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Examining the Appealed Patent Allowances from Art Unit 3689


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: January 26, 2012 @ 3:35 pm
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Last week I wrote an article titled Business Methods by the Numbers, which took a look at the allowance rates for a variety of Art Units assigned to examine patents in class 705, the primary class where business methods and financial data processing inventions are classified in the United States.  The article has raised a few eyebrows and has caused some to question whether there is disparate treatment among Art Units at the United States Patent and Trademark Office.

The fact that there is disparate treatment between and among various Art Units and patent examiners shouldn’t catch anyone by surprise.  Everyone in the industry knows that some patent examiners feel they work for the Patent Granting Authority while others work for the Patent Rejection Office.  Notwithstanding, there are some who are excusing what can only be characterized as truly alarming statistics as having something to do with the various types of patent applications assigned to each Art Unit.  Allow me to call that out for what it is – hogwash!  Class 705, including the applications handled by Art Unit 3689, is dominated by a who’s who of the largest technology and financial companies in the world.  These companies hire some of the best attorneys in the world, they well understand how to write a patent application to articulate allowable subject matter and yet these large, well-funded companies represented by some of the best and brightest legal minds are incapable of obtaining a patent?  If you believe that I have a bridge I want to sell you!

Aside from the obviously self-serving nature of the conclusion that varying applications and varying technology has something to do will wildly different allowance rates, does it strike anyone as reasonable when one art unit has an allowance rate of 84.6% and another has an allowance rate of 5.2%?  That is the magnitude of what we are talking about.  Based on the latest PatentCore data, Art Unit 3661 has 3,095 granted patents and 561 abandoned applications, while Art Unit 3689 has 24 granted patents and 433 abandoned applications.  Certainly there are a lot more patents in the PatentCore database for Art Unit 3661 than for Art Unit 3689, so one could say that we should hold judgment until more data is available.  From what I hear, however, there are many who don’t think the data will change much relative to Art Unit 3689 even after all the data is accounted for.

The data clearly suggests that that inquiry should be made into what is going on in Art Unit 3689.  If there is nothing odd after evaluation then I will be the first to report that and say that after further evaluation the patent examiners in Art Unit 3689 are doing a fantastic job.  In the meantime, however, one way that we can get a more complete glimpse of what is going on in Art Unit 3689 is to take a look at the patents granted only after a decision from the Board of Patent Appeals and Interferences.  Currently, according to the data available in the PatentCore system, 13 of the 24 patents granted have been granted after a decision from the BPAI, and 3 others were granted only after the applicant filed an appeal brief.  That rate seems extraordinarily high to me, as does the 76.5% reversal rate at the BPAI.  A look at some of the appeals themselves is elucidating.

In Ex parte Mujianto Rusman et al. (Application No. 11/315,046, Appeal No: 2009-005789), the BPAI, per Administrative Patent Judge Murriel Crawford, reversed the examiner saying (with citations omitted):

We are persuaded that the Examiner erred in asserting that the conversion of selected software from unusable form into usable form in Cheston inherently corresponds to “determining when software that is preloaded onto the information handling system is executed by a user, “ as recited in independent claims 1 and 7.  Specifically, we disagree with the Examiner that “[i]f a user of Cheston was to convert a program, it would be inherent within the reference that the program would also be executed.”  Conversion can occur in the absence of execution, and it certainly does not follow that execution necessarily follows conversion as required for inherency.  Indeed, the Specification makes distinctions between preloading, activation, and execution of software.

Knowing something about software, as I do, it is almost incomprehensible that an Examiner working in this area would fail to understand that conversion can occur in the absence of execution.  Even more troubling is the fact that the Specification made the required distinctions and explanations.  It is this type of treatment that leads some patent attorneys and applicants to believe the rumors; namely that some Patent Examiners are encouraged to forward rejections they do not believe are appropriate in order to keep allowance rates down.  I hear that all the time, I’m not saying its true, but perception becomes reality and it is this type of illogical rejection that fuels speculation.

In another inherency case, Ex Parte Francis (Application No. 10/327,611, Appeal No: 2008-5667), the BPAI, per Administrative Patent Judge Mohanty, reversed the examiner saying at one point:

Stein references only generally that the system can be used in other industries that print tickets or coupons such as sports, concert halls, and movie theaters.  There is no extrinsic evidence that in any theater ticket system of Stein that the user interface would operate inherently as claimed except through the use of possibilities and conjecture.

Inherency combined with conjecture and speculation is mind-numbingly frustrating.  How do you argue or convince an Examiner when the Examiner is admitting that there isn’t anything there to point to, but you are getting rejected anyway?  That is the core frustration with inherency, and why it is only allowed in very limited settings.  According to the Federal Circuit, “To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference… Inherency, however, may not be established by probabilities or possibilities.  The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”  In re Robertson (Fed. Cir. 1999).  Nevertheless, inherency is used far more than it should by many Patent Examiners who work for the Patent Rejection Office.  How many cases are inappropriately driven into the abandoned files on naked speculation plus inherency?

