12:01 Tuesday

Safety for Six-Shooter: Patent of the Week - Part 2

Here's one you may not see everyday:

U.S. Patent No. 7,536,817

No-skip recocking revolver

Inventor: Leonard Storch (New York, NY)

Filed: July 7, 2008

Several interesting notes here:

1. Pro se applicant.

2. Inventor reads this blog.  Though I stumbled on this patent independently with my standard weekly searches, Mr. Storch was kind enough to contact me when his patent issued on Tuesday.

2. Petition to Make Special.  These aren't so common anymore, since they were replaced in August 2006 for all but a few categories by the new accelerated examination procedures.  But one of those remaining categories per MPEP 708.02 is applicant's age.  Here, Mr. Storch attested to his being over 65.  A year later, he has a patent.

3. Jepson claims!

4. A gun patent to a New Yorker?!  Why not!

5. The specification includes the following gems:

• "The inventor of the present invention is neither a gunsmith nor a machinist by trade. However, the inventor is an avid shooter, passionate about Second Amendment Rights, and an experienced inventor by trade having patented several diverse inventions. The inventor has U.S. Army and civilian experience target shooting and hunting with various hand guns and rifles and, at least when younger, was a dead shot earning a marksman medal in the Army."  

• "It is the ambition of this improved revolver inventor to have this present "Non-Skip Revolver" invention manufactured in superior quality "Non-Skip Trigger Cocking Double Action Revolvers" in 22 mag. and 44 mag. calibers for plinking and hunting, and in a small light weight five shot .38 Spl. for personal protection, and perhaps a licensed manufacturer(s) will offer a special edition set including all three caliber revolvers celebrating the Supreme Court's historic Jun. 26, 2008 Second Amendment Decision."

• "The present improvement represents another revolver safety advance. Ill-advised as it may be, it is just too tempting to hunters in the blood rush of hot pursuit of game to holster a cocked revolver to avoid skipping a round, for example, if their targeted game wanders off and they don't take their shot. Many a leg has been shot this way. Revolver accidents account for numerous lawsuits against manufactures. With this new safety feature, a hunter can decock, avoid skipping a round and holster safely." 

• "Who'd have thought, in this day and age of Glocks and tasers, old fashion six-shooters (six-chamber revolvers) could still stand significant safety and functional improvement?"

Certainly not me, Len.  Here's to you, for keeping our legs gunshot-free!

Training wheels for Unicycle: Patent of the Week - Part 1

Because I've always wanted to learn how...

U.S. Patent No. 7,537,229

Unicycle with auxiliary wheels

Inventor: Pao-Kung Wu

From the specification: 

"The unicycle has only one wheel such that the ride skill of the unicycle is more difficult than that of a bicycle.  As a result, some people give up learning to ride the unicycle because they often fall from the seat of the unicycle and gradually lose his/her confidence of riding unicycle during learning.  It's a pity."

A pity, indeed.

Closer Looks

My kids were recently introduced to the classic album from my childhood, “Free to Be You and Me,” and it's become part of the regular iPod rotation for the car ride to school.  It’s nice to see that not only are  they enjoying it, but they particularly like the same “Boy meets Girl” routine that I remember listening to over and over again when I was their ages.  The sketch features Mel Brooks and Marlo Thomas as newborns, with Brooks absolutely convinced he is a girl based on gender stereotypes (scared of mice, can’t keep a secret, wants to be a cocktail waitress, etc.).  When the truth is finally exposed, Thomas sighs the moral, “You can’t judge a book by its cover.”  Of course, neither of them have a clue what that expression means.  They’re just babies, after all.

Which brings us (sort of??) to this week’s Bilski Watch.  There were once again several excellent examples of claims that probably should not have made it though.  Some had “help” from the examiners’ amendments (e.g., adding “computer implemented” to the method.)  But we’ve seen plenty of these before.  If you want more, I suggest simply searching on class 705.  (Here’s two:  U.S. Patent Nos. 7,539,642 and 7,539,643).

Instead, we’ll look at two patents that on their surfaces may deceptively appear to be slam dunks in one direction or the other.

