Although the procedure is expensive and full of potential pitfalls, applicants continue to use the PTO’s accelerated examination program.
Some of the largest backlogs are found on the desks of examiners handling business method patent applications. Technology Center 3620 (e-commerce), for instance, is currently issuing first office actions on applications filed about four years ago.
Now, the first business method patent has issued under the accelerated examination program. U.S. Patent No. 7,251,621 – a “Method and apparatus for the home delivery of local retail e-commerce orders” – was filed on December 29, 2006 and issued July 31, 2007. The applicant used a smart approach of first filing an original application; then filing a continuation application along with the request for accelerated examination.
According to reports that I have received, the PTO commonly rejects requests for accelerated examination based on deficient element-by-element analysis of the claims with reference to the cited prior art. (The original application has not yet been examined).
Many patent attorneys appear quite afraid of providing an element-by-element analysis of the submitted prior art. However, on examination of the ‘621 prosecution history, the analysis does not appear to significantly differ from what is commonly included in an office action response.
Notes & Documents
- Thanks to Aaron Feigelson for submitting this tidbit.
- File Attachment: Accelerated Exam Petition (1MB) (Original) (corrected was also filed…)
- Find it on PAIR
This sounds a lot like Take-out Taxi only instead of dedicated delivery persons, any old person can be the delivery person.
My bad.
For God’s sake, the guy’s last name is “WENG”, not “WANG”.
An Examiner’s remarks and an applicant’s comments are apples and oranges from an evidentiary perspective — the latter may constitute admissions.
“Perhaps the most significant observation is that the examiner really did give weight to the prior art search and analysis done by the applicant.” I think what MN says is the point. Because this is an accelerated application so it happens.
Wang is luck, if this is an ordinally case and if it is assigned to TC 3620, this application is torn into pieces. I experienced 3620, very tough.
My favorite “garage invention” is Preparation H. Who knows if the story is real, but I recall someone telling me years ago that George Sperti invented Preparation H in his garage – which begs the question, what did he do to test it? His dog? Ironically, Sperti also invented frozen orange juice concentrate as well as meat tenderizer. I do not think either of those stemmed from his hemorrhoid work – at least I hope not.
“The important question is whether Mr. Wang conceived of this method in his garage.”
Funniest thing I’ve read here in a long time. LOL!!!!
This patent smells like a toxic beach.
Dear anon,
Thanks for the DSU inducement v contributory education, and the very useful, clear and concise claim drafting tip.
Re: your exemplary inquiry:
“…delivering a product by a patron going to over the obviousness hurdle…”:
The patron initiates at least part of the service described in the invention, and that appears to me to be new and useful, and I’d guess there is no 102 art or obvious 103 combinations, with all the prerequisite particulars, thereof.
However, I’d have to analyze the two independent claims in detail to see how or if my patron-initiating observation fits in. Claim 17, claiming an “…e-commerce system for offering, over a network, an opportunity for a patron…”, seems to suggest that Mr. Wang’s system initiates the service. Sounds clever to me; at first blush, it sounds like some serious thought went into the application.
With respect to the patron, couldn’t they be construed as an agent of the provider (at least for purposes of an infringement analysis)? I would seem to me that the patron is acting on behalf of, and under the direction of (i.e., they are instructed where to take the product), the provider. Of course that will not work for the buyer.
JAOI said:
“what about contributory infringement?
Would that work against the patron?”
Prior to DSU, inducement likely would have been an easier road (at least in some courts–two different standards existed in DCs prior to DSU). With contributory infringement, you have prove no substantial non-infringing use.
The more important point is: why are these steps there in the first place? Is selecting a product by a buyer or delivering a product by a patron going to over the obviousness hurdle if the other steps are in the art? If the answer to that question is no, take them out. If it’s yes, draft them from the proper perspective–receiving a selection of a product; providing for delivery of the product (lame, i’d just take it out)
I agree with Mr. Boundy that the accelerated prosecution analysis *is* significantly different from what is in a typical office action. Admitting the presence of claim limitations will likely affect claim construction and validity issues down the road. To give litigators maximum flexibility, good patent practitioners try to avoid such admissions.
Dear anon,
This question may be naïve, but,
what about contributory infringement?
Would that work against the patron?
The important question is whether Mr. Wang conceived of this method in his garage.
Unfortunately, Mr. Wang will have to sue the buyer (step b), the patron (step j), and the provider (all the other steps) to collect damages (at least for claim 1–I didn’t read any further). The drafter of this claim should read the CAFC’s DSU opinion.
Note that the Examiner also states in his reasons for allowance that “Updated searches were conducted, and the prior art does not reasonably teach and suggest the combination of the features…”
“Teach and suggest the combination”?? Did this Examiner miss that little KSR decision?
