David Kappos: Next USPTO Director

Congratulations!

The White House has announced its intent to nominate David J. Kappos as Director of the United States Patent and Trademark Office (USPTO) with the official title of Under Secretary of Commerce for Intellectual Property. Mr. Kappos has spent his entire career with IBM – both as an electrical engineer and later as a patent attorney. Kappos ends his IBM career (at least for now) as Vice President and Assistant General Counsel, Intellectual Property Law. He is a board member of both AIPLA and IPO.

From the get-go, Mr. Kappos has been a rumored frontrunner to replace Director Jon Dudas and Interim Director John Doll.  In a May 2009 article, I announced my support for Mr. Kappos. In that article, I noted the value of having “a patent office director who understands patents and who has been fully involved with all aspects of the patent system for the past twenty years. I believe that Kappos will be a careful shepherd of the system - leaving it better off in six years than it is today.”

As someone who writes daily about US Patent Law, I am excited about the Kappos nomination because he is likely to open access to previously hidden data and information.  He will also work to create systems that work and measures that are meaningful.

I suspect that the biggest challenge for Mr. Kappos will be moving beyond the unique IBM perspective. Big Blue is an atypical patent owner in its internal systems, patenting volume, and licensing power. As I discussed earlier, it will be important for him to spend time understanding how the rest of the patent community operates.

Notes:

  • White House Announcement
  • Leahy Statement: “The USPTO faces serious challenges in this difficult economic environment, and the office requires strong leadership.  David Kappos is such a leader.  I look forward to working with him on issues confronting the USPTO, including reducing the backlog and pendency of patent applications and modernizing the patent system as Congress considers the Patent Reform Act.”
  • EETimes Article: Quoting Mark Lemley: "The PTO is in crisis, and I think Dave Kappos understands that, and will work creatively to try to find ways out of the crisis, I also think he is sensitive to the need for patent reform, which is a good thing."
  • March 2009 Testimony of Kappos
  • IP Law Insights (Perkins Coie Blog) summarizes an earlier Kappos article: (1) Patent applicants are responsible for the quality and clarity of their patent applications. (2) Patent applications should be available for public examination. (3) Patent ownership should be transparent and easily discernable. (4) Pure business methods without technical merit should not be patentable.
  • Patent Prospector on Kappos and the recent poorly researched WSJ Article.
  • From the USPTO Website: “If he is confirmed by the U.S. Senate, Kappos will take control of an office that provides incentives to encourage technological advancement and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace. The office continues to deal with a patent application backlog of more than 770,000, long waiting periods for patent review, information technology systems that are regarded as outdated and an application process in need of reform.”

144 thoughts on “David Kappos: Next USPTO Director

  1. MM Wrote:

    “Actual Inventor, your “case law” is lovely but I’m pointing out a bigger problem that you share with many others who wank here endlessly regarding the patentability of “everything under the sun”: you can’t keep your bullcrap straight.”

    First of all its not “MY” case law, it Is “THE” case law. Your perception of whether it’s “lovely” or not is irrelevant here. All that matters is if it’s “GOOD” law. And until over ruled, Diehr is still “GOOD” Law.

    Now let’s look at “THE” statute. Federal courts have held that the phrase “anything under the sun that is made by man” is limited by the text of 35 U.S.C. 101, meaning that one may only patent something that is a machine, manufacture, composition of matter or a process.

    What’s extremely important to understand here is that processes is a separate and distinct category from the other three categories.

    The only additional limitations imposed by the courts are the judicial exceptions of abstract idea, law of nature, or natural phenomenon.

    And that’s it!

    MM Wrote:

    “Please tell me the distinction, for 101 purposes, between my proposed claim (recited in your 4:50 post) and the ticket reservation claim reciting “an airplane”.

    What for? Your so called proposed claim is in actuality nothing more than a hypothetical tag sentence, let alone a properly constructed patent claim.

    In addition you have no enabling written description, disclosure, or term limitations on which your so called claim is based. In effect, you don’t even have an invention!

    In the IBM case we have real claims, based on an enabled application, and actual statutes and case law by which to analyze the claims.

    Your desire to start a nonsensical troll thread that leads down your silly rabbit hole of crap patent rants will not be fed by me.

    You can be the flaming Perez Hilton of the patent blog, acting out and name calling all you want but I wont join in that activity.

  2. Interesting statistic: “101 has little teeth in it. So long as one has an invention with real world application”

    *snip*

    Worst statement of utility requirement under 101 ever.

  3. 6 wrote: “I don’t need to. My favorites list shall not be consulted.”

    Yes you do. You made the claim so the burden of proof is on you. You have presented no statute, no case law, no proof whatsoever.

    I rest my case.

  4. “I think 101 has a lot more teeth than you think it has.”

    101 has little teeth in it. So long as one has an invention with real world application and someone reasonably competent has drafted the specification describing the real world application, 101 can easily be amended around.

    One might have a problem if their invention solely involves mental processes, but those are few and far between. Bilski is an example of one, which is why many commenters (who would otherwise support a broad interpretation of statutory subject matter) wouldn’t have a problem if Bilski went down.

  5. Actual Inventor, your “case law” is lovely but I’m pointing out a bigger problem that you share with many others who wank here endlessly regarding the patentability of “everything under the sun”: you can’t keep your bullcrap straight.

    Please tell me the distinction, for 101 purposes, between my proposed claim (recited in your 4:50 post) and the ticket reservation claim reciting “an airplane”. Upthread you were quite adamant that the recitation of any particular machine in a claim (e.g., an airplane or a ballpoint pen) was enough to lift the claim over the 101 hurdle.

    My claim doesn’t pre-empt all uses, obviously, because only a fraction of all human beings have touched a ball point pen in their lifetimes.

    I think 101 has a lot more teeth than you think it has. That’s why I recommend that you think harder.

  6. I don’t need to. My favorites list shall not be consulted. I’d rather enjoy watching you wallow in your own ignorance thanks. That is, after I get over the irony in your saying that you understand very well what I’m saying, and then in the same paragraph demand that I support what I’m saying.

    You have google, get to it.

    I note with some dismay that the google preview of Landis seems to have been removed.

  7. 6 wrote:
    “In order to comprehend what he is trying to say, you will need to understand, among other things, what intended use limitations are, and how they are handled. You apparently don’t.”

    Oh, I understand very well. The difference is my understanding is based on statute, and actual case law. Whereas you, as confessed up stream, make up any definitions for anything you don’t understand. Which is apparently a lot. When you have an actual statute to quote, and case law defining so called, “intended use limitations”, please post it.

  8. MM Wrote:

    “So you agree, then, Actual Inventor, that according to your logic if the claim recited, instead of an airplane, the phrase “wherein at least one user has touched a ball-point pen at one point during his life,” then the claim would pass muster under 101. Correct?”

    No, no, no. You are asking the wrong question. Here, I will teach you the proper and professional way.

    After we have established the claim recites a particular machine and/or apparatus the next step is to determine pre-emption. Based on Diehr, the proper question to ask is as follows:

    Does the claim, when read in light of the specification pre-empt all uses of a fundamental principle in all fields, or pre-empt all uses of the principle in only one field?

    If so, both indicate that the claim is not limited to a particular application of the principle, and therefore the claim is not properly tied and is not statutory subject matter. See Diehr, 450 U.S. at 193 n.14 .

    Understand now?

  9. “A) Assume you demote 10 managers per TC (each TC has more than 100 managers).
    B) 10 X $130,000 (minimum salary for a manager) = $1,300,000 per TC.

    B.1) 10 X 110,000 (near the min salary for a primary) = $1,100,000 per TC

    B.2) $1,300,000 per TC – $1,100,000 per TC = $200,000 per TC saved.

    C) With 9 TCs the number comes out to a whopping $1,800,000. Keep in mind this is low ball estimate.”

    fixed

  10. “Until you do the SCOTUS definition stands and the case remains closed.
    Posted by: Actual Inventor”

    I love it when the trolls get uppity.

  11. Kappos should modify current management structure in the PTO. Currently, there is too many managers in the PTO. When I say managers it includes (directors/SPEs/TQAS/WQAS/Subject Matter Experts/SPRE/OPLA…..).

    Here is the problem, most of them are GS-15 or higher, which is at least $130,000 in salary. All these positions do not generate revenue (they don’t examine applications in anyway). Furthermore, micromanagement only hinders those who actually generate revenues (examiners).

    The PTO created a new TC2400 in 2008 to add more management instead of reducing it (unbelievable). If this continues the $80 million, will not save any layoffs. And, if the layoffs is by seniority, then the Examiner who actually generates the revenue will be fired first, while the managers who don’t generate revenue continue to hold the positions.

