Avoid the Patent Pit of Despair: Drafting Claims Away from TC 3600

By Gene Quinn
June 25, 2020

“The way you draft an application greatly influences which Art Unit the application will be funneled into, and which Art Unit is assigned the application can in many cases be nearly dispositive of whether a patent issues—ever.”

Patent Classification Pit of DespairI’ve recently hosted two webinars on patent classification, taking a look at how contractors for the U.S. Patent and Trademark Office (USPTO) determine where to route each patent application within the Office after filing. One webinar dealt with classification generally and a second dealt specifically with classification relating to computer implemented inventions.

These webinars were fascinating on many levels. Did you know that the old patent classification system plays an important role in determining which Art Unit is assigned an application? And you probably thought you could forget about class 705! Not so fast! A sparsely populated technical disclosure in the specification with an inartful claim set is still a recipe for characterization in class 705, which still must be avoided at all costs if possible.

The Lottery

As any patent practitioner can tell you, this Art Unit and Patent Examiner lottery is extraordinarily important. It is easily possible for similar patent applications to be routed to diametrically different Art Units with respect to allowance rates and average prosecution length. When dealing with computer innovations, for example, the difference can easily be between being routed to an Art Unit with an 80% (or higher) allowance rate versus an Art Unit with a 40% (or lower) allowance rate. Sometimes certain Art Units within the computer implemented arts have single-digit allowance rates.

The lottery can and does make a huge difference, and despite what some patent practitioners think, there are ways to draft applications and claims to raise the likelihood that one will be routed to a more favorable Art Unit, with favorability defined based on a higher allowance rate and with a faster examination timeline. Let’s take a look at one particular example.

On March 28, 2019, we learned courtesy of the United States Court of Appeals for the Federal Circuit that an electric vehicle charging station is a patent ineligible abstract idea. See ChargePoint, Inc. v. SemaConnect, Inc., 920 F. 3d 759 (Fed. Cir. 2019). But then on June 2, 2020, we learned that an electric vehicle charging station is patent eligible, courtesy of the United States Patent and Trademark Office. See U.S. Patent No. 10,668,819. As I explained recently, the devil is in the technical details—both those disclosed in the specification and those that work their way into the claims.

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What Might Have Been

The ‘819 patent provides an interesting opportunity to consider what might have been. This particular patent did not have any method claims at the time it was filed and did not issue with any method claims. I have suggested foregoing method claims for some time because it seems that method claims contaminate the patent eligibility analysis, with the Supreme Court and often the Federal Circuit analyzing the weakest method claim and then lumping together system claims (for example) because the clever patent practitioner is just using a different claim technique to claim the same subject matter. But I wondered whether the absence of method claims might make good strategy from a classification standpoint as well.

I drafted the following hypothetical method claim based on invention disclosed and claimed in claim 1 of the ‘819 patent:

A computer implemented method for charging an electric vehicle at an electric vehicle charging station in a parking spot configured to receive power from a power grid, the method comprising:

receiving, at a first control unit, a request to charge the electric vehicle;

in response to the request being received, determining whether a a first hollowed-out component is aligned with a second hollowed-out component via a plurality of sensor inputs;

if the first hollow-ed out component is aligned with the second hollowed-out component, generating an instruction to convert and then converting electric power from the power grid to a radio medium having a frequency higher than 500 megahertz;

transmitting from a power transmitter the converted electric power to the electric vehicle.

I then ran this claim through LexisNexis IP® Pathways™ 2.0, which estimates based on the text inserted which Art Unit is most likely to receive the application. The most likely Art Units have an 82.1% allowance rate (with a 52% level of confidence that the application will be assigned to this Art Unit) and an 81.6% allowance rate (with a 14% level of confidence that the application will be assigned to this Art Unit.

Undeterred, I wrote a sparser method claim and ran it through Pathways™ 2.0 again. This time, the claim read:

A computer implemented method for charging an electric vehicle, the method comprising:

transmitting a request over a wireless communications network to charge the electric vehicle;

receiving the request to charge the electric vehicle;

converting electric power from a power grid to a radio medium;

transmitting from a power transmitter the converted electric power to the electric vehicle.

