From today’s Patent Trial and Appeal Board decision:
“We are aware of no controlling authority that requires the Office to provide factual evidence to support a finding that a claim is directed to an abstract idea.”
Ex parte Johnson, Appeal 2016-004623 (January 18, 2018).
The ex parte appeal involves IBM-owned patent application No. 13/191,583 with a pending claim 1 that itself is quite an essay at 900 words. (NYT letters to the editor should be <175 words). The PTAB affirmed the examiner’s rejection of the claims as effectively claiming the abstract idea of “managing customer discounts following the receiving of a cancellation request by a customer.”
= = = = =
Claim 1:
A computer system comprising:
at least one server computer, wherein the at least one server computer includes at least one program stored thereon,
said at least one program being capable of performing the following steps:
[1] displaying a first web page in a web-based interface linked to a web portal in an Internet, to an Internet visitor currently logged into the web portal by a web browser, wherein the displayed first web page comprises:
(i) a list of servers providing respectively associated Internet-based services currently available to the Internet visitor from an Internet service provider that provides the servers and the respectively associated Internet based services to the Internet visitor via the web-based interface and
(ii) a clickable cancellation link for each listed server, and wherein the web-based interface is on a computer screen surface;
[2] receiving a first click by the Internet visitor in the first web page, on a first cancellation link for a first server selected from the list of servers on the web-based user interface, wherein the received first click communicates that a first Internet-based service associated with the selected first server is being cancelled by the Internet visitor;
[3] in response to said receiving the first click on the first cancellation link, automatically displaying to the Internet visitor, on the web-based user interface, a second web page that includes a service cancel link and a list of selectable reasons for cancelling the first Internet-based service associated with the selected first server;
[4] after said displaying the second web page, receiving a second click on the service cancel link, by the Internet visitor in the second web page, and further receiving one or more reasons for cancelling the first Internet-based service associated with the selected first server, said one or more reasons having been selected by the Internet visitor from the list of selectable reasons on the second web page;
[5] in response to said receiving the second click on the service cancel link:
(i) automatically generating a service cancellation request for cancelling the first Internet-based service associated with the selected first server,
(ii) automatically creating a cancellation request record in a table of a cancellation request database of the Internet service provider, wherein the cancellation request record comprises a status of the service cancellation request, and
(iii) automatically generating a ticket for tracking the service cancellation request;
[6] storing a ticket record in a table of a ticket database of the Internet service provider, wherein the ticket record includes ticket information on content ofthe ticket and further includes a status of the ticket, and wherein the cancellation request record includes a foreign key that points to the ticket;
[7] generating a cross reference lookup table that links the ticket to the first Internet-based service associated with the selected first server, wherein a service database of the Internet service provider comprises information specific to the first Internet-based service associated with the selected first server;
[8] linking the first Internet-based service associated with the selected first server to the cancellation request record;
[9] creating a cancellation request item record in a table of a cancellation request items database of the Internet service provider, wherein the cancellation request item record comprises a status of a billing item associated with the first Internet-based service associated with the selected first server and further comprises a requested cancellation date for cancelling the first Internet-based service associated with the selected first server, and wherein the billing item includes billing information pertaining to the first Internet-based service associated with the selected first server, wherein the cancellation request item record comprises a first foreign key and a second foreign key, wherein the first foreign key points to the cancellation request record, wherein the second foreign key points to the billing item, wherein records in the cancellation request item database are used to link to records in a billing item database of the Internet service provider, and wherein the records in the billing item database comprise a billing item record;
[10] moving the ticket to a service queue;
[11] after said moving the ticket to the service queue, displaying to the Internet visitor, on the web-based user interface, a third web page that presents to the Internet visitor a discount offer of a discount amount for the first Internet-based service associated with the selected first server;
[12] after said displaying the third web page, receiving a third click by the Internet visitor in the third web page denoting the Internet visitor’s acceptance of the discount offer and in response, displaying in another web-based interface on another computer screen surface, to a customer service representative assigned to the ticket, information pertaining to the discount amount accepted by the Internet visitor;
[13] after said displaying, in the other web-based interface, the information pertaining to the discount amount, receiving an entry, in the other web-based interface from the customer service representative, data comprising the discount amount and receiving a click by the customer service representative of a checkbox in the other web-based interface which triggers updating the ticket with the discount amount and generating an invoice, reflecting the discount amount, for the Internet-based service; and
[14] after said updating the ticket with the discount amount and said generating the invoice, closing the ticket.
