Software Patent-Eligible Subject Matter: Claiming Improvements in Computer Functionality

By G. Michael Roebuck
August 8, 2018

Software patent applications are routinely rejected as patent-ineligible subject matter under 35 USC 101 as claiming a judicial exception, such as an abstract idea, without significantly more. See, e.g., MPEP 2106.07(a); Alice Corp., 134 S. Ct. at 2355, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961).

This article presents a two-step approach to responding to software patent-ineligible subject matter rejections under 35 USC 101 and drafting patent-eligible subject matter software patent applications having claims to an “improvement in computer functionality”.  The first example describes the approach for responding to 101 rejections.  The second example describes the approach for drafting patent-eligible subject matter software patent applications.

I.  Responding to 101 Rejections

Step 1: Overcoming the “Abstract” part of a 101 Rejection

Particularize the claims.  This helps overcome the “abstract” part of a 101 rejection. Put details into the claims to define the steps performed in the software and hardware to a granular degree.  Don’t claim a result; claim the steps performed in accomplishing the result. That is, define the software computer program and hardware in discrete steps. Define what’s going on in each step of the computer program code. Go to the level of a software design engineer that annotates their code, to inform others as to what’s going on in the code.  If there is an algorithm claimed, particularize the claims to include the steps performed in implementing the algorithm.

  1. Define Steps of the Software and Hardware to a Granular Degree

Pour over the specification and drawings to glean as much detail as possible to define the steps performed by the software and hardware to a granular degree.  Glean these details from the specification, flow charts, data structures, data flow diagrams, tables and hardware figures in the patent application. Put these details into the claims. For example, instead of describing a software function as a high-level result-oriented function, such as “drive to Dallas”, describe the actual discrete code steps that implement the function.  That is, claim the step by step driving directions from the starting point to the destination for every turn in the trip.  The same philosophy is applied for particularizing the hardware in the claims.  Describe data transformations that occur in software and hardware between input and output along with the data structures involved in the claimed process. Particularization helps to overcome the abstract part of the 101 rejections.

  1. Claim Technical Improvements

Novel software programs that are not just novel/nonobvious, but are also technical improvements in computer functionality, are patent-eligible subject matter when they are expressed as claimed technical improvements.  Focus on data transformations and data structures.  What happens to the data between the inputs and the outputs. Describe any data structures created and how are they used. Draft detailed computer readable claims, data structure claims, process and system claims.

  1. Claim Data Structures

Novel data structures and the processes that use them are patent-eligible subject matter when the data structure defines an improvement in the computer functionality.  Draft computer readable claims, data structure claims, process and system claims. Many software programs create data structures that improve a computer’s functionality.

  1. Argue a Technical Improvement in Computer Functionality

After drafting the claims as described above, describe how the claims recite a technical improvement in computer functionality and are thus patent-eligible subject matter under 35 USC 101.

Step 2: Overcoming the “without significantly more” part of a 101 Rejection

Focus on what’s novel/nonobvious in the claims to overcome the “without significantly more” part of the 35 USC 101 rejection. The inventive concept can overcome the “without significantly more” part of the rejection. Use your 102 and 103 arguments to focus on what’s novel and particularize these novel and nonobvious aspects of the invention in the claims.  Describe how the novel aspects of the software and/or hardware improve over, i.e., are “significantly more” than the abstract idea stated by the Examiner.   This requires a meta vision of the functionality of the software and hardware.  Back away from the details of the code and discuss the bigger picture improvements provided by the process.  Describe how the claimed invention improves upon and solves problems encountered with the abstract idea.

II . Drafting Patent-Eligible Subject Matter Software Patents

Step 1: Avoid Abstraction

Particularize the description, drawings and the claims to avoid an “abstract idea” rejection.  Focus on data transformations.  Describe what happens to the data between data inputs and data outputs.  Draft detailed computer readable claims, data structure claims, process and system claims.  Show details of the hardware and software in the drawings.  Include flow charts, data structure drawings, data flow diagrams and a detailed hardware diagram showing data flow and data transformations. Describe any data structures created and how are they used. Draft detailed computer readable claims, data structure claims, method claims and system claims. Step one helps obviate the abstract part of a possible 35 USC 101 rejection.