Although not an inherency rationale, there is also something particular insidious about obviousness rejections that cobble together two or more references and still don’t produce the claimed invention.  How is that so?  Well it would be obvious to a person of skill in the art to add what is missing.  In other words the Patent Examiner wants to reject the application, cannot certain aspects of the claim in the prior art, so they just rely on a conclusion and the mythical know-it-all person of skill in the art. An example of this can be found in Ex Parte Carol Ann et al. (Application No. 09/887,781, Appeal No: 2011-009295), which is currently pending on appeal.  See Applicants Brief and Examiner’s Answer.  Here we have an application assigned to IBM, which was filed on June 22, 2001.  That is over 10 years ago!

In the appellants’ brief the following argument is made (with citations omitted):

The rejection fails to present a prima facie case of obviousness because the combination of the references or the modification of Myrick ‘427 with the teachings of Huang ‘582 would not yield the claimed invention.  Appellants claim a comprehensive integrated business/IT enterprise data processing system and a method whereby the effects of changes in one or more subsystems of the operationally integrated system on others of the subsystems are assessed and output before the actual changes are implemented.  The final rejection admits that Myrick ‘427 does not teach a guiding component user interface to access and change one or more of the section components; the final rejection further admits that Myrick ‘427 does not teach an assessment component to assess how a change in one section component effects the relationships with others of the section components; and lastly, the final rejection also admits that Myrick ‘427 does not teach an impact assessment work product to generate a work product that outputs the results of the assessment component.  With respect to Huang ‘582, the final rejection admits that Huang ‘582 does not assess the changes of an IT system resulting from changes in a business system.

The rejection surmises, however, that it would be obvious to a person having ordinary skill in the art at the time of the invention to modify the type of sub-business component system and method of Huang ‘582 to an information technology component as taught by Myrick ‘427 as merely using another well known sub-business component to determine the impacts/effects of various business scenarios or decision as a whole…

The Examiner’s Answer repeatedly explains that it would be obvious to someone of skill in the art to modify Huang and then combine with Myrick.  The Examiner then explains: “If a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art… then the claim will be deemed obvious in view of the prior art.”  The Examiner’s statement relative to the KSR rationales is fair, except for the fact that there is nothing other than the naked conclusion of the Examiner that at all supports the existence of a known technique that is within the ordinary capabilities of one skilled in the art.  A conclusion by an Examiner without any support cannot allow an examiner to fill in the blanks left by the prior art.  I expect the examiner will be reversed in this case when the Board issues a decision.  Can you imagine the patent term extension that will apply to this patent when it finally issues?

In another case worthy of note, Ex parte Axel Doerwald et al (Application No. 10/412,666, Appeal 2009-006268), the BPAI, per Administrative Patent Judge Anton Fetting, overturned the Patent Examiner relative to a Bilski 101 rejection and with respect to obviousness.  With respect to 101, the Examiner found that certain claims recited purely mental steps and were not tied to a statutory class.  As you can imagine, the Applicant argued that it was not purely a mental process and the Board agreed.  To get a sense of how ridiculous this 101 rejection was just read the paragraph below from the Summary of the Invention:

In accordance with this first aspect of the present invention, there is provided a weigh scale system. The weigh scale system comprises (a) an input module for receiving customer identification information for identifying a customer; (b) a weigh station comprising a weigh scale for determining a weight of a product, and a weigh station display for displaying information; (c) a storage module for storing a plurality of customer profiles for a plurality of customers wherein each customer in the plurality of customers has an associated customer profile; (d) an information retrieval module for receiving the customer identification information from the input module and for, when the customer is in the plurality of customers, retrieving the associated customer profile, the information retrieval module being linked for communication with the storage module and the input module; and, (e) an information processing means for, when the customer is in the plurality of customers, providing associated customer-specific information based on the associated customer profile to the weigh station display, the information processing module being linked for communication with the weigh station display and the information retrieval module.

Can you understand why the Board found that the machine-or-transformation test had been satisfied?  Can you understand why applicants get so furious with some Patent Examiners?  A weigh scale system and associated method that doesn’t satisfy machine-or-transformation?  What about the scale?  What about the various modules?  Do the scale and various computer modules run in someone’s mind?

With respect to the obviousness rejection the Board wrote (with citations omitted):

We agree with the Appellants. Bacque is concerned with a weigh station system that collects weight information as truck operators pass through the weigh station.  Bacque fails to describe coupon or reward information to be provided to the customer, as acknowledged by the Examiner.  The Examiner looks to McCall to describe this feature.  Although McCall does describe coupon and reward information based on customer specific transaction history, McCall is not concerned with any aspect of a weigh station or weigh station display.  Furthermore, McCall does not attempt to solve any problem that would be associated with the input, computation, and display of any customer specific information as it relates to an intelligent weigh station system.  Therefore, a person with ordinary skill in the art would not look to McCall to describe reward and coupon information when considering solutions to weigh station problems.  As such, there is no evidence to support the combination… and the Examiner failed to establish a prima facie case of obviousness.

