How the Owner of ‘Findmyphone’ Patents Overcame a 101 Objection Under the New USPTO Guidance

By Carrie Hafeman
March 8, 2019

Comments on Director’s Iancu’s Section 101 Guidance are due today and should be sent to eligibility2019@uspto.gov.

I hold nine U.S. computer security device recovery and communication patents relating to Findmyphone technology, which helps owners display return or recovery information before or with the lock screen to help get their smartphone, tablet, computer or laptop back. In February, I was notified that my latest U.S. application overcame a 35 USC  101 objection following an amendment that explicitly referenced Director Andrei Iancu’s Section 101 Guidance. My story should provide some hope that the guidance can provide a clearer path for inventors on how to adjust their claims to meet the USPTO’s new high standards to achieve success and satisfy the requirements that Iancu is looking for to ensure stronger U.S. software patents.

As we all know by now, Director Iancu issued new guidelines titled “2019 Revised Patent Subject Matter Eligibility Guidance” on January 7, 2019. The goal of the new guidelines was to help strengthen and make clearer the USPTO’s position on what is necessary in order to achieve a high quality, strong software patent that will avoid a 35 USC 101 rejection. The new guidelines provided instructions to patent examiners regarding how they should analyze patent eligibility questions.

After I had several similar patents granted regarding computer device recovery with no issues, my latest U.S. application 15/864,749 which was filed January 8, 2018, received a 101 rejection on October 2, 2018. On January 24, 2019, my patent attorney, Ansel Schwartz, filed amended claims and included remarks and arguments. On February 19, 2019, we received a Notice of Allowance for the application.

The amendment referenced the new guidelines, as well as the Berkheimer memorandum that was issued on April 19, 2018 by the Deputy Commissioner. Additional case law cited included Data Engine Tech v. Google No. 17-1135 and Finjan, Inc v. Blue Coat Systems, Inc. 879 F.3d 1299 (Fed Cir. 2018).

The Claims as Allowed

The now allowed 15/864,749 application includes method claims, apparatus claims, system claims and computer program claims.

Representative Claim 1 recites:

A method for displaying information to assist with returning a computer comprising the steps of:

activating a processor to display on a display screen on the computer which displays information concerning return information for returning the computer to an owner from data stored in a memory of the computer, the screen displaying return information before or with a lock screen, to facilitate return of the computer and which is maintained on or before or with the lock screen so the return information is visible to anyone viewing the display screen, the lock screen locks the displays screen and protects the computer;

initiating or changing return information which appears on the display through remote communication without assistance by a user with the computer, wherein the changing of the return information is done through an interactive program stored in the memory of the computer which is remotely accessed only by the owner of the computer or the party authorized by the owner to enable the initiating or changing of the display screen;

displaying the screen before or with a security prompt which prevents the user from accessing operatively the computer; and

activating the processor to allow a message to the user.

The arguments we provided to overcome the 101 rejection included:

  • illustrating how the claims provided tangible structure to the device;
  • background information regarding how this invention solved problems that existed with the device recovery products that were available at the time of the application;
  • explanation as to why the invention was not merely an abstract idea but rather provided a real solution to a real-world problem in a novel and unique way.

I now have nine U.S. issued/allowed patents, a European patent granted in Germany, Italy, France, UK, Ireland, and Finland, and an additional European divisional patent application pending.

I feel these new patent eligibility guidelines are helpful in providing inventors with the information necessary to achieve a strong U.S. patent.

Director Iancu’s initiatives to make sure patents are high quality will make all U.S. software patents stronger and this country stronger. This makes so much more sense than cancelling patents through the Patent Trial and Appeal Board years later and after the fact. When the PTAB cancels U.S. patents, it allows foreign countries and foreign companies to copy U.S. inventors’ ideas. I am very grateful the new Director is focusing on making sure patents are high quality in the first place before they are awarded.

I hope all inventors support the Director’s initiatives to make the U.S. patent system stronger and provide comments to eligibility2019@uspto.gov, which are due today, March 8, 2019.

 

The Author

Carrie Hafeman

Carrie Hafeman holds multiple patents in computer security, advertising, and communication, including FindmyPhone patents in the U.S. and Europe. She has a long history of working in the computer security and software industry and is skilled in Startups, Business Planning, Enterprise Software, Entrepreneurship, Venture Capital, Software Licensing, Patent Litigation and Marketing.

For more information or to contact Carrie, please visit her LinkedIn Profile page.

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 13 Comments comments. Join the discussion.

  1. mike March 8, 2019 10:20 am

    This is promising from an initial examination perspective, but the more important pressing questions are:

    1) If/when this patent(s) is challenged for review at the PTAB, will the PTAB follow the guidance? (Director Iancu says they are one agency, but we’ll see about that.)