    The Kappos should require the following:
    1) DEMOTE some managers to Primary Examiners. Have a peer review, a confidential survey of examiners the manager is supervising and ask them about the manager’s effectiveness. Demote the lower ranked managers to primary. Reason for surveying examiners is because (1) the have to deal with the manager on a daily basis and (2) to avoid politics/favoritism.

    2) Require those not demoted to have production/examining function component. For example, spend 40 hrs in bi-week examining and the other 40 hrs doing other duties. So, atleast they generate partial revenue.

    Here is an estimate:
    A) Assume you demote 10 managers per TC (each TC has more than 100 managers).
    B) 10 X $130,000 (minimum salary for a manager) = $1,300,000 per TC.
    C) With 9 TCs the number comes out to a whopping $11,700,000. Keep in mind this is low ball estimate.

    These are modest measures and none of these employees are fired. Unlike, a private corporation where managers would have layed off in the first round of layoffs. It is nice to have management positions, but it is even nicer to have jobs.

  12. So you agree, then, Actual Inventor, that according to your logic if the claim recited, instead of an airplane, the phrase “wherein at least one user has touched a ball-point pen at one point during his life,” then the claim would pass muster under 101. Correct? Because a ball point pen is a machine and it’s tied to the claim. Correct?

  13. Crusty said in reply to Actual Inventor…
    “Dude, I’m not trying to argue that an airplane isn’t a machine. ”

    Good, I am glad that once and for all you have conceded that point.

    Crusty said :
    “I’m saying that the method is not tied to an airplane. The airplane is the location where the method is performed. Why would performing an otherwise ineligible process in the presence of a machine make the process patentable? ”

    It doesn’t if its just in the mere presence of the machine, or simply the location.

    Crusty said:

    “If I claim a mental process performed in a plane, it doesn’t magically become patentable. ”

    Thats right, but a process that uses a plane is eligible to receive a patent. I recommend that you skip State Street, which you alluded to, and go back to Diehr which I referenced and elaborated on up stream in 110. I know you don’t like or value this claim but you must go by the law to detemine if it’s tied or not for 101 purposes. Diehr is the law for now, not State Street.

  14. Dude, I’m not trying to argue that an airplane isn’t a machine. I’m saying that the method is not tied to an airplane. The airplane is the location where the method is performed. Why would performing an otherwise ineligible process in the presence of a machine make the process patentable? If I claim a mental process performed in a plane, it doesn’t magically become patentable. Even state street says “Today, we hold that the transformation of data, representing discrete dollar amounts, BY a machine…” I’m pretty sure they didn’t intend the phrase “by a machine” to mean “while standing next to a machine”.

  15. Here are the basics to help you understand what a machine is or is not and when ites tied in the post Bilski Enbanc World.

    The first thing is the CAFC did not NOT change the meaning of a machine, with the adjective particular. The SCOTUS definition still stands.

    Second, CAFC did not change the meaning of tying, The Diehr pre-emption test still stands.

    And for anyone still not certain how to apply the SCOTUS definition of a machine what you need to understand is there are at least 4 stages of technological development on the SCOTUS continuum for machines included below, and until SCOTUS says otherwise they are all good law. Pick one that best fits your machine!

    1. Concrete thing consisting of part.
    ( One thing with parts.)

    2. Certain devices.
    ( Plural for more than one concrete thing or apparatus.)

    3. Combination of mechanical powers
    ( again these mechanical powers are not limited to electrical powers but could clearly be human powers operating some machinery)

    4. Combination of mechanical powers and devices to perform some function and produce a certain effect or result.

    ( Clearly these devices include apparatus, tools, crow bars, etc. needed to operate the machine and produce the power whether performed by humans entirely or some other new source of power such as the yet to be discovered and verified super quantum unified field.)

  16. AI: “perform some function and produce a certain effect or result”

    Again: the airplane does nothing whatsoever in this claim, just as the air conditioner in the hotel on the planet performs no function and produces no certain effect that is related in any way to the claimed method.

    Instead of “airplane” the claim could recite “wherein at least one user has a ball point pen.” That’s not a “tying” for Bilski purposes.

    If you think it is, then you are an idi0t. Does that sound harsh? I hope so.

  17. This definition is time honored because it’s written to accommodate a wide array of different machines based on different technologies from past to present, to future. The way you wish to apply it is to narrow the definition to only those machines that are automated and powered by electricity. In other words, the machine itself is performing the steps in the claim, not a human being. However, the SCOTUS has never made such a limitation. Let’s breakdown the current definition to see how it applies across a continuum of emerging technology.

    Concrete thing consisting of parts, ( One thing with parts.)
    Certain devices ( Plural for more than one concrete thing or apparatus.)
    Combination of mechanical powers ( again these mechanical powers are not limited to electrical powers but could clearly be human powers operating some machinery)
    Combination of mechanical powers and devices to perform some function and produce a certain effect or result. ( Clearly these devices include apparatus, tools, crow bars, etc. needed to operate the machine and produce the power whether performed by humans entirely or some other new source of power such as the yet to be discovered and verified super unified quantum field.)

    Conclusion, the SCOTUS definition is broad and covers all machines and powers that enable them to perform and can’t be narrowed by mere PE’s or PTO memo’s. Now let’s take a close look at your performance analysis.

    Crusty Wrote:
    “Does the IBM airplane perform some function and produce a certain effect or result?”

    Actual Inventor Replied: Yes, the airplane moves through the air with fixed wings and a weight greater than that of the air it displaces. Its function is to provide a mode of transportation from one point to another. The end result or effect is delivery of the goods, cargo, and or passengers from one location to another.

    Crusty Wrote:
    “No, the IBM airplane does not receive or notify. In other words, the IBM airplane does not perform some function and produce the effect or result of the claim — let alone a “certain” effect or result.”

    The airplane itself does not have perform the steps in the claim but the airplane may receive the instruction and notify with the assistance of the pilot, flight attendant, and passengers. This could range from the pilot checking for turbulence on the cockpit instruments and determining if its indeed safe and turning on a safe to remove seat belt sign, and a flight attendant using the airplane PA system to announce a bathroom is free or its safe to move about the cabin, to a passenger moving a lever in said bathroom that indicates the space is occupied or free. All of which could be explained in the application in various embodiments of the invention.

    So once again, according to the SCOTUS the airplane is a particular machine or apparatus and so is the toilet. And if a proper analysis of both the claims and spec demonstrates the process does not “pre-empt” it’s tied and passes the Bilksi test.

    The SCOTUS defined 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. ”

  18. ” the Board has looked to whether the method was performed by a machine-or-apparatus which is one way that a method can be tied to a machine”

    You’re right about that, but you’re way off on your reading of Fergy. Way off. Miles. The function and produce elements are just additional means to figure out if something is a machine. You can simply use the “concrete thing, consisting of parts…” line. Or, you can also use the “includes every mechanical device or combination…” line.

    Look to the portion of the decision where they actually decide if the paradigm is a machine or not.

    link to cafc.uscourts.gov

    page 10.

    “Applicants do assert, however, that “[a] company is a physical thing, and as such analogous to a machine.” But the paradigm claims do not recite “a concrete thing, consisting of parts, or of certain devices and combination of devices,””

    I don’t see them bothering with the FUNCTION and PRODUCE elements in actually deciding if the paradigm was a machine. They just recited it as a courtesy at the beginning of the analysis to help folks know what also could fall into the machine catagory.

    Good luck, I’m through explaining Bilski 101 to you guys. I’m going to put it up on ma new blog here soon.

  19. I’m looking at the WCG claim at comment 86, namely:

    1. A method of providing reservations for restroom use, comprising:

    receiving a reservation request signal from a user input device; and

    notifying the user associated with the user input device when the restroom is available for his or her use.

    and thinking about passengers in aircraft who are blind.The passenger presses the flight attendant call button and asks to be informed when the light above the restroom door changes from red to green. Alternatively, the blind passenger asks a travelling companion to say when the light turns green. Any relevance to the patentability of the claim?

  20. You missed it.

    In the post-Bilski case of In re Ferguson, the Federal Cicuit — in deciding the Bilski machine-or-apparatus prong — held that the Applicants’ method claims were not tied to any particular machine or apparatus. This is the test they employed:

    “a machine is a “ ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’ This ‘includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.’ ”

    Here, the Federal Circuit in Ferguson included the FUNCTION and PRODUCE elements in its examination when deciding whether something met the Bilski machine-or-apparatus. Also, in a few post-Bilski cases, the Board has looked to whether the method was performed by a machine-or-apparatus which is one way that a method can be tied to a machine.

