I was starting to lose hope for some of the patent applications I'd written that were more on the Comiskey end of the 101 spectrum. Fortunately, yesterday's issuance to Amazon.com renews my faith that an allowance is still possible.
Creating an incentive to author useful item reviews
Assignee: Amazon.com
1. A method in a computer system for evaluating a creator of item reviews, comprising:
causing the display of one or more item reviews submitted by the creator to a plurality of viewers;
soliciting, from the viewers to whom an item review is displayed, an indication of whether the review is helpful;
receiving and storing any solicited indication provided by the viewers to whom item reviews are displayed, each indication being either positive or negative; and
applying, by said computer system, a formula to obtain a score for the creator based upon the stored indications that considers, for each review submitted by the creator, the number of viewers to whom the review was displayed that subsequently ordered the item identified by the review.
Commentary: Okay, it's not quite on the level of Comiskey's arbitration method. But is it that far off? The "applying, by said computer system…" -- the only possible tying to a machine -- was added by Examiner's Amendment in a first action allowance. The Bilski elephant just sat quietly in the room.
Nor was 101 raised in the parent, U.S. Patent No. 7,428,496, a pre-Bilski issuance on extremely similar claims. What was raised there, however, was a head-scratching restriction requirement, leading to the divisional filing of what became the patent at issue:
This application contains claims directed to the following patentably distinct species:
Species I: Directed toward determining an author score based on a net number of positive and negative indications received for each of the reviews submitted by the author.
Species II: Directed toward determining an author score based on the number of consumers to whom a review was displayed that subsequently ordered the item identified in the review.
"Independent and distinct," eh? Regardless, Amazon chose to not traverse, and now has two patents for its user review system (which I admit to finding very useful).
Speaking of user review systems, it is interesting that Internet recommendation engine Yelp appears to have no patents or published applications to its name. Do you think it could have avoided some of its recent troubles if its approach and algorithm for reviews were "patent pending" and publicized? Perhaps that would, as the WSJ blog suggests, let Yelp "find a way for [its] sales team to more clearly express to business owners how its filtering process works." Just sayin'.
[Actually, it looks like Yelp really should know about such patents. U.S. Patent No. 7,590,562 for the somewhat-related, "Product recommendations based on collaborative filtering of user data", is assigned to Google. But the inventor is listed as Michael Stoppelman, brother of Yelp founder Jeremy Stoppelman. A former Google employee, Michael apparently has now joined forces with brother at Yelp.]
In this blog's early days, you could throw a dart at the weekly Class 705 issuances and easily hit a patent that likely "failed" Bilski. Not so, anymore. As the contours of the machine-or-transformation test have (ostensibly) begun to take more definite form through examiner guidelines and BPAI decisions, and as the examining corps is more fully clued in, it's far less common now (in my weekly searching, at least) to find the true outlier.
Which brings us to the following patent that issued yesterday:
System and method of identifying individuals of influence
Inventors: Edward B. Keller, et al.
Issued: January 26, 2010
Assignee: GfK U.S. Holdings, Inc.
1. A method for generating a database scoring algorithm for use in identifying from demographic data those individuals in a population having a greater probability than other individuals in the population of influencing the choices made by others, the method comprising:
a. providing status data indicating whether each individual in a first population is influential;
b. providing demographic data for each individual in the first population, wherein the demographic data corresponds to a set of demographic variables;
c. creating categorical intervals in each demographic variable such that each categorical interval is associated with one or more possible data values for the demographic variable;
d. reformatting the demographic data based on the categorical intervals;
e. identifying a plurality of predictive variables from the set of demographic variables, wherein identifying the plurality of predictive variables comprises: calculating for each categorical interval a response index value, and selecting as predictive variables only those demographic variables having a categorical interval with an index value exceeding a pre-determined threshold index value;
f. calculating a percent gain for each categorical interval in a predictive variable as a measure of the correlation between the categorical interval and whether a person is an influential;
g. creating a predictive model based upon the plurality of predictive variables, the categorical intervals, and the percent gains;
h. validating the predictive model; and
i. generating a database scoring algorithm based on the predictive model, wherein the database scoring algorithm is configured to receive demographic data for individuals in a second population and to output a ranking of individuals in the second population based on the probability that each individual is influential;
j. wherein at least one of the steps of identifying a plurality of predictive variables, calculating percent gains, and generating a database scoring algorithm is performed by a computer.
