12:01 Tuesday

Stanley

Though I'm a lifelong fan of the Detroit Red Wings, I'm sure I will get some chills looking down and seeing the Stanley Cup parade past my office building in about an hour. In its honor, here are two design patents inspired by the Grail. Unsurprisingly, both relate to drinking.  Bottoms up!

D461,367 "Drinking Mug"

 
D434,313 "Stanley Cup Shaped Can" 

Godot; Guffman; Bilski: USPTO Postpones Business Methods Meeting

Seems like we're not the only ones waiting for a decision. This morning I received the following e-mail from Jeff Smith, a supervisory examiner in the 3600 TC and coordinator of the annual Business Methods Partnership Meeting:

From: "Smith, Jeffrey A. (AU3625)" Date: June 11, 2010 6:37:36 AM CDT Subject: Notification of Postponement of the 2010 Business Methods Partnership Meeting Greetings, You were recently invited to attend this year's annual Business Method's Partnership Meeting to be held on July 15, 2010.  Regretfully, we must postpone this event.  We recognize and appreciate our community's profound interest in Bilski v. Kappos currently before the United States Supreme Court, and inasmuch as we still await a decision in this case, we find it best to postpone this meeting to a future time when more guidance will be in place for this decision. We apologize for any inconvenience the postponement of this meeting may have caused. We will provide notice to you once we determine the best possible date for the rescheduling of this event. Sincerely, Jeff Smith Supervisory Patent Examiner A.U. 3625 Knox, Rm 5D05

On the positive side, if you were planning on making the trip from out-of-town, you are now spared one dose of D.C. humidity this summer.

Posted on June 11, 2010 at 08:43 AM in Bilski | Permalink | Comments (2) | TrackBack (0)

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Seems like we're not the only ones waiting for a decision. This morning I received the following e-mail from Jeff Smith, a supervisory examiner in the 3600 TC and coordinator of the annual Business Methods Partnership Meeting:

From: "Smith, Jeffrey A. (AU3625)" Date: June 11, 2010 6:37:36 AM CDT Subject: Notification of Postponement of the 2010 Business Methods Partnership Meeting Greetings, You were recently invited to attend this year's annual Business Method's Partnership Meeting to be held on July 15, 2010.  Regretfully, we must postpone this event.  We recognize and appreciate our community's profound interest in Bilski v. Kappos currently before the United States Supreme Court, and inasmuch as we still await a decision in this case, we find it best to postpone this meeting to a future time when more guidance will be in place for this decision. We apologize for any inconvenience the postponement of this meeting may have caused. We will provide notice to you once we determine the best possible date for the rescheduling of this event. Sincerely, Jeff Smith Supervisory Patent Examiner A.U. 3625 Knox, Rm 5D05

On the positive side, if you were planning on making the trip from out-of-town, you are now spared one dose of D.C. humidity this summer.

Last week Yahoo! announced it was shuttering its answer to Google's AdSense, which was targeted at allowing smaller players -- blogs -- to make a few bucks through placement of ads. While that may be a front on which it has conceded defeat, judging by at least one of its recently issued patents, however, Yahoo! is keeping active in the bigger world of targeted online advertising. Consider this patent from a few weeks ago:

U.S. Patent No. 7,680,786 Optimization of targeted advertisements based on user profile information Assignee: Yahoo! Inc. Issued: March 16, 2010 1. A method of targeting based on user information, the method comprising:  identifying a set of keywords associated with content information requested by a user over a network;  retrieving advertising information corresponding to said set of keywords;  retrieving user profile information associated with said user, said user profile information comprising a user matrix, said user matrix comprises, for said set of keywords and said corresponding advertising information, click-through-rates associated with said user and a bid price for said advertising information;  filtering said advertising information to select advertisements based on said bid price for said advertising information and said corresponding click-through-rate associated with said user identified in said user matrix for said set of keywords; and  providing said advertising information selected to be displayed for said user in connection with said content information.

