12:01 Tuesday

Hey Rocky, Watch me pull a skinning apparatus out of my hat!

I'm pleased to see that the folks over at the AnticipateThis blog were entertained by the Patent of the Day from a few weeks ago on the squirrel skinning apparatus. It reminded me that there was a postscript to the story, which was originally sent to an internal mailing list prior to this blog's creation.  There was quite a bit of discussion among us afterward on some of the, er, finer points.  But I'll now revisit one topic of that general discussion.  If you prefer G-rated content, you can skip the rest of this post.

First of all, there was no offense intended toward Kentucky.  Actually, one of the cited references is Patent No. 7,163,452, which is also a squirrel skinning device and a method.  (It's not for the squeamish; one claimed step is "inserting tail of a squirrel between said first and second gripping portions".  And there are Figures.  Nice Figures.)  Yes, there is competition in the squirel skinning market... a rising tide lifts all boats, I suppose.

However, it is with a mix of pride and embarrassment (there should be a word coined for this emotion -- any Atlantic readers out there?) that I note the inventors are from my home state of Michigan.  I haven't seen any reviews that compare the qualities of Michigan and Kentucky squirrels -- none of the restaurants I've found serve both varieties -- but I'd be curious to hear some opinions.  I'm guessing that Michigan squirrel is kind of like Great Lakes coho salmon, which was artificially introduced from the Pacific northwest, and just doesn't have that same, authentic ocean flavor.

In any event, it looks like the drawbacks of traditional squirrel skinning techniques are well known north of the Mason-Dixon line, too, as described in the Background section of the '452 patent:

"Hunting is an ancient art that at one time meant survival. Today, most hunting is recreational, but many hunters still eat the animals that they hunt. Before most animals can be eaten, they must be skinned and squirrels are extremely difficult to skin. In the past, squirrels have proved difficult to skin and this has led to a decline in the number of people who still hunt and eat squirrels.

"In the past, squirrels were often cleaned by splitting the skin across its back and then pulling the two pieces in opposite direction. This is difficult and gets a lot of fur on the meat. Another method often used in the past is placing a foot on the squirrel's tail and pulling on the hind legs. This method is better, but the tail often slips or is pulled out altogether. This method also has problems with fur."

Oh, Bullwinkle.  Let's hope you don't find Rocky in the wrong "hat".

"And now here's something we hope you'll really like."   Back to Bilski...

Bullseye on Bilski

For those who did not grow up or go to college in Michigan, there is a chance you do not know about Meijer (or, as it used to be called, Meijer's Thrifty Acres). And that's a shame. To call Meijer simply a "store" would be like calling the Queen Mary 2 simply "a boat".  Ahead of its time by at least 20 years, Meijer was a city under a roof - a department store plus grocery store.  And low prices.  And open 24/7.  (It was always fun buying some guppies for the fish tank from a less-than-knowledgeable employee in the pet department at 2AM. "No, I wanted a female.").  Meijer is a family-owned business out of Grand Rapids that still thrives in the midwest, now trying to compete against Wal-Mart (sadly, the closest Meijer to me is about 20 miles outside Chicago).

While we always found the merchandise at Meijer to be more than satisfactory, it wasn't what you'd call top-of-the-line.  To step up to the next level, you had to go someplace else:  Target.  As you probably know, Target has a long and storied history as an outgrowth of Dayton-Hudson, and has found its way into the hearts and pocketbooks of many American consumers using its combination of catchy marketing and reasonable prices.  And those cool escalators for shopping carts that could fascinate any six-and-a-half-year-old boy.  And his father.

While everybody knows Target, fewer know that subsidiary Target Brands is an active player in the U.S. patent world, holding about 90 design patents and 44 utility patents.  These patents cover a wide range of products, including the extremely practical prescription bottle system (U.S. Patent Nos. D583,242 and 7,413,082), a variety of product display devices, and a plethora of gift card products (the most bizarre of which is U.S. Patent No. 7,438,224 that combines a credit card with garden seeds.  I kid you not.)