Commentary:
If you've read Malcolm Gladwell's The Tipping Point, you immediately recognize the motivation behind this invention. Gladwell identifies certain people as "Connectors", and notes that such people can be incredibly influential or powerful as a result of their large social circles. (You can take his test to see if you are a Connector yourself.)
The inventor here, Edward B. Keller, calls these folks "The Influentials", and wrote a book a few years back under that title. The premise, of course, is that advertisers waste too much money targeting the intended purchasers of a product, and instead should target those who can influence others to purchase via, e.g., word of mouth.
It's an interesting thought. Whether it is patentable, or how it can be claimed, is another story... The inclusion of the last element calling for the computer, especially in a "wherein" clause, smacks of a last-minute attempt at machine-tying. And not even particular machine-tying. Let's look under the hood:
101 Not Initially Raised. This claim was originally filed in a much shorter form. In particular, the last element of involving a computer was missing. In July 2006, however, the Examiner did not reject the claim as unpatentable. A 101 rejection first was raised in a Final Rejection in March 2007, citing the "useful, concrete and tangible" test. An amendment led to the withdrawal of the rejection in February 2008.
101 Returns After Comiskey. While the application was being appealed, the Examiner entered a new rejection in the Examiner's Answer to the appeal brief (a "rare" but permitted occurrence, per MPEP 1207.03), stating "Comiskey explains that mental processes per se are not statutory under 101." While it's nice to see an Examiner staying on top of the law, it would have made more sense to make this rejection prior to the appeal, in the Feb. 2008 office action -- Comiskey was decided in September 2007. Ironically, the Examiner's Answer was mailed October 30, 2008 -- the same day as the Federal Circuit's Bilski decision.
Post-Bilski Activities. In reopening prosecution, the Applicant added several claim elements (what became steps f), g) and, most notably, k)), arguing that it was now "tied to a computer." The Examiner was unmoved, noting in a Final Rejection that the "identifying" step "may merely involve retrieving predictive variables from a database, which would amount to nothing more than insignificant post-solution activity." (GfK had also argued that the claim "transforms the underlying demographic data for a first population into a database scoring algorithm that can be applied to other sets of demographic data." The Examiner did not respond to that argument.)
Mysterious Interview. Following the Final Rejection, the Applicants interviewed the Examiner. The substance of that interview, as summarized by the Examiner:
"The rejections under 101, 112, and 103 were discussed."
That's it. We know nothing more about what arguments were raised, apparently with success. There is no subsequent summary from the Applicant on record (MPEP 713.04). All that we know is that a Notice of Allowance, with no reasons for allowance, followed.
The NOA did, however, contain an examiner's amendment in which certain terms were tweaked, and even two elements were added: d) and i).
Could it be that the Examiner thought that "reformatting" data is a sufficient transformation under Bilski? We're left guessing.
I don't consider myself a Gladwellian Connector, and I doubt this invention would identify me as one of "The Influentials". But people probably don't need much influencing to start wondering about what was going on here.
Providing yet another data point for Bilski evaluations, the BPAI today decided Ex Parte Moyer, finding the following claim a) to be tied to a machine; and b) that the machine was "particular."
1. In a data processing system, a method of forming an immediate value comprising:
receiving a data processing instruction at an input of a processor;
the processor using a first field of the same data processing instruction as a portion of the immediate value;
the processor using a second field of the same data processing instruction to determine a positional location of the portion of the immediate value within the immediate value; and
the processor using a bit value in a third field of the same data processing instruction to determine a remainder of the immediate value.
We find that claim 1 recites a processor in each of the steps of the claimed process which imposed a meaningful limitation to the scope of claim 1 to process the received data processing instruction. Thus, we conclude that claim 1 is “tied to” a machine, i.e., a processor. We next decide whether the processor processes the data processing instruction claimed in claim 1 is a “particular machine” within the meaning of the M/T test.
Our reviewing court provided guidelines that can be appropriately applied to this case that “[w]e have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” In re Alappat, 33 F.3d 1526, 1549 (Fed. Cir. 1994) (citation omitted), abrogated by Bilski, 545 F.3d 943 (regarding the “useful, concrete, and tangible result” test originally set forth in Alappat at 1544).
