Receiving a Sequence of Symbols

I am somewhat amazed by Google’s New Patent No. US 9633013 B2; Claim 1 below:

1. A computer-implemented method comprising:

receiving a sequence of symbols that have been optically captured from a rendered document;

determining that the sequence of symbols includes a particular symbol, word, or phrase that has been mapped to one or more actions;

selecting an action from the one or more actions; and

transmitting an instruction to a document management system to perform the selected action.

In addition to its gaping abstract idea problems, the patent claims priority to a collection of more than one hundred (100) provisional patent applications – 2004 priority date.

Despite this application being filed in 2016 and issued in 2017, the claims were never rejected on eligibility grounds – or on any grounds other than obviousness-type-double-patenting.  The notice of allowance explains:

The prior art of the record fail to teach or suggest singly and/or in combination a system and computer implemented method which provides for receiving a sequence of symbols that have been optically captured from a rendered document, determining that the sequence of symbols includes a particular symbol, word, or phrase that has been mapped to one or more actions, selecting an action from the one or more actions, and transmitting an instruction to a document management system to perform the selected action as prescribed for in the claimed invention.

I’ll also note here that the patent appears to be co-owned by Google and the widow of named inventor, Martin King.  More claims continue to be filed in the family, including pending APN 15/462,309, which has also been rejected only on one ground – obviousness type double patenting – without any consideration for Alice/Mayo.   The first claim of the ‘309 patent soon-to-issue is as follows (written as Claim 20):

15462309

150 thoughts on “Receiving a Sequence of Symbols

  1. I am not sure why you have singled out this patent.

    Although not articulated by the examiner, I can at least think of arguments to save it from a 35 USC 101 rejection (even if other examiners might give me stiff resistance to those arguments).

    It is no secret that the the Patent Office is inconsistent about the way it handles patent applications. Sometimes for essentially the same situation, a different set of rejections are issued.

    Clearly 35 USC 101 is handled entirely differently by at least some art units in Group 3600 than by the other groups. Of course many of the examiners in group 3600 also handle issues of 35 USC 103 very differently also. It seems to me that on occasion, some them (more so than in other groups) are even a bit nasty, which I guess is the result of having pressure not issue many patents, that are likely considered patentable in other parts of the Office. However, that is an inconsistency that the Office has essentially built into the system, even if the intent was not to build-in inconsistency. Beyond that, each Patent Examiner is his own patent office. It is hard to avoid that from occurring, especially when the standards that the Examiners are supposed to apply are subject to individual interpretation.

    I sometimes wonder, however, if some the larger companies are given somewhat more favorable treatment by the examiners, even if the examiners do not intend to do so. For the example, the examiners just may be more impressed by the fact that it is Google that filed this application and therefore tend to treat the application more favorably, without realizing that they would treat the same application by a smaller unknown company differently.

    1. It’s amusing how common this idea that large companies get treated better at the PTO.

      It’s not true as far as I know.

      1. It’s amusing how common this idea that large companies get treated better at the PTO.

        Categorically? No. Individually? Definitely.

        I represent a variety of clients. I have encountered numerous examiners who’ve made comments, during interviews, about the identity of the applicant – such as:

        “Your client is large and aggressive with its patents, so I must be very careful about which applications I allow.”

        “Your statement that your client will not agree to the term ‘nontransitory’ is false. Other examiners have successfully pushed other attorneys for the same applicant into adopting that term.”

        “Your client is a small inventor who is unlikely to enforce the patent in any meaningful way, so I’ll be more generous.”

        “Your client is a small inventor who probably can’t afford the appeal process, so you can either accept what I’m offering (i.e., claims with a half-page of junk limitations crammed in) or get nothing.”

        I am certain that a company like Google – which not only has the influence of Michelle Lee, but also a strong PR effort of being one of the “good guys” in the patent fight – gets more favorable treatment.

        1. David, I get the same kind of comments. I have represented just about every type of client you can think of and when the client is a well-known NPE, the examiners are much harder on the applications.

          I hear, what if this becomes a big court case, it could ruin my career.

          Usually, when I hear this is when they have no good reason to reject the claim, but don’t want to allow it. They start fabricating stuff. One rejected the claims based on the background with no other evidence.

        2. I have also heard:

          you guys do work so I have no problem allowing these claims.

          You probably couldn’t name a large company that I haven’t represented.

    2. I am not sure why you have singled out this patent.

      Seems to me that Dennis explained why he singled it out.

      I can at least think of arguments to save it from a 35 USC 101 rejection

      Oh really? Please share. We could all use the laughs.

      the examiners just may be more impressed by the fact that it is Google that filed this application

      ROTFLMAO

      Pretty sure the PTO is very well aware that Google and Facebook and Apple file tons of ridiculous junk. How could they not be?

    3. RE: I am not sure why you have singled out this patent.

      Perhaps it has something to do with Google’s public position on subject matter eligibility. For example, in its Roundtable 2 comments of January 18, 2017 to the USPTO, Google stated:

      “Alice represented a vital course correction. Before that decision, too many patents were being issued that claimed only abstract concepts or functions performed on a computer or on the Internet. Such patents often claimed a desired result but provided no limiting disclosure of how to achieve that result using advances in computer technology. Applicants were thus obtaining patents based on no meaningful technical contribution, which they could then use to tax real innovators who did the hard work of finding the technical solutions necessary to create a valuable product. Litigation based on those spurious patents targeted software companies of all sizes, diverting their resources away from developing innovative new products. It was important for the Supreme Court to clarify that those “abstract and sweeping” patents, Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (quoting Gottschalk v. Benson, 409 U.S. 63, 68 (1972)), which foreclose far more innovation than they contribute, were contrary to the basic goals of the patent system as reflected in § 101. …

      “Courts are converging on a set of well-defined principles for identifying those problematic patents. Those principles limit patent-eligibility to claims that contain an unconventional technological solution to a technological problem. On the other hand, they exclude claims that simply describe a desired result or effect dissociated from any specific, technical means by which it is accomplished. Those are the right questions to ask when evaluating patent-eligibility. The technological-problem/solution test promotes innovation in the software industry by rewarding concrete advancements in computer technology, not vague statements of desired results with little information on how those results are achieved.

      “We hope and expect that courts will continue to focus on whether claims recite a technological solution to a technological problem. We encourage the PTO to train examiners to apply that test, as we explain in more detail in our concurrently submitted comments on the PTO’s subject-matter-eligibility guidelines. In light of courts’ increasing convergence on the technological-problem/solution test, and the clear prospects of that test to improve predictability and promote the purposes of the patent system, we see no need for action by Congress at this time to address the patent-eligibility of software claims—action that would only risk creating uncertainty and disruption. …”

      Looking at their own patent claim in the case above, one wonders whether Google is applying its own test, or instead expects one test for others and another more favorable one for itself.