This time, Pathways™ 2.0 estimated that the most likely Art Units have an 81.17% allowance rate (with a 52% level of confidence that the application will be assigned to this Art Unit) and an 82.1% allowance rate (with a 14% level of confidence that the application will be assigned to this Art Unit. But notice that the third most likely Art Unit takes us into the business method Art Units where the allowance rate drops by nearly 40-percentage points.

A little surprised that the sparser claim didn’t yet trigger certain assignment to a patent death squad in TC 3600, I took the second hypothetical variant above and added to the claim, making it narrower. This time the claim read as follows (with my additions underlined):

A computer implemented method for charging an electric vehicle of a user, the method comprising:

transmitting a request over a wireless communications network to charge the electric vehicle;

receiving the request to charge the electric vehicle;

converting electric power from a power grid to a radio medium;

transmitting from a power transmitter the converted electric power to the electric vehicle;

billing an account of the user for the power received.

Once the claim is written to more narrowly cover the monetization of the electric vehicle charging station, the business method pit of despair is triggered.

Routing to one of the business method Art Units must be avoided at all costs if at all possible. Payments systems, payment gateways, or payments period lead an application down a daunting path that almost certainly will not end well for the applicant. Patent practitioners must strive to work with inventors to find a point of novelty to build claims around that do not relate to anything that can be characterized as monetization, period.

But what is worse than violating the thou shalt not claim anything that monetizes in a method rule, is just phoning it in and filing a naked method claim that would clearly violate Alice-Mayo Step 2B as not making an inventive contribution (i.e., not having contributed “significantly more”). The proof of this is the following extremely short method claim that does nothing to capture any uniqueness.

A computer implemented method for charging an electric vehicle, the method comprising:

transmitting the request over a wireless communications network to charge the electric vehicle;

receiving a request to charge the electric vehicle;

transmitting from a power transmitter the converted electric power to the electric vehicle.

The moral of the story is this: the way you draft an application greatly influences which Art Unit the application will be funneled into, and which Art Unit is assigned the application can in many cases be nearly dispositive of whether a patent issues—ever. Classification is done by real people who consider the application as a whole, but when it comes to staying out of class 705 (i.e., designation as a business method), the claims are of utmost importance.

 

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The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 18 Comments comments. Join the discussion.

  1. concerned June 25, 2020 5:44 pm

    My application fell into 705. I should at least expect the examiner to substantiate his rationale for rejection and at least make statements that appear truthful. If the examiner has the 705 classification and the case law going for his rejection, why resort to tactics that are not straightforward? My attorney calls the examiner’s actions a more polite non-responsive.

    705 should not be a free pass just to reject at all costs.

  2. Anon June 26, 2020 6:55 am

    Worth noting here that at the turning point of the SAWS debacle, after steadfastly denying the existence of the program time and again, the Office relinquished its position, admitted to the existence of the program, and announced that is was shutting down that specific program.

    The point though was that in finally admitting of the program’s existence, the Office made a greater admission that SAWS was merely one of many of such programs.

    What other programs remain alive in the shadows?

    In regards to 37 CFR 1.2, should not ALL actions (and thus, any shadow program results) be included in the written record of each application and its respective processing?

  3. CP in DC June 26, 2020 7:44 am

    The single digit allowance rate is common throughout the patent office. Life sciences applications also encounter examiners with single digit allowance rates. Drafting claims around these groups or examiners is merely a coping mechanism for the more profound problem, examiners who believe they are right despite the facts (and law) before them. Of course, the remedy is an appeal that consumes time and resources and not everyone can afford the process.

    As to classification, I have no faith in the system. Restriction requirements, common in the life sciences, demonstrate the disconnect. Life sciences applications frequently get restriction requirements where the same compounds or methods are classified into different groups. Worse yet, a Markush group is divided and categorized separately. The abuse of the restriction requirement is a common complaint among life science practitioners. Applicants complained, so now restriction requirements no longer include group and subgroup classification, although classification is a required part of the analysis.

