USPTO Examiner Guidance on Business “Processes”

Patent Attorney Jeff Spangler recently attended the PTO’s business method partnership where he received a copy of the written clarification given to examiners to help them determine when a claimed business method is eligible for patent protection as a statutory process under 35 USC 101.  According to the memo:

“Based on Supreme Court precedent and recent Federal Circuit decisions, the Offic’s guidance to examiners is that a Section 101 process must (1) be tied to another statutory class (such as a particular apparatus) or (2) transform underlying subject matter (such as an article or material) to adifferent thing. If neither of these requirements is met by the claim, the method is not a patent eligible process under Section 101 and should be rejected as being directed to non-statutory subject matter.

An example of a method claim that would not qualify as a statutory process would be a claim that recited purely mental steps. Thus, to qualify as a Section 101 statutory process, the claim should positively recite the other statutory class (the thing or product) to which it is tied, for example, by identifying the apparatus that accomplishes the method steps, or positively recite the subject matter being transformed, for example by identifying the material that is being changed to a different state.

 

ProcessClarified051508

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124 thoughts on “USPTO Examiner Guidance on Business “Processes”

  1. 124

    Dear Mr. Boy,

    How come I, Just an ordinary inventor, and my faithful white rabbit, peace makers both, don’t get no respect, not even an honorable mentioned? Here is what we have to say about waging this kind of weary web war:

    link to patentlyo.com

    link to patentlyo.com

  2. 123

    “Jun02 4:04 pm – MM again libels O’Brien by implying O’Brien might be Bill Gates. (Does this guy have no decency?)”

    How does libeling me help your situation?

  3. 122

    Wow, that’s impressive, Babel Boy. Don’t forget to take the blue pill with your lunch today.

  4. 121

    This would be a great place to take a 7th inning stretch, guys. For the newly arrived, let me reconstruct Malcom Mooney’s ass-9 “progression of arguments” over the 4-day life of this thread.

    May 30
    The post started out as a discussion of the validity of mental steps claims under Section 101.

    May 30 12:07 pm – I offered Claim 1 from the O’Brien ‘123 patent as an example of a claim being issued where the mental steps were tied to the computer gear.

    May 30 12:44 pm – MM, ignores the issue at hand – Section 101 – and goes off on the patent (not the claim) as being invalid for obviousness. He takes the position that the claim is invalid because a piece of paper is a “computer-accessible storage device.” When I suggest that his point is ridiculous, he responds by asking what is so ridiculous about lead imprints on a synthetic textile as being a computer-accessible storage device. He appears not to be joking.

    Essentially, in one response MM trashes not just the patent but the inventor/ lawyer and the examiner who allowed the application. MM presumes to be superior in intelligence to all of these. We shall see.

    May 30 3:27 pm – I try ramming a piece of paper in my disk drive and report the results back to MM. I also raise the point that the claim as a whole must be obvious for the claim to fail under 103 and that in any case the obviousness point is not at issue.

    May 30 6:05 pm – MM justifies his paper as a computer-accessible device argument by saying if it has a bar code on it paper is computer-accessible. He ignores that the claim is to a device.

    May 30 8:41 pm – In response to my observation that a claim as a whole must be obvious, MM raises Comiskey. OK . . .

    May 30 10:41 pm – I ask MM to cite a reference that renders Claim 1 obvious. Never got a reply to this one. References are apparently not required to make a finding of obviousness.

    May31 1:36 pm – After advising me not to “pop a nut,” MM now really goes absolutely postal over the ‘123 patent. He starts blathering about the steps not being connected to the preamble and that textbooks put on computer media render Claim 1 obvious. And pats himself on the back for turning Claim 1 into a pile of crap in two minutes (in spite of the fact that his rantings had been going on for 24-hours and counting at that point).

    At this point MM boldly exposes himself to civil liability with the unmistakable inference that O’Brien committed inequitable conduct in obtaining the patent.

    May31 3:50 pm – e6k steps in and meekly points out to MM that the steps actually are connected to the preamble.

    May31 6:27 pm – MM now begins his discourse on the meaning of “ascertain.” It is a word he is, apparently, totally unfamiliar with and at the end of that discourse – 3 days later – he seems to be no better off for the effort.

    Jun 01 3:30 am – I continue banging on MM’s cage a bit to stir him up and tell him to keep blowing off, it’s amusing. He does just that.

    Jun 01 3:38 pm – Denis O’Brien, the inventor and patent attorney of the ‘123 patent, enters stage right and boldly identifies himself after having been publicly trashed and defamed by MM. He corrects MM’s misconception that Claim 1 is invalid because it is not enabling. A claim is not required to enable anything.

    O’Brien offers to debate the merits of the patent with MM if MM will identify himself. MM cowers in a corner.

    Jun 01 6:42 pm – However, e6k, the second half of the MM-e6k tag-team jumps in to impugn O’Brien’s professional reputation by alleging O’Brien doesn’t know what he’s doing. e6k then bemoans the fact that MM has not supported his inequitable conduct charges against O’Brien but says MM will be back soon to do so.

    Jun 01 6:53 pm – Sure ‘nuf, right on cue, MM, makes a high-dive off of the ropes hoping to flatten O’Brien on the mat. He misses. MM also refuses to identify himself but observes that it is “dickish” for O’Brien to use “PhD/Esq.” Not surprisingly, he doesn’t define “dickish.” He can’t even define “ascertain.”

    Jun 01 7:70 pm – e6k alleges, with 99.9% certainty that I (Babel Boy) am O’Brien. Henceforth, I will be known as “BB PhD/Esq.” Easiest PhD I’ve ever got.

    Jun 01 7:31 pm – In response to O’Brien’s observation that claims are not required to be enabling, MM cites MPEP 2172.02. There is no such section. He apparently meant 2172.01, which advises that where an element is disclosed as essential it must be included in the claim. MM, unable to see the distinction, continues on this rant for a while.

    Jun 01 9:40 pm – MM is still trying to ascertain the meaning of “ascertaining.” He’s struggling with this one.

    Jun02 12:32 pm – SofaKing checks in for the first time and encourages MM to explain the inequitable conduct allegation.

    Jun02 1:18 pm – MM is not amused and refuses Sofa’s invitation.

    Jun02 3:48 pm – In response to Closed Mouth’s inquiry as to jurisdiction for a defamation action, O’Brien reveals that I (BB) used O’Brien’s invention to pass the law and patent bars. Nothing like being outed by your alternate ego.

    Jun02 4:04 pm – MM again libels O’Brien by implying O’Brien might be Bill Gates. (Does this guy have no decency?)

    Jun02 7:52 pm – Catching the scent of blood in the water, e6k turns on his comrade and exposes MM’s blatant error on the MPEP 2172.01 issue. A claim need not claim an element unless the element is disclosed as essential. Claims are not required to be enabling.

    Jun02 9:01 pm – e6k suddenly discovers, to his delight, that O’Brien’s ‘123 patent is expired. The relevance of this to the discussion is not explained.

    Jun02 11:10 pm – coast now tries his hand at straightening MM out on his gaff that claims must enable. One could straighten the Great Wall of China with less effort.

    Jun03 12:21 am – pds now takes his hand at explaining the obvious to MM regarding the essential steps requirement for claims. pds states, as O’Brien did days ago, that claims don’t have to enable.

    As I advised MM on May 30, when you’re in a hole, quit digging. Too bad he doesn’t know good advice when he gets it. After 4 days of blathering he has pretty well revealed his level of competence. His strategy is now clear: cover up his lack of knowledge of patent law with virulent attacks on patents, claims, examiners, inventors, lawyers – any target he can find.

    OK, guys. Stretch is over. Back to the game. This one’s bound to go into overtime.

  5. 120

    Hmm. Well, would you argue that all patents in computer-aided design fields must include a computer in the claims? Consider a system to place & route a microprocessor design. Any PHOSITA knows that multi-million-gate designs cannot be done by hand – a computer is absolutely essential. Are all claims to pure “methods” therefore invalid for failing to recite essential subject matter?

  6. 119

    “The jacket in Liebel was essential and thus the claim was thrown out on enablement.”

    Ah yes! How could I have forgotten that one? Interesting that the “essential steps” (or element) test appears to function equally well in 112P1 or 112P2.

    Here’s the first paragraph of the description of Microsoft’s crappy “providing an indication” patent :

    “FIG. 1 and the following discussion are intended to provide a brief, general description of a suitable computing environment in which a scoring system may be implemented. The operating environment of FIG. 1 is only one example of a suitable operating environment and is not intended to suggest any limitation as to the scope of use or functionality of the operating environment. Other well known computing systems, environments, and/or configurations that may be suitable for use with a scoring system described herein include, but are not limited to, personal computers, server computers, hand-held or laptop devices, multiprocessor systems, micro-processor based systems, programmable consumer electronics, network personal computers, mini computers, mainframe computers, distributed computing environments that include any of the above systems or devices, and the like.”

    The self-serving “any other operating embodiment” notwithstanding, there can be no doubt that **the invention** requires a computer. In part, this is because the specification implicitly admits that the method can be applied to games in the “physical world” (i.e., chess) for the purpose of ranking players. The specification is packed to the gills with references to computers and networks and that sort of crap. The specification recites *zero* specific embodiments that aren’t computer-based.

    Yet claim 1 contains no mention of any of this.

    Again, I’m not arguing that the failure to recite essential steps is the only reason that claim 1 bites the dust. It’s one of many reasons. And responding that the calculations can be performed in one’s head is not a “good” answer, even if it suffices to rebut the “essential steps” argument (and I don’t think it does in this case).