In other words, an advertiser pays more to present its online ad to you when it knows you historically have a higher rate of clicking-through to presented online ads. That, of course, can only happen if somebody is keeping track of your click-through rate. While this may not be so different from other forms of targeted advertising based on user profiles, something about it feels closer to the "evil" end of the Google-motto-scale. (The University of Chicago part of me sees this as a kind of double price discrimination: a) the advertiser willing to pay the most gets the slot; and b) the price is further determined based on traits of the specific users. Of course, the users here are the real "product" being sold to the advertisers, so it's not quite the same. But still interesting.)

From the patent prosecution angle, there are two additional things to note. First, there was no Bilski rejection.  Looks to me like the "network" is the only machine-like element explicitly mentioned.

Second, this patent is the first I've seen that went through the First-Action Interview Pilot Program. This program, which expired just last week, was set up for certain art units to allow applicants an opportunity to receive search results and interact with the examiner prior to a first action on the merits.  Here's how that played out for Yahoo!:

• 10/30/06 - Yahoo files application
• 6/4/08 - Yahoo enrolls in pilot program
• 9/10/08 - PTO gives a "Preinterview first office action"
• 10/10/08 - Yahoo proposes amended claims
• 11/18/08 - Yahoo and PTO have interview to discuss proposed amendment - no resolution
• 12/9/08 - PTO issues "First Action Interview Office Action" rejecting claims
• 1/9/09 - Yahoo amends claims
• 4/1/09 - PTO issues Non-Final, "first" action on the merits
• 7/7/09 - Yahoo amends
• 10/28/09 - Allowance

By participating in the pilot program, Yahoo got two extra bites at the apple (by proposing amended claims after the "Preinterview" action, and again amending after the "First Action Interview" action), PLUS the interview. And all before a true "first action on the merits." It also appears that the examiner may have accelerated the examination of this application (though this was not an advertised feature of the program).

The pilot was extended once, to 4/1/2010. But there's been nothing about it being extended again. If anyone has seen statistics relating to the program, please feel free to share.

For searching purposes, the USPTO classifies patent applications according to their general subject matter.  If you're the type to read the Patent Act cover-to-cover, you may already know that there is actually statutory authority for classification in 35 USC Section 8, which authorizes the Director to maintain a classification system "for the purpose of determining with readiness and accuracy the novelty of inventions for which applications for patent are filed."  Currently, there are over 400 classes, and you can find them on the PTO site if you really are curious (or really are bored...) See MPEP 900 et seq. for more information.

One class that is worth watching, and is part of my weekly scan, is class 705, titled, "DATA PROCESSING: FINANCIAL, BUSINESS PRACTICE, MANAGEMENT, OR COST/PRICE DETERMINATION." Class 705 contains most of the so-called "business method" patents.  Over the past couple years, a typical week would see about 45-65 patents issue from Class 705. Today that number jumped to 111.  And, as shown in the chart below, it appears to be the latest point in an upwards trend.

 
The trend is highlighted by focusing on the 60 patent mark. From January through July 2009, only three times did the number of weekly issuances from Class 705 exceed 60.  But from August 2009 through today, there have been only five weeks when the number was below 60.

This data runs counter to the CW that there would be a post-Bilski drop in the allowance of business method patents. (Potentially, anyway...it may be that there was a surge in non-business method applications from 705.)

Theories?  Could it simply be more examiners being hired in the Art Units that deal with 705-type applications?

For a move even Stephen Colbert would admire for its ballsiness, we extend kudos to Hewlett-Packard, who argued the following in its appeal brief of App. No. 09/976,630:

 

No mention of In re Nuijten, which was decided several months earlier. Or maybe HP thinks that it is unconstitutional to apply KSR, too, since there are oodles of obvious claims out there in issued patents...

