User Interface Claims are Technological and Thus Not Subject to Business Method Review

by Dennis Crouch

IBG LLC v. Trading Technologies Int’l (Fed. Cir. 2019) (non-precedential)

This appeal stems from Covered Business Method (CBM) Review decisions on four related patents owned by TT.  The PTAB instituted all four CBM reviews. However, by the time of final decision, two of the challenged patents had been already upheld on eligibility by the Federal Circuit.  For those two patents, the PTAB followed the court’s lead and found the patents were directed to eligible subject matter. However, claims of the second set of patents were ruled invalid as ineligible and obvious.

On appeal, the Federal Circuit took a shortcut. Rather than directly addressing the underlying patentability question, the court vacated the PTAB determinations on jurisdiction grounds.  The court held that the inventions at issue are “technological” and therefore not “covered business methods.”

Section 18 of the America Invents Act (AIA) creates the “Transitional Program for Covered Business Method Patents.” The program, which sunsets in 2020 allows broad challenges of business method patents — including challenges on eligibility grounds.  However, the law includes a strict and limited definition of what counts as a “covered business method patent.”

The term “covered business method patent” means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

18(d)(1).

In its prior statement on the TT patents, the Federal Circuit ruled that the user interface patents were “directed to a specific improvement to the way computers operate.”  Here, the court found its prior holding (as adopted by the PTAB) automatically leads to a conclusion that “the patents are also for a ‘technological invention’ under any reasonable meaning of that term.”  The Board’s holding otherwise, according to the court, is “internally inconsistent and therefore arbitrary and capricious.”  The result here is that the PTAB does not have authority to conduct a CBM review of these patents because they are “technological.”

CONFLICT DISCLOSURE: While in practice at the MBHB firm, I represented Trading Technologies and personally filed several infringement complaints asserting some of the patents at issue here.  MBHB is also the primary financial sponsor of Patently-O. – DC

 

89 thoughts on “User Interface Claims are Technological and Thus Not Subject to Business Method Review

  1. 11

    “The influence of attorneys is being marginalized relative to that of SPEs…”

    No. It doesn’t matter who is ultimately behind the shenanigans (e.g. lazy primary looking for RCE gravy train tickets, useless QAS, SPE pulling strings of clueless junior, etc.), when I call bs the result is the same, either re-opened prosecution or allowance.

  2. 10

    “What I don’t understand is why they did this.”

    The previously mentioned POPA video suggested the motivation was to make it easier to fire people. That sounds right to me. Only someone with an IQ<70 would think an unfunded mandate ("now you're required to search more, but you get no extra time!") is going to improve quality. I doubt Iancu is someone with an IQ<70. The most likely ulterior motive seems to be to make weeding the ranks easier.

    1. 10.1

      Whoops. Responsive to 8.3.

    2. 10.2

      … fold that into Night Writer’s “80% drop in value” and you now have a legal mechanism to shred any union protection, eh?

    3. 10.3

      Only someone with an IQ<70 would think an unfunded mandate… is going to improve quality.

      I would not be surprised if your surmise about an ulterior motive proves correct. This administration favors breaking unions.

      On the other hand, this administration also favors smoke and mirrors. Announcing that you intend to “improve quality” without altering any of the substantive inputs that affect quality (or at least not to the magnitude necessary to achieve that improvement) is classic smoke and mirrors. Remember, the official position of this administration is that “[t]he wall’s being built… at a rapid pace.” Someone who can straight-up lie_like that is not going to cavil to announce purported “quality improvement” schemes that never improve quality. These are not high quality individuals (Mr. Iancu is actually on the higher end of the quality scale in this administration).

      1. 10.3.1

        As much as I disagree with his efforts, I wouldn’t lump Iancu in with “the administration”. These machinations almost certainly belong to Iancu, and I doubt anyone closer to the core of the adminstration cares much.

        1. 10.3.1.1

          A fish rots from the head down, as they say.

    4. 10.4

      The previously mentioned POPA video suggested the motivation was to make it easier to fire people.

      Except nobody with any legal training would actually think that. When there’s a few, defined things that are improper the case for firing someone is strong. When the requirements are wide ranging and rational policing is impossible, the case becomes one of arbitrariness or abuse of discretion.

      This isn’t a private company where the owners have the blessing of management to do what they want. Every act in the federal system requires a basis. What does the office plan to do when it fires a minority based on “inability to search the entire specification” and they argue it’s a race-based dismissal and point to the scattershot enforcement of an “unfunded mandate”?

      1. 10.4.1

        What does the office plan to do when…

        This is the Trump administration. Planning ahead for entirely foreseeable contingencies is not their thing.

      2. 10.4.2

        Random speaking about legal training….

    5. 10.5

      It’s clear you don’t know just how hard it is to remove a non-probationary examiner at the PTO. Nothing about the upcoming changes will make it easier to actually fire someone.

      People are really overreacting to everything. That POPA examiner is not helping with his fear mongering, either.

      1. 10.5.1

        Thanks IamI, that is in part why I wanted to see the actual text.

  3. 9

    In Response to my observation at 1, below, that the title to this post is woefully inaccurate because the Court’s finding in this case regarding a “technological” GUI is limited to the particular claim at issue, “anon” writes”:

    tell us of an explicit claim that you actually believed is distinguished from those that the court has found to be “technological,”

    There are myriad such claims and if you want an “explicit” example you should feel free to look them up. But a claim to a “new” GUI that differed from an old GUI only in terms of the labeling of (virtual) “buttons” or the information provided by the GUI would not be “technological” (and would definitely be ineligible). Note that such a claim could be denied entry into the CBM review program for other reasons.