The reality is that it is nonsensical to ask if a claim is abstract. All engineers/scientist are taught (I have linked to the beginning EE class at MIT before) about the ladders of abstraction. The question is whether going up and down the ladders of abstraction are enabled by a person of ordinary skill in view of the specification.
Just unbelievably ignorant and ridiculous from the one court that is supposed to understand science. Thanks Obama.
The claim includes a server. I can touch that. There’s nothing abstract here. Anyone who says otherwise, including a supreme court judge, is lying.
Kill it under 102 or 103 or 112. But this a tangible article of manufacture and as eligible for patenting as a screwdriver or gauze bandage or rubber tire or wheelbarrow. And to the extent SCOTUS says otherwise, SCOTUS is full of @#$%.
And shame on the PTAB for asserting it doesn’t need to back up its findings with facts. But as we saw last week, the PTAB has no shame.
“The claim includes a server. I can touch that. There’s nothing abstract here. Anyone who says otherwise, including a supreme court judge, is lying.”
Lol.
Ben, please do not constantly post things like this. There is no content. It is a jeer post.
Constantly? Try to find one other such post from me in the last 3 months.
The fact of the matter is that calling supreme court justices liars because one is incapable of nuance is laughable.
“because one is incapable of nuance
is laughable”
Utter B$.
One does not need nuance to call a spade a spade.
That you think the situation laughable – and want to defend it so –
says more about you than even your initial post.
Again, Ben, that is a jeer post. There is no substance just a straw man of my arguments and a jeer. You seem to want to engage in discussion with me. If so, then please try to put some substance in your posts.
Atari, I am sure you are joking here. One, in this day and age, cannot be so …
No joke, Ned. This is just one more example of the @#$% that Alice has wrought.
We tell our clients who are trying to procure patents that it’s a crapshoot, because no lower court judge is willing to come right out and say that the emperor isn’t wearing any clothes, i.e. that Alice is b.s., and ignore SCTOUS, and therefore the best our patent-procuring clients can hope for is a judge who cleverly pretends to follow the Alice test yet concludes that the invention is not abstract. But in no rational world is a tangible item declared “abstract”. The only places where things like that get said with a straight face are Communist Russia, Orwell’s 1984 and the like.
atari man: I have heard the most respected academics say exactly what you are saying.
Only the propagandists like Lemley say any different.
Again, though, I see that people are not discussing the ladders of abstraction.
All engineers are taught to think in abstractions and to enable going up and down the ladders of abstraction.
But, of course, Obama appointed a bunch of non-science judges to the one science court in the country so they wouldn’t know about this.
Atari, what is so hard with telling your clients that the invention must be a new or improved machine, manufacture, composition or process and that just adding in conventional machines, etc., to a claim directed to otherwise nonstatutory subject matter will not save the claim?
What are your feelings about “just adding in conventional Protons, Neutrons, and Electrons?”
What are your “I>feelings about the FACT that the invention is the claim as a whole, and not some dissected and parsed out section of the claim, to which the Supreme Hokiness may decide (quite outside of the Congressional directive that it be the inventor that decides the invention) what is really being “directed to”…?
You keep on acting as if Congress did not make a “new and improved” law in 1952.
There’s no difficulty in *saying* that. Just as there’s no difficulty in *saying* that the moon is made of cheese or that there’s something called phlogiston or that black is white. People can vocalize (and write) many things that aren’t true or illogical. The fact that we vocalize or write them doesn’t make them true or logical.
