by Dennis Crouch
The USPTO has released pair of examiner guidance documents for (1) examination of patent eligibility and (2) examination for definiteness of functional claim limitations (with a focus on software patents).
- 2019 Eligibility Guidance focusing Primarily but Not Exclusively on Abstract Idea analysis
- 2019 Definiteness Guidance for Functional Limitations in Software Patents
Although these guides do not have the force of law, they are quite important because they direct the bureaucratic process — telling examiners how to examine patent applications for these issues. Examiner performance will be adjudged based upon their ability to comply with the guidance. In general, I would expect that examiners will be more quickly swayed by citations to the guidelines rather than to citations to particular court decisions. Examiners will be trained in the upcoming weeks and training materials will be available at the PTO website.
Here, I will focus on the eligibility guidelines and leave definiteness for a separate post.
Prior iterations of eligibility guidelines focused on a listing of post-Alice cases as examples for examiners to follow. Examiners are typically not attorneys and are not expected to read cases — that makes this case-focused approach problematic in the long-term. In the new 2019 iteration, the PTO has attempted to synthesize case law in a way that is practical for examiners. The PTO is also suggesting that this approach will be more reliable and more predictable. The USPTO does not have the power to shift the legal definition of eligibility. However, the Agency is given discretionary authority to design a practical administrative mechanism for implementing the law as given. That is how I see the PTO’s approach here. Now lets look at two of the important changes from prior guidance documents: .
Categories of Abstract Ideas: The inquiry of Alice/Mayo Step 1 is whether the patent claim is “directed to” an “abstract idea” or other excluded area. The first important guidance change here is to create three of categories or “groupings” of abstract ideas:
- Mathematical Concepts
- Methods of Organizing Human Activity
- Mental Processes
Under the guidance, claims that do not recite matter within one of these three groups “should not [ordinarily] be treated as reciting abstract ideas.” The guidance does note a “rare circumstance” where an abstract idea might fall outside these categories. While this approach does not settle the ongoing question of what counts as abstract, it does go a long way toward helping examiners decide when to reject claims.
“Directed To” an Ineligible Concept: The PTO guidance has also focused-in on the Supreme Court’s “directed to” requirement that finds claims problematic only if “directed to” the ineligible concept. For that element, the PTO asks examiners to consider whether the ineligible concept is “integrated into a practical application.”
A claim is not “directed to” a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception.
The guidance for analyzing this issue focuses on whether keywords of whether the claim uses the ineligible subject matter in a way “that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”
Although the document is written primarily as examiner guidance, it is also being applied to PTAB judges and is being seen as a statement of PTO policy.
As loathe as it may be, should one note that the spin of “directed to” appears to be very close to the EPO spin of “per se” and “as such”…?
Software and business methods (if you know how to scriven them) have become quite comfortable in the EPO system even as there is a direct prohibition on BOTH (with, of course, the prohibition being critically constrained by the caveats of “per se” and “as such”).
Take a software innovation, for example.
It is hardly a step at all to move from the “per se” to the “safe zone” by writing the claim to be an application thereof.
Interestingly, since the PHOSITA most easily understands what is being claimed by the actions the software induces when the software is applied, the natural consequence of what so often troubles others here in the US (words sounding in function) is the very thing that moves the claim TO BE in the “safe zone” of an application thereof and outside of the “per se” region.
…and MaxDrei can correct me, but the fact of the matter being that software innovation is something that when “in the application thereof,” will involve software being a machine component (a part of — and a distinguishing factor thereof [see The Grand Hall experiment]), the “technical” aspect that the EPO Sovereign has chosen (as is their right as a sovereign), is easily met for most all software innovation.
>>U.S. applications of foreign origin versus U.S. origin
1) The statistics aren’t complete and we need more information.
2) What is the definition of the above? I have consistently referred to applications that are filed for inventions made in the USA. I suspect your statistic is based on foreign priority vs. non-foreign priority. This is different.
3) What is 2018?