    For what it’s worth, I think this is actually a relatively close case on eligibility if one assumes all the facts asserted by the patentee and if the claim scope is sufficiently narrow (I haven’t checked). Again, as noted earlier, the claim is obvious as heck and the fact that it was granted in the first place should be a cause for shame but, at least under Fraud Iancu, we know that the PTO is incapable of being shamed.

    1. 9.1

      Asking me to look up something that I asked you for is a rather non-answer.

      Try again.

      1. 9.1.1

        Asking me to look up something that I asked you for is a rather non-answer.

        ROTFLMAO

        You got your answer, Billy. And more.

        [shrugs]

        1. 9.1.1.1

          Your [shrug] is ALSO a non-answer.

          It does appear to be extremely difficult for you to provide any specifics when these are asked of you.

          For someone who enjoys diving into the weeds, that is NOT a great combination.

          1. 9.1.1.1.1

            It does appear to be extremely difficult for you to provide any specifics

            It does appear that you love to fondle young children.

            Fun game, Billy. Anything else?

            Feel free to find something incorrect about my comment and offer a thoughtful correction. Otherwise please just return with Night Wiper to your pe d0 peddling fantasies. Thanks, Tr 0llboy.

            1. 9.1.1.1.1.1

              Feel free to find something incorrect about my comment and offer a thoughtful correction

              Not the same at all – and clearly so in plain black and white here.

              I asked for something — directly — and you have failed to follow through — directly. My follow-on comment is clearly directed to the clear back and forth immediately present.

              Why does this seem so difficult for you?

  4. 8

    So I figured I’d give an update on the pap stuff going on. First, a copy of the pap was leaked to facebook awhile back apparently and is “agreed to” already apparently.

    But to address the app routing (docketing) and time changes first, bottom line after my training on this subject appears to be that there will be no hard and set “increase in examination time” however oddly it says that there supposedly is supposed to be an increase of about 9% apportioned over the whole time of the whole corps (in various ways). However, from what I can tell for the avg application there will be practically no increase so to speak, they’re just going to “steal” the .25 that currently gets added to the normal time 1.75 for an overall BD for an RCE and “morph it into hours”. Doing this basically means adding a few hrs (in general) to the GS-12 expectancy. So they just went ahead and added 3.5 hrs. Note this operation will give 12’s maybe an extra hour per app, but primaries will get a fraction of an hour extra on the whole. So that hr and fraction of an hour is the only real increase for the avg case on the whole.

    They do this all through a somewhat complicated process. They start by trying to figure out how much time every single CPC subgroup in existence should be assigned as an “expectancy” (for GS-12’s) and then they sort of avg up the sub-groups that are on a given app to determine the expectancy for an instant application under consideration. So every app gets its own expectancy, however in my sub-groups that’s somewhat of a joke as it will nearly surely be the exact same expectancy as was for the old USPC sub-classes (with the 3.5 hrs added because they “shifted” the time from the RCEs to the whole time and added a slight amount based on your GS level as outlined above). Also they will start giving special CPC symbols (called C*, I think they’ll just add this to the F and I and A classifications used now) as the classification just for the claims themselves in addition to the classifications of the spec+claims as a whole as is currently done. I’m not sure if they’re going to be adding the classifications of the claims themselves prior to the cases getting docketed and then not allowing for changes to that being made by the examiner or if the examiners can add additional C* classifications but I think the examiners can add them. Still, that shouldn’t change the given application’s expectancy much.

    At the end of this they list a few rare circumstances that will give more time for an app (1 hr for 150+ page spec, 1 hr for 10pg+ IDS). But very few, and only very outrageous situations.

    Further, they given a small amount of learning curve if you’re outside of your expertise on a given application (an hour or 3 if a bit outside of expertise, or 6 if you’re way outside your expertise), as determined by an a CPC based expertise profile for a given examiner. So that’s not bad, should have been done long ago. That being said, it’s very roughly done, and I doubt people will see many instances of that happening, and it basically makes an incentive to be less of an expert lol. The expertise profile of a given examiner that is determined by CPC sub-groups that the examiner has expertise in (you’ve done like 5+ apps in that sub-group in the past) basically determines what will be in that examiner’s “porfolio”, I guess all the apps that are assigned to them with a few outlier apps given to them as always which will help build expertise and deal with outlier applications that come in.

    There are a few other odds and ends. But as to the “added time”, the other big thing is basically asking the SPE for more time on a case by case basis. Which I’m guessing they’re going to loosen up on a bit (supposedly) in justifiable situations. So another way of looking at that is begging/bumming more hours on a case by case basis when you can justify it (totally no favoritism etc. will go on here btw!).

    I’m not sure how this all achieves 9% more time over the whole corps or whatever but I suppose somehow it all might. However, they seem to be giving primary examiners practically no extra time, and a good deal extra work (now you’ve got to do a separate classification for the claims from the application, and these classifications can take half an hour to an hour each, though it shouldn’t usually be that hard if you wrote down all the sub-groups while doing the initial classification and can look them over when determining the claim classification).

