12:01 Tuesday

IBM and the Art of Arbitrary Application of Abstractness

Quiz: Which of the two following IBM claims do you think is more “abstract”? Which one do you think the BPAI sua sponte rejected under Section 101?

A. A computer-implemented method of responding to a problem condition, comprising: automatically detecting availability of a first candidate to respond to a problem condition; responsive to the detecting: automatically assigning responsibility for the problem condition to the first candidate; and receiving a confirmation from the first candidate indicating acceptance of responsibility for the problem condition.

B. A method for integrating file system events into a database management system (DBMS), comprising: designating a file of interest; detecting a file state change event associated with the file of interest; updating a file events table of a database upon a detection of the file state change event; generating a database trigger upon a change in the file events table; and updating the database with data from the file of interest upon receipt of the database trigger.

Commentary: On the surface, claim (A)’s “computer-implemented” preamble pays some lip-service to concreteness, but otherwise includes only apparently abstract concepts of “candidates,” “problems” and “responsibilities.” Meanwhile, claim (B) includes a somewhat 'particular' “DBMS,” a “database” and “file events.” Easy, right?

But as you might expect with non-precedential decisions (as all but a handful of BPAI cases are), outcomes can be very panel-specific and leave you scratching your head. Here, the Board said nothing regarding the patentability of claim (A)'s subject matter, while reversing a 102 rejection. Ex parte Herbeck.

Only two weeks earlier, in Ex parte Vishnubholta, a different three-member panel affirmed a 102 rejection for claim (B), but added a new rejection under 101. In particularly strong language, the Board found

"[T]he claim fails to recite a machine or transformation of an article of manufacture…Rather, [the claim elements and limitations] are merely abstract ideas that comport with the teachings of Bilski."

Adding insult to injury, the Board went even further, finding that

"[T]here is not even a machine or transformation recited in independent claim 1 that would have qualified as 'insignificant extra-solution activity.'"

In the NFL, this behavior might warrant a 15-yard penalty for taunting the sacked quarterback.

Perhaps the Board was trying to demonstrate the breadth of 101 rejections: in addition to the Bilski rejection for abstractness, the panel also rejected a Beauregard claim under Nuijten for including "signal waves", and affirmed the rejection of a system claim as "software per se" under Warmerdam. Three claim types; three demises under 101.

While another precedential BPAI decision on abstractness could be immensely helpful in the wake of Bilski, if that decision is anything like Vishnubholta, it could signal a tough road for many software patents.

Contest: Longest claim ever?

Last week the PatentlyO blog ran a guest post by Stephen Schott arguing for a repeal of the "single sentence" rule.  Schott alluded to the existence of at least one patent claim consisting of "a 250 word sentence [that] would drive even Proust to distraction."

IBM today was issued U.S. Patent No. 7,593,860.  The patent contains four independent claims, the shortest of which contains 1,019 words.  Here is the longest, weighing in at 1,053.  (And we can leave the Bilski discussion alone for now.)

Can you find any patents with longer claims?  Submit your entry by 12:01 a.m., Friday, September 25.  Appropriate prize to be determined (initial thoughts: a copy of any Faulkner novel; an audio of a Joe Biden speech; a recording of Wagner's Ring Cycle... you get the idea.)

