12:01 Tuesday

BPAI Announces April Conference

Though the USPTO is closed for Snowmageddon and no new BPAI decisions are being posted today, apparently the website controllers were able to flip the switch recently to announce the First Annual Board Conference. The conference has been billed as "A comprehensive conference, providing insight and analysis, from filing an appeal brief, through the U.S. Court of Appeals for the Federal Circuit’s view on the role of the Board in the development and advancement of the patent system."

In addition to various sessions with judges of the Board, the conference will feature a panel discussion with Chief Judge Michel and Judge Rader of the Federal Circuit, and a luncheon speech from Director Kappos.

This sounds like it could be an excellent event.

Patent Issues, Sees Shadow, Crawls Back to PTO

So what are the odds that only the 23rd patent granted to a Punxsutawney inventor in the last 35 years just so happens to issue on Groundhog Day?

Coincidence? You decide.

Could it be that Mr. Manners is trying to upstage Phil on his big day?

Conspiracy theorists, chime in, please.

U.S. Patent No. 7,655,109  Floor covering lifting and removal hand tool Inventor: Herbert C. Manners, Punxsutawney, Pennsylvania Issued: February 2, 2010

Patent of the Week: Condom Valve

Was it only this past September that we discovered this gem (see list at bottom of page) among several pro se patent applications by a Hawaiian doctor? Appropriate for today, I'm feeling a bit like Bill Murray in Groundhog Day:

U.S. Patent No. 7,654,265  Condom valve Inventor: Attila Mady Issued: February 2, 2010 1. A condom having a valved geometry, said condom comprising a first layer and a second layer of a material that is capable of providing a barrier to the passage of bodily fluids, microorganisms and viruses, with said first layer and second layer configured in an overlapping fashion to form a plicated membrane valve at a distal portion of the condom, with said first and second layers further configured such that they are tightly apposed to the glans penis, with said condom further including a reservoir for retaining ejaculate at a distal tip of the condom, and wherein said plicated membrane valve is configured such that the aforesaid first and second layers may separate and the membrane valve may open under pressure provided from the urethra to transmit ejaculate therefrom, permitting emission of semen from the reservoir to an area outside of the confines of the condom in the region corresponding to and physically approximated to the introitus of the urethra, to prevent build-up of fluid at the tip of said condom and to permit impregnation of the female partner engaged in sexual intercourse.

Ah, yes. How could we forget this invention, the SkyDome of contraception. Its purpose is "..to permit re-use with the same partner, or to...permit conception...while retaining...barrier type infection control."

I won't post all the details here (you're welcome), but it is worth reading the specification for entertainment (example: this is probably the first patent to use the words "surgically affixed", "Crazy Glue", "condom" and "shaft" in the same sentence. Ouch.)

You have to admire the patience of the examiner, though. Consider this snippet from the first of four interview summaries:

Applicant notified examiner of his displeasure stemming from his experience during prosecution of a different pending utility application. Examiner alerted applicant that he was not the examiner of record in the other pending application. Applicant maintained that his experience thus far with the PTO may be due to his lack of representation by an attorney. Examiner informed applicant that it is his intention to assist applicant throughout prosecution. Applicant maintained that examiner's rejections based on the prior art...were spurious.

Really?? An attorney might help? Ya' think? And recall that this is the inventor who actually did hire an attorney for a quick hit to respond to a messy 112 rejection in his previous patent...only to revoke the POA shortly thereafter.

We'll keep an eye out for more of Dr. Mady's patents in the future. Fun stuff.

Claiming Under the Influence (of Bilski)

In this blog's early days, you could throw a dart at the weekly Class 705 issuances and easily hit a patent that likely "failed" Bilski. Not so, anymore. As the contours of the machine-or-transformation test have (ostensibly) begun to take more definite form through examiner guidelines and BPAI decisions, and as the examining corps is more fully clued in, it's far less common now (in my weekly searching, at least) to find the true outlier.

Which brings us to the following patent that issued yesterday:

