In August 2006, the USPTO implemented its new program for Accelerated Examinations. Replacing the old "Petition to Make Special", the new program added somewhat onerous requirements on the applicant, most notably the task of searching for and identifying prior art, and then to do an element-by-element analysis of his claims with respect to the closest references. The tradeoff? An expectation that you'll get allowance or final rejection within a year. That's huge for business methods (my personal record was set a few years ago with a "Predicted First Action" of 117 months, but I've heard of longer.)
While others have debated about the perils of filing Accelerated Examinations (inequitable conduct traps, shooting your claims full of holes, cost, etc.), it seems that IBM has been quietly become the poster boy for AE. Or not so quietly, as seen in this presentation for the Intellectual Property Owners Association (IPO). Nothing earth-shattering there, but very interesting to read (e.g., IBM expects their petitions for AE to be dismissed, with the opportunity to correct, as a matter of course; average pendency is 5-7 months).
I've noted IBM's move toward Accelerated Examination before, but we're now starting to see the fruits of IBM's labor on an even larger scale. Today alone, about 20 patents issued to IBM that appear to have gone through the Accelerated Examination process. Here's two of them, which also serve as interesting Bilski examples (Big Blue is no stranger to the Bilski Watch, either, for good, bad, and ugly...).
Key terms are in bold.
U.S. Patent No. 7,506,333 Method, system and computer program for managing foreign holidays for a computer application based on email
1. A method for managing foreign holidays for a computer application, comprising:
receiving email information relating to foreign countries that a user communicates with;
calculating, based on the email information, a respective count for each of the foreign countries that indicates a number of times the user has communicated with respect to the foreign countries;
comparing the respective count for each of the foreign countries to a threshold;
through a software user interface, offering the user an option to add one or more foreign holidays corresponding to a particular one of the foreign countries to the computer application, when the respective count for the particular one of the foreign countries exceeds the threshold; and
through a software user interface, offering the user an option to specify a different country than an actual originating country from among the foreign countries that the user communicates with, and
wherein the respective count is respectively calculated for the actual originating country and for the different country to allow consideration of both a home country as the different country and a visiting country as the actual originating country for a particular individual.
Commentary: I'm scratching my head a little over this one on 101. Not for patentable subject matter, but for utility. Yes, I know it's a low statutory threshold, and the inventor does say, "There is a need to provide a way to add foreign holidays to a computer application." But really??
"[W]e are not always aware of special days when people in other countries are not working and, thus, are probably not available for calls or prompt email responses. Some solutions exist for adding certain holidays to a calendar [e.g., adding them] manually to our calendar. However, we will probably do so only after we first have a mishap caused by this lack of information, and this certainly does not offer automation of such a process."
Yes, yes, these mishaps are always a source of embarrassment for me. Perhaps we can improve on this invention for more local-based holidays. This will spare my out-of-town friends from my annual explanation about Casimir Pulaski day customs and traditions. (Pierogies, anyone?)
Turning to 101, all you need to know is that the Examiner wrote the following on October 23, 2008 -- one week before the Bilski decision:
"The examiner proposed amendments to claim 1 to overcome potential rejection under 35 U.S.C. 101 by making machine implementation of the method more clear (adding 'through a software user interface' to imply that software is being executed to carry out the prescribed method)."
Is there seriously a question now whether a generic software user interface should qualify as a particular machine? Let's move on.
U.S. Patent No. 7,506,026 Methods for buddy interaction reminder
1. A method for an interaction reminder to prompt a user to communicate with contacts in accordance with a preset threshold of interaction, comprising:
receiving a setting for a level of interaction to communicate with a contact, wherein the level of interaction corresponds with a threshold;
receiving a setting for a type of interaction corresponding to the level of interaction for communication with the contact, wherein the type of interaction comprises at least one of a telephone communication, an instant messaging communication, and an electronic message communication;
determining the level of interaction for communications with the contact;
increasing and decreasing the level of interaction based on a frequency of communications with the contact and based on the type of interaction with the contact;
displaying the level of interaction for communications with the contact; and
providing a warning in response to the level of interaction dropping below the threshold, wherein the level of interaction is displayed as a plurality of bar graphs to respectively indicate an amount of communication with each one of the plurality of contacts.
Wow... believe it or not, these patents are from two different groups of inventors, one in Israel and one in the US. Both apparently working in IBM's "Lotus Notes Enhancements-to-compete-with-Outlook" division. Interestingly, this one is a post-Bilski allowance, Nov. 6, 2008, though the telephone conference was pre-Bilski. Again, there was an Examiner's Amendment, this time to Insert "wherein the level of interaction is displayed as a plurality of bar graphs to respectively indicate an amount of communication with each one of the plurality of contacts."
This Examiner did not give the reasons for the amendment, and is silent on 101. It's tough to find an express machine in these claims. There might be a kind of inherency argument here (dispalying implies a displayer?) that isn't in the last patent, but I don't think so. I could perform this claim manually given a list of my IM activity and a sheet of graph paper.
Oh, that reminds me...I have to go interact with some buddies.