In other words, McCall is non-analogous art and cannot be used in combination with Bacque.  Why is this significant?  Practically every invention is made up of known pieces and parts.  Nothing would be patented if an Examiner were allowed to find something close and then hunt and search non-related fields for the missing pieces and parts and then, without any justification, provide the naked conclusion that someone of skill in the art would have known to combine.  It is this Examiner mentality that leads some to work for the Patent Rejection Office, rather than the Patent Granting Authority.  Invention is not merely mindless collection of known pieces and parts, and the BPAI got this case exactly right.

Conclusion

Perhaps when things are all said and done and we can see the entirety of the past and present docket for Art Unit 3689 there will be a different story to tell.  For now, however, based on the data available through PatentCore, which is the data that Google obtains through its permissive crawl of the USPTO servers, it looks like there is reason to believe that a lot of unsupported and purely speculative rejections are causing applicants in 3689 an awful lot of unnecessary angst.

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Trial and Appeal Board, Patents, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

30 comments
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  1. Gene,

    Did you get the art units mixed up? According to the January 2012 ‘Classes arranged by Art Unit’ material provided by the Data control division of the USPTO:

    AU 3661 handles Class 701, subs 1-100 and 116-124 which is vehicle control systems (an extremely well developed art with virtually nothing resembling business methods material – created in 1997 btw).

    AU 3689 handles Class 705, subs 80, 302, 303, 305, 307-312, 329 (which were just created in the last 16 months during a 705 reclassification effort and therefore do not have 15 years worth of issued patents to provide meaningful statistical data).

    As someone who regularly reviews thousands of references across every subclass (and AU) within Class 705… they are all piles of dung. From 2000 onwards, applicants rarely performed prior art searches and generally filed 20-30 word claims (based on the published PG-Pubs and lack of IDS in the file wrappers). Things appear to be finally changing, but there are 10s of thousands of poorly drafted applications and claims to weed out still. Plus, this history of crappy applications has probably taught the examiner corps how to handle crappy applications, not how to handle a quality application.

  2. Ummm…

    I did not get 3661 confused. It does have nearly an 85% allowance rate. While they don’t deal with class 705, they most certainly do handle what the industry would consider business method patent applications. You can try and fool yourself into believing they don’t handle business methods, but that is hardly true or fair.

    You say Art Unit 3689 handles only certain subclasses, which others have pointed out. The difficulty, however, is that they handle far more subclasses than the USPTO website suggests they do. Thus, you and others wanting to defend their 5% allowance rate on the peculiar nature of applications in the limited subclasses they are assigned are making an argument that is simply not supported by the evidence.

    For example, take a look at these patents and the classification and you will see that what Art Unit 3689 examines comes from very different subclasses then you mention.

    U.S. Patent No. 7,809,583 – Primary U.S. class: 705/1.1
    http://www.freepatentsonline.com/7809583.html

    U.S. Patent No. 7,634,417 – Primary U.S. class: 705/1.1
    http://www.freepatentsonline.com/7634417.html

    U.S. Patent No. 7,778,841 – Primary U.S. class: 705/306
    http://www.freepatentsonline.com/7778841.html

    U.S. Patent No. 7,389,243 – Primary U.S. class: 705/346
    http://www.freepatentsonline.com/7389243.html

    U.S. Patent No. 7,788,108 – Primary U.S. class: 705/1.1
    http://www.freepatentsonline.com/7788108.html

    Are there crappy applications? Yes, there are. But obviously that doesn’t have anything to do with the article you are commenting on, does it? Clearly the applications referenced are not crappy applications and are allowable because the BPAI reversed the examiner.

    Furthermore, your bias is not evidence. I put forth hard evidence demonstrating what seems to be a pattern of unsubstantiated rejections and naked conclusions. Any fair minded observer has to know that a 76.5% reversal rate on appeal means there are a great number of applications that are driven into the abandoned files by examiners who just don’t want to issue patents.

    Pretend if you want, ignore the truth if you like, but do expect me to keep pointing out the truth and being honest.

    -Gene

  3. Gene,

    Not calling you dishonest or discussing your analysis of the cases you reviewed, merely pointing out that you are comparing apples and oranges when you compare AU 3661 and AU 3689. The applications and patents in Class 701 (1-100) and Class 705 are generally of a very different nature. To give you an idea of the lack of equivalence: of the 103,973 documents in Class 705, only 344 (0.3%) are also in Class 701, subs 1-100.

  4. Ummm…

    And I’m not calling you dishonest, rather just pointing out that you are wrong.

