Earlier this week, on April 5, 2011, Apple, Inc. was awarded U.S. Patent No. 7,921,187, titled “Newsreader for mobile device.” The patent application was originally filed June 28, 2007, and as a result of delay by the Patent and Trademark Office Apple will be entitled to a patent term that is extended by 830 days. While patent term extension seems to be a growing problem due to the backlog of applications, let’s not focus on the patent term, but rather look at the core of what is being protected and how this patent was obtained. I’m not going to defend the patentability of this invention, but rather try use this as an illustration of how to read a patent and search for clues in the file history regarding how and why claims are awarded. It should also adequately demonstrate how easy it can be to distinguish prior art references and overcome rejections if you know what you are doing or are represented by someone who does.
When reading a patent I never jump first to the claims, preferring to start to get an understanding of what the invention is and taking everything in before trying to tackle the claims. This is typically helpful, I find, because the specification is the omnibus disclosure of the invention and works to support the language and terminology presented in the claims, which are nearly universally a subset of the overall invention disclosed in the specification.
The Background of the patent application explains that mobile devices are known to be be configured to access and retrieve content, including web pages and multimedia content, over a wireless network connection. The information that can be retrieved by mobile devices is hardly limited, and mobile devices can, in fact, access one or more data feeds over the wireless data network. For example, mobile devices can access RSS feeds, which can be used to identify the information most recently made available on a source web site, such as the latest news stories, forum posts, and listings. Nothing earth-shattering here so far.The Summary of the Invention then leads into explaining the invention by pointing out that pursuant to the invention disclosed, a mobile device can be configured to transmit a request for one or more items of content to an information provider. Still doesn’t seem earth-shattering to me, but I kept hanging in. The Summary goes on to explain that the mobile device can also be configured to determine whether information received in response to the request for content is supported by the mobile device. For example, the mobile device can examine a content-type received from an information provider to determine whether any unsupported content is being received and if such unsupported content is being received can recognize the need to request from a service provider reformatted or translated content capable of being supported by the mobile device.
At this point I went back to check the date of the original application and noticed it was originally filed on June 28, 2007. Surely this sort of thing had to be known back then, no? But I persisted.
In the Detailed Description the text associated with Figure 3 appears to be the best technological summary of the invention as it was claimed. A portion of this description explains:
Upon receiving a response to the request to access the URL, the mobile device 100 can detect whether an RSS feed or other unsupported format is associated with the URL (315). For example, the RSS feed can be detected according to the content type of the URL (e.g., text, image, video, audio, etc.). In general, the content type can be detected in the first few bytes of the received RSS feed, such as by accessing a content-type header included in the received information. The content type also can be determined by identifying an XML tag associated with an RSS feed. An RSS feed corresponds to a single HTML page. Thus, only one HTTP request is transmitted to access the RSS feed. Therefore, if an RSS feed is detected in the information received in response to a request to access a link, such as a URL, the mobile device 100 can terminate the receipt of information associated with the RSS feed (320). For example, the mobile device 100 can close the port to terminate the feed or discard the information received in response to the request. Further, in response to detecting the unsupported information received in response to the request, the mobile device 100 can automatically generate a request to a service provider, such as the .MAC server, to receive a translated version of the information corresponding to the URL (325). The request to receive translated information can be structured as a single request addressed to the translation service provider that includes a URL identifying the information that is to be translated. For example, a single HTTP request can include both the URL of the service provider and the URL of the information to be translated.
At this point I figured I am surely missing something because it appears to me that this invention which is essentially based on translation couldn’t hardly be new or patentable. Surely the claims will reveal a more limited invention. I am now ready to handle the claims having as full an understanding of the grandiose invention as reasonably possible.