  21. Have to second that contribution for EG, and others further upstream. The idea that Mr Kappos will continue to serve the interests of his erstwhile employer, even while he fulfills the duties of Commissioner, seems to be a sad judgement on the ethics, the honour, the intelligence and the flexibility to change that most members of the profession of attorney at law possess. I must say that I had supposed that Mr Kappos up to now was simply and honourably pursuing the business interest of IBM, in the best legal way he could conceive.

    Henceforth, Mr attorney at law Kappos is in service to a different master. What reason does anybody have to doubt that he will bend all his 18 years of patent attorney experience to the unstinting service and benefit of his new master, the great US public? If he does that job well, for a full term, he will then be in a position to make lots more money afterwards, no? In the short term, I imagine him using his experience to make a big contribution to devising practical measures that will reduce the levels of acrimony between PTO Examiners and prosecuting attorneys (at law).

  22. I understand the concern over Kappos coming from IBM and the computer software/hardware cabal. But the fact that he is a patent attorney of at least 18 years is a real plus in my book. I’m weary of neophyte political patronage dumpees like Lehman, Rogan and especially Dudas who have no real patent experience and who have run the PTO almost into the ground.

  23. Sorry WCG, but that analysis is … horrendous.

    Nowhere in the SC’s definition you quote does it say that the machine must be performing the actions in the claim, or producing a result in the claim. The airplane, and perhaps even restroom, are machines. They aren’t particular to be sure, because they are generic as all get out, but there is no doubt the airplane is a machine. Just because they left out “wherein the airplane is flying through the air” or some such in the claim doesn’t all of sudden reduce a machine to being a nonmachine.

    The very idea is ludicrous.

    As a side note, looking in good ol’ fergylol (the technical term for the paradigm decision) the quote you lifted was stating what is included in the definition of “machine” in addition to “concrete thing, consisting of parts, or of certain devices and combination of devices”. It was not stating that there was some second requirement of an object under scrutiny before it was deemed a machine. In other words the object may be either “a concrete thing…” or a “mechanical device or combination of mech powers and devices…”

    On the bright side, you probably reached the proper conclusion in so far as the claims would be Bilskied

  24. I know that you are troubled because Bilski does not recite the magic words “performed by.” However, the definition of machine includes the magic word “perform” as discussed so long ago by the Supreme Court.

    Above, you have provided the well-known definition of machine as being a “concrete thing, consisting of parts, or of certain devices and combination of devices.”

    What you have not included in your analysis is that a machine “includes every mechanical device or combination of mechanical powers and devices to PERFORM some function and PRODUCE a certain effect or result” from the Supreme Court’s 1863 case of Burr v. Duryee and 1853 case of Corning v. Burden (see the CAFC’s March 2009 of In re Ferguson for discussion of these in light of Bilski) (my emphasis).

    When discussing a machine, you must examine whether it PERFORMS some function and PRODUCES a certain effect or result. You want for me to admit or concede to you that a restroom and an airplane are machines or “particular” machines under Bilski. I cannot make such admission or concession in the IBM claim (although it they may be machines or appartuses in other claims).

    As a preliminary matter, I am sure you’ll agree that the independent claim (restroom sans airplane) seeks to pre-empt the entire world of restroom reservations whether in flight or at my local Chili’s. Hence, under Bilski, it fails the machine prong.

    Even without pre-emption, you must yourself, “does the IBM restroom perform some function and produce a certain effect or result”? Answer: No, the IBM restroom does not receive or notify. In other words, the IBM restroom does not PRODUCE the effect or result of the claim — let alone a “certain” effect or result.

    Following this analysis, on to the airplane. Query: Does the IBM airplane perform some function and produce a certain effect or result? No, the IBM airplane does not receive or notify. In other words, the IBM airplane does not perform some function and produce the effect or result of the claim — let alone a “certain” effect or result.

    To answer your questions to me: No, neither the IBM restroom not the IBM airplane are machines as claimed because they do not PERFORM some function and PRODUCE a certain effect or result. Because they are not machines, they cannot be “particular” machines required by Bilski.

  25. Obvious, Malcolm, I disagree. This claim can be saved under 101 but only by amendment. See No. 86 above. It’s not the best, but it shows the claim being tied to a particular machine or apparatus.

    Now, does it deserve a patent as I have amended? No, 102 and 103 will prevail. Can it work around prior art? Maybe, but the claim would have to be serverly, severely narrowed.

  26. “In order to comprehend what he is trying to say, you will need to understand, among other things, what…”

    The master of miscomprehension has declared.

    Oh, the sweet irony.

    Malcolm and 6 – the train wreck continues.

  27. “Now, please get a life and find some other blog to troll. Thanks.”

    translation: “I am The troll on this blog. My many pointless posts prove it. Honestly, find some integrity and find your own blog to troll.”

  28. AI, in re poor crusty still trying to help you out:

    1. He does not concede that the plane is a particular machine.

    2. He thinks the limitations in claim 7 etc. are intended use limitations. (He is probably wrong here, but I’m not going to correct him since there is a .00000000001% chance he is right)

    3. He thinks that since they are intended use limitations then the method cannot be considered tied to a particular machine. (This being because of some strange rule he himself made up so far as I can tell, although I agree with him in so far that it might be a nice rule to have)

    4. He then skips on to some other topics related to insignificant post solution activity. (that’s a call which is 100% entirely up in the air and is all but randomly determined by any given court in any given close case, so he could be right, but he could just as easily be wrong). But He doesn’t state his positions very well, and just merges them all into one paragraph.

    In order to comprehend what he is trying to say, you will need to understand, among other things, what intended use limitations are, and how they are handled.

    You apparently don’t.

  29. Okay at least you have tacitly conceded an airplane is a particular machine. Now you seem to be moving on to arguing that the reciting of the airplane in the claim does not make the process tied to the machine.

    Crusty wrote:

    “To my understanding of the way the PTO is implementing Bilski, a method is tied to a particular apparatus if one of the steps is performed by a particular apparatus. ”

    No no no. The Bilski court does not say this. The Diehr court on which Bilski relied, does not say it either. An internal PTO memo does not have the force of law. Any PE’s using such an interpretation are in violation of the law and will certainly have such a rejection overturned, if not at the BPAI then for sure at the CAFC.

    Now let’s take a look at the correct analysis according to current and established case law. Clearly “pre-emption” is the clue for determining if a process is tied to a particular machine.

    I quote Bilski and Diehr:

    ” 72. Pre-emption of all uses of a fundamental principle in all fields and pre-emption of all uses of the principle in only one field both indicate that the claim is not limited to a particular application of the principle. See Diehr, 450 U.S. at 193 n.14 In contrast, a claim that is tied to a particular machine or brings about a particular transformation of a particular article does not pre-empt all uses of a fundamental principle in any field but rather is limited to a particular use, a specific application.”

    So what constitutes being tied? Limitation to a particular use, a specific application.

    And how do we know for certain that the IBM Claim is limited to a particular use, a specific application, ergo, tied?

    By reading the claims in light of the specification.

    And thats the proper and legal analysis.

  30. “That case doesn’t address 101″

    That cases involves claim interpretation and whether “intended use” language limits the scope of the claimed invention, which is an important part of 101 — i.e., determining what is covered by the claim.

    The problem with most examiners and a good portion of patent practitioners is that they have a limited tool set. Given just a hammer and a screwdriver to work with, they see everything as nails and screws.

    FYI — the “guidance” given by the USPTO in their memo is not law. It is guidance directed by political appointees (with an agenda) and written by attorneys who did not have the grades and/or pedigree to get a job in big law.

    The use of that memo to a practitioner is simply to know, beforehand, what arguments an examiner will word-for-word reproduce within their rejection. Beyond that, it doesn’t have much use.

  31. “Wouldn’t that mean there is no way to fix this claim to make it ok under Bilski? ”

    DING DING DING DING!!!!! We have a winnah!

    There is no patentable invention there. Please try not to cry too loudly about it.

    Now, if someone invented a machine that could detect the fullness of passenger’s bladders and send queries to passengers based on the fullness, that might be patentable.

    But there isn’t anything remotely like that disclosed in this worthless piece of garbage patent. Which the PTO granted. To a company managed by the current director of the PTO.

  32. “That is not what I said. The claims have to be read in light of the application. And if indeed the process is tied to an airplane in the spec it’s statutory, since an airplane is a particular machine.”

    The airplane is tied to this method of “making a reservation” in the same way that “making a reservation” on a planet is tied to the air conditioner in the hotel that sits on the planet. In other words (for the truly dense, like Actual Inventor) it’s not “tied” at all. The fact that an imbecile sees a magic word (insert your machine here) in a claim does not mean 101 has been traversed. Now, please get a life and find some other blog to troll. Thanks.