U.S. Patent No. 7.538,690 Method of collecting parking availability information for a geographic database for use with a navigation system Assignee: Navteq North America, LLC 1. A method of obtaining data for a geographic database for use with a navigation system, the method comprising: collecting data indicating an event in a geographic region in which a parking facility is located, wherein said event selected from the group consisting of: sporting event, entertainment event, convention, exhibit, parade and holiday; collecting data indicating parking availability at said parking facility during said event including collecting data indicating locations of respective empty parking spaces; analyzing said data indicating parking availability; based on said analyzing, modeling an influence factor corresponding to historic parking data for said parking facility, said historic parking data indicating past parking availability at said parking facility including location information of available parking spaces and said influence factor indicating an increase or decrease in said past parking availability based on said event; and storing said historic parking data and said influence factor in said geographic database.

Commentary: While lots of people know GoogleMaps, Mapquest, Garmin, etc., fewer know about Chicago-based Navteq, the company that provides much of the underlying data to those businesses.  That may be changing somewhat as Navteq appears to be branding itself more toward the end user (e.g., the local NPR station gives “Navteq traffic” reports during rush hour.)  But they probably have a ways to go.  My six-year-old son is a GoogleMaps fanatic, and could give a lecture about Hybrid vs. Satellite vs. StreetView while telling you how to get between any two points in the city.  Offline (no joke).  But he has no idea who Navteq is.

So you’d think that a company whose product/services are so closely tied to particular machines—navigation systems, as stated in the title of this patent and the preamble of claim 1—shouldn’t run into Bilski problems.  But unless that system in the preamble is somehow limiting of the claim’s scope (and it doesn't appear to breathe life to the claim terms), you should think again.  Data collecting, analyzing, modeling, storing... 101 never came up in prosecution. (And how does one know if he’s performed a general “analyzing” step?)

I do like the concept of this patent, though.  Anything that can help me find parking more easily would be welcome in my neighborhood.

Here is a second example, submitted by a blog reader:

U.S. Patent No. 7,539,656 System and method for providing an intelligent multi-step dialog with a user Assignee: Consona CRM Inc.  1. A method, comprising: receiving a question from a user; building a knowledge session in the context of a knowledge map using a plurality of input; creating at least one goal; presenting at least one question to the user; receiving at least one answer from the user; changing a session state based on the answer; resolving the at least one goal; and presenting feedback to the user.

Commentary:  The reader who submitted this jokingly used the subject line: “Patent for holding a conversation.”  My reaction was similar when I skimmed the claims.  But then I looked more deeply at the second step, “building a knowledge session.”  Sure, it sounds abstract and “untied” to an apparatus.  But the specification sheds some light here: the “knowledge session” is built by a “dialog engine”, which is a “machine for knowledge session management.”  So there may be something to this.  The spec describes how the dialog engine builds this knowledge session with various inputs, actions, and outputs.  And there is at least some discussion about hardware in there.  In short, upon further review it is not clear that this case is as easy as it initially looks.  Of course, it would have better for the patentee had they put some of that machine-type language into the claims.

Don’t get me wrong—I’m far from convinced this claim really flies over the 101 hurdle, especially with much of the apparently purely functional definitions the spec gives to these terms.  And independent claims 9 and 10 likely fare even worse.  101 didn't arise in the prosecution here, either.  But the point is that there needs to be at least some minimal analysis before rushing to judgment.

Contest Results

Congratulations to Cynthia Flanagan, a patent agent at Syracuse’s Burr & Brown firm!  As an entry for last week's contest, Cynthia submitted U.S. Patent No. 6,477,533, “Systems and methods of maintaining client relationships”, assigned to Travel Services International, Inc.  Apparently forty-one people contributed to the conception of these methods of assigning travel agents to cruise customers.

More impressive than this patent's large number of contributors, however, was Cynthia’s methodology for finding it.  Since the PTO search engine is a bit primitive, Cynthia got creative.  She noted that a large percentage of inventors are listed with middle initials, and that those middle initials are searchable as distinct words within the “Inventor” field.  Try searching “in/z” today and you’ll get 4,177 patents with inventors "___ Z. ___".

So, if you are looking for a patent with lots of inventors, try a lot of middle initials, say in/(a and b and c and d).  That gives a fair number of candidates to then look at manually.  It's not scientific -- you need to include the right combo of initials, and there may be a patent out there with a hundred inventors who don't have middle names -- but it's a great heuristic approach.