Step 2: Focus on Novelty, That Which is “Significantly More.”

Focus on what’s novel/nonobvious in drafting the specification, drawings and claims.  That is, that which is “significantly more” than an abstract idea. Provide details of the computer program and how it is an improvement over the prior art. Again, this requires a meta vision of the software’s functionality.  Put details in the specification to define the steps of the software and hardware to a granular degree.  Draft the specification to support the details of the particularized claims. Put these details in the figures in flow charts, data structures and hardware figures. Step two helps obviate the “without significantly more” part of a possible 35 USC 101 rejection.

 

Image Source: Deposit Photos.

The Author

G. Michael Roebuck

G. Michael Roebuck is a 1990 Graduate of SMU Law School and was an associate editor for The International Lawyer, BSEE Auburn University, Graduate Studies in Computer Science, University of Texas, Dallas. For more information, please contact Michael directly.

G. Michael Roebuck, PC,
6750 West Loop South, Suite 920, Bellaire, Texas 77401,
Tel: (713) 376-3053 Fax: (713) 349-8755
Email mroebuck@roebuckiplaw.com

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 30 Comments comments. Join the discussion.

  1. B August 8, 2018 1:30 pm

    Great article reflecting law and common sense.

    Your position on 102 and 103 to argue “something more” is perfectly consistent with the “inventive” terminology used on Alice Corp. S101 serves a different purpose, but without doubt s101 can turn into a 102/103 analysis whether or not the black-robed jurists realize it.

    My one possible criticism having NOTHING to do with the quality of your analysis. No one at the CAFC apparently knows what “something more” really means, examiners are ill-trained on s101, and APJs don’t care.

  2. Dotta August 8, 2018 5:35 pm

    I think this article is being overly optimistic. Many applications have been rejected both in the US and overseas even though most, if not all of the requirements described in the article have been satisfied.

  3. Anon August 8, 2018 6:32 pm

    Good sounding advice that falls remarkably short of reality – and by this I mean that non-software applications routinely violate the offered advice.

    What this advice distills down to is a OVER reaction with producing what in essence is NOT a legal document, but an engineering document.

    One may obtain a patent with this advice (but certainly is NOT guaranteed to do so, no matter how much engineering details are provided – and claimed), but one WILL surely if passing that hurdle obtain a patent claim SO detailed as to be essentially worthless in scope, one that would be trivial to work around.

    Separately, to B’s possible criticism, I have made it a point in examiner interviews to ask the examiner to define the words being used (inherited from the Court), so that I may be able to respond appropriately.

    I have YET to have a single examiner commit to a defined word.

    There is a larger legal concept invoked with this (surely self-evident) situation: Void for Vagueness.

  4. B August 8, 2018 8:17 pm

    “Good sounding advice that falls remarkably short of reality – and by this I mean that non-software applications routinely violate the offered advice.”

    Yes, but until American Axle there have been no serious cases directed to non-SW or non-business method claims except for some communications cases.

    “Separately, to B’s possible criticism, I have made it a point in examiner interviews to ask the examiner to define the words being used (inherited from the Court), so that I may be able to respond appropriately.”

    Criticism????? Hahahaha, I’ve done the exact same. Anon – pointing to words embedded in the examiner’s office action. I also ask examiners to provide examples of what they might consider “something more” and why.

    FYI, I’ve had examiners tell me that they made the 101 rejection because their SPE told them to do so – sometimes just to fish for information on what is “something more” under the law.

    “I have YET to have a single examiner commit to a defined word.”

    My exact experience as well, and it doesn’t vary when a SPE is on the phone.

    The definition of “mass confusion” is an art unit discussion 101

  5. angry dude August 8, 2018 9:50 pm

    This is all BS

    To the morgue…

  6. concerned August 9, 2018 5:08 am

    My patent examiner personally told my attorney and me during the telephone interview that my patent had eligibility. He sounded apologetic and repeated it at least 3 times. The examiner said he had no authority to approve the application, it must be approved by his supervisor. My invention was a long-sought solution by experts for decades and the same was proven with hard documents.