U.S. Patent No. 7,653,568  System and method of identifying individuals of influence Inventors: Edward B. Keller, et al. Issued: January 26, 2010 Assignee: GfK U.S. Holdings, Inc. 1. A method for generating a database scoring algorithm for use in identifying from demographic data those individuals in a population having a greater probability than other individuals in the population of influencing the choices made by others, the method comprising: a. providing status data indicating whether each individual in a first population is influential; b. providing demographic data for each individual in the first population, wherein the demographic data corresponds to a set of demographic variables; c. creating categorical intervals in each demographic variable such that each categorical interval is associated with one or more possible data values for the demographic variable; d. reformatting the demographic data based on the categorical intervals; e. identifying a plurality of predictive variables from the set of demographic variables, wherein identifying the plurality of predictive variables comprises: calculating for each categorical interval a response index value, and selecting as predictive variables only those demographic variables having a categorical interval with an index value exceeding a pre-determined threshold index value; f. calculating a percent gain for each categorical interval in a predictive variable as a measure of the correlation between the categorical interval and whether a person is an influential; g. creating a predictive model based upon the plurality of predictive variables, the categorical intervals, and the percent gains; h. validating the predictive model; and i. generating a database scoring algorithm based on the predictive model, wherein the database scoring algorithm is configured to receive demographic data for individuals in a second population and to output a ranking of individuals in the second population based on the probability that each individual is influential; j. wherein at least one of the steps of identifying a plurality of predictive variables, calculating percent gains, and generating a database scoring algorithm is performed by a computer.

Commentary: If you've read Malcolm Gladwell's The Tipping Point, you immediately recognize the motivation behind this invention. Gladwell identifies certain people as "Connectors", and notes that such people can be incredibly influential or powerful as a result of their large social circles. (You can take his test to see if you are a Connector yourself.)

The inventor here, Edward B. Keller, calls these folks "The Influentials", and wrote a book a few years back under that title. The premise, of course, is that advertisers waste too much money targeting the intended purchasers of a product, and instead should target those who can influence others to purchase via, e.g., word of mouth.

It's an interesting thought. Whether it is patentable, or how it can be claimed, is another story... The inclusion of the last element calling for the computer, especially in a "wherein" clause, smacks of a last-minute attempt at machine-tying. And not even particular machine-tying. Let's look under the hood:

• 101 Not Initially Raised. This claim was originally filed in a much shorter form. In particular, the last element of involving a computer was missing. In July 2006, however, the Examiner did not reject the claim as unpatentable. A 101 rejection first was raised in a Final Rejection in March 2007, citing the "useful, concrete and tangible" test. An amendment led to the withdrawal of the rejection in February 2008.


• 101 Returns After Comiskey. While the application was being appealed, the Examiner entered a new rejection in the Examiner's Answer to the appeal brief (a "rare" but permitted occurrence, per MPEP 1207.03), stating "Comiskey explains that mental processes per se are not statutory under 101." While it's nice to see an Examiner staying on top of the law, it would have made more sense to make this rejection prior to the appeal, in the Feb. 2008 office action -- Comiskey was decided in September 2007. Ironically, the Examiner's Answer was mailed October 30, 2008 -- the same day as the Federal Circuit's Bilski decision.


• Post-Bilski Activities. In reopening prosecution, the Applicant added several claim elements (what became steps f), g) and, most notably, k)), arguing that it was now "tied to a computer." The Examiner was unmoved, noting in a Final Rejection that the "identifying" step "may merely involve retrieving predictive variables from a database, which would amount to nothing more than insignificant post-solution activity." (GfK had also argued that the claim "transforms the underlying demographic data for a first population into a database scoring algorithm that can be applied to other sets of demographic data." The Examiner did not respond to that argument.)


• Mysterious Interview. Following the Final Rejection, the Applicants interviewed the Examiner. The substance of that interview, as summarized by the Examiner:

  "The rejections under 101, 112, and 103 were discussed."

  That's it. We know nothing more about what arguments were raised, apparently with success. There is no subsequent summary from the Applicant on record (MPEP 713.04). All that we know is that a Notice of Allowance, with no reasons for allowance, followed.

  The NOA did, however, contain an examiner's amendment in which certain terms were tweaked, and even two elements were added: d) and i). Could it be that the Examiner thought that "reformatting" data is a sufficient transformation under Bilski? We're left guessing.

I don't consider myself a Gladwellian Connector, and I doubt this invention would identify me as one of "The Influentials". But people probably don't need much influencing to start wondering about what was going on here.

BPAI Finds Particular Machine

Providing yet another data point for Bilski evaluations, the BPAI today decided Ex Parte Moyer, finding the following claim a) to be tied to a machine; and b) that the machine was "particular."

1. In a data processing system, a method of forming an immediate value comprising: receiving a data processing instruction at an input of a processor; the processor using a first field of the same data processing instruction as a portion of the immediate value; the processor using a second field of the same data processing instruction to determine a positional location of the portion of the immediate value within the immediate value; and the processor using a bit value in a third field of the same data processing instruction to determine a remainder of the immediate value.