Today, however, Target was issued its second true business method patent. (The first is 7,308,420 for a co-branded ISP.)  Unfortunately, it's likely on the wrong side of Bilski:

U.S. Patent No. 7,512,547 Financial transaction approval system and method Assignee: Target Brands, Inc. 1. A method of performing a retail transaction, the method comprising steps performed in the following order:  determining a total cost of at least one purchase to be made by a consumer in the retail transaction;  offering the consumer a first option to provide an endorsement and a final approval of the retail transaction prior to determining the total cost of the at least one purchase, to decrease the time the consumer spends in a checkout line of a retail establishment;  offering the consumer a second option to provide the endorsement and the final approval of the retail transaction after determining the total cost of the at least one purchase;  receiving the endorsement from the consumer; and  receiving the final approval from the consumer;  wherein the consumer is free to take the at least one purchase away from the retail establishment only following offering the consumer the first option, offering the consumer the second option, receipt of the endorsement and receipt of the final approval from the consumer in completion of the financial transaction.

At first blush, it looks like Target is essentially claiming the broad ability for its customers to sign the credit card receipt while the clerk is still ringing up items.  Am I missing something?  I guess they have to give the option to the consumer to sign either during or after everything has been rung up. 

Interestingly, there was a 101 rejection way back in the first office action in 2005, when the Examiner found the original claim 1 to claim an abstract idea.  Target overcame that by adding the words "with a processor" to its method, but eventually canceled the claim in light of prior art rejections.  101 was never raised again, even when the examiner gave the Notice of Allowance in January 2009.

Of course, if Target had similarly amended their other claims, I might not have had anything to write about today.  (Well, it certainly wouldn't be as fun.)

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One more to close things out:

U.S. Patent No. 7,512,548 Use of shopping cart to collect and purchase items selected from multiple web sites Assignee: Amazon.com 1. A computer-implemented method of facilitating the purchase of items selected from multiple different web sites, comprising:  tracking a user's selections of multiple items from multiple different web sites, wherein each web site corresponds to a different respective business entity and Internet domain name;  presenting the multiple items to the user as contents of a single, personal shopping cart;  providing the user an option to purchase the multiple items from the shopping cart as a single transaction; and  maintaining a record of said shopping cart contents on a server between user sessions such that the shopping cart remains persistent over multiple user sessions, said server being separate from a computer used by the user to make the selections.

This patent has a long prosecution history (filed in 1999), including a reversal at the BPAI last year.  But all the rejections were 102/103, and 101 never was raised.

There are at least four possible "particular machines" here: 1) the computer that's implementing the method, as stated in the preamble; 2) the multiple different websites; 3) the server holding the shopping cart (possibly the same as 1)); and 4) the user's computer for making selections.  Question: which, if any, do you think is the "particular" machine tied to this method under Bilski?

Some Tidbits

Welcome, Patently-O readers (i.e., everybody)!  Thanks to Prof. Crouch's writeup on Friday, I now have a taste of what a novelist must feel when his book is featured by Oprah.  Dennis, I promise I'll come on your show and let you chastise me for my fabrications when they're discovered.

Though I'd prefer to not write "what this blog is about" (I'd rather just write the content than the meta-content), based on some of the comments generated by the Patently-O post, I thought a few points were in order:

• Positive, not normative.  Everybody has an opinion of how things should be, and there are a ton of blogs that discuss why a particular policy or court decision is good or bad.  This blog isn't one of them.  Instead, I'm trying to limit my analyses to simply reflect what is.  With respect to Bilski, this simply means that I'm looking at claims in light of the machine-or-transformation test as I understand it, without comment on what might be a better 101 test.  It's not pro-patent or anti-patent.  It just is.

• 1201 Thursday?  One commenter noted the analogy that Tuesday:Issued Patents :: Thursday:Published Applications.  That's true, and there are several newshounds who scope out publications to see what competition is up to (see, e.g., all the stories about Apple patent filings).  While these new publications may be interesting from a technology perspective (though often not, due to the 18 month delay), they typically have not been examined and therefore aren't as instructive for my needs.