    2) When Director Iancu eventually leaves the USPTO, will this guidance remain in force and not be superseded by a subsequent director being political appointed?

    3) If/when this patent is enforced in the Courts, given that the Courts are not statutorily bound to the guidance, will the Courts follow it?

    The Judicial exceptions do not follow what was written by Congress. If SCOTUS can create said exceptions, so can the CAFC.

    Congress needs to etch into the law what Director Iancu is trying to do with the Executive Branch. And while they are at it, they need to also strip the Courts from writing law with such “judicial exceptions”. And they should include inventors in the discussion, rather than do things behind closed doors.

  2. Benny March 8, 2019 3:58 pm

    “When the PTAB cancels U.S. patents, it allows foreign countries and foreign companies to copy U.S. inventors’ ideas.” Huh ? A US patent does nothing to stop economic operators outside the US.. A Chinese manufacturer can legally copy your invention, and legally export it to me,
    (I am not a US resident ) and it would not make any difference if you owned a valid US patent or not. That would not be the case if your US patent was refused but you had IP protection in China.

  3. concerned March 9, 2019 5:14 am

    Mike:

    3) If/when this patent is enforced in the Courts, given that the Courts are not statutorily bound to the guidance, will the Courts follow it?

    The Judicial exceptions do not follow what was written by Congress. If SCOTUS can create said exceptions, so can the CAFC.

    Interesting observations you made. Your observations really highlights another observation and makes the answer very clear:

    If the lower authority (Director, USPTO) contradicts the court decisions and the higher authority (Congress) contradicts the court decisions, then who really is the problem? How is this situation even allowed to happen in a legal setting where allegedly there is rule of law?

    Ironically, I just saw a Law and Order episode where the above situation happened. The FDA (the Administering Agency and lower component with no force of law) and the court (higher authority) were on one side of the argument regarding a heart pace maker, and the assistant district attorney (middle component) was on the other side of the issue. The result: The assistant district attorney wisely gave up the argument. The district attorney later realized he had the wrong theory of the crime: It was not the pace maker battery, it was the corroded wires. Amazing when sanity prevails!

    Of course, the preceding Law and Order example is a fictional account, however, how many situation in real life would this exact same thing happen other than patent prosecution/enforcement? Would a jury of my peers really rule against me when hearing the Director of the USPTO and Congress is on one side, and the courts are all over the place on the other side?

  4. ED Wilson March 9, 2019 12:44 pm

    RE: Benny

    I may be wrong but I believe that in many countries, if there is an enforceable patent, a article that violates that patent can be stopped from being imported or sold in any country where that patent is viable. Someone may be able to figure out how to purchase one or two items but a bulk shipment can be blocked until the infringer pays a licensing fee. It is totally wrong for the patent office to help finance PTAB with money it has collected from patent applications, which has come in large part from many small inventors. It should be helping the little patent holder instead of helping an infringer.

  5. Anon March 9, 2019 4:46 pm

    EW,

    Benny is correct in that a patent is purely a Sovereign-Centric item (and the point you bring up is merely one of importing into a protected sovereign.

    The author here – to the extent indicating otherwise – was being overly hyperbolic.

  6. mike March 10, 2019 1:19 am

    @concerned. You said “Would a jury of my peers really rule against me when hearing the Director of the USPTO and Congress is on one side, and the courts are all over the place on the other side?”

    Well, considering Congress’s invention of the PTAB and IPRs, you likely would not even get to the point of your merits even being heard by a jury of your peers. Sad.

    I’m not alone here. “It does seem like the deck is stacked against a private citizen who is dragged into these proceedings.” – Justice Sotomayor in Return Mail (2019), oral argument.

    Unless today’s Congress reacts, the Congress who passed the American Invents Act will go down in history as the Congress who burned America and the American spirit. Right along with Silicon Valley who provided the gasoline, and right along with Obama who lit the match and put Michelle Lee in place. Pull up the ladder when you are at the top? Anyone who follows the recent mishaps of Google, Facebook, Apple, Amazon etc will clearly see that they do not act in the best interests of anyone except themselves. Pulling up the ladder is exactly what Silicon Valley did with their push for the American Invents Act, and they have now run to the markets of China & India. Want a flying autonomous car and the world’s best AI? Go to China. Want a cure for cancer? Go to India. My advice to all inventors: teach your children Chinese.

    Today’s Congress holds the fire extinguisher, but they refuse to get spray on their clothes and are too dumb to overcome the “patent troll” false narrative preached by Silicon Valley over the past two decades. Only until America is drowning in ashes will Congress act, and by then, there will be no reason to even try.