Unless you are Orwell’s Big Brother, there is nothing true OR logical in calling a server abstract. If you can touch it, it’s not abstract. Now move on to analysis under 102, 103 and 112.
Atari, well the Bilski claims were not abstract in the sense that they were very detailed down to the exact equations in the dependent claims. Nevertheless, they were declared abstract.
This is what you have to understand: The Supreme Court is using the term “abstract” to cover anything, no matter how detailed, that is not directed to statutory subject matter. It is also using the term to describe claims to otherwise statutory subject matter claimed at the level of an idea.
I like the circular reasoning, Ned:
It’s abstract because it’s directed to non-statutory subject matter.
It’s directed to non-statutory subject matter because it’s abstract.
Repeat ad infinitum.
Thank you for making my point for me: SCOTUS is full of @#$%.
“Gist”
“Abstract”
“Directed to”
“Significantly more”
words of stolen authority – the score board is broken people – stop pointing to a broken scoreboard.
Anyone else see the parallel between (the undefined) “significantly more” and the rebuked Flash of Genius ‘scrivinings’ from the Court?
link to ipwire.com
link to bbc.com
So, do you lot think this should be patent eligible?
link to youtube.com
At the highest (non-patent law) level, what is or is not an abstract idea is a philosophical question.
At a practical real world (but still non-patent law level) level, an abstract idea is a concept not embodied in a physical object.
At the patent law level, what is or is not an abstract idea is an (infamously) undefined question. A legal conclusion that a patent claim is directed to an abstract idea should be based on a definite and discernible standard. While the legal conclusion need not depend on facts, it should be based on some principle.
The fact that most patent claims include some physical component, it is clear that there needs to be a standard for deciding whether or not those physical elements fail to keep the claim from being directed to an abstract idea. Regardless of whether facts or evidence are needed, this fundamental issue still needs to be explicated in the law of patent eligibility.
“should be based on a definite and discernible standard”
and
“ is an (infamously) undefined question”
(you also left our other “infamously undefined” items such as “directed to” and “significantly more”)
leads the legal mind (one willing to appreciate the rule of law) to:
Void for Vagueness
If we are going to permit the judicial branch to stick their fingers into the nose of wax of 101, then what they write the law to be must also pass requirements as they may apply to law written by the legislative branch.
Bob, get a load of this- I’d be interested in your critique.
link to papers.ssrn.com
The “standard” is that the physical components need to be new and non obvious and distinguished in the claim from the prior art on the basis of their objective physical structure, not their allegedly new functions.
This isn’t difficult.
It is apparently very difficult for you to not prevaricate and pretend that an optional claim format is somehow more than just an option.
anon, it is about time that you grew up and faced facts. The
invention (that portion of the claim that is directed to something new)
must be in a new or improved machine, etc.
This is what Rich and crew never conceded. They relied on nominalism, where if the claim were nominally directed to a process, machine, etc., 101 was satisfied. That proposition was firmly rejected in Flook and Flook was a long time ago.
Grow up ? Coming from a rather NOT grown up view (misplaced attack on Judge Rich again).
Please stop channeling Malcolm and his Accuse Others meme.
anon, you (and many like you) remain wedded to nominalism and other completely lost causes. It is about time you stopped whining.
Wanting the law to be applied – as that law was written by Congress – is hardly the thing that calls for you to tell anyone to “stop whining.”
“ remain wedded to nominalism and other completely lost causes”
What exactly do you mean by “Nominalism?”
You bandy that word about like it automatiaclaly means something b a d or downright e v i l.
All that THAT word is, is a an empty argument by insinuation, and argument by implication that neither is accurate or sufficient as to the topic of 101.
I have always put forward that the law of 101 has two factors: the statutory categories and the requirement of utility under the Useful Arts.
Any attempt by you to paint my views differently – to slander Judge Rich (who of course knew more about the law of 101 as passed by Congress than any other jurist bar none – in important part because he helped write that law – is an attempt that ONLY impugns YOU Ned.
Come man – STOP your inte11ectual DIShonesty.