U.S. Patent No. 7,593,860 Career analysis method and system Assignee: IBM 31. A process for integrating computing infrastructure, comprising integrating computer-readable code into a computer system, wherein the computer system comprises a computer readable medium, wherein said computer usable medium comprises job related data, wherein said job related data comprises a first specified job title and a first list comprising a first plurality of required skills for said first specified job title, wherein said job related data further comprising a plurality of additional job titles, and wherein the code in combination with the computer system is capable of performing a method comprising:  receiving by said computing system, job candidate data, said job candidate data comprising a job candidate and a second list comprising a second plurality of required skills related to a current job held by said job candidate, wherein said current job held by said candidate differs from a job associated with said specified job title;  receiving, by said computing system, first job market data, wherein said first job market data comprises first internal market data and first external market data, wherein said first internal market data comprises first capacity planning data associated with an entity and first workforce management data associated with said entity, and wherein said entity is associated with said first specified job title;  storing within said computer readable medium, said job candidate data and said first job market data;  comparing, said first plurality of required skills with said second plurality of required skills to determine a first set of common skills between said first plurality of required skills and said second plurality of skills;  applying, by said career analysis tool, a first set of weighting factors to said first set of common skills, wherein each weighting factor of said first set of weighting factors is applied to an associated common skill of said first set of common skills based on a predetermined relative importance for each said associated common skill with respect to said first specified job title;  calculating, by said career analysis tool, a first score for said candidate by dividing the number of said first set of common skills by the number of said first plurality of required skills;  comparing by said career analysis tool, said first job market data with said first plurality of required skills to determine a first set of market valued skills from said first plurality of required skills, wherein said first set of market valued skills indicate a first group of critical market place skills required to perform a specified job associated with said first specified job title, wherein said first group of critical market place skills are linked with first business unit skills associated with achieving first business priorities comprising growth in revenue and innovation, and wherein said first group of critical market place skills are aligned with a first specified market direction and a first specified business strategy for said entity;  reviewing, by said career analysis tool after a specified time period, said first set of market valued skills;  determining, by said career analysis tool based on results of said reviewing said first set of market valued skills, that said first set of market valued skills are outdated;  receiving, by said computing system in response to said determining that said first set of market valued skills are outdated, second updated job market data, wherein said second, job market data comprises second internal market data and second external market data, and wherein said second internal market data comprises second capacity planning data associated with said entity and second workforce management data associated with said entity;  storing within said computer readable medium, said second updated job market data;  comparing by said career analysis tool, said second updated job market data with said first plurality of required skills to determine a second set of market valued skills from said first plurality of required skills, wherein said second set of market valued skills differ from said first set of market valued skills, wherein said second set of market valued skills indicate a second group of critical market place skills required to perform said specified job associated with said first specified job title, wherein said second group of critical market place skills are linked with second business unit skills associated with achieving second business priorities comprising growth in revenue and innovation, and wherein said second group of critical market place skills are aligned with a second specified market direction and a second specified business strategy for said entity;  applying, by said career analysis tool, a second set of weighting factors to said second set of market valued skills, wherein each weighting factor of said second set of weighting factors is applied to an associated market valued skill of said second set of market valued skills based on a an amount of time that each said associated market valued skill has been determined to be a market valued skill;  calculating by said career analysis tool, a second score for said job candidate by dividing the number of said second set of market valued skills by the number of said first plurality of required skills;  comparing by said career analysis tool, said first score to a first numerical value;  comparing by said career analysis tool, said second score to a second numerical value;  comparing by said career analysis tool, said first plurality of required skills with said second plurality of required skills to determine a set of required skills of said second plurality of required skills that are not comprised by said first plurality of required skills;  generating by said career analysis tool, a training program for said job candidate to obtain training associated with said set of required skills;  determining by said career analysis tool, results of said comparing said first score to said first numerical value and said comparing said second score to said second numerical value;  determining by said career analysis tool based on said results, that a first analysis score for said job candidate in relation to said first specified job title will be calculated;  calculating by said career analysis tool, said first analysis score, wherein said calculating said first analysis score comprises adding said first score to said second score;  comparing said first analysis score to a first predetermined value; and  performing an action for said job candidate based on results of said comparing said first analysis score to said first predetermined value.

Happy Birthday, Beauregard

Twenty years ago tomorrow, U.S. Patent No. 4,864,492 issued to IBM for a “System and method for network configuration.”  On its face, nothing appears out of the ordinary with this patent.  However, lurking within its claims is this:

10. A computer program product having a computer readable medium having computer program logic recorded thereon for establishing a network configuration in accordance with a plurality of protocols of a network architecture, said computer program product comprising: means for incorporating the protocols of the network architecture into a table of rules; means for determining the validity of user input data with said table of rules; and means for feeding back to the user at least one of said rules in said table of rules if said user input is determined to be in valid.