  2. Against whom would they actually try to enforce that patent? It seems to me that it epically fails the giggle test.

    The earliest provisional priority documents are mostly barely decipherable gibberish: very informal notes, e-mails, stream-of-consciousness. It looks like if some guys got together and brainstormed “stuff”, which then then handed over to patent attorneys to develop a portfolio for eventual monetization. The Dutch company “Exbiblio B.V.” could be a tax optimisation vehicle. If it isn’t that, I don’t know what is.

    The 2004 e-mails were exchanged between “ignitionpartners.com”, “melodeo.com”, and “vashonable.com”.

    The second and third domains do not seem to answer anymore. The first one is still active, and lists one Cameron Myhrvold, ex-Microsoft, as a founding fund partner. Any relation to Nathan?

    None of the EP members in the family have gone anywhere.

    1. Even at the EPO this method of writing a notice of allowance isn’t unknown (they normally call this a “votum”, from a Latin word used in the German language): Recite the wording of claim 1, laconically write “none of the prior art documents disclose or suggest this subject-matter” or the equivalent in French or German, and voilà, you can wave it to the other members and get their signatures.

      IMO, claim 1 reads on a vintage USPS mail sorting machine:

      A system for analyzing destination addresses on pieces of mail transported serially past an optical scan area to determine whether the address is machine imprinted or handwritten. Based on the determination, an output is generated to control sorting the mail into either one grouping with printed or typed addresses (readable by machine) or another grouping with handwritten addresses (unreadable by machine). High intensity lamps are focused on each side of the scan area angled at a predetermined angle to the path of transport of the mail to illuminate the address. Arrays of photocells are positioned in vertical alignments, one array on each side of the transport path. The array on the side of the piece of mail bearing the address is activated by a piece of mail reaching the scan area to cyclically generate signals based on the characteristics of the addresses scanned. The signals are processed to reach the decision as to whether the addresses are imprinted or handwritten.

    2. Just because it is a patent doesn’t guarantee it is enforceable. 20 year patent term means they wont have much time left to enforce.

      1. I just had one go to moderation, too. The filter seems to catch innocent comments while letting through the people that intentionally subvert it. If only there were some engineers around here…

        1. I hear that Justice Breyer knows of a coffee shop near a university that if you throw a pizza or two around, your problem will be solved over the weekend.

          I know that I have shared this comic several times, but it fits here (again):

          link to xkcd.com

        2. If only there were some sort of governmental policy that recognized and reworded innovation in this area, say by granting for a period of time exclusive rights to such an innovation to the innovator…

      2. One of (but certainly only one of them) is a “count” filter.

        That filter though is not objectively based, as the number of posts that a particular “regular” may post before that filter becomes active is not the same (as I have noted with objective observations).

        WHY such is not the same certainly is open to perceptions (whether or not this counts as “figured it out” hardly matters, now does it?)

      3. Please Pardon Potential (re)Post

        One of (but certainly only one of them) is a “count” filter.

        That filter though is not objectively based, as the number of posts that a particular “regular” may post before that filter becomes active is not the same (as I have noted with objective observations).

        WHY such is not the same certainly is open to perceptions (whether or not this counts as “figured it out” hardly matters, now does it?)

      4. It sure seems like I have gotten myself on some sort of blacklist….If you could find it and/or put me on the whitelist instead, I’d be grateful.

    1. There are some trip words, and there seems to be a thing that will block you if you’ve had a certain kind of post blocked already in that thread. And finally there is a sometimes block on having posted more than like 10 times in a thread (or this might be based on keywords I’m not sure).

    2. Les,

      For what it’s worth, one of mine just got flagged for moderation as well. I have no idea why. It’s unfortunate that one of the few places online where you are able to discuss developments in a super-specialized area of law with other interested parties doesn’t have a better system for facilitating that discussion.

      Anyone – is there any way to register somewhere to avoid these issues?

  3. For what it’s worth, the Ask Alice website tool recently highlighted on Patently-O analyzed the claim as ELIGIBLE.

  4. Symbols you say.

    On a strip of paper you say.

    Anyone else reminded of the NON software patent case of the magic hat band that exemplifies the exception to the judicial doctrine of printed matter…?

    😉

    1. the magic hat band

      Please, please, please keep holding this decision up as a really important one! It shows how serious you are. And you can never be too serious, you know. Tell everyone the name of the case and quote to everybody the very deep reasoning that led to the super important holding which you cling to and rely on to support your logic patents.

  5. “I am somewhat amazed…”

    The only guy that possibly could be “amazed” at this is Rip van Winkle.

    The standard for determining whether something is abstract it….’t’aint no standard. Anyone following the case law since 2014 who is not hopelessly compromised by whomever is paying them to troll or otherwise limited by their native intelligence knows this.

    1. Maybe I missed it, but I didn’t see a reference below that would render the claims obvious in view of the reasons for allowance.

  6. All of these 101 arguments are just gibberish. They defy any type of legal framework because it is based on false premise. Claims to a machine that takes space, time, and energy to operate and provides a novel functionality cannot and is not abstract.

    1. “Claims to a machine that takes space, time, and energy to operate and provides a novel functionality cannot and is not abstract.”

      If I claim, “a system for traveling through time, comprising: a time machine,” am I not attempting to claim the abstract idea of time travel, despite the fact that it’s a machine that takes space, time, and energy to operate and provides a novel functionality?

      Or for something a bit more concrete, 102/103 questions aside, what if I claimed “a system for fastening two objects together, comprising: a first object; a second object; and means for fastening the first object to the second object.” Despite the fact that fasteners are physical objects, isn’t that a claim to the abstract idea of fastening?

      Looking at this under the 101/112 framework I suggest below, I think both claims could be considered ineligible as directed to the result, rather than the invention.

      1. Are you saying the machine actually travels through time? If it isn’t actually a time machine, then you have a 112 issue.

        And, the other issue is broadest. For example, if you claimed a machine to travel through space, and it was the first rocket, then it would not have any problem except broadness. And, the way to deal with a claim that is too broad is that you risk invalidation if there are subsequent inventions that are non-obvious that are not enabled by your disclosure.
        (essentially, another non-obvious way to travel through space.)

        This method of dealing with claims works very well and promotes structure at every stage.

        The root of evil of confusing these issues is Benson. It needs to be revisited and expressly overturned.

        1. The root of the evil is the Supreme Court not liking the fact that Congress took away their “common law power to set the meaning of the word ‘invention'” in the Act of 1952.

          Without the wax of nose of 101, what do the Justices do with their fingers?

        2. “Are you saying the machine actually travels through time? If it isn’t actually a time machine, then you have a 112 issue.”

          Yes, I was hypothesizing a working time machine, and a patent claim that merely claims such a machine in as few words. I’d argue that it’s attempting to claim the idea of time machines, rather than the implementation.

          “For example, if you claimed a machine to travel through space, and it was the first rocket, then it would not have any problem except broadness. And, the way to deal with a claim that is too broad is that you risk invalidation if there are subsequent inventions that are non-obvious that are not enabled by your disclosure.
          (essentially, another non-obvious way to travel through space.)”

          I disagree – I think if you had a claim that was simply, “an apparatus, comprising: means for traveling through space,” that aside from breadth, it would also be attempting to claim the abstract idea of traveling through space. Note that it would also be invalid under 112 as a single-means claim.