4) Additionally, what I have said is that it is bothersome that people like Lemley are using a gross measure of the number of patent applications filed to try to support the thesis that the weakening of the patent system from Alice and the AIA has not lessened the innovation engine of the US.
5) Additionally, I have said that the patent application filings need to be normalized per inflation adjusted billion dollars of GDP that is generated from technology.
6) Etc. Doesn’t really matter as everyone on this blog that is anti-patent always feels free to mischaracterize what I say.
Plus from what I’ve heard it is important to include 2018.
That’s a bit unrealistic given that you are talking about a government operation (quite different than what may happen in a corporate setting in pounding out performance numbers for the next quarterly report).
Right and some of the corporations have given their numbers and they look down about 3-4 percent.
Answered at 15.5.3.
NW, since you have continued discussion on this other blog, I will assume you are assuming that there are a significant number of applicants for foreign inventions that are filed in the U.S. without claiming any priority to a foreign application? But how often is that likely to occur? There are obvious logical reasons that is not usually done. Including that, just as in the U.S., many foreign countries would require special government approval to first disclose the invention in a foreign patent application.
Also note that if the recent changes in patent law have made filing patent applications in the U.S. less desirable because patents are less valuable [which is not even in dispute, just the inconsistent filing facts], it would have the same effect on foreign applicant filing decisions as it does U.S. applicants. I.e., both should significantly decline on that basis, not the ratio changing.
Paul, this is just an outcome of the “count” filter that has been put in place.
Notably, this count filter is based on the fact that a certain narrative was NOT being achieved.
Those largely unaffected with the count filter (the Malcolm types that employ drive-by monologues and do NOT engage on the merits of discussions) clearly benefit from this particular editorial control feature.
Since at least one commentator here likes to repeat a Trumpian-style “fact” that the percentage of U.S. applications of foreign origin versus U.S. origin has recently greatly decreased recently from its traditional roughly 50-50, due to the subject and other U.S. patent law changes, and thus U.S. based applications were allegedly substantially decreasing. So I finally got inspired to make a written USPTO inquiry to get an official USPTO response for actual facts. The % numbers below are for utility patent applications taken from the official PTO table that they sent me [design and plant applications also remain nearly 50-50] :
2017 51.6
2016 51.2
2015 51.1
2014 50.7
2013 49.6
2012 50.5
2011 50.8
2010 50.6
***
2004 46.9
Sorry, I do not quite understand what that table conveys. Is that the percent of US origin apps, or the percentage of ex-US origin apps?
Not that this actually matters in the least…
Yes, thanks Greg, these numbers are the % of U.S. applications that are of foreign origin, by year.
Thanks for the clarification, Paul.
So there is a very subtle secular trend toward an increase in ex-US origin apps as a percentage of the total US filings over time. Of course, this is exactly what one should expect to happen in a world in which China is becoming rapidly wealthier and more interested in R&D. In fact, the surprising thing is how slowly that increase is happening, relative to how quickly China’s innovation sector is growing.
Once again, not that any of this makes a fig’s worth of difference to (pardon the pun) the price of tea in China…
Greg, this very small rate of increase in the % of U.S. applications that are of foreign origin seems surprising smaller the much larger relative increase in foreign R&D and foreign GDP compared to the U.S.
All excellent points – but in a larger analysis, the disparity may be viewed as a negative to the promotion of innovation in the US (and protection of same here).
As can be seen in the historical examples of burgeoning new innovation areas such as early medical diagnostics and early software, innovation (and protection thereof) may MOVE to geographic areas in which such are more readily (or more strongly) protected.
The fact then that we do NOT see ingress into the US may indicate that those with growing emphasis on innovation are choosing NOT to engage in the US.
THAT would be even worse than the fears expressed by Night Writer.
Paul, can you define “of foreign origin”. The biggest BMW factory in the world is in the USA. Are the cars it makes “of foreign origin”. Likewise all the patent applications filed at the USPTO by US-registered subsidiaries of “foreign” Big Pharma?