    Further the changes to the PAP will add a lot of headache to primaries because they will now somewhat be responsible for “examining the whole invention” where before they just had to examine to the claims so to speak in terms of responsibility. Which apparently many of them were basically examining towards, saving them time. That being said, the Director that was giving the presentation seemed to act like it would all be reasonably implemented as to the PAP changes, and under her enunciation it seemed entirely reasonable to me. Of course they’re not going to write her enunciation into the language of the PAP so then beginner SPEs will read the actual pap and it will differ from what Director level people think it’s supposed to mean and call a bunch of clear errors that then won’t get upheld by the Director because opps they forgot to write down the standard correctly in the PAP. I’ll go over the pap changes at some point.

    POPA is basically worthless tho. May as well make a deal with my SPE/director 1 on 1 and I’d probably get a better deal.

    1. 8.1

      Lots there 6, so thanks for that.

      Two quick items: I saw the Facebook rant from a voting member who had voted “No,” but I did not see where an actual copy of the new PAP was presented. Do you have a link?

      Secondly, to your “Further the changes to the PAP will add a lot of headache to primaries because they will now somewhat be responsible for “examining the whole invention” where before they just had to examine to the claims so to speak in terms of responsibility.

      Notwithstanding the “hedging” of your last line of “so to speak,” this particular item is not new as this is exactly an item that I schooled you upon many years ago now. And it’s not just for the primaries.

      1. 8.1.1

        Nah to 1. And to 2, they weren’t formally held responsible for it tho. The act of holding formally responsible changes the work environment. Personally I don’t mind it other than in situations of workplace bullying and I think the whole thing re the pap changes would be 100% fine if mgmt would WRITE THEIR UNDERSTANDING OF IT IN THE PAP ITSELF. Which supposedly we’re entitled to under the CBA (be able to receive guidance as to what is expected of us in WRITING instead of informally in a oral presentation).

        1. 8.1.1.1

          Your notion of “formally responsible” is an odd way of recognizing what they were LEGALLY supposed to do.

          I suppose that this may be technically true (and true in the sense that I have also tried to teach you in that the metrics of your job are not your job).

          1. 8.1.1.1.1

            “Your notion of “formally responsible” is an odd way of recognizing what they were LEGALLY supposed to do.”

            That’s a funny way of saying “herp it’s reality”. They have to manage to stay employed in order to examine another day, and if they do all this other stuff most many examiners likely cannot handle it at current time pressures. Imo anyway. We will see. They may start to get the hang of it, but idk. Simply firing them and replacing them with other people incapable of doing all the extras doesn’t help the situation and there is no magic pool of workers magically capable of doing the job so much better than the ones we’ve got. Or maybe people just start doing a herp word search where before they would have done more. If it becomes clear the office just doesn’t want to pay for the services they want from the examiners then eventually their level of service will just fall.

            Or maybe the examiners don’t get the hang of it and the new guidelines just get laxly enforced and/or they just get lower quality ratings and there are more error reports (<most likely lol, maybe even without much reporting of the newly found errors lol).

            Just because they finally get the metrics somewhat right doesn't mean that they will actually "create an overall environment" that will get the work done in that way on the whole. As with a leaky pipe if you fix one area that burst perhaps just another area starts leaking because you didn't fix the problem with the pipe that caused it to break in the first place (too much water pressure).

    2. 8.2

      I suspect the bulk of the 9% increase is going to very low BDs, which were raised across the board.

      The 3.5 hour increase appears to be a lie. What do you call it when you remove an older 2.5 hours correction and add a new 3.5 correction? Not a 3.5 hour increase.

      1. 8.2.1

        The 3.5 hour increase appears to be a lie. What do you call it when you remove an older 2.5 hours correction and add a new 3.5 correction? Not a 3.5 hour increase.

        It was a flat 2.5 added for everybody post-calculation, and now it.s a 3.5 added to the base examining time, which means for primaries, who have a 1.35 modifier, they get 2.59hrs instead of 2.5. .09 of an hour is just under 6 minutes. That’s the alleged “increase” to production time.

        1. 8.2.1.1

          “It was a flat 2.5 added for everybody post-calculation, and now it.s a 3.5 added to the base examining time, which means for primaries, who have a 1.35 modifier, they get 2.59hrs instead of 2.5. .09 of an hour is just under 6 minutes. That’s the alleged “increase” to production time.”

          LOLOLOLOLOL WT F? It was 2.5? I though it was 2 before? So they’re just removing the old 2.5 and replacing it with 3.5 in a different part of the calculation AND removing the .25 from the RCEs (up from 1.75 to 2)? What a joke.

          You’ve got to be joking. What a joke. Fu ck it, if this doesn’t turn out and I’m just going to be getting fed, I’m just going to leave this absolute dumpster fire of an “employerlol”. They needed to increase the examination times after we switched to CPC so that the huge subs can be covered. Either that or make it 100% clear to everyone we’re just doing dinky word searches that find maybe half the prior art that could be relatively easily found if time were given to routinely do whole sub group searches.

          1. 8.2.1.1.1

            The calculation used to be (base time / position factor) + 2.5. So for a 30 hr base time, a gs 12 would get (30/1) + 2.5 32.5hrs and a primary would get (30/1.35) + 2.5 = 24.7hrs.

            Now the calculation is ((base time + 3.5) / position factor). So for a 30hr base time, a gs 12 gets 33.5/1 = 33.5hrs and a primary would get 33.5/1.35 = 24.8hrs. A gs 12 gets 1 hr added, a primary gets 6 minutes.

