Patentlyo Bits and Bytes by Anthony McCain

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Anthony McCain

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. anthony.mccain@patentlyo.com

77 thoughts on “Patentlyo Bits and Bytes by Anthony McCain

  1. 8

    Thought for the Day: If a patent claim recites “portable” or “mobile” as a key element and the specification doesn’t provide a specific definition of the term that includes examples of objects that fall within the definition and examples which don’t, along with explanations, that patent claim is indefinite. “Easy to move” is meaningless when “easy” and “move” aren’t defined objectively and quantitatively.

    Listening to experts debate the meaning of “portable” or “mobile” after the fact by listening to paid “experts” wave their hands around is a farce. Hence we get to hear attorneys argue that a device is “portable” because (try to believe it) “there was no evidence that the meters were permanently bolted in place.”

    Here’s the deal folks: wireless communication is really, really, really old and wireless communication from different locations is also really, really old. There’s no “innovating” by incorporating that feature into any electric device and that’s been true for many many many many years. Those limitations — without a lot more structural detail — add nothing to the progress of any art and that’s been true for decades.

    When are the wireless Internet computer implementers going to grow up? For how many more years does the system have to put up with this nonsense?

    1. 8.2

      The farce regarding “but our thing is smaller!” continues today in Openwave v. Apple (2015-11-03).

      The junk patentee’s specification states over and over that computer modules are bulky but people don’t want bulk, people don’t want bulk, people don’t want bulk, people don’t want bulk. Now, here’s my invention! Say goodbye to bulky cell phones because you don’t need that bulky computer module anymore in your phone to provide these awesome functionalities (which weren’t new functionalities).

      Now they want to sue Apple because Apple makes iPhones … with “bulky” computer modules that provide those functionalities. Keep your regurgitation bucket handy.

      Also, from listening to a lot of these arguments I’ve reached a disappointing conclusion: Judge Moore’s shrillness and stubborness is directly related to her ignorance of the subject matter she’s discussing. It’s pretty sad.

    2. 8.3

      What part of a claim is not a “key element”…?

      Let’s watch that surreptitious insertion of “Point of Novelty.”

      Further, what in your post is not (plainly) covered by the notion of PHOS I T A that you seem uncomfortable with to the extent that you see the “need” to invent some non-law type of “extra” definition and example provision “requirements”…?

      The “deal”, “folks,” is that you are (once again) on a lark and not in accord with what the law IS.

      If you don’t like it, contact your congressman. But please; do not post as if the law is something other than what it IS.

      1. 8.3.1

        “anon”: What part of a claim is not a “key element”…?

        Great question — also easy to answer: generally speaking, the elements that are admittedly in the prior art and that aren’t relied on to distinguish the claim from the prior art are not “key.”

        Maybe you haven’t noticed this — or more likely you wish not to discuss it — but applicants in certain art units have a tendency to load their claims up with surplusage text that does not describe the innovation but rather describes a context that isn’t meaningfully “limiting” unless, perhaps, you were born yesterday and born in the back of a deep cave from which you are afraid to emerge. Now ask me why those applicants engage in this behavior. I’m sure it’s all very confusing for you.

        1. 8.3.1.1

          MM, anon surely knows that patent prosecution courses teach this “trick” of festooning a claim with a plethora of conventional elements in order to hide the ball.

          1. 8.3.1.1.1

            Trick…?

            Festooning…?

            Leave behind your falsehoods, my friend- the no mere aggregation aspect of “claim as a whole” already protects against your “under the bed monsters”

        2. 8.3.1.2

          Also, it presents a 112 problem:

          “The rationale of an old combination rejection is stated in MPEP 706.03(j) as follows: “The fact that an applicant has improved one element of a combination which may be per se patentable does not entitle him to a claim to the improved element in combination with old elements where the elements perform no new function in the combination.” This statement has the support of many cases. See, e. g., Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 58 S.Ct. 662, 82 L.Ed. 1008 (1938). Why an applicant should not be so entitled is not clear. Many cases have said that the combination claim reciting only one new element with no new result is overclaiming or claiming more than the applicant invented. Such statements are indeed puzzling in view of the fact that the addition of elements to a claim narrows its scope and thereby creates a lesser monopoly. Others have said the combination is not new, or is obvious, if no new coaction or result is obtained. This too is unsound, since it is not the result which is to be patented but the recited machine, composition, etc. If the prior art does not show or suggest the improved element itself, it defies logical reasoning to say that the same prior art suggests the use of that improved element in a combination.

          1403
          *1403 Our primary concern, however, is not with the soundness of the underlying policy, if any, for old combination rejections; it is with whether such rejections are proper under the present statute. The Patent Office Board of Appeals has recognized this problem in Ex parte Des Granges, 864 O.G. 712, 162 USPQ 379 (1968). There the board found that there was a statutory basis for the rejection in that portion of section 112 which requires that the claims specifically point out and distinctly claim the invention. We agree. We think that that statutory language is the only proper basis for an old combination rejection, and in applying the rejection that language determines what an applicant has a right and an obligation to do.