• BPAI Decisions.  I've been following these pretty closely, too.  Some of the Bilski-citing decisions, particuarly when that issue is raised sua sponte, are enlightening on the 101 front.  Though of less significant value, I have also tried to note cases where 101 was not raised by the post-Bilski BPAI (e.g., Ex parte Shuler and its "cattle information server", and Ex parte Dutta (IBM!) and its clearly defined "registration server").  But I generally won't discuss those decisions here, as there are other blogs with that more specific focus, such as Leigh Martinson's BPAI Watchdog.

• One BPAI Decision.  In my first exception to the above limitation, (I said "generally" for a reason...) there was a decision on Friday that helped answer a question I'd had for a while: Can the particular machine be implied by context or inherent in other claim terms?  In Ex parte Borenstein (IBM yet again), the Board dealt with 101 rejections for both utility and non-patentable subject matter.  The most useful passage is as follows:

Regarding the non-statutory test, while the storage of information in independent claim 1 could arguably be done as a mental process, the recitation of a structured relationship between multiple stores that requires 'path information' inherently implies that this information must be stored on a computer or database.  This 'particular' computer or database is sufficient structure to meet the machine prong of the machine-or-transformation test of In re Bilski.

Of course, the Board affirmed the 103 rejections, so this may all just be dicta.  But noteworthy nonetheless, and probably is good argument to use with your next Examiner interview after a 101 rejection.

Blog Title Goes Here [Is this correct?]: The value of proofreading

Many patent attorneys have long suspected that examiners during prosecution look only at the claims, and don't even bother with the specification.  My experience of late is that examiners are now more regularly looking at the spec and handing out 112 rejections if there is a lack of support for claim elements, even on first office actions where no amendments have yet been made.  (One recent action I received acknowledged that the original claims were technically part of the specification and thus not new matter, but nevertheless requested that the spec be amended to include the language of those claims.)  But there is still an apocryphal story that I heard once again last weekend of a patent that had buried in its specification something like "Hey examiner, I bet you don't read this".  I've never been able to verify that story (can you?), but I believe it.

When I heard it once again, though, some synapses fired to remind me of Raytheon's U.S. Patent No. 6,792,369 that I had come across a few years ago (thanks, bro).  In this case, it wasn't the examiner who missed it, but the patent attorney.  You're sitting there, reading the specification, when out of the blue, there is this conspicuous note to the inventor in all caps: "PETER, IS THIS CORRECT?"  It's both funny and sad, and no doubt a source of embarrassment for the attorney and firm, who didn't take the few extra minutes to proofread their application before filing it.  

And it made me wonder: just how many of these patents are there with stray notes to inventors?  Well, thanks to Google patents, we have a clue.  Googling just the term "Is this correct?" and sifting through the results yields, believe it or not, at least 23 issued patents, and 49 published applications with such notes.  (By the way, it's tough to do these searches on the USPTO engine because of stopwords.  Google's better on that, but has the drawback of not being current--it has a lag time of several months.)  And that's just one particular phrase.  There must be many others like, "Is this right?" or "Please explain" or "Do you really think this is distinguishable over the prior art, because it also has elements x, y and z."

Well, maybe not quite  as bad as the last one.  But not so far off.  In addition to the general embarrassment, some of these leftovers clearly would be deposition fodder if the patents were litigated.  Consider these, for example:

• U.S. Patent No. 6,331,957 (Intel Corp.) "<<Tsvika, is this correct, or why else is there no such register shown>>"
• U.S. Patent Pub. No. 2006/0212043 (Boston Scientific) "[Is this correct? What level of vacuum is required/preferred?]"
• U.S. Patent Pub. No. 2008/0052358 (Agility Management Partners) "/** Is this correct? Does it describe the way things were in the first version? If not, what is new and when was the change made? **/"

It's also noteworthy that these gaffes are (generally) found in the patents and applications of larger, more patent-experienced clients.  That actually makes sense, since an attorney filing several applications at once for a client with a large portfolio may not give the same attention to each as he might to a smaller client.  But it doesn't make it any more excusable.

