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):
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.
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.
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.
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.
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.
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?
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.
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.
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.
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.
Dennis – why are all my posts to this thread going to moderation?
Hey Les – There are a bunch of automated “smart” filters. I do not actually know how they work. I think Anon may have them all figured out.
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…
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
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…
The engineers are the ones getting around the filters lol
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?)
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?)
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.
I think that you need a special subway token for that…
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).
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?
For what it’s worth, the Ask Alice website tool recently highlighted on Patently-O analyzed the claim as ELIGIBLE.
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…?
😉
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.
“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.
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.
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.
“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.
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.
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?
“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.
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.)
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.
anti-patent arguments
LOL
Totally different from pro-patent arguments, which are the most awesome flavor ever.
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.
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.
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.
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.
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
The guy who came up with the idea of disappearing messages passed away thousands of years ago.
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.
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.”
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.
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.
What are you amazed by? Do you think its been done before? Do you think the claims are not supported by the specification?
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.
As I’ve said before. MM makes a lot of snide comments, but rarely answers a question. No matter how simple.
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.
FAIL. Not a 101 argument. At best a 103.
Try to keep up.
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.
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.
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?
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.
“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.
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.
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.
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?
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).
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.
Incidentally, the new “Alice-inator” site agrees that the claim passes 101:
link to alice.cebollita.org:8000
Pretty cool tool set up by this guy: link to alice.cebollita.org
Probably set up by GOOG tho lol
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.
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).
“receiving a sequence of symbols that have been optically captured from a rendered document”
Have you never scanned anything before?
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?
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.
” 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.).
there’s no “capture device” necessary; just optically captured data (symbols)