          Applying the section 112 language to claims 19-21, we do not see, and the examiner has not stated, how any of the claims would be made more particular or distinct by eliminating the plotting machine limitation from the body of the claim.”

          Application of Bernhart, 417 F. 2d 1395, 1402-1403 – Court of Customs and Patent Appeals 1969

          link to scholar.google.com

        3. 8.3.1.3

          Malcolm,

          Your post at 8.3.1 misses for several reasons.

          Maybe you haven’t noticed this — or more likely you wish not to discuss it — but applicants in certain art units have a tendency to load their claims up with surplusage text that does not describe the innovation but rather describes a context that isn’t meaningfully “limiting” unless, perhaps, you were born yesterday and born in the back of a deep cave from which you are afraid to emerge.

          Your usual hooey.

          All I see here is your own surplusage as your attempt to inflate the “no mere aggregation” aspect of “claim as a whole” into your typical anti-software rant.

          It just does not reach.

          For one, the very item that you volunteered an admission against interest upon: knowing and understanding the law pertaining to the exception to the judicial doctrine of printed matter.

          There is NO “born yesterday” or “in the back of a deep cave” to recognize the reality that the manufacture and machine component of software very much (in reality, at least the reality that the rest of us inhabit) changes a machine.

          Your attempted attribution of things like “afraid to emerge” or “very confusing” is nothing but meaningless ad hominem, for which, you have NO base whatsoever to inject into the conversation.

          This is a clear difference in the use of ad hominem between you and I. And a major reason why your posts are nothing but FAIL.

          Now ask me why those applicants engage in this behavior. I’m sure it’s all very confusing for you.

  2. 7

    The “everything is abstract” crowd should take a few minutes to listen to the entertaining oral arguments today (Nov 2 2015) in Morsa v. Facebook (regular readers will remember the reliably desperate antics of Morsa and his attorneys from discussions of previous beatdowns).

    Please keep clinging to DDR Holdings, all you “do it on a computer” “innovators”! What a shiny and enticing life raft Judge Chen created. Let’s fill it up with anvils and see what happens!

    Morsa’s strategy here is to keep discussing the alleged lack of “pre-emption” of his junk claims as if “preemption” and “abstraction” are two sides of the same coin. But they’re not. Not at all. Your claim can be the narrowest combination of abstract elements ever written and pre-empt nobody except the one person on earth that you are sueing. That doesn’t change the fact that your claim is just a more detailed pile of abstract junk.

    The junk claims at issue here were directed to a combination of presenting directed ads based on geography and (oh my golly goodness!) “bidding”. And oh yes — it’s “on a computer”.

    The Facebook attorney performs the usual compromised job of batting away Newman’s weird line of questions without suggesting that most “do it on a computer” patents (like nearly all of Facebooks’ patents) are irredeemable cr ud.

    Newman: “The computer needs to be programmed, doesn’t it?”
    Attorney: “All computers need to be programmed.”
    Newman: “What would make this non-abstract.”
    Attorney: “It’s hard to answer. Something incredibly concrete.”

    Newman still doesn’t seem to understand (or she pretends not to understand) that claims can fail under multiple prongs of the patent statute.

    The Facebook attorney describes a long detailed hypothetical claim that is no less junky than the claim asserted, it just contains more detail about the various conventional logic steps that could be taken to carry out the geographic targeting and bidding.

    Judge Dyk finally interrupts at around 26:00 to point out that when the innovation described in the application is an ineligible abstraction “on a computer” or “on the Internet” there is no way to “re-write” the claim to satisfy 101 without engaging in the act of inventing patent-worthy subject matter — something that Morsa should have done in the first place if he wanted an enforceable patent. But doing that actually requires doing some hard work and luck.

    Judge Dyk’s teaching moment: “Something can be conventional on the Internet.”
    Morsa’s attorney: “No pre-emption! No pre-emption! No pre-emption!”
    Judge Moore: “Preemption is not the test.”

    Get ready for another Rule 36 affirmance in favor of Facebook.

    1. 7.1

      MM, one has to wonder about who spend their hard earned dollars on wasting everybody’s time on appeals like this. But when one hears Federal Circuit judges like Newman speak up, or Plager in an earlier panel describing that “the idea of an abstract idea is abstract,” one begins understand that many of these judges were educated in the era of State Street Bank, still believe in that case and cannot seem to understand what is wrong with a claim to a business method executed by software on a computer.

    2. 7.2

      Who is this “everything is abstract” crowd?

      I think that you are (purposefully) being obtuse as to the point on the table for discussion as to the unlimited nature of the Supreme Court’s “gift” of the “Gist/Abstract” sword.

      If you don’t like what the Supreme Court actually said (and did), then plainly say so. But it does no one any good to pretend that they did something other than what they did. There is no h0nesty down that path.

      1. 7.2.1

        And who possibly has time to listen to oral arguments? For cases for which you’re not involved and have no reason to listen to?

      2. 7.2.2

        Who is this “everything is abstract” crowd?

        ROTFLMAO

        See above re “pretending to be born yesterday.”