    You want to continue to focus on the class and subclass system, which everyone knows is broken. The fact that the USPTO categorizes, or doesn’t categorize, in class 705 is not dispositive of the question of whether or not an application fairly covers a business method patent. That should be obvious.

    So go ahead and think I am comparing apples and oranges and relying on classes and subclasses to argue I’m wrong. On the other hand, I will actually look at the substance of the applications and know I am correct.

    I’ll also point out that you didn’t contest my point that Art Unit 3689 is assigned cases outside the subclasses to which they are supposed to be assigned. Why that isn’t evidence of an arbitrary application of classes and subclasses is a mystery to me.

    -Gene

  5. Gene, I feel this article is a bit too scathing toward AU 3689 based on PatentCore data that appears to be incomplete. I agree with you that we should hold judgment until more data is available in the PatentCore database.

    I don’t see how AU 3689 has 24 allowed patents.

    Usint PatFT (http://patft.uspto.gov/netahtml/PTO/search-adv.htm) I did a quick search on 7 randomly selected examiners from AU 3689. There are a total of 13 examiners in AU 3689 + 1 SPE. For anyone who wants to see the full list of examiners go to http://portal.uspto.gov/external/portal/emlocator and enter 3689 under “Search for Organization”.

    Assuming all of these 7 examiners are junior examiners, there are 299 patents. This is what PAFT shows:

    “Results of Search in US Patent Collection db for:

    EXA/(((((((RIVIERE AND HEIDI) OR (RUHL AND DENNIS)) OR (ABDELSALAM AND FATHI)) OR (ARAQUE AND GERARDO)) OR (EASWARAN AND DAVID)) OR (GILKEY AND CARRIE)) OR (LONG AND FONYA)):
    299 patents.”

    Assuming all of these 7 examiners are primary examiners, there are 396 patents. This is what PAFT shows:

    “Results of Search in US Patent Collection db for:

    EXP/(((((((RIVIERE AND HEIDI) OR (RUHL AND DENNIS)) OR (ABDELSALAM AND FATHI)) OR (ARAQUE AND GERARDO)) OR (EASWARAN AND DAVID)) OR (GILKEY AND CARRIE)) OR (LONG AND FONYA)):
    396 patents.”

    If it is the case that only the SPE signs off on all junior examiner allowances then there should be 695 patents for the above-mentioned 7 examiners.

    I have not used PAFT in over a year so the above queries may not be written properly… please correct them if they are faulty (I would rather not use examiner tools such as EAST to conduct such searches for obvious reasons).

  6. These statistics are very interesting. I hope that this topic continues to be pursued. The enormous disparity in allowance rates for different art units should, at the very least, raise questions as to whether something is amiss in certain art unit. From the looks of it, there is something wrong in art unit 3689.

    If I were in a leadership poisiton at the PTO and saw these numbers, I would question the people in art unit 3689 to figure out what was going on. I’d be interested to see the reaction from a higher-up at the PTO to see whether they would consider the extremely low allowance rate and the high BPAI reversal rate as indicitive of a problem in art unit 3689.

  7. PTOExaminer-

    Thanks for the information.

    I have been hearing things through various sources, and it seems this topic has hit a nerve. I’m hearing from anonymous sources and being pointed in a variety of directions.

    This article was primarily in response to so many saying that I am comparing apples and oranges. Before I wrote the first article I read a good handful of decisions from the BPAI and it did seem to corroborate a continued pattern. The thread seems to be that business methods are either rejected through inappropriate application of inherency or by really strained readings of the KSR rationales that would allow an examiner to not find everything in the invention in the prior art, but modify and supplement the prior art with nebulous, naked conclusions that the missing aspects would be known to the mythical person of skill in the art.

    I have also seen chatter from some of the largest companies in the world who are just realizing that they are not alone in having issues with getting patents out of Art Unit 3869.

    Thus, all of what I am seeing indicates that there is a problem. How big a problem I don’t know. Prior to PatentCore, however, any review of what was going on had to be by sampling a few dozen, or maybe a few hundred, cases. With the near 1.5 million cases loaded into the database we have far greater insight than any random sampling could provide.

    Before the pitch-forks get picked up and litigators start making equal protection and denial of due process arguments we need more data. I can imagine, however, that there are some who might be considering appealing to the District Court in hopes of getting some discovery out of the USPTO, but that is another article for another day.

    -Gene

  8. Examiners of several of the appealed applications mentioned above were previously members of art unit 3629 according to the file wrappers. I’m not sure if 3689 was split off from 3629, or is an aggregate of several former art units including 3629. But it may be useful for PatentCore types to account for reorganization of art units within a tech center. Another example is TC1700 which used to have various art units in the 1730s, 1750s, etc. but apparently threw everything together into newer art units in the 1790s.

    Looks like the Board was a bit generous with claim 17 in the ‘666 application. It may positively recite a display but certainly does not positively recite a scale nor does it actually recite dispensing of a coupon. Maybe the examiner missed the display part, but it doesn’t help matters when the Board is sloppy too. Also neat how no one caught that “last” should be “least”.