  33. As your quote shows, the Bilski decision states that if a method claim is tied to a particular machine, it is patent-eligible. However, that’s IF the claim is tied to a particular apparatus, and Bilski doesn’t say exactly what constitutes being tied to a particular apparatus. To my understanding of the way the PTO is implementing Bilski, a method is tied to a particular apparatus if one of the steps is performed by a particular apparatus. Clearly from that one memo, the PTO doesn’t view the inclusion of a particular machine as part of an intended use limitation to be sufficient to tie the method to the particular apparatus. So claims 7 and 8 aren’t enough to save the claim. The plane, train, or boat doesn’t do anything. Nothing happens to the plane, train, or boat. Interestingly, the second part of the 1/7/09 memo says “insignificant extra-solution activity will not
    transform an unpatentable principle into a patentable process. This means reciting a
    specific machine or a particular transformation of a specific article in an insignificant step,
    such a data gathering or outputting, is not sufficient to pass the test.” All the claim in question has are a data gathering step and an output step. Wouldn’t that mean there is no way to fix this claim to make it ok under Bilski?

  34. 6 wrote:

    “The “rational justification” for this opinion is that SCOTUS did not define what a “particular machine” is, and the definition for the term “particular machine” is different than the definition of the term “machine”.
    Bottom line, until you have the courts rule on it, I’m free to state it how it is going to be ….”

    This is the most intellectually dishonest and egregious contempt for the law I have ever read or witnessed.

    First of all, no where in the opinion does the Bilski Court instruct the PTO Examiners that the time honored legal definition of a machine, upheld by the SCOTUS, no longer applies to process and method claims that recite a machine.

    Second no where in the opinion does the Bilski Court instruct the PTO Examiners they are now free to run amok making up any definition they want for “particular machines” anytime they want.

    Finally lets use some common sense here. We are not talking about a new technology or even a new word! The definition of a machine does not change for one category of subject matter because the word “particular” is used. The word “particular” is merely an adjective used to describe a noun that has been concretely and legally defined by the SCOTUS going back some 150 years!

    The adjective “particular” simply means specific. And, thats it! And you can’t get more specific than an airplane.

    And don’t even think of bringing up the general purpose computer argument. Besides even if you are somewhat unclear about what constitutes a specific machine vs. general purpose computer its does not give you free license to go out and define every machine recited in a process claim any way you want.

  35. Crusty wrote:

    “AI, from one of the PTO Bilski memos: “a mere field-of-use limitation is generally insufficient to render an otherwise ineligible method claim patent-eligible.”

    To which AI responded:

    Crusty, and from the actual Bilski decision on Filed of Use Limitations and Extra Solution Activity. “The Bilski court instructs a claim that is tied to a particular machine or brings about a particular transformation of a particular article does not pre-empt all uses of a fundamental principle in any field but rather is limited to a particular use, a specific application. ”

    Since claims 7 & 8 are tied to particular machines your mere field of use limitation fails.

  36. The above thread dispute is a great demonstration of why we need the Supreme Court to come up with a clearer test than the CAFC’s In re Bilski, now that they have taken cert.
    However, especially given the unsavory claims in the Bilski application, I fear the Sup. Ct. decision may be more draconian than many applicants will like. Any provided clarity may not necessarily be more favorable. Even though Bilski could already be aptly called Bilk-ski for the many millions of dollars literally bilked out of all the applicants “led down the [State Street] garden path” into filing all those business method patent applications. Plus, all the companies that have already paid large settlements or license fees on such patents. Some clients may want to string up some of their patent attorneys if the Supremes now clearly render all those business method claims unpatentable subject matter. And even the personal satisfaction of those able to say “I told you so” is no career-builder either.

  37. Where does Bilksi does say…

    “A method step is tied to a particular apparatus when that step is performed by the particular apparatus.”

    And cite the page of the opinion please.

    Also, as I read it, claims 7 and 8 were dependant claims of a broader claim, now narrowed by the recitation of a machine. And yes, an airplane is a particular machine, until someone can provide case law that says different.

    And anyone trying to use the word “particular” to weasel out of applying the SCOTUS time honored legal definition of a machine is simply being intellectually dishonest.

    There is no debate about the adjective “particular.” It simply means specific. And what’s not specific about an “airplane” ?

  38. That case doesn’t address 101, but I guess you’re implying that I’m saying that the preamble doesn’t get accorded patentable weight. That’s not what I’m saying. I realize that it does in this case. However, that’s a separate issue from whether the method is tied to a particular machine. Neither step positively recites a particular machine. From the PTO Bilski memo, an intended use limitation won’t make the claim patent-eligible even if it’s given patentable weight. Regardless, West Coast Guy already showed that the entire method can be performed by a passenger on an airplane.

    “An example of a method claim that would not qualify as a statutory process would be a claim that recited purely mental steps.”

    From here: link to uspto.gov

  39. “Now can you provide any legal justification in ignoring this definition or refusing to apply it when determining if something described in the claims and/or application is a machine, particular or otherwise?”

    No because I do not refuse to apply it. I apply it plenty. I do however refuse to apply it by itself to the bilski court’s “particular machine” because you are chopping off a whole word from the phrase “particular machine”. The “rational justification” for this opinion is that SCOTUS did not define what a “particular machine” is, and the definition for the term “particular machine” is different than the definition of the term “machine”. A first grader can tell you that putting “particular” in front of a word makes a phrase which is interpreted differently than the word is by itself. I’m not sure why you have such trouble with the concept.

    As for a “legal justification” there is none because the law hasn’t developed enough just yet so far as I’ve seen. If you want BPAI cases, they are applenty, and show my reasoning, but CAFC decisions are lacking so far. I wonder why that is? Mostly because lawyers know to keep their noses clean and not appeal things like that in uncertain times. Better to file an RCE and wait on SCOTUS to kill them outright.

    I should tell you about a case I just had which had a potential bilski issue, the attorney argued vehemently that bilski should not apply, because gasp, there were particular machines tied to the method! Yet, when presented with an amendment to cause a transformation he came around in less than a week.

    Bottom line, until you have the courts rule on it, I’m free to state it how it is going to be (at least until SCOTUS runs a wrecking ball through the whole area and rebuilds a shanty town where there was a decent residential neighborhood), and you’re free to state it how it won’t be. Feel free to do so, and be sure to file a few apps including method claims without particular machines or transformations tied to them while you’re at it. We look forward to the easy money :)

    Case closed. Except when I say it, I mean it.

  40. “Claims 7 and 8 are intended use. The claim does not define that an airplane receives the reservation request, nor does the claim define that a toilet receives the reservation request. Likewise, the claim does not define that an airplane or a toilet notifies the user. Therefore, neither step positively recites a particular machine. Therefore, the method is not tied to a particular machine.”

    See Jansen v. Rexall Sundown, Inc.

  41. 6 wrote:

    “Oh? What’s that? They didn’t define it?”

    The SCOTUS defined it 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. ”

    Now can you provide any legal justification in ignoring this definition or refusing to apply it when determining if something described in the claims and/or application is a machine, particular or otherwise? And please cite case law and not your own non legal opinion. Until you do the SCOTUS definition stands and the case remains closed.

  42. 9. The method according to claim 1, wherein said reservations are provided in an alternate universe where this method is patentable.

    Maybe that would work?

  43. “1. A method of providing reservations for restroom use, comprising:
    receiving a reservation request from a user; and
    notifying the user when the restroom is available for his or her use.
    7. The method according to claim 1, wherein said reservations are provided on an airplane.
    8. The method according to claim 1, wherein said reservations are provided on a passenger train or boat.”

    A method step is tied to a particular apparatus when that step is performed by the particular apparatus. Whether an airplane or a toilet is a particular machine is moot seeing as neither is mentioned in either of the method steps. Claims 7 and 8 are intended use. The claim does not define that an airplane receives the reservation request, nor does the claim define that a toilet receives the reservation request. Likewise, the claim does not define that an airplane or a toilet notifies the user. Therefore, neither step positively recites a particular machine. Therefore, the method is not tied to a particular machine.

    Bilskied.

  44. AI, I’m unfamiliar with any court case dealing with anyone named Nuitjen, but tell me, what did the Nuijten court define a “particular machine” to be?

    Oh? What’s that? They didn’t define it?

    Whoopsie, case is back open again!

    Like I said, you’re a prime example of why the law is too complicated for the everyman.

  45. “explain why an airplane is not a particular machine”

    6 wrote:

    “Because it is a huge genus encompassing only the general features of the genus. Furthermore, even those are not specifically defined.”