What's worse is that the mistakes are rarely fixed: the issued patents with mistakes had those same mistakes in their respective published applications.  So either nobody is proofreading the publications, or nobody wants to 'fess up that they missed it the first time.  (There was at least one patent here, U.S. Patent No. 6,949,112 (Advanced Cardiovascular Systems, Inc.) that had a certificate of correction, but it seems to be the oddball.)

Worse still, in several of the patents, the mistakes persisted through multiple continuations and divisionals.  For example, consider the following four issued patents to Nortel:

• U.S. Patent No. 6,650,803 Method and apparatus for optical to electrical to optical conversion in an optical cross-connect switch 
• U.S. Patent No. 6,813,407 Method and apparatus for bridging optical signals in an optical network 
• U.S. Patent No. 6,944,364 Method and apparatus for regenerating optical signals in an all-optical cross-connect switch
• U.S. Patent No. 6,947,623 Signals and methods for increasing reliability in optical network equipment

Each contain the following language in their specifications:

Full duplex is accomplished over a single optical fiber by transmitting and detecting signals in the single optical fiber at each end.  [NOTE--IS THIS CORRECT TO SAY FOR FULL DUPLEX OVER A SINGLE FIBER. WE HAVE BEEN TRYING TO MOVE TOWARDS SAYING "TRANSPORT" SO WHEN AN OPTICAL RECEIVE AND TRANSMITTER ARE NOT PROVIDED. PLEASE COMMENT. WEA] The network 1304 also provides a bi-directional out-of-band signaling channel so that signals can be received and transmitted in each direction between the optical cross-connect switch and the attached network equipment 1402 and other network equipment coupled to the network 1304. [IN THIS CASE IT SHOULD BE OK TO SAY TRANSMIT AND RECEIVE BECAUSE IT'S THE SINGALING INTERFACE. CORRECT?]

One can't help but wonder how this could possibly be overlooked during a five year span covering at least three different publications and four issued patents.  If the thought was that filing a certificate of correction would draw more attention, that logic died when the first divisional was filed.

As I said before, it's been common belief that examiners ignore the specification when reviewing an application.  Why should we be surprised when we fail to look at the specifications when we are drafting them ourselves?

I'll spare some public shaming and hold off on listing all the applications and patents I've found.  It's enough to know just from the examples above that the problem is more pervasive than any of us in the profession would like.

Bilski and the Unknown Machine

Today's crop has several more patents where the examiner was satisfied that the essentially manual methods were "computer implemented," and a few where it's pretty clear that there is no computer at all.  I don't find these cases particularly interesting since most are just holdovers from a pre-Bilski era. It's pretty clear (to me, anyway) that they probably shouldn't have been allowed under today's standards.  Examples include U.S. Patent Nos.:

• 7,509,287 ("electrically calculating...")
• 7,509,284 to BGC Partners (linked to a non-descript "trading system")
• 7,509,278 ("using a computer to...")
• 7,509,261 to FHLMC ("electronically calculating...")
• 7,509,190 to Tenaska Power Services (completely manual)

More interesting, however, is one of today's patents that requires a little extra thought about the particularity of the machine.  Key terms are in bold.

U.S. Patent No. 7,509,292 Authentication of consumable items Assignee: Silverbrook Research Pty Ltd. 1. A method for validating the authenticity of an untrusted chip, the method includes the steps of: a) generating a random number and applying an asymmetric encrypt function to the random number using a public key to produce a first variable; b) passing the first variable to the untrusted chip; c) receiving a third variable together with a data message read from the untrusted chip, the third variable having been generated, in the untrusted chip, by a process including: d) decrypting the first variable with an asymmetric decrypt function using a secret key to produce a second variable, the public and secret keys being a public-private key pair; e) applying the asymmetric encrypt function to the second variable together with the data message using the secret key to produce the third variable; f) decrypting the third variable with the asymmetric decrypt function and using the public key to generate a fourth variable and comparing the fourth variable with the generated random number and the received data message; g) in the event of a match, considering the untrusted chip and the data message to be valid; otherwise considering the untrusted chip and the data message to be invalid. (Indentation as in original.  Go parse it yourself.)