          1. The reason it is not claiming the idea of time travel is 112. The scope of the claims is (or should be) the scope of enablement.

            “I disagree –” The reason what you are saying is wrong is 112. Unless a person of ordinary skill in the art can practice the invention from your disclosure, then it fails 112. So, we know that whatever the claim is that it can be built.

            What you are not including in your analysis is the common body of knowledge that is included in every patent application. Everything that is known by POSITA is supposed to be included in the application implicitly.

            So, do you understand even if the claims seem broad to you that they are only entitled to a scope of what is enabled?

            There is absolutely no need for a test as to whether they are trying to claim an abstract idea. Patent law long ago learned how to police the scope of claims.

            You note that the people that have been disrupting this are either ignorant of patent law and science or they had an intent to prevent information processing methods from being patent eligible (Benson.)

            1. There is without a doubt a certain animus running rampant against innovations of a particular flavor.

              There is NO logical reason why this is so – and in fact, many of the arguments that come up against such patents are in truth nothing more than anti-patent arguments.

              This is NOT a new thing – as anyone that has been around this blog for any extended time should be well aware of.

    2. That’s because Alice is a mishmash of logic that should be applied to other statutes: 112(1) enablement and overbreadth, 112(B) definiteness, and 102/103 novelty and non-obviousness.

      The central purpose of Alice is to permit examiners to shortcut the (marginally or nominally) more rigorous analysis that is required of 112, and the objective evidence standard 0f 112/113. It’s a license to flush.

      A logically sound approach, one with ties to the actual language 35 USC, would have been a refinement of each of these individual standards and tests – and new rules that push examiners to apply them more diligently. Instead, we get this haphazard jurisprudential scaffolding that’s stapled, rubber-banded, and duct-taped onto the word “USEFUL” in 101.

      1. David, it really is interesting that you do not seem to understand the basic inquiry: whether the claimed subject matter is directed to a new or improved “manufacture.” If it is not, either because it is directed to subject matter like business methods, or because it is claiming at the level of an abstraction, then one cannot even begin to assess whether the claimed subject matter is obvious or enabled.

        Certainly some things are useful that are not manufactures. Certainly some things reduced to practice can be useful, but when claimed at the level of abstraction, the inventor only points the way, allowing others to make the invention.

        1. Ned,

          It is you that does not understand the basics of patent law and the fact that the Act of 1952 made each of the four statutory categories independently equal.

          Your Windmill Chases continue to blind you to the plain history.

          You continue to try to preserve for the Court the power that Congress took away from them by taking the prior single paragraph and breaking that paragraph into its separate sections, augmented by the addition of definitions in 35 USC 100.

          That you seek to lecture others based on your own – self-induced – lack of knowledge is beyond the pale.

  7. JCD: Just as an FYI, a parent application with similarly broad claims was allowed in 2009 well before the assignment to Google was executed in 2011.

    I’m willing to bet this is a case of the office “working as intended” –

    If a parent had similar scope then he was probably told that the office doesn’t contradict itself, so no further obviousness analysis. If no obviousness rejection is made, there was likely a standing policy not to reject solely on Alice.

    In other words, this probably wouldn’t be a quality error within the office. The scope was allowable the moment it perfected priority, since it foreclosed analysis.

  8. Who has the inventor? The man who has the idea, are those who implement the idea?

    Apparently, Brown, who came up with the idea of disappearing messages, has no equity in Snapchat because he had nothing to do with developing the software for implementing the idea. Interesting story:link to valleywag.gawker.com

      1. Well, you might be able to make a 103 argument with that, but trying to make a 101 argument with that is not patent law.

    1. Not the idea game again. These are not ideas when coupled with a way to build a machine to perform the functionality of the “idea.”

      1. The pencil case was decided wrongly. But, then when we are dealing with judges that are ignorant of science, ignorant of innovation, ignorant of hindsight reasoning, etc., it is no surprise.

  9. If there are art units who are given instruction to treat applicants differently, that would be a HUGE problem

    Oh really?

    How about art units that are two or three or ten times more likely to grant a claim than other art units, even where the claim in the low-grant rate art unit has the same scope (or is even narrower) than the claim in the high-grant rate art unit?

    Because that’s reality. And patent attorneys in the logic arts don’t even try to hide this. They actually spend money so they can get together over contintal breakfasts and tell each other which “magic words” to use to get their claims in front of the weakest art units. They’re very serious people! Real professionals, and totally not just basement-level scriveners trying to make a buck quickly before the next trend in logic arts claim drafting comes to a predictable end.

  10. What are you amazed by? Do you think its been done before? Do you think the claims are not supported by the specification?

    1. What are you amazed by?

      As I’ve said before: patent maximalists like Les will literally do and say anything, regardless of how silly the claim is.

    2. Determining that a series of symbols (i.e. letters) means an action? Yeah I suspect its been done before, but we can check the publishing date on all the dictionaries. Ordering a computer to perform an action? I mean they don’t do it on their own.

      So the question is did the guy invent optical character recognition in 2004? My magic wikiball says “No” –
      link to en.wikipedia.org

      Wow first OCR patent in 1931.

    3. Since DC hasn’t answered, I’ll guess what amazes him: the fact that these claimed survived examination when so, post-Alice, many similarly-worded claims were shot down on 101 grounds. But DC can speak for himself and maybe he will.

      Speaking for myself, I find it hard to accept that these claims are allowable under 103. But I’ll leave it to a party actually affected by the allowance of these claims to attack them on those grounds. And as much as I would like to see a return to the situation where claims like these are assessed under 102/103/112 and 101 isn’t even raised (b/c it’s implicitly acknowledged that they jump the 101 hurdle), I *do* find it offensive that of all the parties to escape the Alice craziness this one time, it’s Google that gets a pass. Makes me wonder if Google is getting special treatment.

      1. I would like to see a return to the situation where claims like these are assessed under 102/103/112 and 101 isn’t even raised

        And I’d like to see the junky ineligible patents you encourage your clients to file as you blow sunshine up their behinds.

      2. Are you the same Atari Man who had dinner at Saison a few years ago, and your business card looks like a fortune cookie insert?

    4. Yes, i think its been done before by every secretary in history. Did you ever give your secretary a note with instructions? “Fax this”, “send this to Mr. Wagu,” etc?

      Takine a process that a secretary has done for years and adding ” computer implemented method” does not make it patentable.

      1. “Takine a process that a secretary has done for years and adding ” computer implemented method” does not make it patentable.”

        No, but figuring out how to automate a manual process that requires subjective judgement is patentable. See McRO.

        1. The process in McRO would have been patentable even if carried out by a person. The automation did not infer patentability.

          Would the process in this case be patentable if not computer implemented? “Read instructions, carry out instructions”… No.

          1. The process in McRO would have been patentable even if carried out by a person.

            LOL

            No.

            But funny to see you express this out loud, in public. I mean … wow.

        2. figuring out how to automate a manual process that requires subjective judgement is patentable. See McRO.