Today, the Board of Patent Appeals and Interferences responded appropriately in its Ex Parte Haines decision:

Section 101 rejection of claims 21-27   Appellant alleges that the USPTO has issued patents to others that contain “propagated signal claims.” Appellant contends that the § 101 rejection of the instant claims is a violation of Appellant’s rights under the equal protection clause of the Fourteenth Amendment to the U.S. Constitution. App. Br. 14.   However, Appellant has not cited any authority in support of the novel legal argument. The U.S. Patent and Trademark Office is not part of a state (or local) government, but an agency of the U.S. Department of Commerce. Cf. U.S. Const. amend. XIV, § 1 (“No State shall . . . deny to any person within its jurisdiction the equal protection of the laws.”). We are not persuaded that the USPTO has violated Appellant’s rights to equal protection of the laws under the Constitution.[FN1] [FN1]: Absent showing that the agency acted pursuant to some impermissible or arbitrary standard, an argument based on the equal protection component of the Due Process Clause of the Fifth Amendment would also fail. See In re Boulevard Entertainment, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003) (TTAB decision that affirmed the refusal to register marks containing the term “jack-off” did not violate equal protection principles, even though the USPTO had previously registered similar marks for other applicants).

I was starting to lose hope for some of the patent applications I'd written that were more on the Comiskey end of the 101 spectrum. Fortunately, yesterday's issuance to Amazon.com renews my faith that an allowance is still possible.

U.S. Patent No. 7,672,868 Creating an incentive to author useful item reviews Assignee: Amazon.com 1. A method in a computer system for evaluating a creator of item reviews, comprising: causing the display of one or more item reviews submitted by the creator to a plurality of viewers; soliciting, from the viewers to whom an item review is displayed, an indication of whether the review is helpful; receiving and storing any solicited indication provided by the viewers to whom item reviews are displayed, each indication being either positive or negative; and applying, by said computer system, a formula to obtain a score for the creator based upon the stored indications that considers, for each review submitted by the creator, the number of viewers to whom the review was displayed that subsequently ordered the item identified by the review.

Commentary: Okay, it's not quite on the level of Comiskey's arbitration method. But is it that far off? The "applying, by said computer system…" -- the only possible tying to a machine -- was added by Examiner's Amendment in a first action allowance. The Bilski elephant just sat quietly in the room. Nor was 101 raised in the parent, U.S. Patent No. 7,428,496, a pre-Bilski issuance on extremely similar claims. What was raised there, however, was a head-scratching restriction requirement, leading to the divisional filing of what became the patent at issue:

This application contains claims directed to the following patentably distinct species: Species I: Directed toward determining an author score based on a net number of positive and negative indications received for each of the reviews submitted by the author. Species II: Directed toward determining an author score based on the number of consumers to whom a review was displayed that subsequently ordered the item identified in the review.

"Independent and distinct," eh? Regardless, Amazon chose to not traverse, and now has two patents for its user review system (which I admit to finding very useful).

Speaking of user review systems, it is interesting that Internet recommendation engine Yelp appears to have no patents or published applications to its name. Do you think it could have avoided some of its recent troubles if its approach and algorithm for reviews were "patent pending" and publicized? Perhaps that would, as the WSJ blog suggests, let Yelp "find a way for [its] sales team to more clearly express to business owners how its filtering process works." Just sayin'.

[Actually, it looks like Yelp really should know about such patents. U.S. Patent No. 7,590,562 for the somewhat-related, "Product recommendations based on collaborative filtering of user data", is assigned to Google. But the inventor is listed as Michael Stoppelman, brother of Yelp founder Jeremy Stoppelman. A former Google employee, Michael apparently has now joined forces with brother at Yelp.]

"The examiner is utterly confused about the lineage of this application..."

Thus begins the intriguing prosecution history of a patent that issued on Tuesday.  (Yes, even three feet of snow and the PTO being shut down could not stop the weekly arrivals of issued patents.)

Here are the basics:

