Appealing BPAI Rejections to the Federal Circuit

In re Baggett (Fed. Cir. 2009) (nonprecedential)

The Board rejected Bagget's patent claims as obvious. On appeal, the Federal Circuit largely affirmed – holding that the the administrative body's factual findings were supported by the requisite "substantial evidence" and that the Board had properly “articulated [its] reasoning with some rational underpinning to support the legal conclusion of obviousness" as required by KSR. (Quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).

The only portion vacated involves an error interpreting the term "memoization." The Board had initially misinterpreted the term as memorization. After a petition for rehearing, the Board corrected its mistake – but only as to one of the four claims containing the term. On appeal, PTO Solicitor Chen explained that Baggett had only addressed the one claim in the petition for rehearing, but offered that a remand would still be appropriate.

Notes:

  • This case may serve to emphasize the difficulty in appealing an obviousness decision from the Board of Patent Appeals & Interferences. The "substantial evidence" standard is low, i.e., "more than a mere scintilla of evidence." Likewise, the legal conclusion of obviousness now looks merely for "some rational underpinning."
  • In a note, Hal Wegner identifies four Federal Circuit appeals up for review that may focus on obviousness: In re Applied Materials Israel Ltd., Fed. Cir. No. 2009-1083 (argument July 7, 2009); In re Mettke, Fed. Cir. No. 2009-1125; In re Roth, Fed. Cir. No. 2009-1223; and In re Rivera, Fed. Cir. No. 2009-1123.
  • Although it may have been amended during prosecution, the original claim 1 reads as follows: 1. A method of producing constructed fares that includes an arbitrary added to a published fare, said method executed in a computer system, the method comprising: determining interior cities that appear with gateway cities in arbitraries for the airline; searching for gateway cities corresponding to the determined interior cities appearing in the arbitraries; and applying an arbitrary corresponding to one of the interior cities to a published fare involving one of the gateway cities to produce the constructed fare.
  • Read the decision: 09-1029.pdf

86 thoughts on “Appealing BPAI Rejections to the Federal Circuit

  1. The end of the thread, I would say.

    The 24 Technical Boards of Appeal of the EPO are not perfect:look how they compete, and disagree with each other. Interesting is that (as a fact) they don’t have any court telling them what the law is. They have to bicker amongst themselves till they get it right.

    Is that good for the development of the law in mainland Europe on substantive patentability? Each to his or her own view, based on his or her experience, I would say.

    Thanks for playing.

  2. I think it is certainly important to have someone looking/deciding patents law that are out of the “system”. But that maybe is because I am fallible and assume others are also fallible. And of course I have another trait similar to those less fortunates from across the pond in the US. Question Authority!!! Try it – you might like it. It is certainly self-enlightening although scarey.

    I do notice that my European attorneys have a much harder time thinking outside of the box, they seem to feel/act like they are merely components of the machine whereas my US attorneys are not so stagnant/static.

    But I see your point of view, when you are perfect you do not have to answer to anybody and of course assuming that every inventive step issue in opposition has been determined correctly. Ewwwwww.

    When it come to litigating patents regarding billion dollar a year drugs, I much prefer the US system which does not pretend to simplify an inherently complex problem.

    Occams razor can be two-sided my friend so do not cut yourself. Simplicity is good for teaching and explaining, but the devil is in the details (especially when you are talking bllions of dollars). Everybody thinks PV=nRT is pretty cool, but once you get into some different conditions you better find another equation to explain your gas problem ;-)

  3. Thanks again Twerp. I’m flattered that you can get to the idea that I am employed within DG3. Do you usually win, in your games of poker?

    The point about PSA is that it is the creation of a mere Patent Office, not some body with overwhelming legal authority, like a Supreme Court. So, it’s ever likely to get a bit of stick from prejudiced people who think their Supreme Court knows better. Despite thirty years of constant sniping, it’s stronger now than it ever was. How come the Supreme Courts of the UK and Germany get ever closer to PSA, in their stream of current decision-making?

    People inside the EPO come from one national jurisdiction or another. Many of them on the TBA’s are steeped in the legal thinking of their countries of origin. In DG1, many of them are so lacking in experience of inter partes patent disputes that their view of PSA isn’t worth much.

    Never mind. I readily agree with you that PSA also scores:

    “becuase it is simple and more easily applicable across languages”

    which (joke coming up) would make it pretty handy in the USPTO (or so many Americans tell me).

    Are you one of those who argues that, because PSA is so “simple” it can’t be “right”? You know, in science, I thought the opposite was more often adduced: that the scientific theory most likely to be “right” would be the one with the most elegant simplicity.

    I can’t believe that you, as an obviously highly-intelligent patent practitioner with long years of experience, would be so closed-minded as to dismiss EPO-PSA for that reason.

    My contention is that PRS works at the production line level of pre-grant examination, but works equally well in the extreme conditionsof litigating the validity of a blockbuster patent. It will work there too, but only when the court and the litigants play according to the Rules of the PSA Game, that is to say, identifying the technical feature “gap” between D1 and the claim, then exploring the technical effects delivered when the gap is crossed. Whether D1 is a fair starting point, what exactly is the nature of the gap, whether particular effects can be prayed in aid, and whether they are actually delivered, are questions that cost millions of dollars to resolve in the courtroom. But at least they are questions relevant to the issue whether the inventor should get 20 years of monopoly, questions to which the PHOSITA can relate, and questions that exclude ex post facto analysis.

  4. We now see that Max must sit on one of the boards of apeeal at the EPO. Surely every decision cannot be correct… We call that a tell in poker ;-)

    Actually Max, I have heard a number of people within the EPO, at different levels, acknowledge shortcomings of the PSA. But in the end it works for the EPO becuase it is simple and more easily applicable across languages. That does not mean it is more accurate. Beauty is in the eye of the beholder and so is obviousness.

  5. Dear Eurotwerp, Eurodisnae, Lionel, thanks for your contributions.

    I do not agree that the “proper” question is how many times PTO Exrs come up with the “right” result. Sorry. I think the test worth contemplating is to be found in the results of oppositions at the EPO where obviousness is key to the outcome. And there are thousands of them. How many of them reveal that EPO PSA (when executed “by the book”) would deliver the “wrong” result? I put it to you: none of them.

    And witness the very recent trend towards harmonisation with EPO PSA that you can now see, not only in the English courts but also in the BPatG of Germany. Put that in your pipes and smoke it.

    Disnae asserts that PSA is not suited to all cases. Sorry, but I have the feeling that all my interlocutors are parroting what they have been reading (“terrible master”, that sort of guff)somewhere else, without actually thinking it through for themselves. In the beginning, I was just as prejudiced against PSA as the next man. But latterly I have come to see that the criticisms are without a good basis. I invite you to think for yourselves.

  6. … thought I felt my ears burning …

    My position on PSA is that it’s a useful tool, not unlike TSM, for constructing a solid argument that something is obvious. Failing the test, when properly applied, should normally be the kiss of death for a claim. The problem with TSM in the US was that passing it was too easy. The problem with PSA in Europe is that the EPO shoehorns everything into it, whether appropriate or not, and it often isn’t. A useful servant but a terrible master.

  7. Max,

    I am not knocking the PSA formalism, but do you really not see where hindsight comes in just as easily as in the us.

    If the EPO had a straight novelty test than it would simply be a matter of deterimining what was in existence st the time of filing AND determining whether whether any of the new stuff could be described as technical.