    Guess I’m one of the few lucky examiners who hasn’t been to an art unit meeting wherein my SPE orders us to be jerks to the applicants for the next fiscal year. Judging from comments on many patent blogs, it’s only a matter of time…

  9. Gene,

    Way to shine a light on this issue. I have only one complaint with the post – you state “Practically every invention is made up of known pieces and parts.” This is incorrect. All inventions are made up of known pieces and parts (elements and connects). The reason we know this is true is that you cannot make something from nothing – in other words you cannot violate conservation of matter and energy. This mistake is the source of all sorts of confusion in patent law – for the reasons you point out.

    Also not that patent law inherently recognizes that all inventions are combinations of known elements, because 112 requires you to describe your invention so that one skilled in the art can practice the invention. If you had a totally new element, call it novel x, no one would know what you were talking about and you would receive a 112 rejection.

  10. Gene, you make a very provocative claim. I will assume you have looked into this issue without any malignant intent. If, as you suggest, AU3689 does a uniquely poor job of examining cases, then something surely must be done.

    That said, it seems that your support for this argument is based primarily upon the Art Unit’s reversal rate at the board, but I think in your haste, you forgot to include the evidence substantiating this claim. In particular, you happened to omit the analysis suggesting that your sample is statistically significant and demonstrates the accuracy of your claim that AU3689 has a 76.5% reversal rate at the BPAI.

    In light of your serious claims, will you present your completed analysis and will you please include the margin of error of your calculation, as well. I assume you can also produce the similar analysis you completed regarding other parts of the office. After all, for you to claim that AU 3689 is such an outlier, you have surely compared its actual BPAI success rate to other areas.

    Since of course someone acting in good faith would have never written this type of incendiary post without strong evidence, I assume you’ve already done all of this analysis. Therefore, I imagine you would be happy to show it to us and convince us all of your point.

  11. Ronald Fisher-

    As I’m sure you know, I omitted nothing. Why would you make such an erroneous claim? What is your agenda?

    As the PatentCore data shows as of yesterday, there are 17 cases that have gone to appeal in their database and 13 have reversed the examiner. PatentCore gives a 2 day free trial, so you can sign up for free and see the data for yourself. So your claims that I am hiding or misleading or misrepresenting are wholly inaccurate.

    You say: “for you to claim that AU 3689 is such an outlier, you have surely compared its actual BPAI success rate to other areas.”

    Are you really one of those closed-minded folks who think that every single article needs to be a thesis and if every possible issue isn’t discussed then there is a problem? I get that criticism with some frequency from people like you who don’t like what you read or who prefer I wrote a different article using their views and facts.

    If you think out of any sampling a reversal rate of 76.5% is appropriate then YOU are part of the problem. I just report the facts, and I have supported my analysis. Everyone can get access to the data, and I provided explanation about the bad case examiners in 3689 have done according to the BPAI.

    As for convincing you, that won’t be possible. You are ignoring the data, facts and truth that any fair-minded individual can see. But why? That is the question.

    -Gene

  12. Gene,

    Regarding the 76.5% reversal rate, can you please explain how this figure is calculated? Is this the reversal rate for ALL cases that ever went to appeal for 3689 (i.e., whether abandoned or issued)? Or is it limited only to the 13 of 24 issued cases that went to appeal? It seems that an overall BPAI reversal rate of 76.5% for any AU would have drawn attention and review from PTO management.

  13. SM-

    If you go into PatentCore the data shows that the files crawled by Google and uploaded into the PatentCore system include 17 cases that were appealed to the BPAI from Art Unit 3689. Out of those 17 cases the examiner was reversed 13 times and a patent ultimately issued. 13 reversals in 17 cases is a 76.5% reversal rate given the data set.

    I know the data set is not complete, and that is why I dove into the appeals to see what the BPAI was saying. In the past only random sampling could be done, now as all of the USPTO files become digitized the shareholders will increasingly get a better look at what is happening on the inside of the Office. The early returns suggest that there may be an issue and at the very least further inquiry should be made.

    We have all heard stories from young examiners. They are frequently saying the same thing. Supervisors preach that they need to reject. If they cannot find a valid reason make up a reason. I believe the USPTO hears the same stories and is working to address these issues and change the culture. More on that topic in the coming weeks (working on more currently).

    -Gene

  14. Gene writes in small part:

    “But why? That is the question.”

    A very interesting question indeed. The evidence suggests an enormous bias against certain types of inventions, which is a form of denial by a Federal agency of the property rights of folks that seek to acquire US patent rights in my humble opinion. Any other business that exhibited an error rate of perhaps 85% as seems to be demonstrated, would be either out of business very quickly or indicted in multiple venues for several reasons. I can think of at least 3 right off the top. We are talking about millions of dollars in lost revenue and business here, and not anyone’s snappy comebacks to appear to be clever.