Ned, your views are just strange. There is structure recited in a claim. Deal with that structure. You want to somehow create all these bizarre abstractions in your head to interpret the structure and exclude parts of the structure. All of this is medieval and unnecessary.
Just deal with the structure.
Night, so long as you continue to be wedded to the proposition that one can sprinkle a claim to non-statutory subject matter with old and very conventional items like generic computers, and CD-ROMs, and somehow pass 101, you will continue to not understand the issue.
Who simply understand what I am talking about consider a claim to new music on a CD-ROM.
The “issue” Ned is NOT the issue that you pretend it to be.
The issue is that the Supreme Court is operating a broken score board and has absconded with the Legislative Branch authority to write statutory law that is patent law.
Your (well noted FAIL) to try to ploy a NON-Useful Arts example already is taken into account by the exceptions to the judicial doctrine of printed matter.
THIS has only been put to you nigh countless times now, and it is ONLY your inte11ectual DIShonesty that sees you yet again attempting an internet-style shoutdown of ignoring the counterpoints put to you.
Ned, R. Stern used the music all the time. But, the music does not add functionality to the music player.
I think I even got R. Stern to tacitly accept the difference.
Night Writer,
There is nothing there to even “tacitly accept” – other than a s l a p in the face to stop prevaricating and dissembling upon an item that is KNOWN to be outside of patent law.
It is indeed sad when inte11ectual honesty is so lacking.
I agree anon. It is an anti-patent judicial activist position.
I don’t think this would have any legs if it weren’t for the ignorance of the judges on the CAFC and the justices on the SCOTUS.
Night, when software improves the functionality of a computer, the claim transitions into the realm of eligibility.
Ned,
All you need is the proper two prongs of 101 (statutory class and utility) and the doctrine of inherency.
All else is witch-work.
How about a scenario where in the 1800, an applicant files an application claiming a caboose, a plurality of wagons connected to the caboose, at least one of the plurality of wagons containing a crate, the crate containing several dolls having a head mode of porcelain or potter clay, and a body made of jute, wherein the head of one of the dolls is broken? All of these limitations are objective physical structures. However, I think this claim would not pass the Alice test.
My point is that the Alice test does not require physical components to be recited.
I think this claim would not pass the Alice test.
Where does it fail?
My point is that the Alice test does not require physical components to be recited.
Ultimately, the Constitution requires it because if you’re not describing a new material in material terms, then you’re describing an abstraction, like logic or information. And guess what? You can’t “own” such things without impinging on the fundamental rights of others. That’s the ultimate argument against junk like what was being claimed in Alice. But I don’t even need to go that far because Congress have never suggested that you can protect logic or information with patents. So any reading of the statute that permits that is simply wrong. Congress can’t achieve such a radical diminishment in the rights of private citizens without some debate and public acknowledgment of what they’re doing.
“That’s the ultimate argument ”
Your “ultimate argument” does not reach.
Software is not logic.
Can you copyright logic?
You continue to ploy your misperceptions and masquerade of feelings while not being inte11ectually honest about what software is.
I was sloppy.
I meant to say that the Alice test is not about requiring a recitation of tangible objects at the point of novelty.
That tangible object requirement is in 3 of the 4 categories recited in the statute. Of course, manufactures, machines and compositions of matter are tangible objects, and claims to these categories recite limitations of tangible objects. And even for claims to the methods category, they must recite limitations of actions happening in the real word.
The Alice test is about reciting a design choice in sufficiently specific terms. The Federal Circuit seems fine if the claimed design choice is a specific rule to create animated movies for example.
“ in sufficiently specific terms.”
That is not a part of 101.
That is a part of 112.
Pika, you must appreciate that mere recitation of machines, etc., is not enough, neither is being specific, if specifying that which is known is what you are doing.
The
INVENTION
has to be in the machine, etc.
That which is new in the claim has be to within the four classes.
Again, Ned, you act as if 1952 never happened.