    According to the CAFC and SCOTUS you are wrong. When the Bilski court referred to a particular machine they cited the following:

    The 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.

    An Airplane meets this definition.

    CASE CLOSED

  46. West Coast Guy wrote:

    “Contrary to what you say, merely reciting restroom or airplane does not tie the method to a machine or apparatus to avoid the Bilski machine prong.”

    That is not what I said. The claims have to be read in light of the application. And if indeed the process is tied to an airplane in the spec it’s statutory, since an airplane is a particular machine. Again, you have failed to explain why an airplane is not a particular machine. And you have also failed to explain why a rest room is not a particular machine or apparatus so the claim passes 101.

  47. “When faced with logic they don’t like, they are prone to throw out non sequiturs.”

    I think you meant to say “when faced with logic that is not even nearly related to the discussion at hand, they are prone to throw out non sequiturs”. You could also have said “when faced with “logiclol” which they find funny or ridiculous, they are prone to throw out non sequiturs”

  48. “Did you cut and paste the wrong quote? An examiner’s failure to consider the actual language of the claims has nothing to do with “[a] request for hand holding.”"

    An attorneys not understanding that a hypo which is poorly crafted in one respect which is not directly related to the subject at hand is irrelevant if the hypo was well crafted with respect to the subject at hand (whether the method was tied to a particular machine or not) is an indirect request for hand holding. And so is them taking only a small tidbit from the recited passage and ignoring the rest of what was likely a 40 page disclosure/description of an infringing act.

    In any event, I’m thinking about launchin me a blawg :) It isn’t all that hard and it might be funzors.

  49. Actual Inventor,

    Let me see if I understand you.

    Suppose I invent a new technique of throwing a curve ball. If I mention “baseball” in the preamble and an element of a method claim (like restroom is used) and describe the sequential techniques of gripping and throwing the baseball with reference to the baseball seams, that my claimed method passes 101 under the Bilski machine prong because I recite the apparatus of a baseball? That I can claim a method of throwing a curve ball?

    Note that I do not mention in my claim a robotic machine with mechanical fingers and arms that has a sensors means of identifying the seams on the baseball and throwing the baseball.

  50. Actual Inventor,

    Let me see if I understand you.

    Suppose I invent a new technique of throwing a curve ball. If I mention “baseball” in the preamble and an element of a method claim (like restroom is used) and describe the sequential techniques of gripping and throwing the baseball with reference to the baseball seams, that my claimed method passes 101 under the Bilski machine prong because I recite the apparatus of a baseball? That I can claim a method of throwing a curve ball?

    Note that I do not mention in my claim a robotic machine with mechanical fingers and arms that has a sensors means of identifying the seams on the baseball and throwing the baseball.

  51. “A nice example, btw, of what I see from attorneys all the time. A request for hand holding.”

    Did you cut and paste the wrong quote? An examiner’s failure to consider the actual language of the claims has nothing to do with “[a] request for hand holding.”

    Are 6 and Malcolm Mooney the same? When faced with logic they don’t like, they are prone to throw out non sequiturs.

  52. “Here, given the broadest construction, the claimed method can be tied to a human and not a particular machine or apparatus.”

    Broadest construction? How can it be the broadest construction when you are excluding disclosed embodiments (i.e., “not a particular machine or apparatus”)? To me, that is a narrow claim construction, not the broadest construction.

  53. Here, given the broadest construction, the claimed method can be tied to a human and not a particular machine or apparatus. The method, as claimed, can use a human only and not a machine or apparatus — let alone a “particular” machine. It fails the Bilski machine prong. You don’t even have to go to 102, 102, 112.

    Contrary to what you say, merely reciting restroom or airplane does not tie the method to a machine or apparatus to avoid the Bilski machine prong.

    Want this claim to pass 101 under Bilski? Here’s an example:

    1. A method of providing reservations for restroom use, comprising:

    receiving a reservation request signal from a user input device; and

    notifying the user associated with the user input device when the restroom is available for his or her use.

    Here, the claimed method is tied to a particular apparatus of the user’s input device. Hence, it passes Bilski’s machine prong. You’ll still have to deal with 102, 103, and 112 issues, but not 101.

  54. “”Sitting next to me and busy re-reading one of the Harry Potter books as she always does on flights, she asked me to let her know when the lavatory was vacant. I received her request, and upon looking and seeing that the occupied sign was not illuminated, I told her that it was vacant.Had the IBM claim not been disclaimed, I would have infringed it.”"

    And somewhere near the end of the 40 page long description of the “infringing method” or “reference” was stated “Oh, and in this method she happened to mention for me to hold the restroom for her”.

    “A nice example, BTW, of what I see from the USPTO all the time. It is easy to finding anticipatory (or in your case, an infringing) method when you ignore claim terms.”

    A nice example, btw, of what I see from attorneys all the time. A request for hand holding.

  55. Re the above question: “How do the changes that Kappos suggested benefit U.S. citizens and companies more than they benefit foreign entities?”
    It might be domesticly popular if the [nearly 50%]* foreign applicants in the U.S. PTO could be socked with higher fees, or otherwise discriminated against. However, besides violating various international treaties, it would simply invite dangerous retaliations against the U.S., which files more patent applications abroad than any other single country.
    *[Foreign entity filing in the U.S. is popular not just because of the U.S. market size, but also because U.S. patents have more real and effective infringement enforcement teeth, including high damage recoveries [contrary to all the current "the sky is falling" hyperbole], and relatively low costs.]

  56. Second draft with the reservation request added.

    Sitting next to me and busy re-reading one of the Harry Potter books as she always does on flights, she asked me to let reserve the lavatory when it became vacant. Upon receiving her request, I got up from my seat, went to the lavatory, stood in front of the door, and blocked the door to prevent others from using it. When the current occupant existed the lavatory, I notified my wife that it was vacant.

    Here, given the broadest construction, the claimed method can be tied to a human and not a particular machine or apparatus. The method, as claimed, can use a human only and not a machine or apparatus — let alone a “particular” machine. It fails the Bilski machine prong.

  57. “Sitting next to me and busy re-reading one of the Harry Potter books as she always does on flights, she asked me to let her know when the lavatory was vacant. I received her request, and upon looking and seeing that the occupied sign was not illuminated, I told her that it was vacant.Had the IBM claim not been disclaimed, I would have infringed it.”

    No. You are dead wrong. You did not receive a “reservation request.” Perhaps you received a request to notify her when the lavatory was vacant, but she did not reserve anything — hence a “reservation.”

    A nice example, BTW, of what I see from the USPTO all the time. It is easy to finding anticipatory (or in your case, an infringing) method when you ignore claim terms.

  58. “An airplane is a particular machine”

    Substantial lulz are to be had at this gentleman’s expense.

    “But there can be no doubt an airplane is a particular machine.”

    Except for the 100% doubt.

    “Now if you disagree then you have to explain why an airplane is not a particular machine”

    Because it is a huge genus encompassing only the general features of the genus. Furthermore, even those are not specifically defined.

    “and why a toilet is not an apparatus for that matter.”

    A toilet is an apparatus and nobody disputes that.

    Why do you have such a hard time reading AI?

    Looking at the situation from another point of view, AI is the perfect example of how the common man is hopelessly left behind by patent law which makes for a strong argument to simplify things.

  59. West Coast Guy said in reply to Actual Inventor…

    West Coast Guy wrote:

    “You know, my wife and I were traveling the other day. Sitting next to me and busy re-reading one of the Harry Potter books as she always does on flights, she asked me to let her know when the lavatory was vacant. I received her request, and upon looking and seeing that the occupied sign was not illuminated, I told her that it was vacant.Had the IBM claim not been disclaimed, I would have infringed it. And you’re trying to convince me and others on this blog that the claim is “tied” to a particular machine (let alone a machine at all)?”

    You were riding on an airplane. An airplane is a particular machine. This claim may fail for many other reasons, like 112, 102, 103. Heck you can even make an argument about the lack of a “common actor” for carrying out the process.

    But there can be no doubt an airplane is a particular machine. And so long as the process is not described so broadly in the spec that it could be performed with any type of machine or apparatus, or none at all, so as to preempt the idea of asking for someone to let you know when the bathroom is free, it’s considered tied.

    Now if you disagree then you have to explain why an airplane is not a particular machine, and why a toilet is not an apparatus for that matter.

  60. “Thus the IBM patent was statutory since human operators ran the process and used the tied airplane machine and tied toilet apparatus.”

    [insert cuckoo clock sound]

  61. You know, my wife and I were traveling the other day. Sitting next to me and busy re-reading one of the Harry Potter books as she always does on flights, she asked me to let her know when the lavatory was vacant. I received her request, and upon looking and seeing that the occupied sign was not illuminated, I told her that it was vacant.