And anyway, a domestic:foreign 50:50 split is stable equilibrium, isn’t it? Like it has been at the EPO for donkeys years.
MaxDrei,
What does “stable equilibrium” even mean (especially when one considers the facts as provided by Paul that there exists unstable indicia Of growth and innovation from Sovereign to Sovereign?
As I noted, the relatively flat indicator here would tend to portend to a worse situation than the one that Night Writer harps upon, which is what drove Paul to dive into the figures in the first place.
It is very much as if Paul wanting to disprove the underlying fear that Night Writer warns about by looking into Night Writer’s alleged facts actually proves a worse fear with the actual facts (with those actual facts viewed in a proper comparative context).
…I would further note that your post here in so far as “origin” reflects my observation below already added to the conversation at post 15.5.2.
Despite my dismissive, I do thank you, Paul, for troubling to find real numbers. Perhaps this will put an inane meme to rest, although somehow I doubt that.
I doubt it as well, given how easily the meme can be turned (much like Supreme Court authority) into a projective, subjective, conjectural, “what MAY happen” view.
What’s good for the Court is good for commentators here, eh?
Very nice. Thanks Paul (see some of my noted caveats to other stats used on this blog, for example, the number of small inventors over time).
The commenter goes by the name “Night Writer” and he’s “anon’s” bff. He’s also infamous for comparing critics of software patenting to “terrorists in Iraq”, a comment which was greeted with a favorable response by “anon.”
No need to p ssyf00t around this stuff. These people are just entitled @ h0les, totally full of sh t, and reliably wrong about pretty much everything.
Yay for the “bff” one-bucketing!
Must make it easier for Malcolm to keep tab of “the band people.”
…. damm autocorrect:
“band” => “bad”
Any comment I may have made MM pails in comparison to your endless stream of vulgarity and se xual ac cusations.
Never mind the real blight that he refuses to engage in any meaningful, inte11ectually honest manner on the actual points of law that come up for discussion….
>>U.S. applications of foreign origin versus U.S. origin
1) The statistics aren’t complete and we need more information.
2) What is the definition of the above? I have consistently referred to applications that are filed for inventions made in the USA. I suspect your statistic is based on foreign priority vs. non-foreign priority. This is different.
3) Etc.
What is 2018?
“I have consistently referred to applications that are filed for inventions made in the USA. I suspect your statistic is based on foreign priority vs. non-foreign priority”
Additionally, one should also take into consideration whether ANY filing (generated in any particular location which may drive foreign priority versus non-foreign priority) is from a multi-national entity.
Such entities, while enjoying the benefit of being a juristic person, are much more likely to NOT owe any allegiance to any actual sovereign and thus would naturally be more apt to play the “move the cheese” game and take advantage of cost factors (among other factors) that dictate where benefits of innovation may actually inure.
I would also point out here that Greg’s view (as expressed previously) in regards to some “innovation anywhere is good” fails to grasp the reality that Sovereigns DO compete with each other on innovation assets. Anyone doubting this really has not been paying attention to the history of sovereign (and sovereign sponsored) industrial espionage.
NW, these statistics are clearly defined as the % of all U.S. applications, not “based on foreign priority vs. non-foreign priority” and their total application numbers check with those provided on this blog and elsewhere. Inventions made in the U.S. are of course almost always filed from within the U.S., not from foreign origins since that would present technology export control legal issues. The 2018 statistics are not yet provided by the PTO, or I would have listed them.
“Inventions made in the U.S. are of course almost always filed from within the U.S., not from foreign origins since that would present technology export control legal issues.”
These are routinely handled and present no impetus as you seem to suggest.
It has been a while since you were active in prosecution, has it not Paul?
No it is not a problem Paul. And your statistics are not the ones I asked for.
In fact I have always made it clear that there is a distinction between foreign priority vs. foreign origin.
And there are signs that in 2018 there is a significant drop in patents granted.