Here, the processor recited in claim 1 is programmed to process data processing instructions in a particular way, i.e., forming an immediate value/operand of 32 bits with only one instruction (FF 1). Therefore, we conclude that the processor claimed in claim 1 is a “particular machine” within the meaning of the M/T test. Accordingly, we conclude that claim 1 satisfies the machine prong of the M/T test.
...
In contrast to Benson, the present claimed process of the instant
invention for processing a data processing instruction by a processor is not
an abstract idea because the claimed process has real world use (to form a 32
bit immediate value/operand with only one instruction) and is practical in the
computer field. In addition, the claimed process is neither a mathematical
formula nor a mathematical algorithm. The claimed process, if allowed,
would not patent an abstract idea or pre-empt any other uses of the
mathematical formula, but rather give a limited monopoly of the claimed
process to the Appellant. Indeed, claim 1 as written is not “so abstract and
sweeping” that it would “wholly pre-empt” the use of any apparatus
employing the claimed process recited therein.
The Board also reversed the claim's obviousness rejection.
In Ex Parte Morrison the Board of Patent Appeals and Inteferences reversed the 101 rejection of the following claim today, citing the newly precedential Ex Parte Gutta case:
1. A system that facilitates managing product life cycle, comprising:
a data-receiving component that receives data on availability of components to a product and suitable substitution components and determines relevance of the components to the product;
an analyzing component that evaluates the received data, and determines, infers or predicts obsolescence and/or risk to end-of-life (EOL) of a subset of the components to a product by scoring each component on a numerical EOL scale; and
a notification component that provides notification to at least one of individuals, computers and systems regarding obsolescence and/or risk to end-of-life of the subset of the components to a product, and provides recommendations in accordance therewith.
Appellants argue that the claim necessarily requires computer implementation, because without the computer the functions recited in the claims, most notably notification to individuals, computers and systems cannot be performed.
...
As the Examiner contends, it is the policy of this Office to not reject under statutory grounds novel and unobvious computer based algorithms when claimed as residing on a computer readable medium. Ex Parte Li, Appeal No. 2008-001213, (BPAI Nov. 6, 2008). The claims in the instant appeal, however, are composed of modules reciting functional algorithms or steps that are disclosed as embodied as software, but omitting the computer readable medium. (Spec. ¶ [0061]).
The recent CAFC decision In re Bilski, discussed above, addressed the statutory limitations of method claims. While method steps are incorporated in the appealed claims, for which neither a particular machine nor a transformation of an article is present, the claims are at least nominally styled as system claims.
For guidance on system claims, we look instead to the precedential Ex Parte Gutta, 2009 WL 2563524 (BPAI 2009). For a machine or manufacture that embodies an algorithm expressed as a series of steps, we are guided, based on Flook, Benson and Diehr, to see if the claim 1) recites a mathematical algorithm applied to a tangible practical application that resulted in a real-world use, and 2) did not encompass substantially all practical applications of the mathematical algorithm. (Ex Parte Gutta 2009 WL 2563524, at *7).
We look to representative claim 1 and notice, as the Appellants point out, that one of the components will notify an individual, computer or other system regarding the obsolescence or risk to EOL of the components of a product. (App. Br. 5-6). We find this notification of the end of life risks of the product to be a real-world use of the system, including the algorithm as claimed. While we do not necessarily endorse the useful, concrete and tangible tests, as addressed by the Appellants, we do find sufficient support for satisfaction of the Ex Parte Gutta test. We thus agree that the Appellants have demonstrated error in the Examiner’s rejection under 35 U.S.C. § 101. (emphasis added)
The Board affirmed the rejection of the claim under 102, however.
Although I try to keep this blog focused mostly on issued patents, today's BPAI decision in Ex Parte Hughes is worth sharing. In light of last week's precedential Ex Parte Gutta decision, do you think the Board erred when it reversed the examiner's 101 rejection of this claim?
1. An apparatus executing computer instructions for chronicling a portion of an electronic market comprises:
a computer system including
a processor;
a main memory coupled to the processor; and
persistent storage, associated with the computer system, the computer system executing:
instructions for recording a first activity relating to a security interest in an order book in the main memory of the computer system; and
instructions for recording the first activity in the persistent store.