    However, I believe the EPO has some minimal threshold you need to meet to be a technical step. As long as any judgment is involved, hindsight is a possibility.

  8. Correctly executed? There is no correct execution, its subjective.

    My points about later filed evidence and the would-could approach led you down the path of undertsanding that inventive step analysis is not so different than US obviousness analysis.

    Be careful not to confuse what you read in case law like AGREVO and what happens in practice. Of course the EPO and the USPTO make a lot of noise about Hindsight becuase it is a real problem for both systems. Something you can try to minimize, but can never avoid due to the way the human mind works. It simply is not a mathematical calculation. Lawyers cannot even do math, so I do not not why they talk about calculations (except for how many hours they will bill for work they didnt do ;)).

    In your pharma example, I would say this is the wrong outcome…. And patentability in pharma does not depend on effect. The vast majority of patents on pharmaceutical cover compounds that either do not have an effect in the disease, or are undevelopable for numerous scientifitc reasons. So I am not sure what this means.
    Pharma patentability has to do with telling a good story about how you might have an effect….

    Can you give me examples of USPTO inventive step analysis when correctly applied leads to the wrong results? This is a silly lawyer question that sideskirts the issue like the PSA.

    I think the proper questions is when applying EPO PSA and USPTO inventive step analysis to the same problem how many EPO examiners out of 10 come up with the right answer and how many USPTO examiners out of 10 come up with the right answer.

  9. I’m enjoying this. Thank you Twerp.

    I thought we had agreement, that hindsight simply cannot be excluded (however we tackle the obviousness issue) because, inevitably, we are all having to look backwards in time. If that’s what you mean by “impermissible hindsight” where do we go from here? We are stuck, aren’t we?

    Meanwhile, crying “hindsight” isn’t enough to invalidate EPO PSA.

    There’s nothing wrong with picking the best prior art starting point, with hindsight, if what we are after is an objective test, of what would or would not have been obvious to that notional creature (who has the attributes of no human living) namely the PHOSITA, who knows all the art but is incapable of any innovation.

    And don’t say that a test that uses the PHOSITA is artificial and so is disqualified. Since when did anybody use that argument against novelty attacks?

    Could/would is a handy way of expressing the core thought in AGREVO T_0939/92, but no substitute for reading the source. Agrevo imputes to the PHOSITA a purpose to her/his review of the state of the art, rather than mere scholarly looking aimlessly into the far blue yonder. That’s what paid motivated researchers do in the real world of patented innovation, or not?

    Surely you don’t criticise the EPO for finding that old references fail to prove obviousness? The US has “long felt need” as a secondary indicator, and you might enjoy Prof. John Duffy’s Paper on his “Timing” theory of obviousness which argues (and I hope I don’t offend him here) that inventiveness goes up with the agedness of the references being applied.

    And then you cite post-filed evidence in an attempt to knock away my position. But suppose the inventor says “cure for disease Y” in her app for Molecule X, and the search report throws doubt on that assertion. The EPO allows Applicant to adduce additional evidence of the technical effect, post-filing. But, if the inventor never said anything about Disease Y in the app as filed, and then tries to save the app from refusal by arguing “But, actually, X cures Y”, that isn’t going to work. And why should it, when patenability in pharma depends on effects, and when (in Europe) it is a First to File race to the Patent Office?

    As I say, with PSA it’s a case of: read the app, read D1, compute the objective technical problem and Bob’s Your Uncle.

    Clearly you are knowledgeable on PSA. Maybe a relative of that earlier commentator Euro-Disnae, blogging in a Scottish lunch break? Can you cite real instances, where EPO PSA, correctly executed, leads to the “wrong” result. I’m still curious. And thanks for debating.

  10. Yes, well put Max, I think you have it now, PSA cannot exclude hindsight, eventhough they try to say it does.

    Choosing the closest prior art based on knowledge of the invention is hindsight at its finest.

    Defining the problem and solution is silly since invention rarely follow this simple formula nor do inventive ideas, but OK, we can argue over problems and solutions, but that is really a side question, to the big rhetorical question of obviousness/inventive step.

    So maybe we cant agree on what are the problems and solutions are and how they apply to each other.

    So with PSA then we get stuck with the would-could solution.

    Oh my god Max. Now we have to make a would-could distinction based on a process ripe with hindsight (yes I drift as I do not think would-could is offcially part of problem solution).

    So in decisions like T 273/92 and T 795/93 where they find inventiveness because the prior art document had been around for a “long while”. Talk about hindsight (kinda going the other direction though).

    Of course you also have the whole submission of post-filing date evidence for inventive step thing to that is outside of PSA, but inside of the question that PSA tries to address, inventive step.

  11. Just one more thought, Twerp: we need to distinguish between “hindsight” and “ex post facto analysis”.

    Unless we can do the impossible job of judging obviousness BEFORE the inventor files the claims at the PTO, we will always be looking backwards “with the benefit of hindsight” when deciding whether any particular claimed subject matter was or was not obvious on the decisive date. We can’t help enjoying the benefits of hindsight, can we? It’s a “given”, right?

    But what we can help is the choice of materials that we are going to use, to decide obviousness.

    We could, for example, use witness evidence, created at the time of trial. Then we would have to be specially alert for the intrusion of subjective opinions, and ex post facto analysis of obviousness.

    Or (as in EPO-PSA) we could decide the core question on the basis of documentary evidence created BEFORE the date of the claim. Then it would be easier to spot ex post facto analysis of the materials, by asking of the advocate of that analysis the naive and simple bubble-bursting question: “Excuse me but where in the documents do I find basis for that assertion, please?”

  12. So, Twerp, we are in business here.

    If you want to destroy a claim under PSA, you are free to select whichever D1 you think will serve your purposes. It is no more “subjective” than science is subjective.

    Saying and doing are indeed two different things, Twerp. Forgive me, but that statement is banal. The important thing about PSA is that the moment hindsight creeps in, you can call the offender out (if you understand PSA and are attentive and alert). The moment you call the offender out, it is blatantly obvious that he is relying on hindsight. There follows an ignominious collapse of the (up to that moment) stout party.

    I do so agree with you that “many people” “think” that there’s a hindsight problem with PSA. But you know what Think did? Followed a muck-cart, “thinking” it was a wedding. Frankly, those “many people” have an axe to grind, or else don’t know their arse from their elbow.

    You are right that PSA is simple. There lies its usefulness and elegance. But so too is riding a bike. Can you remember; how long did it take you to master that?

    Your go now.

  13. Zak,

    The medical device field is a good one to stick with. Out on the West coast we have been seeing an uptick in activity in that field. (Sorry, I don’t have any good job leads to give you at the moment. The economy is still limping on crutches.)

    As for the PTO and what it is supposed to do under the law (35 USC 132), there is theory and then there is fact. Generally, the PTO does not live up to its obligations, although some examiners do honestly try. However, you as a practitoner (with JD :-) have no excuse to not develop an appropriate administrartive record under the possibility that you might have to go up on appeal. Did you see the recent case of Hyatt v. Doll? Although I don’t agree with the majority and I side with Moore J. (heaven forbid) on the notion that 145 is for a “civil trial”, in truth, Hyatt should have filed his declaration before the Board and created an administrative record before going higher up on appeal. Why waste everyone’s time and money by hiding the best evidence for last? Makes no sense.