Commentary: This patent relates to protocols for determining whether an "untrusted chip", such as found on a smart card or identity card, is authentic. Most of these cards are RFID-based.  A simple way to use RFID is where the card contains a static "key" that is transmitted to a card reader when passed in close proximity (e.g., getting access to my building elevator).  But other uses of RFID involve a more dynamic protocol.  That is, the card may actually perform computation -- typically of a cryptographic nature, such as a one-way hash function -- and spit back some computed value.  These kinds of protocols are more secure, and are useful in cards used for commercial transactions, where counterfeiting would pose an extremely large financial risk.  Interestingly, the preferred embodiment here isn't a smart card, but is a printer cartridge, as noted in the spec:

"Manufacturers of other systems that require consumables (such as a laser printer that requires toner cartridges) have struggled with the problem of authenticating consumables, to varying levels of success. Most have resorted to specialized packaging. However this does not stop home refill operations or clone manufacture. The prevention of copying is important to prevent poorly manufactured substitute consumables from damaging the base system. For example, poorly filtered ink may clog print nozzles in an ink jet printer, causing the consumer to blame the system manufacturer and not admit the use of non-authorized consumables."

(I love the rationale for why this copy-protection is needed -- because the manufacturer's reputation is at stake. Yeah, that's it...  I recall a little DMCA lawsuit in Kentucky and the Sixth Circuit a few years back over this very issue, and I don't think it was about the plaintiff being blamed when third party cartridges jammed their give-away printers.  It's all about the razor blades, baby.  Expensive, proprietary razor blades.)

So, turning to Bilski, what makes this case fascinating is that the only "machine" tied-in here via claim language is an unknown entity: the "untrusted chip".  (Reminds me of a classic law school case on federal jurisdiction, Bivens v. Six Unknown Named Agents.)  That is, in order to satisfy 101, the particular machine is one that is entirely outside the actor's possession and control.  Better still, the claimed method is essentially to test whether that unknown entity is actually a "proper" machine.  (The more straightforward approach would have put the machine in there by making this a computer-implemented method, as well.  Encryption/decryption using 128-bit keys can hardly be considered an otherwise manual process. And the figure really shows the "System 11" performing the steps of the method.)

Not bad.

Patent of the Week: Prayer Counter

President Obama was in the news yesterday for reaching out to the "Islamic Republic of Iran."  In his honor, here is the Patent of the Week:

 

U.S. Patent No. 7,508,316 Portable interactive Islamic prayer counter Filed: May 28, 2008 1. A method for indicating a current or completed Rakah of a plurality of Rakat performed by a user during an Islamic ceremonial prayer, the method comprising: providing a prayer counter with an indicator for indicating a prayer count; a first proximity sensor for sensing when a Sudjood position has been assumed by the user, the first proximity sensor sensing the Sudjood position without physical contact by the user; and a processor operably associated with the indicator and first proximity sensor for updating the indicator to the next Rakah thereby informing the user of the user's progress during the Islamic ceremonial prayer; programming the prayer counter with one of a plurality of Islamic ceremonial prayer modes, the plurality of prayer modes including a first prayer mode for performing two Rakat; a second prayer mode for performing three Rakat; and a third prayer mode for performing four Rakat; sensing the Sudjood position; and updating the indicator when the Sudjood position has been detected.

Commentary: This is not the first religious-based patent I've come across.  In December, I had a long string of emails with some Israeli patent attorneys about U.S. Patent No. 7,469,494 "Reading assistant for Torah scrolls". And there is U.S. Patent No. 6,589,056 "Hand held, hand operated, mechanical rosary prayer sequence symbol prompter."  And lots of others, too.  Heck, there are 326 utility patents that have "Christmas tree" in their title.