What did CONGRESS do that year – especially to the point of your “INVENTION” and the choice to use “obviousness” in its place?
An honest answer please – if you can.
Anon, as Federico pointed out in his commentaries, 103 is about novelty – and intends to capture the law of the Supreme Court prior to 1952 of how to deal with claimed subject matter not identically disclosed in the prior art. It is assumed of course, that the claimed subject matter is otherwise patentable subject matter.
Of course, your esteemed GS Rich, together with many in the patent bar then and today, tried to assert that 103 was also about patentable subject matter. Just look at the way Rich handled the discussion of the business method exception in State Street Bank for an example of what I mean here. He derided the business method exception as something to do with a requirement for “invention,” when the cases themselves clearly said that the issue was patentable subject matter, not invention.
The guy was a piece of work and you know it.
You CLEARLY omit the fact that Congress rose up and acted against a Supreme Court that had clearly gone anti-patent.
I have provided to you the Cornell website link that discusses the background to 103 and the FACT that Congress thought that the Court had drifted too far.
Your “but it was only codification” position is ethically bankrupt.
And it was Congress (NOT RICH) that decided AGAINST “invention” as you are attempting to use that term and redirected patent law by instead settling on obviousness in 1952.
You omit this fact from your “reasoning” even as it has been pointed out to you that doing is unethical.
You are the one that has no shame.
anon, 103 only talks about prior art and obviousness, not about eligible subject matter. It is you and Rich that are ignoring the issue of whether that what is new is eligible in the first place.
Absolutely false Ned.
Why do you continue to NOT read what I say, and then claim that I say something other than what I say?
That is inte11ectual dishonesty.
Two parts to 101:
Utility (of the Useful Arts variety, as opposed to the Fine Arts)
Belonging – yes, even nominally – to a statutory category.
101 is meant to be a wide open welcoming gate.
Stop trying to co-opt that gate into an anti-patent mechanism.
Ned, I don’t think that your position is compatible with some of the recent Supreme Court decisions. The Supreme Court has said that reciting a machine or a process (or other statutory category) that implement non-statutory subject matter at a high level of generality is not good enough for conferring eligibility (I believe it was Flook, but you find the wording “sufficiently applied” in several other opinions). Once there are sufficient limitations expressing engineering design choices in the claim, the analysis goes on with obviousness of the claim as a whole (I believe it was made clear in Diehr). Looking at the claims in Diehr, specifying where the temperature sensor was positioned, the type of sensor used, and how frequently the Ahrrenius equation was used to determined that the rubber was cured lead the Court to conclude that the claim recited enough specific feature to be eligible.
That does not mean that I think the IBM claim is eligible. The claimed computer system is only required to comprise a server and a particular program stored on the server, wherein the particular program automatizes a marketing strategy. The IBM claim looks close enough to the claim in Bilski to say that the limitations recited in the IBM claim are too general to describe a computer system eligible for patent protection.
Pika, multiplying details about the prior art does not add anything. Consider Alice — lots of details about the computer systems, all generic and old.
In the end, the invention must be directed to a new or improved machine and not simply to an old machine used to do something nonstatutory but that is otherwise inventive.
“multiplying details about the prior art” is ALREADY HANDLED under 102/103.
Stop kicking dust Ned.
“and not simply to an old machine used to do something nonstatutory but that is otherwise inventive.”
What does “not doing something nonstatutory” even mean to you Ned?
Let’s see you appreciate the full meaning of what Congress did in 1952 in your answer, and have you stay away from your canard of making the process category into a mere handmaiden of the hard goods categories. See 35 USC 100(b).
Also, what do you think of: link to patentdocs.typepad.com
Mean to me, anon? I have been quoting the statute endlessly for quite a while. I also have traced its origins to the State of Monopolies. The 101 classes are intended to encompass the SoM plus the case law as it stood as of 1793. Thus “the sole working or making of any manner of new manufactures,” which included processes for making new things, and machines and compositions. It certain did not include mathematics, business methods, music, works of authorship, art, etc.
Today is no different fro 1793.
