicant after the filing, and therefore likely to be self-serving, is highly relevant, it seems to me, and would likely be of interest to an Examiner. But what do I know?

  40. west coast:

    Did those decisions involve a wikipedia entry that was a prior art reference and not just evidence in support of an official notice?

  41. Night, yes I do see the problem. But when the courts elevate “secondary factors” to the level that it decides cases, how can you blame junior Examiners for not understanding the problem of hindsight bias. When the EPO started up, in 1978, with Examiners arriving from all over Europe, each from a different national patent Office, management needed an approach to obviousness that would be fair to Applicants, and would immediately deliver consistent results, regardless who was examining any particular application. The members of the Boards of Appeal, while waiting for the first appeal cases to come through, worked out the EPO Problem and Solution Approach (the best invention in the history of patent law) which excludes hindsight inherently. Shame nobody outside EPO circles, (and not even all within them), bothers to try to understand EPO-PSA, because it is ideal for imposing discipline on unruly, young and headstrong, over-confident and under-trained USPTO Examiners, and prevents them using hindsight. For the life of me, I don’t understand why EPO-PSA isn’t by now universal. It’s unassailable at the EPO, and nobody there complains about it, neither the Applicant/Owner, nor the Opponent.

  42. Max

    Aren’t you scrambling prior art references with references such as dictionaries used to define the terms of the spec/claims and, hence, the scope.

    I would be shocked if EPO has a cut-off date on the publication dates of dictionaries that can be used to define terms.

    If my application is filed in 2007 and not examined until 2009, isn’t a dictionary published in 2008 still a good reference for defining terms?

  43. In re Warmerdam 3 F.3d 1354, 31 USPQ2d 1754 (Fed. Cir. 1994).

    Claim 5. A machine having a memory which contains data representing a bubble hierarchy generated by the method of any of Claims 1 through 4.

    As stated by the Federal Circuit, “[c]laim 5 is for a machine, and is clearly patentable subject matter.”

    FN5 reads “This notion is sometimes phrased in terms of requiring a transformation or reduction of ‘subject matter.’ In Schrader, we determined that the phrase ‘subject matter’ is not limited to tangible articles or objects, but includes intangible subject matter, such as data or signals, representative of or constituting physical activity or objects. Id. at 295, 30 USPQ2d at 1459 n.12.”

  44. >> was written after the date of the claim, then >>we will take it with such a large dose of salt >>that it is, to all intents and purposes, >>probatively useless for telling us anything that

    But, you see, here in the U.S.A. what the examiners do —just read the posts on this blog–is figure out what the invention is and then think backwards of what they could combine to make it and then generate arguments why it would be obvious. They have not been trained to understand hindsight and even trying to discuss it with them —just read this blog–is impossible.

    So, you get an an unintended result of this hindsight driven practice of the examiners also not understanding not to use current resources, but to use resources contemperaneous with the invention. It is just ridiculous.

    Just read this blog and outline the thought process that examiners use to argue that something is obvious.

  45. snake,

    I believe that you are mistaken – re-exam exists for any question of patentability including 101.

    In re Swanson is key.

    You may be thinking of:
    (B) Prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103;

    However, the key parts involved are

    (C) A substantial new question of patentability must be present for reexamination to be ordered;
    (35 U.S.C. 303(a)) “…with or without consideration of other patents or printed publications.”

    and

    (A) Anyone can request reexamination at any time during the period of enforceability of the patent;

    Clearly, with the Law being rewritten regarding section 101, a substantial question of patentability is present. Thus, combined with the In re Swanson doctrine, ANY prior art serves as a proxy to reexamination for almost ALL patents in the computer realm. Any art of record will do, especially since it is inconceivable that the Office has applied the art in the Bilski sledgehammer mode.

    Or to use another analogy, the china shop door is opened by the key of any art (In re Swanson). Once the door is open, the Bull of In re Bilski is let loose.

    At this rate, nothing survives in the china shop.

  46. >>”… does not mean he had to disclose that he >>wrote it ….”
    >Are you serious?
    >Posted by: BigGuy | Feb 02, 2009 at 10:12 AM

    Well, you can’t be sure in this witch-hunting era we live in, but I don’t see why it would be. Imagine if I wrote a chapter of a book and was prosecuting a patent application, would I have to point out to the examiner that I was the author of that book? I don’t see why I would.

    Does the examiner make an inquiry into who wrote the wiki article before making a decision or does the examiner use the wiki article based on it being from wiki? The problem is that the examiner shouldn’t be using wiki.

  47. I’m not following this. On mainland Europe, if it was written before the priority date of the claim, then it isn’t hindsight-tainted, and therefore deserves weight. But, if it (eg an Affidavit, or a Google page) was written after the date of the claim, then we will take it with such a large dose of salt that it is, to all intents and purposes, probatively useless for telling us anything that we can rely on, about the state of the art prior to the date of the claim.