U.S. Patent No. 7,658,935  Methods and compositions for stimulating the immune system Inventor: Samuel Bogoch Filed: May 15, 2001 Lineage as filed (and published in U.S. Pub. 2002/0045187): This application is a Continuation-in-Part of my application Ser. No. 07/744,649 filed Aug. 8, 1991, and the prior applications of which it is in turn a continuation-in-part, Ser. Nos. 941,940, 852,200, 621,112, 553,075, 550,432, 450,404, 385,451, and 922,799, which should be incorporated by reference in the present application.  Lineage as issued: This application is a continuation of and claims priority to application Ser. No. 08/031,562, filed Mar. 16, 1993; which is a continuation-in-part of application Ser. No. 07/744,649, filed Aug. 8, 1991, abandoned, to which the instant application also claims priority.              Application Ser. No. 07/744,649 is a continuation of application Ser. No. 07/227,621, filed Aug. 3, 1988, abandoned; which is a continuation of application Ser. No. 06/281,883, filed Jul. 9, 1981, now U.S. Pat. No. 4,976,957; which is a continuation-in-part of application Ser. No. 05/922,799, filed Jul. 7, 1978, now U.S. Pat. No. 4,298,590, and application Ser. No. 06/019,078, filed Mar. 9, 1979, abandoned; application Ser. No. 06/019,078 is a continuation-in-part of application Ser. No. 05/941,940, filed Sep. 13, 1978, abandoned; which is a continuation of application Ser. No. 05/852,200, filed Nov. 17, 1977, now U.S. Pat. No. 4,196,186; which is a continuation of application Ser. No. 04/621,112, filed Oct. 9, 1975, abandoned; which is a continuation-in-part of each of application Ser. No. 04/553,075, filed Feb. 25, 1975, abandoned, application Ser. No. 04/550,432, filed Feb. 18, 1975, abandoned, application Ser. No. 04/450,404, filed Mar. 12, 1974, abandoned, and application Ser. No. 04/385,451, filed Aug. 3, 1973, abandoned. All applications listed above are incorporated herein by reference.

Commentary: If you blinked while reading that, you may have missed an important grammatical mark: the period (emphasized with added space above) ending the first sentence and showing that this patent claims priority ONLY to the '562 application and the '649 application, and NOT to any of the other eleven applications listed there.  And if you've read this blog in the past few weeks, you know immediately why that matters: if the priority chain had not been severed, this patent would have have had an expiration date of August 1993, which is almost eight years before it was even filed. Instead, this patent has over a year of life, plus some extra time for PTO delays. Good move.

Of course, there's more to the story.  By cutting the chain, all the previous links theoretically become available as prior art under 102. Why only in theory?  Because the first severed-off application ("621) was abandoned and unpublished -- and thus is unavailable as a 102(b) reference.  And the '621's parent, which blossomed into the '957 patent, issued in December 1990 -- less than one year prior to the August 1991 priority date of this week's patent. (Surprisingly, the Applicant did not raise the unavailability of the '957 patent when it was cited in a 102(b) rejection along the way, instead choosing to argue on the merits.) And 102(e) does not apply since the inventive entity is the same (not "by another").  In other words, a reference filed twenty years earlier (July 1981) and not in the priority chain is unavailable as prior art. To this, my brother would say, "Only in America. (or was that Don King...)"

But wait.. there's more.  Late in the prosecution, the Applicant was hit with a 112 written description rejection.  The response?  Amend the specification to import language from the grandparent '649 application, thus giving the needed support to the claims. On the surface, that seems fine -- the '649 application is in the priority chain, after all, and it was incorporated by reference. [Note, however, that as of October 2004, such an incorporation of "essential" material from an unpublished application is not proper. 37 CFR 1.57(c).] The peculiarity here, however, is that the '649 application and the '957 patent--not in the priority chain--essentially share the same specification.

Talk about having your cake and eating it. In beating back the 112 rejection, the Applicant relied on language from a twenty-year old document to provide support for his claims; yet the Applicant distanced himself from that same document in order to avoid early expiration.

And it all appears to be legit. Fascinating.

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.

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

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.

Special Offer, Just For You: Yahoo's patent on targeted advertising

Last week Yahoo! announced it was shuttering its answer to Google's AdSense, which was targeted at allowing smaller players -- blogs -- to make a few bucks through placement of ads. While that may be a front on which it has conceded defeat, judging by at least one of its recently issued patents, however, Yahoo! is keeping active in the bigger world of targeted online advertising. Consider this patent from a few weeks ago:

U.S. Patent No. 7,680,786 Optimization of targeted advertisements based on user profile information Assignee: Yahoo! Inc. Issued: March 16, 2010 1. A method of targeting based on user information, the method comprising:  identifying a set of keywords associated with content information requested by a user over a network;  retrieving advertising information corresponding to said set of keywords;  retrieving user profile information associated with said user, said user profile information comprising a user matrix, said user matrix comprises, for said set of keywords and said corresponding advertising information, click-through-rates associated with said user and a bid price for said advertising information;  filtering said advertising information to select advertisements based on said bid price for said advertising information and said corresponding click-through-rate associated with said user identified in said user matrix for said set of keywords; and  providing said advertising information selected to be displayed for said user in connection with said content information.