  7. 118

    It’s an interesting question. Hypo: imagine a case with a novel and unobvious method of determining, say, yield rates for a particular given process, which takes into account variables A, B, C and manipulates them in X, Y, Z, fashion. Nowhere in the specification is anything explicitly indicated to be essential. Claim 1 recites: “a method comprising displaying a value to a user.” Missing essential steps or not? How about: “a method comprising: the calculation X; and displaying a value to a user.”? Or, “a method comprising: determining variables A, B, and C; and displaying a value to a user.”

    Remember that the “essential subject matter” problem can result in a rejection under either paragraph of §112. In this instance, “failure to point out and distinctly claim” may be a more tenable argument than “no enabling disclosure”.

  8. 117

    “Before I attempt to puff on the sails of my essential steps/elements argument, I am curious: has the CAFC ever found a patent invalid because it failed to recite an essential step/element? In the last ten years?”

    The jacket in Liebel was essential and thus the claim was thrown out on enablement.

  9. 116

    “Its always nice to have a claim that clearly indicates the patentable subject matter so that anybody reading the claim will understand what is underlying invention … these types of claims are easier on inventors, the examiners, and potential infringers. However, they are often-times too narrow. Claims need to distinguish, not describe.”

    This is pds’s way of admitting that claims with all essential steps are the only way to truly put the public on notice and definitively lay down the boundaries of your claim while at the same time spewing the same nonsense the courts haven’t managed to cut through just yet.

  10. 115

    Before I attempt to puff on the sails of my essential steps/elements argument, I am curious: has the CAFC ever found a patent invalid because it failed to recite an essential step/element? In the last ten years?

    I saw, pds, where you cited a couple cases where they rejected the argument.

  11. 114

    “The purpose of forcing applicants to recite “essential” steps in a claimed method is so the wonderful utility of **their invention** is realized by practicing ***their invention*** i.e., the claims. So assuming the actual (alleged) invention is not “providing a player with statistics after a tie game”, what is the missing step? Where’s the beef?”

    MM … btw, thank you for the case law in the other post. However, as already noted above, there is a difference between 112 1st and 2nd paragraphs. The claims don’t have to enable the invention. Claims have never had to recite every element necessary to practice the invention … actually, neither has the specification to the nth degree.

    Its always nice to have a claim that clearly indicates the patentable subject matter so that anybody reading the claim will understand what is underlying invention … these types of claims are easier on inventors, the examiners, and potential infringers. However, they are often-times too narrow. Claims need to distinguish, not describe.

    Also, I’ve gotten the “essential step” rejection a little more than a handful of times in my career and I’ve successfully traversed every time. As noted above, this comes into play when the specification states that something is essential. If that isn’t present (which it almost never is), that argument isn’t going to fly.

  12. 113

    I’m not saying the claim isn’t old MM.

    I know what the reason “should” be for requiring all essential elements as determined by the examiner, but that’s not the way the judiciary has choosen to mandate that the reason is. They have madated that it is only permissible to require what the applicant regards as being essential, or something that must be there to satisfy, necessarily, a relationship between elements. There simply aren’t relationships between these elements to rely on to make the rejection. You’ve been asking me what the relationships that mandate some omitted essential elements are in this claim, and I don’t see any such relationships in the claim so I can’t tell you any.

    Anyway, I’m out o here till I see some IC analysis or BB bring suit.

  13. 112

    Malcolm:

    Referring to your Jun 01, 2008 at 07:31 PM posting above:

    “”A claim which omits matter disclosed to be essential to the invention as described in the specification or in other statements of record may be rejected under 35 U.S.C. 112, first paragraph, as not enabling.”

    That is, the matter must be disclosed in the specification (or in the record) as being “essential” to be rejected under this provision. And the specification does not say that the matter is essential. Thus, your claim rejection will have to be under another section of Title 35.

  14. 111

    “The baseball claim appears compliant with 112, except perhaps for a couple of indefinite “a distribution …”‘s in there”

    Thus spake the examiner. LOL. Whatever, man. Pick your poison. It doesn’t really matter to me.

    “the spec makes clear what they are”

    That doesn’t make your position any stronger. Why not answer the question? In the generic sense (as claimed) what is a “score”, what is an “ability”, and how do the relate to the “draw”? This is a description for a novel method of providing an “indication” of information. How do I obtain this “indication” so I can “provide” it? Where does the claim describe that step? It must be in the claim because, uh, “providing” an “indication” to someone is old. Really old. So what’s the step? What do I do? Surely it’s not “updating” the information.

    The purpose of forcing applicants to recite “essential” steps in a claimed method is so the wonderful utility of **their invention** is realized by practicing ***their invention*** i.e., the claims. So assuming the actual (alleged) invention is not “providing a player with statistics after a tie game”, what is the missing step? Where’s the beef?

  15. 110

    “But without it, there are essential steps missing, namely the steps of identifying the sport, the player, the score and the changed ability”

    That isn’t a specification of relationship(s) between parts which require that certain things be present in order function/exist. Sorry MM, but I don’t believe I see hardly any relationships in this claim, much less anything required by those relationships. They might be there, but what you’ve enumerated don’t amount to relationships requiring something that is missing to be recited, nor the things that theoretically might be required by a relationship. I just don’t think you’re quite on base with this particular analysis. The baseball claim appears compliant with 112, except perhaps for a couple of indefinite “a distribution …”‘s in there, but I would say the spec makes clear what they are so that’s relatively minor and could have been deemed to be ok by the examiner.

  16. 108

    Ok, you guys are going to be in for some laughs. It seems the patent is EXPIRED. It expired on 10/12/2005. The reasons for allowance don’t seem to be on public pair or on edan, probably because the app is so old and had expired by the time the scanning people went through.

  17. 107

    “OR to have a relationship between parts require that certain things be present in order to use 112 to get essential features into the claim”

    Ding, ding. Ding. Ding ding. Ding a ding ding ding. Ding.

    Just for starters, what is the the relationship between “a first score” and a “draw outcome”? I’m supposed to “update” the mean and the variance according to the claim “based” on the draw outcome. Same issue with the “changed abilities”. Say what? It’s nonsense. There are *no* relationships specified because the applicant was apparently trying to cover the universe of statistical changes after a tie game.

    Now if the applicant wanted to specify (1) the sport, (2) the player, (3) the score and (4) the changed ability, we *might* not have the essential steps issue because you could argue that it’s inherent or something. But without it, there are essential steps missing, namely the steps of identifying the sport, the player, the score and the changed ability. Without that information in the claim, the claim is nonsense.

  18. 105

    Coast, je sus I was going to point this out upthread but I was loathe to do it. It is obvious that MM does not seem to adhere to the school of thought that in order for it to be an essential feature then it must have been designated as such by the applicant. Just forget it, there is no “essential features” designated in the app so MM is mistaken. The only thing left for us is to find out why he holds the belief he does about that particular part of 112 analysis of claims.

    To his credit, it is plain to see that some instances features are essential to an “invention” or “claim” and the applicant hasn’t designated them as such. Further it is plain to see that those features should be required to be in the claim, and it is retarded that the courts refuse to acknowledge this. None the less, the state of things is such that you have to have the applicant say “this is essential” OR to have a relationship between parts require that certain things be present in order to use 112 to get essential features into the claim. And that’s not likely to change anytime soon because the courts know it could (and would) be abused otherwise.

  19. 104

    “(similar to what you or I would do when faced with an examiner’s “missing essential element” rejection).”

    Speak for yourself. I’m not into wasting the client’s money on invalid crap.

  20. 103

    “I am only requesting that you point out what the missing essential element is so that I can understand your point”

    Oh, you just want to “understand my point”. I see.

    You can’t understand my point unless I state “the” missing essential element even when I’ve explained numerous times that this claim is so effed up that there are numerous choices of missing “essential elements” but (as I’ve pointed out) it’s impossible to pick “the element” without knowing what the hell the claim is purporting to accomplish in the first place. All we know is that under one reasonable reading of the claim, there isn’t anything new or non-obvious in the claim. And yet … the claim issued. Could it be that the Examiner improperly read some element into the claim? Maybe that’s where your missing element is, coast. Look up the prosecution history and specification and let me know what convinced the Examiner to let that claim fly. I suspect you’ll be successful. And while your searching, you’ll probably begin to “understand my point.”

  21. 102

    Just give me one specific missing “essential” element for your Section 112, first paragraph, rejection, Malcolm.

    I am not arguing that the claim is valid under 102 or 103. I am not even arguing that a Section 112, first paragraph, missing essential element rejection would be improper.

    I am only requesting that you point out what the missing essential element is so that I can understand your point (similar to what you or I would do when faced with an examiner’s “missing essential element” rejection).

  22. 101

    “You said that the claim is invalid (under Section 112, first paragraph) because it is missing an “essential” element.”

    Yes, at least one, depending on the context in which it is being used, which can be one of any of hundreds of different contexts (how many team sports are there)? And I’m also assuming that somewhere in the spec a new, non-obvious invention is diclosed (that’s a huge assumption, by the way). Now if you’ll just tell me the context, give me some “scores” to “update” and tell me what the new or non-obvious step is in the claim, I’ll give you one of the infinite number of possible responses to your request. I’ve already demonstrated upthread why your lame argument cuts both ways (and much deeper into you, unfortunately).

  23. 100

    How about this, a new rule for blogging here:
    No suing (except for infringement, of course).

    Let the First Amendment reign supreme.
    Easy for me to say, I’m Just an ordinary inventor, I know.
    From the onset of this comment at this point, I
    vote for all inventors and their patents, bar none.
    And I vote YES for all entertaining comments,
    even those that dare cross the imaginary sandy line,
    to go where no man has gone before (enter StarTrek™ music whoo-eeiei…).

    Let the punishment fit the alleged crime.
    If you get called a crook, respond in kind.
    And WOW, that makes for a “lively” thread.
    Maybe we can ask Professor Crouch to allow a larger vocabulary so the accused can respond with vile bile to fit the crime.
    Nah – that would quickly spiral down into disgusting ugliness.