Claim 1, which is the broadest claim in the patent, covers the following:
1. A method of receiving information by a mobile device, the method comprising: receiving, from a source system associated with a resource locator, information in a native format; before said receiving has completed, detecting that the native format is unsupported by the mobile device; responsive to said detecting, interrupting said receiving, and requesting, from a service provider system different from the source system associated with the resource locator, the information in a format supported by the mobile device, said requesting including transmitting, to the service provider system, the resource locator identifying the information in the unsupported native format; receiving, from the service provider system, the requested information in the format supported by the mobile device; and presenting the received information.
At this point I was confused. How could this be patented? So I decided to turn to Public PAIR in search of answers, looking primarily for the last version of claim 1 that was rejected so I could see what the previously offensive language was and what was added to overcome the most closely related prior art found by the patent examiner.
Here is the claim, as amended, in the last filed Amendment:
1. (Currently amended) A method of receiving
providinginformation by toa mobile device, the method comprising:
receiving, from a source system associated with a resource locator, information in a native format;
before said receiving has completed, detecting that the native format is unsupported by the mobile device;
responsive to said detecting,
interrupting said receiving, and
requesting, from a service provider system different from the source system associated with the resource locator,
receiving a translation requestthe information in a format supported by the froma mobile device, wherein the translation request includes asaid requesting including transmitting, to the service provider system, the resource locator identifying the information in the aunsupported native format;
receiving, from the service provider system, the request information in the format supported by the mobile device; and
presenting the received information
accessing the information identified by the resource locator, wherein the information is retrieved from a local cache if available and otherwise is retrieved from a source associated with the resource locator;
translating at least a portion of the information identified by the resource locator to generate a translated filed in a supported format; and transmitting the translated file to the mobile device.
The key reference used by the examiner to reject prior to the above amendment was U.S. Patent No. 7,574,486 to Cheng et al, which teaches in relevant part:
a user generates a request for a web page from a mobile device to a proxy server. The proxy server forwards the user’s request to an origin web server which returns the requested web page to the proxy server. A conversion engine within the proxy server extracts the desired content from the web page, and reformats the content in accordance with one or more predefined transform methods associated with the mobile device before transmitting the transformed web page with the desired content to the mobile device.
(see Cheng Abstract).
The argument used in combination with the above amendment was:
Cheng’s mobile device does not detect whether the format of the desired content of the web page is supported or not because that function is performed by Cheng’s proxy server. Moreover, Cheng’s mobile device merely generates a request for a web page to a proxy server, followed by reformatting the content of the retrieved web page by the proxy server in accordance with predefined rules.
The argument goes on to point out that Claim 1 as amended is distinct because before receiving there is a detection, interruption in the case of unsupported format and a subsequent re-request from a different source the information in a format that is supported.
The patent examiner bought the argument and accepted the amended claim, explaining in his Reasons for Allowance:
Independent claims among other things teach “before receiving has completed, detecting that the native format of the information is unsupported by the device, then interrupting said receiving.” Emphasis is drawn to the feature of interrupting/severing the receiving/transfer of information by the device when the device detects this unsupported native format of the information before submitting the resource location. The prior art does not teach the cited limitation.
No doubt those who don’t like patents, particularly these types of patents, will kick and scream about how this patent represents everything that is wrong with the patent system. Of course, there is a roadmap in front of you if you want to challenge the patent. File a reexamination request and come up with prior art that demonstrates the interrupting/severing feature the patent examiner didn’t find int he prior art.
For those who are not blinded by hatred of patents this patent provides an excellent illustration of the fine line between claims that are patentable and claims that are not patentable. All too frequently those with inventions in the computer implemented process or software space don’t realize that they have an invention capable of being protected, and as a result simply never make any inquiry.
It is not much of an exaggeration to say that virtually everything in the computer implemented process and software space can be patented if you are willing to layer on enough specifics so that your articulation of the invention in the claims offers a unique feature compared with the prior art. The focus needs to be on finding that unique feature or set of features, making sure they are disclosed in the specification so that enough support exists to make the claim. The only way to accomplish this is to start the process with an comprehensive patent search and brainstorming session.