Additionally, what I have said is that it is bothersome that people like Lemley are using a gross measure of the number of patent applications filed to try to support the thesis that the weakening of the patent system from Alice and the AIA has not lessened the innovation engine of the US.
Additionally, I have said that the patent application filings need to be normalized per inflation adjusted billion dollars of GDP that is generated from technology.
2A-Prong2 now refers repeatedly to the “additional elements” of the claim. It’s bizarre to me how much of the “practical application” test of 2A-Prong2 is just a reworded version of the “significantly more” of 2B.
“if an examiner had previously concluded under revised Step 2A that, e.g., an additional element was insignificant extra-solution activity, they should reevaluate that
conclusion in Step 2B. If such reevaluation indicates that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this
finding may indicate that an inventive concept is present and that the claim is thus eligible.”
Apparently unconventional insignificant extra-solution activity can qualify as “significantly more”.
It won’t be “extra-solution” if — upon re-evaluation — there is a tie to it being a practical application.
Maybe this is just a way of saying “REALLY take the claim as a whole.”
Or, in the “Berkheimer” sense, that entire claim (as an ordered combination) MUST ALSO be conventional (which as Malcolm grouses, is MORE than merely not novel or obvious) in order for the 101 rejections to stick.
I think that there is also a “jab” at examiners in requesting that “re-evaluations” are to be done. I can easily see “attorney argument” requesting for evidence of such re-evaluations if the canned responses from examiners follow the line that David Stein put forth.
“if an examiner had previously concluded under revised Step 2A that, e.g., an additional element was insignificant extra-solution activity, they should reevaluate that
conclusion in Step 2B.”
“Revised step 2A” means under Son of MoT, the examiner determined that there was no practical application as the additional elements were insignificant extra-solution activity. The guidance suggests that when considering the unconventionality of those elements, that insignificant extra solution activity can then become “significantly more”.
reply still stuck in count limbo…
Surprisingly, there isn’t much discussion here on what the PTO means by “practical application.” Can someone please tell me how a claim would not have a “practical application”? Further, where is the PTO getting this from? The CAFC has not taken into this Practical application” test in any major way. Has Director Iancu overstepped his role here?
See post 4 below:
link to patentlyo.com
I think the “practical application” test is for the judicial exception rather than the claim. So a claim to “(abstract idea) + (practical elements wholely unrelated to abstract idea)” would fail.
I’d like to see an explanation of why was Alice not a “practical application” of intermediated settlement?
I do not think that your attempted “re-thinking” fits the actual words.
That being said, you do raise a valid point in relation to how this would play in the Alice case.
One might consider that any inconsistency with the new marching orders that you have been given and the attempted re-writing of statutory law by a branch of the government lacking authority to re-write the law must fall to you following the un-re-written law.
To anyone with a critical mind, it really is inevitable that the scrivining of the Court must one day face its own results of a Gordian Knot and overplay of the Court beyond their reach.
Ben: “I’d like to see an explanation of why was Alice not a “practical application” of intermediated settlement?”
Fact is; it was indeed a practical application of intermediated settlement.
The problem occurred when SCOTUS decided they were part of the Executive Branch for this decision.
Is an intermediated settlement an apparatus or a composition of matter? How much does it weigh? Does it weigh more or less than an unsettled dispute? Same melting temperature?
Plainly it’s not an abstraction so it must have some objective physical properties, at least according to one “expert” (LOL) here mumbling about the Supreme Court changin’ everything up. Probably this “expert” (LOL) can show us the transcript where Frederico and Giles Rich are talking about patenting methods of settling disputes in between those wonderful moments where they madly lick each other’s faces while staring into the vacuums behind their shark-like eyeb@ lls.
Floating old canards with an extra helping of snark only highlights your lack of inte11ectual honesty Malcolm.
