12:01 Tuesday

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.

97 Days

In the quickest patent to issue so far this year (by my calculation), Intermune, Inc. has been granted U.S. Patent No. 7,566,729 for "Modifying pirfenidone treatment for patients with atypical liver function". The claims appear to cover particular dosing method of administering pirfenidone to treat a patient with idiopathic pulmonary fibrosis.  Just under 100 days from filing (April 22, 2009) to issuance (July 28, 2009). That's Accelerated Examination in action.

A runner-up, at just over 100 days, goes to Perfect Pushup.  Yes, that Perfect Pushup, whose commercials you've certainly seen if you have ever watched ESPN for more than a few minutes.  It seems that one of the inventors is over 65, and the company wisely has filed Petitions to Make Special to jump to the front of the line.  Their fourth utility patent, U.S. Patent No. 7,566,292 issued today for a Handle Assembly for Use With an Exercise Bar. All of their utility patents appear to have had quick prosecutions: their longest filing-to-issuance has been 15 months, and the average is about 9.5.

To Tell the Truth (about 101)

I was encouraged in recent weeks that the examining corps at the PTO had really picked up the ball with respect to Bilski.  Although there were still several of the standard financial service-type patents coming though (auctions, trading systems, etc.), none of them seemed to pack the same punch as those I'd found even a few months ago.  Or maybe I've gotten less sensitive.  But it certainly started getting harder for me to find blog-worthy posts for 101, and I had to start looking at a broader base, venturing outside of the beloved Class 705.

But just when you thought it was safe to go back in the water...along comes this doosey that issued last week.  It's the first patent I'm aware of to make 12:01Tuesday that was allowed after March 2009, when the blog went public. (I mention this fact purely as coincidence, and not to imply that the blog has had any effect whatsoever on examiners.  But it is interesting that the blog gets more hits from uspto.gov than from any other identifiable domain.  About 18% of the total traffic.)

A nod once again to Landon IP's Blaise Mouttet.

U.S. Patent No. 7,565,193 Questions and control paradigms for detecting deception by measuring brain activity Assignee: Cephos Corp. 1. A method for determining whether a subject is truthful or deceptive to a question of interest, wherein it is not known to an examiner beforehand whether the subject is truthful or deceptive to the question of interest, the method comprising the steps of:     (a) an examiner asking a subject a question of interest at least twice;     (b) the examiner asking the subject at least once to admit to the question of interest during an admission period and at least once to deny to the question of interest during a denial period;     (c) measuring brain activity of the subject during each period;     (d) comparing brain activity of the subject during the denial period and during the admission period in at least one brain region;     (e) optionally repeating steps (a) to (c); and     (f) determining when the subject is truthful or deceptive to the question of interest.

Commentary: Uh oh.. it's got that "paradigm" word in the title.  In re Ferguson, anyone?

First, let's dismiss any thought (ha ha) that there is a transformation here, though I'm sure some will try to argue the brain is transformed from an "admission" state to a "denying" state.

Second, where's the machine?  It must be buried somewhere in that "measuring" or "comparing" step.  Measuring, for example, is claimed in more detail in dependent claim 2, which limits the measuring to "fMRI, BOLD fMRI, PET, SPECT, EEG, MEG, optical tomography and combinations thereof".  That's probably sufficient for tying to a machine.  But without this limitation, is this a data-gathering step with no specification as to how the data is gathered, i.e., what the CAFC would call a "meaningless limit", or "insignificant extra-solution activity"? (See In re Bilski, slip op. at 27).  Probably.

Even with claim 2's limitation, is the "measuring" step really enough to tie the invention to a particular machine?  Consider a claim with an element of "measuring the length of an object, using a tape measure."  Do we feel that's less "particular" because the tape measure feels like less of a specific "machine or apparatus" than an fMRI machine?  (After all, as some of you may recall, parts is parts).  Or perhaps it all comes down to being "tied", i.e., the measuring really is just a data gathering step in the overall context of this claim, regardless of whether the data is gathered by hand or by a HAL 9000 with an 1.21 gigawatt-consuming flux capacitor.

As for the "comparing" step, again there is nothing in the claim to suggest any particular machine is being used.  And unlike the "measuring" step, there is no dependent claim to give more details on how the comparing is accomplished.  That's too bad, because the spec appears to contain such details (e.g., col. 31 discusses that the fMRI data were analyzed with particular software packages that at least imply the use of / need for a fancy-schmancy computer).

Lastly, note the optional repetition.  I believe that means that if you don't have the option to repeat while you perform the method, then you don't infringe.  Or, it means the claim might just be indefinite.