    Angry Dude: Of course this situation is all BS, there is an obvious hidden agenda. All the logic the other posters have written is probably sound advice that does not address their hidden agenda. An inventor might as well save their breath to cool their soup.

    Bahr’s memos are tossed, language is added to 101 and not defined, unrelated court cases are used against a person’s field of technology but unrelated court cases are not used toward patentability.

    The patent environment is my first rodeo and all the BS is obvious to this newbie. Until the country is harmed more than the connected are helped, like the mortgage fraud of the early 2000s, it will sadly continue just like subprime mortgage loans with phony income statements and inflated appraisals which came within an inch of bringing the country down financially. Then the subprime lending BS stopped.

    Can I just hold on long enough as professionals/experts have now tried twice to steal my idea and they were unsuccessful? The attempted steals did produce a university study that proved the problem that I solved and proved the past efforts that failed. This study is exhibit “A” that I have been shoving up everyone’s a**, coupled with a previous university study that was done years prior again pointing out the unsolved problem that professionals could not solve.

    I will shove the evidence. and shove the evidence until one day the hidden agenda stops and someone in authority will make a revelationary statement that evidence matters and their protocols do work and have been working (right- go ahead and save face!). Berkheimer’s court/memo did not do the trick, I argued it as well. My attorney is equally frustrated.

  7. Albert T Keyack August 9, 2018 7:29 am

    The author offers generally sound advice, and whether in a pre- or post- Alice world, a patent application should include detailed claims and a thorough description of the invention. The advice here is similar to the standards in the European Patent Office for all applications, software or not. That is, the applicant should describe a technical problem and a technical solution, and submit claims that comport to the description.

    The text of Article 52 (the 101 equivalent) seems to prohibit much of the same subject matter as US practice but the distinction is that claims are disallowed when they relate to prohibited matter “as such” and this is a lower bar then Alice and the USPTO guidance.

    https://epo.org/law-practice/legal-texts/html/epc/2016/e/ar52.html

    The recently revised EPO Guidelines on software patents are instructive:

    https://epo.org/law-practice/legal-texts/html/guidelines/e/g_ii_3_6.htm

  8. Night Writer August 9, 2018 9:04 am

    @6 concerned

    The problem is that all the new case law puts all the power in the decision maker. It gives the decision maker discretion to make any decision they feel like making.

    When I started as a patent attorney, TSM was the standard and we had good discussions with examiners and some rights. Now basically I am reduced to begging the examiner to allow a case. I have examiners laugh at me and say don’t you know all the power is in our hands now. You do as I say or I won’t allow it. Good luck with getting it overturned at the board.

    And the sad part is they are right.

  9. B August 9, 2018 9:48 am

    @concerned

    “My patent examiner personally told my attorney and me during the telephone interview that my patent had eligibility. He sounded apologetic and repeated it at least 3 times. The examiner said he had no authority to approve the application, it must be approved by his supervisor. My invention was a long-sought solution by experts for decades and the same was proven with hard documents”

    Did you use science in this solution? If so, there’s your problem. Never use science.

  10. Anon August 9, 2018 12:02 pm

    Night Writer @ 8,

    Your comment of “It gives the decision maker discretion to make any decision they feel like making.” goes by a more fundamental concept: Void for Vagueness.

    If the legal outcome cannot be determined a priori (given a set of facts), and if indeed the outcome is entirely dependent on how the decision maker wants the outcome to be, then the law itself being used by the decision maker violates a fundamental legal principle.

    As I have pointed out, the concept of Void for Vagueness is usually applied to criminal law matters (and for good reason).

    But that is not to say that the concept does not apply to non-criminal law matters. Quite in fact, Mr. David Boundy once napped on this point, and excused himself from the dialogue when I provided an article directly on point (from SCOTUSBlog, if I recall correctly).

    An area of law wherein Void for Vagueness especially applies is in relation to the “Life, Liberty, and Property” triumvirate exist.

    As I have noted on other recent comments, even if you want to accept (which I do not, but others may) that patents are no longer true personal private property, but instead are merely public franchise property, they remain property nonetheless and thus remain an area to which Void for Vagueness applies.