Gutta says that its two-part test applies "if an applicant chooses to claim the manufacture in terms of applying a mathematical algorithm." This claim, when compared to the one held unpatentable in Gutta, may illustrate more precisely what the Board had in mind. Here, the panel found the claim sufficiently tied to a particular machine:
However, each of the independent claims on appeal recites devices, e.g., a computer system, a processor, a main memory coupled to the processor, and a persistent storage, which tie the claims to a particular machine or apparatus, and thus qualify the claims as patent eligible subject matter
Why the different treatment? Perhaps it is merely that Hughes's claim 1 can be seen as (albeit minimally) "tying these steps to...concrete parts, devices, or combinations of devices" since its method actually makes use of those parts (i.e., recording "in the main memory" and "in the persistent store"). In contrast, in Gutta's claim 14, the memory and processor are tossed in simply to encase the method within a "system", and are not at all "tied" to the steps of the method. Also, in Gutta the Board noted particularly that the method is described in the Specification "as a mathematical formula."
One takeaway is that Gutta's holding may not be as broad as originally thought, and that there may be some easy ways to circumvent it (at least until the forthcoming Bilski decision). Of course, with these claims, there's not much "there" there -- the 103 rejections were affirmed, rendering the 101 reversal as little more than dicta. But useful, still.
Query: Has anyone else had difficulty searching the BPAI decision database? For the last week or two, it seems the text searching capability has been ineffective.
As I've noted many times over the last year, there has been a severe lack of uniformity coming from the Board of Patent Appeals & Interferences with respect to the application of the machine-or-transformation test. Sometimes, there were sua sponte rejections. Sometimes not. Sometimes a minimal addition of computer sufficed. Sometimes an apparatus claim directed to the machine itself was rejected. You get the idea.
Thus, it is noteworthy that the Board recently designated August's Ex Parte Gutta case--where the BPAI panel issued new 101 rejections on system and Beauregard claims, in addition to method claims--as precedential.
This is the first post-Bilski precedential decision squarely addressing 101 (and I believe the first one since Lundgren on patentable subject matter).
System and method for utilizing redemption information
Inventors: Jay S. Walker, et al.
Issued: December 1, 2009
1. A method comprising:
arranging for a customer to redeem a product from a third party;
receiving, via an electronic communication network, information relating to a redemption, of the product and by the customer, that has occurred; and
determining to accept an offer based on the received information.
Commentary: When the claim was originally considered in 2003 -- without the "communication network" -- it was rejected under 101. But the examiner used the "technological arts" test, rather than the "useful/concrete/tangible result" test of State Street. Walker rightly pounced on that in a response. The Examiner came back with a final rejection, citing a nonprecedential BPAI case (Ex parte Bowman) as support that "the claimed invention must utilize technology in a non-trivial manner." So Walker threw in "via a communication network" as some 101 candy in a 2004 RCE.
But the examiner wasn't biting. He reiterated the rejection under the technological arts test in April 2005, which led Walker to add "electronic" to the communication network. Walker also added this puzzling statement:
"We respectfully note that contrary to the Examiner's novel requirement, we have not included the word 'computer' in Claim 1. We respectfully submit that some types of electronic communication networks, as that term would be properly construed, may not necessarily involve a 'computer.'"
[Walker's listed networks from the specification: IP, satellite, cellular, RF, telephone, and cable TV. The network is represented in the patent as the six lines running between the "devices" and the "controller" in the figure at right.]
The examiner was not moved, and came back with another final rejection in September 2005, still holding fast to the "technological arts" test:
"Mere intended or nominal use of a component, albeit within the technological arts, does not confer statutory subject matter to an otherwise abstract idea if the component does not apply, involve, use, or advance the underlying process. In the present case, it is not clear what feature uses the technology in a non-trivial manner."
So Walker appealed. And with impeccable timing, too, as the BPAI had just issued its precedential Ex parte Lundgren decision, which formally killed the "technological arts" test. Throwing this cite into the appeal brief, Walker finally persuaded the examiner to back down from his 101 rejections. But the appeal still pressed on regarding obviousness.