        1. 7.2.2.1

          Erich Spangenberg: “The test announced in Alice is so vague that it could invalidate almost any patent”.

          November 3, 2015

          LOL

          1. 7.2.2.1.1

            Once again Malcolm you failed to recognize just whose logic is in the crosshairs here.

            As I have explained before the big box of electrons protons and neutrons is just a logical extension of the logic that you are trying to use – that is the offshoot of this “Gist/Abstract” sword leading to the “Everything is Abstract” thing that you think you see (but just do not comprehend).

  3. 6

    As of November 2, there’s still no sign of those few missing recordings from the oral arguments of October 9 2015 (some were posted immediately, as for the others ….)

      1. 6.1.1

        people should care about this, why?

        You can learn about the Federal Circuit’s understanding (or lack thereof) of the legal issues in the context of fact scenarios that will otherwise not be described. Why won’t they be described? Because the case will be resolved under Rule 36.

        You can additionally learn quite a bit about the specific and particular views of particular judges on the Federal Circuit.

        All these things are important to litigators.

        You can also get a good idea about the case is going to turn out. That might be incredibly important if you have a direct interest in the outcome of the case, or if you are litigating (or prosecuting) a similar issue.

        Any other questions?

  4. 5

    Re Nocera:

    nobody thinks a university is a patent troll.

    That would depend very much on the patent and the university’s behavior.

    If, for example, a university’s research and teaching program devolved into a sham and it began instead to generate revenue primarly by asserting patents that were (1) acquired or licensed from 3rd parties or (2) conceived of and written by a legal teamfor the purpose of “getting rich” off a hot or soon-to-be-hot technology, then most reasonable people would have no problem at all referring to that university as a tr0ll.

    The rest of Nocera’s article is just whining. Apple didn’t take a license! WARF had to sue Apple! Oh noes!

    It seems that Nocera woke up yesterday and discovered the WARF. News flash: the WARF is not a “little guy.” Not even close. The WARF has its own team of lawyers and they aren’t novices.

    innovation that Apple uses to help speed the processing time of several versions of the iPhone and iPad.

    Wowee zowee! Super impressive stuff! It never would have happened without the geniuses at WARF. I wonder what those claims look like …

    Last week, a jury ruled in WARF’s favor and then ordered Apple to pay some $234 million. Although I hear that WARF is pleased with the outcome, Apple is actually the big winner.

    ROTFLMAO. Seriously? I tell you what. Give me just $100 million dollars — half that amount — and I guaranteee that in one year I’ll come up with a bunch of ideas that will “speed up processing time on some versions of the iPhone”.

    “Trolls are a fantastic narrative for companies that want to get their patents cheaper.”

    Here’s a thought, Nocera: maybe next time around the Patent Loving Community can be a bit more circumspect about the types of patents and the types of people they cheerlead for. Reap the whirlwind.

    And, yes, there’s more to come. There’s also an easy solution that will take care of this “troll” issue for pretty much everybody. Ask me about it sometime.

    1. 5.1

      MM, why to you think WARF was shown the door at Apple given that the patent was eventually held not invalid and infringed?

      1. 5.1.1

        why to you think WARF was shown the door at Apple given that the patent was eventually held not invalid and infringed?

        There’s a number of possibilities.

        1) Apple was mistaken about the invalidity and non-infringement of the patent.

        2) Apple was right about the invalidity and non-infringement and the court got wrong.

        3) WARF’s licensing terms were deemed way out of line given the piddling contribution to the art represented by the patent claims and given the existence of Apple’s independent solution so Apple decided to litigate as a matter of principle

        Here’s the deal: if the fact that some company can “afford to infringe” to the tune of half a billion dollars or more is really bothersome to you, then take a deep breath and consider that the problem really isn’t a problem with “the patent system”. It’s a bigger problem.

        But the “little guys” don’t really want to discuss that bigger problem, of course. On the contrary. The “little guys” lay awake dreaming every night of ways to make that problem worse for everybody else … except themselves, of course.

        Pretending that patent tr0lls don’t exist or ignoring how and why they came to dominate the conversation is a really idi 0tic habit of some genuinely id i0tic people. We’re talking people that are so st00 pit that they are incapable of learning from the immediate past, even when the immediate past is smouldering right under his nose. Nocera is one of those people.

        1. 5.1.1.1

          MM, “licensing terms?” WARF was shown the door. It is my understanding that they never even got to talk to Apple.

          Also, it appears WARF was shown the door on first approach. This does not seem to be a decision by Apple based on any analysis of the patent.

          Perhaps WARF has a reputation?

          But the facts all seem to add up to a showing that Apple was a willful infringer.

          1. 5.1.1.1.1

            WARF was shown the door. It is my understanding that they never even got to talk to Apple.

            I don’t know if they did or didn’t. But the WARF has enough money that they could have easily afforded to sky write their terms above Apple’s offices without noticing a dip in their budget so maybe they didn’t try to hard.