  48. New Light,

    You can’t request re-exam for 101 issues.

    MM, as for the “express” definition of inferencer, there is no requirement under US law for “express definitions.” As long as one of skill in the art would understand what was meant in the app.

    Finally, the fact that the board is including wikipedia references in an opinion is very troubling to say the least.

  49. ——————————
    I estimate that there is a 7000% chance that that is inequitable conduct.

    Posted by: 2600examiner | Feb 01, 2009 at 11:58 PM

    Actually, not. If he believed what he wrote in wiki was true and he didn’t misrepresent that he wrote it (does not mean he had to disclose that he wrote it), then it was not inequitable conduct.

    Imasge if an expert told you to look in his treatise. Is that inequitable conduct? That is the problem with using wiki.

  50. “I know of a case where the applicant wanted to argue that ‘X’ was a recognised term of art. The applicant amended the relevant Wikipedia entry, and then pointed the examiner to it. “See? It’s a term of art! It’s in Wikipedia”.

    The application was accepted.”
    ——————————
    I estimate that there is a 7000% chance that that is inequitable conduct.

  51. I do not understand why transforming electrons in a computer is different from transforming a traditional apparatus.

    The only reason I can come up with is that it makes the test meaningless because under this interpretation everything would pass the test. The problem with that though is that the line seems to be being drawn completely arbitrarily.

  52. I know of a case where the applicant wanted to argue that ‘X’ was a recognised term of art. The applicant amended the relevant Wikipedia entry, and then pointed the examiner to it. “See? It’s a term of art! It’s in Wikipedia”.

    The application was accepted.

  53. “Assault on the Citadel: Judge Rich and Computer-related Inventions” Odd, Samuael, A., Assault on the Citadel: Judge Rich and Computer-related Inventions, (Houston Law Review 2002). This paper equates Benson to Winterbottom and the battle to allow computer-related inventions analogous to the assault on privity.

    You can use this article as a blueprint for the case law that is being reversed by the PTO and the Fed. Cir.

  54. When I reviewed the system claims, the “structure” appears to be just software. These should have been rejected under 101 because the claims were directed toward “software per se.”

  55. “That a process may be patentable, irrespective of the particular form of the instrumentalities used cannot be disputed. If one of the steps of a process be that a certain substance is to be reduced to a powder, it may not be at all material what instrument or machinery is used to effect that object, whether a hammer, a pestle and mortar or a mill. Either may be pointed out; but if the patent is not confined to that particular tool or machine, the general process being the same. A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suitable to perform the process may or may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain things be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence.” Cochrane v. Deener, 94 U.S. 780, 785-6 (1876).

    Information takes space and energy to transform. A sort transforms the information as is clear from the fact that patents were issued to card sorting machines. Why should we say that a sort on data in a computer memory is not transformative, but that a sort of cards is transformative?

  56. The argument that the functional claims in claim 9 are too broad and thus not enabled is contradicted by the following very well known case.

    In re Tarczy-Hornoch, 397 F.2d 856 (CCPA 1968). Judge Rich argues that it does not make sense to not be able to claim the function of a single machine when one can claim a process as a process is just the function of multiple machines.

  57. Judge Rich wrote, “We have observed with regret that the briefs filed by the Solicitor General for Acting Commissioner Parker in Parker v. Flook, … badly, and with a seeming sense of purpose, confuse the statutory-categories requirement of § 101 … “ In re Bergy 596 F.2d 952, 962 (CCPA 1979).

  58. Mooney must have forgotten his Ritalin again. I always know, because he goes and gets metal rods stuck in the strangest places. We can’t seem to kick the smile off of his face thereafter.

  59. Don’t worry, I’m a patient man we can wait for the day the CAFC sees this. BPAI is throwing it around left and right. Certainly one app has too much money on his hands.

  60. West CG

    I find only one case, an open-source copyright case. Jacobsen v. Katzer, 535 F.3d 1373 (Fed. Cir., 2008)

    The CAFC does not cite a Wiki article, but rather it cites an amicus brief filed by the Wiki Foundation:

    “The Wikimedia Foundation, another of the amici curiae, estimates that the Wikipedia website has more than 75,000 active contributors working on some 9,000,000 articles in more than 250 languages.”

    It is at least reassuring to know that the CAFC has not yet stooped to the sloth of the BPAI and examiners such as IQ=6 in denying patent rights to applicants because it’s easier for them to key in a search term on Wiki than get off their buttts and find a proper reference.

  61. 6,

    “Show us one from the CAFC. Then I’ll show you one where the CAFC itself uses a wiki to define something. Sorry WCG, just because some ol’ time religion courts have held your view doesn’t mean all of them will. Those guys will come around soon enough. Two years max.”