In May 2009 -- six months after Bilski -- the BPAI quickly reversed the 103 rejections, which had been based on the premise that real estate would be considered a "product" to be redeemed. There was no sua sponte 101 rejection, as there had been in Ex parte Halligan and several other appeals with claims that were probably more tied to "particular machines." Just an incredibly short (under five pages) reversal, leading to the patent's issuance on Tuesday.
Several months ago I noted that Walker had benefited from a BPAI smack-down of a smarty pants examiner to obtain a Bilski-ish patent. This week, it appears history may have repeated itself, and then some.
When I was in high school, I often pondered some of life's bigger mysteries and conundrums, typically of the "unstoppable object vs. immovable post" or "why does 7-11 need locks on the doors?" variety. Steven Wright and Emo Phillips were big influences in those formative years. Yeah, I was a hit at parties.
One of those questions that stuck, however, was what would happen if the audio and video of the TV somehow got mixed up... so that you would "see" the sound and "hear" the images. What would a rainbow "sound" like? How would a Beethoven symphony "look"? I later discovered that there are actually people who are kind of wired this way. It's a neurological condition, probably described in an Oliver Sacks book I haven't yet read, called synesthesia, where experiences in one sense (e.g., sound) lead automatically to experiences in a second sense (e.g., sight). As you might imagine, many famous artists (Hockney, Kandinsky), composers (Ellington, Liszt) and performers (John Mayer) are so gifted. And if you're a fan of the a cappella group, The Bobs, you may know this song about the condition.
One synesthete is Eric Haeker, a Philadelphia musician/composer and founder of the non-profit Pieris Music. As part of his educational mission, Eric wanted to share his visualizations of music with the rest of the world, and developed a system to do so. It goes way beyond the typical oscilloscope manipulations you see on iTunes or WMP, instead having a distinct graphical object for, e.g., each instrument of a musical score. That's perfect for Bach, as seen in the mesmerising application of Haeker's creation below. A hi-res version, with explanation, is found at the former Pieris website. Another visualization, of a Chopin-like piece, can be found here.
In September, Eric was granted a patent for his work.
Method and apparatus for generating visual images based on musical compositions
Inventor: Eric P. Haeker (Philadelphia, PA)
Issued: September 15, 2009
1. A method of producing a graphical representation of a musical work comprising a plurality of individual musical lines comprising notes, said method comprising the steps of:
(1) obtaining an electronic version of said musical work;
(2) translating using a processor said notes of each individual musical line of said electronic version into a separate x, y graph in which a y value of said notes is representative of a pitch of said note and an x value is representative of a relative time of said note in said musical work and a duration of said note;
(3) importing using said processor each said graph into three-dimensional animation software;
(4) generating using said processor a visual object corresponding to each individual musical line of said musical work; and
(5) applying using said processor at least one three-dimensional animation technique to each said object, said animation technique being a function of said corresponding graph.
Commentary: There are at least three interesting things about this patent that factored into my decision to feature it here. The first two are discussed above: a) it's for a non-profit arts group -- not your typical patentee; and b) it's damn cool to watch.
The third thing, of course, is the Bilski angle. After initially being given a patenability pass, this claim was rejected under 101 in a second office action that came just two weeks after the Federal Circuit's Bilski decision. Strangely, the examiner cited not to Bilski, but instead to the Love Memorandum of May 2008, which enunciated the same machine-or-transformation test the CAFC later adopted. After amending to include the "using a processsor" language, the claim was allowed.
Whether the simple inclusion of a generic "processor" suffices to pass the machine prong of Bilski is at best debatable -- and it's been debated on this very blog in the past. But a more intriguing question is whether this claim passes the transformation prong. As noted previously at 12:01, the Bilski opinion on this point invokes In re Abele in a way that leaves many unanswered questions. The BPAI has addressed some of those questions in Ex parte Hardwick (rejecting claim that did not specify input's origins, or that they were transformed into something not "cognizable by a human operator"), Ex parte Gardiner (rejecting claim when input did not represent a physical item), and most recently in Ex parte Aoyama (claims failing "because the data does not represent physical and tangible objects," and not reaching a more general question about "mere calculation of a number based on inputs of other numbers"). Whether the transformed article must be physical or tangible is also a subject of debate on this blog, with some commenters taking some extreme positions. But that question is relevant to the Haeker patent.