    I suspect there are folks listening that will just make the problem quietly go away, but it might take a little while. The PTO had been adrift in years past, but it seems to be getting better very quickly these days. What a difference a new Director makes! Thanks David~

    Stan

  15. Those outlandish obviousness rejections are the result of Scotus’ ditching the TSM
    standard.

    dard.

  16. AC-

    Very true. The ridiculously subjective standard established by the Supreme Court now allows those who are anti-patent to reject applications with little or no reasoning. The only recourse is to appeal. It is encouraging to see that the BPAI sees naked conclusions for what they are.

    -Gene

  17. Stan-

    I don’t know that “the problem” is going to go away quietly. The USPTO knew that the data, once available, would tell many things. I do think that they are going to figure out if there is a problem, what that problem is and devise ways to address any outlying activities.

    Stay tuned!

    -Gene

  18. They might, but it will probably take a few years to figure out which way to go. I still think that harmonizing US patent law with the rest of the world was and is a very bad idea, and the head of the Chinese Patent Office waxed somewhat frank when he mentioned that he was somewhat mystified that the American Congress would pass a law that was so detrimental to American inventors. From China to Senator Patrick Leahy. What say you Senator Leahy?

    Do any actually believe that the America Invents Act will be for the greater good for any Americans? I tend to disagree, but I am just a gear-head inventor I guess. Interestingly enough though a while back, I discovered that it was impossible for me to do a patent search at the USPTO search function, because the bandwidth was busy doing bulk downloads of patent information to places all over the world. Google Patents I guess, but I have found several errors using the Google gambit. Cross check the Google results with the native source might be a wise thing to do.

    Stan~

  19. Gene

    I think you have raised a very serious issue, albeit in a specific context.

    Is the USPTO really fit for purpose? Is the examining corps really doing a sound good in the public interest (including the interests of applicants form outside the US)? Is proper and appropriate training given to examiners and are they applying correct legal standards? Are they working cost-effectively and cooperating with attorneys to get the job of examination done? In too many groups and in too many places the answer is no

    To paraphrase a term that was popular in Britian during the second world war, is your objection really necessary? Why not, if you are an examiner, ring up the attorney who filed the case and say: “This looks a load of crap! Take five, then tell me what is really all about, why you filed the case and what I should be looking for”. If the filing attorney cannot give a good answer, then the Examiner is entitled to give the case hard treatment. But in instances where there is a real invention and a real story to tell, the filing attorney should be able to get up to speed very quickly and give helpful insignt. It is amazing how a few minutes on the phone or face to face can sort out issues that rounds of respectful correspondence fail to achieve.

    The reason why I say that is that unnecessary office actions are a WASTE OF TIME. They waste finds of clients and take scarce funds from scientific research. They deter investors in worthy start-up companies. Over-zealous examiners are as much a menace as those who file worthless alleged inventions, and it has to be said that as inventors and their employers have to find hard cash for our professional services, the latter category is much smaller in numbers than many uninformed commentators think.

    As a signal example of examination pathology, look at the references sought to be combined in In re Klein (CAFC, 2011). As was said on my Patently-O posting on that case, the references sought to be combined would only be brought together without hindsight using the Infinite Improbability Drive of the Heart of Gold spaceship. Another commentator observed that you cannot combine a chicken with a buffalo and ger buffalo wings! If such remarks can be made by reasonable commentators about an objection pursued all the way to the Federal Curcuit, it is not a matter of isolated curiosity. It should be a matter for institutional soul-searching and urgent corrective action.

  20. Apologies for the typo’s in the last posting, but the meaning is, I think clear.

    So a few further points giving the other side of the picture.

    We had a business method case which got into difficulty in the EPO. We had two partners of a first rank US law firm on a conference call, and one of them was planning to fly over to Munich for a hearing at which the fate of the application was to be decided. My colleague who was attending the hearing called me in for a second view and additional support.

    “What do you consider is the technical problem which these inventors have solved and on which our arguments should be based”, I asked. Silence! “Can you help me on this?” More silence! ”

    Look, I said. US and European law are really very similar, although the way we express it is a little different. Although we like to define a technical problem, we first look at the difference from the most plausible starting point prior art and then look at the new effect that the difference creates, because that effect is what we use to reconstruct the technical problem. And it has been known that new effects sell patents since 1803 at least, when Thomas Jefferson was US president and Nelson was sailing the Atlantic in pursuit of the French fleet. It us your law, the same as ours, and rooted in US Supreme Court decisions from KSR back into the nineteenth century. So what effect or result have these inventors achieved on which we can base our arguments?” Still silence!

    In the outcome the hearing was lost, as was almost inevitable. Was the journey really necessary, it is tempting to ask? Why could experienced US practitioners not answer such a findamental question affecting an important case?

