Patentlyo Bits and Bytes by Anthony McCain

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About Anthony McCain

Anthony McCain is a law student at Mizzou where he is focusing on intellectual property; He has a background in mechanical engineering.

53 thoughts on “Patentlyo Bits and Bytes by Anthony McCain

  1. 5

    Be sure to catch NWPA’s article on not calling software patents software patents. I’m sure all the executives of the world will magically stop calling them that as long as he doesn’t want them to.

    link to

    1. 5.1

      6, the articles written by Goetz, not by Night Writer.

      Also, it clearly argues that software is at the heart of many inventions today, for example, in improving cars. The article does not advocate using computers to run software where the invention really is in a business method. In this, Mr. Goetz and I are on the same page and quite a bit apart from Night Writer who makes no such distinctions whatsoever, no matter how many times we have discussed this very issue.

      It is quite clear to me that advocates of patenting business methods set up a strawman such as the use of software to do useful work like driving cars as if software in that context were controversial at all. Not a single person that I know of is advocating a position that one cannot patent improved machines and processes where the hearts of the improvements is in software. But advocates of patenting business methods set this strawman up and then knock it down as if that justifies using computers to perform calculations without more, without applying those calculations to do anything useful except maybe to calculate an improved price.

      All I can say is that we have to be aware of these folks that are like used car salesman: bait and switch.

      1. 5.1.1

        LOL – another (of the same) false position advocated by Ned.

        Numbers alone? Let’s talk encryption.
        Use? Let’s talk process. Let’s talk 35 USC 100(b).
        Business Methods? Let’s talk about a whole host of points that you never want to. Points like business methods throughout the history of the USPTO, like 3, the new 4 is not 5, like why did Congress create items for particular subsets of business methods, if as you claim they never agreed to them in the first place.

        This Merry Go Round of yours Ned has been ridden many times before/

      2. 5.1.2

        the use of software to do useful work like driving cars


        “wherein said computer determines that it’s time to turn.”

        Sooper dooper techno stuff! Wowee zowee! Nobody could have predicted.

      3. 5.1.3

        Not a single person that I know of is advocating a position that one cannot patent improved machines and processes where the hearts of the improvements is in software

        It would depend very much on the claim but most such claims are just as junky as your typical B-claim, Ned.

        Maybe you are using some special definitions in your statement? If so, you should learn to state those special definitions expressly when you go down this path because, on its face, your statement here is false.

      4. 5.1.4

        “6, the articles written by Goetz, not by Night Writer.”

        Oh I’m sorry, they were both so concerned with the same sub-topics related to software patenting that I must have mixed them up for the same person!

      5. 5.1.5

        “In this, Mr. Goetz and I are on the same page and quite a bit apart from Night Writer who makes no such distinctions whatsoever, no matter how many times we have discussed this very issue.”

        No, Goetz just doesn’t want to talk about that in public.

    2. 5.2

      article on not calling software patents software patents

      Given the manner in which software is claimed, perhaps Marty should begin referring to software patents as patents on “information-processing logic” as I’ve been doing for quite some time now. It’s a term that’s both accurate and educational.

  2. 4

    Fans of procedure over substance rejoice!

    Unless the CAFC is willing to teach the PTAB how obviousness works in the post-KSR world, Star Envirotech’s junky leak detection patents may live another day.

    The challenger who instituted the IPR proceedings (Redline) waited “too long” to file its “supplemental” expert report and — in spite of submitting the report prior to the deadline — the Board refused to enter the evidence. The result was that the views of the patentee’s “expert” mouthpiece were adopted wholesale and the claims were deemed non-obvious.

    Interestingly, the PTAB’s decision resulted in litigation estoppel attaching to Redline under section 315(2). The scope of that estoppel was successfully challenged in the district court by Redline who presented into evidence a physical machine that they could not have presented as prior art in the IPR proceedings (which are limit prior art to patents and printed publications).

    There is a nice write up on the machine vs. manual estoppel issue here: link to

    Be sure to read the judge’s order (linked in the article) denying the patentee’s motion to dismiss the inequitable conduct motions brought by the defendant (based on prior sale of the machine referred to above).