    Had the IBM claim not been disclaimed, I would have infringed it.

    And you’re trying to convince me and others on this blog that the claim is “tied” to a particular machine (let alone a machine at all)? No, the claim is not, and merely citing a restroom(s) doesn’t make it so. This doesn’t pass the Bilski machine prong.

  62. Hey Eugene, I know you’re lurking. I just did you a FOAM on an application which was filed in the late months of 08′. What can I say? I read the claims, and I already knew of art that 102′d the whole thing. It’s a free count.

    Sincerely,
    6

  63. Max wrote:

    ” Actual. Saunders has no method claim, as was noted already upstream. Kappos only wants to exclude “pure” business methods.”

    You are correct in that Saunders did no particularly point out and specifically claim a process or method. Keep in mind that the claims and application were written prior to the 1952 Patent Act so its not going to meet every aspect of current law and policy, particularly 112.

    But a close read and analysis of the application and claims clearly shows a process albeit one tied to apparatus. Even the claims require the actions of a customer using the apparatus and moving through the circuitous pathway.

    This is why all patent applications are essentially processes and business methods. They require the step by step acts to be carried out and reduced to practice. The fact that some applications are tied to other categories is more out of a necessity to overcome prior art than it is any difference from so called “pure business methods”. If an invention is innovative and pioneering enough to overcome all prior art it, without laying claim to a law of nature or abstract idea, it should be eligible subject matter, or what is a patent system for?

  64. West Coast Guy wrote:

    “What do you think Bilski says?”

    I cut and paste exactly what Bilksi says….

    ” (p. 10 of the opinion), The Supreme Court, however, has enunciated a definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself. A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or
    thing.”

    As you can read above Bilski only says “tied”. Bilski does not say the machine or apparatus must “use” the claimed process. So certainly a process that requires a human operator is patent eligible as long as it’s tied to a particular machine, or apparatus, or transforms..

    Thus the IBM patent was statutory since human operators ran the process and used the tied airplane machine and tied toilet apparatus.

  65. Thanks for the comment, Actual. Saunders has no method claim, as was noted already upstream. Kappos only wants to exclude “pure” business methods. I see a parallel with the European view, which narrows the “methods of doing business” with the “as such” qualifier. You make a good point about the claims in the Saunders patent: are they characterized by a “transformation” or a “particular” machine? I guess a shop is a machine, and a Saunders shop back then really was pretty special. In Europe, we don’t confine patentability to a transformation or a particular machine. For that very reason (if for no other) I expect SCOTUS to disapprove of that particular measure of patentability.

  66. please said…

    “Is the restroom performing the method? because bilski needs the method to be performed by the particular machine,

    No, Bilski does not say that.
    The machine does NOT have to perform the method. I see so many people on this blog make this crucial error when quoting Bilksi, and I always go back and read the case, and its not there.

  67. Malcolm Mooney said…
    “”7. The method according to claim 1, wherein said reservations are provided on an airplane.”

    OK, so claim 7 passes Bilski…assuming a general purpose airplane is a particular machine”

    It dosen’t matter if you “receive” and “notify” on a plane, on a hot air balloon, on a canoe or on a planet. It’s mental baloney. ”

    And what rule of law, or congressional statute gave you the power to extract mental steps from a process claim for the purpose of dissecting claims into statutory and non statutory elements??

    Ahhh..Mooney Silence

  68. Max wrote:

    “BTW, who can tell me about Clarence Saunders? I read that he invented the supermarket in 1916, and patented that novel and innovative method of doing retail business. Did that have “technical merit”? I wonder what his main claim recited, and whether Mr Kappos would allow it tomorrow.”

    Its been a while since I studied his app and don’t have it front of me at the moment. But I seem to recall his actual claim was for a “circuitous pathway” in a store.

    In other words he put the concept of a maze in a shopping market and got a patent on the application of this innovative idea.

    Now today, people that are anti business method, which is just code word for anti patent, would argue what did he invent? Where is the machine, transformation, technical merit? blah, blah, blah.

    But the United States Congress in 1952 had the opportunity to ask the same questions and make sure that so called pure business methods like Saunders never received patent protection again and guess what?

    The congress kept the 101 statute broad and open by making pure processes like Saunder’s patentable subject matter in the 1952 patent act! And thats all a business method is really, a process!

    And the Supreme court has upheld the congressional intent for processes as patentable subject matter for over 50 years. And I will bet anyone that SCOTUS will continue to do so by ruling against the PTO in Bilski.

    As far as software in concerned, I ‘ve come off the fence, its patentable, hands down. And I am not a software guy, just someone that believes in the benefits and incentives of a good patent system that has a broad and wide open 101 front gate!

  69. “AK Steel is not controversial because its outcome is intuitively correct. Claims that cover materialdisclaimed in the specification should not be upheld. However, AK Steel’s invalidity finding shouldnot have been based on the enablement requirement. The specification discussed aluminum coatingsthat contain ten percent by weight silicon, albeit as the prior art. Thus, there was a reasonable basisfor concluding that the specification did enable a person of ordinary skill to make the claimed steelstrips using ten percent by weight silicon. The better basis for an invalidity finding would have been35 U.S.C. § 112 ¶ 2 which requires that “[t]he specification shall conclude with one or more claimsparticularly pointing out and distinctly claiming the subject matter which the applicant regards as hisinvention.”58Clearly, the applicant believed that its invention did not include using aluminum coatingmetal containing ten percent by weight silicon because that material did not wet well. Since AK Steeldid not have to rely (and probably should not have relied) on the enablement requirement toinvalidate the claims at issue, it could have simply found that claims did not reflect what theinventors regarded as their invention.”

    From link to 74.125.93.132

    Oh, look at that, a respectable journal author espousing a rejection under U.S.C 112 2nd because, and I quote, “Since AK Steeldid not have to rely (and probably should not have relied) on the enablement requirement toinvalidate the claims at issue, it could have simply found that claims did not reflect what theinventors regarded as their invention”. Stated another way, claims are susceptable to 112 2nd issues for not actually having claimed what the inventor regarded as their invention. That is, claims do not make the reality of what inventors regard as their invention, but rather are subject to that reality in order to be valid.

    Amazing concept, isn’t it? And yet, the court chooses not to go down that road, and instead, change the enablement requirement. Interesting that either one or the other of the old fashioned constructions of the enablement law or the 112 2nd law had to change. I suspect that the both will go the way of the dinosaur before my stint in this field is through.

  70. “IBM was in favor of all the patent changes being pushed on us. kappos will pretty much try to push the same stuff as dudas”

    fellow bloggers, is this true?

  71. Re the question: “Which PTO director had the shortest term in history?”
    I believe it was the late Don Banner, who [unfortunately] quit shortly after his appointment, reportedly as soon as he found that a then-applicable rule or regulation would effectively prevent him from working as a patent attorney in many respects afterwards if he stayed on.
    {I don’t normally answer trivia questions, but this one illustates one of the reasons [in addition to huge pay cuts] why it is hard to get highly directly experienced competent people into government management and judicial positions without personal sacrifices.]

  72. I’m astonished that any contributer to this blog even has to ask the #61 question. My guess is that the journalist heard 500,000, but the briefer was intent on emphasising the ludicrous enormity of the number. These days, no WSJ number under a billion is in any way remarkable for its size. Hence, by the time it was published, the number had become a cool 1/2 billion.

  73. I also love how Newman flat out refuses to recite even one claim limitation which is supposedly not met by the reference. Of course, this is because there are none, but that doesn’t stop her! All limitations must be shown! And even when they are, all limitations aren’t shown!

    She just fills her dissent with empty platitudes to caselaw which does not directly support her.

  74. “Really? You waste this discussion talking about airplane toilets. Do you really think Dave read and approved each application filed by IBM. That is like saying the Director knows about every patent allowed by an Examiner.”

    Chief, I’m from the old school of military leadership (with the emphasis on leadership). In his position, he is responsible for what his unit does and fails to do.

    He shares responsibility for the restroom reservation system. If he fails to accept responsibilty, I don’t care if he is a paper tiger. If he fails to accept responsibilty, then he doesn’t deserve to be Director despite his otherwise empressive credentials of “working up throught the ranks.”

    Now that responsibility has been addressed, the next step to address is accountability. How should he be held accountable? It depends. IBM finally disclaimed the patent after the PTO threw it into reexamination and public outcry. The question to me is this: what action did Kappos take after this public spectacle? Did he issue a directive reviewing and/or curtailing the practice of claiming methods like the restroom reservation method? Or did he just sit still maintaining the IBM status quo and waiting for the issue to go awaay?