    It is far, far more entertaining to use flowery language to call,
    e.g., a real prick a “stiffey bastard.”

    Suing each other for stuff here sucks,
    unless certain judges want to blog,
    in which case all bets are off.

    Hey, can you sue a Judge?

    Happy to be two sheets to the wind (what ever that means 112),
    I approved this commentary on this most extraordinary thread:

  24. 99

    So the good phd esq doesn’t want to chat unless he can sue someone. That’s a real lawyer for you right there. Alright, I’m going to out MM.

    Here is MM:

    link to files.myopera.com

    Now, about those claims.

    Alright I lied, here’s Malcolm Mooney:

    link to myspace.com

    Seriously, can you get to the meat of the issue and stop skirting around it like a child. This is quality entertainment for some of us, stop messing around.

  25. 98

    Malcolm: You said that the claim is invalid (under Section 112, first paragraph) because it is missing an “essential” element. But then you refuse or are unable to state what that the “essential” element is. I can only assume that you have changed your mind.

  26. 97

    “[I]t’s rather d***ish to put ‘Esq’ after your own signature.”

    … unless you’re Bill S. Preston, Esq.

  27. 96

    “Genuinely seeking some enlightenment here: if
    “providing an indication of the updated first mean and the updated first variance to the at least one player of the first team”
    is enough “to take the claim out of the realm of a purely mental exercise” – and past 101(?), what’s everyone arguing about in Bilski?”

    That’s a good question, Eurodisnae. Bilski’s problem isn’t so much the “mental aspect” of Bilski’s claimed method (although that is a problem), it’s the abstract nature of the steps themselves. As you noted, unlike this sports statistics claim, Bilski doesn’t include a step of communicating or recording information obtained through the prior steps. Bilski’s claim 1 merely requires that someone “initiate” transactions and “identify” transaction risks “such that” the risk of losing money is “balanced”.

    In essence, then, Bilski’s patent identifies a pre-existing mathematical relationship inherent to doing business and then claims the universe of applying that relationship in a business context. It’s an attempt to patent an idea (and as Dennis and others pointed out in various Bilski threads, it appears to be an old idea).

  28. 95

    “As for Babel Boy. He used my software to pass both the patent bar and the Virginia state bar on the first try without any prep courses.”

    Is that you Bill Gates? Vacationing in BC? I used your software to format units ofi information and store them on a computer when I was studying for the patent bar. I don’t know if I “ascertained” any “IDRs” for any of those information units while I was studying. I might have. It’s sort of hard to tell and for whatever reason nobody wants to step up and explain what the heck that step of the claim is supposed to mean or whether it can be practiced merely in one’s head.

    “As someone pointed out, my using “PhD/Esq” in my signature is a “dickish” thing to do. Precisely. It’s the way I sign my motions for judgment and complaints, too.”

    Are you one of those Canadian militant separatist types? Most of the Canadians I know are pretty mellow.

  29. 94

    “Please state an essential element that is missing from the claim in the patent.”

    Tell me what the method is supposed to accomplish and what makes it novel and then I can provide you with specific elements. Otherwise, as I said, it’s anybody’s choice how to fill in the gaping holes. It’s either anticipated or its missing essential elements. Which is it? I don’t really care. You seem to. Why do you care? Only you can answer that.

  30. 93

    Closed Mouth

    I am in Canada. I think this sort of litigation would be much more, shall we say, “exciting” in the States, presuming that’s where publication of the libel took place.

    I presume Mooney is waiting until this thread runs dry before he surreptitiously publishes a retraction or an apology.

    As for Babel Boy. He used my software to pass both the patent bar and the Virginia state bar on the first try without any prep courses. I passed out Beta versions to law students at William and Lee. I take it that’s why he raised my patent as an example initially and why he has so ardently defended it against Mooney’s acerbic obviousness nonsense and ad hominem attacks against me. BB will be a willing witness if I need one.

    I believe that anonymity is generally a good thing on these sites and promotes freedom of discussion, but when it’s abused by intemperate, loose-mouthed fools to impugn others, there needs to be some push-back, which I am willing to do. As someone pointed out, my using “PhD/Esq” in my signature is a “dickish” thing to do. Precisely. It’s the way I sign my motions for judgment and complaints, too.

    Finally, I note that Mooney has chosen not to identify himself so that we can discuss the merits of my claims openly in this forum like two gentlemen. Pity.

  31. 92

    “Which patent do you believe issued as the result of IQ by Mr. O’brien.”

    Lionel, just read the thread and direct your questions to the other disabled commenters.

  32. 91

    Lionel, the baseball thing refers to
    “1. A method comprising: a) receiving a draw outcome of a game between at least a first team opposing a second team, the first team including at least one player and the second team including at least one other player; b) receiving a first score including a first mean and a first variance representing a distribution associated with the at least one player of the first team; c) receiving a second score including a second mean and a second variance representing a distribution associated with the at least one other player of the second team; d) updating the first mean and the first variance based on the draw outcome of the game; e) updating the first mean and the first variance of the first score due to changed abilities of the at least one player of the first team based on a dynamic score function of a period of time since the first team last played the game; and f) providing an indication of the updated first mean and the updated first variance to the at least one player of the first team.”

    Pat No 7,376,474

  33. 90

    All right,

    I may be mixed up here. Malcolm you cited a patent listed by Babel Boy as failing 112 and possibly being the result of IQ by the inventor. I thought that patent was the 123 patent which has nothing to do with baseball. Which patent do you believe issued as the result of IQ by Mr. O’brien. If you were referring to the 123 patent, I reiterate, you have made nothing but wild assertions. If there is a baseball stat related patent you are referring to, could you please identify it?

  34. 88

    Malcolm,

    No one was inquiring about your proposed baseball analogy. Please state an essential element that is missing from the claim in the patent. If you believe you have, please learn how to communicate your ideas in a clear and concise manner.

  35. 87

    Genuinely seeking some enlightenment here: if
    “providing an indication of the updated first mean and the updated first variance to the at least one player of the first team”
    is enough “to take the claim out of the realm of a purely mental exercise” – and past 101(?), what’s everyone arguing about in Bilski?

    Also, the claims in this patent start with the wording:
    “The embodiments of the invention in which an exclusive property or privilege is claimed are defined as follows:”
    Anyone seen anything like that before? Does it mean anything different from “what is claimed is”? Does it affect claim construction?

  36. 86

    –Furthermore, once I have your identity and can find out where you live and work, we can also discuss the elements of defamation in your jurisdiction.

    Please consider this missive to be in the vein of “put up or $hut up.” I look forward to learning who you are.

    My best,
    Denis O’Brien, PhD/Esq.—

    And this is why I remain anonymous. I look forward to people ignoring anonymous posters because they can’t prove damages or malice. Whatever happened to thick skins?

    Denis, wouldn’t the elements of defamation in YOUR jurisdiction be the important ones, since that’s where the harm presumably accrues/accrued?

  37. 85

    Let’s put it another way for the simple-minded rubes who never saw a business method patent they didn’t like. There are only two active steps in this claim. The first is “d) updating the first mean and the first variance based on the draw outcome of the game”. Well, the first mean and the first variance only change if the draw outcome affects the first “score” (i.e., a “distribution associated with a player”). But nothing in the claim requires the first score to be affected. In this hypo, the “score” is the player’s batting power measured by how far he can hit the ball.

    The second step is “e) updating the first mean and the first variance of the first score due to changed abilities of the at least one player of the first team based on a dynamic score function of a period of time since the first team last played the game”. A “dynamic score function of a period of time”. Okay, so in the time period between the draw and the previous game (three weeks in this hypo), I know the player has been lifting weights so I calculate he can now hit the ball 5% farther.

    That’s it. Of course, none of that is novel. So the claim is invalid, right?

    Or maybe I’m missing something. You tell me, geniuses.

  38. 84

    “I can only assume that you have changed your mind and decided that there are no missing essential steps.”

    And I can only assume from your failure to apply the claimed method to a straightforward concrete real-world example shows that you know what I know: something is wrong with the claim.

    I sincerely hope you are not as silly as you are pretending to be. There may be hundreds of different “essential” steps missing depending on the “game”, “team”, “players”, and “scores” you put in. Certainly there are an infinite number of ways of drafting a claim that doesn’t suffer from the problems that this claim suffers from. You want me to list them all for you? Spare me.

    This claim purports to *generically* cover methods of updating a sports player’s stats. Perhaps you are confused by the fancy sounding words in the claim.

  39. 82

    Malcolm,

    You said “the claim still suffers serious 112 issues relating to a failure to recite essential steps.” I wanted to understand the point you were making and asked for you to point out what the missing “essential” steps were and you replied with some baseball example. I can only assume that you have changed your mind and decided that there are no missing essential steps.

  40. 81

    “please point out where in the specification or record it says that these steps are “essential.””

    That’s not necessary for the argument, so why would I bother?

    “please itemize the steps which are missing from the claim(s)”

    How about this? You know the game baseball? Imagine it’s a draw baseball game. Catcher on team 1 had a batting average of 0.222 before the game and 0.123 after (variance is plus/minus .001). Right fielder on team 2 had a batting average of 0.342 before the game and 0.342 after (he was injured before he got to bat; same variance). The first team previously played three days prior to the draw game.

    I’m the shortstop for the second team. Let me know the “updated first mean and first variance” based on the draw score. Thanks.

    Oh and tell me what the hell is novel about what you did. Thanks.

  41. 80

    Malcolm, please itemize the steps which are missing from the claim(s) and which are also “essential”. And please point out where in the specification or record it says that these steps are “essential.” Thank you.

