More Jaywalking

In yesterday's post, I commented briefly about whether the nominal use of a "processor" suffices to pass Bilski's machine prong.

Today, I present you the latest patent from Jay Walker:

U.S. Patent No. 7,627,498  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 The Examiner came back with a final rejection, citing a nonprecedential BPAI case (Ex parte Bowman) as support that "the claimed invention must utilize technology in a non-trivial manner."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.