    I will also go one step further in relation to your comment about “reduced to begging the examiner… [g]ood luck with getting overturned at the board:” you indicate that the infection caused by the Court in the Court’s rescrivining of the Law (making it Void for Vagueness) translates PAST the judicial branch and into the executive branch.

    But the problem there is that this tactic violates the Separation of Powers doctrine. EVEN IF we “allow” (or accept) that the Supreme Court has used its powers of common law law writing to change patent law…

    (and that every judicial decision of the “I know it when I see it – I will make it up to fit what I want” variety – is nothing more than the lower courts ALSO using a common law approach)

    … the executive branch does not have the power to use a common law approach. THIS is why the APA and other factual predicate matters have become a powerful reproach against examiners who previously simply “did what they want” (at least, in the realm of the factual predicates and simply asserting without more that something – including claims as a whole or as ordered combination of elements beyond the individual elements – was “conventional” without the proper evidentiary basis [as has always been required for a member of the executive branch]).

    Not only will I continue to “fight back,” I will also point out that the ethical duty of most all attorneys compels us to “fight back.”

    And the only reason why this is “most all” instead of a simple and solid “all” is that the state attorney oath for the Commonwealth of Massachusetts may arguably hold that attorneys under that oath need not hold the Constitution at a higher level than the Court. FOR ALL OTHERS, one is ethically bound NOT to place the Court above the Constitution. The presence of the term “supreme” in their name does not require us to treat them as if they were above the Constitution, and we have an ethical duty to fight their decisions which are contrary to the Constitution.

    When they scriven new law in violation of the Separation of Powers, in violation of Void for Vagueness, and/or in violation of Present Case or Controversy (as in when they reach as a source of their authority to some “May” prospective, merely possible FUTURE occurrence of a result), then we – as attorneys are ethically bound to speak out against such.

  11. Concerned August 9, 2018 2:53 pm

    Night writer @ 8. I agree with your statement “good luck at the board.” Even though I used concrete steps to solve a problem beyond the reach of experts for decades, the board will rule against me regardless. My application is not slapping a generic computer on a known solution, but it really does not seem to matter.

    B @9. No science was used, just concrete steps and claimed processes that are not used by any party, expert or otherwise, in my field of technology or any other field for that matter.

    P.S. I have no 102, 103 or 112 rejections. Just the border plate 101 rejection that does not address or acknowledge the evidence submitted on record.

  12. B August 9, 2018 3:21 pm

    @ concerned

    B @9. No science was used, just concrete steps and claimed processes that are not used by any party, expert or otherwise, in my field of technology or any other field for that matter.

    Would you be so kind as to publish the application number? I would sincerely love to review it. I am 100% sincere about this

    That said – I apologize – I was being facetious though not at your expense.

  13. concerned August 9, 2018 8:42 pm

    B @12: My application is 14/450,042 representing a solution desperately sought by the Social Security Administration since the inception of the SSDI program in 1956.

    People with disabilities are overlooked for benefits and such oversights result in no benefit for the person, a substantial increase in Federal/State Medicaid costs, and overpayments to other family members in the tens of thousands of dollars. Real people and their household members make retirement decisions based on SSA’s original benefit determinations only to find out years later that their benefit is now being substantially reduced and recovery of the overpayment will commence, all because of these oversights were discovered years later due to a lack of a real-time solution.

    Evidence submitted on the record are two university studies authored by experts with 25 years and 35 years in the field, the actual Social Security application and official Social Security Handbook, and the Medicaid applications from all 50 states proving that not one of my claim processes is done by anybody in this field, not one of them.

    The examiner has not addressed or acknowledged the evidence, he just repeats that my claims are well understood, routine and conventional based on court cases similar to my field of technology even though the hard evidence in my field of technology proves otherwise.

    Bahr’s November 2016 memo specifically addresses concrete steps that solve a specific problem and Bahr’s April 2018 memo 111 A paragraph 3 addresses using documents to prove the question of well understood, routine and conventional.