We find that claim 1 recites a processor in each of the steps of the claimed process which imposed a meaningful limitation to the scope of claim 1 to process the received data processing instruction. Thus, we conclude that claim 1 is “tied to” a machine, i.e., a processor. We next decide whether the processor processes the data processing instruction claimed in claim 1 is a “particular machine” within the meaning of the M/T test. Our reviewing court provided guidelines that can be appropriately applied to this case that “[w]e have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” In re Alappat, 33 F.3d 1526, 1549 (Fed. Cir. 1994) (citation omitted), abrogated by Bilski, 545 F.3d 943 (regarding the “useful, concrete, and tangible result” test originally set forth in Alappat at 1544). Here, the processor recited in claim 1 is programmed to process data processing instructions in a particular way, i.e., forming an immediate value/operand of 32 bits with only one instruction (FF 1). Therefore, we conclude that the processor claimed in claim 1 is a “particular machine” within the meaning of the M/T test. Accordingly, we conclude that claim 1 satisfies the machine prong of the M/T test. ... In contrast to Benson, the present claimed process of the instant invention for processing a data processing instruction by a processor is not an abstract idea because the claimed process has real world use (to form a 32 bit immediate value/operand with only one instruction) and is practical in the computer field. In addition, the claimed process is neither a mathematical formula nor a mathematical algorithm. The claimed process, if allowed, would not patent an abstract idea or pre-empt any other uses of the mathematical formula, but rather give a limited monopoly of the claimed process to the Appellant. Indeed, claim 1 as written is not “so abstract and sweeping” that it would “wholly pre-empt” the use of any apparatus employing the claimed process recited therein.

The Board also reversed the claim's obviousness rejection.

Solution: Patent Expiration challenge

In the wake of the Federal Circuit’s Forest Group decision and with Solo Cup being briefed, I have found myself in collegial discussions constantly encountering the position that it is a simple matter to determine a patent’s expiration date quickly, and that “any person with basic knowledge of the patent system” can do so (Brinkema, J.)  There’s nothing like a nice counterexample…

Yesterday’s challenge was well-received, with several entries and a variety of responses (guesses?).  Here’s how I went about the determination, with notes along the way:

1)   The filing date is after June 1995, so term will be 20 years from earliest claimed priority date.

2)   Earliest claimed priority date for this patent is not listed on face, but rather is found in the first paragraph of the specification: January 10, 1990.  This is a proper priority claim, per 37 CFR 1.78(a)(2)(i).  See MPEP 201.11 III(A).  With no more information, it appears the patent expired January 11, 2010 – a week before it issued (based on this discussion at PatentlyO, I am working on the assumption that a patent is still in force until the day after its anniversary date).

a.     Red Herrings: in the file wrapper, this January 10, 1990 reference is not found in the Application Data Sheet (listing an August 1992 reference) or the Declaration (listing a June 1990 reference).  But the listing in the specification is sufficient, per MPEP.

3) Looking at the image of the first page (or the file wrapper), however, we see there is term extension of 162 days.  This fact is not apparent from the text of the PatFT database, and would lead to an expiration date of June 22, 2010.

4)   But also looking at the image, we see there is a terminal disclaimer of an undisclosed nature.  So we have to look at PAIR for more details (thankfully, this application was filed after 2000…otherwise we’d have to order the file history to make this “simple” expiration determination.) 

5)   Scanning the file wrapper shows that term is disclaimed beyond the term of U.S. Patent No. 7,546,699 – the parent patent.  If the parent patent expires before June 22, 2010, then so does our ‘710 patent.

 

6)   What is the expiration date of the ‘699 patent?  This is actually a more interesting 

 

question, and probably would require the courts to resolve.  But we can safely say that it is after June 22, 2010: 

a.     The earliest claimed priority date from the face/text of the '699 patent is August 10, 1992.  Plus there is 257 days of term extension (the extent to which the first office action exceeded 14 months from filing, minus applicant delay).  That would mean an expiration date of April 25, 2013.

i.     Red Herring: the June 18, 1990 claim in the Oath/Declaration is not a proper priority claim.  For one, the MPEP notes that a priority claim must be made in the Application Data Sheet and/or the specification. MPEP 201.11 III(D).  Further, there is no notice of the relationship (continuation/divisional/CIP) here, as required.

b.     But wait… the specification as originally filed included a priority claim to the January 10, 1990 application!  If valid, that would mean an expiration date of September 25, 2010.

c.      But wait again… the Applicant tried to delete this 1990 priority claim in a (second) preliminary amendment just four days after filing their application.  That's a little-known trick, permissible all the way up to allowance (or after, with a 1.312 amendment).

d.     But wait yet again… a week later, the Examiner found the amended specification unacceptable, and required Applicant to submit a substitute specification which “must include all of the desired changes.”  [Q: Did this nullify the amendment?]

e.     So the Applicant submitted a substitute specification – but Oops.. the substitute spec was identical to the original specification, and included the same January 10, 1990 priority claim.

f.     And, of course, the printed patent issued with the deletion of the priority claim!  [Q: What happens if the patentee tries to enforce this patent for infringement after June 21, 2010?  And what if they mark products after that date?]  (Unclear is why the published application, 2007-0240332, included the 1990 priority claim.)