In any event, it's tough to see how claim 1 passes muster under the new 101, which was never raised by the examiner here.  And if you think I'm lying about that, well...

More on Cows

There has been a lot of talk in the comments here and elsewhere referring to "crap" patents coming out of the PTO.  This issuance today takes things to a literal level, and follows naturally from last week's post:

U.S. Patent No. 7,563,302
Apparatus and method for manure reclamation
Assignee: Vermont Organics Reclamation, Inc.

I won't go into the specifics (it's lunchtime here), but the Background is quite interesting reading.  (For example, did you know that manure is 96% water?)  And there's little doubt the claims satisfy the Transformation prong of Bilski.

Of course, should this patent wind up in litigation, good luck finding an attorney to do an inspection of the accused infringing site...

Milking Bilski

My 21-month old son loves to sing the song "Cows" from Sandra Boynton's Philadelphia Chickens album. Okay, so he doesn't know all the words. But he certainly knows the one-word chorus, "Cows". And over the last couple weeks, that word has become consistently more loud, pounding, deafening, pervasive, annoying..., to the point where I can't tell if it is on the CD player or just in my head. Over. And over. And over...

So when Landon IP's Blaise Mouttet [cow-] tipped me off to this week's patent, I knew it had to be written up.

Such remarkable cows...

U.S. Patent No. 7,559,289 Method of and an installation for milking an animal having at least two teats Assignee: Lely Enterprises AG 1. A method of milking an animal having at least two teats, the method comprising: a stimulation phase in which at least one of the teats of the animal is stimulated; and a milking phase in which the animal is milked; wherein the method comprises: applying a stimulation phase and a milking phase to one of the teats of the animal, and applying substantially only a milking phase to at least one of the other teats of the animal.

Commentary: Where to start?

• First, although I did once milk a cow on an elementary school field trip to a farm, it's not an area where I'd consider myself an expert. Still, I think that the milking of animals is a skill/art that's been around since a few thousand years prior to the current Information Age. But apparently it was only with this invention that this more efficient method of milking was discovered.

• No figures? There's a system claim (8) that includes as an element a "stimulation device" and a "control arrangement."  Figures here must not be "necessary for the understanding of the subject matter sought to be patented" per 35 USC 113.  

• This was a national phase of a PCT application, originally filed in the Netherlands. That accounts for the strange form (the "wherein the method comprises" was originally "characterised by") 

• Bilski. Is the animal, or the teat, the "apparatus" here?  Is it a "particular" animal?  Or is there a "transformation" taking place when extracting milk from an animal?  Note that the other independent method claim (15), begins "In a robotic milking station, a method of milking..."  But claim 1 is entirely manual.  

• First action allowance.  

• "At least two teats".  I understand the need for this language in the claim (to differentiate the actions being performed on the different teats).  But in the title?  Know any animals with only one teat?

  

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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.

Patent Unearths Mascot Mystery

One of the patents that came up in my search for last week’s baseball post has quite an interesting story, it turns out…

The only patent that mentions the Washington Nationals is U.S. Patent No. D562,530, “Mascot Suit”:

Look familiar to anyone?  It didn’t to me, either.

The Nationals are mentioned because there is an article about their mascot, Screech, which the Examiner found to be a pertinent reference.  Frankly, I don’t see the resemblance.  There’s also sister design patent, D562,531 (strangely not on GooglePatents), for which Screech apparently wasn’t pertinent. 

But that assignee certainly sounded odd, if not vaguely familiar: Trans-Marine Management Corp. of Tampa. They don’t appear to have a web page, but it’s easy to see that the company has very politically active employees, has a Cessna registered in its name, and—a ha!—is (or was) owned by George Steinbrenner.  Yep, the address is even One Steinbrenner Drive.  In fact, it was Trans-Marine that once signed Tommy John to a 20-year contract as a bonus to his Yankees deal.  (Rumor has it that George Costanza was also moonlighting there while serving as the Assistant to the Traveling Secretary.)

But why would The Boss want a mascot?  After all, everybody knows the Yankees are just one of four MLB teams that don’t have a mascot, as beautifully illustrated the other day by the folks at GOOD.

So maybe it is for the new Tampa high school named in George’s honor.  That must be it.  They were looking for a mascot recently.  But this guy certainly isn’t a “Warrior”.

It couldn’t be a Yankees mascot, could it? And if the traditional, no-names-on-jerseys Yankees were going to have a mascot, would it really be this?