Re: U.S. Patent No. 7,251,621 &
“…shopkeeper… to ask that customer to drop off another order for a neighbor of theirs.”
Dear Paul,
In my brief look at the ’621 patent, I noticed that neither independent claim incorporates a (shopkeeper) retailer asking a customer anything.
It is the “patron” that initiates the service described in the invention.
In fact, neither independent claim even mentions a “retailer” at all!
Why would you talk about a 103 rejection?, or KSR’s common sense?
Why would you think it may be obvious?
If you ask me, it is a damn clever invention.
I wish it were mine – it’s neat, convenient and green.
We should all be green with envy.
Congratulations Mr. Weiwen Wang.
“However, on examination of the ‘621 prosecution history, the analysis does not appear to significantly differ from what is commonly included in an office action response.”
This statement is simply wrong. A Reply to a first Office Action states exactly one issue – _one_ claim limitation is _not_ in the reference. No Reply (at least not one that I will pay outside counsel for) _ever_ discusses any claim limitation that _is_ in a reference. Admissions of claim limitations that _are_ in the prior art contributes nothing to patentability. If it doesn’t create value, we won’t pay our outside counsel to write it.
That’s the 10X difference between the Examnation Support Document proposed in the PTO’s “blame the inventors for the problems we caused ourselves” rule packages and anything else – discussing one claim limitation vs discussing _every_ claim limitation.
Re: U.S. Patent No. 7,251,621
Dear Jon,
Business method or not, who cares?
I took a brief look at the ‘621 patent.
If you ask me, it is a very clever invention indeed,
characterized by at least the:
(i) searching patron, and
(ii) in-the-store patron.
Why would you think it may be obvious?
It was faster, but was it any better “business method” patenting? Doesn’t the 103 allowability of these main claims depend on a inherent presumption that no shopkeeper ever asked a customer to drop off another order for a neighbor of that customer anywhere the U.S.? [No prior public use.] The Sup. Ct. in KSR repeatedly said that more “common sense” needs to be used for 103 rejections. Common sense, or even Hollywood westerns, would suggest that it was a common practice in my grandfather’s era of rural customers living miles away from a general store or lumber yard in the nearest small town, traveling on muddy roads in a “model T” or a horse and buggy, to ask that customer to drop off another order for a neighbor of theirs.
Okay… so the patent issued. I’ll be sold when an AE patent survives litigation. Heck, I’ll be sold when a 10-year exam patent survives litigation.
“Many patent attorneys appear quite afraid of providing an element-by-element analysis of the submitted prior art. However, on examination of the ‘621 prosecution history, the analysis does not appear to significantly differ from what is commonly included in an office action response.”
I don’t think this comment is a fair characterization of practitioners thoughts on the matter. The selection of prior art from the search results, and the characterizaton of claim elements by the applicant have significantly different implications in litigation with respect to inequitable conduct and claim scope, than does the applicant’s reaction to an office action in which the examiner performing those same steps. In the latter case, no one is going to find that the patent holder deliberately with held art, or failed to chose the most relevant art, or find that examiner’s initial characterization of the claims constitute admissions.
I certainly believe that the AE program can be useful, but I don’t think the reluctance of patent practitioners to embrace accelerated examination constitutes hand wringing.
As a public searcher in the business of providing statements of preexamination, I’m very happy to see an issued accelerated examination (AE) with a realistic field of search (FOS). I’ve had numerous potential clients ask for statements with an FOS based on the first issued AE (7188939) which would have required my firm to either review over 100K references or just set it up and stay silent. Now, I finally have an issued patent to direct folks towards as a precedent with a realistic FOS.
Thanks Patentlyo for bringing this reference to my attention! Of course, I would have loved to have seen the search performed on EAST, but I’ll take what I can get.
I skimmed through the file wrapper and a few things were very noticeable relative to how PTMSs for business methods have fared under the old VIII rules (applicant submits prior art search with claim analysis).
Perhaps the most significant observation is that the examiner really did give weight to the prior art search and analysis done by the applicant. The USPTO emphasized the importance of this by initially rejecting the petition because the search and claim analysis didn’t meet their criteria. The applicant perfected the search and analysis and the petition was accepted.
Another noticeable item was that the examiner gave weight to the definitions of terms supplied by the applicant in the specification. In my experience, examiners in the business method area do not give applicant supplied definitions much weight and therefore interpret claims according to their widest possible meaning.
If these trends hold, then this process may be worth considering as long as you can keep a continuation alive as backup as this applicant did.
good example of a patently obvious invention. The PTO must love that.