In other words, an advertiser pays more to present its online ad to you when it knows you historically have a higher rate of clicking-through to presented online ads. That, of course, can only happen if somebody is keeping track of your click-through rate. While this may not be so different from other forms of targeted advertising based on user profiles, something about it feels closer to the "evil" end of the Google-motto-scale. (The University of Chicago part of me sees this as a kind of double price discrimination: a) the advertiser willing to pay the most gets the slot; and b) the price is further determined based on traits of the specific users. Of course, the users here are the real "product" being sold to the advertisers, so it's not quite the same. But still interesting.)

From the patent prosecution angle, there are two additional things to note. First, there was no Bilski rejection.  Looks to me like the "network" is the only machine-like element explicitly mentioned.

Second, this patent is the first I've seen that went through the First-Action Interview Pilot Program. This program, which expired just last week, was set up for certain art units to allow applicants an opportunity to receive search results and interact with the examiner prior to a first action on the merits.  Here's how that played out for Yahoo!:

• 10/30/06 - Yahoo files application
• 6/4/08 - Yahoo enrolls in pilot program
• 9/10/08 - PTO gives a "Preinterview first office action"
• 10/10/08 - Yahoo proposes amended claims
• 11/18/08 - Yahoo and PTO have interview to discuss proposed amendment - no resolution
• 12/9/08 - PTO issues "First Action Interview Office Action" rejecting claims
• 1/9/09 - Yahoo amends claims
• 4/1/09 - PTO issues Non-Final, "first" action on the merits
• 7/7/09 - Yahoo amends
• 10/28/09 - Allowance

By participating in the pilot program, Yahoo got two extra bites at the apple (by proposing amended claims after the "Preinterview" action, and again amending after the "First Action Interview" action), PLUS the interview. And all before a true "first action on the merits." It also appears that the examiner may have accelerated the examination of this application (though this was not an advertised feature of the program).

The pilot was extended once, to 4/1/2010. But there's been nothing about it being extended again. If anyone has seen statistics relating to the program, please feel free to share.

Class 705 Issuances Rising

For searching purposes, the USPTO classifies patent applications according to their general subject matter.  If you're the type to read the Patent Act cover-to-cover, you may already know that there is actually statutory authority for classification in 35 USC Section 8, which authorizes the Director to maintain a classification system "for the purpose of determining with readiness and accuracy the novelty of inventions for which applications for patent are filed."  Currently, there are over 400 classes, and you can find them on the PTO site if you really are curious (or really are bored...) See MPEP 900 et seq. for more information.

One class that is worth watching, and is part of my weekly scan, is class 705, titled, "DATA PROCESSING: FINANCIAL, BUSINESS PRACTICE, MANAGEMENT, OR COST/PRICE DETERMINATION." Class 705 contains most of the so-called "business method" patents.  Over the past couple years, a typical week would see about 45-65 patents issue from Class 705. Today that number jumped to 111.  And, as shown in the chart below, it appears to be the latest point in an upwards trend.

 
The trend is highlighted by focusing on the 60 patent mark. From January through July 2009, only three times did the number of weekly issuances from Class 705 exceed 60.  But from August 2009 through today, there have been only five weeks when the number was below 60.

This data runs counter to the CW that there would be a post-Bilski drop in the allowance of business method patents. (Potentially, anyway...it may be that there was a surge in non-business method applications from 705.)

Theories?  Could it simply be more examiners being hired in the Art Units that deal with 705-type applications?

BPAI to HP: Equal Protection Clause doesn't save claims from 101

For a move even Stephen Colbert would admire for its ballsiness, we extend kudos to Hewlett-Packard, who argued the following in its appeal brief of App. No. 09/976,630:

 

No mention of In re Nuijten, which was decided several months earlier. Or maybe HP thinks that it is unconstitutional to apply KSR, too, since there are oodles of obvious claims out there in issued patents...