    Any disability attorney would tell you the magnitude of my accomplishment and invention. What my process does for the Federal/State government is the equivalent of a disability attorney having a magic list of everyone denied a disability claim, and 100% of those on the magic list would absolutely go on and win on appeal each and every time. Nobody would have to come forth, the magic list identifies the unsuspecting person, their unsuspecting family members and the day to day working professionals at the Social Security Administration of this oversight. The policymakers at the Social Security Administration would be the first to tell you they desperately want this solution, it is costing the government a fortune and causing a lot of folks financial hardship.

    Nobody can measure the human toll and dollars lost due to the current patent situation in this country where a slam dunk invention is repeatedly rejected.

  14. Night Writer August 10, 2018 10:03 am

    @13

    The problem is that there is no more objectivity. It is all discretionary whether to grant a patent. I can’t predict based on the merits of the invention whether it will be allowed anymore. 15 years ago I could. Now it is impossible.

  15. Anon August 10, 2018 10:42 am

    Night Writer,

    Not to be (too) annoying, but may I ask that you reference the legal term of Void for Vagueness when you make your posts concerning the “discretionary” nature that has been re-written into patent law by the Supreme Court?

    The apt term should be (one of) the drum beat(s) that informs the Court that the legal community is catching on to their scrivining tricks.

  16. B August 10, 2018 10:47 am

    “The problem is that there is no more objectivity.”

    This is because the CAFC went the better part of a decade ignoring the need for evidence when determining whether something is well-understood, conventional and routine.

    That, and Taranto’s decisions

  17. B August 10, 2018 12:42 pm

    “My application is 14/450,042 representing a solution desperately sought by the Social Security Administration since the inception of the SSDI program in 1956.”

    Yep, you got the usual treatment. The PTAB will 95%+ confirm the rejection under EPG and/or Investpic – 100% if you get any one of thee APJs I know about.

    The good news, the Examiner stated that your claims represent a “process” under 101. IMO that’s more important than most people realize.

    Also the good news, his rejection is based upon the idea that the steps are well-known routine and conventional (rather than an idea of itself), but the examiner cannot put together a 102 or 103 rejection. While the Examiner does address your very long, very detailed claims as a whole ordered combination, he merely declares the whole, ordered combination as an abstract idea, then contradicts himself the very next sentence stating “[t]he claim amounts to no more than determining eligibility for social security disability insurance (SSDI) benefits.”

    Obviously, the abstract idea is “determining eligibility for social security disability insurance (SSDI) benefits.” You own specification appears to support this contention, but the Examiner points to your spec or any other evidence.

    The question to present is whether your claims significantly preempt that abstract idea.

    Another question to present is whether a SPECIFIC ADVANTAGE, such as that mentioned in para 119 of your spec, is embodied in your claims. I haven’t looked that closely, but Mr. Roebuck’s article is well-presented on this issue.

    I have a case similar to this on appeal at the CAFC, but the aggravating part is that its been over 4 months since oral argument and no decision yet. Berkheimer and Investpic took 3 months, Aatrix took 2 months and 98% of cases are decided in less that 2 months. I suspect that the CAFC is having trouble determining how to resolve certain issues under the Administrative Procedure Act, and resolving inconsistencies with different CAFC cases.

    FYI, during oral hearing the PTO solicitor denied the specific advantage I asserted, but the judges admonished him by pointing out the specific claim limitations that did support the advantage. Don’t count on the Solicitor being fair and honest.

    Hell, a full 1/3 of CAFC cases are Rule 36’ed in less than a week. This is oral argument week at the CAFC – see all the Rule 36 judgments for yourself http://www.cafc.uscourts.gov/opinions-orders

    The only hope you have is some decision from the CAFC that addresses why Berkheimer but not EPG, or appealing to the CAFC and hoping you don’t get Taranto.

  18. Concerned August 10, 2018 2:58 pm

    B and Night Writer:

    Thank you for your comments and review. I will share them with my attorney.

    With reference to preemption, we added Claim 22 during the non- final review to demonstrate the claims are only in regard to overlooked eligibility, not the routine abstract day to day processing.

    In other words, the claims only kick in when the eligibility is overlooked by the person, the family and the professionals.

    We have no interest in preempting routine abstract processing and the federal/State governments have no interest in using our process on eligibility that would have inevitable discovery via standard protocol.

    Thank you once again!

  19. concerned August 11, 2018 8:36 am

    Abstraction: Existing in thought or as an idea but not having a physical or concrete existence.