    Do you have access to a case law database to the CAFC so that you could query for the term “wikipedia”? If so, please provide us with the appeal numbers. Sorry, I’m a solo practitioner without the luxury of having a case law database affordably accesible.

    If not you, any takers? Law students? Law professors? Anybody else on whom Westlaw slathers free accessibility?

  62. “A text reference has a known author that cannot be altered after it is published and has a fixed reference date of publication. Wiki is just an amorphous glob of blog-goo. ”

    So all those dated anon publications on IBM’s site are now inadmissible? No author :(

    Since you went through all that trouble I’ll tell you one last time: you can check the date of any given wiki page anytime you like.

    Waste your apps money all you like. Be sure to post serials so I can have some lulz at your additional expense. I’m already having them on your dime right now as a matter of fact.

  63. Show us one from the CAFC. Then I’ll show you one where the CAFC itself uses a wiki to define something. Sorry WCG, just because some ol’ time religion courts have held your view doesn’t mean all of them will. Those guys will come around soon enough. Two years max.

  64. When I first raised this Wiki issue days ago, I pointed out that Ted Kennedy and Robt. Byrd both had their Wiki entries modified by anonymous hooligans to read the senators are dead.

    Here’s a clip from WaPO Jan20.09 quoting the false entry for Kennedy.

    “Edward Moore ‘Ted’ Kennedy (born February 22, 1932- January 20, 2009) was the senior United States Senator from Massachusetts,” began the erroneous entry, a version of which can be seen here. It went on to report, “Kennedy suffered a seizure at a luncheon following the Barack Obama Presidential inauguration on January 20, 2009. He was removed in a wheelchair, and died shortly after.”

    Even Wiki admits that it is unreliable — WaPo continuing…

    “As Wikipedia itself acknowledges, “Allowing anyone to edit Wikipedia means that it is more easily vandalized or susceptible to unchecked information, which requires removal.” In one well-publicized case, the Wikipedia biography of journalist John Seigenthaler was edited to suggest he was complicit in the assassinations of both John F. Kennedy and Robert Kennedy. While Kennedy and Byrd’s entries were fixed within minutes, Seigenthaler’s was wrong for months.”

    If you need any more evidence than that of the unreliability and inadmissibility of Wiki, you are brain dead.

    A text reference has a known author that cannot be altered after it is published and has a fixed reference date of publication. Wiki is just an amorphous glob of blog-goo.

    Anyone who would seriously argue that Wiki is an authoritative reference sufficient for denying one his patent rights is working at a grade-school level understanding of legal procedure.

  65. West Coast Guy:
    >>Is this the holding of Ex parte Atkins:
    >>a claim of a mere conversion of data does not >>a Bilski transformation make?

    That is what I think the holding is. They do seem to be aimed at all software patents.

  66. 6,

    “Ok, so now all NPL academic publications are subject to hearsay review. Guys, just let WCG go figure this one out on his own. He’s a big boy. Have fun WCG.”

    No, not at all. I would consider them as self-authenticting:

    link to en.wikipedia.org

    (Oops, there I go again citing Wikipedia again for the sake of blog discussion. LOL, 6).

    Also, please take note of my previous comment to SF saying that “I have no problem of examiners using Wikipedia during prosecution. The give and take between the applicant and examiner can flesh out the reliability and trace the previous edits.”

    It is simply wrong for a court or BPAI to take judicial notice sua sponte of Wikipedia. A party raising this issue on appeal should easily prevail while simultaneously affording the CAFC an opportunity to slap the BPAI for the gross and improper usage of a source that CAN BE reasonably questioned.

  67. “Then, such source CAN BE reasonably questioned and the BPAI should refrain from citing to it and/or taking judicial notice of it.”

    Ok, so now all NPL academic publications are subject to hearsay review. Guys, just let WCG go figure this one out on his own. He’s a big boy. Have fun WCG.

  68. “I’ve perused them before. And I see no reason why a wiki is an exception to your exception. As I have told you already, you may review when changes were made at any time.”

    A learned treatise must be sufficiently authoritiative in its field to be admissible as evidence in a court. Generally, an expert witness (professors, experts, etc.) must state that he relies on such a learned treatise. Hard core researchers don’t rely on Wikipedia because its almost completely out of date for their work.

    Using wikipedia for proving the truth is evidence of the BPAI’s sloth. If it is so well known, then would it be so much more difficult to cite a technical journal or book by IEEE? I can accept that I may be wrong, but if you want to be convincing, use the best evidence you can find. On the flip side, when I want to convince the Examiner that his interpretation is egregious, I cite to the IEEE 100 and not wikipedia.

  69. SF,

    I have no problem of examiners using Wikipedia during prosecution. The give and take between the applicant and examiner can flesh out the reliability and trace the previous edits.