  42. 79

    “your clear inference”

    Keep digging, SofaKing. Keep digging.

    As for claim 1 of the 7,376,474, in many respects it’s a far more skilled drafting job than the “memory facilitation” claim we were discussing upthread. The final step appears to take the claim out of the realm of a purely mental exercise, but I think the claim still suffers serious 112 issues relating to a failure to recite essential steps. It’s basically collection of generic gobbledygook. When the number of inoperable useless ways of practicing a set of steps vastly outnumbers the useful ways, you know something is deeply wrong.

    “Never thought I’d say these words…”

    I’ll add you to the list.

  43. 78

    Gentlemen, and MM:

    I am shocked, shocked, shocked at the tenor this discussion has taken over the weekend.

    MM, I think you ought to give up obsessing on obviousness and trying to define “ascertain.” Take a few moments to explain to us your clear inference on May 31 that O’Brien committed inequitable conduct. Accusing a patent lawyer of IC could be actionable as defamation per se. If this guy is anything like Johnny Jr., your goose could be cooked.

    As I understand your position, the inequitable conduct is that O’Brien was issued a patent in 2001 on a claim that you have personally determined in 2008 is “obvious.” IOW in your view it is inequitable conduct for a person to apply for or get a patent that you feel is trash.

    You examiners are getting a bit power-happy, aren’t you? You might want to start mitigating damages on this one. . .

  44. 77

    Regarding s101 process must (1) be tied to another statutory class (such as a particular apparatus)..example a method claim that would not qualify as a statutory process would be a claim that recited purely mental steps

    …could someone please elaborate on the word ‘tied’ and give example..Thank you.

  45. 76

    Never thought I’d say these words, but I’m totally with MM on this one.

    His point about obviousness fits exactly with established EPO practice. In the EPO, claims relating to “non-technical” business methods etc. escape statutory exclusion if they contain any technical elements at all. However, the non-technical elements are disregarded when judging obviousness, so if the technical elements are obvious the claim falls, regardless of any novelty in the non-technical bits. MM’s point is that in a case like this obviousness is bound up with statutory exclusion.

    Now, what do you guys think of this claim:

    “1. A method comprising: a) receiving a draw outcome of a game between at least a first team opposing a second team, the first team including at least one player and the second team including at least one other player; b) receiving a first score including a first mean and a first variance representing a distribution associated with the at least one player of the first team; c) receiving a second score including a second mean and a second variance representing a distribution associated with the at least one other player of the second team; d) updating the first mean and the first variance based on the draw outcome of the game; e) updating the first mean and the first variance of the first score due to changed abilities of the at least one player of the first team based on a dynamic score function of a period of time since the first team last played the game; and f) providing an indication of the updated first mean and the updated first variance to the at least one player of the first team.”

    Pat No 7,376,474

  46. 72

    “The ascertaining part clearly has to do with evaluation results, which are objectively determined by performance results that can be measured directly.”

    1 archaic : to make certain, exact, or precise
    2: to find out or learn with certainty

    Surely, then, you are taking your far, far more limited definition expressly from the specification, Cavey. Column and line number, please?

    “I have personally never seen a Mooney apology.”

    Search the archives. I’m sure there’s one or two in there somewhere. I remember making them because I was lost a night’s sleep worrying about you gloating, CaveMan. LOL!!!!

  47. 71

    Hey, Malc

    Just go ahead and let him know who you are. Because if I am he, as someone suggested, then I’ll be able to get a piece of that defamation action, too.

    Don’t worry. Truth is always a defense . . . usually.

  48. 70

    Mooney says: “I’m happy to apologize. I’ve done it before here and I’m happy to do it again.”

    Is this also some kind of joke? I have personally never seen a Mooney apology.

    Mr.Obrien, please feel free to give Mooney the dog poop treatment…

    “(c) ascertaining individualized difficulty rank (IDR) values for units such that each IDR value represents how difficult a specific unit currently is for the user.”

    I’d like to know more about the “ascertaining” part. Personally, I don’t see a strong mental step issue here. The ascertaining part clearly has to do with evaluation results, which are objectively determined by performance results that can be measured directly.

  49. 69

    “Hey Guys, Why can’t we all Just get a long? Why can’t we channel our extra energy against Piracy Director Dufas and his main minions, the “Coalition for Patent Piracy” and its miserable members”

    Dudas is going to be replaced soon, no? Then John McCain is going to appoint Ray Niro or someone of that stature to do the job right.

  50. 68

    Here’s a thought, again:

    Hey Guys, Why can’t we all Just get a long? Why can’t we channel our extra energy against Piracy Director Dufas and his main minions, the “Coalition for Patent Piracy” and its miserable members, e.g., (¢¿©isco), and any other Patent Reformers who have been screwin’ with us patent professionals by, e.g., rejections, returns, rejections, returns ad infinitum and would foist many other frustrations and levies on patent attorneys and their inventors alike, and threaten our very livelihoods.

    ___________________________________
    Notice: The information contained in this e-mail transmission, including any document that may be attached, may contain privileged and confidential information. It is intended only for the use of the person(s) named above. If you are not (one of) the intended recipient(s), you are hereby notified that any review, dissemination, distribution or duplication of this communication is strictly prohibited. If you are not (one of) the intended recipient(s), please destroy all copies of the e-mail and contact the sender, Just an ordinary white rabbit(TM). Thank you.
    ___________________________________

  51. 66

    “Apparently you are under the misapprehension that claims have to be enabling. They don’t. They only have to be supported by an enabling disclosure.”

    Perhaps you should use your invention to facilitate your memory of MPEP 2172.02:

    “A claim which omits matter disclosed to be essential to the invention as described in the specification or in other statements of record may be rejected under 35 U.S.C. 112, first paragraph, as not enabling. In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). See also MPEP § 2164.08(c). Such essential matter may include missing elements, steps or necessary structural cooperative relationships of elements described by the applicant(s) as necessary to practice the invention.”

    I know you’ve got a lot on your plate already but please tell me how a user’s memory of, say, the names of each member of the Brady Bunch, is “facilitated” by “ascertaining” two (or more?) IDR values. That’s what claim 1 recites.

    I note that it is also not at all clear who does the ascertaining, storing, or formatting steps. Must all steps be performed by one individual? Can an individual other than the user format the units and store the units? Does the user need to ascertain the IDR values or can someone else ascertain the values and still “facilitate” the user’s memory of the units? If there are multiple users trying to memorize the same units, and one user ascertains an ISR that was calculated (but not “ascertained”) by a different user, is the memory of both users “facilitated” according to the claim?

    Maybe I just need more coffee and this will all become crystal clear.

  52. 64

    “I’m also the one you’ve publicly accused of inequitable conduct.”

    Lighten up, Francis. And learn to read while you’re at it.

    “I would be delighted to converse with you further regarding my claims”

    Let’s converse then. Why not start by answering my questions above about the scope of claim 1? You can post the comments right here. It’s unusual to have the inventor available and willing to inform everyone about what exactly the claims cover and don’t cover. Obviously if there’s been some misunderstanding, I’m happy to apologize. I’ve done it before here and I’m happy to do it again.

    “The difficulty ranking for each unit of information changes for each user to reflect the user’s progress, or not, at the current point in time.”

    That’s nice. Since claim 1 fails to include any step of comparing IDRs at different points in time, the word “currently” is a red herring at best and does not affect any of the issues raised above. What does “ascertain” mean? Can I infringe the claim by “ascertaining” IDRs in my brain? If there are three units and I ascertain an IDR for two of them, do I still infringe claim 1?

    The claim is vague on these issues. Isn’t there some requirement for a claim to clearly define the metes and bounds of the invention? I seem to recall there being some case law on that point. Maybe even a statute. Perhaps I need to save the statues in a text file on my computer, and then “ascertain” the current “IDRs” for the statutes in my brain to “facilitate” my memory of the statutes. Oops … I almost infringed! That’s a joke, Denis.

    Between your Ph.D. and your JD I suspect you can find a way to articulate a meaningful response to my questions, wherein you explain why my concerns about the claim’s validity are so unreasonable that you feel justified in threatening me. Thanks, Mr. O’Brien, Ph.D., Esq.!

    Oh, and lastly: it’s rather dickish to put “Esq” after your own signature. Just fyi.

  53. 63

    “You and BB have both missed a vital word in Claim 1 — the limitation “currently.” The difficulty ranking parameter of Claim 1 is dynamic, as disclosed in the spec, which you obviously haven’t taken time to read. The difficulty ranking for each unit of information changes for each user to reflect the user’s progress, or not, at the current point in time. That dynamic limitation is adequately encapsulated in “currently” and adequately disclosed in the spec.”

    Yet another (supposed) attorney who can’t tell the difference between limiting a claim to something and in having it read on things that it is not limited from reading on. Your “limitation” is “encapsulated” in a word with a common meaning where the claim, interpreted with the word, “currently”, being interpreted in its plain, non-encapsulating form still describes the invention in the spec. How is anyone supposed to “know” that you intend to encapsulate such a limitation? Good one though, I’ve heard it before, but it never stops being funny. Don’t get me wrong, your patent may very well be patentable, I certainly can’t say. Good fortune in enforcing your presumed valid patent good sir.

    link to google.com

    Bam, take a look at claim 21, seemingly telling us a little more about this dynamic limitation.

    “21. A method as claimed in claim 19, further including the steps of:
    (v) evaluating how well the user performs with respect to each unit displayed at step (u); and
    (w) re-calculating the IDR value of the unit on the basis of the evaluation made at step (v) such that the re-calculated IDR value represents how difficult the unit currently is for the user.”