    In my field of technology, the desired thought or idea is to extend SSDI benefits to targeted individuals as ordered by Congress. It is not the desired thought or idea (or abstraction) to overlook SSDI benefits, day to day working professional do not come to work with the desired thought or goal to make professional oversights. Nor is there a job action toward the employees when these oversights are made even though said mistakes are extremely costly to their employer.

    Making professional mistakes is a by-product of determining SSDI eligibility, the abstract idea, it is inherently false to label those oversights as the desired thought or idea (or abstraction).

    Cases like Alice that are labeled as abstraction are putting a generic computer on a known process and the equivalent as saying the patent applicant is putting a generic computer on the desired thought or idea (or abstraction). Nobody is putting a generic computer to create intentional professional mistakes, hardships, etc. as the same is not an abstract idea or goal.

    Accordingly, when the patent examiner continues to label my process as abstract, he is labeling SSDI benefit oversights as the intentional thought or idea. Congress never intended professionals to make mistakes and the patent examiner fails to find any routine, well understood or conventional process that makes professional mistakes by design.

    B@17: I suspect that the CAFC is having trouble determining how to resolve certain issues under the Administrative Procedure Act, and resolving inconsistencies with different CAFC cases.

    The more the patent process insists on fitting a square block into a round hole, the more difficulty the courts will have to rationalize their decisions. Total folly to benefit a hidden agenda and ironically a rabbit going down the illogical Alice hole. Sadly, how fitting?

  20. Anon August 11, 2018 9:53 am

    Concerned,

    You have captured the gist:

    The more the patent process insists on fitting a square block into a round hole, the more difficulty the courts will have to rationalize their decisions.

    The Supreme Court decisions – in and of themselves – have already created a Gordian Knot.

    When people like B and Paul Cole seek to not “blame” the Court (when they seek to try to explain the Court’s “square” peg is “really” round, or that the round slot is “really” square; they become part of the problem.

    Step one in the solution is to recognize that the score board is broken.

    Attempts to rationalize can only end up obscuring.

  21. B August 11, 2018 12:17 pm

    “Software is not a process.

    The execution of software may be involved in a process.”

    *sigh* Pedant much?

    Also, are you saying that the execution of software that does nothing more than receive data, process data and provide processed data is not a process as defined in s100?

  22. Anon August 11, 2018 3:05 pm

    B,

    It is not pedant at all.

    That you think so only emphasizes how much you do not understand the forces at work here.

    Your last comment is out of the blue and does not reflect anything that I have ever posted. What is the point that you are attempting to make with such a thinly veneered “words in my mouth” hypothetical?

  23. Anon August 11, 2018 3:27 pm

    As to your last comment, B, let me go one step further in reminding you that I am on record for holding to the patent eligibility of systems, machines, software and methods related to innovations in encryption which may:

    receive data, process data and provide processed data

    Wherein processing may include providing an end product (unencrypted data) that is essentially the same as the starting point.

    Simply odd that you attempt such a tactic.

  24. concerned August 11, 2018 8:30 pm

    The whole patent mess is rotten to the core.

    Exhibit A: The SCOTUS adds words to the law

    Exhibit B: The SCOTUS will not define the words they added to the law

    Exhibit C: A court of law (Berkheimer) has to remind their fellow jurist that facts and evidence actually do matter in a court of law, a statement common folks would assume

    Exhibit D: The USPTO bends over backwards to insist that a process that solves a problem experts could not solve for 62 years is well known, routine and conventional

    Exhibit E: I have paid good money to have Exhibit A, B, C and D shoved down my throat

    Further Affiant Sayeth Naught

  25. B August 11, 2018 8:42 pm

    @ concerned

    “The whole patent mess is rotten to the core.”

    Just an honest question or two: what do you think your patent is worth, and what is your exit strategy, i.e., how do you intend to capitalize on the idea?

  26. concerned August 12, 2018 7:48 am

    B @25: I wondered if you would ask that question. Regarding worth: Let’s just say I would be able to get any firm in is country on a contingency fee if infringement occurred (5 multiple/10 multiple/20 multiple of costs?) And I have no problem getting in front of anyone in the country with this idea.