Alice did not claim a practical application of the abstract idea of intermediated settlement (a fundamental economic principle) because the claims did not recite: an improvement to a technological field, a medical treatment, a tie to a specific machine, a transformation of matter, or a meaningful tie to a technological environment that was more than insignificant extra-solution activity.
Unfortunately, things get a little circular here — if it had any of those things, then the new guidance wouldn’t be in accordance with SCOTUS precedent.
I would love to see a coherent rebuttal to the statement that the heightened “conventionality” requirement for eligibility is not illegal. Coherent does not include “CAFC said so!” or “Supreme Court dicta says so!”.
Put another way, I’d like to see anyone defend, from a policy or statutory standpoint, the idea that you can re-patent the prior art by tacking on ineligible subject matter as long as the prior art is not “conventional” or “routine.” In your rebuttal, please address the facts that (1) prior art that is not patented is permanently a part of the public domain (2) you can’t patent logic or information on its face, nor can you patent logic or information by limiting it to a prior art context.
Let’s hear the argument. This is where the rubber meets the road, people. Step up and be serious.
“I would love to see a coherent rebuttal to the statement that the heightened “conventionality” requirement for eligibility is not illegal. Coherent does not include “CAFC said so!” or “Supreme Court dicta says so!”.”
I would love to see a coherent STATEMENT as to why a heightened “conventionality” requirement for eligibility — or ANY type of “let’s compare to state of art statement — “is not illegal” (or at least tied to the actual words of Congress).
As to your “the idea that you can re-patent the prior art by tacking on ineligible subject matter as long as the prior art is not “conventional” or “routine.”” – that’s a strawman of yours, since you are the only one putting out an argument on “re-patenting” (and your argument is flawed from the “Claim as a whole” standpoint, as well as from the fact that you are confusing and conflating patent eligibility and patentability.
As to your “ nor can you patent logic or information.” yet again you peddle your canard of what you feel software is, which has been rebutted by asking you how your copyright project on “just logic” is coming along. Not sure why you ask a question over and over and over again when you are inte11ectually dishonest and do not answer the counter points already presented to you.
Wait, this is Malcolm. I do know why. “Step up and be serious” indeed.
“(2) you can’t patent logic or information on its face, nor can you patent logic or information by limiting it to a prior art context.”
Can’t you?
A method, comprising:
receiving input data representing a field of view of a roadway at or near a traffic intersection, the input data including data collected from a first sensor, and data collected from a second sensor;
analyzing the input data within a computing environment in one or more data processing modules executed in conjunction with at least one specifically-configured processor, the one or more data processing modules configured to fuse the data from the first sensor with the data from the second sensor, by
identifying a first object detection zone in the field of view from the data collected from the first sensor, and a second object detection zone in the field of view from the data collected from the second sensor,
selecting a plurality of boundary points in the first object detection zone, and a plurality of points in the second object detection zone that correspond to the boundary points in the first detection zone,
estimating a transformation matrix for a planar area comprising the field of view by mapping the plurality of points in a plane of the road roadway as seen by the second sensor, to the plurality of boundary points in a plane of the roadway as seen by the first sensor to correct a perspective distortion between the data collected by the first sensor and the data collected by the second sensor to transpose the first object detection zone onto the second object detection zone to create a combined detection zone, by applying the selected points that correspond to the plurality of boundary points to calibrate arbitrary planar coordinates between the first object detection zone and the second object detection zone, and mapping a plurality of vectors representing common data points to transform the arbitrary planar coordinates to find an equivalent zone location and an equivalent shape between the first object detection zone and the second object detection zone; and
evaluating one or more attributes of the combined detection zone to detect an object in the field of view of the roadway.
US 10,140,855B1
link to patents.google.com
10,140,855B1 is eligible in my scheme: its a method, the method results in information, the information is consumed by a non-human actor.
Very likely obvious to a PHOSITA (or anyone who has done panoramic photography)….
You are ineligible according to your criteria.
Marty is ineligible under most any criteria.
Your reply will not help Marty find his way back to a cogent legal path. If anything, he will agree with you and take that agreement as some type of affirmation for his odd views.