Today, the Board of Patent Appeals and Interferences responded appropriately in its Ex Parte Haines decision:

Section 101 rejection of claims 21-27   Appellant alleges that the USPTO has issued patents to others that contain “propagated signal claims.” Appellant contends that the § 101 rejection of the instant claims is a violation of Appellant’s rights under the equal protection clause of the Fourteenth Amendment to the U.S. Constitution. App. Br. 14.   However, Appellant has not cited any authority in support of the novel legal argument. The U.S. Patent and Trademark Office is not part of a state (or local) government, but an agency of the U.S. Department of Commerce. Cf. U.S. Const. amend. XIV, § 1 (“No State shall . . . deny to any person within its jurisdiction the equal protection of the laws.”). We are not persuaded that the USPTO has violated Appellant’s rights to equal protection of the laws under the Constitution.[FN1] [FN1]: Absent showing that the agency acted pursuant to some impermissible or arbitrary standard, an argument based on the equal protection component of the Due Process Clause of the Fifth Amendment would also fail. See In re Boulevard Entertainment, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003) (TTAB decision that affirmed the refusal to register marks containing the term “jack-off” did not violate equal protection principles, even though the USPTO had previously registered similar marks for other applicants).

Flames of 101 Stay Unkindled for Amazon

I was starting to lose hope for some of the patent applications I'd written that were more on the Comiskey end of the 101 spectrum. Fortunately, yesterday's issuance to Amazon.com renews my faith that an allowance is still possible.

U.S. Patent No. 7,672,868 Creating an incentive to author useful item reviews Assignee: Amazon.com 1. A method in a computer system for evaluating a creator of item reviews, comprising: causing the display of one or more item reviews submitted by the creator to a plurality of viewers; soliciting, from the viewers to whom an item review is displayed, an indication of whether the review is helpful; receiving and storing any solicited indication provided by the viewers to whom item reviews are displayed, each indication being either positive or negative; and applying, by said computer system, a formula to obtain a score for the creator based upon the stored indications that considers, for each review submitted by the creator, the number of viewers to whom the review was displayed that subsequently ordered the item identified by the review.

Commentary: Okay, it's not quite on the level of Comiskey's arbitration method. But is it that far off? The "applying, by said computer system…" -- the only possible tying to a machine -- was added by Examiner's Amendment in a first action allowance. The Bilski elephant just sat quietly in the room. Nor was 101 raised in the parent, U.S. Patent No. 7,428,496, a pre-Bilski issuance on extremely similar claims. What was raised there, however, was a head-scratching restriction requirement, leading to the divisional filing of what became the patent at issue:

This application contains claims directed to the following patentably distinct species: Species I: Directed toward determining an author score based on a net number of positive and negative indications received for each of the reviews submitted by the author. Species II: Directed toward determining an author score based on the number of consumers to whom a review was displayed that subsequently ordered the item identified in the review.

"Independent and distinct," eh? Regardless, Amazon chose to not traverse, and now has two patents for its user review system (which I admit to finding very useful).

Speaking of user review systems, it is interesting that Internet recommendation engine Yelp appears to have no patents or published applications to its name. Do you think it could have avoided some of its recent troubles if its approach and algorithm for reviews were "patent pending" and publicized? Perhaps that would, as the WSJ blog suggests, let Yelp "find a way for [its] sales team to more clearly express to business owners how its filtering process works." Just sayin'.

[Actually, it looks like Yelp really should know about such patents. U.S. Patent No. 7,590,562 for the somewhat-related, "Product recommendations based on collaborative filtering of user data", is assigned to Google. But the inventor is listed as Michael Stoppelman, brother of Yelp founder Jeremy Stoppelman. A former Google employee, Michael apparently has now joined forces with brother at Yelp.]

Pruning Priority to Prolong the Patent

"The examiner is utterly confused about the lineage of this application..."

Thus begins the intriguing prosecution history of a patent that issued on Tuesday.  (Yes, even three feet of snow and the PTO being shut down could not stop the weekly arrivals of issued patents.)