            Also I’m going to go way out on a limb here and take a wild guess that WARF loaded up its infringement contentions against Apple with a bunch of unsupportable junk that was tossed by the Court or deleted by WARF without fanfare. There’s a term for that kind of behavior. Rhymes with “patent coal.”

            I just find it amusing that anybody would use a quarter billion dollar patent victory by the WARF over Apple as an excuse to write a sob story about the woes of all those “little guys” out there wielding their sooper awesome 17 year old patents on “table-based data speculation” (*gag*).

          2. 5.1.1.1.2

            WARF was shown the door. It is my understanding that they never even got to talk to Apple.

            Reminiscent of Research In Motion v. NTP, where everyone decried NTP as the archetypal bad guy that might’ve throttled RIM with its $612MM verdict. But I remember reading somewhere that NTP had initially approached RIM with an offer to license the exact same patents for something like $600,000 – and RIM had refused to negotiate because it didn’t believe in the patent system, or something like that.

            Turns the story on its head, doesn’t it? The vast majority of RIM’s damages were self-inflicted.

      1. 5.2.1

        roflcopter: Your shtick has gone from anti-software patents to pretty firmly anti-patent.

        I’m sure it seems that way to you.

        Interesting.

        Maybe you should run off to your favorite blog and report your “interesting” story to your super serious buddies.

    2. 5.3

      Malcolm’s post shows an amazing LACK of appreciation of the rhetoric of accusing “Tr011.”

      It is paramount that “folks” remember exactly who coined that term – and exactly why they (hint: Big Corp) did so.

      No small irony that such is a ploy of “grifters,” and the main person who uses that term is explicitly oblivious to this fact.

      By the by, anyone notice if the Executive has responded to Ron Katznelson’s attempt to defuse the (obvious) “Tr011” rhetoric yet?

  5. 4

    From the 3-D Printing Propaganda Department comes this bizarre article:

    Assuming that something as complex as printing human organs might actually be within the realm of possibilities, however, doesn’t mean that there aren’t external roadblocks. One of those comes in the form of patent laws

    Horsehockey. US patent law does not prevent anyone from making an artificial organ, nor is there anything in the patent laws that would prevent claiming such an object or process if the applicant could prove its utility and comply with the other terms of the patent act.

    Assuming that something as complex as printing human organs might actually be within the realm of possibilities

    Obviously it depends on the organ but the author seems to be missing a non-too-subtle point: when you 3-D print an object that replaces the functionality of a human organ, that object is not “a human organ”. It’s a 3-D printed artificial organ. Current 3-D technology is light years away from the ability of reproducing an entire organ down to its subcellular details. Those details — which can be kind of important — would be necessary for the organ to be considered “human” in any reasonable sense of the word.

    Current patent law states that “no patent may issue on a claim directed to or encompassing a human organism.”

    See above. Artificial body parts including prosthetic limbs and artificial internal “organs” have been patented for years and are still being patented. The quoted clause is not a roadblock that should worry anyone.

    What should worry people are the reams of 3-D printing junk that the USPTO continues to spew out. Apparently 3-D printing is sooooooo awesome that if the term shows up in a claim, well, it must be patent-worthy! After all, without that rubber stamp pumping out tons of junk patents, nobody will ever develop 3-D printing because super rich people won’t have as much fun gambling on it.

    1. 4.1

      More irony as the difference of “human” is stressed here by the guy who most often messes up on the Human aspect of the patent doctrine of mental steps.

      Too bad the good professor is not interested in that teaching moment.

  6. 2

    ” Why Does The PTAB Still Have A Backlog?”

    Maybe David can tackle another big question: “Why do Applicants Persist in Filing Reams of Junk and Appealing Procedural Issues that Change Nothing About Their Meritless Patent Claims?”

    1. 2.1

      Maybe they are all just grifters or maybe they just don’t give a rip as to what you consider “junk.”

      After all, you are on record here as believing that ALL software patents are de facto “obvious” – which speaks volumes of your lack of understanding of the subject matter.

      1. 2.1.1

        you are on record here as believing that ALL software patents are de facto “obvious”

        Show everyone the quote, you psych0 tic ass h0le.

        1. 2.1.1.1

          Are you trying to say that my post is false?

          Let’s see you (short and direct – like) state that.

          You said it often enough that even though I do not have it book marked, I sure that it can be found relatively easy in the records here.

          Having an “oops” glitch to conveniently cover your arse on this would have to be massive.

          (And funny that, Malcolm, you have tried this same shtick before, swearing at me and trying to deny what you have done: your volunteered admission against interest with the knowledge of controlling law on the exceptions to the judicial doctrine of printed matter when Prof. Crouch (for a short time) tried out the DISQUS system and the archives were temporarily unavailable.

          You kind of went quiet on that when the archives were restored.

          Here’s a hint: learn some new tricks. Even if you get (yet another) pass from the “politeness police.”

    2. 2.2

      MM: Examiners and applicants could focus more on the “merit” of the claims if these other issues could be avoided or more expediently resolved. But as it is, both the examiner and the applicant burn so much time dealing with bad rejections that the examiner doesn’t have enough time to put together a good rejection.