Your inclusion of business methods is not proper.
Such are very often as technical as anything that you might offer to fit a definition of the word “technological” – even if – and we do not – have a “technological arts” test in US patent jurisprudence.
Long has your Windmill of anti-business method colored FALSELY your perceptions of 101. Today is no different.
Bob, while I agree that the ordinary meaning of abstract essentially is a disembodied idea, within the patent law it has come to mean a claim to an invention that is not a new or improved machine, etc.
Now your last paragraph suggests that the courts are not already operating on the principal that they are searching for a new or improved machine, etc., in the claim as opposed to reciting the use of old machines, etc., where the invention is in nonstatutory subject matter. To illustrate a simple example, new music played on a conventional player.
It is a wonder to me at this late stage in 101 analysis that the average patent attorney does not yet understand these basic principles.
What the courts have done is implement Hotel Security without saying that they are doing so. The mere recital of conventional means in a claim to otherwise nonstatutory subject matter is not enough. In fact this principle was well established in Flook. It is not a new idea at all.
The mere recital of conventional means in a claim to otherwise nonstatutory subject matter is not enough. In fact this principle was well established in Flook. It is not a new idea at all.
Exactly.
Mayo is not exactly a “new” case anymore, either. And it’s not going anywhere. Either is Alice. They all stand for the same principle, which is a principle applied (to some degree,using different language) by every credible patent system on the planet. That’s never going to change.
please pardon potential (re)peat post:
“What the courts have done is implement Hotel Security without saying that they are doing so”
Windmill H o !
Yet again Ned attempts to pl0y that which has been rebuked by several.
The internet style sh0ut-d0wn continues.
“it is clear that there needs to be a standard for deciding whether or not those physical elements fail to keep the claim from being directed to”
There needs to be a clear understanding of what “directed to” means (including exactly which entity and how an invention is classified as “directed to.”)
Oh wait – Congress has already provided which entity gets to define what the invention is “directed to” – and it is NOT the Court (or courts, or even the administrative agency of the Executive branch).
See 35 USC 112 (b): CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The real issue here is for how long will We (the Royal We) pretend that the score board is not broken?
“Regardless of whether facts or evidence are needed,”
No. Most definitely not “regardless.” EVEN IF*** we allow Article III courts to mess around with statutory law with the use of common law techniques, the Executive branch administrative agency of the USPTO is NOT ENDOWED with such authority and MUST comply with the APA (as well as its own rules) when it comes to providing facts and evidence. To think otherwise is to invite disaster of the worst kind: a branch of the government that consolidates the power of the executive, the legislative and the judicial.
*** I do NOT relinquish the fact of impropriety of even Article III courts messing around with Common Law power in situations that our Constitution has not permitted.
“NYT letters to the editor should be <175 words"
I was unaware that correspondents to the NYT are required to comply with 35 USC 112.
The number of words in the claim is completely irrelevant to any of the issues at stake here. If it were simply a matter of counting words, anything could be rendered patent-eligible simply on the basis of verbosity. Conversely, a patentable invention can and should be claimed as concisely as possible, whether that requires fewer than 175 words, or more than 900.
Never heard of the pencil test? This claim should have passed the pencil test, and should have been allowed. Instead, it was appealed to the Patent Attorney Refugees from Biglaw Comittee and they too ignored the pencil test. Appeal!
The “pencil test”?
Lol
Sure. Back in the days of the concrete, tangible, and useful result, claims were often allowed by examiners so long as they were amended to be longer than the length of a pencil lying from preamble to period. Now they have all those fancy guidelines and form 101 rejections with circular reasoning…and no pencils.
claims were often allowed by examiners so long as they were amended to be longer than the length of a pencil
Sure, that’s “fair.”
LOL
Any of you stakeholders hear anything about whether the PTO will be authorized to use its funding reserves during a shutdown?
You’re an examiner, aren’t you Ben?
Yes, and?
Let me guess 10 years of experience and a primary but not a SPE.
And not an attorney.