12:01 Tuesday

A Wild Ride on the 101

Speaking of old patents, there were two more pre-GATT patents issued today: U.S. Patent Nos. 7,514,397 (Trimeris) and  7,514,083 (University of Melbourne).  Neither appear to have particularly interesting prosecution histories.

On the flip side, IBM again has several Accelerated Exam patents today, using their single method claim technique that we’ve seen before.  Two of them sound pretty interesting: U.S. Patent No. 7,516,220 “Method and system for detecting and deterring robot access of web-based interfaces by using minimum expected human response time” – perhaps the PTO can use this instead of that darned reCAPTCHA; and U.S. Patent No. 7,515,899 “Distributed grid computing method utilizing processing cycles of mobile phones”.  [Didn't Bale do something like this in the Dark Knight? Could Batman be prior art?  Filmed partly in my office building, btw.]

But there is one patent that issued today that is not quite old enough, from 1995.  It is our first triple loser:

U.S. Patent No. 7,516,172 Method for finding quotient in a digital system Assignee: United Microelectronics Corp. Filed: August 2, 1995 1. In a system for digital information processing, said system having a memory, a method for generating data representative of a quotient Q=a.sub.0a.sub.1a.sub.2 . . . a.sub.b from data representative of a divisor Y=y.sub.1y.sub.2 . . . y.sub.n and data representative of a dividend X=x.sub.1x.sub.2 . . . x.sub.a, comprising the steps of: (a) aligning the first non-zero bit of X with the first non-zero digit of Y; (b) defining a signed-digit partial remainder series R.sub.i where R.sub.0=Y, a first sign series of the partial remainder S.sub.i where S.sub.0=0, a second sign series of the partial remainder S.sub.ri, a quotient bit series a.sub.i, and a counter i beginning from zero; (c) subtracting X from R.sub.i which yields next signed-digit partial remainder R.sub.i+1; (d) setting the sign of R.sub.i+1 to S.sub.ri+1; (e) setting the result of exclusive-OR of S.sub.i and S.sub.ri+1 to the true sign of the next remainder S.sub.i+1; (f) setting a.sub.i to 1 if S.sub.i+1=0 or R.sub.i+1=0; (g) setting a.sub.i to 0 if S.sub.i+1=1; (h) inverting the signs of all digits of R.sub.i+1 if S.sub.i+1=1; (i) shift R.sub.i+1 left by one bit; (j) adding 1 to i; (k) repeating steps (c) to (j) until i reaches a predetermined value or R.sub.i+1=0; and  (l) storing in said memory as said data representative of a quotient, a quotient resulting from step (k).

Let’s begin with Loser Reason #1: the filing date.  Because this patent wasn’t filed 8 weeks earlier, it will  expire 20 years from its priority date -- 2014 -- rather than 17 years from today.  That’s 12 years of term that just vanished.  (Actually, the patent will get 4.5 years tacked on due to a BPAI decision... see below)  Worse, there’s no apparent reason why this application couldn’t have been filed by June 7 – it was a continuation from a January 1994 application.

Loser Reason #2:  The patent was allowed in 2002.  So even with the post-GATT filing date, this application sat an extra seven years after it was allowed because of an alleged error with the PTO not sending the NOA to the new attorneys.  Two petitions later, the abandonment was withdrawn and the patent issued.

Loser Reason #3: Bilski and the method roller coaster.  This is a slam dunk under the Machine or Transformation test.  But this patent's story is fascinating because it spans and discusses a good chunk of the law that the Federal Circuit discusses in Bilski.  Note that this was a pre-State Street case.  The Examiner wasted no time (only about 7 months) to reject the claims under 101 citing the Freeman-Walter-Abele test.  The briefing argues over Alappat.  By the time the case was eventually ruled upon by the BPAI, State Street had been decided.  The Board reversed the Examiner under that test (note: PAIR mistakenly says this 8-15-2001 affirmed the examiner). 

But wait, there's more.  The Examiner requested reconsideration of the BPAI decision.  While I know this practice of requesting reconsideration is common when an applicant loses an appeal (though I've never seen a successful request), I have to admit I was unaware that an Examiner could do this, too.  Who knew?  It's pretty rare, apparently.  This cost about nine months of unrecoverable patent term (because this app was filed before 2000, Patent Term Adjustment is not available; only Patent Term Extension.  Yes, for you non-practitioners, these terms are actually different things. Never confuse PTE with PTA...reminds me of this discussion).

How about that for a triple-whammy?

One more patent to discuss today, an unlikely candidate:

U.S. Patent No. 7,513,005 Washing method for a dishwasher, and dishwasher for carrying out such method Assignee: BSH Bosch und Siemens Hausgersete GmbH 1. A method for washing and drying items in a dishwasher, comprising:  executing a washing program during which a washing liquid is applied to the items in the dishwasher; and  following completion of the washing program, executing a drying program such that, in response to both an interruption of the drying program resulting in the dishwasher no longer being in a program run state and a thereafter following restoration of the dishwasher to its program run state, a parameter value is measured and, in a first given circumstance, the drying program is resumed if a selected one of a predetermined deviation and an absence of the predetermined deviation from a nominal value is detected and, in a second given circumstance, a fresh cycle of a washing program and a drying program is initiated if the other of the predetermined deviation and the absence of the predetermined deviation is detected.