Just a little more Googling and there it is: a reference and picture of this “Yankees mascot” at a recent charity event.  In pinstripes.  Oh my.

The story gets better.  The inventor, Felix Lopez, is Senior VP of the Yankees.  And he’s Steinbrenner’s son-in-law.  In other words, the 26-time World Series champions, who will pay hundreds of millions of dollars for top talent on the field, won’t hire the best graphics designers in the land to come up with an endearing entertainer to keep fans happy in their overpriced seats as they watch their team struggle to make the playoffs.  For that, they turn to family.

Yeah, this mascot is kind of cute.  But he’s no San Diego Chicken or Phillie Phanatic.  For what the Yanks paid, I'd think they'd have done better getting Dancin’ Homer to do the Baby Elephant Walk on the jumbotron.

Deck of Cards = Particular Apparatus?

I've only started playing my game for the day, and I've determined an early winner:

U.S. Patent No. 7,549,863 Method of playing card games comprising saying the alphabet with words, saying words with words, and saying the alphabet with words while saying words with words Filed: October 1, 2008 Inventor: Timothy Joiner 1. A method of playing a card game by a plurality of players; comprising (a) providing a deck of 52 playing cards; each card having an identical identifying design on the back side, wherein 31 of the 52 cards are letter cards having one specific letter from the alphabet marked on the face side such that the five vowels A, E, I, O, and U are marked on two of the cards and each of the other letters of the alphabet is marked on one card, and 21 cards are wild cards, such that 3 cards are marked as a single letter wild card; 15 cards are marked as single letter or multiple letter wild cards and 3 cards are marked as 2 times the same letter or more wild cards; (b) shuffling and stacking the deck face down into one pile for use by a plurality of players; (c) a player beginning their turn by removing the top card from the stack of face down cards, flipping it over face up and setting it down in a face up pile; (d) when the face up card is one of the 31 letter cards the player must enunciate a word that pronounces the letter on the face up card as it is pronounced as an alphabet letter such that the player says an alphabet letter while saying a word; (e) when the face up card is one of the 21 wild cards the player must enunciate a word the pronounces a letter as an alphabet letter per a specific requirement of the wild card; (f) awarding points to the player upon successful enunciation of a word as follows: one point for the 31 lettered cards, one point for the 3 single letter wild cards; one point for each letter pronounced as an alphabet letter for the 15 single or multiple letter wild cards; two points for the first time plus one point for each additional time the same letter is pronounced as an alphabet letter for the 3 wild cards marked as 2 times the same letter or more; (g) repeating steps (c)-(f) for each player in turn until all the cards in the face down pile have been played; and (h) adding the total points of each player to determine a winner.

Commentary: See the spec for play examples.  In theory, I have no problem with this claim from a Bilski perspective. (But see Homer J., "In theory, communism works.  In theory....")  There's no question the method is tied to the cards.  And the cards are clearly "particular", i.e., they aren't "general purpose" cards, if that even matters.  On the other hand, I can take a Sharpie to my old deck of Bicycles to mark them up as recited in step a). Perhaps throwing in that step would make this a clean transformation prong case.  Maybe I'll try that tonight and play this with my kids -- modifying the game, of course, so as not to infringe.  On the other hand, are the cards really necessary to play this?  Why not have one player yell out a letter to challenge an opponent?  Wouldn't that make using the cards insignificant post-solution activity?  In theory...

The serious question, of course, is--if there was not a 101 problem before--does a 101 problem arise by encoding this game in software so that the "card" is virtual and flashes on the screen of a home computer (which also keeps track of score)?  Your choices:

1. card game passes machine prong; software implementation does not
2. card game fails machine prong; software implementation passes
3. both pass machine prong
4. both fail machine prong
5. it depends
   

Discuss.

More notes:

• Pro se inventor (Surprised?)
• No Figures
• No accelerated exam needed for this app, which gestated for nine months before issuing
• Parent app was rejected for improper claim form, then abandoned.

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BPAI Speaks Up on "Transformation" Prong

Ex Parte Hardwick
Decided June 22, 2009

In one of the more confusing sections of the CAFC's In re Bilski opinion, the court gives two examples from a prior case, In re Abele, in attempting to explain what claims should pass the transformation test, and what claims should not, with respect to "electronic signals and electronically-manipulated data."  The Bilski court implied that when a claim included data that "clearly represented physical and tangible objects", then "the transformation of that raw data into a particular visual depiction of a physical object on a display" sufficed to make the claim patent eligible.

On the other hand, the Bilski court noted that Abele found unpatentable a claim that "did not specify any particular type or nature of data" and did not "specify how or from where the data was obtained or what the data represented."