    Knowing his response or actions to this episode will shed light on the leadership traits he currently possesses and what to expect if he becomes the Director.

  75. I love how newman just doesn’t get how functional claiming and intended use limitations work and dissents. Here’s a clue Newman, the claim is for the top. Not anything else. Except maybe in claim 14.

    I honestly do not understand how this lady got to commandeer a federal judgeshiplol.

  76. “Really? You waste this discussion talking about airplane toilets. Do you really think Dave read and approved each application filed by IBM. That is like saying the Director knows about every patent allowed by an Examiner.”

    Indeed. And without blogs keeping track of the crap, NOBODY would know about the crap. Even with the blogs, there are few attempts to seriously document *all* the offensively invalid crap flowing out of the PTO every week.

    But that doesn’t stop otherwise respectable patent bloggers who should know better from pretending that the swing patent and the one-click patent are “exceptions” (and I’m not talking about Professor Crouch). They’re not exceptions at all, except to the extent they are stronger patents than the crappiest of the crap that issues every week.

    A second set of eyes? LOL. Intermittent, arbitary and erratic quality control isn’t quality control at all. Whose eyes were watching that Capital One patent as it sailed out the door?

  77. “Without using examples, explain the difference between a particular machine and one that isn’t? What is the law the governs this distinction?”

    Here’s a start…

    According to Bilski (p. 11 of slip opinion), a claimed process should use a particular machine or apparatus — not a particular machine or apparatus should use a claimed process.

    Applying this to the IBM restroom reservation claim, the reservation method should use a particular machine or apparatus — not a particular restroom should use a claimed reservation method.

    The IBM claimed method uses no machine (let alone a particular machine).

  78. “What is a “particular” restroom? See, here is my restroom with a number display outside the door – “particularly” set up for use with a reservation system. It is no longer a general purpose restroom on a general purpose air plane. So, it must be okay under Bilski.”

    Is the restroom performing the method? because bilski needs the method to be performed by the particular machine, not that the particular machine is somehow affected by or used in the method.

  79. MM, this patent was issued in 1917. According to a New York Times article:

    “Another indication of malleability is that I.Q. has risen sharply over time. Indeed, the average I.Q. of a person in 1917 would amount to only 73 on today’s I.Q. test. Half the population of 1917 would be considered mentally retarded by today’s measurements, Professor Nisbett says.”

    So maybe this patent seems obvious to you, but you have to judge it by 1917 standards. Plus, I think there might be a giant case of hindsight bias in your comment.

  80. Really? You waste this discussion talking about airplane toilets. Do you really think Dave read and approved each application filed by IBM. That is like saying the Director knows about every patent allowed by an Examiner.

  81. “IBM is on the other end – they pop out millions of tadpoles and hope a few make it.”

    … resulting in IBM being the patent world’s own version of Octomom … yet many magnitudes more prolific.

  82. “It is not tied to a ‘particular’ machine when given its broadest construction.”

    Without using examples, explain the difference between a particular machine and one that isn’t? What is the law the governs this distinction?

  83. “invoke less scrutiny and scathing criticism than the pitiless wrath of intelligent patent lawyers. It takes guts and I applaud him for his service, in what is probably the most difficult job in the industry.”

    I agree

  84. “What is a “particular” restroom? See, here is my restroom with a number display outside the door – “particularly” set up for use with a reservation system. It is no longer a general purpose restroom on a general purpose air plane. So, it must be okay under Bilski.”

    If you’re taking about the IBM method, the limitations with which you state are not included in the claim. Hence, the claim as stated fails Bilski.

    How would your restroom reservation method be claimed with the “number display outside the door” so that you would think it passes Bilski’s machine/appartus test?

  85. What is a “particular” restroom? See, here is my restroom with a number display outside the door – “particularly” set up for use with a reservation system. It is no longer a general purpose restroom on a general purpose air plane. So, it must be okay under Bilski.

  86. “Wait a second. Claim 1 is tied to a machine/apparatus — a restroom.

    This is too easy.”

    It is not tied to a “particular” machine when given its broadest construction:

    “1. A method of providing reservations for restroom use, comprising:
    [flight attendant or matre d'] receiving a reservation request from a user; and
    [flight attendant or matre d'] notifying the user when the restroom is available for his or her use.

    Sorry, but this doesn’t pass Bilski’s particular machine or apparatus test.

  87. Its probably the toughest job in the Patent Industry, and is probably under paid. If he executes honorably, and plays the diplomacy needed to allow people to get along and progress, I am all for him.

    I should say … Other appointments (such as Dept. Agric, etc.), probably invoke less scrutiny and scathing criticism than the pitiless wrath of intelligent patent lawyers. It takes guts and I applaud him for his service, in what is probably the most difficult job in the industry.

  88. First, I expect an IBM employee to advance the interests of IBM, which, of course, are his own self-interests. But are all you out there citing his IBM comments admitting that you are incapable of taking a new position without bring your own old interests with you. If so, make sure you tell any new employers or new clients that you are going to continue to advance the interest of your old employers/clients because you’re incapable of doing anything else.

    As for me, I like to think that I am intelligent enough and sophisticated enough, and competent enough to be able to see that positions which I previously took for a prior employer/client are not to be brought forward to the next employer/client. I also like to think that if the government selected me to be head of the PTO, I could put aside all my past positions in favor of past employers/clients and move into the position of representing the whole of the patent community. I don’t know this guy, but is he so stupid he can’t do this? It doesn’t sound like it to me.

    Frankly, I’d feel better with ANYONE with actual long term patent prep/pros experience than the political hacks we’ve seen lately!

  89. Given the claims are given the broadest interpretation, this one clearly doesn’t pass 101 muster:

    1. A method of providing reservations for use of a facility, comprising:

    [flight attendant] receiving a reservation request from a user; and

    [flight attendant] notifying the user when the facility is available for his or her use; characterised in that: the facility comprises a restroom.

  90. “101 or not, the question “does this deserve a patent?” kinda answers itself, no?”

    Agreed. As with a lot of these “busy method” patents, they also fail 101 as lacking a substantial utility. Providing reservations? Give us a fracking break. If dog food isn’t a substantial utility for a new compound, then why should “providing a reservation” qualify?

    Not to mention anticipation and obviousness, which is what you were probably lacking.

  91. 1. A method of providing reservations for use of a facility, comprising:
    receiving a reservation request from a user; and
    notifying the user when the facility is available for his or her use; characterised in that:
    the facility comprises a restroom.

    101 or not, the question “does this deserve a patent?” kinda answers itself, no?

  92. are all you guys shortsighted or just obama nut-huggers ?

    IBM was in favor of all the patent changes being pushed on us. kappos will pretty much try to push the same stuff as dudas. seriously wtf.

    obama=bush=obama=bush=obama

  93. “7. The method according to claim 1, wherein said reservations are provided on an airplane.
    8. The method according to claim 1, wherein said reservations are provided on a passenger train or boat.

    Claims 7 and 8 survive.”

    The “said reservations” modifies the preamble and not the elements. Also, “provided on” a machine is not the same as being performed by a machine.

    Sorry, claims 7 and 8 do not pass the machine prong of Bilski. Nor do they pass the transformation prong of Bilski. As Malcolm as stated, there is no transformation of data — just a manipulation of data.

  94. “7. The method according to claim 1, wherein said reservations are provided on an airplane.
    8. The method according to claim 1, wherein said reservations are provided on a passenger train or boat.
    Claims 7 and 8 survive.”

    This sort of bonehead interpretation of Bilski is exactly why what comes after Bilski will be worse than Bilski (from the perspective of the Sunner crowd).

  95. “”7. The method according to claim 1, wherein said reservations are provided on an airplane.”

    OK, so claim 7 passes Bilski…assuming a general purpose airplane is a particular machine”

    It dosen’t matter if you “receive” and “notify” on a plane, on a hot air balloon, on a canoe or on a planet. It’s mental baloney. The only “transformation” is the transformation of a thought about who gets to take a leak into a detectable articulation of that thought. Is that a substantial transformation under 101? Before the peanut gallery gets too excited, its members may want to ponder the consequences of an answer in the affirmative.

  96. 7. The method according to claim 1, wherein said reservations are provided on an airplane.
    8. The method according to claim 1, wherein said reservations are provided on a passenger train or boat.

    Claims 7 and 8 survive.