We will see who has the last laugh fellas.
A dozen or more (at least) highly qualified lawyers have told me that my concept not only works, is not only better than the status quo, but in fact is they way they are now thinking about it.
That’s usually the case when a good solution emerges; it becomes difficult to see it any other way.
I think the CAFC is going to come around to it too, eventually.
The seeds are already evident in recent rulings (esp. in re: Guldenaar), it’s the logical extension of the printed matter doctrine, and it hits exactly at the core of what abstraction really means.
You doofi are gonna be on the wrong side of history.
Let me know when Congress gets involved (that’s the branch actually authorized to write the statutory law that is patent law).
Also, as to the “doofi” reference, you should know that your view is not in accord with the law (hence, would NEED Congress to get involved) and it is that FACT that earns most of the disdain for you, since you seem unable (unwilling) to recognize what the law IS now.
IF the law is changed, THEN I will speak of the law as it were to be. There is ZERO “doofi” involved in being correct on the current law, and no amount of passage of time will ever change that correctness and place me “on the wrong side of history.”
Yes, the preferred solution would be to modify Section 100(b) to read: a process which results in information consumed by human beings may not be patented. Processes intended to improve information processing without regard to the content or meaning of the processed information are exempt from this requirement.
But your out of touch notion that only Congress influences patent law is just that, as proven by the last 50 years of actual experience.
And you never, ever say which law my proposal is out of step with. Process is whatever someone says it is, until Congress or a court says otherwise.
“a process which results in information consumed by human beings may not be patented. ”
ALL processes may result in information consumed by human beings.
ALL.
Marty, you cannot move forward until you move back to the basics — and that includes understanding innovation and utility (especially in the patent sense).
You keep wanting an end result wrapped up in a pre-conceived notion. You simply cannot get there from here (and especially when you do not try to understand the terrain within which you want to postulate).
As to “But your out of touch notion that only Congress influences patent law is just that, as proven by the last 50 years of actual experience.” – you are NOT following what I am saying as regards to proper legal Means.
“Influence” is all fine and good, and impacts the proper legal means NOT AT ALL.
“And you never, ever say which law my proposal is out of step with.”
As I told you in the first instance, you had more than 20 critical errors in your abstract alone.
Your views are simply not connected with the reality of patent protection under the laws of the US (nor are they connected with underlying innovation theories).
Your views ARE a manifestation of your oddities, touched by your own negative experiences, flavored by the Kool-Aid of anti-software propaganda, of which you have shown an unhealthy desire to ingest.
“Process is whatever someone says it is, until Congress or a court says otherwise.”
Unsurprisingly, wrong from the start. See 35 USC 100(b). Then realize the history behind the Act of 1952 has been extensively written about explaining how the legal terms of art are to be understood.
One of your problems is that you do not (nor do you even attempt to) understand that legal and historical context. You think it perfectly fine to come in from the great blue yonder with your own (unconnected) concoctions and redefine things as you so choose. You do not even realize that you do not know the terrain within which you want to “do battle.”
100(b) says a process is a process and is a tautology. Everyone knows that.
A process to dig a hole results in a hole, which is a void in the dirt. That is not information. Maybe you can whip up some rationale as to why a hole in the ground is actually an item of information. Please do so.
You make sandwich after sandwhich after sandwich, but in the end, you write two pieces of bread and refuse to place anything between them, I suspect because your larder is bare. What other reason could there be?
Noticed your comment just now escaping from Limbo – and my reply is stuck in limbo.
and yet another reply caught in the filter.
I appreciate the new guidance, but it won’t change anything.
Here’s the problem. Let’s say that a particular technique involves the combination: ABCDEFG, and you have an improvement of E that we’ll call Q. You claim it as: ABCDQFG.
* Pre-Berkheimer rejection: “The claim provides C, which is an abstract idea X. The remainder of the claim (ABDQFG) fails to provide significantly more.”