  14. Yes but identifying the narrowest gap is subjective in itself, do you go by structure do you go by function, do you go by what the examiner says, do you go by what the inventor says. I guess that is all “Objective” if you have duly identified the narrowest gap.

    Just because the EPO says they rigourously exclude hindsight does not mean that is does not pervade the PSA approach. Saying and doing are two different things my friend Max.

    Go back Max and read some basic psychology about hindsight and then you may have a different opinion about it. And you may realize that you are fooling yourself that PSA is free from hindsight eventhough although the greatest legal authorities claim otherwise.

    As you know Max, many people think there is a hindsight problem with the PSA – I am not the only one. Hindsight is always there, but the bigger problem maybe in denying that it isn’t there in PSA.

    As for grasping the PSA, it is rather simple and forumlistic and easy to grasp, but not necessarily logical.

  15. Gee thanks for the quick response, Twerp, but sorry, I don’t follow you.

    To be objective, when assessing whether or not the claim embraces something that is obvious one must do it by reference to the totality of the state of the art (rather than just the sub-set of the art that the inventor and her attorney knew about). In other words, what is objective is the gap between the boundary of the claimed area and the closest approach of the prior art universe to that boundary. Any other obviousness attack is second class and not worth examining. If the closest approach doesn’t destroy the claim, then neither will any other attack.

    As you say, the difficult thing is to exclude hindsight, when examining that duly identified narrowest gap.

    That’s where EPO PSA (Agrevo is the leading case)rigorously excludes hindsight. The Inventor is judged to be obvious or not based on a strict comparison of what she wrote in the app. BEFORE filing it at the PTO, and what was written and published in D1, BEFORE the filing date of the app.

    But you know all this, don’t you? Or, you’d rather I didn’t try to tell it you. So I’ll do you (and weary readers) a favour, and refrain.

    Meanwhile, you haven’t yet convinced me that I’m deluded. Instead, I think you don’t yet understand EPO PSA, and I am not sure that you even want to. Actually, I suspect that you’re prejudiced against it. For the sake of your clients, who want you to get good results in Europe (better than you did in Germany?) you should make an effort to grasp it.

  16. Max -

    I guess what you are missing is the “psychology” behind hindsight and the body of literature analyzing how this affects our decision making and subjective perception. There is much work that has been done in this area. Unless you are proposing to reprogram the minds of the european patent office (which is not a bad idea), you are deceiving yourself that hindsight does not bias the PSA.

    See e.g., Kamin & Jeffery J. Rachlinski, Ex Post ≠ Ex Ante: Determining Liability in Hindsight,
    19 LAW & HUM. BEHAV. 89, 98 (1995)

  17. Yes Max, you are right, those german judges like to give out spankings and they always assume there formulistic approach is the best way!

    As you note, the PSA is pregnant with hindsight. Just because you say PSA is not supposed to involve hindsight after the initial step of identifying the problem and solution does not mean that it avoids hindsight. In fact it is a big trick you play on yourself by beleiving this.

    Remember problem/solution etc. are usually defined in the context of the archane world of patent drafting well after experiments are performed and not necessairly in view of the Inventors subjective perception.

    Id imagine that one could make a pretty good living arguing PSA case at opposition or in European courts – what do you think?

  18. “The examiner had the good sense not to apply them in his next office action, which the Board told the examiner to issue with special dispatch.”

    I would have made absolutely sure that it made it out in the next year in that case. 300 some days later as a matter of fact. Your dispatch would have been very special indeed. Tongue lashing an examiner and then suggesting 103 excluded art. They need a tongue lashing themselves apparently. Of course, if he didn’t have you on the record saying the inventions were commonly owned at the time of invention (or whatever time it asks for) then he should have made one of them to get that statement. Other than that, how bogus.

  19. Have to take the bait, don’t I!!

    Twerp, what’s with this “Eurpean Inventive Step Law” that’s eating you? My hunch is that you got burned by the German judges. In which case, you have my sympathy. But if you got hurt by the EPO Problem and Solution Approach, I should like to hear more because (as long-suffering readers of this blog very well know) EPO-PSA:

    1) gives full faith and credit to what the inventor recites in the app, as to the technical field and the problem addressed

    2) from that point on, it excludes hindsight, and

    3) goes about its analysis more objectively than any other approach.

    It also accords with the real life behaviour of the PHOSITA, so lay clients (and inventors) eagerly sign up to it (once they understand it properly).

    All of this renders it beyond the comprehension of the community of litigators. If they were to grasp it, they would find it deeply unpalatable, because it sweeps away much of the legal uncertainty on which litigators depend for their ongoing income. That would explain why EPO-PSA isn’t yet pleaded in courts of law.

    So, do tell.

  20. Haven’t seen any obvious discussions lately, but the new Bayer v. Barr Fed Cr. case got me horny.

    I love newmans dissent which is also great at capturing main problems with Eurpean Inventive Step Law:

    “With all respect to my colleagues, I do not share their view that it would have been obvious to do that which was indisputably unobvious to the experienced formulation scientists whose assignment was to formulate the known product drospirenone. The evidence showed, without contradiction, that it was known that micronized drospirenone rapidly degraded at the acidity of stomach acid. The evidence showed, without contradiction, that the Bayer scientists working in this field believed that the product required an enteric coating in order to prevent degradation in the stomach, upon ingestion as an oral contraceptive. Yet my colleagues, employing their own expertise, hold that since the scientists working in this field turned out to be mistaken, it would have been obvious that it was not necessary to take steps to prevent acid degradation. The court discounts the testimony of the scientists themselves, ignores the knowledge concerning this product and its instability in acid, ignores the textbook teachings, and finds that this unlikely process obviously should have been tried. That is not the law of obviousness.

    The statutory criterion is whether the invention would have been obvious to persons of ordinary skill at the time of the invention, not whether it is sufficiently simple to appear obvious to judges after the discovery is finally made, despite the years of contrary belief among the scientists charged with the project.

    “Obviousness” requires that the subject matter was obvious to persons of ordinary skill in the field of the invention. The law does not hold it “obvious to try” experiments that contravene conventional knowledge, and that are not deemed reasonably likely to succeed. The evidence in this case is a better measure of obviousness than is the hindsight science of judges, for the scientists who eventually made this discovery testified, without dispute, that they did not believe an uncoated micronized product would meet the demanding criteria of contraceptive effectiveness.”

  21. Step Back,

    I am from the Midwest and in addition to my JD I have a BS Neuroscience and BS Biochemistry, and completed the coursework for a MS in pharmacology. (I left graduate school to take my current, now part-time, position.) For the last 3 years I have been drafting and prosecuting Medical Device patents and the like. I actually enjoy prosecuting Medical Device patents because it is an interesting intersection of the “predictable mechanical / electrical arts” and the “unpredictable biological arts.”

    Regarding 35 USC 132; I do think the first sentence, first clause of 132(a) requires the USPTO to create the administrative record required by the CAFC in In re LEE and other cases. I think the second clause of that sentence clearly gives the Applicant the right for continued examination. How much continued examination appears to be an open debate.