 

And thus, the era of the “computer readable medium” claim was born (albeit with 112/6 "means for" language seldom seen in today's CRM claims).

For those unfamiliar with the “software arts,” here’s the nutshell on CRM claims: rather than simply claiming the method (i.e., the steps performed by a computer program) or a computer system (e.g., the hardware configuration that can be used for performing a computer program), the CRM claim essentially tries to protect the floppy disk (remember those?) or CD, DVD, flash drive, etc. on which the program is stored.  For practical purposes, these claims allow software companies, for example, to go after manufacturers of competing programs on theories of direct infringement—they made and sold infringing disks.  When software claims are limited to systems and methods performed via the end user’s computer, often only indirect infringement theories are available.  More importantly, it may be easier to demonstrate infringement by showing a sale of a disk than by finding an actual instance where method steps were performed.  And of course, that sale would still infringe the CRM claim even if the disk were taken to Mexico and the encoded method was actually performed there -- not so with a straight method claim.

The attorney who prosecuted the ’492 patent, the former Marilyn Smith (now Dawkins), also prosecuted a more famous patent for IBM, U.S. Patent No. 5,710,578 to Beauregard et al.  This patent’s prosecution, of course, went up to the CAFC on the question of the patentability of such CRM claims under Section 101.  In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).   As a result, CRM claims are often referred to as “Beauregard claims”. (Note, however, that that the Beauregard case was vacated, and its merits were thus never ruled upon by the CAFC.)  Interestingly, Dawkins apparently left IBM and now works for (John) Deere & Co. in Moline, Illinois.  But she co-authored a 1995 IDEA journal article on CRM claims that is loaded with examples and explanations.   Dawkins notes that there was an earlier patent, 4,853,962, that claimed the CRM as a multiple-dependent claim of a method:

10. An information storage device tangibly embodying a program comprising instructions adaptable for execution on a programmed machine, wherein the method of any one of claims 1-9 is performable through the execution of said instructions by the machine.

CRM claims are commonplace today.  How common, you ask?  Consider the following charts showing the history of CRM claim issuances, in absolute numbers as and as a percentage of total patents issued:

The upturn of the hockey stick in the later half of the 90's corresponds directly to the Beauregard case working its way up through the courts, casting more light on the claim format.  But it is almost certain that these charts undercount the actual number: there are many variants of language used in drafting CRM claims, e.g., “machine readable medium”, “computer readable storage medium”, etc.  And now, in light of In re Nuijten, you are seeing more tweaks to the standard language to make clear that the medium is limited to a physical storage device.  It is impossible to capture all these permutations with reasonable effort (using the public PTO database, anyway).

Growing even faster is the rate at which CRM claims are being filed, (note the gap in data sources beginning in 2001, when the PTO started publishing pending applications)::

The last data point shows that 5.5% of all applications filed in 2007 (that subsequently published) contained CRM claims.  That's a hefty percentage, but still far short of what we saw for Jepson claims in the early 1980's.

We can only guess how CRM claims will fare after the Supreme Court’s forthcoming decision on Bilski.  Already we have seen inconsistent results from the BPAI.  In Ex Parte Li, for example, the Board gave tremendous weight to Beauregard claims and found that they were outside Bilski’s purview.  Other panels, however, such as in Ex Parte Cornea-Hasegan, have found that CRM claims may just be exaltations of form over substance, and thus are subject to the Machine or Transformation test.

But until things are sorted out, a CRM claim will likely remain as standard ammunition in the software practitioner’s arsenal.

IBM Upsells Patent to PTO

Another Armonk classic.

Prior art:"Want fries with that?"
Novel: "Want fries with that? There's room in your bag.."

U.S. Patent No.7,571,105 Weight based upselling Assignee: IBM 9. A computer program product for weight based upselling, the computer program product disposed in a computer-readable recording medium, the computer program product comprising computer program instructions when executed causing a processor to perform the method comprising:     receiving a purchase request for an item from a customer;     determining a weight of the item;     identifying, in dependence upon the weight of the item, a shipping weight range and a shipping cost for the item, wherein the shipping weight range includes a maximum shipping weight;     calculating a difference between the weight of the item and the maximum shipping weight in the shipping weight range;     selecting an upsell item in dependence upon the difference between the weight of the item and the maximum shipping weight in the shipping weight range; and     offering the upsell item to the customer, including offering to ship both the item and the upsell item for only the identified shipping cost.