          McRo isn’t worth the paper it wasn’t printed on.

          Animating a mouth never required “subjective” judgment. It still doesn’t. It requires that decisions be made, sure. But there need not be anything “subjective” about those decisions.

          Lists of clear rules have been around for a long time. Ever wonder why?

  11. In other news, the PTAB’s time was utterly wasted dealing with “experts” battling over this incredibly laughable pile of junk:

    1. A registration system for licensing execution of digital data in a use mode, said digital data executable on a platform, said system including [a] local licensee unique ID generating means and remote licensee unique ID generating means,

    [b] said system further including mode switching means operable on said platform which permits use of said digital data in said use mode on said platform only if a licensee unique ID first generated by said local licensee unique ID generating means has matched a licensee unique ID subsequently generated by said remote licensee unique ID generating means; and

    [c] wherein said remote licensee unique ID generating means comprises software executed on a platform which includes the [sic] algorithm utilized by said local licensee unique ID generating means to produce said licensee unique ID.

    Wanna see this super awesome “algorithm”? Try to believe it folks:

    the “registration number algorithm combines information entered by a prospective registered user unique to that user with a serial number generated from information provided by the environment in which the soft-
    ware to be protected is to run.”

    Combining two pieces of information to create “new” information! WOWEE ZOWEE SUPER TECHNO STUFF HERE PEOPLE! Nobody could have predicted that information could be combined like that. Unprecedented stuff from the The Most Important People Ever!

    IPRs need to be expanded to include subject matter eligibility attacks. This junk is just another reason why (among literally hundreds of thousands of others).

  12. I agree that there is a double standard in the PTO, in that companies like GOOGLE get much more latitude in claiming this kind of subject matter. I do not, however, believe it is “abstract” in any way, as it is pretty specific and describes physical mechanisms for both input and output. The claim as a whole, however, is clearly invalid for obviousness in light of any basic older computing system that used tapes or punchcards with symobls, because the LABELS or origin assigned to the terms are meaningless and are typically disregarded.

    The claim:

    “receiving a sequence of symbols …” – paper tapes for PDP 8 programming had symbols on them too for coding instructions; the origin of the symbols here ” optically captured from a rendered document” is clearly obvious in light newer input capture mechanisms

    “determining that the sequence of symbols includes a particular symbol…” again the typical PDP 8 tape patterns were decoded

    “selecting an action from the one or more actions” after the mapping was done, you knew which instruction was involved

    “transmitting an instruction to a [document management system] to perform the selected action” again this is just telling something else (label irrelevant) to do something
    ——

    Anyone with any significant experience in computing systems would know this is obvious if not already anticipated. But that’s a 102/103 issue, which is “hard” for Examiners, and given the easy 101 “out” that’s where everything is going.

    1. I disagree. Finding the portion of a document that is actually an instruction regarding how to process the document in a photograph or “optical scan” version of the document is not obvious in view of reading holes punched in a strictly formatted paper tape.

      1. But how does the text of the claims make that distinction? (honest question, I feel like half of prosecution/examination boils down to this question).

            1. I have.

              What I haven’t done is analyzed the file resulting from the scan in search of a document management command and upon finding one, performed the commanded function.

              Have you?

      2. But that’s not what it says; it doesn’t say “look for this symbol, please find it on this page” – it merely says, look at a page that’s been scanned, and decode the symbols. That’s just plain OCR combined with additional logic to do something more after you find the word “PRINT” on a page. Its not “finding” anything; it could be literally infringed by a blank piece of paper that had the word “PRINT” on it, which word was identified by OCR. The word PRINT tells me to take that action; I then tell a printer (document management system) to actually print the page. There is absolutely zero subject matter CLAIMED that is “patentable” here.

        1. ” plain OCR”

          I thought it was OCR being done on something that was captured from the capture device (as in they OCR’d an electronic document generated from them snapping a picture with the camera on the phone of an actual in real life document etc.).

            1. “from a mobile computing device that includes a capture device” doesn’t limit the step of receiving the symbols? Are we reading that limitation out of the claim?

              1. He’s reading Claim 1, you’re reading Claim 21. But what does it matter, he didn’t invent a camera/smartphone taking pictures, what does that have to do with anything?

                1. Yeah I just figured that out. I think that’s probably why claim 21 made it through. He’s doing OCR of a document he took a pic of and then sending it through his computer sign recognition/matching program is what the claim is about I believe.

                  Obviously claim 1 is preposterous.

          1. I thought it was OCR being done on something that was captured from the capture device

            Remember folks: this guy purports to be a professional Examiner at the PTO.

        2. Why would you be looking at an OCRed document to determine whether to print that same document?

          What I find (most) disturbing is the number of provisionals upon which this is based, and the number of references cited. Both are extreme. The cross-reference to related applications is three massive paragraphs.

          It looks to me like they took everything produced at Google those years, filed them as provisional applications, then based this application (and likely many more) on those provisionals. As a patent Examiner, what do you do with all of that information (and the massive number of cited references), other than ignore it? It would be impossible to look through them all. It borders on being unethical.

          1. The Examiner doesn’t have to look at them. The Examiner goes about her business, cites the best art. Then the applicant says, no Mame, we disclosed that earlier, see provisional 6… so that document is not prior art. EZPZ

          2. As a patent Examiner, what do you do with all of that information (and the massive number of cited references), other than ignore it? It would be impossible to look through them all. It borders on being unethical.

            Yeah that’s what you do with a ton of provisionals/IDSes. It’s not like the 2004 date makes a difference.

        3. ” it could be literally infringed by a blank piece of paper that had the word “PRINT” on it, which word was identified by OCR.”

          I agree. Why is that not patent eligible subject matter? Its a method. It doesn’t preempt all OCRing. It doesn’t preempt all printing. Its a new way to enter a print command. Why shouldn’t that be as patentable as say, a computer mouse?

          1. Absolutely, I have no problem with it being ELIGIBLE, I thought I pointed that out before. The 101 test is in vogue only because it appeal to the lazy types who cant demonstrate unpatentability based on prior art.

          2. Why is that not patent eligible subject matter? Its a method. It doesn’t preempt all OCRing. It doesn’t preempt all printing. Its a new way to enter a print command. Why shouldn’t that be as patentable as say, a computer mouse?

            Once you agree that OCRing is conventional, then it’s ineligible.

            Let me ask you – if I was to claim “coding” would that be eligible? I claim the field of computer programming. Eligible? I hope you’d say the answer is no.

            I claim the field of computer programming, wherein the input mechanism for coding is a conventional means of inputting data. Eligible? Or a claim to a field limited only by token conventional subject matter.

            1. “Once you agree that OCRing is conventional, then it’s ineligible.”

              That’s as ridiculous as saying that once you agree that the periodic table of elements is conventional, all drugs are ineligible.