    132(b) clearly gives the Director the power to prescribe regulations to facilitate the continued examination. A valid argument can be made that the remand and new grounds powers of the BPAI are procedure rules designed to facilitate continued examination by enabling the Board to redirect an Examiner who has gone astray. That is undoubtedly a legitimate justification for the rules. What concerns me is the possibility that the rules could be abused to create an endless loop of remand to keep an Application in perpetual limbo. On the other hand, any procedural rule, regardless of the legitimate intent of agency in enacting it, could be abused. If we threw out every rule that could be abused we would almost certainly have no rules. That is not to say that procedural rules enacted to facilitate an illegitimate substantive purpose should not be thrown out. Just as neutral laws on their face are not allowed to stand when it is clear from the record or evidence that they where enacted to serve an illegitimate discriminatory purpose, so to should procedural rules not be allowed to stand when it is clear from the record that they were enacted to have substantive affect. But that is a matter for another post.

  22. You’re right. Thanks for the correction. My unstated thought was the low threshold required for upholding the rejection.

  23. “I have never actually confronted the problem myself. So my colleagues may have been exaggerating the number of remands as to tell a good story.”

    ya think??

  24. “While JohnDarling has given at least one example of an application in which the Examiner has apparently tried to block issuance by repeatedly reopening…

    Wendy, both of those applications (09/193,787 and 09/077,3337) have been allowed. One (09/077,337) with a patent term extension of 1584 days.

    I commend the applicants and their counsel in their diligence in pursuing their allowances. Three cheers for them.

    I’m not aware of an instance of numerous remands. I’ll be on the look out though, and if I hear of one, I’ll be sure to let you know.

    Remand is (supposed to be) rare, and in my experience it is, relatively speaking. I’ve only had one case remanded. A nice twelve page tongue lashing of the examiner by the Board on what a POS his rejections were. The Board actually suggested a new field of search for the examiner. And cited several new references for the examiner to consider combining. Which was nice. But all the references they cited were commonly owned 102(e) prior art. The examiner had the good sense not to apply them in his next office action, which the Board told the examiner to issue with special dispatch. It took the examiner 6 months to issue the office action. Six months. That’s what passes for special dispatch at the PTO.

    I’ve seen a few other remands. As they are not final decisions, they don’t get published in the BPAI Reading Room section of the PTO website. You’ll only see them if you review the file history.

    I’ve long advocated changing the Rules to prevent re-opening by the examiners, new grounds in an examiner’s answer, remands by the Board, and new grounds by the Board. Nothing would stop the RCE gravy train faster than a message to the examiners that their only course of action in response to an appeal brief was either an examiner’s answer or an allowance.

    Of course, that’s too sensible a fix for PTO (mis)management. They’d rather write a 7 page version of Rule 78 to prevent 3rd and higher continuations, which represent about 7% of their filings.

    The PTO’s position is, and has always been, and I guess always will be: We have an unlimited number of opportunities to get it wrong.

    Don’t see that changing anytime soon.

    Oh well.

  25. Zak,

    Read 35 USC 132. The answer you seek is buried in there. Good luck with your job search. What part of the world do you hail from and what art do you specialize in?

  26. Wendy Pan makes asks an interesting question. I have only heard of the endless “reject, reject, remand” scenarios from colleagues at CLEs and over lunch. I have never actually confronted the problem myself. So my colleagues may have been exaggerating the number of remands as to tell a good story. I am wondering how many attorneys / agents out there have an application on its second remand from the Board or its second reopening of prosecution after an Notice of Appeal (i.e. after filing a Pre-Appeal Brief or full Appeal Brief)?

  27. While JohnDarling has given at least one example of an application in which the Examiner has apparently tried to block issuance by repeatedly reopening, is there any actual application where the BPAI has actually repeatedly remanded the case (more than once) in an apparent attempt to prevent a final agency decision? If you don’t have an application number (or can’t give one due to privacy concerns), at least give some of the history so we can see what is going on.

  28. 6,

    I am pretty sure that the reason for denying a patent on an application under the substantial evidence review required under the APA has to be more than just some reason. I am also sure that it has to be valid reason. Otherwise, you could deny a patent with little more reason than I said so. To legitimately deny a patent on an application, rather, the USPTO (meaning the Examiner and the Board) must produce an administrative record that contains evidence and valid reasoning as to how that evidence supports their decision to a deny a patent on an application. See In re Lee (2002) (quoting both In re Zurko and In re Gartisde). (By the way, In re Lee is not cited in the MPEP so you are going to have to look for a copy elsewhere.) The USPTO cannot just say “we are the experts and we do not feel your application is entitled to a patent, so there.”

    The problem Broje, I, and others have with the current practice is that the USPTO can prevent any judicial review simply by continuing to remand or reopen prosecution whenever it is challenged for failing to provide an administrative record that contains evidence and valid reasoning as to how that evidence supports their decision to a deny a patent on an application. This allows them to in effect deny applications without producing the required administrative record. That ability is what, in my opinion, violates the APA.

    Now, if the USPTO does not want to be bound by the APA then they should not have taken Dickinson v. Zurko to the SCOTUS. After all, at the request of the then Commissioner, the Supremes overruled an en banc decision of the CAFC and held that the USPTO is an administrative agency and has to be treated as such under the APA and not like a trial court as the CAFC had wanted. I still do not why the USPTO wanted to be treated like an administrative agency rather than a trial court, but they did, they got it, and now you are stuck with it.

  29. JohnDarling,

    I like your suggestion and actually hope that someone does challenge those rules.

    Unfortunately, my company does not have the bankroll to fund such a litigation. Besides after the CAFC decision in Tafas v. Doll upholding the rules because they are procedural on their face despite the fact that they have a substantive impact, I am afraid that that the USPTO will successfully argue that the rules giving the BPAI remand and new grounds of rejection authority are procedural on their face and thus valid. However, if the decision gets overturned on en banc review then maybe those new grounds for rejection and remands rules should be challenged in court.

  30. times are tough, even for many patent practitioners. good luck with your job search (an experienced patent litigator friend of mine has been looking for a job for six or seven months)

  31. “The USPTO is not supposed to have that power. ”

    Actually, it is. Why don’t you review the transcripts from KSR before the USSC?

    “the APA requires that a decision by the USPTO to deny a patent on an application must justifiable under a substantial evidence review and not cloaked in the “haze of expertise.” ”

    So?

    “to deny a patent on an application for reasons completely cloaked by darkness.”

    I just got through telling you the reason. The reason is that the application does not appear entitled to a patent. Simple as that. End of story.

    “can deny a patent on an application for arbitrary and capricious reasons and reason not justified by substantial evidence. ”

    So?

    Btw, you belief in the “spirit of the APA” is misplaced, at best.

    Regardless, the series of Zurko cases state quite clearly that all that need be done is put down some justifications for denying the application. No biggie. It doesn’t say anything about them having to be wonderful reasons, or even valid reasons. All there needs to be are some reasons, so the decision can be reviewed. Even after it is reviewed however, the pto is not obligated to necessarily allow the case.

    “Such legislative action may also have the added benefit of actually forcing meaningful examination on the merits. ”

    Such legislative action would cost billions, or more. Good luck.

    “I am curious if thare are any other suggestions as to how this APA defying power could be removed from the USPTO.”

    Simple. Repeal the APA. Then the power of the USPTO to defy the APA will be removed. Or, remove review by the board, and allow appeal directly to the courts. Furthermore, allow appeal to the courts right after FOAM. There’s an infinite number of ways. Fortunately, nobody worth knowing sees this “power” of the USPTO as violating or defying the APA so nothing will ever happen.