    Drafting claims around problematic examiners and groups is a short term solution to the problem, I would like to see a more fundamental correction and ask why groups or examiners have allowance rates well below average. The very low allowance rates should raise a red flag to management, if they cared.

    I can’t wait for the day the PTO advertises single digit allowance rates to the public. “Please come and filed you application (and money) at the USPTO, where we believe 92% of the patent applications should be abandoned.” I guess they would put themselves out of business, well at least that would take care of the backlog.

  4. Concerned June 26, 2020 9:01 am

    CP in DC:

    I have often felt the USPTO was like preachers and dentist. The USPTO must be trying to put themselves out of business.

    And there is no penalty when an examiner writes nonsense, except more costs on the applicant.

  5. TFCFM June 26, 2020 10:36 am

    I applaud narrowing the discussion of this issue to software-related art units. A few years ago, I sat in on a seminar (on IP Watchdog? I think so) about the importance-of-art-unit issue with several other chemical- and biotech-practitioners (mostly experienced ones). We listened to the presentation and then asked each other whether any of us had experienced greatly-varying-allowance-rate or validity-of-examiner-argument issues based on art unit. None of us thought so. One of our number who was romantically involved with a chem practitioner who watched the presentation with others at another firm called the romantic partner and asked that group’s thoughts. They thought the same thing (“nonsense,” I think, was the precise characterization.)

    It’s perfectly credible that some art units in the software-related arts might have far more severe eligibility-related experience than others (such that art-unit-based distinctions are “real”). In chemical, biotech, medical device, and mechanical art units, I just haven’t seen it and don’t think it’s a very significant issue.

  6. Mark Nowotarski June 26, 2020 10:42 am

    I often draft with a specific classification in mind. I think examiners appreciate that since when they get the application, it is clearly about subject matter they are well versed in. It has led to very compact prosecution.

  7. Robert J Sayre June 26, 2020 11:45 am

    Hi Gene, thanks for sharing–very interesting, though do you have any data as to the accuracy of the Pathways forecasts? I don’t doubt the results you reported, but I do wonder whether the differences in likely classifications are as stark “in real life” at the USPTO.

  8. Anon June 26, 2020 12:07 pm

    TFCFM,

    Your views are of course discounted based on your past predilections.

    The characterization of ‘nonsense’ is indeed applicable – just not in the same way that you offered.

  9. CP in DC June 26, 2020 1:53 pm

    TFCFM

    Perhaps, you should review the allowance rate for diagnostic testing applications. Starting from the Supreme Court on down to the PTO, the applications have been rejected on eligibility grounds at a very high rate. Even the Federal Circuit has stated that the inventions were inventive, but that under Alice they are not eligible.

    The use of biological markers is the kiss of death in any claim. Natural correlation, checked and rejected. Utilization of the marker for a particular purpose has not solved the problem. Myriad studied all PTAB appeals for biologics and diagnostic applications rejected for lack of eligibility. The conclusion is that there is a lot of rejection and that most claims that survived need a “double invention” claim. First, diagnose and second treat all in the same claim. Obviously, this allows for split infringement and the problems associated with enforcement.

    But the conversation was about grant rate. Right now, we are preparing to appeal a case in the 1619 group. Not naming names, so don’t ask. The research showed the examiner to have a single digit allowance rate. This was not the first examiner and won’t be the last, I once kept a list. The discussions on this blog mostly focus on high tech groups, but single allowance rates exist in the life sciences. Look into Ant-like Persistence

  10. David Lewis June 26, 2020 5:22 pm

    I am responding to the very first comment by “concerned.” Although case law and the appeals process should make a difference, it is likely that (1) if the application is coming from TC 3600, the PTAB judges are biased against allowing the application, (2) the PTAB give some deference to the opinion of the examiner (ignoring to which they are or are not supposed to), and (3) the panel chosen is likely dependent on the subject matter of the application and is likely similarly disposed against allowing patent applications as TC 3600, so don’t expect alot of relief from the PTAB.