      3. Les, I think that’s a good argument for the underlying invention, and why someone said, “hey, this is cool, I should file a patent application on it,” but it’s not in the claims.
        As others note, the “receiving an optically captured sequence” and “determining that they include a phrase that corresponds to an action” does cover things like punch cards, barcodes, etc.
        What you suggest would require something like “… a sequence comprising a plurality of symbols, wherein a subset of the symbols correspond to a predetermined action to be performed on the sequence; and parsing the sequence to identify the subset…” That may be obvious in view of some other technology*, but it’s certainly more than “read instructions from paper tape.”

        1. Well, I think its a stretch to call a punch card a “rendered document” under the ordinary meaning. Probably more so after one reads and understands the spec. But you might have an argument.

          1. Its right in the spec:

            “A rendered document is a printed document”

            the holes in a punch card qualify as much as anything else as “printed” as they denote data/instructions (words) unless we now say it only covers something “printed” by an ink process, or some other similar technique

    2. I should add that, as worded, this is anticipated by the MLOCR system used by the PO for years to optically scan mail, detect addresses/zipcodes (symbols) on mail (documents), and then route that letter, or print something on it (actions). I understand that as the attorney your job is to advocate for your client, but that also means thinking in broader terms to see if it is really in their best interests; Fish & Richardson is the firm here, and they clearly are aware of other more material art than that cited. Somewhere along the line there developed a disconnect between the prior art and the scope of the invention.

    3. that’s a 102/103 issue, which is “hard” for Examiners

      It’s relatively vastly more difficult because a recalcitrant applicant will play word games all day long and twice on Sundays. We’re talking about logic applied to information. There are no boundaries because there is no objective structure at the point of novelty. It’s just vapor. If I want the claim badly enough, I’ll just pay some “expert” $100K to argue that “one skilled in the art” would understand that this “document management system” or this “mapping” is whatever was not in the prior art. And we go on like that until the Examiner gives up or the defendant runs out of money.

      It’s a farce. And you know it, JNG. You know how to play the game at the lowest level and we all know that because Judge Patel outed you to the world.

  13. For all those “confused” patent attorneys out there, here’s how it works. This is quintessentially abstract baloney:

    receiving a sequence of symbols …;

    determining that the sequence of symbols includes a particular symbol .. that has been mapped to one or more actions [<—LOL Love the scrivening! Very deep stuff, this "mapping" business! LOLOLOL]

    selecting an action from the one or more actions; and

    transmitting an instruction …to perform the selected action.

    Receiving a signal with symbols and doing something in response (like giving an instruction to someone else to do something) is an ineligible abstraction. There is no “there” there other than information processing. Maybe you could add a step about “breathing air” and make it eligible (because, hey, “it’s a process” <— the most popular mindless zombie lawyer script; and breathing air is a tangible transformative step <— second most popular mindless zombie lawyer script).

    What Alice tells us — correctly — is that you need to recite something more than generic computer components to turn ineligible cr @p like this into patentable subject matter. And lo and behold (SHOCKING!) there is nothing more in the claim beyond conventional computer cr @p:

    A computer <—- LOL

    optically captured from a rendered document; <— ancient

    a document management system <— ancient (and — extra LOLs here — who cares what kind of a "system" it is? what possible patentable difference could that make? the computer doesn't care at all what kind of "system" is receiving the data).

    This is the kind of claim that would be bounced out of court in a 12(b)(6) in twenty seconds. But it should never even get that far. IPRs should be expanded to include eligibility attacks and this should go down in ten seconds.

    1. “a document management system <— ancient (and — extra LOLs here — who cares what kind of a "system" it is? what possible patentable difference could that make? the computer doesn't care at all what kind of "system" is receiving the data)."

      No, but the claimed method does. If you sent the message to an automated car wash, the method wouldn't work as intended.

      1. Mapping:

        “An operation that associates each element of a given set (the domain) with one or more elements of a second set (the range).”

        Sounds in mathematics, not technology.

        1. Sounds in mathematics, not technology.

          Sounds in applied math – the type of thing that exists throughout engineering.

          Do you really want to go down that road, Ned?

          1. This place here would be a good place to remind all that there are differences between:

            math (sometimes known as pure math),
            applied math (sometimes known as engineering), and
            MathS (sometimes known as the philosophy of math and applied math).

    2. “Receiving a signal with symbols and doing something in response (like giving an instruction to someone else to do something) is an ineligible abstraction.”

      It’s also improperly characterizing the claim the claim as directed to a “gist”, untethered from the actual language of the claim. If the claim was ‘1. A method, comprising: receiving a signal with symbols and doing something in response,’ you’d be correct. Instead, you’re disregarding how the test is applied. See McRO’s directive to “avoid oversimplifying the claims.”

      Similarly:
      “What Alice tells us — correctly — is that you need to recite something more than generic computer components to turn ineligible cr @p like this into patentable subject matter.”
      But what BASCOM tells us – correctly – is that software, even performed by “generic computer components,” can provide patentable subject matter. See Enfish’s statement that “Much of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes. We do not see in Bilski or Alice, or our cases, an exclusion to patenting this large field of technological progress.”

  14. Dennis, I know I am old fashioned and having retired a couple of years ago, I don’t have any direct knowledge of post-Alice prosecution, but for the life of me, I don’t see any gaping abstract idea problems. Could you elucidate?

    These are method claims, for heaven’s sake, and if you apply the reasoning in Alice to method claims, then ALL method claims are abstract.

    These claims appear to be well grounded, and if you modified the claim by eliminating the reference in the preamble to “method”, and then added “means for” in front of every step, you would not have a claim that violated Alice.

    Enlightenment would be appreciated from anyone except for Malcolm.

    1. I don’t see any gaping abstract idea problems

      Try pulling your head out of your a – – for a change.

      These are method claims, for heaven’s sake, and if you apply the reasoning in Alice to method claims, then ALL method claims are abstract.

      Oh lookie! Mr. Malpractice is in the house again. He doesn’t know how to read but he knows how to talk. It’s just that everything he says is wrong. He’s like a kindergartner who started practicing law in nursery school, learning the A, B, Cs at Big Jeans School of Eternal Whining.

      if you modified the claim by eliminating the reference in the preamble to “method”, and then added “means for” in front of every step, you would not have a claim that violated Alice.

      ROTFLMAO

      Wow. Just … wow. This is the kind of f@ke patent attorney who literally runs to the bank after taking your money. All the depth of a sidewalk stain after a heavy fog.

    2. CRP,

      I am not taking a position one way or another, but one argument would go something like this:

      The claim is directed to the idea of “selecting an action to perform based on a symbol, word, or phrase”. The claim disproportionately pre-empts use of this idea. The recitation in the claim basically boils down to “apply it” in a particular context, and does not provide any guarantee that the claim is anything more than a drafting effort designed to monopolize “selecting an action to perform based on a symbol, word, or phrase”.

      Again, I am not personally opining one way or another, but am just trying to be helpful in outlining a rationale under the current jurisprudence.

      1. That’s a terribly written “analysis” and it will only confuse the class of low-rent attorneys who are easily confused.

        You started out fine and then you just jumped to a conclusion (“The claim disproportionately pre-empts use of this idea”), which is more of a muddled policy statement than a conclusion about these particular claims.