* Pre-Berkheimer applicant reply: “Q certainly provides ‘significantly more’ than C. As specification pars. [0025]-[0028] describe in detail the problem that Q addresses (as an improvement to E) and the technical effects.”
* Pre-Berkheimer examiner reply: “Don’t care. The End.”
Then along comes Berkheimer: “You can’t just blow off a ton of claim elements and say they’re ‘conventional.’ That conclusion can’t be an examiner ‘smell test’ – we now require extrinsic support.”
Now we have;
* Post-Berkheimer rejection: “The claim provides the abstract idea X. The claim elements that provide the abstract idea X are: ABCDQFG, which are ‘similar to’ the idea X that was held abstract in the case of Crouch v. Quinn. All remaining claim elements (really just the preamble) are conventional computing hardware.”
* Post-Berkheimer applicant reply: “ABCDQFG provide far more than X – they are a specific solution to a specific technical problem, as specification pars. [0025]-[0028] describe in detail.”
* Post-Berkheimer examiner reply: “Don’t care. The End.”
The central problem – both pre-Berkheimer and post-Berkheimer – is that examiners are permitted to lasso a bunch of claim limitations and flush them down the drain by characterizing them as something simple. That is true even if the lassoed claim elements include the specific point of novelty. Nothing in the MPEP about § 101 provides that an examiner must consider, and respond to, an applicant’s argument that a PARTICULAR claim element provides an improvement over conventional technology. Not even if that element is well-claimed; not even if it’s integrated in a complete soup-to-nuts embodiment (rather than a disembodied idea); not even if it’s explained in the specification; not even if it’s wholly absent from the art, or even if the art explicitly teaches away from it. By lassoing Q together as part of ABCQFG, the examiner blanket-rejects the whole thing without ever addressing, specifically, the point of novelty.
The only difference induced by Berkheimer and this new § 101 guidance is… the stock template that the examiner uses. Whether that characterization is rejected under Step 2B as “conventional” or under Step 2A as “collecting, processing, and displaying data.”
Until we have some court opinion (probably several) requiring § 101 rejections to SPECIFICALLY address an applicant’s argument that a SPECIFIC claim element being (a) non-conventional and (b) not generic “data processing” but a technical improvement – where the penalty for refusing to address any such argument is a failure of the prima-facie rejection and a reversal by the PTAB or a court – we will be stuck where we are today, and where we were on June 20th, 2014 (one day after Alice).
David, assuming that will still be the rejection in spite of the new “101” guidelines, what are the applicants practical options? [In addition to arguing that “ABCDQFG provide far more than X – they are a specific solution to a specific technical problem, as specification pars. [0025]-[0028] describe in detail.”] File an expert declaration that specified claim elements or their functional combinations are NOT well known and conventional? Demand a CFR 1.102(a)(d)(2) examiner affidavit to support the examiner position that all the claim elements and their functional combinations are actually well known and conventional? File a pre-appeal conference request? Appeal? Or something else?
David said initially that the improvement was in Q. Odd, then, that he insists on arguing that the “specific solution” (to what?) includes a bunch of prior art elements. But then that’s the software patenting game isn’t it?
Learn how to write better claims. I know this is hard advice for the softie woftie crowd to accept because the whole farce rests on pretending that software is somehow not being protected (because it’s ineligible).
“the whole farce rests on pretending that software is somehow not being protected (because it’s ineligible).”
Software is eligible.
Innovations that may be represented in software terms may also be represented in other terms, given that software has equivalent** design choices in firmware and hardware – as has been pointed out to you since the beginning of your curse-ade against a particular form of innovation.
Heck, I have even provided a rebuttal to you on your (oft repeated) attempts to elevate an optional claim format into somehow not being an option with the counter point that any claim that you happen not to like for being “softie-woftie” COULD be written in “objective physical terms” of any particular media with the software indicia described in its physical terms. That such a claim format option COULD be taken (but that would result in claims being tens or hundreds or even thousands of pages long, and not be recognizable to the human eye — BUT would satisfy your canard — has not been answered by you. Instead, all that we see from you is your drive-by monologue, Internet-style shout down of repeating your lame positions without regard to the counter points presented.