Unfortunately, the CAFC did not give any further examples that would provide guidance between these two extremes.  For instance, it would be nice to have more data points so we might know with more certainty what is necessary versus what is sufficient to render a transformation patentable (or unpatentable). This has been the subject of some discussion in comments on this blog, with various positions being taken.

Today, the Board of Patent Appeals and Interferences decided Ex Parte Hardwick, and in doing so, provided at least some further discussion of the Abele examples raised by the Bilski court.  At issue were claims related to speech processing, rather than image processing.  (The assignee is Westford, Mass.-based Digital Voice Systems, Inc.) After disposing of the Appellant's "machine" prong argument (note how the Board distinguishes computing a "digital filter" from just computing the "coefficients" of a digital filter), the BPAI turned to transformation:

Bilski held that there is no danger of pre-emption of fundamental principles “[s]o long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents physical objects or substances.” Bilski, 545 F.3d at 963. Applying this “exception” to the rule requiring transformation of an article to Appellant’s claim 1, we find that claim 1 does specify synthesizing digital speech samples from speech model parameters. Claim 1 does not, however, specify how those parameters were obtained, nor recite transformation of raw data into a visual depiction, or any other analogous depiction (e.g., audio output) that would be cognizable by a human operator. Therefore, the weight of the evidence indicates that Appellant’s claim 1 is substantially more similar to the nonstatutory independent claim in Abele than to the statutory dependent claim. We therefore conclude that the invention of claim 1 is not tied to a particular machine, nor does it transform an article. As a result, we conclude that claim 1 is directed to nonstatutory subject matter.

Joe Carter's "Tack Tube" Patent

Although I cringe whenever a TV ad runs for one of those “invention submission” companies, in doing my recent baseball search I had an image of a sure-fire winner of a commercial: 

SCENE: 1993 World Series, Game 6.  Blue Jays down by two runs in bottom of the ninth, two men on base.  Joe Carter, the RBI machine for Toronto, smacks a 2-2 pitch from Mitch Williams into the seats, bringing Canada its second straight world championship.  The jubilant Carter is dancing around the bases in hysteria…

VOICEOVER:  Joe Carter – You’ve just hit a home run to win the World Series.  Are you going to Disneyworld?

CARTER: No, I’m going to file a patent application!

That’s right, folks.  Joe Carter, a member of the Canadian Baseball Hall of Fame (and some would say a borderline candidate for Cooperstown), filed an application in 1994 for what later issued as U.S. Patent No. 5,492,425: “Applicator for grip-enhancing substances”.   (And yes, Carter was drafted by the Cubs, who followed their Brockian tradition of trading away future stars…) 

The specification reads well.  In particular, the background goes into a nice history of Rule 1.10(b) from 1872 through George Brett’s 1983 pine tar incident, and also describes the messy process by which players would apply the substance to their bats.

Carter thought there was a better way.  As reported by the trade publication, Rubber World, in October 2004: 

Major league baseball player Joe Carter of the Toronto Blue Jays teamed up with polymer researchers from The University of Akron to create a new product that gives baseball and softball players a better grip while batting. Made entirely of polymers, Tack Tube is a foam rubber shell coated internally with a tacky polymer which is applied to the handle of aluminum or wood bats by twisting the unit from side to side. It is said to give players a better grip that is an alternative to the pine tar traditionally used. The polymer product, for which patent coverage has been sought, was unveiled by Carter during a press conference at UA's College of Polymer Science and Polymer Engineering. Tack Tube will be marketed by Carter's Edmond, OK-based Joe Carter Enterprises.

Apparently those Akron polymer press conferences weren't hitting the mainstream media back in 1994, since this is about all you'll find on "the Google."  But another trade magazine, Paper, Film & Foil Converter, had an in-depth piece on Carter’s invention in December 1995.  As they describe it, Carter conceived the foam tube that could be wrapped around a bat handle to apply a sticky substance.  Then he teamed up with the U Akron lab to create the pine tar substitute. The rest is patent history.

The timing is interesting, too.  The application was filed in July 1994.  That’s just before the baseball strike that ended the season.  Which means that Carter most likely was working on this during the time period between his famous homer and spring training a few months later.  In other words, precisely when he should have been at Disneyworld. 

From the looks of it, however, the TackTube wasn’t much of a success.  You won’t find it sold (or discussed) online, and Carter’s patent expired for failure to pay its four-year maintenance fee.

But you also probably won’t find a bigger name player-inventor.