        You identified the information-processing/logic abstraction correctly (there are a number of different ways to skin that cat). At that point, the question is: is there anything in the claim beyond the recitation of conventional computer components (and not just some scrivened description of some “new” black box, e.g., “a desymbolization control means”) or other prior art steps? If the answer is no, then the claim is ineligible. It’s crucial to remember that the abstraction itself could be incredibly specific. That’s why your statement about “pre-emption of this ]broadly stated] idea” is a red herring.

        Note the beauty of this: we don’t need to get into details about whether the “logic” is “new” or “non-obvious”, i.e., it doesn’t matter if the “instruction” is an instruction that was never articulated in the prior art before (i.e., “instruct the document management system to create a category of 21st century harpsichord music”). We don’t need experts battling before a jury about this kind of nonsense. That would be a huge waste of everyone’s time and money because such g@ r b@ge has absolutely nothing to do with “technology” and “progress” and everything to do with pure scrivening and monopolization for the sake of monopolization. Who pays for all this? Ordinary people, of course. Who benefits? Patent attorneys and the super-wealthy investor class. That’s it.

        1. MM,

          Without intending to be argumentative, I would suggest that oversimplifications can seem at first glance to be elegant, but that doesn’t necessarily validate them. Classical mechanics is more elegant than relativistic mechanics, but… yeah.

          You want to divorce the Mayo test from the underlying question it seeks to help answer. I decline to opine on what the ideal policy position would be, but suggest that under current Supreme Court jurisprudence pre-emption is the ultimate issue, not something that can be dismissed as wholly subsumed by a test that can be reduced to absurdity when applied out of context.

          Again, none of this is to disagree that there are real issues here that need to be addressed (and likely real policy questions that need to be answered), but I’m not sure that your framework for analysis has any answer for the reductio ad absurdum issue, or even any answer for Diehr, other than to possibly suggest that the Court got it wrong.

          These are very complex and interesting issues, and I am always happy to hear explication on them, and in particular on where I might be mistaken in my thinking or analysis. Often, discussion in these comments is useful or interesting, even if I don’t necessarily agree with some particular point.

          Sometimes, however, full explication is difficult outside of the context of carefully drafted legal briefs. It is unfortunate that Recognicorp was turned down. Hopefully another en banc petition re 101 will hit the Federal Circuit soon.

          Cheers!

        2. “At that point, the question is: is there anything in the claim beyond the recitation of conventional computer components (and not just some scrivened description of some “new” black box, e.g., “a desymbolization control means”) or other prior art steps? If the answer is no, then the claim is ineligible.”

          Since a 101 rejection doesn’t require searching for or identifying any “prior art steps,” aren’t you essentially admitting that they’re based on arbitrary gut-feelings about what’s in the art?

      2. Another way of saying that something preempts to the extent unacceptable is that one is claiming a principal in the abstract. The defining characteristic of either is the failure to limit the claim to new or improved apparatus, compositions or processes for carrying out the idea.

        Of course, a new combination of old elements that produces an effect previously unknown is patentable subject matter, but if the combination only does no more than what the separate elements did alone or in sequence, then there is no new or improved “manufacture.”

        From the above one can see that the Supreme Court (KSR, citing cases such as Anderson’s BlackRock) has ruled in two the 103 analysis the question of whether the claim is directed to a new or improved manufacture.

          1. Ned,

            You should be aware (primarily because I have told you) that one of the dozens or so terms that the Court had bandied about in the pre-1952 era was “principle of the invention” or “principle in the abstract” (along the lines of gist of the invention or just plain gist)

            The Court wasted its loaned power from Congress (to set the meaning of the term ‘invention” through the use of the t001 of common law evolution), and instead of coalescing a term into some definite meaning, instead merely took to the power as if they had a wax addiction. This all came to a head in the pre-1952 days when the Court itself self-described (in a rather unflattering manner) with the phrase: “The only valid patent is one that has not yet appeared before us.”

            As one of the few on these boards that shows any appreciation of history, your rather glaring lack of appreciation of THAT particular chapter of history is all the more condemnable (no, that is not “commendable”).

        1. a new combination of old elements that produces an effect previously unknown is patentable subject matter

          As a general statement, this is incorrect. Much depends on the nature of the “old elements” and the “effect”.

          For example, a “new” combination reciting an old kit with an old set of instructions (e.g., instructions from a different kit) may very well “produce an effect previously unknown” but it’s still an ineligible claim. Why? Because it protects the instructions (which are ineligible) in a prior art context. That’s quintessentially ineligible.

          And a warning: don’t try to invoke the “printed matter doctrine” and pretend that this is a 102/103 issue. That’s just moving the deck chairs around. It’s an eligibility issue and it always will be.

    3. I think in the end we’ll find out that being too high on the ladder of abstraction is what fails a claim under Alice. This claim is way up there.

        1. How high is too high?

          The point at which the language encompasses two distinct (i.e. non-equivalent) means.

          In other words, when one embodiment of the claim performs a non-substantially similar function, or performs a similar function in a non-substantially similar way, or yields a non-substantially similar result.

          If your claim is limited only to a novel functionality you’re only a third of the way there.

          1. How distinct is too distinct?

            The terms you use are themselves relative.

            Of course, this resolves to your basic problem with the ladders of abstraction and your wanting only two rungs on any ladder….

        2. “How high is too high?”

          I would suggest that a proper test should be whether the claim is directed to the result, rather than the method of achieving that result. Or in other words, did the inventor merely identify a problem to be solved and try to claim the solved result, or did the inventor actually come up with a way to get there and claim that.

          For example, the claimed invention here appears to be directed to identifying instructions in an OCR’d document and then automatically performing those instructions. Like writing “archive” at the top of a memo and scanning it, and having the computer recognize that it should be saved to long term storage, rather than that memo is about archiving or something. That would be pretty handy, I’d think.

          But the claim seems to be at the level of “wouldn’t it be great if a system could do this?” For example, the key steps here are: “determining that the sequence of symbols includes a particular symbol, word, or phrase that has been mapped to one or more actions” and “selecting an action from the one or more actions” but how that determination is made and how the selection is done are left as exercises for the reader.

          Now, maybe that’s spelled out in the specification, so we don’t have a enablement or written description problem, but I think that rather than 101 being conflated with 102/103, it really should be something closer to indefiniteness and 112: by vaguely claiming the result, rather than the solution, the claim fails to distinctly claim the subject matter of the invention.

          This type of analysis would be consistent with the current case law – getting rid of vague hand-wavy claims like Bilski and Alice, allowing the more specific ones in McRO and Enfish – and would also be a relatively easy to apply bright-line test.

          So, of course, it’ll never happen. :)

          1. Having skimmed through the patent, I suspect it does, in fact, have 112 problems. It lists a bunch of features of the system, but not how to accomplish or configure them.

            I find that subject matter ineligibility and lack of enablement really do go hand in hand, usually due to either a lazy or incompetent drafter who didn’t bother to or couldn’t understand the invention, so they instead merely described and claimed the end result. The patent ends up being little more than “I wish someone else would invent a system to do X.”