    The problem I have is a court (or adjudicative body) taking judicial notice of Wikipedia and citing it for support of the court’s or body’s opinion. I would raise it as an error of law on appeal.

    “The issue I have is that the Board is citing a January 2009 publication (wikipedia), which is not a publication at the time the invention was made and thus can hardly be considered relevant to the meaning of a term at the time the invention was made. I’d appeal on that basis.”

    I agree and would assign it as another error on appeal.

  70. “I use it all the time for background material”

    Why? Don’t you know that ANYONE can edit it? LOL

    The issue I have is that the Board is citing a January 2009 publication (wikipedia), which is not a publication at the time the invention was made and thus can hardly be considered relevant to the meaning of a term at the time the invention was made. I’d appeal on that basis.

    The USPTO gets to consider all sorts of statements made in patent applications, which are hearsay, because it’s just too f-ing time consuming to allow testimony for each patent application. They also get to consider all the hearsay they want in declarations too, even though the declarants are very much available. Get over it.

  71. “6, how familiar are you with the rules of evidence under the FRE?”

    I’ve perused them before. And I see no reason why a wiki is an exception to your exception. As I have told you already, you may review when changes were made at any time. The page at the time of filing is no different than any other webpage all across the web. If you’re about to tell me that published webpages are not considered standard publications and are thus not admissible also then I call you out on being misinformed. And I will simply leave it as an exercise to you to figure out why.

    “What the BPAI has essentially done is take judicial notice of Wikipedia.”

    Would it calm you if they did as they normally do and give whatever definition they personally feel like making up? Probably not.

    “Does anyone else find it amusing that West Coast Guy is citing wikipedia, which he says is unreliable?”

    Yes, yes I did. Very. I am consoled however by the knowledge that he won’t dare to make such a ridiculous argument in public. At least I hope, for his sake.

    He also feels like the BPAI was precedential with the use of the wiki in this case. I got a small kick out of that one as well. He is woefully under read lately I’m assuming.

    “6 – you know what is going on?”

    It is pretty blatant what is going on. The BPAI told the admin guys to start kicking back method cases so that they don’t have to 101 all of them themselves. I don’t know if they trained the admin guy to only kick back really suspect ones or not. We’ll see.

  72. SF,

    “Does anyone else find it amusing that West Coast Guy is citing wikipedia, which he says is unreliable?”

    I use it all the time for background material, keeping in mind that it is still unreliable for the purposes of introducing it in court. I would be laughed out of court if I cited it in a brief, used it in a declaration, or cite to it in a legal opinion as a judge.

  73. Malcolm,

    “”anyone” may publish a “learned treatise” as well.”

    Then, such source CAN BE reasonably questioned and the BPAI should refrain from citing to it and/or taking judicial notice of it.

    “There is a world of difference between an online encyclopedia that “may” be edited by anyone, and an utterance or observation made by some out of court declarant.”

    Well, eh, …no, there is not. An editing is nothing more that a written utterance by the out of court declarant.

  74. Malcolm,

    “Prove that wiki is less reliable than any other encyclopedia.”

    I do not have to because that is not the issue.

    What the BPAI has essentially done is take judicial notice of Wikipedia.

    link to en.wikipedia.org

    Assuming the quote of FRE 201(b) is correct, then:

    “FRE 201(b)) permit judges to take judicial notice of two categories of facts:

    Those that are “generally known within the territorial jurisdiction of the trial court” (e.g. locations of streets within the court’s jurisdiction) or

    Those that are “capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned” (e.g. the day of the week on a certain date).”

    Because it is subject to editing by anyone at any time, the “accuracy” of Wikipedia as a source CAN BE reasonably questioned. As such, a court or administrative adjudicative body should refrain from citing to or taking judicial notice of Wikipedia as it is hearsay and not self-authenticating.

  75. “Because it may be edited by anyone, such content would not be admissible in a court because it is not reliable of its face. ”

    Sorry, that makes no sense. Is wiki unreliable?

    Prove that wiki is less reliable than any other encyclopedia. News flash: “anyone” may publish a “learned treatise” as well.

    There is a world of difference between an online encyclopedia that “may” be edited by anyone, and an utterance or observation made by some out of court declarant.

    Maybe you were thinking of Conservapedia. In that case, everyone would agree that it’s a collection of disgusting lies that has no place in civilized discourse.

  76. 6,

    “The use of [written publications] is wrong.”

    Nice try, geniuse, but my comment is not as you have quoted. My quote: “The use of Wikipedia is wrong.”

    Wikipedia does not fall under the category of a self-authenticating document.

    link to en.wikipedia.org

    6, how familiar are you with the rules of evidence under the FRE?

  77. “Published patent applications are as much “hearsay” as wikipedia.”

    Published patent applications and written publications are “self-authenticating” and admissible. Under the FRE, they are treated as either an exception to the hearsay rule or are not considered hearsay.

    link to en.wikipedia.org

    Because of the self-authenticating nature of prior art, I have no problem with the use of judges or their taking judicial notice of them.