    Congress’ education over the past two decades must be undone, and they need leaders to step up to the plate and support America innovation first, without fear of being ostracized by their party for being the first to stick out their neck.

  7. Anon March 10, 2019 10:13 am

    mike,

    What do you think of the Democrat presidential candidates apparently lining up to paint Silicone Valley as the enemy of American Innovation?

    (a link provided by Night Writer at that other blog: https://www.cnbc.com/2019/03/08/elizabeth-warren-pushes-to-break-up-companies-like-amazon-and-facebook.html )

  8. Carrie Hafeman March 11, 2019 3:39 pm

    In response to Benny, here is an example. A clever US inventor has a unique idea regarding a cell phone feature. The inventor starts a company, gets outside investment, hires employees and gets lots of impressive US customers. Then years later, PTAB cancels the patents. Now foreign companies, let’s say Huawei or ZTE, copy the US inventor’ idea, and sell phones with this feature pre-loaded onto all the phones they sell into the US. The company eventually lays everyone off, and the investors lose, since these features are now pre-loaded onto the phones. By canceling the US patent, this example illustrates how foreign companies can copy a US inventor’s idea. Doesn’t it make more sense to make sure that US patents are high quality in the first place?

    Wouldn’t it make more sense to hire more US examiners, pay US examiners better, and provide them with more tools to analyze patents and do prior art searches, rather than paying all these PTAB expenses? Let’s stop undermining the patent examiners who are trying to do a good job, and invest in paying and helping the examiners to make sure the patents are high quality in the first place. It’s just common sense.

    This is about innovation in all types of areas. I read last week on IPWatchdog where someone mentioned that The Cleveland Clinic, a major medical research institution, is out of the business of medical diagnostics because they can’t find investors to invest in the start up companies that they would form based on their own research. This is both serious and alarming.

  9. Pro Say March 11, 2019 4:10 pm

    Congratulations Carrie; your attorney made an excellent case.

    I am curious about one thing:

    Given the base patent app + issuance fees the PTO charges, is there a reason you didn’t apply for more than seven claims in this and your previous continuation patents?

    Thanks.

  10. ED Wilson March 11, 2019 5:56 pm

    Sadly the reason this discussion is taking place is because usually a wealthy infringer instead of taking the moral high ground, lets their greed take over. Instead of simply paying a license fee they realize that a small inventor can’t afford the legal fees to challenge them. Instead the wealthy infringer threatens, then simply tries to bankrupt the little guy with legal fees so that the little guy gives up. The patent office has given the wealthy infringer another tool by financing PTAB which helps get rid of the “Bothersome Patents” thereby eliminating the need for the wealthy infringer to pay licensing fees. Reform is needed since a moral high ground is seldom to be found.

  11. Mike March 12, 2019 2:36 am

    @Ed Wilson: I agree with you 100%.
    @ Carrie Hafeman: You said “Wouldn’t it make more sense to hire more US examiners, pay US examiners better, and provide them with more tools to analyze patents and do prior art searches, rather than paying all these PTAB expenses? Let’s stop undermining the patent examiners who are trying to do a good job, and invest in paying and helping the examiners to make sure the patents are high quality in the first place. It’s just common sense.”

    I say “YES YES YES!”

    What good is a patent if the grant cannot be trusted? Where is the reliance? I vote for the strictest and most difficult examination possible at the outset. Make it extremely difficult. Get the best examiners and technology money can buy, and perform the absolute best examination possible. And once a patent that goes through that is issued, it can definitely be trusted.

    What the patent law should NOT do it create doubt in the patent grant. Because once the reliability in the grant is lost, no one knows what to do with the paper a patent is printed on. (except possibly burn it and use it for a fire, perhaps?)

    Investors will not invest in something that is not secure. Just watch Shark Tank. “Do you have a patent?” is one of the most basic of questions. They want to shield themselves from someone else taking the idea and running with it. The knowledge that one has the right to exclude others is vital to any investor. If Congress created a system whereby the patent grant can no longer be trusted (and they did exactly with the AIA), then investment will simply go elsewhere. And we see this playing out right in front of our eyes.

    The way to make patents strong is to strengthen the initial examination process. Not create doubt in the patent grant that is issued when it can be thrown back into a non-article III tribunal where it is presumed invalid at the outset. And multiple times at that. That is the exact opposite of creating trust in patents.

    And this is why I am doing everything in my power to get the law changed. My patents that were once valuable now are worth no more than the paper they are printed on.