It is more than just a bit disingenuous of you then to pompously demand “some serious” explanation as to any point in the 101 discussion. Heck, even your “learn to write better claims” is completely misguided, because claims are meant to be written in particular for the Person Having Ordinary Skill IN THE ART, and you apparently have so much disdain for the particular art, that any sense of reason or cogency from you disappears when the subject comes up.
**equivalent of course is in the patent sense, and certainly avoids the trite “rebuttal” of those who demand an exactness, which is simply not a legal requirement in regards to the term of equivalence.
Good question. I’ve had good luck at the PTAB: most often, examiners choose to reopen examination (and give due weight to the point of novelty) rather than file an Examiner’s Answer, but I’ve also won by board decision.
It is my personal belief that if you have:
(1) A specification that describes why Q is different than typical solutions and that describes the technical advantage of Q,
(2) A claim that specifically and unambiguously recites Q (as part of a solution to a legitimate problem, where the other usual steps of the solution are also recited to give Q its proper context), and
(3) A legitimate argument that the prior art (either the single reference cited under 102 or each of the several references cited under 103),
…and the examiner is relying on the usual boilerplate (“the claims, including Q, involve collecting, processing, and displaying data; nothing else is in the claim”), and fails and/or refuses to address your (repeatedly presented!) technical arguments…
…then (a) you should win at the PTAB on appeal (either on the briefs or on decision), and (b) the examiner’s next action will usually be a straight-up allowance rather than doing the hard work of conducting a new search and reopening prosecution.
What’s more – I believe that if you file continuations with broader claims than those allowed after the appeal, examiners are likely to be more deferential. I think that they just don’t want to lose again, or that their supervisor is telling them not to spend any more time on the case than absolutely necessary.
This really isn’t how examination is supposed to work, and I blame the PTO’s extraordinarily tolerance for examiners doing whatever they want right up to the point of appeal.
To put it in the context of the big picture: Bad rejections often lead to bad allowances. When the examiner cites references in ways that are inexcusably wrong, they will respond to losing an appeal by allowing claims that might not have been adequately searched and reviewed.
So anyone who’s interested in improving “patent quality” must recognize that part of the solution is improving examination quality up front. The PTO must stop tolerating technically incorrect rejections. Examiners who lose appeals because of bad rejections should face more repercussions than simply “you can’t spend any more time on that application.”
(1) A specification that describes why Q is different than typical solutions
Most competent grown-ups put that information in the claims.
But we know that you’re just playing a game, David. Fun! Sure, hide the actual alleged innovation in the specification and bury it in an overly scrivened claim brimming with silly jargon that obscures to the greatest extent possible the relationship of that innovation to the prior art.
Oh, and then complain when you get slapped in the face.
The PTO must stop tolerating technically incorrect rejections.
Impossible when we’re not talking about “technology” and there is no legal framework for patenting (LOL) “improvements” (LOL) in logic or instructions or information.
“The PTO must stop tolerating technically incorrect rejections.”
Absolutely.
And this is one reason why Greg’s “politeness” to the ramblings of Random are actually a disservice.
Random likes to employ his own version of reality, with Greg’s “gee, that’s interesting, so thank you for that view” only serves to encourage the type of technically incorrect rejections that examiners employ (and build their private bureaucratic empires with).
Unless and until Type II errors are treated as (if not more) severely as Type I errors, you will always get the “Don’t care. The End.” mindset.
yawn, I get upheld virtually all of the time and I’d like to remind anon that my scoreboard on the Supremes is almost perfect, while he is constantly wrong.
He just can’t accept that it is virtually impossible to prove that you possess the entirety of a functional scope, because it requires you to show than you know all the ways of something occurring, which you can’t do in non-deductive cases.