            Of course, because RCEs after the fourth are dropped by .25, that means that a non-final on the fifth RCE loses 1/8th of the value of a full base time, so 1/8 * 30 = -3.75hrs. So if a GS-12 does 1 RCE a biweek (which they pretty much have to since they only have 5 cases on their docket), that’s 6 a quarter, which means they lost 7.5hrs over the quarter too. So RCEs as a whole are a net negative (+6-7.5 in most cases, and losing another 2.75 every RCE after 6) and non-RCEs are +1 for gs-12. Assume about a 2:1 new:rce ratio – +10.5hrs overall or 42hrs a year.

            Obviously for a primary since there is so little bonus the situation simply reduces to – 1/4 count for every RCE after the 4th, which is -2.77hours. If the primary does 6 total RCEs in the quarter, it’s -5.54hrs, which already can’t be made up, since that would require 55 new actions in the quarter to even out. Let’s call it -3hrs a quarter, -12hrs over the year.

            The +42 would be positive, if imperceptible (2% increase in a 2000hr workyear, but not all of that is examining time) if the change was made on its own with no other changes, but the change was made in the context of requiring a ton of more actions which actually detract from, you know, examining.

            Obviously the change benefits new examiners, who see more gains. A gs 7 would go from 45.35 to 47.85 – a +2.5hr per application, and would likely not experience any RCE loss, so a 6% gain, more because not all of it is examining time. I can see an argument they would get 9% more time overall, which is the number one keeps hearing.

      2. 8.2.2

        “remove an older 2.5 hours correction ”

        People keep talking about this “2.5 hrs correction”, but I think they’re talking about the .25 hrs correction just to RCEs (after the first 3 in 1st quarter of year and after the first 4 in every other quarter thereafter). They’re not removing the 2 hrs that mgmt gave back in the day I don’t think.

        1. 8.2.2.1

          I hope you’re right but I am confident you’re wrong.

          The RCE adjustment almost certainly refers to the 2.5 hr (originally 2 hr) addition to expectency that was introduced when the new RCE system started in 2011ish. There are some memos from FY2011 that specifically reference “adjustments” to expectency to compensate for the .25/.5 decrease in RCE value.

    3. 8.3

      I also think applicants should expect somewhat more inscrutable rejections and intransigent examiners. The new errors (for example, an examiner can now be charged with an error if their entirely adequate 103 rejection could have used a “better” reference) will put all examiners more at the mercy of their SPEs. This’ll make it more likely that the next w.t.f. rejection you get is motivated by “this is the outcome my SPE would want” reasoning. Have fun.

      1. 8.3.1

        I also think applicants should expect somewhat more inscrutable rejections and intransigent examiners.

        Do NOT make your problems into my problems.

        Not only is that unethical, you will not like my reaction (which — while remaining professional — WILL directly impact you per the new PAP).

        YOU (not your SPE) remain on the hook.

        1. 8.3.1.1

          “Do NOT make your problems into my problems.”

          Anon thinks his feeble protestations somehow affect reality. Who is the cutest little baby, and why is it anon? ^

          1. 8.3.1.1.1

            The internet is full of anonymous tough guys. Nothing new under the sun, as it is said.

          2. 8.3.1.1.2

            Nothing feeble about it 6.

            Or are you forgetting just how easy it will be to “Ding” the “quality” of examiners?

            And Greg can bite it – he clearly has way too much of a soft spot for the “p00r widdle examiners.”

        2. 8.3.1.2

          Not only is that unethical, you will not like my reaction (which — while remaining professional — WILL directly impact you per the new PAP).

          Which is 10% of our pap, quality is 30% of our pap. Don’t hate the playa hate the game.

          1. 8.3.1.2.1

            Serious question re “unethical” (and please forgive my embarrassing ignorance): is there an examiner code of ethics?

            1. 8.3.1.2.1.1

              Does one need to be bound to a formal code of ethics to behave either ethically or unethically?

        3. 8.3.1.3

          “Do NOT make your problems into my problems.”

          You’re hilarious. You order a angus beef burger from McBurger and get a burger that tastes like paper. The cook explaining that McBurger only provides him with pink-slime isn’t “making it your problem”. YOU have a problem that the entity taking your money isn’t providing what you’re paying for. That’s not the cook’s fault or his problem.

          “you will not like my reaction (which — while remaining professional — WILL directly impact you per the new PAP).”

          This is also funny. Sure, attorney’s can have some impact. But the new PAP is increasing SPE impact. The influence of attorneys is being marginalized relative to that of SPEs, which was my point to begin with. LOL.

          1. 8.3.1.3.1

            You order a angus beef burger from McBurger and get a burger that tastes like paper. The cook explaining that McBurger only provides him with pink-slime isn’t “making it your problem”.

            I agree with you about this. I doubt, however, that this argument is going to convince anyone who does not already agree with you.

            Folks around these parts are accustomed to having the option of going to the Ford dealer, or the Ram dealer, or the BMW dealer, etc. In other words, they are accustomed to the idea of having the option to pay for whatever level of quality that they want.

            One does not get that option with the USPTO. If you want a US patent, that is the one place that you can get it.

            Many US patent applicants imagine that they have walked into the Lexus dealership, when really they are standing in the lobby of the Chevrolet dealership (and paying the corresponding Chevy prices). It just does not occur to them that they have not paid Lexus rates, and that therefore they should not be surprised when they do not drive off in a Lexus.

            Mind you, if you want a Lexus, you can buy it—just not at the USPTO. At the USPTO, you pay Chevy prices and you drive off in a Cruze.

            1. 8.3.1.3.1.1

              Count filter effects may be in play…

              Mind you, if you want a Lexus, you can buy it—just not at the USPTO. At the USPTO, you pay Chevy prices and you drive off in a Cruze.