    If we don’t trust the pto, who can we trust?

    >:)

    Holy crp, I just found the audio of the USSC Zurko oral arguments.

    link to oyez.org

    That is a must hear for you guys considering going to the DC.

    I love that site.

  32. “I am curious if thare are any other suggestions as to how this APA defying power could be removed from the USPTO.”

    Maybe a tidy little lawsuit in the EDVA that the appeal rules giving the BPAI remand authority and new grounds of rejection authority are not in accordance with the law (i.e. Sections 6(b) and 134) and thus violate the APA.

    Just a suggestion. :-)

  33. Broje,

    I agree with that the power of the USPTO under 37 CFR 41.50(e) to deny Applicants standing indefinitely is very troubling. It gives the USPTO the power to, as 6 noted, “refuse to issue any patent [application] that just doesn’t appear to be entitled to the patent right.” The USPTO is not supposed to have that power. As the SCOTUS held in Dickinson v. Zurko, the USPTO is an administrative agency and is supposed to be treated as such in accordance with the APA. As the CAFC noted in In re Gartside (2000), In re Zurko (2001), and In re Lee (2002), the APA requires that a decision by the USPTO to deny a patent on an application must justifiable under a substantial evidence review and not cloaked in the “haze of expertise.” The ability to deny standing indefinitely circumvents the review required by the APA and allows the USPTO to deny a patent on an application for reasons completely cloaked by darkness. As such by continuing to “reject, reject, remand” the USPTO can deny a patent on an application for arbitrary and capricious reasons and reason not justified by substantial evidence. The spirit of the APA, Dickinson v. Zurko, and the resulting CAFC case law clearly indicates that the USPTO, and no other administrative agency for that matter, is meant to have such power.

    Unfortunately, I think the only way to remove such power from the USPTO is to amend 35 USC as to either limit the amount of times the BPAI may remand an application to the Examiner or to allow an Applicant to continue prosecution in front of a Federal District Court after a critical number of remands by the BPAI. Such legislative action may also have the added benefit of actually forcing meaningful examination on the merits.

    I am curious if thare are any other suggestions as to how this APA defying power could be removed from the USPTO.

  34. 6,

    In utter disrespect of the Law: “Bottom line broje, the pto can unissue or refuse to issue any patent or app that just doesn’t appear to be entitled to the patent right. That’s just how it is.”

    You never manned up to the 151 challenge over at Patent Prosepector on your beloved “if it appears” out of context challenge.

    link to patenthawk.com

    WCG,

    my condolences and good luck in your search.

  35. West Coast Guy,

    Thanks for the compliment. Nice words are always appreciated; especially in the midst of a job search after being reduced to part-time with my current employer.

  36. That “option” simply is not sufficient to broje.

    For the rest of the world however, it is a sufficient option.

    Bottom line broje, the pto can unissue or refuse to issue any patent or app that just doesn’t appear to be entitled to the patent right. That’s just how it is.

  37. “Although the BPAI can’t be bypassed, the applicant can sue for a patent under § 145 if the BPAI sides with the Examiner.”

    That “optio” is not sufficient because the Board can simply send the case back to the Examiner with instructions to perform another search. Time and again, I have see Exmainers simply refuse to let things go to the Board, preferring instead to reopen again and again. And time and again, I have seen the Board do essentially the same thing, by telligng the Examiner to just cook up another bogus rejection. The fact is that the BPAI has the power to deny Applicants standing indefinitely, and I think that they use that ability to cherry pick which cases go to trial and on which issues. It’s just my observation.

  38. Actual Inventor and Malcolm Mooney mention cars. I’m curious. These days, cars (all sorts) very often include navigation computers (many different types). Purely for the sake of debate, is the following claim (perhaps written by a hotel operator) directed to subject matter that meets (particular machine) 35 USC 101:

    Any old car, with any old navigation system, but with the improvement that the navigation system has been set to take the car to (say) Bebopalooma, Maine.

    If Bebopalooma Maine is sufficiently remote, the claim might even satisfy 102. But that’s not what interests us here is it?

  39. Step Back,

    While you are right that in one context, the review of jury verdicts, substantial evidence determines if there is any evidence in the record to support the jury verdicts (As you quite nicely put it “‘substantial evidence’ looks to the question of whether the winning party put any weight on its side of the scales.”), you are forgetting the other context in which “substantial evidence” is used as a means of review. This other context is the review of agency determinations (such as rejection by the USPTO) to determine if their factual determinations and legal conclusions are based on upon “substantial evidence.” In that context the court does not merely determine if the record contains evidence in support of the agency’s finding or conclusion, but instead whether the agency properly established the record by identifying and citing to the evidence that supports it finding and conclusions and the reasoning relied upon. See Lee 277 F.3d 1338 (Fed. Cir. 2002); In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001); and In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000).

    I think this dual practice of “substantial evidence” review naturally creates confusion by using different judicial review in different context. Unfortunately, the different themselves necessitate the dual practice. Juries are black boxes of factual determinations. Evidence presented at trial goes in and factual finding comes out. There is no written opinion provided by the jury to explain or present their findings, just the findings themselves. Because the inner workings of the jury are always hidden from view, a review court can only determine if “substantial evidence” presented that could support the jury’s verdict (“[Look] to the question of whether the winning party put any weight on its side of the scales”).

    Agencies, such as the USPTO, on the other hand are not meant to be black boxes cloaked by “the haze of expertise.” (I believe a quote from Zurko and Lee.) Rather the APA sets forth a “substantial evidence” standard of review. In order for this review to be meaningful there must be a record identifying the evidence and the reasoning relied upon by the agency to supports is finding. If the agency has not identified evidence supporting its finding and provided no reasoning to support its conclusions based on that evidence, then the agency has failed to establish a record facilitating review under the APA, and therefore has not put forward “substantial evidence” to support its factual findings and conclusions. If the agency has developed the appropriate record facilitating judicial review as required by the APA, then the review asks whether the reasoning and evidence relied upon could support its findings and conclusions. (The reviewing court “looks to the question of whether the winning party put any weight on its side of the scales”).

    So basically, substantial evidence review is a two step dance for judicial review of agency determinations and a one step dance for a review of jury verdicts. I think many people get confused and start making “apples to oranges” comparisons because they forget that this is two dances with the same name.

  40. “Okay 6, lets get this.”

    No, let’s not get a thing. Instead, you go get what a method is. Then go get what a set of instructions is. Then review the difference for yourself.

    This is so basic that it is one of those things where I can lead you to water but I can’t make you drink.

    “but the SCOTUS will be correcting that shortly.”

    /facepalm

  41. 6 wrote: “Funny, I have yet to see the statutory category that is “set of instructions”. I see only product, apparatus, composition, and method.”
    Okay 6, lets get this. Technically its a process or method. The word “process” is actualy used in the statute although both words can be used interchangeably. So what is a process? A series of acts, or steps, to be carried out. So essentially a process, when written out, is a set of instructions. Now let’s look at the dictionary definition for the word “instructions”.
    “instruction |inˈstrək sh ən|
noun
1 (often instructions) a direction or order : he issued instructions to the sheriff | he was acting on my instructions.
• ( instructions) Law directions to a lawyer or to a jury.
• Computing a code or sequence in a computer program that defines an operation and puts it into effect.
2 ( instructions) detailed information telling how something should be done, operated, or assembled : always study the instructions supplied.
3 teaching; education : the school offers personalized instruction in a variety of skills.”
    So as you can see there is no doubt a process standing by itself is patentable subject matter. And there can be no doubt that referring to a process as a set of instructions, for practical purposes, does not change its meaning.
    Now one could write a series of steps for solving an equation that proves a law of physics, and that would not be patentable subject matter, as its one of the judicial exceptions. However one could write a series of steps for operating a computer or baking a cake for that matter, and that would be patentable subject matter.
    Of course I understand that the Bilski court erroneously limited processes to being tied to machines or transformations only, but the SCOTUS will be correcting that shortly. Anyway, hope this helps ya.