    One of the major difficulties in the US is that the legal test for obviousness is not as well understood as it should be, that there is insufficient agreement about the nature of invention and the test for obviousness is to some extent fuzzy (though far less fuzzy than might be considered before the leading decisions in our two countries are properly understood). Given that situation, effective training of examiners is a near impossible task.

    Here are the objections as explained in the 2007 USPTO Examination guidelines and reaffirmed in the 2010 Examination Guidelines:

    (A) Combining prior art elements according to known methods to yield predictable results;

    (B) Simple substitution of one known element for another to obtain predictable results;

    (C) Use of known technique to improve similar devices (methods, or products) in the same way;

    (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;

    (E) ‘‘Obvious to try’’—choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

    (F) Known work in one field of endeavour may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art;

    (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention

    It does not take the insight of a mathematical genius to appreciate that the common factor is (A) to (F) is the existence of a more than predictable result – if that can be demonstrated the case is grantable but not otherwise. But that may not be conclusive, and if the test of more than predictable result is achieved you should go on to apply TSM, perhaps with the warning that the circumstances where there is a prima facie case of obviousness are likely to be limited. One could then point to the recent Rolls Royce v United Technology decision in the Federal Circuit as a fine example of new function in the mechanical arts. Such a single paragraph would do more good than pages of turgid Federal prose. And it would stand a decent chance of creating insight rather than confusion amongt novice examiners.

  21. Great stuff Paul-

    One thought I had the other day was to perhaps shuffle the deck, so to speak, wherein examiners were moved into slightly different art or tech divisions. The same old rubber stamp might not work any more that way hopefully. It sounds as if the USPTO is fully funded this year thankfully, so it is very possible that the PTO might have about 2000 new examiners this year. Also the availabilty of new judges is critical, which Cheif Judge Michel pointed very clearly in an article here in the near past.

  22. Paul, your phrase “more than predictable result” does not resonate in American ears. We interpret the “more” as modifying “predictable” in that sentence construction, when I think you mean it to modify “result.”

    If if is OK with you, let’s recast the phrase: “a result that is more beneficial than one might predict from the hypothetical combination constructed from the prior art.”

    Once you can point to that “better than expected” result, why do you need to go back and try to re-construct what the problem was. Why not say, “This invention is better than PHOSITA would expect, therefore it is patentable. QED”

  23. There are several “non-Americanisms” in Paul’s otherwise deeply thought out posts.

    Examples:

    If the filing attorney cannot give a good answer, then the Examiner is entitled to give the case hard treatment

    The examination of an application is independent of whether or not an applicant provides any additional enlightment to the examiner after submission. This idea that somehow if an appllicant is not helpful, then the examiner should really put the screws on is baseless. This is not to say that such help is a bad idea – clearly it is not. It is saying that somehow this is a requirement to obtaining protection is without foundation. This is also not saying htat an examiner’s questions can go unheeded – clearly, that is not so (and just as clearly, this applies across the board, no matter whether the application is one that can be classified as “worthless alleged inventions” or “worthy actual inventions.”

    Over-zealous examiners are as much a menace as those who file worthless alleged inventions

    Those who file “worthless alleged inventions” are far less a menace than over-zealous examiners – not on par with them. Those who file “worthless alleged inventions” pay their share and are due just as full and diligent examination as anyone else. It is an assumed and implied fallacy that somehow these filers are a blight on the system. In fact, such “worthless alleged invnetions” are easily disposed and take minimal effort. The difficult examinations, rather, are those close to the edge, with either tight incremental advances or intricate and nuanced inventions – hardly the stuff of “worthless alleged inventions.”

    Regarding the In re Klein case – that is a shallow case, being as the examiner did not make any combination rejections. As typical that I see with much academic coverage, the real world aspects are too easily overlooked.

    We had a business method case which got into difficulty in the EPO” and “US and European law are really very similar, although the way we express it is a little different.

    No.
    Not even close.
    The US jurisprudence and the European jurispruddence on business method and the technical arts are very very different. You are ASSuming that technical arts and useful arts are strictly analagous. This is simply not so. What I run into so often from academics (especially non-US academics) is an underlying and implicit assumption that IP law not only should be universal and harmonized, but is universal and harmonized. It just is not so.

    It us your law, the same as ours

    Again, and simply, No.
    Do not begin by assuming the point you want to end up with.

  24. @ American Cowboy: If you can show a result that is more beneficial than you might predict, you should ordinarily get a patent in my submission. There are additional objections, so it would be wrong to say that all beneficial result cases should result in allownace. But, at least in Europe, other objections e.g. bonus effect and one way street are outlier objections and if you search the Appeal Board cases for statistics amount to less than 10% of obviousness rejections. In Europe we have to turn the result into a technical problem and go through the European analysis procedure, but that merely dictates the form which the objection takes: the outcome normally is determined by new or better result.