Are Haeker's claims fundamentally different from the ones in the BPAI cases? It is clear that the claimed invention indeed "transforms" a musical work into a graphical representation. And the transformation is certainly cognizable to a human operator. But should music be considered a "physical item" or a "tangible object?" That's less clear. And it may depend on how the input music is represented.
Looking at dependent claims and reading the specification, it seems the inputted "electronic version" of the music could be generated on-the-fly from a live performance (claim 8), or as a MIDI-file (claim 6) (a MIDI-file is kind of an electronic version of a player-piano roll, describing how music is to be played). It may be that the Abele distinction differentiates these two types of input. That is, perhaps the transformation of a musical performance (i.e., the actual sounds heard) is a patentable transformation, while the transformation of a written score or MIDI-file (i.e., a description of music to be used in a performance) is not. Just a theory.
Or it could be that there is just no way that "sound" is considered physical or tangible, and these claims cannot meet the transformation prong of Bilski (assuming the BPAI's more recent interpretations are correct). That doesn't seem quite right, but it may be the inevitable result of this trend. Consider the discussion open.
In the meantime, I've contacted Mr. Haeker, who has agreed to share some more samples of his work in the next few weeks. I'll post links here when they arrive.
There's few situations more embarrassing than when your six-year old son figures out that you were playing his video game the night before. Okay, maybe when your wife stumbles upon you after midnight playing your son's video game... Alas, I admit to suffering both of these shames last summer when I became fascinated with my children's Webkinz. For those of you with kids between 5ish and 10ish(?), I don't have to explain. For the rest of you, Webkinz are Beanie Babies meets Tamagotchi meets facebook (kind of). In the "real world", you spend a few bucks and get a cute cat/hippo/gorilla/kangaroo/pterodactyl/etc. animal to cuddle. Inside the toy's package is a code that is then entered into a website to unlock a "virtual" version of your animal. In the virtual world, you feed and take care of your pet, and earn "kinzcash" by playing games. The cash can be spent on things like room decorations, food, or gifts that you can "send" to your networked friends. It's pretty wholesome stuff, not expensive, and the commercialization factor, while present, isn't off the charts (though there is temptation to buy "real" clothing accessories, which come with their own codes, to then see those garments magically appear on the virtual version). And there is one small, though real 'hook' to your wallet: your registration on the site is good for a year, extendible by... buying and registering another Webkinz. But for under $10, it's well worth it.
Of course, what I found most intriguing was that there are several patent numbers that appear on the Webkinz website. Last week, Howard Ganz, creator of Webkinz and grandson of the family-owned company's founder, was granted his sixth Webkinz patent.
9. A method that provides a virtual world presentation comprising:
registering a toy;
using a computer system for providing a website associated with the toy, said website having a user account associated with said registering of the toy;
in response to and subsequent to said registering, using the computer system for displaying a virtual replica of the toy representing said toy on said website, wherein said virtual replica of said toy is manipulated by a user accessing the website via the user account;
in response to said and subsequent to said registering, using the computer system for granting access to the user by way of the user account to at least a subset of features on the website in connection with the virtual replica of the toy; and
in response to said and subsequent to said registering, using the computer system to facilitate caring for the virtual replica of the toy presented in the virtual world presentation, wherein said caring for the virtual replica of the toy comprises, and maintaining both of a health and happiness of the replica of the toy via a plurality of maintenance activities, which include all of feeding the toy, shopping for the toy, and playing with the toy, and taking the virtual replica of the toy to a virtual health and welfare facility, wherein playing with the toy comprises participating in an activity on the website in combination with another virtual replica of another toy appearing on the website that is controlled by another user via another user computer over a communication network, wherein an appearance of the virtual replica of the toy is animated using video components for the animation, said animation being used during participation in the activity on the website in combination with the another virtual replica of another toy.
Commentary: There was an Examiner's Amendment that deleted a clause in the last element, leaving a difficult parsing job (the [, and] before "maintaining" probably should have gone). We can ignore that for now, in light of all the other good things to discuss here.
Accelerated Examination. Ganz's first patent was from an application filed in 2004. That same application has served as the parent for all of his patents. Of course, the AE program wasn't around until 2006, and Ganz has now taken full advantage in this continuation patent. Notably, this patent has five earlier-filed sibling applications that are still pending. And Ganz unsuccessfuly tried AE on a couple of these, getting petitions denied. This time they got it right.