Using Cynthia’s technique, I was able to find fairly quickly a pair of patents with even more inventors. 51 to be exact.  And these patents belong to Microsoft for its .NET platform application program interface.  They are U.S. Patent Nos. 7,013,469 and 7,017,162.  Can you imagine the inventor disclosure meetings?  And if these ever are litigated, whose deposition is taken? Wow.

But since I’m not eligible for the contest, a gift certificate for Baskin-Robbins is on its way out to Cynthia. Thanks to everyone who entered!

Flushing away Bilski

The take-a-number toilet reservation system is back.  And it's mad.

A few years ago, IBM was issued U.S. Patent No. 6,329,919 for a “System and method for providing reservations for restroom use.”  This made news.  The patent soon became the face of all that was evil with the recent patentability of business methods.  In fact, public outcry rose to such a level that USPTO Director James Rogan ordered a reexamination of the patent.  A couple months later, IBM disclaimed the patent.

(Of course, the patent’s poster boy status lives on: like the Walker Digital patent family previously featured here, this disclaimed patent was nevertheless cited by Judge Mayer in his Bilski dissent as somewhere between “ridiculous” and “absurd”)

That brings us to this week’s issuance:

U.S. Patent No. 7.535.367 Airplane lavatory reservation system Inventor: Nitesh Ratnakar (Oak Creek, WI) 1. A lavatory reservation system comprising of; 1) assigning lavatory set to user among multiple lavatories in a facility according to user location in the facility; 2) lavatory reservation request input means; 3) lavatory door lock having means to restrict access to the lavatory based on set of rules; operatively connected to controller; and having input means; 4) a controller; 5) a monitoring device coupled to the controller and adapted to monitor occupancy of a lavatory; 6) computer program code operative with the controller enabling the controller to: receive a request to use lavatory from user; enter user in queue in assigned lavatory set according to set of rules; assign access code for lavatory reservation request; notify user of lavatory status; automatically operate lavatory door lock from second unlocked to first locked position upon lavatory door changing from first open to second closed position subsequent to entry of valid access code into corresponding lavatory door input means.

Commentary: Believe it or not, this is not the first bathroom reservation system since ‘919.  There’s U.S. Patent Pub. 2002/0022896, innocently entitled “Queuing methods and apparatus” by its patent attorney-applicant, and U.S. Patent No. 6,237,872 which was actually filed a few years before ‘919 (and granted to Dr. Reuven Bar-Levav, a Michigan psychiatrist who was murdered by a former patient in 1999).

Like those applications, today's also has an individual “non-traditional” inventor in Dr. Nitesh Ratnakar.  Unlike the previous applications, however, this one was filed pro se.  And I must say, it is one of the better pro se filings I’ve seen, both in form and substance of the file history (compare, for example, the classic Godly Powers application).  More impressive is that he filed this application electronically before EFS-Web.  Any patent attorney who suffered through that kludgy system surely appreciates Dr. Ratnakar’s extraordinary efforts.  Even I, a self-proclaimed tech-type, avoided this system and used it just once, and then only because the Rules required it in my particular situation.  So kudos, Doctor.  [Note: I still would strongly discourage prosecution of a patent pro se.] 

Turning to the meat, let’s compare Dr. Ratnakar's claim to that of IBM’s erstwhile ‘919 patent:

1. A method of providing reservations for restroom use, comprising:     receiving a reservation request from a user; and     notifying the user when the restroom is available for his or her use.

Yep.  Reading that two line claim, it’s understandable why people were up in arms.  But it’s not clear if the outrage was because of patentable subject matter (101, following the State Street case) or obviousness (103).  Recall that this patent was about to be reexamined because of prior art, not because the subject matter wasn’t patentable.  [By statute, all reexaminations are based on prior art. 35 U.S.C. Section 302.  Should this requirement be changed to allow for new 101 issues? 112?]

In contrast, Dr. Ratnakar’s claim looks pretty good with respect to Bilski.  There’s some fairly particular apparatuses in there: a door; a door lock; and a lavatory, at least.  And there may even be a physical transformation in the position of the door lock.  This claim’s undoing could turn out to be all those “means” under 112 (or 101 – see Ex parte Snyder), but I’m not looking at the spec to analyze that.