Some questions for the crowd:  What if it is a "general purpose" dishwasher?  Would that be a "particular" machine?  Is it particular simply because it manipulates tangible articles from a statutory class? And does it even do that?  Isn't what's being claimed the program that controls the washing, and not the washing itself?  And do you think this passes the transformation test, too (from dirty to clean; wet to dry)?

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.

Two for Today

Today’s winner is, once again, IBM.  U.S. Patent No. 7,372,373 “Method and system to gauge and control project churn”:

 

1. A computer-implemented method to gauge and control churn of a project, comprising:

o   determining an estimated project churn, wherein project churn includes any identifiable and unplanned changes to a scope of the project;

o   identifying at least one task of the project requiring rework or modification;

o   collecting heuristic information on each task of the project requiring rework or modification in response to any potential project changes for determining the estimated project churn, wherein collecting heuristic information comprises at least one of:

§  collecting a time to complete a same or a similar task in another project;

§  sampling a plurality of times to complete the same or similar task in a plurality of other projects; and

§  surveying a plurality of experienced project managers to provide an estimated time requirement to complete the task;

o   entering at least optimistic, pessimistic and expected time requirements for reworking or modifying each task of the project requiring rework or modification in response to any potential project changes; and

o   allocating resources in response to the estimated project churn based on the collected heuristic information and the at least optimistic, pessimistic and expected time requirements for each task of the project.

 

As 101 goes, I see absolutely no difference between this claim and Halligan’s.  This claim should die under Bilski (even Comiskey – it’s just mental steps but for the words “computer implemented”).

 

And isn’t this method performed routinely by.. like…everyone who’s ever planned a project?

 

Ironic twist: IBM paid the issue fee on 10/30/08 – the day of the Bilski decision.

--

 

Here’s a more interesting case.  Assignee is Barclay’s.  It’s U.S. Patent No. 7,471,086 ”Method of protecting an initial investment value of an investment”:

 

1. A method of protecting at least a portion of an initial investment value of an investment made by one or more investors, comprising the steps of:

·         providing a regulated investment company;

·         selecting a set of put option-based instruments having a first underlying reference and a set of call option-based instruments having a second underlying reference, the first underlying reference being the same as or substantially correlated to the second underlying reference, so that the set of put option-based instruments and the set of call option-based instruments collectively meet a diversification requirement for the regulated investment company;

·         determining using an option-based instrument calculator:

o   a first value of the set of put option-based instruments at initial investment of the set of put option-based instruments; and

o   a second value of the set of call option-based instruments at initial investment of the set of call option-based instruments, so that the sum of the first value and the second value is less than the initial investment value;

·         holding positions using the regulated investment company in the set of put option-based instruments and the set of call option-based instruments, so that the sets of put option-based instruments and call option-based instruments provide the at least a portion of the initial investment value at maturity of the investment; and

·         making available the at least a portion of the initial investment value to the one or more investors upon the maturity of the investment.

 

This one is noteworthy for a few reasons:

1)      It’s the first Bilski-questionable claim I’ve seen allowed that was examined *after* the Bilski decision (NOA is dated 11/18).  But that may not mean much as this examiner appears to have been unaware of recent 101 decisions – the original, unamended claims, were even worse from a Bilski/Comiskey perspective (first steps were “registering a C corporation; electing the C corporation to be treated as a regulated investment company…”) but the only 101 rejection was under Nuijten because of the broad Beauregard claim (encompassing non-physical media).

2)      Accelerated Examination.  Filed in 8/2007, final OA in 5/2008.  Overcome with an RCE.

3)      It was filed by Charles Macedo of Amster, Rothstein & Ebenstein, who has given several presentations and papers on the 101 issue.

4)      On the merits, the only “particular machine” in there is the “option-based instrument calculator”, which the specs describes only in functional terms (the figure shows a plain box representing this calculator).  But it sounds pretty “particular”.

 

Happy new year.

Bilski Watch: Good Bad and Ugly

Lots of candidates today, but here are the winners.

 

GOOD:

This one looks to have been Bilskified pretty well.  Need the file history to see for sure, but PAIR has been down.  It's to JPMorgan:

United States Patent 7,467,109  System and method for determining eligibility and enrolling members in various programs

 

1. A computer implemented method for enrolling an individual, who has an obligation to a financial institution, in a program wherein at least some financial status information relating to the individual is known, comprising:

• providing by at least one processor a list of payment programs to a user;
• receiving, from the user, a selection of a payment program suitable to the individual's financial circumstances from the list of payment programs;
• determining by the at least one processor whether the individual is eligible to enroll in the selected payment program by performing an evaluation with a processor based at least in part upon the at least some financial status information relating to the individual;
• providing information on the selected payment program to the user based on determining whether the individual is eligible to enroll in the selected payment program;
• receiving enrollment information for the selected first program from the user;
• determining whether the enrollment information meets a set of predetermined criteria for enrolling the individual in the selected payment program by performing an evaluation with a processor on at least part of the enrollment information; and
• enrolling the individual in the selected payment program when the enrollment information meets the set of predetermined criteria and the individual accepts enrollment in the selected payment program.