    In my analysis, looking at the last 217 appeals in class 705, 149 (67%) contain the phrase “We affirm” and do not have the phrase “We reverse” 42 (19%) contain the phrase “We reverse” and do not have the phrase “We affirm” and 13 (6%) contained both phrases. Note the notice of allowance rate (which I assume is the time which includes anything between and including the first office action until filing an RCE or getting a decision from the PTAB), for class 705, is 17.8%, which is about equivalent to two rounds of Office Action/response (optimistically speaking), and is statically equivalent to trying to rolling a 6 with a 6 sized die (actually it is slightly better). So going to appeal increases your chances of getting a patent to an extent that is slightly better than enduring another round of first office to RCE (not very encouraging).

    Treating each round between the first office action after filing an RCE to the next RCE like one die roll (even though law is not supposed to be like rolling a die), I put together the following chart, in which the right column is the number of RCEs filed minus 1, and the let column the likelihood of getting a notice of allowance at the point or earlier. So the first line means that you have a 17.8% chance of getting a notice of allowance prior to filing your first RCE, and the line means you have a 32.4% chance of getting prior to filing your second RCE. Note the probability of getting a patent with each new response to each Office Action is always only about 9% (probably a bit worse) no matter how many Office Actions you previously filed. One would hope that good arguments, following the US PTO Guidelines, making sure (to the extent possible) that the case law is behind you, should make a difference, but those are the statistics. Oh, and by-the-way, the statistics at the PTAB of the Examiner being reversed, in class 705 since 2018 (which is when Director Lancu took Office), are worse than before 2018. So going to appeal is slightly better than filing only one more RCE, but being willing to endure two RCEs, might work out better. Of course, that ignores the specifics of your case, and ignores the fact that when you go to appeal, you are at least getting a new set of eyes to look at the case. Having a panel or 3 PTAB judges should give decisions that are fairer and more consistent than individual examiners, but perhaps they are consistently more unfair, when if comes to class 705. Note that even getting your application classified in class with a 40% allowance rate is far better than class 705.

    1 17.8%
    2 32.4%
    3 44.5%
    4 54.3%
    5 62.5%
    6 69.2%
    7 74.6%
    8 79.2%
    9 82.9%
    10 85.9%
    11 88.4%
    12 90.5%
    13 92.2%
    14 93.6%
    15 94.7%
    16 95.7%
    17 96.4%
    18 97.1%
    19 97.6%
    20 98.0%
    21 98.4%
    22 98.7%
    23 98.9%
    24 99.1%
    25 99.3%
    26 99.4%

  11. Paul Cole June 27, 2020 3:55 am

    A commendable article with a great deal of common sense. Why look for trouble when it is avoidable? The specimen claims provide extremely useful guides.

  12. concerned June 27, 2020 6:14 am

    David Lewis:

    Great comments and thank you for response. My attorney said he will be interested in the PTAB response, code for how the PTAB will affirm the examiner if they do affirm.

    One attorney, and a contributor to this forum many times over, has been through my entire file wrapper. That attorney said that the court would have to lie and toss 75% of my claims to defeat the application.

    The author of the book “Plight of the Patentee” reached out and put my story in his book.

    My first examiner told me 3 times in a phone interview that the application had patentability. Then I mysteriously get a new examiner who writes even more incredible rejections such as the process only automates a manual process. What manual process with this solution, where?

    Or the process is routine, conventional and well understood. On what planet? The official record has evidence that no one in my field (all fifty states) uses the claims individually or in combination.

    Or no meaningful limitations. The examiner only acknowledges 3 limitations throughout the prosecution and has never address the other 11 limitations. The preceding observation probably led to the one attorney who said the courts would have to toss 75% of my claims, which to this point has been happening.

    The examiner did admit twice in writing that the claims solved a long standing problem (which has been beyond working professionals, experts and their computer networks for 6 decades as documented in the official record.) The preceding observation sure seems like a “new and useful” process to me, which SCOTUS said can be patented even using an abstract concept (even a 705 process I suspect).