Commentary: Note that there are no method claims, just system and Beauregard. That's because the method claims that were originally filed--with identical steps as the CRM claims here--were effectively Bilskied in the first office action in August 2008 (the Examiner applied the Machine-or-Transformation test prior to the CAFC's adoption of it).

IBM didn't fight the rejection, and promptly canceled the claims. Why? Because it had already gotten those basic methods through in the parent case. That's right, this is a continuation of what is now U.S. Patent 7,509,262, which issued in March 2009 (not sure how that one slipped by the radar at 12:01...) and has extremely similar method claims:

1. A computer-implemented method for weight based upselling comprising the computer-implemented steps:      receiving a purchase request for an item from a customer including receiving a purchase request in an electronic commerce server through an electronic data communications medium, wherein the purchase request includes an item identifier:      determining, using a computer, a weight of the item including selecting an item record in dependence upon the item identifier, wherein the item record includes data elements describing the item, including the weight of the item, and reading the weight of the item from the item record;      identifying, using a computer in dependence upon the weight of the item, a shipping weight range and a shipping cost for the item, wherein the shipping weight range includes a maximum shipping weight;     calculating, using a computer, a difference between the weight of the item and the maximum shipping weight in the shipping weight range;     selecting, using a computer an upsell item in dependence upon the difference between the weight of the item and the maximum shipping weight in the shipping weight range including selecting an upsell item having a weight not greater than the difference between the weight of the item and the maximum shipping weight in the shipping weight range, a type code matching a type code associated with the item, at least one demographic code matching at least one demographic code associated with the customer, and an item type matching an item type associated with the customer through a purchase history; and     offering, using a computer, the upsell item to the customer, including offering to ship both the item and the upsell item for only the identified shipping cost including offering the upsell item to the customer from the electronic commerce server through the electronic data communications medium.

Note the extra computer beef there in bold. IBM added most of that in a preliminary amendment "in an effort to expeditiously move this case to allowance." A nice preemptive move, particularly since it was made pre-Bilski (I've tried this trick myself post-Bilski).

But it turns out it wasn't necessary here. The amendment didn't make it in front of the Examiner before the mailing of her first office action (May 2008), in which she allowed the original, unamended, broad method claims. Oops... Things got squared away with an Examiner's amendment that incorporated the changes, along with a few others (notably, the "using a computer" modifiers were not in IBM's preliminary amendment).

So IBM tried again, submitting those very same original method claims in a child application (that became this week's '105 patent) and it was examined by the same Examiner...who, as noted above, rejected them under M-O-T in August 2008, just three months after she had allowed them in the parent case.  Go figure.  There must have been a "memo" that went out last summer that caused the change of heart.

But wait... it looks like there's some extra room in the bag: there's another continuation application in the works that's currently being upsold to the same Examiner.

BPAI: Merely Outputting From a Computer Suffices Under Bilski

Yes, you read that headline correctly.  Today, one panel of the Board reversed an Examiner's 101 rejection of the following claim.  Here's the rationale in its entirety:

“We find that claims 23, 29, and 30 recite a computerized method which includes a step of outputting information from a computer (FF 7 and 9-10) and therefore, are tied to a particular machine or apparatus.”

So much for that "insignificant post-solution activity" requirement.  And there's no antecedent basis for that "computer system", either.

Case is Ex Parte Dickerson.  Care to guess who the assignee is?  Think Blue.