 

The machine here is the computer and processor, which may or may not be 'particular' (need to look at spec and figs to evaluate), but they did a good job putting as much meat on the bones as they apparently could.

 

 

BAD:

According to Ex parte Halligan, this one is doomed.  Nice try, though.  Assigned to The Olsen Group, of Switzerland.

United States Patent 7,467,110  Method for market making

 

1. A method performed by a computer of market making in an asset trading system, comprising the steps of:

(a) receiving asset price data for a first asset;

(b) receiving current system position information for the first asset;

(c) receiving quote request information for the first asset;

(d) calculating target position information for the first asset for each of one or more trading models; and

(e) calculating with the computer a bid/ask quote in response to said received quote request information, said calculation of a bid/ask quote using a hedging method and being based on said asset price data, said quote request information, said current system position information, and said target position information.

 

 

UGLY:

This one assigned is to Goldman Sachs:

United States Patent 7,467,112 Method for listing a futures contract that physically settles into a swap

 

So it has the transformation right there in the title... not sure what it means to 'physically settle'.  It's not in the claims.  I'm curious about the prosecution history (less than a year from filing to issuance), but I'll have to wait for PAIR. [UPDATE: This application was filed under the Accelerated Examination procedure. 101 is not mentioned in the prosecution history]

 

1. A method of operating an exchange, the method comprising:

listing a futures contract;

receiving an electronic signal that represents an order to buy or an order to sell the futures contract; and

upon settlement of the futures contract, requiring entry into a specified credit default index swap on a specified date against a specified counterparty, wherein

(a)(i) a long position in said futures contract entitles a holder of the long position to receive a fixed side of the specified credit default index swap on the specified date, and (ii) a short position in said futures contract entitles a holder of the short position to receive a floating side of the specified credit default index swap on the specified date; or

(b)(i) a short position in said futures contract entitles the holder of the short position to receive a fixed side of the specified credit default index swap on the specified date, and (ii) a long position in said futures contract entitles the holder of the long position to receive a floating side of the specified credit default index swap on the specified date; said specified counterparty being a clearinghouse.

 

note that the "electronic signal" probably doesn't constitute a particular machine, or an article for transformation -- it's not patentable subject matter under Nuijten.

Patent of the Week - Reusable Postage Stamps

This issued today to IBM – reusable, any-denomination postage stamps via RFID.

 U.S. Patent No. 7,457.760 Programmable radio-frequency identification (RFID) postage stamps

In addition to the invention itself, which sounds like a great idea, there’s interesting prosecution notes:

• Accelerated exam, baby.  Filed in February 2008, in Art Unit 3628 (a business methods unit) – which typically has pendency times about 4-5 years, I think.
• First action allowance (examiner buys into IBM’s reasoning distinguishing the prior art).  So there shouldn’t be as big a Festo problem, in my opinion (this is a question that still bugs me…it’s not so straightforward)
• Only one claim!  Why slow things up unnecessarily?  IBM filed a continuation shortly after the notice of allowance to capture the rest (presumably – it’s not yet public).
• It’s a method claim, with the end-user as the actor.  Interesting choice, but it makes sense here.  (and clearly passes the Bilski “tied to a particular machine” test – the machine here is the stamp)
• What, no American could think of this?  I guess those Brits know their Post.

Summary:

This invention introduces a single re-usable stick-on section of electronic paper, in the form of a postage stamp, containing an RFID chip. All the sender is required to do is simply affix the stamp to a parcel and swipe a smart card over the stamp to encode it. Once encoded, the sender can send the parcel via any number of 24-hour 7 day a week post-boxes, or for larger items some other deposit or collection mechanism may be used. When the sender's smart card is swiped over the stamp, the chip will be programmed with the sender's information such as payment details linked to the smart card so that the accurate cost of sending the item can be calculated and charged during the sorting process. During the sorting process, the item is accurately weighed and measured by the postal office. An anti-tampering mechanism is also provided to allow the stamp to be reused without jeopardizing the prior sender's personal and financial information. Also, the stamp may be encoded using the Bluetooth protocol.

Claim 1:

1. A method of using digital electronic paper in the form of a reusable stamp comprising:

·         affixing a stamp without a predetermined postage to an article to be mailed, wherein the stamp comprises a top layer having a visual display, middle layer having an electronics layer, and a bottom layer having an adhesive layer;

·         swiping a smart card to encode the affixed stamp with a unique payment identifier issued by a payment authority and valid for a single payment, and other information such that the visual display automatically updates to show a representation of the encoded information;

·         depositing the article with the encoded affixed stamp at a postal authority deposit location such that after the article is received by a postal authority, a postage value is determined automatically during a sorting process;

·         verifying the visual display and the encoded information on the stamp for evidence of tampering; automatically requesting payment of the calculated postage from a payment authority using the unique payment identifier, and

·         altering the adhesive through electrostatic manipulation to allow the removal of the affixed stamp so that the stamp may be reused.