          2. The desired result was having a document processing system automatically perform an action based on a sequence appearing in a document.

            The inquiry at step one of Alice focuses on the claimed advance over the prior art. Since OCR and document processing systems capable of responding to instructions were known, the advance over the prior art was mapping a recognized sequence to an instruction for performing an action.

            The claim is not directed to a new or improved process of optical recognition or a new or improved document processing system. Rather, the claim is directed to “mapping a recognized sequence to an instruction for performing an action,” which can be performed in the human mind, with pencil and paper, and/or is analogous to a method of organizing activity such as stopping at a stop sign. Therefore, the claim is directed to an abstract idea and fails Alice step one.

            At Alice step two, the claim requires nothing more than conventional OCR and a generic document processing system responding to instructions, which are routine and conventional steps and do not amount to significantly more than the abstract idea itself.

            As in many other cases with claims found to be abstract, there was no new technology that needed to be created to perform the method. Once the inventor had the idea to map recognized words to document processing instructions, there was no “technological” problem to solve. To achieve the desire result, existing generic technical components were conventionally employed without any modification to their structure or existing functionality.

            1. The underlying fallacy of course comes to bear when one considers that ALL matter is likewise configured from three basic particles, with those particles “conventionally employed and without any modification to the structure of the particles or their existing functionality.

              Thus, the “logic” in use rules out ALL of the hard goods categories as ineligible for patenting.

    4. CRP said: “These are method claims, for heaven’s sake, and if you apply the reasoning in Alice to method claims, then ALL method claims are abstract.”

      This is very astute and something that a lot of interested parties have been grappling with. The Supreme Court itself noted the concern that the judicial exception could swallow the rule if applied too broadly. There are a couple of potential paths out of this quandary, but courts have yet to settle on one.

      I personally think that Supreme Court precedent itself may already offer a solution, and am hoping to eventually have time to more fully review the issue.

      1. CRP said: “These are method claims, for heaven’s sake, and if you apply the reasoning in Alice to method claims, then ALL method claims are abstract.”

        This is very astute

        Actually totally wrong.

        Man, this profession is taking a nose dive. What a f r i g g i ng j o ke.

        1. In Alice, the Court said: “We have described step two of this analysis as a search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'” Alice, slip op. at 7 (citing Mayo, slip op. at 3).

          Can you characterize the inventive concept as an ineligible concept? Can you characterize any step of a method claim as being directed to an abstract idea?

          If either is true, then down the rabbit hole we go…

          If not, why not?

          Again, I believe that there are a couple of potential paths out of this quandary, mostly focused on the fact that you have to recognize the context in which the test is to be used, but it’s a completely legitimate issue to raise, and it truly is an issue that I believe a lot of people have been grappling with.

          As for trying to articulate a path, I wish I had the time to dive through the issues and articulate my thoughts… but unfortunately I just don’t at the moment, and I think doing so requires more explication than can be cleanly fit into a comment on a blog post. In the medium term, I hope to be able to.

          1. As an aside, I do want to note that I am actually referring to a different (but likely related) quandary than the one I previously referenced.

          2. JCD, all you have to do is recognize that an inventive concept flows directly from the Nielsen case and from O’Reilly v. Morse. If you have not read the Nielsen case, I urge you to do so.

            What these cases are talking about is whether the claim is directed to a new or improved manufacture or whether they are directed to a principal in the abstract. In every instance a court found that a claim was sufficient, it was directed to some machine or process that was improved, and they said that was an inventive application. An improvement in something otherwise patentable – like a machine, manufacture, composition or process that is otherwise eligible is what the courts are looking for.

            For example, take a look at Anderson’s BlackRock. The court found no improvement in the radiant-heat burner despite having it located on a truck. Without that improvement, the court observed that there was nothing “new.” “Absent here is the element “new.” For as we have said, the combination patent added nothing to the inherent characteristics or function of the radiant-heat burner.” Id. at n. 4.

            Also compare the discussion of Funk Brothers in Chakrabarty – where the court observed that the bacteria in Funk Brothers were not modified in their functionality in any respect. In other words, they were not a new or improved manufacture.

            1. Ned,

              Thanks for the comments. I always love seeing your perspective because you have a great grasp and recall of case law, and the context surrounding it, that is rarely cited or discussed.

              I’ve recently been reviewing many old cases and have run across and read all of the cases you mentioned except for Anderson’s BlackRock, which I will probably look into when I have a chance. I also ran across and read Prof. Lefstin’s Florida Law Review article on inventive application which did a great job tracing through some other English case law that I probably never would have found.

              Your comments and analysis strike me as cogent and useful, but I’m not sure that I’ve spent enough time thinking through the issues to have anything intelligent to say at this time.

              The obvious question that hangs in the air over any discussion of Neilson’s import today is whether a novel application is sufficient to find an inventive application (of a principle), or whether something more is required. If something more is required, does it require an inventive step or non-obvious application, or can something more than novel but less than non-obvious qualify as an inventive application?

              Because Neilson was decided in an era in which novelty was sufficient for patentability, it is perfectly possible to argue that it has nothing to say about whether an inventive step is required for inventive application. However, it does seem relevant that subsequent English law has not incorporated an inventive step requirement, and it similarly seems relevant that Morse was decided three years after Hotchkiss.

              Morse is the case that recently got me looking into all of this older case law, and I am continuing to work through all of the relevant Supreme Court precedent and trying to craft some sort of coherent framework for myself. I don’t pretend to have any overall answers, but I think there is a real problem with how 101 analysis has been developing in lower courts and at the PTO, and I believe it often departs from existing Supreme Court precedent in clearly identifiable ways.

              The biggest and clearest sign of this is probably the divorcing of the Mayo test from the rationale of pre-emption which justifies the 101 exception. I believe this is a great string to pull to start to show that the Mayo test is frequently being used in a warped way which results in a naked conclusion. I have a lot of different threads that I’m hoping to be able to pull together into something coherent, and I hope to eventually have something intelligent to say in this regard, but I have a lot more thinking to do before I can articulate anything meaningful.

              JCD

              1. A bit of advice:

                Do NOT treat the Supreme Court as “Surpreme.”

                By that, realize that the Supreme Court was not of “one mind” and that there were players who were going to do whatever they wanted to do regardless of ANYTHING (think Douglass, for example), while others would “warn” of wax noses – and then immediately go and mash the same (think Stevens).

                Then also remember that in the Benson case, therein was dicta a plenty that was (rightfully) rejected by a certain member of a lower court that just happened to know FAR MORE about the Act of 1952 than any Justice of the Supreme Court could ever hope to know.

                Finally, keep in mind that Ned’s “accuracy” in recalling historical items is decidedly decrepit – as I have pointed out numerous historical facts that he never seems to want to grasp and incorporate into his agenda.

          3. Can you characterize the inventive concept as an ineligible concept? Can you characterize any step of a method claim as being directed to an abstract idea?

            If the step results in a new, non-obvious objective describable and discernable physical change in matter then, no, I can’t say that “it’s just an abstract idea”, at least not with a straight face.