              True. But only to a point, and that point is that what an applicant pays for is what is advertised. To turn your own analogy back to you, just because you may feel that you are being paid only Chevy wages, does NOT change the fact that you are in a Lexus plant, that the product offered (AND the product that is your job is to build a Lexus), and that the customer went to a Lexus plant and bought a Lexus.

              You may FULLY have a legitimate gripe internally that your wages are not in line with Lexus wages. But that does NOT give you the right to try to put out a Cruze.

              Not legally.
              Not morally.
              Not factually.

              1. 8.3.1.3.1.1.1

                [J]ust because you may feel that you are being paid only Chevy wages, does NOT change the fact that you are in a Lexus plant…

                Brother, I am a patent attorney, not an examiner. I get paid Lexus wages because I produce a Lexus product for my client. I—not the USPTO—am responsible for seeing that the patent that comes out the other end of the prosecution process is robustly enforceable. I do not encourage my clients to think that an examiner’s nihil obstat means much of anything. If you think that it should, more fool you.

                1. “Brother,”

                  Whether or not you are a patent attorney, or an examiner, the topic here is on examination (the factory is NOT your attorney work product).

                  Please stay attuned to the point of the discussion.

                  As to “nihil obstat,” your use of the Latin for a Roman Catholic Church meaning of a certification by an official censor that a book is not objectionable on doctrinal or moral grounds is untethered to the current conversation.

                  If you want to address my counter, please do so directly.

              2. 8.3.1.3.1.1.2

                “To turn your own analogy back to you, just because you may feel that you are being paid only Chevy wages, does NOT change the fact that you are in a Lexus plant, that the product offered (AND the product that is your job is to build a Lexus), and that the customer went to a Lexus plant and bought a Lexus.”

                Working in a plant advertising itself as selling Lexuses doesn’t define the job of the people who work their. The job requirements of the plant’s management define their job. My employer poses their facility as a Lexus plant but only (currently) requires us to build Chevys. It really is not my problem that they’re lying to you because I am happy to meet their (current) requirements at the rate they (currently) pay.

            2. 8.3.1.3.1.2

              Many US patent applicants imagine that they have walked into the Lexus dealership, when really they are standing in the lobby of the Chevrolet dealership (and paying the corresponding Chevy prices).

              I agree broadly with the point that you are trying to make here, so I do not want to push back too hard. I think, however, that this analogy is a bit problematic, because the person standing in the lobby of the Chevrolet dealership really is a customer of the dealership, while the patent applicant is not a customer of the USPTO.

              Much mischief arises from the misbegotten notion that the applicant is a customer. This is not the case. We do not run the USPTO for the benefit of applicants, but rather for the benefit of the public. The patentee who is dissatisfied with the experience of examination is no more entitled to complain than Charles Kushner would be entitled to grouse that the accomodations in FPC Montgomery are not as comfortable as he might like.

              1. 8.3.1.3.1.2.1

                Greg,

                You have posted this errant view before and it is less than honest to post it again as if counterpoints were not presented.

          2. 8.3.1.3.2

            You order a angus beef burger from McBurger and get a burger that tastes like paper.

            If the offer is for, and payment is made for an angus beef burger, YOUR problem of being paid like a burger that tastes like paper is YOUR problem.

            The offer and the product STILL needs to match.

            Again, how YOU get there is YOUR concern. You have a union that is supposed to help you get there in a reasonable manner.

            Your “cook explaining” is not pertinent and is not a proper analogy. You are in fact the person BOTH assigned responsibility to examine to the law, as well as (internally to your metrics). You very much need to understand that the internal metrics do not — and cannot — impact what is your job under the law.

            As I have noted previously, the metrics of your job are NOT your job.

            You DO still need to do your Fn job.

            As to “Sure, attorney’s can have some impact. But the new PAP is increasing SPE impact. The influence of attorneys is being marginalized relative to that of SPEs, which was my point to begin with” – no; you miss the point entirely as to how an attorney using your “quality indicator” leverages that SAME SPE effect to your detriment if you think that “slimy paper” is at all acceptable merely because YOU have time constraints. Yet again, YOU need to understand the difference between the internal and external dimensions that BOTH constrain YOU.

          3. 8.3.1.3.3

            “The influence of attorneys is being marginalized relative to that of SPEs…”

            No. It doesn’t matter who is ultimately behind the shenanigans (e.g. lazy primary looking for RCE gravy train tickets, useless QAS, SPE pulling strings of clueless junior, etc.), when I call bs the result is the same, either re-opened prosecution or allowance.

    4. 8.4

      Thanks for taking the time to share that.

    5. 8.5

      The thinking is so bad that there’s no way it will currently stand. If Applicants were upset we were spending time on 101 instead of 103, this is easily 10x worse than that, as covering ourselves on all the new “quality” things that don’t actually provide quality are going to reduce actual examining time greatly.

      For example, it’s an error not to search the specification now. Not the claims, but the specification. You don’t have to search for subject matter that you’ve restricted out, but you do have to search for restrictable subject matter for which there was no restriction. So in an ombnibus application, we’re granted one more hour to split our searching over three or four inventions – some of which you may not be interested in pursuing or which you’re pursuing in other applications, so you’re essentially getting a fourth of the search for the same money. That alone is worse than 101 was.