7)   So the ‘699 patent expires in either September 2010 or April 2013.  Since both of those are after June 2010, it appears safe to consider the term of the ‘710 patent to expire June 22, 2010.

Congratulations to Rick, who ended up at the right result without doing any of the necessary work.  JV gets credit, as well, as the inclusiveness of the last day is unsettled.

Challenge: When does this patent expire?

"I returned a bag of groceries accidentally taken off the shelf before the expiration date."
-TMBG

To those of you who weren't persuaded by earlier posts that determining a patent's expiration date may not always be a simple matter, here's today's challenge:

On what date does U.S. Patent No. 7,647,710, issued today, expire?

Hint #1: You may need to look beyond the basic text page from the patent database.
Hint #2: You may need to look beyond the front page of the patent.
Hint #3: You may need to look at multiple entries in the file wrapper.

Bonus: might your answer change in light of Wyeth?

First correct answer emailed wins a wedding gift found while cleaning my closet over the weekend: a 1998 Borders gift certificate that the store won't honor.

A more complete discussion will follow.

BPAI Invokes Gutta to Reverse 101 Rejection

In Ex Parte Morrison the Board of Patent Appeals and Inteferences reversed the 101 rejection of the following claim today, citing the newly precedential Ex Parte Gutta case:

1. A system that facilitates managing product life cycle, comprising: a data-receiving component that receives data on availability of components to a product and suitable substitution components and determines relevance of the components to the product; an analyzing component that evaluates the received data, and determines, infers or predicts obsolescence and/or risk to end-of-life (EOL) of a subset of the components to a product by scoring each component on a numerical EOL scale; and a notification component that provides notification to at least one of individuals, computers and systems regarding obsolescence and/or risk to end-of-life of the subset of the components to a product, and provides recommendations in accordance therewith.

Appellants argue that the claim necessarily requires computer implementation, because without the computer the functions recited in the claims, most notably notification to individuals, computers and systems cannot be performed.

...

As the Examiner contends, it is the policy of this Office to not reject under statutory grounds novel and unobvious computer based algorithms when claimed as residing on a computer readable medium. Ex Parte Li, Appeal No. 2008-001213, (BPAI Nov. 6, 2008). The claims in the instant appeal, however, are composed of modules reciting functional algorithms or steps that are disclosed as embodied as software, but omitting the computer readable medium. (Spec. ¶ [0061]).

The recent CAFC decision In re Bilski, discussed above, addressed the statutory limitations of method claims. While method steps are incorporated in the appealed claims, for which neither a particular machine nor a transformation of an article is present, the claims are at least nominally styled as system claims.

For guidance on system claims, we look instead to the precedential Ex Parte Gutta, 2009 WL 2563524 (BPAI 2009). For a machine or manufacture that embodies an algorithm expressed as a series of steps, we are guided, based on Flook, Benson and Diehr, to see if the claim 1) recites a mathematical algorithm applied to a tangible practical application that resulted in a real-world use, and 2) did not encompass substantially all practical applications of the mathematical algorithm. (Ex Parte Gutta 2009 WL 2563524, at *7).

We look to representative claim 1 and notice, as the Appellants point out, that one of the components will notify an individual, computer or other system regarding the obsolescence or risk to EOL of the components of a product. (App. Br. 5-6). We find this notification of the end of life risks of the product to be a real-world use of the system, including the algorithm as claimed. While we do not necessarily endorse the useful, concrete and tangible tests, as addressed by the Appellants, we do find sufficient support for satisfaction of the Ex Parte Gutta test. We thus agree that the Appellants have demonstrated error in the Examiner’s rejection under 35 U.S.C. § 101. (emphasis added)

The Board affirmed the rejection of the claim under 102, however.

Territorial Prosecution

To help in my 7-year old son's quest to collect all the state quarters, each day I ritually place a dollar bill in the vending machine for a diet coke and see what change I get.  Call it my mid-morning excitement.  Just as we were in the home stretch a couple months ago, needing only an Idaho, I looked at my change and saw "Puerto Rico".  Apparently Congress sneaked a new law past me in late 2007 to release six new coins honoring D.C. and the five territories. [Trivia Q #1: can you name all five?  No peeking.]  And now I see there's another batch on the way honoring our National Parks.