      Consider an examiner who rejects a claim to (A+B) with a combination of a reference showing (A), and the examiner’s gut instinct that B isn’t new or valuable. (“One of ordinary skill in the art would know to apply B to A…”, or “the reference says A+C, and C is completely different from B, but PHOSITA would be motivated to substitute B for C because it would make the invention better,” etc.)

      The examiner and applicant blow through several office actions arguing about whether or not that argument is specious. Then they file a pre-appeal review, and the SPE is asleep at the wheel, so it proceeds to briefing. And four years later, the PTAB rules that the examiner is completely wrong.

      So the examiner has blown 30 hours of examination time arguing that (A+B) is useless, and now the PTAB says they’re wrong. Is the examiner really going to spend a lot of time looking for a reference that shows (B) – or is the examiner just going to allow it over the references of record that don’t show (B)?

      This is the central problem that my article illustrates.

      75% of appeals get resolved in favor of the applicant, because the examiner’s argument is deficient. This is not according to the applicant – this is according to the USPTO: either the PTAB, or two other members of the examiner’s art unit. Why is this being tolerated? This is a colossal waste of time, and a misuse of a board that should be reserved for legitimately close questions.

      1. 2.2.1

        David Stein: 75% of appeals get resolved in favor of the applicant, because the examiner’s argument is deficient.

        75% of appeals get resolved in favor of the applicant at the PTO in ex parte proceedings.

        What happens at the Federal Circuit? What happens in inter partes proceedings?

        This is a colossal waste of time,

        I also think that time is being wasted. But certainly most applicants don’t believe that their time is being wasted or they wouldn’t continue to play the game with such ridiculous tenacity. Sure some applicants complain about their “time” but they’d complain a zillion times harder if the allowance rate dropped to 40% or 50% (which is still higher than what it should be for the typical computer-implemented claim that’s filed these days). Look at the response to IPRs. It drives the same people n utso even when there’s zero evidence of any systematic PTO “delay” or incompetence in those proceedings.

        1. 2.2.1.1

          MM, you’re supporting my central argument, which is: Bad allowances are often the product of inadequate examination, which flows from bad rejections.

          If an application gets rejected repeatedly on spurious grounds that is overturned by the PTAB, allowed after the appeal, and then invalidated at the Federal Circuit – everyone loses. Examination was 100% wrong, and the PTAB had to waste time correcting it. The applicant blew a bunch of money getting a patent that was only legitimately rejected at the Federal Circuit. The defendant blew a bunch of money invalidating a patent that should not have been allowed.

          Case in point: Apple v. Samsung. Patent issued, litigated through damages, and reexamined – resulting in the identification of a serious priority-claim issue that should’ve been caught during the initial examination.

          Apple would certainly have preferred to have had that priority claim issue caught during examination. And I believe that most applicants would gladly accept a patent system with a lower allowance rate where more rejections were objectively supported, because the patents that did issue would be much more likely to withstand scrutiny, and hence more respected. It’s a much more efficient system overall.

          But certainly most applicants don’t believe that their time is being wasted or they wouldn’t continue to play the game with such ridiculous tenacity.

          I don’t understand how you think that applicants make their decisions. In my experience, it goes like this:

          1) At the time of filing, applicants decide whether or not they think they have a viable patent application, based on everything they know. If so, they file it (If not, they don’t file it – why waste money on a fruitless venture?)

          2) When applicants receive an office action, they evaluate its objective merit. If it’s unreasonable, they become “tenacious” by arguing or appealing – and they win 75% of the time. (If it’s unreasonable, they amend or abandon.)

          What is improper in this chain of events?

          It seems like you’re saying that applicants should abandon their applications even if the examiner hasn’t articulated a proper rejection. Why should they?

          I get this argument from examiners with surprising frequency: “Okay, my reference doesn’t teach your point (B) – but I’m sure I can find some reference that shows (B), so you should limit your claims, and then I’ll allow it.” But I’m not willing to amend the claims based on what the examiner thinks is out there. The examiner needs to go find that reference, and then we can talk.

          1. 2.2.1.1.1

            It seems like you’re saying that applicants should abandon their applications even if the examiner hasn’t articulated a proper rejection. Why should they?

            Why? Because the claims are junk that will never be upheld in court or upon a challenge by a third party.

            I’m not willing to amend the claims based on what the examiner thinks is out there.

            Are you willing to do a search yourself and determine whether the Examiner’s inuition is correct or is that also too much to ask?

            At the time of filing, applicants decide whether or not they think they have a viable patent application, based on everything they know. If so, they file it (If not, they don’t file it – why waste money on a fruitless venture?)

            If you end up with a junk patent, it’s not necessarily “fruitless”, is it? That’s especially true if (1) you manage to make a thoughtful re-evaluation of the validity as expensive and time-consuming as possible for your infringement target and (2) if you are allowed to create patentability out of thin air by salting your claims with endless layers of ineligible abstraction.

            The examiner needs to go find that reference The examiner needs to go find that reference, and then we can talk.