      RCEs as a whole are given less time. A 12 is given one more hour than before, while a primary is given six more minutes than before. But that’s only on the first four cases, after that (when we would have gotten 2 counts) we’re given 8-12hrs less. Because it’s hard not to do 5 RCEs in a quarter (you really have to try to avoid them) it’s a net loss on time for RCEs.

      What I predict will make the biggest change though will be the shrinking of the dockets. Right now I have 20 cases on my regular new docket (non-examined and rces) and I’ve never had less than 7. Under the new guidelines I will never have more than 6, and lower gses will only have 2-3. Further, the supervisor can require up to three cases be done before any other case. I don’t think they recognize how much economies of scale they lose doing this. Normally I can search two similar cases simultaneously, and I’ve even had situations where a first case in my docket is prior art for a second case in my docket. That’s virtually gone now as there really is no more choice in which case to do next. That, combined with the fact that there’s a tightening up of how docket management works, means that the lower half of the examining pool is going to going to be pressured to turn in work based on DM times as well as production times, which is going to result in significantly worse actions.

      I appreciate that “production” as a standard has to exist, but by definition it is a direct threat to “quality.” The office knows that too, which is why they’re advertising increasing the amount of time for a case (i.e. lowering production thresholds). But they’re not really lowering production thresholds, and any marginal gains are offset by increasing the DM thresholds.

      What I don’t understand is why they did this. They could have done nothing other than say “we’re swapping to CPC” and when they generated the hours for CPC just upped the hours by 10% and quality production would have flowed naturally from that. Instead they made a convoluted series of changes which together will work against the one thing they wanted to do for the public.

      1. 8.5.1

        If Applicants were upset we were spending time on 101 instead of 103, this is easily 10x worse than that, as covering ourselves on all the new “quality” things that don’t actually provide quality are going to reduce actual examining time greatly.

        Yet again – don’t make your problems BE my problems.

        What applicants have paid for HAS NOT CHANGED.

        1. 8.5.1.1

          What applicants have paid for HAS NOT CHANGED.

          But what Applicants will be getting will be.

          1. 8.5.1.1.1

            first reply appears to be caught in count filter…

            Random, yet again, you need to understand the difference between YOUR internal metric and the job (legally) that you have been tasked with.

            YOUR metric is not your job.

            I fully “get” that you want to act as if your task of examination is ONLY a “time-based” thing.

            But that is NOT the reality of the situation.

            This should be evident to you in that even the metrics of time-based are averages.

            Let’s do a quick hypothetical.

            You are assigned four applications.
            Three of the applications are straight forward and in your wheelhouse.
            The fourth is a bear, a monster that is at the edge of multiple aspects of the law.

            Is it “your job” (legally, morally, factually) to whip through the first three, each taking far less time than your internal metric time, hit the fourth, and “clock out” on that fourth when your internal metric time has hit its limit?

            OR is it “your job” (legally, morally, factually) to EXAMINER UNDER THE LAW each and every application per that application’s content?

            I can tell you what the USPTO Ombudsman would tell you.

            It is the exact same thing that I have always told you.

      2. 8.5.2

        “For example, it’s an error not to search the specification now. Not the claims, but the specification. You don’t have to search for subject matter that you’ve restricted out, but you do have to search for restrictable subject matter for which there was no restriction. So in an ombnibus application, we’re granted one more hour to split our searching over three or four inventions – some of which you may not be interested in pursuing or which you’re pursuing in other applications, so you’re essentially getting a fourth of the search for the same money. That alone is worse than 101 was.”

        Eh, I doubt that’s how it’ll end up getting implemented as, though technically someone could say that perhaps. That’s too pants on head even for like 90%+ of mgmt to even get around to considering. And from the way Wendy was discussing it I don’t think that’s what they’re trying to get at so all those new errors will go to the director and the director will not sustain, hurray, wasted time all around because they didn’t write down what they actually wanted in the PAP.

        1. 8.5.2.1

          Eh, I doubt that’s how it’ll end up getting implemented as, though technically someone could say that perhaps. That’s too pants on head even for like 90%+ of mgmt to even get around to considering. And from the way Wendy was discussing it I don’t think that’s what they’re trying to get at so all those new errors will go to the director and the director will not sustain, hurray, wasted time all around because they didn’t write down what they actually wanted in the PAP.

          That’s precisely the problem with making it into a rule though. Your argument is to not mind the changes to the rules because people will be reasonable, but if reasonableness was sufficient you wouldn’t need to make it a rule anyway.

          Saying “Sure there’s no way you can do what is asked of you, but management knows that there’s no way you can do what is asked, so they will be reasonable” invites abuse of discretion and even unconscious bias, which might be acceptable if some sort of goal was being achieved, but there is no goal. This isn’t situation where we had to jump out of the frying pan into the fire, sitting on the status quo was entirely possible.

          This situation will be acceptable to you right up until you find out that the next art unit over their SPE has a policy of giving 3hrs for every IDS over 50, and 2 hours for every 50 pages of spec, and your SPE doesn’t do that.

      3. 8.5.3

        “What I predict will make the biggest change though will be the shrinking of the dockets. Right now I have 20 cases on my regular new docket (non-examined and rces) and I’ve never had less than 7. Under the new guidelines I will never have more than 6, and lower gses will only have 2-3.”

        Yeah I still don’t understand what the point of the “120 hrs worth of work on the reg new docket” is. If they want to hand pick our cases we’ll do then just hand pick them. Giving us barely any cases just seems uncalled for.

        1. 8.5.3.1

          Yeah I still don’t understand what the point of the “120 hrs worth of work on the reg new docket” is. If they want to hand pick our cases we’ll do then just hand pick them. Giving us barely any cases just seems uncalled for.