    Today’s CAFC oral arguments here: link to (2015-1047 Redline Detection, LLC v. Star Envirotech, Inc.) It’s definitely worth a listen as everybody seems “fired up” (pun intended). Low point may be the suggestion by one of the judges that the PTO’s multiple ex parte re-exams imply some sort of improved likelihood of validity. In fact, it’s more likely the opposite is true: the best patents are written and prosecuted by people who care enough about the innovation, the law, and the prior art to get it right the first time.

    1. 4.1

      MM, I listened to the beginning of the oral argument and I thought that not only the court, but the PTAB were extremely PO by the attempt to file an expert report after the decision to institute that was not directed to supplementing anything in the initial filing but which amounted to new evidence and new arguments.

      Shooting oneself in the foot is an American right and privilege, and so are malpractice lawsuits.

      1. 4.1.1

        as is enforcing patent rights, eh?

        (but to follow your own “hero” here, that type of thing is to be denigrated)

      2. 4.1.2

        not directed to supplementing anything in the initial filing but which amounted to new evidence and new arguments

        Obviously “supplemental evidence” is not going to be “old previously filed evidence.” As the defendant pointed out, the penalty for holding back on your filing of supplemental evidence is in the PTAB’s rules: your petition is not granted. Once the petition is granted, however, you have time to file supplemental evidence.

        If there were “new” arguments then those arguments could be waived out of fairness — if they were unfairly prejudicial. But the PTAB threw out everything and that, in my opinion, is absurd given that the PTAB’s procedural rules expressly permit what happened here.

        The CAFC knows the score here. They know this patent is junk and they know why it’s junk. And they know if they just sit on their hands now a junk patent is going to get “re-validated” by the PTAB because the PTAB’s fee-fees were hurt by the delayed (but pre-deadline) submission of the report.

        Did you notice how the patentee basically shouted his “arguments” into the microphone? They know the deal. They’ve been plugging the leaks in their boat non-stop for years now.

  3. 3

    I am working on an application right now that is national stage from europe. It is almost entirely ‘use’ claims. The attorney responsible for the national stage application apparently didn’t know that use claims weren’t statutory!?

    Will OED ever pursue this attorney for malpractice? Nah, I just have to pick up the pieces and try to figure out what the applicant meant to claim. This attorney makes twice the amount of money I do and I can’t even find a job in the field.

    It’s problems like this that all add up to create a broken patent system. The PTO is captured by those lucky enough to get into the ‘club’ during the 80’s and they are more interested in protecting their friends at big patent law firms and corporations than they are actually advancing innovation.

    1. 3.1

      Most of our clients have us do little or no processing for the claims for national stage applications. We just remove the multiple dependencies and file the case. We handle any problems with the claims in prosecution.

      In fact, one might argue that’s the better procedure, as the Examiner is more likely to review changes to the claims (e.g., for new matter issues) at a later stage of prosecution than if the claims land on his or her desk already changed.

      I can’t figure out how someone filing the claims as filed in Europe means that the US has a broken patent system or how this affects innovation.

      1. 3.1.1

        I second PatentBob’s remarks.

        Use claims! They are in plain English, aren’t they? They might not be “statutory” but surely it is immediately evident what in substance is their subject matter, isn’t it? Can’t imagine our commenter 6 having any difficulty giving them the full treatment.


          They might not be “statutory” but surely it is immediately evident what in substance is their subject matter, isn’t it?

          Of course such claims don’t cover “in substance” a method of treatment of humans by therapy, of course, since that subject matter is explicitly excluded by law in the EP.

          Is that not “immediately evident”?

          Just ribbin’ ya, MD.


            MM I’m perhaps not clever enough to even know when I’m being given a “ribbin'”, but never mind. When the contribution to the art is what Europe calls a “Second Medical Use” for a molecule, the EPC prohibition on patents for methods of treating the human or animal body by therapy constrains what claim wordings are “statutory”. I was just surmising that an Examiner at the USPTO can get past the form of the claim, to see what the contribution to the art is, then search and examine accordingly. If not, that is a sad reflection on the capabilities of Examiners at the USPTO (or else the constraints under which they have to operate).

            On another matter, I too dislike the default setting below the Comment Box. By now though, I remember to switch it to “Don’t subscribe”. It doesn’t take long but you do have to remember it, unless you use a junk email address.


              It doesn’t take long but you do have to remember it, unless you use a junk email address.

              Or someone else’s email address … MOO HOO HAW HAW HAW!

      2. 3.1.2

        Not saying anything about how much money I should be making or whether i CAN deal with those claims on the merits.

        All i am saying is its another example of GIGO.

        PTO refuses to deal with the GI side of the issue


          It is NOT the purview of the Office to “deal” with that side, Topce.

          You enjoy the fallacy that the GI part is somehow “difficult.” It is NOT. That part is easy to dispense with.

          Deal with that which you have actual control over – the examination on the merits.

          THAT is what is shamefully so often lacking.

      3. 3.1.3

        Because “use claims” are expressly prohibited by law as much as multiple dependencies are.

        Now wasted your client’s money because all those claims need to be cancelled. Case is more likely to be appealed or go to
        RCE now since case will need to be re-searched during final action once claims are fixed. All losses that could have been avoided.


          You think that your first search shouldn’t take into account the obvious informality of wrong type of claim…?

          And you say you are not part of the problem…?

          Milk that RCE gravy train some more and tell me why I scoff at you…


            Huh? it should and it did.

            But lord knows what they will come back with on amendment.


              If in fact “it should and it did” then your immediate comment here is simply moot and inappropriate.

              You are then falling back to a logically fallacious “but the future might be….”

              Check yourself friend – you are not thinking before you are spouting.

    2. 3.2

      A colleague of mine just migrated from private practice to the PTO. Whenever he hears Examiners whine about how private patent prosecutors have it easy and that the Examiners could replaces private practitioners his response is simple: “No you can’t. Those people are machines, and we’re government employees.”

      By all means hang out a shingle if you think you can do a better job of finding, minding, and grinding on the outside. Otherwise, focus on moving up the ranks of the PTO, which can get really f’ing lucrative once you don’t have to live in DC.

      1. 3.2.1

        Never said that. Very happy with my cushy job.

        That has more to do with the fact that the market is saturated with poor patent quality pumping robots than anything though.

        So why do these robots exist and make twice my salary if they cant even edit claims to make them satutory?


          Again – no, that is what you wish to divert attention to.

          There is a very real difference between that and the work product coming out of the Office – for which you – both the Royal you and the personal you – DO have control over.

          Focus on the part that you have control over. STOP trying to divert attention to the other part.


            Strawman argument.

            You are assuming I personally do not do that. I cannot speak for other examiners.

            Even if every examiner examined the case on the merits to the best extent possible, i would hypothesize the patent system would still be broken because the examining core is not the problem. We are a minor greivance to entitled attorneys.

            The entitled attorneys and upper managment who they have bought and paid for are they problem.


              Not a strawman at all.

              And the error remains yours. Nowhere did I even allude that you cannot speak for like-diligent examiners. But YOU make the mistake to assume that ALL examiners are like-diligent. And clearly, you have no basis for such an assumption.

              You are the one trying to use an excuse for not doing your** job. I fully “get” that you want to pass the buck – and the blame – for evident widespread poor examination on the merits. You just don’t get to do that.

              The GI part simply is NOT that all-encompassing and IS rather easy to take care of with the t001s at your disposal.

              ** – here the Royal “Your.”

  4. 2

    Hey, 6, regarding the link post on business method patents, appears that Oracle is still obtaining about 90% allowance rate for its business method patents. Can you explain that?

    1. 2.1

      The data is meaningless because there are no absolute measurements and because it excludes pending patents. If Oracle keeps alive even the most hopeless applications, a handful of allowances would inflate this metric.

  5. 1

    Also the independent folks that were investigating the telework program of the USPTO decided we were just fine. And also that the USPTO should put some stipulations on teleworking.

    1. 1.1

      6, I just saw a report on the IRS scandal, and part of the problem identified was IRS employees that work from home and were basically unsupervised.

      This seems to be a pandemic in today’s U. S. government, and lack of supervision seems to be causing problems.

      Perhaps it is time for the government to rethink working from home.

      1. 1.1.1

        From my admittedly anecdotal experience, I’d say that the examiners that work form home work as hard as the ones at the PTO.

        The way to fix any problems at the PTO is better defining the goals of what you want the examiners to get done–not to torment them. They are as whole a well-educated good group of people. Give them the right goals and tools and they will get it done.


          As an examiner, amen!

          The problem at the PTO starts at the top. The agency has no mission and is completely reactive. We as examiners get conflicting directives.

          Do they want to reduce the backlog, or improve quality? Do they want to make examiners search based on the spec or do they want attorneys to draft better claims so as to avoid RCEs?

          They don’t even know what they mean by patent quality. Does poor patent quality mean that the examiner is examining the case “poorly”, i.e. not giving an allowance to the “customer” or does poor patent quality mean improper allowances not based on adequate search and consideration?

          I’m not holding my breath at my superiors having answers to such questions. To those who blame me and my fellow examiners (*cough* anon), we are not the problem. We are doing the best we can with dysfunctional and out of touch upper management.


            Quality of the product is mission number 1 and to the extent the bosses do not know this, and do not communicate this to the troops, the bosses fail.

            But the PTO has no metrics in place to measure patent quality. So can produce mountains of bad patents and still give themselves bonuses for jobs well done.

            There is a reason panel discussion of most of the recent directors going back to Mossinghoff. It was laughable to listen to these folks tell us what they thought their job was – reducing the backlog in the case of Mossinghoff. Wow!

            The lack of focus on job number one got worse when they created the advisory board in 1999 composed entirely of so-called “clients,” who were exclusively patent applicants. What do patent applicants care about? Patent quality?

            The patent quality mission has to be made clear to every examiner. Metrics have to be put in place to measure patent quality. Bonuses have to be tied to performance in terms of issuing valid patents.

            A first step by the new director with the beast the seek legislation to repeal the advisory board order changes composition to include industries that are adversely affected by poor quality patents.


              a. production is mission 1 under the pap and they’d need to negotiate with popa to change that.

              b. there are metrics in place to measure patent quality, or rather, examination quality. It’s findings of clear error and review of work prior to signing. It’s just that those “metrics” are quite wide. So wide that they lead many people (esp old people) into thinking things like sending low-quality actions is mandatory etc. simply because we “could” send the action.


              Tie bonuses to issuing valid patents and you’ll just get a lot more patents. At least the current system doesn’t explicitly tilt the scale.


                Alexander, not if every art unit’s patents were judged, on a random basis by senior who were asked to review the prosecution history and make an independent call and if their assessment were feed back into the money available for bonuses for the unit.

                1. So you want a second set of eyes review, without the quality controls of a second set of eyes?

                2. Anon,

                  In a discussion of feedback loops, your comment that the controller should hit the target on the first try is a non-sequitor.


            To those who blame me and my fellow examiners (*cough* anon), we are not the problem.

            Pay attention my little “I’m just following orders” friend.

            Your job is indeed clear – if you are being told contradictory things, your option is NOT to just sit on your thumbs and do nothing. Or even worse, to do the wrong things. And yes, false prophets like Ned and Malcolm, that includes rubber stamping Accept Accept Accept just as much as it does include rubber stamping Reject Reject Reject – my position as it has always been.

            You have a union, right? You have a conscious, right? You take a paycheck, right?

            Yes, I do get that you alone are not the problem. I have never said so anyway. But you can very well be a part of the problem. You don’t get to do wrong and claim otherwise.


              You are talking to one of the only examiners who issued a case on first action during his probationary year. I try do the right thing within what I have the power to control.

              Of course I am part of the problem. Do you think I like being blamed when I cant change it?


                Nice spin, arse.

                Clearly if you are the exception, then my comment does not apply to you.

                And just as clearly, the veracity of my comment does apply to the “typical” examiner who is not so thoughtful, eh? There ARE plenty – even (especially) ones that often post here that ARE fully a part of the problem.

                Maybe you should think about the comment as how it pertains to reality instead of trying to not see the truth in the comment.


          “The way to fix any problems at the PTO is better defining the goals of what you want the examiners to get done–not to torment them.”

          Exactly correct. Well over half the people working here have never even read the full pap. And even if they did most wouldn’t much understand it since it’s so far different than what people have them doing.


            Well over half the people working here have never even read the full pap.


      2. 1.1.2

        “and lack of supervision seems to be causing problems.”

        Supervision imo causes more problems. At least at the PTO. Though sure, a tiny tad bit of supervision of those working at home is fine.

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