    Talk to your reps. Visit usinventor.org and take action. If you missed out 15 years ago when you should have planted that tree you wanted today, and you still want that tree, well, get out from behind your keyboards and plant one today.

  12. mike March 12, 2019 3:08 am

    @Anon: “What do you think of the Democrat presidential candidates apparently lining up to paint Silicone Valley as the enemy of American Innovation?”

    If it’s true (and it does seem the case), I say more power to them. Thanks for sending that link. Warren’s “platform utilities” proposition is an interesting solution to promoting competition. As a platform utility, being “prohibited from owning both the platform utility and any participants on that platform” would solve a lot of problems with smaller players getting a fair shot. If I want to provide a better video calling app on the iPhone, for instance, and have a fair chance of getting into the market, well, I can’t. Even if I were to provide it for free in the App Store. This is because Apple includes “FaceTime” on all iPhones and bundles the price of this app (and all their other pre-installed apps) into the price of the iPhone. There is no option to buy an iPhone without this app, and then go to the App Store and buy a competing app.

    It seems Apple has more right to exclude others from participating on their platform than legitimate patent holders have the right to exclude others from using their inventions post Ebay (2006).

  13. Edwin Wilson March 25, 2019 6:23 pm

    The Hafeman article provides worthwhile advice regarding 101 as to how to make a stronger, so called, software patent due to recent rulings by the Patent Office. However, at this time, it also is necessary for something to be done regarding the exurbanite costs of a legal law suit which, for the inventor, is not being helped by PTAB. Thousands of inventors simply cannot afford to enforce their property rights due to the enormous costs of the legal system, not only due to the dollar cost but also for the time involved in a long legal battle.
    OK. It is time to call it for what it is when a wealthy willful infringer fails to pay a realistic licensing fee. It is THEFT pure and simple. Wealthy companies, and everyone knows who they are, don’t want the public to know it is THEFT which is what they are doing and what the proper name for it is. It is just another form of “White Collar Crime” that all too often gets unreported and seldom is punished. The wealthy infringer knows full well that in most cases he is going to get away with it. In the alarm business we talk about the “Theft Triangle”. You have at one point “Need”, at another point you have “Attitude or Beliefs”, and at the third point you have “Opportunity”. For a theft to occur you must have all three in play. In the case of a wealthy infringer you have as his “Need” which is his greed. His desire for large profits, bonuses etc. You have his “Attitude” which is his bully mentality and any thoughts of any degree of morality is usually overcome by his insatiable desire for profits. He usually has almost unlimited money and a well-funded legal department to enforce his desires. As for “Opportunity” he knows that the little guy will drown in legal fees and most likely bankruptcy if he tries to enforce his rights. A little guy not only does not have the time to fight, but certainly does not have the funds. He most likely has no way to come up with hundreds of thousands if not millions of dollars to fight the big guy. Therefore, the wealthy guy usually gets away with the “White-Collar Crime” of Theft. He simply copies the inventor’s ideas, in effect steals them, and goes haply on his way.
    So, what can be done. First, PTAB must be eliminated. It eliminates a fair playing field for it is designed to help the wealthy infringer instead of the thousands of little guy patent owners which the US Patent and Trademark office should be helping instead of hindering. Why the patent office decided to help finance PTAB is beyond me. A patent should be worth more than just the right to buy an overpriced coffee mug with the inventor’s name, patent number and a patent office logo on it. Secondly, somewhat like the wealthy people who got caught at the crime of illegally paying to get their children into the college of their choice, perhaps the FBI should be brought in to investigate the crime of THEFT of the property rights of the little patent holder. Let the FBI hire the experts they need to investigate and prosecute the case. This would not cost the little guy the enormous costs of hiring lawyers on a contingency basis – 30 to 40% – plus costs for Markman hearings, transportation, hotel bills, mock trials, depositions, expert witnesses, etc. The cost of reporting the crime to the FBI would not cost the little guy anything, and it would level the playing field. (I am sure all lawyers would hate this idea.) Thirdly, if the little guy does have to hire a wealthy law firm to handle the case for him and wins, the willful infringer should be compelled to pay not only the triple damages, but also on top of that, all expenses, contingency fees and trial expenses, expert witnesses etc. as well as, on behalf of the little patent holder and inventor, any IRS charges that the little guy might have to pay as a result of winning the law suit. The top officers of the Bully company should also be legally liable for the THEFT. Perhaps if the wealthy willful infringer must face even larger expenses than he faces now, he will not have his team of lawyers fight a long legal battle that which now favors him, before willingly paying a realistic licensing fee without a fight. Turn about is fair play. The little inventor also needs to realize he could face the same types of penalties if the big guy is actually not copying his ideas.

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