    Claim differentiation anyone? Can anyone remind me what that doctrine would make claim 1 be limited to if claim 21 is more limiting than claims 1, 18, and 19? (w) in 21 seems to be containing our missing dynamic limitation. So if that limitation is in claim 21 … what does that mean for claim 1? I’m actually not real sure about this, I being an mere examiner do not posses the mental facilities needed to understand claim differentiation, in fact, the word is so long I can barely remember even that. Can look at claim 5 as well.

    I thought MM didn’t get to the IC, but I was looking forward to him possibly getting around to an analysis. I’m sure he’ll be around shortly and we’ll see if he’ll make one for us.

  54. 62

    “if you’re getting around a 101 in that manner you’re implicitly admitting that old subject matter is old…”

    Sorry, e6k, that simply doesn’t follow.

  55. 61

    Because sadly their “education” usually consists of things that I already know, yet hold to be laudable at best, and taken horribly out of context or drawing implications out of thin air at worst. If you have any worth while educative statements I’m always interested.

    In any event, the actual topic to which our discussion is directed to, whether that phrase is properly interpreted as applying to things “unpatentable” under 101 or 112 rather than 102 or 103 I cannot definitively say, but, I would venture to say that it is reasonable to believe that it pertains to 101 and 112 as well. This is for the simple reason that the court seems to mean that if you have something which is unpatentable and attempt to further clarify it by routine addition of modern electronics then you have typically just created a situation which is a prima facie obvious. Why? About that I’m not certain. Perhaps it would be because if you’re capitulating to the requirement to overcome 101 then you are in essence admitting that the subject matter was not statutory, and thus must have fallen into one of the judicial exceptions. Iirc the judicial exceptions weren’t made solely because congress didn’t intend for that stuff to be patented, but because it was all taken to be prior art, or “having already existed and thus not being new”. If that is the case, then the answer is obvious, if you’re getting around a 101 in that manner you’re implicitly admitting that old subject matter is old, and they’re merely saying adding electronics to that which is old typically is prima facie obvious.

    But, that’s just conjecture.

  56. 60

    “Malcom Mooney”

    Denis O’Brien here. I’m the inventor and patent attorney on the ‘123 patent you’ve been vituperatively trashing in your discussions with Burger Boy, . . .er, Babel Boy, sorry. I’m also the one you’ve publicly accused of inequitable conduct.

    You and BB have both missed a vital word in Claim 1 — the limitation “currently.” The difficulty ranking parameter of Claim 1 is dynamic, as disclosed in the spec, which you obviously haven’t taken time to read. The difficulty ranking for each unit of information changes for each user to reflect the user’s progress, or not, at the current point in time. That dynamic limitation is adequately encapsulated in “currently” and adequately disclosed in the spec. It is also novel and non-obvious.

    Apparently you are under the misapprehension that claims have to be enabling. They don’t. They only have to be supported by an enabling disclosure. I’m in agreement with BB on most of his points, and I sincerely appreciate his support.

    If you would care to disclose your identity, I would be delighted to converse with you further regarding my claims, not that I find your opinion enlightened or worthy of my time, but as amusement. Furthermore, once I have your identity and can find out where you live and work, we can also discuss the elements of defamation in your jurisdiction.

    Please consider this missive to be in the vein of “put up or $hut up.” I look forward to learning who you are.

    My best,
    Denis O’Brien, PhD/Esq.

  57. 59

    “Oh, so putting a few more judges on the panel makes it Really the law. Sorry, I was confused on that point.”

    Among others, clearly. In fact, putting a few more judges on the panel (i.e., making it an en banc decision) does give a decision a bit more weight. However, I’m pretty sure I said nothing like you suggest. I’m not going to try to explain the nature of law or the proper application of case law to you. Others have tried to educate you, and you’ve made it pretty clear that you’re not very interested.

  58. 57

    Oh and BB, please address my questions above about “ascertaining” etc in my 6:27pm comment. Also answer this question: if I “format” the information, store the information on a device, then calculate the IDRs in my brain, do I infringe the claim? Or does my memory have to be “facilitated” to infringe the claim?

    Thanks for continuing to enlighten us about the sort of garbage that the PTO issued at the height of the patent bubble.

  59. 56

    “The claim is good, it’s strong, and it’s valid.”

    Preach it, brother!

    Since you are such a great admirerer of this claim, would you mind construing it for us? Using an example would be very helpful. Let’s say a user is trying to memorize the names of members of the Brady Bunch. How does the patented method work to “facilitate” that process?

    Thanks.

  60. 55

    “LB, remember it IS the law, it hardly needs ‘support’ in the law right?”

    Wrong. A statement by a three-judge panel of the CAFC, taken out of its original context, may or may not be “the law.”

  61. 54

    “1. A method to facilitate learning/memorization of information by at least one user, including the steps of:

    (a) formatting the information into units;

    (b) storing the units on at lease one computer-accessible storage device; and

    (c) ascertaining individualized difficulty rank (IDR) values for units such that each IDR value represents how difficult a specific unit currently is for the user.”

    Anyone bother to check that for antecedent basis for all claim terms? 1 internet for the person who points out the important limitation. What happens to claims that get to litigation and lack antecedent basis?

  62. 53

    MM

    “Pretty silly example if the claim is still unpatentable on its frigging face because of the unpatentable mental steps. Why bother?”

    The claim is good, it’s strong, and it’s valid. When you’ve had enough experience in this field, perhaps you’ll understand why. (I doubt if you’ll ever reach a point in which you understand that a piece of paper is not a “computer-accessible storage device”.)

    In the mean time, keep blowing off. You amuse us.

  63. 52

    Actually that’s one of the funniest things, I often do specifically recite that I’m construing this to mean x and do so just in this fashion (fashion being i.e. “manner”). And EVEN then it comes back with some asinine reply. Dear jesu the replies I looked over this week have put me nearly beside myself. If it weren’t for RCE’s then I’d be even more pissed off about them wasting my time. I need disposals people, gd it, get with the program already. Then I feel bad for having forced the RCE, but I simply do not have time to interview all these people sending in bad replies and help them out, mostly because lawyers usually aren’t very reachable and/or the person that replied isn’t even working on the case anymore (a whole one month later). Then look over their reply that just scootches past my claim construction and the references. It’s like me inviting a huge amount of work onto myself for 1/3 of the credit. Why is the amount of work huge? Because with every new proposal I have to review the whole application and usually a sizable body of art, And Then new problems arise. They’ll want to do something that violates 112, new matter etc. or they’ll want to do something that runs into another piece of art that I already know of and probably have figuratively “right beside me”. So I still don’t get the disposal and have to wait for the RCE anyway.

    “Interesting, you’ve been advocating that the inventors do their own searches yet acknowledge there is a 100 different ways to approach a search and you never know if you are done.”

    Some search is better than no search amirite?

    “Now the difference between applicant and the examiner is that the examiner has the benefit of (i) searching claims that have already been written, (ii) knowing how the examiner is going construe the language of those claims, (iii) access to databases (and training as to searching) that most applicants do not, and (iv) the experience of searching in that particular art for x number of years.”

    It’s not rocket science to draft some pre-claims that cover the invention. It’s also not hard to then read the claim and understand what it (to you) encompasses. You’re right about access to databases and also some basic search training and some exp searching. However, the applicant has a HUGE advantage, he knows exactly what it is that he believes to be his invention and doesn’t need to waste time searching for anything but that.

    pds cites some irrelevant sections of MPEP as well as “the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.””Notice some parts…”

    All of it is in writing, even the summaries o interviews. Also, maybe I’m not making myself clear. The things I’m talking about are things that are apparent, so your whole throwing the book around is for naught. Bottom line is, you’re right, applicants focus on what a reasonable construction is to them, sadly, their attorneys don’t correct them and make sure they understand they need to focus on what the broadest reasonable interpretation is, not merely what they take it one reasonable interpretation to be.

    “If your primary is reviewing your actions”

    I’m not referring to review, I’m referring to having him specifically go over the prior art in relation to the claims/spec and that I can have him do this to just about any action I write and have him pick it out without help.

    “When did you ever see information in a textbook organized with respect to the current difficulty of that information to a specific user?”

    All kinds of books have sections like this. They might say, this book (or chapter) is written for graduate students, but undergraduates (specific amirite?) may still be able to utilize it effectively with some difficulty. That’s not even getting into more specialized books, perhaps ones for people with various levels of learning disabilities etc?

    As with most pathetic attempts to limit the claim by “reasonable interpretation” it all boils down to you acting as if words are in the claim that just aren’t there. In this case you seem to feel “(c) ascertaining individualized difficulty rank (IDR) values for units such that each IDR value represents how difficult a specific unit currently is for the user.” is “(c) ascertaining individualized difficulty rank values for units such that each IDR value represents how difficult a specific unit currently is for a specific single user from amongst the at least one user”. Bottom line is, your claim isn’t as specific as you wish it were, and/or improperly think it is. That’s not to say the claim isn’t patentable, after all, perhaps the examiner couldn’t find a suitable book that has been put on a computer for reading within ~18 hours. Makes sense to me.

  64. 51

    pds wrote “yet I cannot remember the last time I remembered an examiner explicitly stating (I’m construing “xxxxx” claim limitation to mean “yyyyyy”) in a first action.”

    Most examiners don’t want to take the time to write out their claim constructions.

    Most patent attorneys don’t want them to write out their claim constructions to provide greater patent enforcement flexibility. (Also because the claim constructions would be, as Forrest Gump’s mom would say, like a box of chocolates.)

    That said, I have often thought that, were I an examiner instead of a patent attorney, I would prepare office actions with explicit definitions to force the applicant’s hand and to avoid the ships-passing-in-night effect that can occur when applicants and examiners are construing the claims differently.

  65. 50

    “You people crying because you wouldn’t know what a sufficient search is for the ESD or AQS know this to be true. You just never know when you’re “done” nor if you were even looking for it correctly.”