  42. “Funny, I have yet to see the statutory category that is “set of instructions”. I see only product, apparatus, composition, and method.”

    Okay 6, lets get this. Technically its a process or method. The word “process” is actually used in the statute although both words can be used interchangeably. So what is a process? A series of acts, or steps, to be carried out. So essentially a process, when written out, is a set of instructions. Now let’s look at the dictionary definition for the word “instructions”.

    “instruction |inˈstrək sh ən|
noun
1 (often instructions) a direction or order : he issued instructions to the sheriff | he was acting on my instructions.
• ( instructions) Law directions to a lawyer or to a jury.
• Computing a code or sequence in a computer program that defines an operation and puts it into effect.
2 ( instructions) detailed information telling how something should be done, operated, or assembled : always study the instructions supplied.
3 teaching; education : the school offers personalized instruction in a variety of skills.”

    So as you can see there is no doubt a process standing by itself is patentable subject matter. And there can be no doubt that referring to a process as a set of instructions, for practical purposes, does not change its meaning.
    Now one could write a series of steps for solving an equation that proves a law of physics, and that would not be patentable subject matter, as its one of the judicial exceptions. However one could write a series of steps for operating a computer or baking a cake for that matter, and that would be patentable subject matter. Of course I understand that the Bilski court erroneously limited processes to being tied to machines or transformations only, but the SCOTUS will be correcting that shortly. Anyway, hope this helps ya.

  43. During the U.S. Civil War c. 1861-1865 there were two patent offices. The U.S.A. (North) and C.S.A. (South) each had a Patent Office.

    C.S.P.O. issued 200+ patents. Mostly on military related apparatus.

  44. …and I might add, neither is the Board a neutral trier of fact. Just ask yourself – who sets the rules that the Board must follow and who pays the checks for all members of the Board? (Hint: It’s the Office).

    Don’t let the title “judge” fool you – the BPAI is NOT a part of the judicial branch.

  45. WCG she is concerned about the Board’s ability to pull the rug out from any applicant with some claims that could potentially make it through the CAFC and confirm her position as being right. All they have to do is reverse and the applicant never gets to the CAFC, and until then the Board’s cases on the subject control what the examiners do. In other words, she’s worried about the board cherry picking the cases which it allows to go up based on their factual considerations and tossing all the cases which would support her point back down to the examiner.

    This of course is not the case at all. But it is what she is worried about.

  46. “Hey, don’t shoot the messenger. As far as I’m concerned, if the Applcant is the first to solve the problem of calculating E=mC^2 on a computer, then the Applicant is entitled to a claim that recites calculating E=mC^2 on a computer. It is patentable subject matter in my opinion because it is a new use for a computer, which was itself patentable subject matter, and therefore fits the definiton of a patentable process laid out by Congress in the statute.”

    As long as the old machine was not capable of performing the new use. You know why nobody and their grandmother uses the “new use” bs under the statute. Because nobody hardly ever comes up with a genuine new use as the courts read the term, they simply put the old machine to a function it was perfectly capable of performing previously.

    I simply can’t get over this. Do you really believe that the first person to turn on a new model of computer is entitled to claims claiming the startup procedure which was never before come up with (on that specific brand/type of computer)? Do you believe that MS should be able to partner with any computer manufacturer (Dell) and patent the use of Vista on all of the new model lines?

    Are you that stupd? Seriously? Can you not see the writing on the wall? Wait for USSC to smack down harder than the CAFC did and rue the day you met Bilski (‘s decision).

    “But the fact of the matter is, the USPTO is playing hardball in trying to get rid of software patents, like it’s some kind of mission from God. And with that agenda foremost in its mind, the BPAI is in a position to cherry pick fact settings for pet issues and guide the courts to the result they want to achieve.”

    Thank our lucky stars that someone is showing up to help the system out, because without them you’d ruin it for yourselves in short order.

    “The NAACP was able to do that and make progress with Civil Rights issues until Congress passed section 1983 to allow any lawyer to recover legal fees in civil rights cases. That law, sold as a civil rights measure, was actually designed to take the reigns out of the hands fo the NAACP. It worked, and no real progress has been made in Civil Rights legislation since section 1983 went into effect.”

    Seems legit. The only question is, why didn’t they pass this law in 1950? Or, for that matter, 1800. Would it not have been just as fair in 1950/1800 as it is today?

    “What we need to do is create a way for Applicants to bypass the BPAI and go straight to court. ”

    Why on earth do you think that? The BPAI is your biggest supporter nearly 100% of the time. Look at the numbers over at 271. They already gave you 4 reversals out of 59 cases. And that ~7% error rate is the best thing you have going for you. If they were any good at their jobs you’d have 0 out of 59.

    “This is from Bilski I believe, “This CAFC in Nuitjen relied on the Supreme Courts defintion of a machine as a concrete thing,consisting of parts, or of certain devices and combination of mechanical powers and devices to perform some function and produce a certain effect or result. ”

    The CAFC has the attitude that if its good enough for the Supremes it is good enough for us. And thats good enough for me. So what’s the debate??? Anyone in an argument with the PTO over what is and what is not a machine should simply refer back to the SCOTUS definition and consider the rejection traversed. Case closed!”

    Apparently you aren’t familiar with the meaning of the word “particular”. Until you read up on it, could you kindly stop harping on the definition of machine? Perhaps you’re having trouble with the combination of the two words to make “particular machine”? You can get ESL classes for free if you need them.

    Btw, a “set of instructions” is not a “process” it is a “recitation of a process”. The actual process is some actions being performed. Like a product claim covers actual products, method claims cover actual performed processes, not “sets of instructions”.

    This is all basics AI, all basics.

    “So as along as a set of instructions is not one of the judicial exceptions it’s eligible subject matter. ”

    Funny, I have yet to see the statutory category that is “set of instructions”. I see only product, apparatus, composition, and method. You don’t need a judicial exception to except (lol) things that were never provided for in the first place.

    JD it would appear that it is an insulation from what you’ve told me.

  47. Actual Inventor: “of course no one would argue that a car is not a specific machine.”

    A method for managing a transaction between a seller and a buyer, comprising: receiving data regarding a baseball game from a seller, then determining a transaction value from said data, wherein said value is determined in a car.

    I guess that passes Bilski, right? Because a car is a specific machine.

    “as along as a set of instructions is not one of the judicial exceptions it’s eligible subject matter.”

    A “set of instructions” is an unpatentable abstraction. Do you understand 101? I don’t think you do.

  48. “What we need to do is create a way for Applicants to bypass the BPAI and go straight to court. Either that, or we need to diversify by having more than one patent office at which Applicants can choose to file.”