          And you also don’t understand why, with a diminished docket, they are letting SPEs pick up to three cases you must do next, or why autocount went away. And you also haven’t gotten a reasonable answer to why they have this “if it’s accepted you get credit when you turned it in, but if it’s returned you won’t get credit until after you redo it” which will play havoc on the last biweek of the quarter. Or why they put in all of these “case by case” quality rules.

          Can you give any reason for the three cases docket management plan at any time rule when the docket management plan for ceiling cases was sufficient? The only thing it will do is cause a lot of headaches any time it is used. It will either be used in the same situation the old rule was used, or it will be used to further reduce an examiner’s limited case selection choice in a manner that is going to provoke an appeal as to why every other examiner isn’t being singled out for the restriction.

          There’s no nexus between any of the changes and actually improving quality. Instead it just diverts attention which will lower quality.

      4. 8.5.4

        If Applicants were upset we were spending time on 101 instead of 103,

        Hey c1ue1ess, it was not time spent that was upsetting.

        Further, it is a bit of a strawman to our it as you have done (…instead of).

  5. 7

    A logical reason to not want to try to define a term unique to the CBM statute as a precedent is that this whole statute sunsets soon. New CBMs petitions cannot be filed after September 16, 2019.

    1. 7.1

      I do not see why sunsetting would preclude clarity of a well-defined Law.

    2. 7.2

      Pretty obvious that the intent was to try to slip in technological into the statute so that it could be extended over to 101 at a later time.

      1. 7.2.1

        Ah yes, but by so attempting, they make an implicit admission that Useful Arts is broader than Technological Arts.

        They were too clever by half.

      2. 7.2.2

        Pretty obvious that the intent was to try to slip in technological into the statute so that it could be extended over to 101 at a later time.

        Whose “intent” was that, what evidence do you have other than your paranoia, and what was supposed to be accomplished by this alleged “extending”?

        I’ve got my tinfoil hat on so I’m prepared for whatever you are about to throw down. Let’s hear about this super devious plan that you and Billy seem to have knowledge of.

        1. 7.2.2.1

          Obtuse. Is it deliberate?

    3. 7.3

      A logical reason to not want to try to define a term unique to the CBM statute as a precedent is that this whole statute sunsets soon.

      That is a reason. I am not sure it is a logical reason, but it is a reason. To my mind, if Congress puts a word in the statute, then the court’s job is to to give meaning and effect to that word. A statute is not less worth the trouble of construing properly just because it has a sunset date.

      1. 7.3.1

        Be careful there Greg – you sound like me and you might end up in a certain “one-bucket”…

  6. 6

    Just ridiculous that we deal the judges that still think that information process is not a physical process or say things like “all you are doing” is imitating what my mind does. (And then make weird statements that can only be classified as meta-physical. Ruthie girl makes these statements all the time.)

    Information processing is a physical process every bit as much as making an alloy or processing grain. It takes energy, time, and space.

  7. 5

    But claims entirely focused on a result of faster bond trades are “directed to a specific improvement to the way computers operate”, and that nearly insane leap is not arbitrary and capricious. Not at all.

    So the PHOSITA has no connection to bond trading whatsoever? It’s really designers of GUI’s for generic data who are the PHOSITA?

    These particular patents are the absolute Platonic being of the trouble with information inventions.

    1. 5.1

      Martin, you understanding of 101 is just ridiculous. Were you trained as a scientist? You don’t seem to be. My guess is that you are someone that wrote software, but have no formal education. You are in the class of people that seem to be most confused by patent law and science.

      Here, you want to tell us that a new interface on a computer is not technical. How in the world could that be? Processing information is a physical process. A computer is technical. What else could it be? There is new structure to build a machine that is useful to interact with people that processes information.

      You just want to make this rule up that consuming information is not eligible ’cause ’cause. And you don’t even want to consider the interaction. Interaction with a machine.

      Martin, get outside your own head and try to think like a scientist. Try.

      1. 5.1.1

        you want to tell us that a new interface on a computer is not technical. How in the world could that be?

        One straightforward and obvious answer is that if the only difference between the “new” “interface” and the “old” “interface” is the content of some “new” information presented on the “new” interface, that is definitely not a “technological” improvement by any well-understood meaning of the term. Otherwise old books with “new” recipes in them would be “technological” improvements over the old books. Nobody believes that.

        You’re welcome.

        1. 5.1.1.1

          The decrepit cookbook theme…?

          Wolfgang Pauli comes to mind…

    2. 5.2

      Martin you are a joke. You even ridicule me for saying that information processing is a physical process that takes time, space, and energy.

      Any—-ANY—-scientist would agree with that statement.

      1. 5.2.1

        Night Wiper you are more of a joke, because you are trained in patent law and are constantly demonstrating your extremist and ill-tempered views about nonsense conspiracy theories and corrupt judges.

        I understand that information processing is a technical and physically based phenomenon. When patent protection extends to the content of that information, rather than it’s processing, or to human behaviors and decisions, it has gone beyond its Constitutional limits. When patents are granted to innovations that belong to the public, those patents are thefts under the color of law; basically immoral. Using a GUI designer tool (which is undoubtedly technical and eligible IMO ) for its intended purpose- to design new UI’s- should not be an infringing activity of anything but a copyright.

        Riddle me this- describe the PHOSITA for these Trading Technologies patents. Do they need to understand bond trading, or don’t they?