I can personally attest that these quarter programs succeed at promoting learning in both kids and adults.  For example, my children have now played all the educational games on the U.S. Mint website (I haven't shown them the similar games on the PTO site).  And I've added two tasks to my bucket list: a) visit all the territories; and b) file a (legitimate) patent suit in the District Court for the U.S. Northern Mariana Islands, where LR 83.3 reminds you that shoes are required attire.  (Guam has the same rule.  I'm aware of only one patent case from Guam, Nanya Tech v. Fujitsu; it was transferred to N.D. Cal.)  And you thought Marshall, Texas was an inconvenient forum… try booking a trip to Saipan.  [Trivia Q #2: what's the only territory that does not have its own U.S. District Court?].  The quarter programs also raise a ridiculous amount of money (several billion dollars) for the government through seigniorage.

Of course, I turned to the patent questions.  A few queries at uspto.gov yielded the following results (current as of 12/31/09):

 No huge surprises.  But a few notes:

• Are you ready for some innovation?  The only two American Samoan patents issued in 1984 and 1997.  Evidently, in the last fifteen years there has been a lot more development of Samoan NFL talent than technology.  (Or soccer skills: the AS team has lost 12 World Cup qualifying matches by a combined score of 129-2). [And American Samoa is the answer to Trivia Q #2].

• Database errors:  Searching for these results in the PTO databases requires looking at both the state ("is/" or "as/") and country ("icn/" and "acn/"), since these fields are sometimes miscoded.  Also, there are typos: Reston is in VA, not VI.  I tried to account for these errors when I saw them.

• Disputed ownership:  The most recent utility patent to issue to a territorial inventor outside PR or DC was U.S. Patent No. 7,624,483, for a "Multi-roller snap ring" used with commercial fishing nets.  The file history reveals a classic ownership dispute, where the purported assignee successfully petitioned to prosecute the application without the inventors' declarations.  The inventors then put several letters in the file pleading their case, including an allegation of forgery in the invention assignment obligation and consulting agreement.  Don't expect this one to be litigated soon.  What's not clear is whether the Examiner could have (should have?)considered these to be "Conflicting 37 CFR 3.73(b) Statements", per MPEP 324.X: 

If, however, the ownership established as controlling is contested on the record by another party who has submitted a conflicting 37 CFR 3.73(b) statement, then the application or other proceeding shall be forwarded by the Office official in charge of the application or other proceeding to the Office of Patent Legal Administration for resolution of the ownership question.

• Under-served, warm weather markets?  Anybody want to open a patent shop in Guam?  Seeing that Chicago is about to be sacked with a foot of snow, it's tempting… 

Instructive 101 case from the BPAI?

Although I try to keep this blog focused mostly on issued patents, today's BPAI decision in Ex Parte Hughes is worth sharing.  In light of last week's precedential Ex Parte Gutta decision, do you think the Board erred when it reversed the examiner's 101 rejection of this claim?

1. An apparatus executing computer instructions for chronicling a portion of an electronic market comprises: a computer system including a processor; a main memory coupled to the processor; and persistent storage, associated with the computer system, the computer system executing: instructions for recording a first activity relating to a security interest in an order book in the main memory of the computer system; and instructions for recording the first activity in the persistent store.

Gutta says that its two-part test applies "if an applicant chooses to claim the manufacture in terms of applying a mathematical algorithm." This claim, when compared to the one held unpatentable in Gutta, may illustrate more precisely what the Board had in mind. Here, the panel found the claim sufficiently tied to a particular machine:

However, each of the independent claims on appeal recites devices, e.g., a computer system, a processor, a main memory coupled to the processor, and a persistent storage, which tie the claims to a particular machine or apparatus, and thus qualify the claims as patent eligible subject matter

Why the different treatment? Perhaps it is merely that Hughes's claim 1 can be seen as (albeit minimally) "tying these steps to...concrete parts, devices, or combinations of devices" since its method actually makes use of those parts (i.e., recording "in the main memory" and "in the persistent store"). In contrast, in Gutta's claim 14, the memory and processor are tossed in simply to encase the method within a "system", and are not at all "tied" to the steps of the method. Also, in Gutta the Board noted particularly that the method is described in the Specification "as a mathematical formula."

One takeaway is that Gutta's holding may not be as broad as originally thought, and that there may be some easy ways to circumvent it (at least until the forthcoming Bilski decision). Of course, with these claims, there's not much "there" there -- the 103 rejections were affirmed, rendering the 101 reversal as little more than dicta. But useful, still.

Query: Has anyone else had difficulty searching the BPAI decision database? For the last week or two, it seems the text searching capability has been ineffective.