Here are the basics:

U.S. Patent No. 7,658,935  Methods and compositions for stimulating the immune system Inventor: Samuel Bogoch Filed: May 15, 2001 Lineage as filed (and published in U.S. Pub. 2002/0045187): This application is a Continuation-in-Part of my application Ser. No. 07/744,649 filed Aug. 8, 1991, and the prior applications of which it is in turn a continuation-in-part, Ser. Nos. 941,940, 852,200, 621,112, 553,075, 550,432, 450,404, 385,451, and 922,799, which should be incorporated by reference in the present application.  Lineage as issued: This application is a continuation of and claims priority to application Ser. No. 08/031,562, filed Mar. 16, 1993; which is a continuation-in-part of application Ser. No. 07/744,649, filed Aug. 8, 1991, abandoned, to which the instant application also claims priority.              Application Ser. No. 07/744,649 is a continuation of application Ser. No. 07/227,621, filed Aug. 3, 1988, abandoned; which is a continuation of application Ser. No. 06/281,883, filed Jul. 9, 1981, now U.S. Pat. No. 4,976,957; which is a continuation-in-part of application Ser. No. 05/922,799, filed Jul. 7, 1978, now U.S. Pat. No. 4,298,590, and application Ser. No. 06/019,078, filed Mar. 9, 1979, abandoned; application Ser. No. 06/019,078 is a continuation-in-part of application Ser. No. 05/941,940, filed Sep. 13, 1978, abandoned; which is a continuation of application Ser. No. 05/852,200, filed Nov. 17, 1977, now U.S. Pat. No. 4,196,186; which is a continuation of application Ser. No. 04/621,112, filed Oct. 9, 1975, abandoned; which is a continuation-in-part of each of application Ser. No. 04/553,075, filed Feb. 25, 1975, abandoned, application Ser. No. 04/550,432, filed Feb. 18, 1975, abandoned, application Ser. No. 04/450,404, filed Mar. 12, 1974, abandoned, and application Ser. No. 04/385,451, filed Aug. 3, 1973, abandoned. All applications listed above are incorporated herein by reference.

Commentary: If you blinked while reading that, you may have missed an important grammatical mark: the period (emphasized with added space above) ending the first sentence and showing that this patent claims priority ONLY to the '562 application and the '649 application, and NOT to any of the other eleven applications listed there.  And if you've read this blog in the past few weeks, you know immediately why that matters: if the priority chain had not been severed, this patent would have have had an expiration date of August 1993, which is almost eight years before it was even filed. Instead, this patent has over a year of life, plus some extra time for PTO delays. Good move.

Of course, there's more to the story.  By cutting the chain, all the previous links theoretically become available as prior art under 102. Why only in theory?  Because the first severed-off application ("621) was abandoned and unpublished -- and thus is unavailable as a 102(b) reference.  And the '621's parent, which blossomed into the '957 patent, issued in December 1990 -- less than one year prior to the August 1991 priority date of this week's patent. (Surprisingly, the Applicant did not raise the unavailability of the '957 patent when it was cited in a 102(b) rejection along the way, instead choosing to argue on the merits.) And 102(e) does not apply since the inventive entity is the same (not "by another").  In other words, a reference filed twenty years earlier (July 1981) and not in the priority chain is unavailable as prior art. To this, my brother would say, "Only in America. (or was that Don King...)"

But wait.. there's more.  Late in the prosecution, the Applicant was hit with a 112 written description rejection.  The response?  Amend the specification to import language from the grandparent '649 application, thus giving the needed support to the claims. On the surface, that seems fine -- the '649 application is in the priority chain, after all, and it was incorporated by reference. [Note, however, that as of October 2004, such an incorporation of "essential" material from an unpublished application is not proper. 37 CFR 1.57(c).] The peculiarity here, however, is that the '649 application and the '957 patent--not in the priority chain--essentially share the same specification.

Talk about having your cake and eating it. In beating back the 112 rejection, the Applicant relied on language from a twenty-year old document to provide support for his claims; yet the Applicant distanced himself from that same document in order to avoid early expiration.

And it all appears to be legit. Fascinating.

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.