  97. Dave Kappos will be the first PTO Director with real and current patent law and practice knowledge and experience since Todd Dickenson. [More so than many even earlier PTO Commissioners]. His original thinking is also evident in some recent amicus briefs – covering issues that others missed.
    It will be a [long-lost] pleasure for practitioners to now be able to communicate serious patent reform suggestions for overcoming PTO problems to someone who can actually understand them, and who can also understand the consequences of ill-advised PTO internal rulemaking and practices.

  98. “7. The method according to claim 1, wherein said reservations are provided on an airplane.”

    OK, so claim 7 passes Bilski…assuming a general purpose airplane is a particular machine.

    Perhaps even claim 1 passes Bilski, assuming a “the restroom,” presumably a general purpose restroom, is a particular machine…antecedent basis problems notwithstanding.

  99. “It was tied to a specific machine — an airplane. A-OK under Bilski.”

    No, it wasn’t. Here it is…

    1. A method of providing reservations for restroom use, comprising:
    receiving a reservation request from a user; and
    notifying the user when the restroom is available for his or her use.

    Apparently, Kappos (i.e., IBM) was forced to disclaim the patent.

    From http://www.1201tuesday.com:

    “A few years ago, IBM was issued U.S. Patent No. 6,329,919 for a “System and method for providing reservations for restroom use.” This made news. The patent soon became the face of all that was evil with the recent patentability of business methods. In fact, public outcry rose to such a level that USPTO Director James Rogan ordered a reexamination of the patent. A couple months later, IBM disclaimed the patent.”

  100. A middle ground between peer-to-patent and the current system would be something like a time window for RFC after Notice of Allowance, I suppose, tracking roughly the idea of the principal register on the trademarks side; perhaps this could insulate all patents against newly-raised 102/103 issues in litigation (leaving open, at least, 101 and 112?)

    The perhaps clause isn’t really necessary, but if “privacy” is somehow a concern (and I don’t know why, given pre-grant pubs), you’d at least get the initial back-and-forth solely between the applicant and the examiner.

    Frankly, I don’t really have a dog in the fight, though, so I’m just throwing this idea out there.

  101. “I do not believe Mr. Kappos is the right choice or even a good choice.”

    As long as there is a strong steady wind, a good sailor can get to where he/she needs to go. The direction of the wind is secondary.

  102. This post is so much more clear than the last one, and Kappos now appears to be a reasonably good choice. Especially when I read the March ’09 testimony, it is very convinving, and the views are very realistic. I just hope he does focus change on the production system moreso than patent reform, otherwise quality will not change and the same old views will persist. Now that he’s shooed in he has my full support.

  103. MaxDrei and Leopold Bloom:

    With due respect your points are well taken and understood, but neither of you answered my questions:

    (1) How do the changes that Kappos suggested benefit U.S. citizens and companies more than they benefit foreign entities?

    (2) How does the patent reform act address the globalized world we find ourselves in as opposed to just reducing litigation costs for major multinational companies, both foreign and domestic?

    Regards

  104. “I just hope that someone at the top applies some new ideas to the PTO IT infrastructure.”

    I would add that I hope their are opportunities to help the USPTO make those changes so that they focus on “promoting the useful arts”.

  105. He worked for Big Blue, so of course he espoused views that benefited them. That was his job. In a few weeks he will be working for us and we hopefully will learn if that unearths new views…

    I just hope that someone at the top applies some new ideas to the PTO IT infrastructure. Maybe infringe a few of those patentented hardware/software systems and integrate PAIR and Maintenance data with the other weekly provided information. We need search engines/tools to be capable of providing current amended claims, application status, and other useful information more easily. This is particularly important for all those 18 month publications that are supposed to put us on notice of something, but read as rough drafts instead.

  106. Seriously, are there really people (eg w d p r benefit) out there who think the goal of patent reform should be to make patent litigation more expensive, in order to “address the globalised world” and to re-balance the system against Big Corp? I think I may have misunderstood the contribution at 07.14 am. Have I?

    And thanks Erez Gur.

  107. Heard a story once about IBM – they call up the smaller software/computer company and request a meeting to discuss the smaller company’s concern that IBM is infringing.

    At the meeting, small company takes out its shiny, ribbon copy and notes that one of IBM’s products appears to be infringing one or more of its claims.

    IBM’s in-house then takes out a stack of about 150 patents and notes that, after thorough review, it appears that the small company has products that may be infringing various claims in the 150 patents. Would you like to cross-license on your single patent?

    True story.

    The first shop at which I worked did IBM work – it was considered bottom-of-the-barrel work because, at the time, IBM paid a flat fee of something like 2500 to prepare and file a patent application.

    It’s equivalent to the natural range of animal fecundity.

    Some companies invest lots of time and money into one or a few patents that have a lot of value.

    IBM is on the other end – they pop out millions of tadpoles and hope a few make it.

  108. “Read Kappos testimony on patent reform and tell me whether his stated position was not just a way for IBM to reduce litigation costs?”

    Uh – Didn’t Kappos work for IBM at the time? Are you suggesting that he should have advocated reforms that would actually hurt IBM?

    One would think that lawyers of all people would understand the distinction between lawyer and client…

  109. Max:
    You can look Saunders up in Wikipedia and read his US patent 1242872, or I can send it to you.

    Saunders claimed an apparatus and a store, no method

  110. Read Kappos testimony on patent reform and tell me whether his stated position was not just a way for IBM to reduce litigation costs? How do the changes that he suggests benefit U.S. citizens and companies more than they benefit foreign entities and how does the patent reform act address the globalized world we find ourselves in as opposed to just reducing litigation costs for major multinational companies, both foreign and domestic?

  111. Personally, I was rooting for Dickinson. The PTO needs someone who understands the plight of examiners and who is willing to offer more than mere platitudes to fend off complaints about production requirements being unreasonable (particularly during the first two years of service). Doll and Focarino are unwilling to make any serious moves to initiate production reform, and while Dickinson has in the past quoted the price tag for increasing hours-per-production-unit, he at least has made moves during his earlier tenure to try to increase retention.

    Hopefully, Kappos will be open-minded enough to see that the production system is currently flawed and is pushing out people who could make a career at the PTO if they didn’t burn out within the first two years.

  112. I see attributed to Mr Kappos the words:

    “Pure business methods without technical merit should not be patentable.”

    and immediately think:

    That’s the settled European jurisprudence.

    I read some of the recent comment on Bilski, to the effect that the USPTO is harder on 101 than Europe is, and I think:

    Just as those polar opposites the UK (think: peripheral claiming) and Germany (think: central claiming ie claim the best mode) have by now come to have the same view of Article 69 EPC “scope of protection” of any claim of any European patent, I expect to see Europe and the USA now to move to a common sense shared view on the patentability of business methods, software and Beauregard claims. Is that a good thing? For IBM I would guess yes and, what’s good for IBM is good for America, no?

    BTW, who can tell me about Clarence Saunders? I read that he invented the supermarket in 1916, and patented that novel and innovative method of doing retail business. Did that have “technical merit”? I wonder what his main claim recited, and whether Mr Kappos would allow it tomorrow.

  113. “You should have read IBM’s brief to the Federal Circuit in Bilski. Software is not a pure business method.”

    No, but pure business methods claimed as software are pure business methods. And Kappos won’t be able to do anything to save Beauregard claims.

  114. We should all feel very fortunate with this selection as he is a smart, tireless worker who understands the needs of patentees. He will upgrade our PTO and patent system, no doubt.

  115. “Wasn’t IBM behind the infamous restroom reservation method?”

    It was tied to a specific machine — an airplane. A-OK under Bilski.

  116. “That is the loose thread that will unravel the software patent troll’s hideous sweater.”

    Not very perceptive? Kappos stated

      pure

    business methods should not be patentable. You should have read IBM’s brief to the Federal Circuit in Bilski. Software is not a pure business method.

  117. “Who wants to place a bet on whether the USPTO will be going aggressively after software-related applications and Beauregard claims under 35 USC 101 after Kappos is confirmed?”

    –Kappot: Pure business methods without technical merit should not be patentable. —-

    That is the loose thread that will unravel the software patent troll’s hideous sweater.

  118. At least he has some real experience at prosecuting patents, though he probably will need to come up to speed on the many internal problems at the PTO.

    Personally, I still think Q. Todd would have been preferable, but Kappos definitely appears to be a big improvement of the JDs we have had running things the last few years, as well as Rogan & Lehman variously before them.

    Let us hope that he has some good, new ideas as to how to seriously improve the patenting system for all: examiners, attorneys, and both big AND small entity applicants and can forget a little about where he comes from & their perspective about the patent system. I am hopeful & wishing him success.

    MVS

  119. Who wants to place a bet on whether the USPTO will be going aggressively after software-related applications and Beauregard claims under 35 USC 101 after Kappos is confirmed?

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