    Wikipedia, on the other hand, is not self-authenticating. It may be edited by anyone. Hence, it is not reliable as self-authenticated documents such as patent applications, texts, magazine articles, etc….

  78. Sorry this post got delayed by network traffic.

    “Death, I don’t think you get it. One does not have to identify the statutory class. That is well settled law. Claiming a system is well settled, too.”

    Also, you blatantly don’t get it. Nobody said you had to recite the stat class. Someone said that if you don’t then don’t be surprised when your claim dies in some weird ways. And they are right to say it.

    Oh, and hey, I’m sorry about all the claims you’ve drafted that are about to die. You should do the gladiator salute.

    link to youtube.com

  79. “The use of written publications is wrong. Because they may be written by anyone, such content would not be admissible in a court because it is not reliable of its face. Furthermore, they are hearsay, i.e., “an out of court statement offered to prove the truth of the matter asserted.”"

    Why, I think you’re on to something. No more art rejections WOOO HOOO!

    Geniuses up in here today.

  80. Anybody can write a patent application. (Can I get a witness??) Once published, patent applications are fully citable by the USPTO.

    Published patent applications are as much “hearsay” as wikipedia.

    The teachings of the prior art in all publications are viable evidence because the 102/103 statutes permits one to consider publications.

  81. Is this the holding of Ex parte Atkins:

    a claim of a mere conversion of data does not a Bilski transformation make?

  82. Interesting irony that the two patents that the examiner used in his 103 rejection:

    Abir US 6,738,827 B1 May 18, 2004
    Feinberg US 6,944,820 B2 Sep. 13, 2005

    both fail the test as applied by the Board.

    Re-exam anyone?

  83. The use of Wikipedia is wrong. Because it may be edited by anyone, such content would not be admissible in a court because it is not reliable of its face. Furthermore, it is hearsay, i.e., “an out of court statement offered to prove the truth of the matter asserted.”

    See link to en.wikipedia.org

    No adjudicator — whether it be a administrative agency or court of law — should use hearsay as support for its opinion. Not one.

    Wikipedia is hearsay. The use of Wikipedia by the administrative judges is flat out wrong as it is improper. Period.

    They have set a bad precedent, and it needs to be rectified.

  84. “This is only one of the smaller reasons why Scalia is a better man than you will ever be. Even while he suffers the handicap of enormous weight which is even more embarrassing to you.”

    Comment of the Year candidate.

  85. ” I think it was Brennan, J that referred to the Constitution as “living,” suggesting it grows. Of course, Thomas, J and Scalia, J think of the Constitution as dead — a stone tablet with commands chiseled into it.”

    This is only one of the smaller reasons why Scalia is a better man than you will ever be. Even while he suffers the handicap of enormous weight which is even more embarrassing to you.

    Interpretloling the constitution to make it say things it does not say should be punishable by death. Especially for SC justices who should dmn well know better. In this country it is the apex of “treason”. If you want it to say something it does not say then you dmn well better lobby congress.

  86. “So wiki is valid source of information now in legal matters in front of the PTO?!”

    No reason why it shouldn’t be. Wiki is no less accurate than any other reference, particularly if that reference is older than the wiki page.

    Of course, it’s obvious why a someone prosecuting in the computer or software fields would want to avoid references to wikipedia.

  87. NWPA, back in the 70′s or maybe the 80′s it was still funny to call the Supreme Court “The Supremes.” Now just let it go.

  88. That’s what you get for claiming a “system” when the statute doesn’t define any statutory-eligible class as a “system” – Death to BMs

    Death, I don’t think you get it. One does not have to identify the statutory class. That is well settled law. Claiming a system is well settled, too.

    I can claim “a vehicle comprising:…” I don’t have to allege in the claim or spec that the vehicle is a machine or other statutory class.

    The problem is that the law was written 200 years ago and the courts have had to expand it to accommodate progress that was unforeseen by the drafter. Phone, computer, and radar systems probably weren’t foreseen by the drafters of 101. Same with the Constitution. I think it was Brennan, J that referred to the Constitution as “living,” suggesting it grows. Of course, Thomas, J and Scalia, J think of the Constitution as dead — a stone tablet with commands chiseled into it.

  89. I also don’t know HTF I am to compose claims. Someone made an excellent suggestion recently that the BPAI should be physically located far from the PTO. I agree. How about Wasilla Alaska?

  90. Further proof MM does not understand even the basic economics of patenting:

    “Of course, you could just file narrow claims drawn very specifically to your product, but then nobody seems to ever want to do that for some reason.”

  91. I agree with Snake, the BPAI is now making up reasons to reject under Bilski. If “label referencer” and “inferencer” aren’t particular structure, then what is? What sort of language is particular enough?

    Ideally, method claims shouldn’t require any structure at all – that’s why they’re called method claims and not apparatus claims.

    Examiners refuse to consider functional language in apparatus claims, method claims aren’t statutory subject matter unless they include “particular structure” (whatever that is)…I have no idea what the overall direction is for claim drafting. I suspect there isn’t one – its just becoming a hodgepodge of incoherent rules.

  92. “The decisions coming out of the BPAI are all over the place “a label referencer” and an “inferencer” are not structure because they are not recognized in the art….WHAT!?!”

    F o r t h e l a s t t i m e. I t w a s n o t a ” p a r t i c u l a r s t r u c t u r e”.

  93. Pg. 4 1st par. of the decision the BPAI cited Wikipedia as evidence. So wiki is valid source of information now in legal matters in front of the PTO?!

  94. NWPA “Moore reads a claim and then thinks, but I understand that.”

    You don’t know what she’s thinking. She could be thinking about how to maximize profits from her hedge funds, or what movies to recommend to her friends. Get it?

    “I think there is a good analogy between business method patents and patents to people performing physical act, e.g. a golf swing.”

    Why don’t you patent your method of creating analogies and persuading people with them?

    Now watch this drive.

  95. snake “The claims are read in view of the specification and the Applicant is permitted to be their own lexicographer”

    So what was the express definition given to “inferencer” in the specification?

  96. Re “short commercial life” : if the commercial life of your product is so short that having to appeal your claims means that your patent will be worthless when the claims issue, then you shouldn’t have filed an application in the first place.

    Ever.

    You are wasting your money.

    Of course, you could just file narrow claims drawn very specifically to your product, but then nobody seems to ever want to do that for some reason.

  97. What is being transformed is the representation of information. Information cannot be transformed without energy and space.

    Therefore, the Bilski test is satisfied. That is the argument that should go to the Supremes.

    Did you know that Deener got a patent for a process of refining wheat when it was physical steps? It was merely steps that any old human could have done, but a patent was issued!! And in fact, they give all these patents for methods that any old human body could do. Outrageous!

    Mental step? Moore reads a claim and then thinks, but I understand that. My brain could do that. The idea Judge Moore is to build a machine to do that. Hopefully, one day–I am sure it will only happen if we continue to encourage software patents–we can replace Judge Moore with a machine. The machine would be performing only mere mental steps.

    The idea you see is to patent machines and allow the method of the machine because otherwise work arounds are too easy. It is that simple.

    A good definition of a business method–I think–is a method that isn’t for protecting a machine and is performing information transformations for people to practice. I think there is a good analogy between business method patents and patents to people performing physical act, e.g. a golf swing.

    My guess: Supremes grant cert to Bilski. It would better if this were to wait for a couple of new appointments from Obama. The oldest member of the court is 101 challenged.

  98. The decisions coming out of the BPAI are all over the place “a label referencer” and an “inferencer” are not structure because they are not recognized in the art….WHAT!?! The claims are read in view of the specification and the Applicant is permitted to be their own lexicographer. WOW

    As for the incessant posting about Beauregard claims being dead, not really, depends on the panel, see the Bo Li decision. Other Board decisions seem to go the other way, but those seem to be based on preemption (although never clearly explained). Also, Lowry and Warmerdam cannot be overruled at the BPAI.

    The complete lack of consistentcy and cogent reasoning in these decisions is appalling.

  99. >

    That’s what you get for claiming a “system” when the statute doesn’t define any statutory-eligible class as a “system” – - deal with it, or stop being wishy-washy with your preamble language and clearly define what the hell it is you’re intending to claim – - a method/process or apparatus.

  100. CNN right now: “Some of the security officials at Sunday’s Super Bowl will be scrutinizing the body language and demeanor of fans as part of the effort to spot suspicious and possibly dangerous people in the crowd. The TSA says it will have several teams of behavior-detection officers working with local police in Tampa, Florida, as an added security measure for the game”

    I wonder if those methods are patented. If not, someone should file right away. And the method could surely be improved if it was carried out with the aid of a POWERFUL COMPUTER BRAIN.

  101. “As a practical matter, it shouldn’t make any difference if a product with a short commercial life is patented or not.”

    MM, define “short commercial life” please. It is 1 year, 5 year, or 10 years.

    Your comment is meaningless unless we know what is “short commercial life”.

    The same goes to the debate over “Business Method Patent”, It is meanless to debate over it if we even do not know what it is.

  102. “As a practical matter this long delay means that patent protection is not available for many products with short commercial lives.”

    As a practical matter, it shouldn’t make any difference if a product with a short commercial life is patented or not.

  103. The Board entered a series of new rejections. It is thus critical that the long delay in getting decisions from the Board be significantly reduced. As a practical matter this long delay means that patent protection is not available for many products with short commercial lives.

  104. “I don’t see why there are so many people confused by claiming the ACTUAL invention and not some crazy level of abstraction.”

    The answer is that many of these people have never done anything BUT that crazy level of abstraction, and if they actually tried to structurally describe these “inventions” or the physical acts that are occuring, their heads would explode.

    Feeling sorry for such folks, the PTO allowed Beauregard claiming for a time. That led to the madness we see today. One reliable method for stopping the spread of corn smut is to burn the field.

  105. MM said, “By the way, was an example of source code provided with the specification? You know, to demonstrate possession, meet best mode requirements, and as an example to rely on when discussing unexpected results with the patent office.”

    I recall that Applicant’s are specifically discouraged from submitting source code. Psuedocode is another matter.

  106. I’ve said it before, I’m not sure 101 is the proper place to address the real problem with these types of claims, but 112 definitely (no pun intended) is. The method claims of these sorts of patents are gibberish and basically encompass the universe and can’t possibly be definite or enabled.

    Second, to the extent Bilski is upheld, I do not think that wrapping a series of method systems into a “system” should save a claim under Bilski either. Anyone can write a “step” as an functional element “inferencing” becomes “an inferencer.” Bilski applies. Patent law has enough magic words, this should not be any different. If you want an “inferencer” claim the thing that does it, not its abstraction. If you can’t succinctly claim it, use means-plus-function and roll your dice.

    Really, I don’t see why there are so many people confused by claiming the ACTUAL invention and not some crazy level of abstraction.

  107. Just a random thought: I wonder whether companies that engage in software patent filing are using Bilski to attack software patents asserted against them … i.e., is Bilski frequently showing up in district court and/or appellate court briefs to knock out the patents of trolls or genuine competitors? Or are tech companies avoiding the attack for fear of shooting their portfolios in the foot, so to speak?

  108. BB “Since when is statutory class defined by the breadth of the claim? ”

    Again: since always. When a claim is poorly drafted and can be read to cover natural laws or algorithms, abstract nonsense and/or any credible application of same, its non-statutory.

    The only difference is that the PTO and everyone else is finally realizing what a giant pile of crap accumulates when the law isn’t properly applied.

    It’s clean up time. Appeal all you want. The sad reality of whack-a-mole is that the mole is dead. The only thing that keeps it moving is a sucker’s quarter and a metal rod up its hind end.

  109. This is what happens when attorneys not skilled enough to get a job at a real firm start monkeying around with the law.

    Regardless, until the Federal Circuit buys into this BS, it doesn’t mean much. The USPTO will still accept amendments that will overcome the 101 rejections.

    As for the newly imposed 112 rejection, 1st paragraph rejection — overreaching at its worse.

  110. “Since when has Wikipedia become a reference by which patent rights can be extinguished?”

    Since always.

  111. 12 to 1 means there is no catagorical exlusion. Sorry.

    LOLOLOL :)

    I just couldn’t resist.

    Sht is like comedy central around here.

  112. Anyone keeping score of CAFC/BPAI 101 cases since Bilski? I think it’s 12 invalidations and probably one validation (Ex parte Bo Li.)

    At the very least, this is making an excellent case for SCOTUS appeal – since it’s becoming increasingly indisputable that the CAFC’s “there remains no categorical exclusion of patentability for software” statement is a lie.

    - David Stein

  113. “The BPAI rejected the system claims under Bilski since ‘those claims encompass any and all structures for performing the recited functions. As a result, [the system claims] are at least as broad as method claims … which we have determined recite patent ineligible subject matter under Bilski.’”

    I expect this level of “analysis” from GS-7′s, but from APJ’s? Sheesh. Lazy, unprofessional, and downright embarrassing.

    I hope the next Under Secretary is Hercules, cuz he’s gonna have some seriously stinky stables to clean out.

  114. “The term “system” in the preamble is broad enough to read on a method and thus does not imply the presence of any apparatus.” — BPAI

    Since when is statutory class defined by the breadth of the claim? Breadth is something that happens WITHIN a statutory class. This “logic” is the crux of the BPAI jihad to set Bilski loose on all classes of claims. Bilski is about methods claims. Period. If the CAFC had wanted it extended to other classes, it would have said so. [At least that's the way courts see these sorts of things.]

    If applicant claims a system in the preamble and then claims only methods steps, then smack him back with a 112 rejection, which is what they did. But don’t come in here with a 101 rejection under Bilski and say a system claim can encompass methods.

    This is a typical PTO grab-your-ankles sand-bagging case, if you don’t mind me mixing my metaphors.

  115. “It isn’t clear to whether the BPAI is inviting the applicant to recite a little more structure or to simply invoke 112 6th to get the claims allowed.”

    Couldn’t he do either? Shouldn’t an attorney know this? Shouldn’t an attorney be able to make the decision for his client and then dictate to his client which it will be? lol, ok ok, maybe he should just suggest it.

    Really though gtg

  116. “Adding the word “system” should not be enough to turn this abstract puzzle solving exercise into a statutory claim.”

    I agree, but that’s not what happened with the system claims. The applicant recited some structure to carry out the steps. The BPAI read the structure out of the claims, improperly in my opinion, to allow applying Bilski in a straight forward manner. It isn’t clear to whether the BPAI is inviting the applicant to recite a little more structure or to simply invoke 112 6th to get the claims allowed.

  117. “The meaning of “strong” in the Unicode context is explained in Wikipedia as follows:” — BPAI

    Since when has Wikipedia become a reference by which patent rights can be extinguished? Any monkey with a net-connection can modify any Wiki entry so that it reads anyway they want. The BPAI “judges” or the examiner could have altered the Wiki entries to say what they need to support a rejection.

    Just this week some pea-brain modified Ted Kennedy and Robt Byrd’s Wiki entries to say they are dead.

    Wiki is not an authority on anything for any reason except, maybe, high school essays. The BPAI judges are just being lazy here. They get paid to much for high school quality work like this.

  118. “They said there was ‘no particular structure’”

    I don’t think that difference makes the difference. As an example, “mechanism” implies some structure, but is generally not enough to avoid 112 6th.

  119. “”Although the body of the claim recites a “label definer,” an “inferencer,” and a “character reorderer,” those recitations fail to serve as structural limitations.”

    Buh-bye Beauregard.

    God, I am loving this.

  120. 6,

    How do you feel about the BPAIs recent practice of reversing 103 rejections on claims that are arguably indefinite? Is the BPAI trying to discourage examiners from applying art rejections?

  121. 1. A method for converting a unidirectional domain name to a bidirectional domain name, said method comprising the steps of:

    establishing a plurality of labels within a unidirectional domain name by using a pre-determined full stop punctuation mark as a delimiter between said labels, said labels having an original label display order as encountered from left to right;

    within each said label, performing inferencing through resolving the direction of indeterminate characters by assigning a strong direction left or right to each indeterminate character;

    and reordering said characters within each said label of said unidirectional domain name into character display order using the fully resolved characters previously inferenced, thereby
    converting said uni-directional domain name to a bidirectional domain name in which said original label display order is preserved, and bidirectionality of characters within each label is produced.

    Hmm. Let’s see here. This is a method for converting a unidirectional “name” to a bidirectional “name”. The steps are “establishing,” “performing inferencing” (!!)and “reordering” characters.

    Purely mental hoohaw, and extremely poorly drafted (as usual). Do people really think they are “inventing” when they come up with this garbage? Do software developers really think so highly of themselves and every keystroke they type?

    Adding the word “system” should not be enough to turn this abstract puzzle solving exercise into a statutory claim. Might as well add a step of “pressing a button” or “breathing air.”

    By the way, was an example of source code provided with the specification? You know, to demonstrate possession, meet best mode requirements, and as an example to rely on when discussing unexpected results with the patent office. You know, sort of like what we in other art units routinely do before we ask the PTO to grant us years of exclusive rights to the methods we invented.

    Or was it basically a bunch of handwaving like most of these software applications?

  122. “This isn’t the law is it? Isn’t the correct claim interpretation to invoke 112 6th when faced with functional language and no structure?”

    They didn’t say that there was “no structure” they said there was “no particular structure”. The limitations most certainly imply structure.

  123. From the opinion:

    “The term “system” in the preamble is broad enough to read on a method and thus does not imply the presence of any apparatus.”

    Yikes!

    Next the opinion says:

    “Although the body of the claim recites a “label definer,” an “inferencer,” and a “character reorderer,” those recitations fail to serve as structural limitations because (1) they are not “means” recitations subject to interpretation under 35 U.S.C. § 112, sixth paragraph, and (2) they would not have been understood in the art as implying any particular structure.”

    This isn’t the law is it? Isn’t the correct claim interpretation to invoke 112 6th when faced with functional language and no structure? Perhaps the applicant did not identify the claims as means plus function in the appeal brief.

    Maybe the PTO got the result right, but this rationale doesn’t seem right.

  124. Ok I think I just hit “preview” instead of “post”.

    This is a weird decision. Read it and see a Miyazakied 112 2nd AND 1st and then a Bilski uppercut for the knockout.

    They worked this app over, but on the other hand at least he got off of the 103.

  125. This is a strange case. Read that thing. They Miyazakied a claim into a 112 2nd AND 1st and Bilskied it.

    They worked that mo fo over. On the other hand, he’s off in terms of 103.

    I love footnote 8.

    “We leave it to the Examiner to determine in the first instance whether claims 5-8 and 14, which recite a “computer readable medium encoded with computer executable software,” recite patent eligible subject matter”

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