Bilski Guidelines. In June 2009, the examiner hit Ganz with a 101 rejection: "As explained in the Interim Guidelines in view of In re Bilski, the first step in determining whether a claim recites patent eligible subject matter is to determine whether the claim falls within one of the four statutory categories..." That sounds fine, and it is certainly in line with the current Guidelines published in August 2009. (In fact, this same Examiner just rejected a related Ganz application under 101--in October 2009--with exactly the same language.) But to my knowledge, in June there were no post-Bilski 101 guidelines other than John Love's January 7, 2009 memo, which was silent as to particular steps, and only referred examiners back to MPEP 2106 for specifics. Was there another, unpublicized set of Interim Guidelines adopted before August? My guess is that the August guidelines were available and in use for a couple months before going public.
Machine? Transformation? Both? To overcome the 101 rejection, Ganz amended the claims, partly as marked above, with several references to computer systems and stressing the linkage between real and virtual worlds (e.g., there was an element reciting a "virtual adoption process" that was subsequently removed by the examiner). Ganz argued this satisfied not only Bilski's machine prong, but its transformation prong, as well, following Bilski's nod to Abele: "A transformation of raw data into a particular visual depiction of a physical object on a display is sufficient" to satisfy the transformation test, argued Ganz.
That's not so clear here however. The visual depiction in Webkinz is really a generic animation of "a" Webkinz toy, and not necessary your Webkinz toy. That is, the same graphic used on the website to display your Gecko is also used for the thousand other kids' Geckos out there. That's quite different from the x-ray data of Abele, which really was derived from an actual physical article. So does this virtual image really "particularly" depict a physical object? It's unclear. And we don't know if this argument succeeded for Ganz: the examiner allowed the claims without any 101 discussion.
Scott C. Harris? Yes, the same Scott Harris of Fish/Google fame and who argued the In re Ferguson paradigm non-shifting case appears to have been involved here. You won't find his signature on any of the papers, but the Examiner notes an August interview with Harris in the Notice of Allowance, where Harris authorized an Examiner's Amendment. Sure enough, PAIR reveals that Harris is now associated as an attorney of record on this application, working with the Cleveland-based Pearne & Gordon firm.
Claim strategies. It's worth looking at the claims in the other Ganz patents. For example, the parent, U.S. Patent No. 7,534,157, claims the physical toy as an apparatus, but all the elements are directed to the computer ("A toy for utilizing a computer system for providing a virtual world to a user of said toy, the computer system comprising:..."). Sister Patent No. 7,425,169 includes method claims from the perspective of the end user's actions ("A method comprising: first using a first registration code obtained from purchasing a first toy, to access a website;..."). Other patents in the portfolio cover variations on the method claims. Having different claiming approaches like these allows for a wide scope of overlapping claim coverage, and for potential infringement under both direct and indirect theories.
[UPDATE 10/26/09: See comment below on the "transformation" question in light of last week's Ex parte Gardiner decision.]
No, not that Onion. But by the time you finish reading this post (and you really should finish reading this post), you'll have to wonder...
Timed perfectly to coincide with today's Federal Circuit decision in Prometheus Labs v. Mayo Clinic, the following patent issued yesterday. Here's claim 1:
Use of onion extracts to prevent and treat acute and chronic cardiac and vascular complications and their sequelae, as well as to resolve hematomas
Inventors: Attila Mady & Juliana Mady
1. A method of treating hematomas comprising the steps of:
providing an extract of onion (Allium cepa); and
topically applying the onion extract to or proximate an area of a hematoma, for transdermal delivery to increase and accelerate hematoma resorption.
Commentary: If the CAFC is correct that "[C]laims to methods of treatment...are always transformative when a defined group of drugs is administered to the body to ameliorate the effects of an undesired condition." then there's no Bilski problem (assuming onion extract is a defined group of drugs).