            About what? How the use of logic described in that reference “isn’t relevant art” to a computer programmer. Yes, we know how the game is played.

            1. 2.2.1.1.1.1

              Applicants don’t ever file applications that they believe to be “junk.” Those applications don’t get filed.

              Let’s look at this another way. Applicants (who aren’t entitled discounts) pay the USPTO a minimum of $2,560 to examine and allow their application. What value should the examiner be providing for that sum? Shouldn’t we expect examiners to do more than look at the application and say, “this is junk,” before kicking out a rejection? Why should we not expect the examiner to do a proper search, find relevant references, and articulate them in a clear and objectively persuasive rejection?

              If you have such low regard for the standard of examination – i.e., “let’s just give examiners the power to arbitrarily decide which applications to allow, and which to reject, based on their gut instincts” – then why aren’t you campaigning to reduce all of patent law to discretion, and also reduce the examination fee to, like, $100?

              1. 2.2.1.1.1.1.1

                David: Applicants don’t ever file applications that they believe to be “junk.” Those applications don’t get filed.

                Because there are no patent applicants who are just hoping to get rich by exploiting holes in the patent system. Sure. That was true back in 1980, I suppose. But since then? I doubt it.

                That’s not even reaching the issue of all the applicants and attorneys who can’t tell the difference between junk and something that isn’t junk. There’s a lot of people like that out there.

                David: Applicants (who aren’t entitled discounts) pay the USPTO a minimum of $2,560 to examine and allow their application. What value should the examiner be providing for that sum?

                Depends on the complexity of the application and the claims.

                Let’s say your application sails through the PTO.

                Now you take your granted patent to a qualified patent attorney and you ask that patent attorney for a written validity opinion in view of the prior art. “Here’s $2500!” you say to the patent attorney. “I have nothing to tell you other than what’s in the patent. Also I am not paying you a cent more.” What sort of “value” do you expect?

              2. 2.2.1.1.1.1.2

                DS: Why should we not expect the examiner to do a proper search, find relevant references, and articulate them in a clear and objectively persuasive rejection?

                For starters, in nearly every instance most if not at all of the relevant “references” should be provided by the applicant to the Examiner because the applicant is a skilled artisan. The applicant knows where he/she started with. The applicant knows what knowledge the applicant built upon. The applicant knows what previously existng materials the applicant modified and the applicant knows how those modifications were made.

                If the applicant wants to make life easier for the applicant, the applicant can set that information forth with clarity and integrity. The applicant can also explain clearly demonstrate the unexpected results that were obtained by his/her claimed “innovation” and why they were not previously described or expected in the cited art.

                If the applicant does not want to do that, then I have very little sympathy for the applicant.

                As for “relevant art”, I’ve already explained that when the innovation lies in a description of logic or math at an abstract level (as opposed to a distinct structural description of a physical object embodying a concrete example of the stated abstraction), the “relevant art” is the entire history of human understanding of logic and math, in all of its applications. That’s because logic and math are always, well, logical and mathematical, respectively, unless they are utterly devoid of utility. Math, for instance, doesn’t care if it’s applied to numbers generated from “password data” or “credit card data” or “preferred movie data” or “gopher tooth growth rate data.” It’s just numbers.

                But for some mysterious reason the PTO doesn’t seem to have a working system in place for systematically examining claims to “new” logic and “new” math. As far as I can tell, the PTO still doesn’t even provide Examiners with boilerplate setting forth the basic incontrovertible facts about programmable computers and what people have known about their capabilities and functionality for many decades now. Instead, the PTO and its appliants continue to pretend that every hot new trend in computing technology requires that the previous history of computing and logic is erased over and over again.

                It’s the same with 3-D printers. 3-D printing is just another manufacturing technique, in the same way that the Internet is just another information dissemination technique (albeit one with the capability for vastly more depth and reach). It doesn’t “change everything”, certainly not from a patenting perspective.

                No doubt there are people who would love it to be the case that “3-D printing changes everything” and we all know why: if everything that is 3-D printed suddenly becomes “new” then the patent system becomes another grifter’s playground. That’s because anyone can sit at their desk and dream up “print this” claims all day long (although the clever scrivener will always hide the ball). And that’s likely what would happen if people weren’t around to remind the PTO of that simple fact of human nature.

                1. plicant does not want to do that, then I have very little sympathy for the applicant

                  Maybe you should try US patent law…

                  What you spout ain’t it.

                  Did Tafas pass you by?

              3. 2.2.1.1.1.1.3

                MM believes all patents have “junk” claims. Or at least anything that has a “computer” involved. So, you might as well argue with a wall; at least with a wall, you can bang your head against it and potentially feel better. With MM, he apparently has unlimited time and will overwhelm you sooner or later.

          2. 2.2.1.1.2

            And just so there’s no confusion, David: I am sympathetic to the plight of applicants who have bona fide patent worthy claims and who receive rejections from the PTO that are flawed. We’ve all seen them. It is a waste of time.