    Interesting, you’ve been advocating that the inventors do their own searches yet acknowledge there is a 100 different ways to approach a search and you never know if you are done. Now the difference between applicant and the examiner is that the examiner has the benefit of (i) searching claims that have already been written, (ii) knowing how the examiner is going construe the language of those claims, (iii) access to databases (and training as to searching) that most applicants do not, and (iv) the experience of searching in that particular art for x number of years. In the vast majority of situations, the examiner should be better placed to do the search, yet you acknowledge that most examiners do poor searches (at least part of the time). Very interesting …. I’ll bring these points up again the next time you get on your soap box about forcing applicants to perform searches.

    “I do not have all day to hold their hand. To a certain extent it’s up to them to see if the reference is showing the limitations in the manner I’ve set forth. And if they’re really so unable to see what I’m talking about there’s this convenient little contraption sitting on their desk that lets them speak over large distances to other people.”

    Let me remind you of 37 CFR 1.2 … “All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office.”

    Also, let me remind you of 37 CFR 1.104(c)(2) … ” In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.”

    Notice the parts about business being conducted in writing and the clear explanation of the pertinence of each reference … in case you didn’t know this, these rules also apply to you, as an examiner.

    Failure of applicant (or applicant’s representative) to “get” a reference is also your failure. A good rejection doesn’t need an explanation over the phone to clarify. If applicant could have presented an amendment (after the first OA) but didn’t because they didn’t understand how you were rejecting the claims, it is YOUR FAULT that prosecution has not been advanced. You keep QQing about the huge patent backlog yet don’t realize your culpability in creating it. What you (and apparently many other examiners don’t realize) is that half-ass written rejections are more likely to lead to traversals than amendments. Cite good art, EXPLAIN your rejection, and you’ll be more likely to get narrowing amendments.

    “Probably the funniest thing is that I can have my primary read over almost all actions I send out and have him see exactly how I’m proposing the limitations are met, then strangely the attorney quite often have some sort of major issue figuring it out? What’s wrong with this situation? Someone’s not trying.”

    If your primary is reviewing your actions like most I’ve seen, he/she is looking to see that there is something remotely resembling English on the paper and that is about it. Regardless, unless your primary has read applicant’s spec, the prior art, and the claims, I very much doubt that he/she has made a reasoned determination as to whether or not the claims are anticipated or obvious in view of the applied prior art.

    Just a suggestion (to you and all other examiners out there), unless you’ve explicitly stated how you’ve construed certain claim terms, applicants don’t have the benefit of how you’ve determined a broadest, reasonable claim construction consistent with applicant’s specification. In my experience, applicants focus on a reasonable interpretation and examiners focus on the broadest possible interpretation. Many disagreements I see come down to claim construction, yet I cannot remember the last time I remembered an examiner explicitly stating (I’m construing “xxxxx” claim limitation to mean “yyyyyy”) in a first action.

  66. 49

    “did you make any effort to understand the individualized difficulty ranking of Claim 1, which is defined in the spec”

    Is the verb “ascertain” defined in the specification? Do I need to use a very special algorithm to “ascertain” the ranking or can I “ascertain” the ranking some other way? If I rank some items by difficulty according to a different algorithm, but the rank is the same as that achieved by the very special algorithm in the spec (I’m assuming it’s in there), am I still “ascertaining” the ranking within the meaning of the claim?

    “the patent was offered as an example of how to bring mental steps in under 101 by tying them to a computer”

    Pretty silly example if the claim is still unpatentable on its frigging face because of the unpatentable mental steps. Why bother?

    e6k, regarding your point about the term “user” being present in the preamble and the body, this (in my mind) would be a classic example of an instance where that sort of fact would not suffice to render the preamble one which “breathes life and meaning” to the claim. But this claim is so ugly and wrong that it’s hardly worth quibbling over.

  67. 48

    MM

    Is it totally futile to try and get you to understand that the patent was offered as an example of how to bring mental steps in under 101 by tying them to a computer? You keep harping on the obviousness issue. Is that because you are too thick to see the statutory subject matter issue, which was the only issue going before you dropped your red herring?

    But as to your obviousness issue, which you can’t seem to let go of — did you make any effort to understand the individualized difficulty ranking of Claim 1, which is defined in the spec?

    Information in a text book? What are you blathering about? When did you ever see information in a textbook organized with respect to the current difficulty of that information to a specific user?

  68. 47

    MM, user in body = user in preamble. Still I would say putting a college level textbook on a comp would still obvious this claim outta the sky, since putting it on and then perusing the book on the comp meets all limitations.

    LB, remember it IS the law, it hardly needs “support” in the law right?

  69. 46

    MM, user in body = user in preamble. Still I would say putting a college level textbook on a comp would still obvious this claim outta the sky, since putting it on and then perusing the book on the comp meets all limitations.

    LB, remember it IS the law, it hardly needs “support” in the law right?

  70. 45

    “Being a bad searcher makes one an awful examiner … that is the Examiner’s job … to be a fact finder. If the examiner cannot find the facts (i.e., teachings from the prior art), then they are useless to everybody.”

    Then you believe we should just nix 80%+ or perhaps all examiners. I can assure you that we all do bad searches every now and again. Chief reason? There’s about 100 different ways to approach a given application when you go to search it. Sometimes you can see the best one up front, sometimes not. In either case, so far as your search is as complete as you can think to make it then that’s as good as it gets. You people crying because you wouldn’t know what a sufficient search is for the ESD or AQS know this to be true. You just never know when you’re “done” nor if you were even looking for it correctly. If you feel differently, search any given case, let me (or anyone) come behind you and I can assure you the next person will have more and different places to look or a different way of searching it.

    “It seems to me that your initial action is deficient if you have to “explain the situation to them” after the attorney has expressed a willingness to take a stand.”

    That’s too bad isn’t it? Fact of the matter is, as you well know, there are 100 nuances in every case (make that every claim), any one of which the attorney might not “get” from the reference, and choose to “argue”. I do not have all day to hold their hand. To a certain extent it’s up to them to see if the reference is showing the limitations in the manner I’ve set forth. And if they’re really so unable to see what I’m talking about there’s this convenient little contraption sitting on their desk that lets them speak over large distances to other people. “Call after the first action rather than your final” is my advice for people who genuinely believe they’re about to “stand” and not have to amend. If I had to guess, somewhere near 70% of the “misunderstandings result directly from the attorney thinking about his embodiment too much rather than what the claim says.

    Probably the funniest thing is that I can have my primary read over almost all actions I send out and have him see exactly how I’m proposing the limitations are met, then strangely the attorney quite often have some sort of major issue figuring it out? What’s wrong with this situation? Someone’s not trying.

  71. 44

    Babel Boy, let’s not pop a nut here. Here’s claim 1 of your beloved patent:

    1. A method to facilitate learning/memorization of information by at least one user, including the steps of:

    (a) formatting the information into units;

    (b) storing the units on at lease one computer-accessible storage device; and

    (c) ascertaining individualized difficulty rank (IDR) values for units such that each IDR value represents how difficult a specific unit currently is for the user.

    As an initial matter, let’s be frank: this claim is a gigantic meaningless pile of doodoo and is (yet another) poster child for the pure crapola that the PTO let slip through it’s careless fingers at the height of the patent bubble. Someone call Kevin Noonan. At one point he expressed interest in keeping track of this sort of garbage (or maybe that was just bad biotech patents).

    A method for facilitating memorization of information by a user? The claim doesn’t even begin to explain how this facilitating could occur (e.g., there is no tying of the body to the preamble). If we ignore the preamble, the claim simply tells one to take information “units” and organize them according to their “difficulty.”

    Do you think anyone has ever organized units of information according to their difficulty? Ever seen a textbook before? When were textbooks first put on computer readable storage devices? Prior to 1999? Let’s pretend we live on another planet and the answer to that letter question is “no.” Is taking a textbook and putting it onto a computer prima facie obvious? Yes. Any unexpected results or secondary considerations to rebut? Of course not.

    End of analysis.

    That’s claim 1, turned into a pile of pure crap in two minutes by a human being with a functioning brain. I didn’t even get to Sec. 112 or inequitable conduct.

  72. 43

    Leopold: “This language first showed up in the Leapfrog decision, which I think was one of the first obviousness decisions after KSR. ”

    Actually the prima facie obviousness of adding a computer to an otherwise unpatentable invention (e.g., an invention that was otherwise anticipated) has been in the MPEP for quite a few years prior to KSR. But I think you’ve correctly identified at least one of the trails the CAFC followed on their way to Comiskey.

  73. 42

    “The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness.”

    This language first showed up in the Leapfrog decision, which I think was one of the first obviousness decisions after KSR. I knew that this statement was going to cause trouble when I first read it. The problem is that it states more than what was necessary for the decision in Leapfrog, and probably more than the CAFC actually meant. What they should have said was “The routine addition of modern electronics to an otherwise KNOWN invention typically creates a prima facie case of obviousness.”
    That statement makes sense, and is arguably supported by the law (e.g. KSR).

    The use instead of the phrase “unpatentable invention” invited the application of this holding to completely unrelated statutory subject matter problems. I don’t think this broader use of the statement is actually supported by the law.

  74. 41

    Malcom’s interpretation of In re Comiskey fits with what the EPO does and it follows from Parker v. Flook. It is hard to square that interpretation of Comiskey with the idea of considering the claim as a whole, however.

  75. 40

    “Anyway, time to go have a drink or two. C you.”

    You’re actually old enough to have a drink? Well, I’ll be.

  76. 39

    Malc

    Here’s where you’re off the track: The initial issue, which I addressed by providing the ‘123 example, was about mental steps as patentable subject matter under 101. My point was that by simply including a step that adds a computer-accessible device one avoids the 101 rejection. It has nothing to do with obviousness or Chomiskey.