But the difference (non-substantive, obviously), is that today's patent was filed under the Acclerated Examination program.  The Brazilian inventor apparently thought this invention was valuable enough to warrant the extra effort and expense (and seeing that it was examined in the 2600 TC, this may have been wise).  As we've seen before, the examiner in AE once again appeared to be very helpful during prosecution, even recrafting an apparatus claim into the method claim that is now claim 1.

But one has to wonder about market demand for these products, particularly as religious affiliation is dropping in the US.  Given that most religions have been around for centuries or millenia, it's tough to imagine a patentable improvement to ritual that is going to catch on widely enough to turn a big profit.  I mean, it's not like the portable hookah system and hookah containment device of U.S. Patent No. 7,404,405, also an Accelerated Examination patent. For that one, I could understand why the inventor wanted to see his invention patented in 6.5 months. After all, "As hookah us increases in prominence, the need to make hookah smoking more amenable to a larger market increases in importance."

Big Blue, Bilski and Accelerated Examination

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 Assignee: IBM 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 Assignee: IBM 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.

Penny Pinching, and a Patent of the Day

Let's start with a Practice Tip o’ the Day:  When analyzing 101 under Bilski, be sure to look at dependent claims.

That said, we'll go and apply it twice today:

Those who have followed closely Bilski’s wake of subject matter destruction may have heard of Every Penny Counts, Inc., (“EPC”) the Florida based entity that has sued Visa, AmEx, Bank of America and others on U.S. Patent No. 6,112,191. The patent has been asserted against programs such as B of A’s “Keep the Change” that rounds debit card purchases to the nearest dollar and pockets the difference in a savings account.  In that pending litigation, B of A successfully moved to reopen discovery following the Bilski decision in order to serve 101-related interrogatories (which the court recently ruled went outside the scope of Bilski in denying B of A’s motion to compel responses).

Well, it looks like EPC has another arrow in its quiver – a newly issued, apparently unrelated patent that issued today:

Key terms are in bold.

U.S. Patent No. 7,502,758 Creation and distribution of excess funds, deposits, and payments Assignee: Every Penny Counts, Inc. 1. A method of accumulating credits from financial movements to and from an account held by a financial transactor and managed by an account manager, comprising: initiating roundup by accessing entries in the account with an information processor authorizing, by the transactor, rounding up of entries in the account; rounding up the entries in the account to obtain a total roundup amount; withdrawing the roundup amount from the account and debiting the account with the roundup amount; wherein the step of initiating roundup is performed by said information processor accessing the account in the account manager, and the steps of initiating, rounding up, and withdrawal are done outside the control of the account manager.

Commentary: The examiner did not try to identify a particular machine.  But I did.  Unsuccessfully.  If someone sees one, please let me know.  The obvious candidate is the oh-so-particular “information processor”.  But according to dependent claim 7 (today's trick), this may not be a machine at all:

7. A method as in claim 1, wherein the steps of accessing and rounding are performed by said information processor and said information processor is a service organization.

The application claims priority to a PCT filed in 2001 from some September 2000 provisional applications.  It’s a pre-Bilski allowance, but barely – October 2008.  Still, it’s tough for me to believe this one got through GAU 3696.  The 3600 TC was on heightened scrutiny for several months before Bilski, and 101 rejections (in my experience, anyway) were almost routine.  And there was a post-allowance, post-Bilski 312 amendment that gave the examiner another bite at the apple with the Machine-or-Transformation test fresh on his mind.  But he didn't bite.  Perhaps there is something in that the allowance here was the result of a pre-appeal conference after this claim had been finally rejected. 

Maybe we’ll see this one fought on 101 in litigation down the road...

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Here’s another one where the dependent claims shed some light on the alleged machine:

U.S. Patent No. 7,501,961  Determining a toll amount Assignee:         Rent A Toll, Ltd. 1. A method for determining a toll amount, comprising: determining a capture rate of transports at a toll location; determining the toll amount based on a multiplier value; determining via a toll processing unit, said multiplier value based on the capture rate of the toll location; and wherein the determining the multiplier occurs after the determining the capture rate.