            But the fact is that the people who end up paying for that “waste” are, in nearly every instance, perfectably able to afford it and then some. Moreover, at this stage in the Great Patent Bubble, the vast majority of delays can be avoided by recognizing in advance what issues are likely to cause problems at the PTO and addressing them up front.

            Lastly, if you really are concerned about improving the quality of examination in the information-processing arts — which is where most of the severe complaints seem to arise — then all these “statistical analyses” are utterly beside the point. Someone, either at the PTO or an outsider, needs to develop and design a complete and comprehensive overhaul of the manner in which such “innovations” are permitted to be (1) claimed and (2) examined.

            For the last thirty years (at least) our patent system has basically been in a free-fall because of a complete lack of any rational understanding at the PTO or among its most vociferous “shareholders” (heck, even a willingness to understand would be nice) as to how a sane and consistent system for examining claims to logic would look and operate. Compare with, e.g., biotech, where the PTO and the industry got their act together pretty quickly to establish a framework and data management system to deal with the inevitable claims arising from the ability of people to engineer complicated DNA and protein molecules.

            1. 2.2.1.1.2.1

              ^^^

              Malcolm is entirely unable to not dove into the classism of “well, they can afford it.”

              Here’s another hint Malcolm: get into a profession that you can believe in the work product and does not cause you such evident psychic distress.

          3. 2.2.1.1.3

            One would assume that rational applicants file applications with expected values greater than expected costs.

            Lets define a junk application as a patent with a 1% probability of being upheld as valid during an infringement lawsuit.

            Given a large enough potential payout, the expected value of the application may be greater than the expected costs.

            Therefore, rational applicants may rationally file junk applications.

            1. 2.2.1.1.3.1

              Alexander: Lets define a junk application as a patent with a 1% probability of being upheld as valid during an infringement lawsuit. Given a large enough potential payout, the expected value of the application may be greater than the expected costs.

              It’s basic math. Now take into acount the quoted fee of $2500/per application. 100 x $2500 = $250,000. That’s an expensive lottery ticket for 99% of the individual population. But it’s chump change for the home and yacht collecting crowd. Heck, some people drop $50,000 on birthday parties without blinking. And let’s say a patent attorney shows up at that party, or maybe the wife of a patent attorney. You start batting around ideas about how to get rich off the thrilling new “robot car” trend. After all, your friend is doing it and he made a load licensing to Yahoo. Plus he heard about this awesome courthouse in Texas …

              So over the next few weeks a couple dozen of patents on “analyzing” stuff about driving and using the data to “determine” what kind of ad to shove in the person’s face, using a 3-d printer to print up a spare car key when fingerprint recognition criteria are “satisfied”, using information collected by a “drone” to assist in driving-related “determinations”, and on and on. Just the most creative and inspiring stuff you can imagine really. Did I mention the email alerts?

            2. 2.2.1.1.3.2

              Alexander, junk applications are those to obviously unpatentable subject matter, such as business methods. That the PTO and the Federal Circuit let people get a away with “redrum” for so long is a both a pity and a shame.

              Junk gave us all the problems we have had with trolls — and those problems lead to IPRs and CBMs — and all the hatred and bile in congress against anyone who makes money off of patents rather than protecting products.

              Junk gave us eBay. From the Federal Circuit case:

              “[T]he district court stated that the public interest favors denial of a permanent injunction in view of “a growing concern over the issuance of business-method patents, which forced the PTO to implement a second level review policy and cause legislation to be introduced in Congress to eliminate the presumption of validity for such patents.” MercExchange, LLc v. eBay, Inc., 401 F.3d 1323, 1339 (Fed. Cir. 2005). link to scholar.google.com

              Even though the Federal Circuit reversed the district court, continuing the good work of the Honorable Giles S. Rich, the Supreme Court reversed both the Federal Circuit and the District Court, holding that both got it wrong.

              State Street Bank, and the PTO until it got better management, did a lot to undermine the patent system in the view of public, the FTC and Congress. That enmity, my friend, is k!lling the patent system with reforms and backlashes galore.

              It remains a wonder that there are folks who do not get it, who are running about with constitutional amendments and the like so that we can begin again to patent business methods and DNA. What in the world? Have the people who walk the halls of congress lobbying for more business method patents gone completely !nsane?

              1. 2.2.1.1.3.2.1

                We should have instead (per Ned), Just a bunch of “Einsteins” chasing windmills (like Ned).

                1. No, anon, we should not run amok as did the CAFC and the PTO for so long when they abandoned all reason and common sense and opened the floodgates to the patenting of junk.

                  “Reason and common sense.” There is a good Jack Nicholson line from “As Good As it Gets” that includes that phrase.

                2. Ned,

                  If you cannot even discuss my much more accessible Set Theory explication on the printed matter doctrine (including the exceptions to the judicial doctrine of printed matter), how are you going to be able to pick out anything from that rambling oral argument?

                  (btw, nothing in the oral argument contradicts my easy explanation to you)

                3. From an OA I recently received:

                  It has been held that where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in
                  terms of patentability …. [T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate (In re Ngai 367 F.3d 1336, 1339, 70 USPQ2d 1862 (Fed. Cir. 2004); Ex parte Nehls 88 USPQ2d 1883, 1888-1889 (BPAI 2008); In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP § 2111.05; Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)).”

                  I think this thinking could have been applied to the claims discussed in the oral argument.

                4. Ned,

                  You are doing that dissembling thing again.

                  It is NOT a matter that the relationship itself between the substrate and the printed matter must be (or have) a new and unobvious functional relationship – the same type of functional relationship will do – it is the object of the printed matter being new and unobvious.

                  This goes to the fallacy of 6, who attempted to say that a Britney Spears CD and a Microsoft Systems operating disc were interchangeable.

                  Clearly – they are not.

                5. is from an examiner. That is what he said, not me.

                  Ned, that may have been from an examiner in that Office Action, but it was you here and now that are misapplying it.

                  Read again my post in this string at 8:57 PM. Let me know if anything after the first line is too difficult for you to understand. I have some easy Set Theory explication that I can (again) share with you.

            3. 2.2.1.1.3.3

              An application with a 1% chance of being found valid has probably an 80% chance of not only being invalidated, but incurring a verdict of attorney’s fees against the patentee.

              1. 2.2.1.1.3.3.1

                My point was that applicants will file anything if the expected value is positive. That the model needs additional terms does not undermine the point.

                Maybe when you said “applicants don’t ever file applications that they believe to be junk”, you were defining junk to be ” expected negative value”?

                1. Oh, I understand your point. I define “junk” according to the quality of the invention and the patent. And while that definition hasn’t changed (the claims at issue in Planet Bingo and DietGoal and EveryPennyCounts were all “junk” before Alice as well as after), the consequences for trying to enforce them have shifted radically.

    3. 2.3

      MM, appeals occur when communications break down between the examiner and the attorney. The fault could be on either side.

      1. 2.3.1

        Wrong. Some appeals occur because the examiner has fallen back on the old, “The claims are too broad!!! I’m not issuing it!!!!! Let the Board issue it!!!!” mentality that reigns at the PTO.

        Some appeals occur because the issues are close and really do require the Board to weigh the evidence and arguments as the examiners are generally incapable of that exercise and reaching the correct conclusion. Because while the standard is preponderance, some examiners act as if the standard is clear and convincing, and some even act as if it’s beyond a reasonable doubt. There’s no “breakdown in communication” in those cases. The examiners are applying the wrong standard, because there is absolutely zero consequences for them in doing so, and applicants have to appeal to get the correct standard applied.

        1. 2.3.1.1

          AAA JJ, at some point in time, the examiner’s stop listening. Whether they are right or wrong is beside the point.

          1. 2.3.1.1.1

            Ned,

            Some stop listening the moment they pick up the application, before even reading it. That is the point.

          2. 2.3.1.1.2

            Absolutely NOT, Ned.

            If an examiner is not doing their job – for whatever reason – that lack is very much an important point.

            Applicants are under no requirement to “be friends” with examiners or have the “examiners like them.” As long as the proper civility is maintained, there is NO reason why – or excuse for – an examiner to stop listening.

            Such would be an example of an executive branch agent being arbitrary and capricious.

            1. 2.3.1.1.2.1

              anon, so the examiner is not listening. You cannot replace him or her. You must appeal.

    4. 2.4

      “Maybe David can tackle another big question: ‘Why do Applicants Persist in Filing Reams of Junk and Appealing Procedural Issues that Change Nothing About Their Meritless Patent Claims?'”

      Appealing procedural issues? WTF are you talking about?

      If there was any remaining doubt that you actually are an actual practitioner, you just removed it as thoroughly and completely as you possibly could.

      1. 2.4.1

        AAA JJ,

        I think that he means that patents are allowable per the following of law is something that he does not like. He wants his anti-patent “whatever” (lack of) critical legal theory such that an examiner can “sniff” and reject, much like he does.

  7. 1

    The article ” Why Does The PTAB Still Have A Backlog?” is very interesting, with nice statistical charts. E.g.: “The USPTO has scaled up the PTAB – from 80 judges in 2009, to 180 judges in 2014 – as well as judges’ productivity. As a result, the PTAB has literally quadrupled its output of ex parte appeal decisions.” [But the number of ex parte appeals has also, until recently, greatly increased with the increase in applications.]

    One thing I did not see discussed was the impact of inter parte reexamination appeals and IPRs? [That is, the % of PTAB resources devoted to that rather than to ex parte appeals.]

    1. 1.1

      Paul: Thanks for the kind remarks. I’m hoping to produce more of these kinds of metrics-based articles in the future – interesting to have statistical support for some of these observations.

      I specifically didn’t include IPRs because I figured that they’re a totally different beast, driven by much different factors. But I agree that it’s impressive that the PTAB has scaled up its output of ex-parte appeals so dramatically – all the more so since the PTAB also has to devote a huge amount of resources to the IPR process.

      I do wonder, though, if the increase in throughput is affecting other factors, like the quality of the opinions. I have no idea how to measure or even evaluate that… yet.

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