        1. 5.2.1.1

          >>nonsense conspiracy theories and corrupt judges.
          You mean saying that likely Google selected the judges and Obama appointed them? That is nonsense. Let’s take a look at the White House logs and Google role in the appointment of Lee. Certainly, no one would say it is nonsense.

          >>to design new UI’s- should not be an infringing activity of anything but a copyright.

          This is ne ar re tar ded. Saying the product of a tool is necessarily not patentable is absurd. All new inventions are made with tools that have already existed. You realize that there are machines for making new molecules right? Etc. Not going through all the latest tools for building mechanical inventions that are similar to UI design tool.

          >PHOSITA

          I would say yes.

          1. 5.2.1.1.1

            So Night Wiper, then bond trading is a technological art?

            Sure if you use a machine tool to turn out parts to a new machine, you have used the machine tool for its intended purpose and created something patentable; a new machine.

            If you use a GUI tool to turn out new GUI’s, you have used a new machine, but not to make a new methods. The designers of the GUI tool intended, and made obvious to skilled users of their machine, all the GUI’s that could be made with it. If you use a GUI tool to turn out a new GUI tool, you might have something.

            Here you do not. You have a bond trading method executed as intended by the designers of the GUI tool, who know nothing of bonds and don’t care about bonds.

            The POHISTA is a bond trader, not a GUI tool designer. If the PHOSTIA is a bond trader who can also design screens using a GUI tool, it’s still not a technological invention- surely not in the context of what CBM was meant to review.

        2. 5.2.1.2

          Marty,

          Night Writer may have his eccentricities, but make no mistake, YOUR continued attempts to engage on the terrain of a battlefield that you refuse to take time to understand makes you WAY MORE of a joke.

          1. 5.2.1.2.1

            Night Writer may have his eccentricities

            He’s a tr0 ll and a ped0phile just like you, Billy.

            1. 5.2.1.2.1.1

              Clearly, your posts are your “game” and your Accuse Others is no excuse for your p00r behavior.

        3. 5.2.1.3

          Information and information flow is just one of many ways that the physical world can be described. Just like temperature and thermodynamics. In a sense, thermodynamics is just math, but it’s math that describes the real world. Information theory is just one of many languages humans can use to describe real phenonema.

          1. 5.2.1.3.1

            Ah, but see Tegmark…

  8. 4

    I remember when my old firm was doing in-house attorney training for the (then) new AIA, one of the partners in charge of the presentation on CBMs had a gag where he wore special “x-ray” glasses that enabled him to see the difference between “technological” and non-technological inventions.

    On the assumption that the CAFC does not have such glasses, they really need to dig more deeply into what this word means. Today’s opinion was kind of a disappointing punt on this point. Supposedly the reason why an opinion gets labeled as “non-precedential” is because the case in question is just a bog-ordinary application of established precedent, with no value to the overall jurisprudence. To say that this standard applies to today’s decision is a sick joke. There is practically no guidance for the field as yet when it comes to interpreting “technological” in the CBM context. This would have been a useful opportunity to clarify that point, but instead the CAFC whiffed it.

    1. 4.1

      Really? I gave the presentation at my old firm on the AIA. A top 50 firm. The senior guys that worked in patents tried to talk me into transferring to the litigation (civil) or transactional business area as they said that patent value would drop 80 percent (which it did) and that patents could be gone in any real sense 10 to 15 years after the AIA.

      So far, they have been right. Their prediction that patents may be gone in any real sense may turn out to be true. They also said they didn’t see patent prosecution staying at big law firms as the margins would continue to shrink as the value of patents shrank.

    2. 4.2

      they really need to dig more deeply into what this word means

      Why limit this to “they?”

      I am STILL waiting for the usual (anti) pundits here to provide a non-circular definition.

  9. 3

    The conflict disclosure is a commendable addendum to this post. There should be a conflict disclosure on all guest posts. In many instances, it would say nothing more than “Prof. XXX has no conflicts of interest to disclose,” but that is still a good practice. It is fairly routine in the biological sciences to see such conflict disclosures in academic publishing.

    1. 3.1

      The reason we don’t have that is that large corporate advocates do have conflicts of interest.

      How about something like “Prof. X works at university Y and if you find that the paper presented here has ethical problems, you may report Prof. X to the ethics committee at university Y and the blog will post your allegations of unethical conduct.”

  10. 2

    Ah, if only:

    The [Supreme Court’s] holding otherwise, according to the court, is “internally inconsistent and therefore arbitrary and capricious.”

    …and Director Iancu, as well as a growing number of the judiciary can verify…

  11. 1

    *Some* so-called user interface claims are “technological” as that term is used in the context of the CBM statute. Specifically, the CAFC seemed these particular claims to be.

    But definitely not all. Also, seems like this “tech” is about as obvious as any “tech” can get (true of most GUI claims, for obvious reasons).

    1. 1.1

      But definitely not all

      Pardon me for doubting that you did anything more than declare this (in your mind), so please, tell us of an explicit claim that you actually believed is distinguished from those that the court has found to be “technological,” and — importantly — provide a cogent legal basis for your belief.

      Or is that simply too difficult for you?

    2. 1.2

      Yes we know MM either it isn’t eligible or it is obvious. That is why more people with genius IQ work in information processing (a physical process) than in any other field in the history of humanity. And all those geniuses think it is pretty hard work, but magic boy, MM, thinks it is easy. Easy as his magical structure and easy as the chemical claims that have no functional claiming.

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture