Ex parte Atkins (BPAI 2009)
The BPAI has again raised the issue of Post-Bilski patentable subject matter sua sponte. Like most claims challenged under Section101, Atkins claims also have serious nonobvousness and indefiniteness problems.
Atkins claims a method of “converting a unidirectional domain name to a bidirectional domain name.” In reviewing the claim under Bilski, the BPAI noted that the claims do not “recite any machine or apparatus or call for transforming an article into a different state or thing. A domain name is simply a series of characters representing the address of a resource, such as a server, on the World Wide Web. All of the steps are data manipulation steps.”
Atkins also claims a parallel “system” for converting the domain name. The BPAI rejected the system claims under Bilski since “those claims encompass any and all structures for performing the recited functions. As a result, [the system claims] are at least as broad as method claims … which we have determined recite patent ineligible subject matter under Bilski.”
For a reissue, you can simply say you claimed more than you were entitled and submit amended claims including whatever machine/transformation you care to come up with (assuming supported by the spec). There is no need to cite to Bilski or any other case.
Most of us seem to agree that you cannot request a re-exam based on Bilksi, but isn’t it also the case that most patentees won’t be able to request re-issue either? Is relying on State Street an error in the sense required to request re-issue?
Wikipedia is mostly FRE 201 judicial noticable material. Studies done of its reliability put it on a par with sources like encyclopedias, which have historically been used for the same purpose.
As of two years ago, it had been cited in court decisions more than 100 times, including 13 appellate decisions. Of course, even if it is wrong to use Wikipedia, it is entirely possible that doing so constitutes harmelss error. As of September 2008, the number of citations exceeds 300, as explored by Lee F. Peoples in a recent SSRN posted article.
The article in question, moreover, on Unicode, is exceptionally well sourced and describes a long standing, public industry standard terminology. While one might prefer to get this FRE 201 judicial notice information directly from the horse’s mouth (with a mere hat tip to wikipedia), this is really little different from relying upon a well known textbook rather than an obscure International Chamber of Commerce document or FASB pronouncement for a commercial shipping term or accounting definition.
Awesome – BigGuy, my thanks to you for the lesson. I do appreciate your time.
link to scotusblog.com
New Light,
You seem to be selectively reading the statutes to support your conclusion, while, in a vacuum, you can argue “patentability” and substantial new question” are broad terms, the fact of the matter is that these terms must be read in view of the rest of the statute, which is linked to printed publications and patents.
“‘Prior art is not impacted by whether or not it is patentable itself.’ Ok, I have read it and now typed it myself, yet I still cannot fathom why not?”
“Prior art, pertinent and applicable and having a bearing can encompass that prior art no longer covering patentable material due to a change in law.”
This is precisely the point where we’re not connecting. Here’s a conclusory statement – a change in patentability status for a prior art reference has NO relevance to the patentability of the patent for which you’re seeking re-exam. Why? Because the patentability of the material in the prior art reference was NEVER relevant.
Consider: A reference must be enabling to anticipate under 102, but need not be enabling to qualify as prior art under 103. (Symbol Tech. v. Opticon, 1991; Amgen v. Hoechst Marion Roussel, 2003; see also In re Epstein, 1994.) A reference need not disclose substantial utility. (Rasmusson v. SmithKline Beecham, 2005.) Conclusion: A reference need not disclose patentable subject matter.
Consider: Sections 102 and 103 both discuss prior art. Section 101 does not mention prior art, and prior art is logically unconnected to the concepts of Section 101. Conclusion: the prior art is never material to a patentable subject matter determination.
Overall conclusion: Casting doubt on the patentability of a prior art reference, in light of new law, has no bearing on the patentability of the patent/application against which the prior art is raised. If we can’t get to agreement on this point, then we’re doomed to disagree. I apologize if it seems like handwaving, but that’s the best I can do with 5 minutes of research.
“…are you saying I misquoted you?”
No, I’m saying that you mis-paraphrased me when you over-generalized my statement to “a patentability issue is completely irrelevant in the process of determining whether a patent has patentability issues.” If you can’t see the difference between what I said and your paraphrase, then we’re again fated to disagree.
David,
To temper the euphoria, here is another BPAI result:
Ex Parte Zybura, et. al.
Appeal 2008-2195
Application 10/669,8661
Technology Center 2100
Decided:2 February 3, 2009
link to des.uspto.gov
snake and BigGuy,
My feelings are not hurt, I am just trying to understand what you are saying and I am having difficulty with the hand waiving and conclusionary statements.
“Prior art is not impacted by whether or not it is patentable itself”. Ok, I have read it and now typed it myself, yet I still cannot fathom why not? Even if reexam requests are solely based on printed publications and patents, patentability issues related to those printed publications and patents are fair game. Patentability issues are not limited to 102/103 issues – nowhere is this stated, yet this is continuely implicit in your replies. There is no need to rewrite a statute and Swanson has more to do with the logic presented by BigGuy, except BigGuy ignores the fact that the issue has indeed come up – in Swanson (The 2002 amendment to the statute addressed that particular issue. Since then, the issue hasn’t come up much:) How much does it need to come up? It has come up – what now?
Again, the statute simply is not written that ONLY 102/103 issues can prompt a basis of patentability issue. If anyone is rewriting the statutes, it is not Swanson.
from 37 CFR 1.501: At any time during the period of enforceability of a patent, any person may cite, to the Office in writing, prior art consisting of patents or printed publications which that person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability of any claim of the patent.
All I am saying is that if something is now unpatentable by rule of law, this holding is a substantial question of patentability and surely has a bearing on many patent claims. I am using the Swanson case as basicly a skeleton key that opens any door, since any art used in prosecution of patents now has a new light.
The continual repetition of “The statutes are clear that a reexam request is only based on printed publications and patents” seems to argue a point that is not being argued. Prior art, pertinent and applicable and having a bearing can encompass that prior art no longer covering patentable material due to a change in law. I am merely adding to Judge Newman’s pronouncement in Bilski: “Its impact on the future, as well as on the thousands of patents already granted, is unknown.” It is those thousands of patents already granted that have substantial questions of patentability being thrust on them.
“”‘whether or not the prior art references are directed to statutory subject matter is completely irrelevant.’
– care to explain why a patentability issue is completely irrelevant in the process of determining whether a patent has patentability issues in the conngressionally mandated process for reviewing such?”
I didn’t say anything like what you suggest.”
Funny – for a lawyer, it is pretty evident where I got the quote – are you saying I misquoted you?
Maybe I am confused about the ‘completely’ part…
New Light,
Prior art is not impacted by whether or not it is patentable itself.
You are basically arguing that you can file a reexam request and point out to the Office that the prior art does not satisfy Bilski, and therefore, this is a new light somehow relating to the patent you want reexamined.
I am not here to insult anyone, but c’mon, that is just plain silly. The statutes are clear that a reexam request is only based on printed publications and patents, Swanson, no matter how you spin “unintended consequences” cannot rewrite a statute.
We can agree to disagree, but if you want to give me those 6-1 odds, I’m happy to take your money 🙂
MM:
That looks good for if/else analysis, doesn’t pass my 101 or 112 tests, though (see below).
Back to the 101 that the BPAI reversed. The BPAI ruled there was not a Bilski issue with the method claim because the “local unit” is a modem, hence the machine performing the method is now a particular machine (ie, one with a modem).
Here’s a quote from the spec: “The local unit might be a modem or other similar communication device that acts as a pass-through device or data pipe to pass all data through the remote unit.” As an examiner in networking, I now have no idea whether the “local unit” is software or hardware. What is a “data pipe”? A software buffer?
So the claim 1 as written, doesn’t inherently have to be connected to a network or inherently have a modem. To me, that’s not a particular machine. If his definitions of layers (which are conceptual garbage) are “related software”, I fail to see to see anything to make it a particular machine.
The entire spec (11 pages) is poorly written bile. Here’s the definition for “session layer”: “The session layer … includes a GUI process as described above” … “The session layer may also include any other type of software program or process that is to be executed by the remote unit”.
So… the session layer is any software whatsoever? Thanks for clearing that up. The case needs to be 112’d into abandonment.
“Are you an examiner? Your conclusionary handwaiving makes it seem so.”
Are you an attorney? Your dubious reasoning makes it doubtful.
“‘Section 101 is a threshold inquiry, and has nothing to do with prior art.’
– um, wrong. Section 101 is a patentability issue.”
Umm, I didn’t say that Section 101 wasn’t a patentability issue. I said that it had nothing to do with prior art. For “threshold issue,” see Bilski slip opinion, page 4.
“‘whether or not the prior art references are directed to statutory subject matter is completely irrelevant.’
– care to explain why a patentability issue is completely irrelevant in the process of determining whether a patent has patentability issues in the conngressionally mandated process for reviewing such?”
I didn’t say anything like what you suggest. I said that a prior art reference doesn’t have to be directed to statutory subject matter to be relevant. However, I did say that by virtue of the congressionally mandated re-examination statutes, a patent can only be re-opened for examination on the basis of a substantial new question of patentability that is based on prior art.
“While I’m waiting for snake to provide the case law outlining why only 102/103 can be raised for SNQ, perhaps you have examples of this to share…”
You’ll have to keep waiting. There is no case law, because the patent office follows the statute and doesn’t order re-examinations based on issues other than 102/103. (I don’t believe that a failure to order a re-exam is appealable.) There is a little case law prior to 2002 where the Federal Circuit smacked down the PTO for re-visiting “old” and “resolved” questions of patentability. Prior to 2002, this was understood to include any issue involving already cited art. The 2002 amendment to the statute addressed that particular issue. Since then, the issue hasn’t come up much: “We have not had the opportunity to evaluate the scope of the ‘substantial new question of patentability’ requirement since the 2002 amendment.” Swanson, slip opinion p. 12.
“…merely stating that I’m wrong really doesn’t cut it.”
I’m sorry if I hurt your feelings, but suggesting that Section 101 has anything to do with prior art is just wrong.
BigGuy,
Are you an examiner? Your conclusionary handwaiving makes it seem so.
“Section 101 is a “threshold” inquiry, and has nothing to do with prior art.”
– um, wrong. Section 101 is a patentability issue. Reexam can be raised on patentability issues of art references already cited, but on different grounds. “threshold” or not, 101 is very much a SNQ.
“whether or not the prior art references are directed to statutory subject matter is completely irrelevant.”
– care to explain why a patentability issue is completely irrelevant in the process of determining whether a patent has patentability issues in the conngressionally mandated process for reviewing such?
While I’m waiting for snake to provide the case law outlining why only 102/103 can be raised for SNQ, perhaps you have examples of this to share…
I don’t mind being wrong – it’s a good way to learn, but merely stating that I’m wrong really doesn’t cut it.
“1. A method for triggering a log-off of a data link layer pass-through application, the method comprising: detecting the absence or presence of activity in a session layer and aborting a data link layer pass-through application when said session layer is inactive.”
That is how proper claims are written boys and girls.
You guys wanting to enter reexam shouldn’t have any problem. I could raise an SNQ on just about any patent ever issued in what? Under an hour? Under a minute? There might be a small few that might take longer, but seriously, if you want a reexam it doesn’t seem that hard to get it.
“Now, with the new light, that art is questionable in and of itself. An examiner may go, hmm, I OK’d that patent because I viewed it in light of the prior art. Now there’s a new light on that prior art that draws questions on the patentability (of that prior art).”
Thanks for the really incisive hypothetical, New Light. You might want to review Bilski again, however. Section 101 is a “threshold” inquiry, and has nothing to do with prior art. Furthermore, whether or not the prior art references are directed to statutory subject matter is completely irrelevant. So the examiner may muse all day regarding whether he sees a “new light” on the prior art, if he likes, but he still can’t order a re-examination based on 101 issues with the prior art.
Bottom line is that it is not possible to raise a SNQ, based on prior art, for Section 101 issues. Once the patent is in re-exam, however, everything is fair game.
“12 to 2 on the current BPAI count indicates that snake is wrong on what the PTO would do.”
The BPAI is not working under the authority of the re-examination statutes. So what exactly does the BPAI’s activity have to do with raising a SNQ of patentability for a re-exam?
My hypothetical would be any typical-computer-related-now-Bilskiable prior art considered in an application that proceeded to becoming a patent. Let’s say the patent issued without amendments in light of the prior art as originally considered.
Now, with the new light, that art is questionable in and of itself. An examiner may go, hmm, I OK’d that patent because I viewed it in light of the prior art. Now there’s a new light on that prior art that draws questions on the patentability (of that prior art). Since the patent was passed on thus seemingly false building blocks, there is a SNQ based on prior art, and the patent is contaminated by the prior art references. So it IS that simple that there is directly a link of the SNQ to the prior art and the patent is capable of being re-examined. Once in the re-exam state, 35 USC 305 hits it fully as an initial examination and Bilski strikes.
Take the original case of this thread – the two patents used by the examiner for 103 purposes would both fail the current BPAI Bilski test. Let’s assume for a moment that this case was heard a year ago and the 103 rejections did not suffice and the application passed to a patent. Now, we take another look and see that the cited references, the two earlier patents, have a SNQ in light of Bilski. The most recent patent can be reexamined based in part on the direct question regarding patentability of the references, as the references meet the requirement of addressing “a bearing” in the patentability of the subject claims of a particular patent. Once this simple level is reached in any given prior art, the requirement for re-exam is reached. and on we go. The newer patent then is examined as in an initial examination…
I think snake is missing the point with “it was not meant to cover any “new light” such as changes to the law. (Bilski)” – what it was meant to do and what it does may be two very different things – the law of unintended consequences!
“I am just telling you as things stand right now, the PTO will certainly reject any such request.” – 12 to 2 on the current BPAI count indicates that snake is wrong on what the PTO would do.
New Light,
Can you give an example 101 substantial question of patentability that is based on prior art?
How about
1. A method for triggering a log-off of a data link layer pass-through application, the method comprising: detecting the absence or presence of activity in a session layer and aborting a data link layer pass-through application when said session layer is inactive.
You mean the if/else language in a rejection? There’s two schools of thought on that. One is that you need to find either the if or the else, the other is that you need to find both. I choose whichever is more convenient to me during prosecution. If it ever gets close to allowable, I usually call the attorney and tell them this…
Point 1: In order for someone to infringe your claim, they have to perform the method twice. Once to enter the if, once to enter the else. You’ll want to remove it.
Point 2: You don’t need the if/else to make it patentable. If the novelty is in the “if”, all you need is language inside the if. Remove the “else” and get more coverage. If the novelty is in the “else”, all you need is the language inside the else. Remove the “if” and get more coverage. If you think the novelty is the “determining if” (which inherently “determines else”), all you would need is “determining if..” (which, in the above example, would be “determining if the session layer is active” and then claiming no subsequent limitations. Or, if you’re having trouble meeting Bilksi (cough, hint) claiming subsequent limitations that are fairly trivial and have no dependency on the “determining if”. That is, don’t preface it with “when it’s inactive”.
I’m guessing what’s inside the “else” is the asserted novelty.
So a better drafted claim would read:
1. A method for triggering a log-off of a data link layer pass-through application, the method comprising:
when data is received over the data link layer, determining if a session layer is active;
if the session layer is inactive, aborting the data link layer pass-through application in a local unit.
An Examiner, what is your take on the claim interpretation issue I raised upthread?
Davie Stein:
“I’d have expected such claims to be easily – EASILY – Bilskied, and probably with lots of insulting language.
Yet today, this claim sailed past this particular BPAI panel without a hitch. Not one mention of the words “Bilski,” “Diehr,” “insignificant,” or “mental.” And the only mention of the word “particular” is a refutation of the examiner’s rejection for insufficiency under 112.”
Claim 1 is bilskiable if the examiner had argued the 101 rejection with the knowledge of “particular machine” requirement (He wrote his examiner’s answer months ago). The BPAI decided it wasn’t a 101 because “local unit” makes the machine a particular machine. What’s a local unit? The spec discloses the “local unit” as being a modem. The BPAI ruled the machine performing the method is not a generic machine, it’s got to be a machine with a local unit. But does this “local unit” have to be structural? Depends on what the spec says, would be my guess. A solid argument suggesting the spec doesn’t require the “local unit” to be hardware would make it bilskiable in my opinion.
And I’m not even going to get started on claims that refer to networking “layers”. I 112 those all the way to disposal-ville.
New Light,
I think you are reading a bit too much into the Swanson “new light on patentability.” This statement was made in connection with a re-presentation of PREVIOUSLY CONSIDERED ART in a new light, it was not meant to cover any “new light” such as changes to the law. (Bilski)
An argument that a claim covers non-statutory subject matter because Bilski is a “new light” is not based on printed publications, it’s that simple. The law requires the SNQ be linked to published art. I am not limiting anything to 102/103, but, instead, to the language of the staute which is printed publications and patents.
If you think you can file a request injecting Bilski issues to the Office as a “new light”, please do. Extensions of the law are always a possibility, I am just telling you as things stand right now, the PTO will certainly reject any such request.
snake,
I appreciate your patience, but by parsing my responses I believe that you have missed the bigger picture.
I am not saying that 101 necessarily by itself is sufficient for invoking re-exam. I am not dismissing the need of prior art in the form of patents or printed publications. However, the requirement for citing prior art only needs to address “a bearing” in the patentability of the subject claims of a particular patent. Patentability being addressed is not limited to 102/103 at the Law or Rule levels. “Examination on the basis of prior art” as indicated in the rules does not explicitly limit itself to 102/103 – I think you have parsed that phrase too finely and are stuck on the definition of what constitutes prior art, rather than the big picture that the basis of prior art can come from “new light on patentability” as the focus of the patent that is being re-examined.
Congress intended re-examination as a process for taking away patent rights if those rights were granted in error – that the patent does not possess patentability. I am very interested in any case law that defines explicitly that ONLY 102 and/or 103 can be used with the prior art to establish this basis. You do have to apply the prior art, but the basis can be any issue of patentability. This includes 102/103, but can also include 101.
In re Swanson is the key to the door of the china shop. This key allows ANY prior art to serve as the required art that is to be cited in the request for reexamination. In re Swanson allows previously cited art to be cited again, if that previous cited art was not used in the same light.
The Bilski sledgehammer is that new light. Let’s think of it this way – prior art was used in the initial examination and the application was allowed to proceed to patent. That same prior art can now be used, in the new light of Bilski, to reexamine the now patented item because there exists a substantial question of patentability in the new light. That’s the key – In re Swanson basically allows a free re-do to every patent every time a substantial new light on patentability arises.
This may be why Neumann was so concerned with Bilski.
35 USC 301 and 35 USC 302 are met. I think that you are limiting the substantial question of patentability to ONLY the 102/103 arenas. That is not what the Law or the rules say. In 35 USC 303, the Director can use the substantial new question of patentability (by the holdings of Bilski and the BPAI) applied through the originally cited art in this new light and order reexamination under 35 USC 304. At 35 USC 305 “reexamination will be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133 of this title.”
Under these initial examination procedures, the Bilski sledgehammer can apply the 101 nullifications, and thus kill the patent.
“But, Leopold, it’s practically impossible to establish a definition of ‘particular machine’ that isn’t radically out of sync with several recent BPAI cases.”
Is it? How about this definition (this is a very rough proposal): a “particular” machine is any machine, including a general purpose computer programmed to carry out the steps of the method, unless: (a) the machine is used only for insignificant post-solution activity, (b) the machine is used only for mere data collection, or c) the method is directed to an abstract principle or algorithm and the tying to the machine effectively preempts every known use of the abstract principle or algorithm.
Which several BPAI cases are radically out of synch with this definition? (It would be helpful if you could reproduce an exemplary claim for each, so I don’t have to go and read the case again…)
New Light,
I think it is easier to just go through your reasoning:
–To base your view on the MPEP is in error – the MPEP does not carry the force of law and can be changed rather quickly.
***Irrelevant, the statutes are just as clear.
–Further, you only quote for the Inter Partes Re-exam. No such limitation appears in the MPEP for Ex Partes Re-exam.
**See 2258
–I am not certain that your view is in the correct light. The Law (35 USC) is quiet on this matter.
**The legislative history of the reexam statute is not silent, there is a reason printed publications are called out.
–As I indicated, the only link required is In re Swanson. Once any existing art is cited “in a new light”, re-exam for any substantial issue of patentability is allowed by Law:
***I fail to see how Swanson has anything to do with 101, previously submitted ART was the focus there, not changes to the law.
–35 U.S.C. 302 Request for Reexamination.
Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301 of this title.
–As mentioned, in 35 USC, this “basis of any prior art” is not defined to exclude 101 issues.
**Incorrect, 301 is based on printed publications ONLY
–In reviewing the Rules (37 CFR), I do find the following, which leaves an incomplete picture (there may be validity to your points in this shade):
§ 1.552 Scope of reexamination in ex parte reexamination proceedings.
(c)
Issues other than those indicated in paragraphs
(a) and (b) of this section will not be resolved in a reexamination proceeding. If such issues are raised by the patent owner or third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may consider the advisability of filing a reissue application to have such issues considered and resolved.
**Agreed, this is what happens for 112 and 101.
–Section (a) deals with 112 requirements. I do not know what force these “issues raised by the examiner” may have, although once in re-exam, new grounds of rejection are permissable – at least in theory opening the door to the Bilski sledgehammer. It seems the rules open a door that the method of closing is not covered.
** New and amended claims are subject to 101 and 112, that’s it.
–Perhaps there are those more seasoned in this area that can shed further light on this subject.
** I am about as seasoned as they come, also, this is hardly a controversial topic.
Leopold Bloom wrote:
“Or perhaps there is a fourth: (4) The sky is not really falling, and a claim can’t properly be rejected under Bilski when that claim is clearly tied to a computer unless the claim is directed to an abstract idea or otherwise preempts entirely the use of a abstract algorithm.”
Of course, I’m hopeful that this is the case. But, Leopold, it’s practically impossible to establish a definition of “particular machine” that isn’t radically out of sync with several recent BPAI cases.
The BPAI, treated collectively, is treating Bilski as if it provides a bundle of platitudes – “insufficient extra-solution activity,” “preempts every known use,” “tied to a particular machine,” etc. Whichever result the BPAI wants in a particular case, it simply selects and recites the corresponding platitude. Call it Dial-a-Holding: press “1” for abstract, press “2” for preemptive…
Of course, this “bundle of platitudes” results-oriented technique has been tried often – the doctrine of equivalents, 112p6, Markman’s extrinsic vs. intrinsic nonsense, and “obviousness.” It’s even been tried before with software – all of that “algorithm” junk from Gottschalk and and again with Freeman-Walter-Abele.
Inevitably and invariably, it causes a nonsensical jumble of contradictions. Bilski is only three months old, and already we’re seeing the same symptoms of decay.
– David Stein
>>Or am I asking the wrong person?
You should assume that all of MM’s post are policy based and that he does not care about applying the law.
“You don’t think that one skilled in the art would understand that claim to be directed to a multi-pass process that selectively processes the data or aborts, based on the determination of whether the session layer is active?”
Skilled in the art of what? It’s a method claim, not an apparatus claim. Are you going to try to read the word “if” out of the claim?
What if my computer receives data over the data link layer, “determines” (LOL) that a session layer is active; and processing the received data?
Does the computer infringe the claim? Why wouldn’t such steps, alone, constitute infringement of the claim?
“My questions: if a prior art method included the steps of receiving data over a data link layer, ‘determining’ that a session link layer is active, and ‘processing the data’, does that anticipate the claim?”
Not in my opinion, although I would draft the claim to be a bit more precise. You don’t think that one skilled in the art would understand that claim to be directed to a multi-pass process that selectively processes the data or aborts, based on the determination of whether the session layer is active? Or am I asking the wrong person?
“Only three explanations exist:”
Or perhaps there is a fourth: (4) The sky is not really falling, and a claim can’t properly be rejected under Bilski when that claim is clearly tied to a computer unless the claim is directed to an abstract idea or otherwise preempts entirely the use of a abstract algorithm.
>>”Realizing that these rules are indeed policy >>based, it could well be that only policy >>arguments will have any effect in this sphere.”
MM wrote: >DING DING DING!!!!
That is good to know. We can just ignore any argument you make from now based on law and assume that you are basing your arguments on policy reasons. We can assume that you don’t care about the rule of law.
Nice to know. I’ll keep it in mind.
breadcrumbs wrote:
“David, you might find the following to be interesting:”
Wow. Wow. “Interesting” is an understatement.
Here is claim 1:
“A method for triggering a log-off [sic] of a data link layer pass-through application, the method comprising:
when data is received over the data link layer, determining if a session layer is active;
if the session layer is active, processing the received data in the session layer; and
if the session layer is inactive, aborting the data link layer pass-through application in a local unit.”
I’d have expected such claims to be easily – EASILY – Bilskied, and probably with lots of insulting language.
Yet today, this claim sailed past this particular BPAI panel without a hitch. Not one mention of the words “Bilski,” “Diehr,” “insignificant,” or “mental.” And the only mention of the word “particular” is a refutation of the examiner’s rejection for insufficiency under 112.
Only three explanations exist:
(1) This opinion was authored pre-Bilski, and got caught in some kind of bureaucratic delay and/or temporal vortex.
(2) These admin judges simply didn’t get the Bilski memo… ANY of the Bilski memos.
(3) The USPTO is collapsing under the crushing weight of the Bilski illogic and its misshapen progeny.
Breadcrumbs, this is awesome. Thanks.
– David Stein
Re Kasper, here is a representative claim
1. A method for triggering a log-off of a data link layer pass-through application, the method comprising:
when data is received over the data link layer, determining if a session layer is active;
if the session layer is active, processing the received data in the session layer; and
if the session layer is inactive, aborting the data link layer pass-through application in a local unit.
My questions: if a prior art method included the steps of receiving data over a data link layer, “determining” that a session link layer is active, and “processing the data”, does that anticipate the claim?
It seems to me that it should.
Daivd Stein at Jan 30, 2009, 04:30 PM asked
“Anyone keeping score of CAFC/BPAI 101 cases since Bilski? I think it’s 12 invalidations and probably one validation (Ex parte Bo Li.)”
David, you might find the following to be interesting:
Ex parte DAVID J. KASPER, II
Appeal 2008-2297
Application 10/147,116
Technology Center 2400
Decided: February 2, 2009
link to des.uspto.gov
Actually, elaborating the my previous post, one of the qualifiers for 102a is “known by others in this country”. Clearly a Wikipedia article written before the EFD and replicated to US servers was “known in this country”.
Nothing like testing the waters and seeing how applicant responds.
What’s the difference between Wikipedia and technical forums (which I’ve used for rejections on multiple occasions)?
Of course, whenever I use forum/blog postings I reject based on public use and evidence it with the forum/blog posting (they’re generally talking about features of a specific product). Same could be said for wiki, right? As long as I use the version of the wiki article that was prior to the EFD. Why not reject on a generic public use by not restricting to a specific product and evidence it with the Wiki article. Because if the wiki article had it, then by all means, it had to be out in the public.
“Realizing that these rules are indeed policy based, it could well be that only policy arguments will have any effect in this sphere.”
DING DING DING!!!!
Except that the policy reasons for promoting patenting of abstract computer-based crap are really, really weak.
“The most frustrating aspect of the entire saga is the continued refusal by anyone involved to admit the extent that developing 101 precedent is guided by policy objectives.”
Allowing Beauregard claims was 100% guided by policy objectives, i.e., the objective to allow the patenting of software.
This recent 101 wrangling guided by two objectives. One is to get rid of crap. I’ll let you guess what the other one is.
New Light,
I’m not sure that the statutes are quite as silent as you suggest. Look at it from the point of view of what the PTO (Director) is authorized to do. Under Sections 303(a) and 304, the Director is authorized to order a reexamination based on (i) a request filed under Section 302, which MUST be on the basis of prior art, or (ii) “patents and publications” discovered by the Director. Although the statutes don’t expressly prohibit a request based only on 101 (or 112, for that matter), the Director is simply not authorized to order a re-exam based on such a request. Nor may he order one “sua sponte” based on a 101 issue. I think snake is right that the substantial new question of patentability must be based on art. Whether or not it’s proper to raise additional issues in a request is another matter I suppose. I raised a few indefiniteness issues in the last request I did, but only as an aside. The request was granted, but the 112 issues were not mentioned by the PTO.
snake,
To base your view on the MPEP is in error – the MPEP does not carry the force of law and can be changed rather quickly. Further, you only quote for the Inter Partes Re-exam. No such limitation appears in the MPEP for Ex Partes Re-exam. I am not certain that your view is in the correct light.
The Law (35 USC) is quiet on this matter.
As I indicated, the only link required is In re Swanson. Once any existing art is cited “in a new light”, re-exam for any substantial issue of patentability is allowed by Law:
35 U.S.C. 302 Request for Reexamination.
Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301 of this title.
As mentioned, in 35 USC, this “basis of any prior art” is not defined to exclude 101 issues.
In reviewing the Rules (37 CFR), I do find the following, which leaves an incomplete picture (there may be validity to your points in this shade):
§ 1.552 Scope of reexamination in ex parte reexamination proceedings.
(c)
Issues other than those indicated in paragraphs
(a) and (b) of this section will not be resolved in a reexamination proceeding. If such issues are raised by the patent owner or third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may consider the advisability of filing a reissue application to have such issues considered and resolved.
Section (a) deals with 112 requirements. I do not know what force these “issues raised by the examiner” may have, although once in re-exam, new grounds of rejection are permissable – at least in theory opening the door to the Bilski sledgehammer. It seems the rules open a door that the method of closing is not covered. Perhaps there are those more seasoned in this area that can shed further light on this subject.
Babel, I think not, but am open to other points of view. Suppose a standards setting body meets in June each year, and publishes its annual List of Definitions soon afterwards. Suppose a patent application filed in the spring of 2007 refers in its Example 1 to Standard AA-xxxx. Applicant “meant” the 2006 List (of course). After filing the app, the 2007 List publishes some updating amendments, including one to Standard AA-xxxx. I don’t see how you can reasonably assert that, in the patent application, the meaning of AA-xxxx is the meaning to be found in the 2007 List. Same logic for dictionaries, as far as I can see.
New Light,
see MPEP 2617
Substantial new questions of patentability must be based on prior art patents or printed publications. Other matters, such as public use or sale, inventorship, 35 U.S.C. 101, 35 U.S.C. 112, fraud, etc., will not be considered when making the determination on the request and should not be presented in the request.
The most frustrating aspect of the entire saga is the continued refusal by anyone involved to admit the extent that developing 101 precedent is guided by policy objectives. Pretending that the developing case law does not represent an express departure from prior precedent is bad enough, but pretending that it is actually a logical development therefrom is absurd.
I will not pretend to have enough knowledge to opine on the need and efficacy of utilizing 101 rejections to achieve policy objectives, but it is frustrating and insulting to practitioners to have precedent be developed in this manner. If there is not adequate art to enter appropriate 103 rejections, and this is the best solution that can be found, so be it. If it is impossible to maintain skilled enough Examiners who are able to decipher an application and determine whether it meets 112, so be it. But by creating meaningless distinctions in order to uphold policy objectives, and then cloaking these objectives with non-sensical and arbitrary rules, well, is it any surprise so many practictioners are frustrated?
The answer, however, may not be to argue with the absurdity of these arbitrary rules. Realizing that these rules are indeed policy based, it could well be that only policy arguments will have any effect in this sphere. Unfortunately, a majority of practitioners who are well equipped to point out the logical discrepancies and inconsistencies in developing precedent have no relevant experience with such policy arguments and, just as importantly, no clout with those who do.
“Well, you can’t be sure in this witch-hunting era we live in, but I don’t see why it would be. Imagine if I wrote a chapter of a book and was prosecuting a patent application, would I have to point out to the examiner that I was the author of that book? I don’t see why I would.”
You would if you wrote that chapter after filing the application! That’s the sequence of events I understood from the original posting. The fact that the “evidence” was created by the applicant after the filing, and therefore likely to be self-serving, is highly relevant, it seems to me, and would likely be of interest to an Examiner. But what do I know?
west coast:
Did those decisions involve a wikipedia entry that was a prior art reference and not just evidence in support of an official notice?
Night, yes I do see the problem. But when the courts elevate “secondary factors” to the level that it decides cases, how can you blame junior Examiners for not understanding the problem of hindsight bias. When the EPO started up, in 1978, with Examiners arriving from all over Europe, each from a different national patent Office, management needed an approach to obviousness that would be fair to Applicants, and would immediately deliver consistent results, regardless who was examining any particular application. The members of the Boards of Appeal, while waiting for the first appeal cases to come through, worked out the EPO Problem and Solution Approach (the best invention in the history of patent law) which excludes hindsight inherently. Shame nobody outside EPO circles, (and not even all within them), bothers to try to understand EPO-PSA, because it is ideal for imposing discipline on unruly, young and headstrong, over-confident and under-trained USPTO Examiners, and prevents them using hindsight. For the life of me, I don’t understand why EPO-PSA isn’t by now universal. It’s unassailable at the EPO, and nobody there complains about it, neither the Applicant/Owner, nor the Opponent.
Max
Aren’t you scrambling prior art references with references such as dictionaries used to define the terms of the spec/claims and, hence, the scope.
I would be shocked if EPO has a cut-off date on the publication dates of dictionaries that can be used to define terms.
If my application is filed in 2007 and not examined until 2009, isn’t a dictionary published in 2008 still a good reference for defining terms?
In re Warmerdam 3 F.3d 1354, 31 USPQ2d 1754 (Fed. Cir. 1994).
Claim 5. A machine having a memory which contains data representing a bubble hierarchy generated by the method of any of Claims 1 through 4.
As stated by the Federal Circuit, “[c]laim 5 is for a machine, and is clearly patentable subject matter.”
FN5 reads “This notion is sometimes phrased in terms of requiring a transformation or reduction of ‘subject matter.’ In Schrader, we determined that the phrase ‘subject matter’ is not limited to tangible articles or objects, but includes intangible subject matter, such as data or signals, representative of or constituting physical activity or objects. Id. at 295, 30 USPQ2d at 1459 n.12.”
>> was written after the date of the claim, then >>we will take it with such a large dose of salt >>that it is, to all intents and purposes, >>probatively useless for telling us anything that
But, you see, here in the U.S.A. what the examiners do —just read the posts on this blog–is figure out what the invention is and then think backwards of what they could combine to make it and then generate arguments why it would be obvious. They have not been trained to understand hindsight and even trying to discuss it with them —just read this blog–is impossible.
So, you get an an unintended result of this hindsight driven practice of the examiners also not understanding not to use current resources, but to use resources contemperaneous with the invention. It is just ridiculous.
Just read this blog and outline the thought process that examiners use to argue that something is obvious.
snake,
I believe that you are mistaken – re-exam exists for any question of patentability including 101.
In re Swanson is key.
You may be thinking of:
(B) Prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103;
However, the key parts involved are
(C) A substantial new question of patentability must be present for reexamination to be ordered;
(35 U.S.C. 303(a)) “…with or without consideration of other patents or printed publications.”
and
(A) Anyone can request reexamination at any time during the period of enforceability of the patent;
Clearly, with the Law being rewritten regarding section 101, a substantial question of patentability is present. Thus, combined with the In re Swanson doctrine, ANY prior art serves as a proxy to reexamination for almost ALL patents in the computer realm. Any art of record will do, especially since it is inconceivable that the Office has applied the art in the Bilski sledgehammer mode.
Or to use another analogy, the china shop door is opened by the key of any art (In re Swanson). Once the door is open, the Bull of In re Bilski is let loose.
At this rate, nothing survives in the china shop.
>>”… does not mean he had to disclose that he >>wrote it ….”
>Are you serious?
>Posted by: BigGuy | Feb 02, 2009 at 10:12 AM
Well, you can’t be sure in this witch-hunting era we live in, but I don’t see why it would be. Imagine if I wrote a chapter of a book and was prosecuting a patent application, would I have to point out to the examiner that I was the author of that book? I don’t see why I would.
Does the examiner make an inquiry into who wrote the wiki article before making a decision or does the examiner use the wiki article based on it being from wiki? The problem is that the examiner shouldn’t be using wiki.
I’m not following this. On mainland Europe, if it was written before the priority date of the claim, then it isn’t hindsight-tainted, and therefore deserves weight. But, if it (eg an Affidavit, or a Google page) was written after the date of the claim, then we will take it with such a large dose of salt that it is, to all intents and purposes, probatively useless for telling us anything that we can rely on, about the state of the art prior to the date of the claim.
New Light,
You can’t request re-exam for 101 issues.
MM, as for the “express” definition of inferencer, there is no requirement under US law for “express definitions.” As long as one of skill in the art would understand what was meant in the app.
Finally, the fact that the board is including wikipedia references in an opinion is very troubling to say the least.
“… does not mean he had to disclose that he wrote it ….”
Are you serious?
——————————
I estimate that there is a 7000% chance that that is inequitable conduct.
Posted by: 2600examiner | Feb 01, 2009 at 11:58 PM
Actually, not. If he believed what he wrote in wiki was true and he didn’t misrepresent that he wrote it (does not mean he had to disclose that he wrote it), then it was not inequitable conduct.
Imasge if an expert told you to look in his treatise. Is that inequitable conduct? That is the problem with using wiki.
“I know of a case where the applicant wanted to argue that ‘X’ was a recognised term of art. The applicant amended the relevant Wikipedia entry, and then pointed the examiner to it. “See? It’s a term of art! It’s in Wikipedia”.
The application was accepted.”
——————————
I estimate that there is a 7000% chance that that is inequitable conduct.
I do not understand why transforming electrons in a computer is different from transforming a traditional apparatus.
The only reason I can come up with is that it makes the test meaningless because under this interpretation everything would pass the test. The problem with that though is that the line seems to be being drawn completely arbitrarily.
I know of a case where the applicant wanted to argue that ‘X’ was a recognised term of art. The applicant amended the relevant Wikipedia entry, and then pointed the examiner to it. “See? It’s a term of art! It’s in Wikipedia”.
The application was accepted.
You know its polite to actually post a link.
link to houstonlawreview.org
“Assault on the Citadel: Judge Rich and Computer-related Inventions” Odd, Samuael, A., Assault on the Citadel: Judge Rich and Computer-related Inventions, (Houston Law Review 2002). This paper equates Benson to Winterbottom and the battle to allow computer-related inventions analogous to the assault on privity.
You can use this article as a blueprint for the case law that is being reversed by the PTO and the Fed. Cir.
When I reviewed the system claims, the “structure” appears to be just software. These should have been rejected under 101 because the claims were directed toward “software per se.”
“That a process may be patentable, irrespective of the particular form of the instrumentalities used cannot be disputed. If one of the steps of a process be that a certain substance is to be reduced to a powder, it may not be at all material what instrument or machinery is used to effect that object, whether a hammer, a pestle and mortar or a mill. Either may be pointed out; but if the patent is not confined to that particular tool or machine, the general process being the same. A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suitable to perform the process may or may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain things be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence.” Cochrane v. Deener, 94 U.S. 780, 785-6 (1876).
Information takes space and energy to transform. A sort transforms the information as is clear from the fact that patents were issued to card sorting machines. Why should we say that a sort on data in a computer memory is not transformative, but that a sort of cards is transformative?
The argument that the functional claims in claim 9 are too broad and thus not enabled is contradicted by the following very well known case.
In re Tarczy-Hornoch, 397 F.2d 856 (CCPA 1968). Judge Rich argues that it does not make sense to not be able to claim the function of a single machine when one can claim a process as a process is just the function of multiple machines.
Judge Rich wrote, “We have observed with regret that the briefs filed by the Solicitor General for Acting Commissioner Parker in Parker v. Flook, … badly, and with a seeming sense of purpose, confuse the statutory-categories requirement of § 101 … “ In re Bergy 596 F.2d 952, 962 (CCPA 1979).
Mooney must have forgotten his Ritalin again. I always know, because he goes and gets metal rods stuck in the strangest places. We can’t seem to kick the smile off of his face thereafter.
6,
Thx for the Alt Law resource.
Don’t worry, I’m a patient man we can wait for the day the CAFC sees this. BPAI is throwing it around left and right. Certainly one app has too much money on his hands.
badda bing
link to altlaw.org
link to altlaw.org
Babel Boy,
Thx.
West CG
I find only one case, an open-source copyright case. Jacobsen v. Katzer, 535 F.3d 1373 (Fed. Cir., 2008)
The CAFC does not cite a Wiki article, but rather it cites an amicus brief filed by the Wiki Foundation:
“The Wikimedia Foundation, another of the amici curiae, estimates that the Wikipedia website has more than 75,000 active contributors working on some 9,000,000 articles in more than 250 languages.”
It is at least reassuring to know that the CAFC has not yet stooped to the sloth of the BPAI and examiners such as IQ=6 in denying patent rights to applicants because it’s easier for them to key in a search term on Wiki than get off their buttts and find a proper reference.
6,
“Show us one from the CAFC. Then I’ll show you one where the CAFC itself uses a wiki to define something. Sorry WCG, just because some ol’ time religion courts have held your view doesn’t mean all of them will. Those guys will come around soon enough. Two years max.”
Do you have access to a case law database to the CAFC so that you could query for the term “wikipedia”? If so, please provide us with the appeal numbers. Sorry, I’m a solo practitioner without the luxury of having a case law database affordably accesible.
If not you, any takers? Law students? Law professors? Anybody else on whom Westlaw slathers free accessibility?
On a totally OT topic, why does cable TV suck so much? It has OVER 100 CHANNELS.
“A text reference has a known author that cannot be altered after it is published and has a fixed reference date of publication. Wiki is just an amorphous glob of blog-goo. ”
So all those dated anon publications on IBM’s site are now inadmissible? No author 🙁
Since you went through all that trouble I’ll tell you one last time: you can check the date of any given wiki page anytime you like.
Waste your apps money all you like. Be sure to post serials so I can have some lulz at your additional expense. I’m already having them on your dime right now as a matter of fact.
Show us one from the CAFC. Then I’ll show you one where the CAFC itself uses a wiki to define something. Sorry WCG, just because some ol’ time religion courts have held your view doesn’t mean all of them will. Those guys will come around soon enough. Two years max.
When I first raised this Wiki issue days ago, I pointed out that Ted Kennedy and Robt. Byrd both had their Wiki entries modified by anonymous hooligans to read the senators are dead.
Here’s a clip from WaPO Jan20.09 quoting the false entry for Kennedy.
“Edward Moore ‘Ted’ Kennedy (born February 22, 1932- January 20, 2009) was the senior United States Senator from Massachusetts,” began the erroneous entry, a version of which can be seen here. It went on to report, “Kennedy suffered a seizure at a luncheon following the Barack Obama Presidential inauguration on January 20, 2009. He was removed in a wheelchair, and died shortly after.”
Even Wiki admits that it is unreliable — WaPo continuing…
“As Wikipedia itself acknowledges, “Allowing anyone to edit Wikipedia means that it is more easily vandalized or susceptible to unchecked information, which requires removal.” In one well-publicized case, the Wikipedia biography of journalist John Seigenthaler was edited to suggest he was complicit in the assassinations of both John F. Kennedy and Robert Kennedy. While Kennedy and Byrd’s entries were fixed within minutes, Seigenthaler’s was wrong for months.”
If you need any more evidence than that of the unreliability and inadmissibility of Wiki, you are brain dead.
A text reference has a known author that cannot be altered after it is published and has a fixed reference date of publication. Wiki is just an amorphous glob of blog-goo.
Anyone who would seriously argue that Wiki is an authoritative reference sufficient for denying one his patent rights is working at a grade-school level understanding of legal procedure.
West Coast Guy:
>>Is this the holding of Ex parte Atkins:
>>a claim of a mere conversion of data does not >>a Bilski transformation make?
That is what I think the holding is. They do seem to be aimed at all software patents.
6, SF, and Malcolm,
Here are some links in which the courts have shot down the use of Wikipedia for judicial notice:
link to government.zdnet.com
link to arstechnica.com
link to law.marquette.edu
link to papers.ssrn.com
Best of luck to Atkins on his appeal.
6,
“Ok, so now all NPL academic publications are subject to hearsay review. Guys, just let WCG go figure this one out on his own. He’s a big boy. Have fun WCG.”
No, not at all. I would consider them as self-authenticting:
link to en.wikipedia.org
(Oops, there I go again citing Wikipedia again for the sake of blog discussion. LOL, 6).
Also, please take note of my previous comment to SF saying that “I have no problem of examiners using Wikipedia during prosecution. The give and take between the applicant and examiner can flesh out the reliability and trace the previous edits.”
It is simply wrong for a court or BPAI to take judicial notice sua sponte of Wikipedia. A party raising this issue on appeal should easily prevail while simultaneously affording the CAFC an opportunity to slap the BPAI for the gross and improper usage of a source that CAN BE reasonably questioned.
“Then, such source CAN BE reasonably questioned and the BPAI should refrain from citing to it and/or taking judicial notice of it.”
Ok, so now all NPL academic publications are subject to hearsay review. Guys, just let WCG go figure this one out on his own. He’s a big boy. Have fun WCG.
“I’ve perused them before. And I see no reason why a wiki is an exception to your exception. As I have told you already, you may review when changes were made at any time.”
A learned treatise must be sufficiently authoritiative in its field to be admissible as evidence in a court. Generally, an expert witness (professors, experts, etc.) must state that he relies on such a learned treatise. Hard core researchers don’t rely on Wikipedia because its almost completely out of date for their work.
Using wikipedia for proving the truth is evidence of the BPAI’s sloth. If it is so well known, then would it be so much more difficult to cite a technical journal or book by IEEE? I can accept that I may be wrong, but if you want to be convincing, use the best evidence you can find. On the flip side, when I want to convince the Examiner that his interpretation is egregious, I cite to the IEEE 100 and not wikipedia.
SF,
I have no problem of examiners using Wikipedia during prosecution. The give and take between the applicant and examiner can flesh out the reliability and trace the previous edits.
The problem I have is a court (or adjudicative body) taking judicial notice of Wikipedia and citing it for support of the court’s or body’s opinion. I would raise it as an error of law on appeal.
“The issue I have is that the Board is citing a January 2009 publication (wikipedia), which is not a publication at the time the invention was made and thus can hardly be considered relevant to the meaning of a term at the time the invention was made. I’d appeal on that basis.”
I agree and would assign it as another error on appeal.