    Although the BPAI can’t be bypassed, the applicant can sue for a patent under § 145 if the BPAI sides with the Examiner. It is not an appeal but a de novo trial. The only downside (and it is not insignificant) is the cost of a trial in the D.C. federal district court.

  49. I might be wrong, but the way I see it, the Board actually functions as a trier of fact where a preponderance of evidence is typically the standard applied in a civil suit. It is difficult to see the Board in the same light as an appellate body of the judiciary because no action has taken place before a neutral trier of fact, i.e., the Examiner is not a neutral trier of fact.

  50. Hey, don’t shoot the messenger. As far as I’m concerned, if the Applcant is the first to solve the problem of calculating E=mC^2 on a computer, then the Applicant is entitled to a claim that recites calculating E=mC^2 on a computer. It is patentable subject matter in my opinion because it is a new use for a computer, which was itself patentable subject matter, and therefore fits the definiton of a patentable process laid out by Congress in the statute.

    But the fact of the matter is, the USPTO is playing hardball in trying to get rid of software patents, like it’s some kind of mission from God. And with that agenda foremost in its mind, the BPAI is in a position to cherry pick fact settings for pet issues and guide the courts to the result they want to achieve.

    The NAACP was able to do that and make progress with Civil Rights issues until Congress passed section 1983 to allow any lawyer to recover legal fees in civil rights cases. That law, sold as a civil rights measure, was actually designed to take the reigns out of the hands fo the NAACP. It worked, and no real progress has been made in Civil Rights legislation since section 1983 went into effect.

    What we need to do is create a way for Applicants to bypass the BPAI and go straight to court. Either that, or we need to diversify by having more than one patent office at which Applicants can choose to file.

  51. “Again, can somebody point to some real case law.”

    This is from Bilski I believe, “This CAFC in Nuitjen relied on the Supreme Courts defintion of a machine as a concrete thing,consisting of parts, or of certain devices and combination of mechanical powers and devices to perform some function and produce a certain effect or result. ”

    The CAFC has the attitude that if its good enough for the Supremes it is good enough for us. And thats good enough for me. So what’s the debate??? Anyone in an argument with the PTO over what is and what is not a machine should simply refer back to the SCOTUS definition and consider the rejection traversed. Case closed!

  52. And a car will take you anywhere under the sun, right mate? And of course no one would argue that a car is not a specific machine.

  53. As I understand it, software is a set of instructions, a process. Processes are patentable subject matter distinct and separate from the other categories as specially listed in the 1952 patent act and upheld by the SCOTUS for over 50 years. So as along as a set of instructions is not one of the judicial exceptions it’s eligible subject matter. The fact that these instructions/processes may be eligible for copyright protection is of no significance. And thats the facts.
    So deal just with it.

    “Of course, an actual piece of software that accomplishes this accounting trick would be protected by copyright. I’m still not sure why this isn’t satisfactory. As I recall, the complaint has something to do with it being difficult to sue people with deep pockets. Go figure.”

  54. Many BPAI decisions I read include a statement that the enumerated findings of fact are supported by a preponderance, and then cite to Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988), although the evidentiary standard applied to PTO fact finding is substantial evidence, which is a lower standard than preponderance.

    Is this an attempt to insulate the PTO’s fact finding from attack on appeal by proclaiming that it meets a higher standard than is required, or is it simply another example of the PTO citing whichever case law it chooses?

  55. No where in this paragraph does it say a “general purpose computer is not a particular machine.” You may infer this but as far as I can see this is not a statement of fact in the BPAI decision. Instead the board is rejecting NOT a computer or a computer as a machine, but an “unspecified algorithm” as being unpatentable method steps.

    Apparently the BPAI sees “general algorithms” as unpatentable, even when they are being used by a general purpose computer.

    I believe the BPAI supporting logic for this goes back to the judicial exceptions for patentable subject matter. For example, one can’t get a patent on E=MC2 even if a computer is programmed with the equation. Now a patent for the computer by itself is a definite a possibility.

  56. ScienceLaywer and WestCoast Guy,

    On the substantial evidence and preponderance of evidence thing; may I respectfully suggest that you guys are mixing oranges with apples?

    Consider the scales of justice that the blindfolded Lady of Justice holds. During disposition of a concrete case or controversy, one party piles its evidence onto one side of the scales and the other party piles its on the other side. One of the scales then tips more than the other. That’s “preponderance” of the evidence (i.e. an other than 50/50 split of the assigned weights).

    On the other hand, “substantial evidence” looks to the question of whether the winning party put any weight on its side of the scales. Did it have some meat to it or was it all just hot air? That’s a different question. Apples and oranges.

  57. Yes, but you should also have at least some particular structure or algorithm which performs the function. Without that the claim is hollow, like a 112 1st single means which claims everything that can achieve a certain function or result. What you should avoid doing is relying on empty unlabeled boxes in a block diagram to provide structure.

  58. People might be interested in a BPAI decision from last week: Ex Parte Verhaegh. BPAI reversed 101 rejection because the m+f claim was, in fact, directed to a “particular machine”. But then BPAI finds that machine lacks a disclosed algorithm in the spec, so it is not a “special purpose computer”, and thus is indefinite under WMS Gaming.

    link to des.uspto.gov

  59. “So, are we to read from this that “substantial evidence is somewhere between a hunch and a possibility?”

    Without going to the plethora of case law, here’s the definition of “substantial evidence” provided in Black’s Law Dictionary (which is pretty much summarizes every case that I’ve read reciting the standard):

    “Evidence that a reasonable mind could accept as adequate to support a conclusion; evidence more than a scintilla.”

    Conclusion: scintilla < substantial < preponderance

  60. “In any other legal venue, substantial evidence is more likely than not.”

    Might you be confusing “preponderance of the evidence” with “substantial evidence”?

  61. So, are we to read from this that “substantial evidence is somewhere between a hunch and a possibility?

    In any other legal venue, substantial evidence is more likely than not.

  62. “With software, competitors can copy the functionality of the software without having access to the underlying code, then claim they independently conceived.”

    I love it when the truth leaks out.

    News flash: in every other field, one can “copy” the functionality of a process or composition and also claim they independently conceived of the new process or composition and guess what? THEY ARE RIGHT.

    The difference is that in the real world where people actually invent tangible stuff you are required to claim your invention by describing it terms that are not purely functional. Thus, I can’t claim “A composition, wherein the composition cures athlete’s foot” or “A method for curing cancer, wherein a cancer patient is received, identified, and treated, wherein said treatment cures the cancer.”

    That’s only allowed in software, computer-implemented, and so-called “business method” art units where the Examiners are mouth-breathing stooges and the applicants are con artists.

  63. “Instead, the applicant should seriously consider initiating a 145 action in the district court where the issues are addressed de novo”

    Good point

  64. “Again, can somebody point to some real case law.”

    Don’t kid yourself that you’re going to see any different result at the Board. “Computer” isn’t magic language that’s going to work. Unless your clients are willing to pony up the cash to appeal to the Federal Circuit, you’re stuck with that.

    And, if you want a precendential opinion, check out Benson at the Supreme Court. A digital computer didn’t save that claim.

  65. “an actual piece of software that accomplishes this accounting trick would be protected by copyright. I’m still not sure why this isn’t satisfactory”

    Copyright only protects against actual copying, which is not much protection for software. With software, competitors can copy the functionality of the software without having access to the underlying code, then claim they independently conceived.

