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.
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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About the Author
Gene Quinn 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.