    @ Blind Dogma: If the examiner cannot find a new result on the face of the specification as filed, phones the prosecution attorney and cannot be told simply and straightforwardly what the inventor has achieved and why the case is believed grantable, then the application in my opinion deserves to be thrown out. It is not a question of whether the attorney is or is not helpful but whether there are any arguments in support of grant.

    I wholly agree about over-zealous examiners.

    In In re Klein the Examiner chose desk drawers as his starting point (!!!) and coupled this with knowledge of the feed for hummingbirds and insects. I stick to my argument that these pieces of knowledge would only have been combined using an Infinite Improbability Drive. It may be a simple case, but it is a case which in my submission does much to illustrate what is wrong.

    US and EPO business method cases are dealt with differently as pointed out because the law is different. We normally accept allowable subject matter, at least for apparatus claims, but discount non-technical features. The case is then decided on non-obviousness – hence the requirement for a new result. WEe have to figure out what the new result might be and how it can be presented as being technical. And with regard to new result in general and its significance our laws are very similar as I have argued.

  25. I stick to my argument that these pieces of knowledge would only have been combined using an Infinite Improbability

    You would be wrong for two reasons:

    1) The art was not actually combined in the In re Klein case – that’s one reason the examiner really boffed this, and the examiner’s supervisor (and up the chain) really should be chastised.

    2) KSR is a mighty big sword, and some of the cited art could have been combined based on type-of-problem analysis (remember, KSR opened up combination rejections well beyond analagous fields of art).

    I reject your “new result in general” based on your own admissions at the beginning of that last paragraph. The law is different. Stop there.

  26. Paul, I we don’t get first-run movies here in Abilene; what the heck is a “Infinite Improbability Drive?”

    And back to the problem-solution discussion. What happens when the invention provides some new function that nobody wanted or had any desire for but once they have access to the function from the invention, they are glad they have it? What was the problem that was solved? It seems to me that the whole notion of “problem” suggests a pre-existing desire or need. If that desire or need is not present, the absence of what fulfills the desire or need is not considered to be a problem, so the invention is not a “solution” to a problem.

    Yet, it seems that when the invention provides some new function that nobody wanted or had any desire for but once they have access to the function from the invention, they are glad, you have a strong case for non-obviousness.

  27. AC-

    Sounds to me a bit like an extension of the Heisenberg Uncertainty Principle, which postulated that it was impossible to predict where any particular electron happened to be at any particular point in time. Instead there was just a probabilty +cloud+ where you might think to look for them. That is just on the atomic level, though, and I suspect Paul might be hinting at a possible expansion of the concept to the Quantum level, which is very different indeed. For instance, it seems to be possible for a single photon to be able to go through three or more slits in a barrier At The Same Time, and producing interefences patterns after *they* have gone through said slits. Perhaps gluons and leptons and strange and charmed particles meeting on the other side of the pond, after they have totally baffled any observers. In fact, according to some like Steven Hawking, the mere act of observing the phenomenem alters it, as further suggested by the search for Schroedinger’s cat.

    Stan~

  28. Paul,

    Good points in general except “Is the examining corps really doing a sound good in the public interest (including the interests of applicants form outside the US)?” Patents are property right – defined as a right in the US Constitution. The job of the Patent Office is not to act in the public interest it is to grant title to inventions. An invention, is a new combination that performs a useful, objective purpose. There is no non-sense about “inventive steps” or ‘nonobviousness” in the definition of an invention. The questions of the “public interest” are not to be determined by the PTO or the Courts or even the legislature (whose job is to protect are natural rights – life, liberty and the pursuit of happiness, etc.). We the people individually get to decide what we believe is in the public good and act (individually) accordingly.

  29. American Cowboy: I am amazed that such important information has not yet reached Abilene.

    The Infinite Improbability Drive is fitted to the Heart of Gold spaceship in the Hitchhiker’s Guide to the Galaxy by Douglas Adams, as most people who were around in the 1970’s in the UK know.

    My children enjoyed the book enormously. There is a BBC series, parts of which can be found on You Tube, e.g.

    http://www.youtube.com/watch?v=C1nxaQhsaaw&feature=related

    It was also made into a film by Hollywood, but the humor did not altogether translate. However, they did pick up the fact that the answer to Life, the Universe and Everything is 42

    http://www.youtube.com/watch?v=aboZctrHfK8

    Stan: you are right. The Infinite Improbability Drive is an application of quantum physics. There is a probability that I could nbe standing in your office the next moment. But it has to be faced, it is unlikely.

  30. AC-

    Also I discovered a few very real unanticipated benefits of my latest project by building a real working proto of it. While watching it do it’s thing, I suddenly realized that the claims might need revisiting. Per Gene’s article about patent illustration, I have very detailed drawings, which are in fact based upon possible production versions. In my case, a number of professionally done illustrations would seem to give us at least a little bit of latitude as regards to what is eventually said in the claims.