Of course, there may be other 101 problems, like utility. For instance, in looking at the healing effects of onions, here's what the inventors said:
Onions are even more ignored [than garlic]. Used in multiple cultures worldwide as a blood thinner and "cardiac tonic", there has nevertheless been very little research regarding its composition and effects. Yet there is not only overwhelming evidence that the onion contains compounds that have a profound impact on the entirety of hemostasis (including platelet function and the coagulation cascade), but this evidence is obvious and easily demonstrable in standard platelet and coagulation assays. ... However, the most obvious and dramatic effect of onions is on thrombolysis. Topical application of sufficient amounts of onion juice to a site anywhere approximate to a hematoma (and at sufficiently frequent intervals, approximately every 6 hours) will result in the absorption of said hematoma even days after the formation of this hematoma. Even more remarkably, re-absorption shall occur at sites where there is NEVER reabsorption without surgical drainage, such as sub-periosteal pretibial and olecranon hematomas. Due to the absence of blood flow in these areas, an incision and drainage are always necessary to prevent the progression to fibrosis and the development of permanent tissue deformity.
Hematoma resorption does not only occur in places where it never would under spontaneous circumstances, but is also accelerated, meaning absorption occurs more rapidly (approximately 5-7 times faster than without onion juice). Hematoma resorption is also more complete, reducing the incidence of residual hemosiderin deposition. Finally, hematoma resorption will occur long after it would on a spontaneous basis, up to a week after the initial injury. There is no other thrombolytic known that works beyond approximately 12 hours after initial clot formation. ... Further, there is also one report that attributes direct anti-arrhythmic effects to garlic (WO9405307). If this is true, it would be logical to assume that onions would also be likely to possess these properties, since onion juice is vastly more active in terms of its impact on the hemostatic mechanism than garlic. This antiarrhythmic property, however, is only conjecture at this point.
There are no citations to documented research or empirical evidence to back up most of these statements, however. Is the utility of the claimed invention "credible" to a person of ordinary skill in the art? (MPEP 2107) (This is an honest question...I'm no POSITA here.)
Other interesting notes:
Did you suspect this was a pro se inventor? Look at the originally filed claims on PAIR to remove all doubt. Actually, when the 112-ridden first office action came back, the inventor wisely hired an attorney to clean up the claims into a meaningful form. And then promptly revoked the POA to continue pro se. Nice.
Practice Tip #1: When filing an Accelerated Examination application, be sure not to have any missing parts. That's fatal. (Here, the wait was not much longer, with a first office action coming just seven months after filing. The applicant owed $420 for four extra independent "claims".)
Practice Tip #2: If you are going to have a "Background" section, try to keep it SHORTER than the rest of the specification. Remember that the Background is the one section that is not required by statute (i.e., 112) or rule (e.g., 1.71 - 1.75), yet it is the one section that is admitted prior art. You do the math.
Dr. Mady (yes, he is apparently an M.D.) is the named inventor on another patent, U.S. Patent No. 6,328,764 for a Primary axis prosthetic joint design. That patent, unlike this one, contains figures. But Dr. Mady happened to file nine other patent applications on the same day as the '784 patent. Check 'em out:
20090093856 High fidelity electronic tactile sensor and stimulator array, including sexual stimulus 20090093783 Use of vacuum suction in conjunction with diapers. 20090093782 Mask to compress face 20090092794 Turgor shaping. Control of shape and rigidity through the use of pressure transmitting channel patterns (hydraulic channel arrays). 20090092693 Platelet manipulation to prevent and treat endovascular disease and its sequelae, to prevent and treat arrhythmias and to prevent malignancy 20090090671 Apparatus to assist platelet manipulation to prevent and treat endovascular disease and its sequelae 20090090369 Condom Valve 20090090368 Adhesive condom and deployment 20090089934 Gradient bed
To answer the immediate questions:
1) the diaper vacuum appears to be aimed at elder care, not babies.
2) The condom valve has two uses: "to permit re-use with the same partner, or to permit the transmission of semen and thus permit conception as a result of intercourse while retaining the protective effect of barrier type infection control." Sort of like keeping the top down on the convertible when it's raining.
And according to Dr. Mady, "[C]ondoms are completely useless for the
prevention of the transmission of the herpes virus. Hepatitis B,
hepatitis C and even HIV are only partially prevented with condoms." Not to get political, but is that the message we've been teaching in our kids' sex ed classes??
3) No, I don't expect Judge Posner to sit by designation as an examiner to weigh in on the obviousness of any of these inventions.
4) None of these other applications have yet been allowed.
Recent Comments