23. A computerized method for identifying a solution to address exposed performance gaps of a company in a specific industry, comprising: first identifying a plurality of operational metrics for the specific industry, wherein the operational metrics includes a factor used to measure health or viability of a generic company in the specific industry, wherein the specific industry is a grocery store industry, wherein the operational metrics include at least one of a rate of inventory turnover and a number of customers per day; assembling a set of solutions for application by the specific industry, wherein the set includes one of a decision, an action, a product, and a service; assessing impacts of application of the set of solutions on the operational metrics for the specific industry, wherein the assessing includes determining which of the set of solutions has a negative impact on an operational metric and determining which of the set of solutions has a positive impact on the operational metric; after identifying, assembling, and assessing, then comparing a current operational performance of the company to an operational performance of another company within the specific industry to obtain at least one performance gap, wherein the operational performance includes a performance of a company based upon the operational metric for the specific industry; identifying a solution based upon the impacts to address the exposed performance gaps, wherein the solution is at least one of a decision, an action, a product, and a service that impacts a problem in a positive manner; and outputting the solution from the computer system.

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...

Core Competencies

I don't mean to single out IBM, really, but it's sometimes hard not to.  After all, when you are consistently the #1 patent filer, you're going to get noticed.  And when you appear to be the #1 filer of accelerated examination applications, your're going to get noticed by folks like me who look for those things.  So this one that came up today caught my eye, though not for 101 issues -- it appears to be quite, um, clean.

Instead, this patent reminded me of a sign in a pizza place near where I grew up that always gave us a chuckle: "Banks sell no pizza; We cash no checks." 

U.S. Patent No. 7,524,380 Energy efficient dishwashing Filed: July 31, 2008 Assignee: IBM 1. A method for controlling a dishwasher in a energy efficient manner, the method comprising: sensing weight, volume, and location of items disposed in each of a plurality of compartments of the dishwasher, said sensing being accomplished via a plurality sensors disposed in each of said plurality of compartments, wherein said sensing occurs prior to a start of a washing cycle and drying cycle, wherein said sensing further includes sensing at least one of electrical conductivity and transparency of a cleaning solution used in the dishwasher; communicating sensed data from said sensors to a controller; calculating a desired length of time for said washing cycle and said drying cycle based on said sensed data, and calculating a desirable amount of said cleaning solution to be used in each of said plurality of compartments based on said sensed data, said cleaning solution including at least water and detergent, wherein said calculating further includes calculating for a desired temperature, detergent, and detergent ratio of said cleaning solution based on said sensed data; implementing said washing cycle and said drying cycle for said length of said time, wherein a smaller sensing of said weight and said volume results in a shorter amount of time than would be spent based on a larger sensing of said weight and said volume; commanding said dishwasher to direct said amount of said water and said detergent to each compartment of said plurality of compartments, wherein any of said plurality of compartments sensed to include fewer or none of said items will receive less of said water and detergent than any of said plurality of compartments sensed to include more of said items; transmitting efficiency data from said controller to a medium viewable by a user, said efficiency data being based on said calculating, said implementing, said commanding, and said sensing of said weight, said volume, and said location of said items, wherein said transmitting includes suggesting movement of some of said items from one of said compartments to another of said compartments based on said sensing of said location of said items in said compartments, wherein said efficiency data includes a predicted cost for said implementing and said commanding; connecting said controller to an internal or external internet network and transmitting said efficiency data to a computing resource connected to said internet network, wherein said computing resource is said medium viewable by said user; minimizing usage of electrical energy and said water via said implementing, said commanding, and said transmitting; and  transmitting dishwasher control commands implemented by said user from said computing resource to said controller.

Commentary: Since when is IBM in the dishwasher business?  Kind of like Microsoft's recent agriculture patent, I suppose.  There was also a patent to erstwhile Lehman Brothers on a "Method and system for analyzing commuting routes" in 2007 that remarkably issued in under seven months (and with some of the least formal drawings ever -- see Fig. 6), but even that one appears to have been developed and used in-house for Lehman's employees. (Barclays owns the patent now. I hope this patent's traffic analysis performs better than Lehman's market analysis did.)  I somehow doubt that IBM's engineers were in the company kitchen eating lunch when they just decided to design a better dishwasher controller.  But I could be wrong.

Hard to know the stories behind these outliers, but I'd be curious.

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)?

Some Tidbits

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

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

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

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

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

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

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

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

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.