The file wrapper is unremarkable, other than the fact that the pro se inventor successfully navigated through two rejections, an RCE and an examiner interview to get his patent issued.  Then again, judging from his other filings and issued patents, Dr. Ratnakar appears to have quite a bit of experience with the patent system. His "Parking location reminder device" (U.S. Patent No. 7,411,518) is actually pretty nifty, imho.

So what do you think?  Does this week's toilet reservation patent bother you as much as IBM’s ‘919?  If not, why not?

As a final note, I'll point out that then-Director Jon Dudas gave a talk last year at which he reportedly referred to an application the USPTO “recently received for what was claimed to be a better way to stand in line while waiting to use an airplane toilet” as an illustration of declining application quality.  Sounds like Dudas may have been referring to this very patent, rather than IBM’s.  No doubt some will cast this "exemplary" application's allowance as an indictment of the PTO’s ability to separate the wheat from the chaff...

Contest of the Week

Although the USPTO's search database is adequate for many tasks, there are some questions that it just can't handle.  Like this one:

What's the greatest number of co-inventors you've ever seen listed on a U.S. patent?

Submit an entry by email (including # inventors and patent number) by 12:01AM Tuesday, May 26, 2009.  And just so you know, we learned today that if your answer isn't bigger than 31, you're not going to win.

Winner gets a free ice cream cone at Baskin-Robbins.

The Pure Miss

Well, that didn’t take long.

Last week I gave examples of two types of claims that probably shouldn’t have been allowed under current Bilski standards.  Today brings us a fine specimen from another category, the Pure Miss:

U.S. Patent No. 7,530,490 Systems and methods to perform credit valuation adjustment analyses Assignee: Goldman Sachs & Co. 1. A method, comprising: identifying information associated with an existing credit position involving a first party and counterparties; identifying information associated with a proposed credit position involving said first party and counterparties; calculating a first net present value of expected future losses based on a default of each of said counterparties; calculating a second net present value of expected future gains based on a default of said first party; and summing said first and second net present values to identify a third net present value of an expected future credit loss and gain of an overall credit position including both said existing credit position and said proposed credit position.

Commentary:  Not much room for argument here.  No machine. No transformation.  No dice.  And if you’re thinking there might some possible “inherency” defense (i.e., that “calculating” requires a computer), look at dependent claim 2 and think again:

2. The method of claim 1, wherein at least one of said steps is implemented using a computer.

The Notice of Allowance was mailed December 2008, several weeks after Bilski.

This is the third Goldman patent to be featured on this blog.  (See here and here.) That’s starting to approach IBM status, despite Goldman only filing a fraction of the number of patents as Big Blue (or so we’d believe – Goldman has an apparent strategy of filing many of its applications with non-publication requests).  But consider this: in the last six months (i.e., since Bilski), 8 patents have issued to Goldman Sachs.  There was only one 101 rejection in all their prosecution histories, and that came in 2003 (to U.S. Patent No. 7,457,774 “Dynamic reallocation hedge accounting”, which was overcome with adding a “computer” to the claims.)

Going back further, looking at the histories of the 21 Goldman patents that have issued in the last twelve months, the most recent subject matter rejection came in January 2008, applying the State Street test.  Three more of those 21 patents also received 101 rejections along the way for differing reasons: a 2006 application of State Street (7,389,261); a 2007 “computer program” rejection (7,403,919); and a Nuijten-like signal rejection in 2006 (7,376,615).  All these rejections were easily addressed with simple amendments or cancellations.  None of the Goldman patents have claims that were rejected under the test we now know and love.

Other than finding this fact noteworthy, I’m not quite sure what to make of it.  Certainly some of these Goldman patent claims present better than others under the new 101.  But considering that nearly all of them are in what many would consider Bilski’s business method sweet spot, it seems a bit surprising they don’t appear to have received higher scrutiny; even pre-Bilski examiners were applying the machine-or-transformation test and handing out such rejections regularly, right?  Go figure.

Goldman Sachs is legendary for its success on Wall Street. Perhaps it should it be celebrating its success in Alexandria, as well.

(Then again, do you really want to be the owner of a patent on anything within 100 yards of credit default swaps today?)