    Then you suddenly began barking with the obviousness red herring. Section 103 is not a part of initial issue and was not a part of this discussion until you raised it. And you raised it with the absolutely ludicrous allegation that the whole ‘123 patent was obvious when OBVIOUSLY you had not read the claims and didn’t know what you were talking about. Your point was that the whole patent was obvious because of that single step (b). That point was wrong and its relevance to the discussion was non-existent.

    Are you still missing the point that 101 and 103 are distinct statutes? How can we help. . .

    As to:
    “Maybe you could explain what is so ridiculous about lead imprints on a synthetic textile being “a computer readable device”? How about a piece of paper with some chads punched out of it?”

    I can only repeat my astute comment above: ha,ha,ha,ha.

  77. 38

    “As for your assertion (and that of “piop…”) that a piece of paper containing a bar code or text that can be scanned is equivalent to a “computer-accessible storage device”, I can only say to you, respectfully . . . .ha, ha, ha, ha. You’re getting ridiculous”

    Maybe you could explain what is so ridiculous about lead imprints on a synthetic textile being “a computer readable device”? How about a piece of paper with some chads punched out of it?

    “Comiskey is not the issue.”

    Comiskey addresses the issue you raised, i.e., the issue of whether obviousnesses requires looking at the “claim as a whole.” You can’t take an unpatentable series of mental steps and add some bogus “putting the information onto a computer” step to arrive at patentable subject matter unless (and it’s difficult to see when this would be the case) the addition of the computer step leads to an unexpected result.

  78. 37

    Malcom

    Clearly you’ve missed the point of the patent. Comiskey is not the issue. Computerization of a known method is not the issue. Ascertaining an individualized difficulty rank of a unit of information is the issue. Step (c).

    Pardon me for asking, but in your opinion Step (c) is obvious from . . . . what reference?

    You still appear not to understand the general principle that it is the claim as a whole that must be analyzed. And once you have analyzed Claim 1 of the ‘123 patent you have 21 additional claims to be similarly analyzed before you can reach your stated conclusion that the “patent” is obvious.

    As for your assertion (and that of “piop…”) that a piece of paper containing a bar code or text that can be scanned is equivalent to a “computer-accessible storage device”, I can only say to you, respectfully . . . .ha, ha, ha, ha. You’re getting ridiculous.

    When you find yourself in a hole, stop digging.

  79. 36

    BabelBoy writes

    “I was always under the impression — given the explicit words of 103 — that the claim as a whole must be evaluated for obviousness. And yet you’re concluding that not just the claim but the whole patent is DOA because just Step (b) of Claim 1 is obvious.”

    In response, let me cite from the Federal Circuit’s decision in In re Comiskey: “The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer.”

    Perhaps you are thinking of a more complicated fact pattern than Comiskey. If so, we can discuss that.

  80. 35

    As a former searcher turned patent agent, I have seen the quality of searches drop, but frankly the Examiners started doing bad searches before it spread to the private sector. Not all of them, just the less experienced ones, but with PTO turnover it has spread, and the private sector is now getting to be just as bad too.

    The main problem seems to be the belief that you can find everything with keywords, or at best with a combination of classification and keywords. You can’t. Nobody needs to be reminded to do keyword searches, and they should, because not everything shows up through classification searching, but every search should include a pure classification search as well. I guarantee that there will always be references that describe the art in ways that you won’t have thought of, and you will only find those references by slogging through every single reference in the classification, even if the time you spend looking at each one is only measured in tens of seconds, but increasingly few are prepared to do that, and there are now many private searchers who never have done, along with probably the majority of examiners. I suppose they don’t see why they should do a better job than the PTO, although it was always a point of pride with me to do so.

    This is one of the causes behind the examiners not citing the best art on the first office action. Sub-contracting the searches could fix this problem, but not if the outside searchers are only held to the same low standards! The amount they are paying them is enough to cover a proper search at prevailing prices, at least for the time being, and the PTO ought to insist on it, if they can still remember what it should entail!

  81. 34

    “Being less than good at searching does not make you a bad examiner, heck, a solid majority of the searches I see that other people have done are ridiculously off base in terms of the classes.”

    Being a bad searcher makes one an awful examiner … that is the Examiner’s job … to be a fact finder. If the examiner cannot find the facts (i.e., teachings from the prior art), then they are useless to everybody.

    “Strangely, even with those horrendous searches I’m still able to validly reject 95%+ of all the apps that get a first action.”
    Don’t confuse making a “valid” rejection with making a good rejection.

    “Oh, and trust me, these attorney’s are willing to “stand” and not amend if they think they have some great argument. Then after I explain the situation to them they’re like “O”.”
    It seems to me that your initial action is deficient if you have to “explain the situation to them” after the attorney has expressed a willingness to take a stand. If you cannot “explain the situation to them” at the get go, you are putting out a deficient action. Neither applicant, applicant’s representative, the BPAI, or the Fed. Cir. are mind readers … so try to set forth a clear statement of the rejection the first time … not in the 2nd or 3rd action or in an examiner’s answer.

    “Maybe we should just hire you, since you’re so good right?”
    You need to work on your reading comprehension again because I never opined on my searching skills.

  82. 33

    “either poor searchers”

    There’s no garunteed way to make someone a “good searcher” and you know it. Being less than good at searching does not make you a bad examiner, heck, a solid majority of the searches I see that other people have done are ridiculously off base in terms of the classes. This applies especially in terms of classification searches, but also to googling etc. I won’t lie, some of mine are quickly invalidated once I have a better idea of what the applicant wants to try to claim after I bust up his overclaim, the smallest, most inconsequential detail that you think is all locked up by your valid first rejection is the most likely to be the one that he’ll want to try be more specific on to use to “get” something. And some of my searches are just bad to begin with, but that’s not apparent from the understanding I have of the invention when the searching began, i.e. after reading the spec. Strangely, even with those horrendous searches I’m still able to validly reject 95%+ of all the apps that get a first action. Very many of these inventions are extremely complicated, inarguably so, and to expect someone to read it, pick up every nuance and be like woo hoo and search it all spot on is ridiculous.

    On an off note I get search reports back from the expert searchers we hire and the results are so off the wall I’m beside myself. They’re even worse than the “sucky” examiners who are doing a bad search. So when you come up with a way to get good searches going on, reliably, be sure to let me and Dudas know. Maybe we should just hire you, since you’re so good right?

    I can assure you of one thing though, a bring in “expert searchers” option certainly isn’t the answer.

    Oh, and trust me, these attorney’s are willing to “stand” and not amend if they think they have some great argument. Then after I explain the situation to them they’re like “O”. There might be a few pusis out there but from what I can tell they aren’t that prevalent. Far more come back with their arguments and get smacked down. Perhaps not many of them are willing to appeal rather than capitulate a short amendment to clarify things up a bit, but, that would be understandably so. Then we do the RCE thing, then I search hard on that little thing he put in, find it, they argue again, we do rce… Or at least that’s what would happen if I didn’t usually cut them off at least by that second bad argument and call them and be like look, guys, this is what we have, this is what you have, distinguish.

    Anyway, time to go have a drink or two. C you.

  83. 32

    “Re: that mental steps patent I cited (which issued on 9/11, as Jim H noticed). In what way is a piece of paper accessible by a computer?”

    I think it was fifteen years ago that President Bush I became a national joke because he was overly impressed by a barcode scanner at a grocery store.

    We’ve come a long way. Not.

  84. 31

    “If you can characterize your method as transforming data from one form to another, then the PTO doesn’t have a leg to stand on when it comes to rejecting claims under 101 for failing to “(2) transform underlying subject matter.”

    Perhaps, but undoubtedly that “transformative” step must comprise the *new* contribution to the art. An unpatentable mental step cannot be made patentable merely by putting in a step, e.g., “wherein said individual performing said mental steps a and b transforms some data from one form to another within 24 hours of performing said mental steps.”

  85. 30

    Also, Mad, you better bet your behind that it’s the applicant’s problem if the PTO doesn’t have good access to art. Does the whole “I got a patent, spent thousands in litigation only to be invalidated by art in litigation” situation mean anything to you? You guys seem to think that if we make a rejection here that it’s ONLY for the public “good” or something like that, we make rejections for you, the applicant’s good as well. Sending you out into the world with a patent on “An object” doesn’t do you one dam bit of good, and if your claim is even 1 hair over what you were entitled to then let’s be honest, you’re just asking to be invalidated and have wasted a lot of time, possibly even missing out entirely on the opportunity to have a valid patent that is narrower in what it protects but still “gets” the people you want to. While we’re discussing it, sending you out into the world with a claim that is easily busted by 101 or especially 112 in litigation, or even on mere perusal of an opposing attorney, does you even less good.

  86. 29

    “Fabricating 101 and 112 rejections is not reasonable.”

    It’s hardly a fabrication if the SC says that something needs x to fit 101 and your claim doesn’t have x. Amirite? Or does the case law not apply when it doesn’t serve your purpose?

    Also, I doubt 112’s are very often “fabricated” since you would obviously just traverse it and everything would be just peachy.

    poip may just be on to something, except for the fact that I believe that we have to consider what “process” means in context rather than what the broadest meaning of the word might be.

  87. 28

    A piece of paper is accessible because it can be scanned (and OCR’d, if necessary). I’ve seen the argument used in a number of cases.

    Legislation is the answer to business patents, not (un)clever ‘interpretation’ of law. Seriously consider whether business method patents ‘promote’ any ‘progress’ in anything except profit margins. Couple that with the fact that ‘common sense’ is great prior art against many business methods.