Commentary: This one looks pretty bad out of the gate, doesn’t it?  Take away that “toll processing unit” (“TPU”) and it’s a straight Comiskey mental process, I think.  And, using today’s Practice Tip, look at dependent claims 6 and 7:

6. The method of claim 1, wherein the capture rate is determined by at least one of: a toll authority; a third party entity; a toll rental entity; an electronic device; and a human being. 7. The method of claim 1, wherein the capture rate is determined by at least one of: a manual process; an automatic process; a semi-automatic process; a static process; and a dynamic process.

Egad!  But, believe or not, I think the TPU here saves the day.  The spec and figures make it clear that this TPU is a machine that performs several specific functions and is more than just a general purpose computer when viewed in the context of the system here.  Recall that it only takes one element that is tied to the machine to satisfy BIlski.  Good thing, too, since without that TPU, this claim is roadkill.

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And here is today's Patent of The Day

U.S. Patent No. 7,502,827 System and method for communication between motorists in automobiles using license plate information 1. A system for communicating with a motorist, comprising: a repository of electronic addresses in which a vehicle is assigned an electronic address according to its license plate registration number, wherein the electronic address includes the license plate registration number; and a messaging service that enables a motorist associated with the vehicle to send and/or receive messages using the electronic address from said repository of electronic addresses via a wireless communication system.

Commentary:  In other words, your license plate is linked up with the address for your email, Facebook, instant message service, cell phone, etc.  And when might you use such an invention?  The inventor explains:

“For instance, I might want to order pizza from a pizza truck in front of me, or advertise my profession, or perpetually receive bids on my car, or buy a car from the salesman in front of me because he looks honest, all the way to having police officers rather to issue tickets/warnings through this system rather than step out into a dangerous highway or situation in general, etc.”

Wow, it actually makes me want to get stuck in traffic behind a bunch of delivery vans.  Or to fulfill my childhood dream of stopping the Entenmann's truck.  Plus, if you get caught up with road rage when the jerk in the SUV cuts you off, you can safely text him the finger, I guess.  Limitless possibilities.

Biggest. Week. Ever.

Although I haven't done a full analysis to back up the following statement, I would feel safe betting my kids' 529 plans on it: More patent applications were filed the first week of June 1995 than any other week in USPTO history.  How much more, you ask?  Consider the following:

• Number of utility patents issued for apps filed 6/1/1995 to 6/7/1995: 20,557
  
• Number of utility patents issued for apps filed the previous week: 2,476
• Number of utility patents issued for apps filed the following week: 1,564
• Number of utility patents issued for apps filed in all of 1995: 144,515

Staggering, no?  If you are looking at an issued patent that was filed in 1995, there is over a 14 percent likelihood it was filed in one particular week of that year.  But it gets better: half of those 20 thousand patents were filed on a single day: June 7, 1995.

Of course, this should not be shocking to most patent attorneys, who know that June 8, 1995 marked the GATT changes regarding the term of a patent: "17 years from issuance" went to "20 years from earliest claimed priority date".  The mad rush ensued, particularly for anyone with an application claiming priority back a few years or so.  (Jerome Lemelson has thirteen patents that were filed that week; Ronald A. Katz has nine).  I keep imagining what the post office looked like that evening...must have had an April 15th-like feel.  (if you have war stories, please share).

But what is more interesting is watching patents continue to issue that were filed that week nearly fourteen years ago.  So far in 2009, three such patents have issued.  The first,  U.S. Patent No. 7,491,205 issued on February 17, 2009, and will expire in 2026. Had it been filed a day later, it would have expired before it even issued -- it claims priority back to 1988. The other two, U.S. Patent Nos. 7,501,487 and 7,500,433, issued on March 10.

The chart below shows the very, very long tail of tricklers.

Fewer than five such patents have issued each quarter since Q3 2007.  One wonders when the tail will actually stop.