BPAI Affirms "Apparatus" 101 Rejection

The BPAI once again expanded the application of Bilski beyond method claims this morning, with an affirmation of an examiner's rejection of a "Text to XML transformer."  It's worth the read, and seems to fall in line with the Ex Parte Miyazaki holding about functional claiming (i.e., you better have some real structure there).  There it was about 112/6.  Here, for 101, the Board said, "At most, we find nominal recitations of structure in the claims."

The case is Ex Parte Snyder, for an application assigned to XAware, Inc.  I'll leave the commenting to others while I work on today's patent issuances.  But I will give one practice tip we can learn here:  When fighting a 101 rejection, don't include the following argument in your appeal brief:

"The Patent Office has failed to grasp the simple fact that a computer program run by a general purpose computer could just as easily be a hardwired circuit. There is no question that a hardwired circuit is patentable. Clearly the Patent Office is still wasting everyone’s time and money by not acknowledging that computer implemented Products are clearly statutory. A computer running a program that does not function to provide just “printed matter[,]” is clearly a Machine as defined by the statute 35 USC 101."

5/13/2009 UPDATE - Compare this decision, striking an apparatus under 101, with the newly precedential Ex Parte Catlin, which struck down a method claim under 112, following WMS Gaming/Aristocrat logic about means-plus-function claims lacking sufficient algorithmic structure.  In particular, see Footnote 2:

If the first step of these method claims were found not to invoke 35 U.S.C. 112, sixth paragraph, then the step simply recites purely functional language and would impermissibly cover every conceivable act for achieving the claimed result, and the scope of the claimed step would not be enabled under 35 U.S.C. 112, first paragraph.

Does this imply that Snyder's rejection really should have been under 112 for enablement, rather than 101?

Four Ways to Slip Past 101

I sometimes tell people that the hardest thing about writing this blog is deciding what not to post. 
Often, finding good patent examples is like shooting fish in a barrel.  This week is no exception, at least on the Bilski front.  But I’ll limit myself to two patents for now. 

In past posts, I’ve discussed a number of scenarios, trying to explain why—in my opinion—certain claims that should not have been allowed under Bilski (and Comiskey and Nuijten) were, in fact, allowed.  These scenarios can be categorized into at least four groups:

A: The Arbitrary Label (e.g., replace “general purpose computer” with “widget information retrieving engine”)

B: The “Helpful” Examiner (e.g., “Here’s what you need to get this allowed…”)

C: The Old Standard (e.g, “This produces a useful, concrete and tangible result…”)

D: The Pure Miss (e.g, 101 is handed up on a silver platter, but the examiner instead ignores it or pulls a Patrick Stefan)

Below are issuances demonstrating the first two categories.  I expect it won’t be long before we have some more examples of the last two.

---

Example A: The Arbitrary Label.

In past posts, I’ve noted that to show a machine is “particular”, it is helpful to give it a unique, descriptive name.  The best examples (e.g., “registration server” and “cattle information server”) not only have these specialized labels, but have specifications that disclose these machines in ways that show they are more than just general purpose computers, especially if hardware arrangements are involved. 

But we’ve also seen the opposite extreme, where it is clear that merely giving a fanciful moniker to what may be an otherwise ordinary machine does not suffice (see e.g., today’s BPAI Ex parte Labadie decision, where a “collaborator” didn’t cut it).  As they say, such a renaming “exalts form over substance.”

So what do we make of the following claim?

U.S. Patent No. 7,529,709  Systems and methods to facilitate a transfer of a refund amount from an educational institution to a student Assignee: Higher One, Inc. (New Haven, CT) 1.  A computer-readable medium having computer-executable instructions executed on a computer processor to control a transfer of a refund amount from an educational institution to a student, said instructions comprising: receiving at a refund controller that is independent from an educational institution a request from the educational institution for authorization of an instant paper check drawn on a a soft bank account that is independent from the refund controller of a payment amount equal to at least a portion of a total refund amount associated with the student of the educational institution; verifying at the refund controller that the payment amount is equal to or less than an amount of funds available to the student; and sending authorization from the refund controller to the educational institution to issue an instant paper check for the payment amount to the student.

Commentary:  First, let’s blow past the fact this is a Beauregard claim to the computer-readable medium, rather than the method itself.  We certainly can’t expect the PTO to give per se blessings to such CRM claims anymore.  So, if there is any machine in there, it’s the “refund controller.”