    While we in the trenches may disdain the layperson, if patents go public and the citizens are saying, “wait, they gave a patent on WHAT?”, it should probably give us some pause.

  88. 27

    “Perhaps that reason is that there is a woefull lack of prior art in the literature and no ‘business method’ database that we can conveniently plug into and find all the relevant prior art?”

    Perhaps a decent argument 10 years ago, but not today. Patents directed to “business methods” have been issuing for quite some time now so a source of prior art is now beginning to mature. Also, there is this thing called the internet that everybody and their brother seems to using to disseminate all sorts of information regarding just about anything and everything. If someone cannot find good art in rejecting these types of patents they are either poor searchers or the art just isn’t out there.

    “I’ll be sure to tell all my apps that are amending on 3rd response that I, and my fellows, just don’t have the competence to reject them.”
    Yes … back to the new mantra of the US Patent and Rejection Office (USPRO) …. reject, reject, reject. Like many examiners who don’t have the gonads to allow subject matter (when they should), many attorneys don’t have the gonads to put an examiner’s feet to the fire on shi tty rejections. There are many attorneys out there that are afraid to get an examiner mad at them … personally, I think those attorneys are doing their clients a great disservice. Anyway, don’t think that an amendment in response to your cited art necessarily means that you made a good rejection. Often times it does, but not necessarily.

  89. 26

    E6k, also, it is not the Applicant’s problem that the PTO doesn’t have relevant databases or art. Applicant’s are “entitled” to a patent “unless” the Patent Office can reject it on a reasonable basis. Fabricating 101 and 112 rejections is not reasonable. Believe me, if you ever leave the Patent Office, you will see.

  90. 25

    E6k, I am well aware of the patent process from both sides, so to speak, having been in the Office, at multiple law firms, and in-house.

    The Patent Office is currently concerning itself (in my observation) with 112 and 101 rejections for software and business methods because it allows them to avoid having to find and apply prior art. No offense intended to you at all, but for every Office Action you or any other Examiner writes, I see and review a dozen responses prepared by associates. As a result, it is easier to arrive at these conclusions.

  91. 24

    Malcom

    Re: that mental steps patent I cited (which issued on 9/11, as Jim H noticed). In what way is a piece of paper accessible by a computer? I’d be interested in using that argument. I tried ramming a piece of paper into my disk drive and the computer just ignored it.

    Also, I was always under the impression — given the explicit words of 103 — that the claim as a whole must be evaluated for obviousness. And yet you’re concluding that not just the claim but the whole patent is DOA because just Step (b) of Claim 1 is obvious. You’re an examiner, right?

  92. 23

    So … you think that we lack the competence to make 102’s and 103’s? Laudable, I’ll be sure to tell all my apps that are amending on 3rd response that I, and my fellows, just don’t have the competence to reject them. Or perhaps you mean only in the business method arts? Perhaps there is a reason for this “lack of competence”? Perhaps that reason is that there is a woefull lack of prior art in the literature and no “business method” database that we can conveniently plug into and find all the relevant prior art?

    Perhaps the only lack of competence is your understanding of how examination works and what it’s based on. Namely, finding art, and having art available to find.

  93. 22

    “Summary – the Patent Office wants to deal with business methods and software under 101 (the easy way) because it doesn’t have the competence (for the most part) to deal with business methods and software the hard (right) way (102 and 103). This is what is comes down to”

    Bingo … somebody nailed the real reason.

  94. 21

    From AT&T v. Excel regarding “transformation”:

    This understanding of transformation is consistent with our earlier decision in Arrhythmia, 958 F.2d 1053, 22 USPQ2d 1033 (Fed. Cir. 1992). Arrhythmia’s process claims included various mathematical formulae to analyze electrocardiograph signals to determine a specified heart activity. See id. at 1059, 22 USPQ2d at 1037. The Arrhythmia court reasoned that the method claims qualified as statutory subject matter by noting that the steps transformed physical, electrical signals from one form into another form – a number representing a signal related to the patient’s heart activity, a non-abstract output. See id., 22 USPQ2d at 1038. The finding that the claimed process “transformed” data from one “form” to another simply confirmed that Arrhythmia’s method claims satisfied Section 101 because the mathematical algorithm included within the process was applied to produce a number which had specific meaning – a useful, concrete, tangible result – not a mathematical abstraction. See id. at 1060, 22 USPQ2d at 1039.

    On particular note is the phrase “the claimed process ‘transformed’ data from one ‘form’ to another simply confirmed that Arrhythmia’s method claims satisfied Section 101.”

    If you can characterize your method as transforming data from one form to another, then the PTO doesn’t have a leg to stand on when it comes to rejecting claims under 101 for failing to “(2) transform underlying subject matter.”

  95. 20

    Summary – the Patent Office wants to deal with business methods and software under 101 (the easy way) because it doesn’t have the competence (for the most part) to deal with business methods and software the hard (right) way (102 and 103). This is what is comes down to.

  96. 19

    Hey stepback, doesn’t your sample “tethering” claim cover purely mental processes just as well as computerized processes? Do mental processes involve transformations of electrons? Is a memory in your brain electronic data?

  97. 18

    A method of transforming first electronic data into second electronic data where the transformation utilizes a plurality of electrons (a.k.a. a composition of matter), the method comprising:
    (a) obtaining said first electronic data,
    (b) …

    There. Now it’s “tethered”, tied or otherwise connected with another statutory class. Next?

  98. 17

    Mooney: I stand corrected. Looks like we’re already neck-deep in it.

    Seems like we have people playing the “but it’s not purely mental!” card, too. Nice.

  99. 16

    “Software diskettes and hard drives containing code to manage commodity trading can are articles, can be packaged, and can be labeled.”

    True enough. But unless the diskette or the hard drive is itself a “patented article,” then Section 287 doesn’t apply. There is no requirement to mark a process to avoid losing damages.

  100. 15

    “One potential reason “mental steps” is troubling may be a perceived degeneration into thought-policing (i.e., “I have a patent on that way of thinking! You’re not allowed to deduce that!”), but I think we’re still a ways away from that cesspool.”

    Your thinking is plainly incorrect. The plaintiff in Metabolite Labs was quite clear that their patent covered the act of mentally making the correlation between the test results and the disease.

  101. 14

    “Why would one even ask if the method, algorithm, whatever has to be connected to a device — just do it.”

    Here’s a better question: “why would one even ask if the mental steps, algorithm or whatever was patented? Just do it.”

    “Step (b) is storing information on a computer-accessible storage device, which is all it takes to convert a mental steps method into patentable subject matter.”

    That patent is obvious and therefore invalid. You can’t take a non-patentable claim and make it patentable by throwing in a trivial obvious step of “storing the information on a computer accessible storage device.” And of course, one skilled in the art understands that such a “storage device” includes a piece of paper, unless the term is defined otherwise.

    That was easy, too.

    Congrats to the PTO for doing their part to put an end to ridiculous, pointless business method patents.

  102. 12

    The marking requirement is found in 35 U.S.C. 287(a):

    “Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.”

    Software diskettes and hard drives containing code to manage commodity trading can are articles, can be packaged, and can be labeled.

  103. 11

    Jim H., to your question, there would be a strong First Amendment argument that a “mental steps” patent cannot lead to liability. The Supreme Court has consistently held that even greater than the right to speak freely is the right to think freely.

  104. 10

    I have a question regarding “mental steps” patents (and Bilski’s patent if not considered a mental step patent):

    How would such a patent be marked (i.e., providing notice of infringement)? If I manually performed the steps which Bilski has claimed or any other mental process, I would theoretically infringe according to Mr. Bilski; however, how can he mark my actions for infringement purposes?

  105. 9

    I’m not entirely sure why the focus is on the “mental steps” part of business methods. The reason laypeople think business methods are BS is because they’re __stupidly obvious__ and therefore tread upon the public domain of __common sense__.

    One potential reason “mental steps” is troubling may be a perceived degeneration into thought-policing (i.e., “I have a patent on that way of thinking! You’re not allowed to deduce that!”), but I think we’re still a ways away from that cesspool.

  106. 7

    Here’s a 2001 “mental steps” patent for how to pass the patent bar, or any other professional test. The inventor is a patent lawyer.

    Step (b) is storing information on a computer-accessible storage device, which is all it takes to convert a mental steps method into patentable subject matter.

    For the life of me I can’t understand what the problem is drafting a “mental steps” patent. Why would one even ask if the method, algorithm, whatever has to be connected to a device — just do it. How easy can it be?

  107. 5

    During questions and answers at yesterday’s Business Methods Partnership program, someone asked TC 3600 Director (Ms.) Wynn Coggins if there “needs to be a device” to tie (or “tether” as British courts say) the process to an apparatus, and she said “yes”. Later, when the memo’s author Deputy Commissioner for Patent Examination Policy John Love was asked whether a “device need not be included” in the claim, he did not answer with an unequivocal “no”.

    To be honest, I’m not sure what his exact answer was (other than equivocal to me), but he said the required “transformation” of the underlying subject matter would “usually” involve technology. I have the impression that the PTO is maintaining a “technological arts” requirement for process claims.

    Can anyone else who attended clarify?

  108. 4

    Questions from Cro-magnon man:

    1. Why is the PTO so dead set against patents?

    2. Sure I’ll identify the material that changes state or transformed:

    A method for making long lasting neuron connections…. link to wired.com

    Why should this be patentable?

  109. 3

    Well, at least they’re consistent (refreshing, actually). That’s the same tripe they trotted out at the en banc oral argument in Bilski. I don’t know what the Fed Cir will say, but I am confident that it will not look like what the PTO is proposing. They must be trying for a perfect record in high-profile cases, 0 for X.

  110. 1

    Fine, what if it’s already patented? This guidance may not change any judge’s mind, but if it does then why not put robes on the examining corps.

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