            But then I’m not a maximalist who will do and say literally anything if it causes me self-pleasure.

            I believe that there are a couple of potential paths out of this quandary, mostly focused on the fact that you have to recognize the context in which the test is to be used

            Word salad. Try harder, man.

            it truly is an issue that I believe a lot of people have been grappling with.

            Oh, there’s definitely some grappling going on by a lot of people. On the other hand, there’s quite a few of us who spent a lot of time thinking about this stuff who don’t find it all that confusing. Of course, you have to actually want to understand what’s going on. And the worst thing to do is to start from a conclusion (“software must be eligible!) and work backwards from there.

        1. As I have previously noted (and supplied) to Malcolm’s version*** of this banal advice, the use of terms sounding in function (outside of single means claims specifically, and enjoying Prof. Crouch’s own coined term of Vast Midle Ground), is that claim format is an optional thing – and you cannot make it NON-OPTIONAL by any type of “advice” or judicial fiat.

          ***recall that I offered to Malcolm that he could take any of his “bah-software-functional” diatribes and convert any such claim into “objective physical structure of a computer readable medium that would span 10’s or 100’s of pages for a claim.

          The plain reality of ALL of this is that the language used in claims is art specific and FOR the computer arts, the language has – to key on one of my favorite terms – seen anthropomorphication.

          This too is why I have made repeated suggestions to Prof. Crouch (or any of his academic friends) to write an expose of the rise, fall, and current attempted re-animating (zombification) of the Mental Steps Doctrine.

          The only way forward – with any sense of inte11ectual honesty – is to recognize the points that I have put (and continue to put) on the table of discussion.

    5. CRP, from the inventive application point of view, Alice step two, ask yourself whether the claim provides an improved machine, manufacture, composition or a process that otherwise would pass the MOT. The closest has to be an improved machine.

      The process of reading symbols and then converting them into recommended actions are set forth in such a high level of abstraction that they do not set forth specific steps, or machines different from conventional machines that are well capable of doing this. Therefore they effectively cover the normal use of the prior art machines and processes as opposed to anything sufficient sufficient to transform the idea into an inventive application. And of course, the use of symbols to trigger specific actions as well known from ancient times.

      The case I would refer you to understand this better would be the Rubber-Tip pencil case, the so-called idea case, where the claim essentially called for a piece of rubber for a pencil tip without any specific way of attaching the rubber piece to the pencil tip where it was known that rubber can easily attach to anything and where it was further known that rubber was a good eraser. Thus the claim covered the idea, as opposed to any specific structures, that could attach the rubber to the pencil tip.

      In the Nielsen case, the inventor had determined that the use of hot air in the blast furnace greatly improved efficiency of smelting iron. The inventor described the use of a heated box between the bellows and the furnace, but said that the form and shape of the box was unimportant, and that any form adapted to the purpose was intended to be covered. As it turned out, here box itself would not work and others had to figure out how to make it work – for example by providing numbers of small diameter tubes heated by fire. The Court of Appeals was very concerned that the inventor was attempting to claim a principal in the abstract, but in the end held that he had done enough by specifying the heated box between the bellows and the furnace and that he was not attempting to claim at the level of an idea.

      I hope you can see how that case and apply here.

      1. held that he had done enough

        It appears Ned that your repeated use of this case goes in the opposite direction of what you want.

        but said that the form and shape of the box was unimportant, and that any form adapted to the purpose was intended to be covered.

        adapted to the purpose…..

    6. CRP:

      During your working days, did you ever give your secretary a note that said “FEDEX this document to Mr. Smith at 159 Washington St.?”

      Did she ever read that note, using her eyes (receiving a sequence of symbols that have been optically captured from a rendered document)”

      Did she ever, after reading that note, determine that “FEDEX this document” or fax or whatever other instruction you wrote corresponds to an action item? (determining that the sequence of symbols includes a particular symbol, word, or phrase that has been mapped to one or more actions;CRP:

      During your working days, did you ever give your secretary a note that said “FEDX this document to Mr. Smith at 159 Washington St.?”

      Did she ever read that note, using her eyes (receiving a sequence of symbols that have been optically captured from a rendered document);
      Did she ever, after reading that note, determine that “FEDEX this document” or fax or whatever other instruction you wrote corresponds to an action item? determining that the sequence of symbols includes a particular symbol, word, or phrase that has been mapped to one or more actions; selecting an action from the one or more actions);

      Then did she ever take the document to FEDEX and tell them to send it to Mr. Smith? (transmitting an instruction to a document management system to perform the selected action);

      Taking a process that secretaries (and really everyone) have been doing for years and adding hte limitation that it is “computer implemented” = abstract.

      1. Anthropomorphication is a wonderful word, and the context of claims really really really should pay more heed to that word.

  15. Since it comes up repeatedly, I’ll highlight the issue again: an entity should not be able to amass vast numbers of junky patents whose validity rests on legal theories that the same entity has repeatedly trashed when confronted with the patents of others.

    Pick your side and live with the consequences, for better or worse. Statements made about the law or the facts in Federal Court or before the PTO are admissions for all purposes.

  16. my assumption has always been that the bigger the corporation and/or law firm, the less likely an application is to be scrutinized. I would not be surprised if companies like google receive special treatment/presumptions at the PTO.

    It would be interesting to see someone look at the relative allowance rates based on company revenue and/or firm size.

    1. I would not be surprised if companies like google receive special treatment/presumptions at the PTO.

      LOL

      It literally took just a few hours for one of the “I DONT UNDERSTAND ELIGIBILITY” maximalists to show up here and turn this routine story about a junky logic patent into a story about some entity getting “special treatment.” Too funny.

      News flash: this cr @p is being churned out by the PTO every week, and filed upon by the thousands every day. Yes, Google has tons of junk patents. So does IBM. So does Apple. So does Facebook. And then there’s a zillion equally junky Sillycon Bro “app” patents out there. These guys create the signal, and the patent tr 0lls create the noise.

    2. Just as an FYI, a parent application with similarly broad claims was allowed in 2009 well before the assignment to Google was executed in 2011.

      The applicant was able to find a path through 101 under Bilski, but even in quickly perusing the file history of that parent application it seems striking that a more comprehensive obviousness rejection was not articulated under the post-KSR framework.

      I don’t like to comment on individual examiners, but I note that the art unit this application was assigned to appears to have a 91.7% allowance rate before the first final rejection, which is… high.

      1. Side note, pet peeve – “peruse,” while sounding like “browse,” has a different meaning. “Peruse” means to carefully read through, not quickly skim.

        1. Well noted! The phrase “quickly peruse” is something of an oxymoron which I probably should have avoided. I was intending to convey a quick but careful review, but probably should have gone with a different choice of words. Thanks!

    3. As an Examiner, I don’t care who the applicant or assignee is. It is a search term that I use, one of many, in formulating different search strategies. Apple, Google, John Doe from Iowa, they all get the same examination from me.

      If there are art units who are given instruction to treat applicants differently, that would be a HUGE problem, but I haven’t heard of any.

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