    Currently, it is a cat and mouse game. Everyone is watching the patent status. What the efficient infringers need to handicap: How long will this 101 joke go on, and will it get reverse. And if the 101 joke gets reversed and the boy boys jumped out there, the states are on the hook big time. Perhaps even criminal charges for the infringers as their “authorization and consent” may not cover them if the infringers did not disclose to the state that the idea was stolen. The state would be so pissed at our infringement suit, their attorney general would leverage and play the criminal card, especially after I show them my documents we have with the infringer to prove prior awareness.

    You may have noticed that I placed the Medicaid applications from all 50 states on record with the USPTO. Sure they were used for 103 arguments, it is also a public record to prove no state was/is doing my process before the patent application (Oracle called the move- smart!) One husband/wife team is trying to convince his employer (another household IT company name) that he has this covered and even his boss with no intimate knowledge of subject matter knows otherwise.

    Not an attorney, I did have the largest cash collection in the Attorney General’s (Ohio) history, prior to Cordray’s AIG suit. I did not even work for the Attorney General’s Office. In the trenches for many years and using the playbook that served me well. Cordray is running for governor this fall in Ohio, he personally asked for my business card earlier this year and he reviewed my case when he was attorney general in Ohio back in 2010. The DeWine camp (Cordray’s opponent) also knows me.

    Smart play: Big Boys cut a two-tier deal, with or without the patent, as an insurance policy and we get down to business (have prototype, etc). Then that big boys hold a competitive advantage and all the cards.

    What’s on your mind B?

  27. B August 12, 2018 12:10 pm

    “B @25: I wondered if you would ask that question. Regarding worth: Let’s just say I would be able to get any firm in is country on a contingency fee . . . .”

    Some friends of mine are working on new forms of litigation finance for people exactly like you, fyi.

    “How long will this 101 joke go on, and will it get reverse.”

    I keep saying this, and few people believe me, but Alice Corp. isn’t your problem. It’s the ignorance of 1/3 of the CAFC and 85% of the PTAB. Alice Corp. doesn’t need to be reversed, it needs to be understood. For example, it is my belief that “something more” is evidenced by a lack of 102/103 given Alice Corp.’s use of the word “inventive.” Judge Giles Rich busted his arse removing that word from the patent nomenclature with respect to 103 in the 1952 Patent Act. I suspect that no competent attorney in 1950 would fail to understand that 101 and 102/103 are intimately linked based the word “inventive,” but the last three generations of patent attorneys look at the word and say “huh?” and for good reason.

    I call this field of research “appellate forensics.”

    The holding to Alice Corp. is very narrow, and by your description of what you’ve done you appear to understand the approach you need to undertake. Your prosecution attorney appears to be doing a good job.

    That said, if you need to appeal to the PTAB (you will), you need to write your briefs as if you’re going to the CAFC (95% chance you will). Contact me on my LinkedIn account – I’m happy to forward some wonderful briefs, and I can recommend some very affordable options should you need to visit the CAFC.

    “What’s on your mind B?”

    I want you to win, but I want you to make a profit when you win.

  28. concerned August 12, 2018 12:25 pm

    B:

    Interested. What is your LinkedIn account contact info? Thank you for your support and concern!

  29. B August 12, 2018 12:28 pm

    You can find it referenced in one of the two articles gene published. Or in the alternative just use one of my business accounts. bud.mathis@crossroards.legal.

  30. Anon August 12, 2018 4:05 pm

    B,

    For all of your wants (in the real world of the court rooms), here you continue to get your appellate forensics off.

    Judge Rich would absolutely spin in his grave with your take that the Supreme Court is treating 101 correctly. The plain fact of the matter is that the Supreme Court is acting as if the Act of 1952 never happened and that section 103 was explicitly carved out of the preceding single paragraph in direct relation to the Court’s common law (but never settling as desired and expected) treatment of “invention,” “Gist of the invention,” and dozens of other like terms. Your attempted defenses of the Supreme Court are exactly the opposite of what he fought for (first, in helping write the Act of 1952, and then being a jurist with the most intimate knowledge of why Congress changed the law with the Act of 1952.

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