The specification is mixed on how it defines the refund controller.  On the one hand, it equates the refund controller with non-machines:

The facilitating bank 520 may also receive instructions (e.g., from the university 510 or from a refund controller 540)...

Although the method of FIG. 6 has been described as being performed by a refund controller, note that some or all of the steps might instead be performed by a facilitating bank and/or a university.

Interesting.  On the other hand, with respect to one of the patent’s figures, the spec certainly paints the refund controller as a machine:

As used herein, devices (such as the refund controller and the student devices 760) may communicate via one or more communication networks…

The refund controller and student devices 760 may be any types of devices capable of performing the functions described herein. The refund controller may be associated with, for example, a Web server…

Perhaps most importantly, the “guts” of the refund controller are described with some specificity:

The refund controller comprises a processor 710, such as one or more INTEL.RTM. Pentium.RTM. processors, coupled to a communication device 740 configured to communicate via the communication network 750...The refund controller may also include an input device 720, such as keyboard (e.g., to provide refund search information) and/or an output device 730, such as a monitor or printer (e.g., to provide refund reports).

This passage strongly suggests that the refund controller really is a machine.  So the question turns to its particularity.  And I’m not so sure about that one.  We've seen these kind of "particular" machine before, haven't we?

But it seems clear that the label here helped get this claim over the 101 hurdle, and probably will make for a tougher fight if challenged in litigation.

---

Example B: The “Helpful” Examiner

I’ve also noted in past posts about times when examiners appear to pay some lip service to Section 101’s requirements, but are satisfied by fairly minor amendments to the claims.  In their defense, most of these past examples (and today’s) are based on pre-Bilski office actions and responses.  But there have been several post-Bilski cases, too.

Here’s an easy one.

U.S. Patent No. 7,529,703  Method and system for artificial neural networks to predict price movements in the financial markets Assignee: Citigroup Global Markets, Inc. 1.  A computerized method for predicting a price movement in a financial market comprising: generating a plurality of signals, comprising: choosing an output variable indicative of price movements in a financial market; choosing a plurality of input variables that are market-related to the output variable; obtaining market data for the output variable and the input variables over a predetermined time period; constructing at least one training set of data from the obtained market data for the output variable and the input variables; calculating, by the use of a computer, a weight to be assigned to each of the input variables using the at least one training set of data to reflect a correlation between the output variable and the input variable as found in the obtained market data; and transforming the output variable into a score; generating a signal based on the value of that score to predict a next price movement in the financial market based on the calculating of the weights; and predicting the next price movement in the financial market based on a majority of signals being the same.

Commentary: This one speaks for itself in light of the applicant’s pre-Bilski response to the last office action:

Claims 1-6, 16, and 18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.  In accordance with the Examiner’s suggested amendment in the teleconference on July 17, 2008, claim 1 has been amended to recited “calculating, by the use of a computer” in order to overcome this rejection.

Colleagues have told me stories of examiners being similarly satisfied by the inclusion of “computer” language in the past.  (I never encountered any of those examiners, personally.)  But it’s hard to imagine any of them continuing to give applicants such advice today.

Stay tuned for more...

That's FRAHn-ken-steen... (Patent of the Week II)

I'm assured by some of my biology-oriented colleagues that such things are patented all the time, and there is no 101 problem.  (Dupont received its famous patent on the Oncomouse--a transgenic rodent altered to have increased susceptibility to cancer--in 1988.)  Nevertheless, I can't help but get a crazy image in my head whenever I read the title and claims of this patent that issued on Tuesday:

U.S. Patent No. 7,524,491 Non-human animals with human-glial chimeric brains Filed: January 16, 2008 Assignee: University of Rochester 1. A non-human mammal with at least 30% of all its glial cells in its corpus callosum being human glial cells and/or at least 5% of all its glial cells in the white matter of its brain and/or brain stem being human glial cells.

Two prosecution questions: 1) Only 15 months from filing to issuance, and no Accelerated Examination.  Why can't we see that in the "digital arts?"  2) I'm not used to the "and/or" language getting past the examiners, but I suppose it is not a 112 problem if there's no resulting ambiguity.

By the way, I hear that the donor for those human glial cells was a woman.  I can't quite recall her name... Abby something.