Obviously, when a patent takes this long in prosecution, there is almost certainly a story.  Typically, there is some up-and-down with the BPAI through appeals or interferences.  Sometimes there are just long, unexplained delays at the PTO (such as files that are mysteriously "lost").  But if any of those stories are particularly compelling, you'll be able to read them here.

Bilski Watch - A Tale of Two Transaction Systems

Lots of good examples today.  Too many, actually.  I'll leave the numerous auction patents aside and focus on two consecutively numbered, somewhat similar inventions, one of which is significantly more Bilski-proof than the other, in my opinion.  Makes for a nice teaching moment...

Key terms are in bold.

U.S. Patent No. 7,499,889 Transaction system Assignee: Cyota Inc. 1. A method of registering a card holder to a service during an online card transaction, said method comprising: after commencement of an online transaction by a card holder, receiving from a merchant web site a query as to whether the card holder is registered with an authentication service provider, wherein being registered with said authentication service provider requires authentication prior to proceeding with the online transaction; determining whether the card holder is registered with said authentication service provider; and if said card holder is not registered, sending a positive response to the merchant web site, thereby indicating that said card holder is registered with said authenticating service provider, and commencing registration of said card holder with said authentication service provider.

Commentary: Allowed in June 2008, pre-Bilski.  The lack of machine here leaves lots of questions.  What performs that "determining" step?  What sends the positive response?  Is a mere "merchant web site" enough of a machine for the MoT test?  Does "commencing registration" require a computer?  I think we know the answers to these questions, and the Examiner would have answered them if he had come across it a few months later...

Here's #2, for contrast:

U.S. Patent No. 7,499,888 Transaction authentication system and method Assignee: FusionOne, Inc. 1. A method for transaction verification, comprising: (a) receiving a request at a central server system, from a payment institution separate from the central server system, for verification of a cardholder electronic transaction, the payment institution receiving a request from a merchant separate from the payment institution; (b) automatically initiating contact by a first internet capable device associated with said cardholder with the central server system; (c) determining, by said central server system based on said contact, if said cardholder electronic transaction is authorized by said cardholder; and (d) communicating authentication information, by said central server system, to said payment institution.

Commentary: Filed in 2001, Notice of Allowance was post-Bilski.  Note how the applicant identifies a few clear "particular machines".  As we've seen with several successful examples at the BPAI, if you can say you have a specific-sounding type of "server", that may go a long way under Bilski, especially if your spec backs it up by defining that server in non-generic ways.

For another good example of this technique, see today's issuance to Visa: U.S. Patent no. 7,499,886, "Conducting commerce between individuals with integrated shipping", which uses a "transaction server" in a similar fashion to make clear that machine is tied to the process.

101 was never raised in any of these patents, however.

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And the ugly patent of the day is:

U.S. Patent No. 7,499,870 System and method for developing sales content Assignee: Sales Research Institute Inc. 1. A computer implemented method of developing sales information for use in a buyer-seller environment, the method comprising: providing one or more qualifiers which relate to a sales offering; determining value criteria, for each qualifier, to identify potential value of the sales offering including determining, for at least one of the qualifiers, an open-ended query statement which is used by the seller in an information gathering procedure, where the open-ended query enables the seller to determine a potential problem for the buyer, the information gathering procedure enabling the seller to determine information relevant to solving the problem for the buyer; determining ideal buying criteria based on a competitive analysis; and using a computer for developing the sales information from the value criteria and the buying criteria.

Commentary: As if this claim isn't ugly enough in the eyes of the new 101,  it gets even worse when you look at the proseuction history.  After stewing for five years with lots of other business method applications, the examiner gave a restriction requirement in June 2008, which the applicant traversed via a preliminary amendment in July.  Apparently there was a telephone conference in September that resulted in an Examiner's Amendment adding the italicized language above.  Of course, the Examiner's search and Notice of Allowance actually came in November, i.e., post-Bilski, but I guess nobody thought to apply the machine or transformation test at that point.  Instead, this straddler now is essentially a first action allowance.  And let's not even start with the 112 issues on "developing sales information".  Wow.