  66. Well, I suppose a cotton reel or a paper clip or a film canister could be said to be “unspecific” because there are 1000+1 things you can do with each one of them. But they are hardly in the same league as a PC. How many different programs are there, by now, that one can run on a bog standard PC? The entire essence of a PC, the reason people buy it, is that it will run any process under the sun, no?

  67. Yes, let’s argue whether the “computer” in this crap claim is “a specific machine.” Give me a fracking brack.

    A constructed fare = a nothing.

    This method accomplishes nothing. It’s a method for turning one number into another, with a computer. Intangible, abstract crap.

    This is how it’s going to roll, peeps. I feel no pity for those invested in a way of life devoted to churning out garbage like claim 1. Such claims have no relation whatsoever to promoting the progress of useful arts. Their only purpose is to leverage an accounting trick into an excuse to file a lawsuit.

    Of course, an actual piece of software that accomplishes this accounting trick would be protected by copyright. I’m still not sure why this isn’t satisfactory. As I recall, the complaint has something to do with it being difficult to sue people with deep pockets. Go figure.

  68. “See, for example, the post-Bilski decision, Ex parte Cornea-Hasegan (2008)”

    You are citing a non-precedential decision by the BPAI????? LOL

    Again, can somebody point to some real case law.

    “Well, I don’t see that a machine that computes is any more ‘specific’ than a machine that ‘receives’ or a machine that ‘transmits’ or a machine that ‘consumes power’ or a machine that ‘gives out heat’ or a machine that ‘makes a noise’, for example. All hopelessly un-specific.’
    Really? So you wouldn’t be able to tell the difference between a machine that consumes power and one that doesn’t? You also wouldn’t be able to tell the difference between a machine that computes versus one that doesn’t? How about if I use the term “fastener”? Is that specific? How about “radiator”? How about “diffuser”? However about “a light”? Are these terms also so “hopelessly un-specific”?

  69. “1. A method of producing constructed fares that includes an arbitrary added to a published fare, said method executed in a computer system, the method comprising: determining interior cities that appear with gateway cities in arbitraries for the airline; searching for gateway cities corresponding to the determined interior cities appearing in the arbitraries; and applying an arbitrary corresponding to one of the interior cities to a published fare involving one of the gateway cities to produce the constructed fare.”

    HAHAHAHAHAHAHAHAHHAHAHAHAHAHAHHAHAHAHAHAHAHAHHAHAHAHHAHAHAHAHAHAHAHAHHAHAHAHHAAHAHAHAHHAHAHAHAHAHAHAHHAHAHHAHHAHAHAHAHAHHAHAHA

    Hah

    Hah

    Good one.

    Tell me another.

  70. “I should clarify that it seems to be the opinion of the BPAI that a general purpose computer is not a particular machine. See, for example, the post-Bilski decision, Ex parte Cornea-Hasegan (2008):

    “recitation of a ‘processor’ performing various functions is nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims. The recitation of a processor in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, is insufficient to transform otherwise unpatentable method steps into a patent eligible process.”"

    O RLY?

  71. Well, I don’t see that a machine that computes is any more “specific” than a machine that “receives” or a machine that “transmits” or a machine that “consumes power” or a machine that “gives out heat” or a machine that “makes a noise”, for example. All hopelessly un-specific.

  72. I should clarify that it seems to be the opinion of the BPAI that a general purpose computer is not a particular machine. See, for example, the post-Bilski decision, Ex parte Cornea-Hasegan (2008):

    “recitation of a ‘processor’ performing various functions is nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims. The recitation of a processor in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, is insufficient to transform otherwise unpatentable method steps into a patent eligible process.”

  73. “last I heard a general purpose computer is not considered to ba a particular machine”

    How is that so? Is a general purpose computer a toaster? a lawnmower? a gasoline engine? I think the answer to all those would be “no” … thus, a general purpose computer is a specific machine.

    Also, I don’t recall seeing the term “general purpose computer” within the claim language.

    Regardless, I like to see the logic underpinning the argument that “a general purpose computer is not a specific machine.”

  74. Yeah, last I heard a general purpose computer is not considered to ba a particular machine. I’m not sure how this problem is going to be resolved, or if it might become moot when SCOTUS gets done with Bilski. At the moment, I am presuming there is a need to specify the use of the computer, such as by specifying with the information be processed represents. In this case, I think there is a use specified, which is to produce constructed fares, so we know what the information represents. That seems like a much narrower use than something like processing XML documents or converting numbers from base 10 to base 2.

  75. Agreed that a computer is a machine. Not sure that something as general as a single means “thing that computes” qualifies as a “specific” machine. There has been copious caselaw on this already, no? The point is not yet settled. Is it?

    That Disnae has a good question. I too would be interested in any thoughtful answers.

  76. “isn’t this claim thus likely to get a 101-Bilki-based rejection added, even though the Supremes took cert on Bilski?”

    What is it about “said method executed in a computer system” that you don’t understand? A computer system is a machine. Moreover, it is a specific machine. Ergo, how is this method not tied to a specific machine?

  77. If an applicant has the resources and wants to avoid the low “substantial evidence” threshold, he/she should seriously consider avoiding a 141 appeal to the CAFC. Instead, the applicant should seriously consider initiating a 145 action in the district court where the issues are addressed de novo. Then, the examiner’s view of “obviousness” under KSR can be put to the test in front of a neutral trier of fact.

  78. Off-topic, but…

    A UK court decision of possible interest to US practitioners here:

    link to bailii.org

    See paras 81 – 100

    US provisional application was filed in names of three joint inventors. PCT application was filed in name of the employer of one of the three inventors, claiming priority from the US provisional. Assignment from the two non-employee inventors to the PCT applicant was not executed until some time later. Court held that the resulting European patent was not entitled to its priority date, under the terms of Article 4 of the Paris Convention, because the priority claim made at the time of filing the PCT was not made by the same person that had filed the priority application, or a successor in title – the employee status of one of the three inventors was not enough.

    A document published between the priority date and the PCT filing date thus became prior art and invalidated the patent (which, in this case, would have been invalid over other art anyway).

    (Paris Convention Article 4-A (1) Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in other countries, a right of priority during the periods hereinafter fixed)

    This raises another question: it is common practice for non-US companies to file US patent applications, necessarily in the names of the inventors, claiming priority from first filings made in the names of the companies. Does Article 4 of the Paris convention invalidate those priority claims? If not, why not?

  79. I doubt that there will be a sua sponte 101-Bilski-based rejection on this particular case because all but three of the claims stand rejected. The rejections of the remaining three were vacated because the term “memoization” was misunderstood by the Board. The Board was affirmed in the fourth claim where “memoization” was not misunderstood. Why should the Board act sua sponte when it can reject after correcting for the typo? Perhaps, if the CAFC reversed the Board’s decision, then a sua sponte 101-Bilski-based rejection should be raised.

    With respect to adding a 101-Bilki-based rejection, Bilski is still the law for at least a half a year until the Supreme Court decides the matter (which, in my opinion, will be Winter or Spring 2010). I don’t see why the Board should act sua sponte because the three claims already have a rejection basis but for the typos.

  80. Since this was a CAFC remand, there was no need for them to raise any 101 issue sua sponte, but isn’t this claim thus likely to get a 101-Bilki-based rejection added, even though the Supremes took cert on Bilski?

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