    However, the inventive concept (yes described in the claims) is not used by anyone in any field, so our additional argument is the process is not abstract (whatever that means at the moment.) I ask friends to think of one situation in life that uses my inventive concept, anywhere in life, any place. No one to date has thought of one situation that uses my inventive concept and neither could the examiner.

    On CNBC, the hosts ask the guests about the disconnect between Wall Street and Main Street. At first, the majority of guests try to make a legitimate case as to no disconnect. Now, more and more guests as time goes by, are not even trying to pretend and openly state “It’s the Federal Reserve, stupid. Rule #1. Don’t fight the Fed.”

    Then the hosts ask the obvious follow-up question “The stock market cannot be this easy. The Fed prints money (trillions) and every stock holder becomes a millionaire. When will the bad consequences hit?” Number 1 answer: Dumb looks.

    Accordingly, with single digit patent allowance rates and rejections that are interesting at best to seasoned professionals, when can we stop pretending about the patent system? And more specifically, why even have classification 705, why the pretense?

    And the obvious follow-up question “When are all these bad patent decisions going to have a real detrimental consequence to the country?” Just like the stock market, we can all go around, hold hands and sing Kumbaya, but I doubt that inventors will: 1). Continue to think of an original thought and idea, 2). Spends lots of hard earned money and 3). Get kicked in the teeth on a forever basis

    Yes. Let’s see what the PTAB writes about good old classification 705.

  13. Kay June 27, 2020 12:43 pm

    If the invention falls between art units, I research the entire unit to see what my chances are and draft accordingly. I have done CIPs to draft my way out of a bad art unit and especially a bad examiner. If you use the exact wording from the art unit’s description in your field of art section, you will pull that unit.

    Clients don’t always understand how so much is luck of the draw wrt the unit and the examiner.

  14. An Examiner June 27, 2020 5:25 pm

    There are going to be MASSIVE changes in the next 1-2 years in how applications are routed at the USPTO. Starting next fiscal year the PTO is going to use “dynamic” routing which uses a black box implementation of a routing algorithm to route applications to individual examiners based on CPC codes and the individual examiners’ portfolios of previously examined applications (but also takes into consideration backlogs in specific areas). The Lexis Nexis pathways tool will likely be rendered useless at that point (but could possibly be reprogrammed to predict and target individual examiners). Also, the patent office is in the process of training an AI algorithm to do the initial CPC classifications in an attempt to replace the contractors that currently do the initial classification.

  15. Anon June 28, 2020 7:43 am

    Thank you AE.

  16. TFCFM June 29, 2020 9:42 am

    CP in DC@#9: “Perhaps, you should review the allowance rate for diagnostic testing applications.

    I’m quite well aware of the situation regarding diagnostic applications — I wrote many ought-not-to-have-been-but-were allowed applications over the years (and counseled clients not to bet the farm on their validity, for precisely the reasons the Federal Circuit and Supreme Court have invalidated many).

    Claims to diagnostics INVENTIONS are as patentable as any other. What has changed is that claims directed to merely applying old technology to newly-realized natural phenomena are being invalidated or denied. That is as it should be (and long ago should have been), in that the purported “inventors” of such claims did not invent the natural phenomenon they seek to monopolize.

  17. Anon June 29, 2020 10:12 am

    TFCFM,

    Yet again, your credibility is pretty much zero.

    You now stating that you wrote the very things being rejected (AND that you advised clients to the effect that they should not have been filed) points to an internal defect in your stance (and logic).

  18. TFCFM June 30, 2020 10:12 am

    Anon@#17: “You now stating that you wrote the very things being rejected (AND that you advised clients to the effect that they should not have been filed) points to an internal defect in your stance (and logic).”

    Among the ethical duties of a patent prosecutor are:
    – attempting to secure an issued patent for one’s client to the fullest extent permitted by then-prevailing law (and even for reasonably-arguable extensions of that law);
    – attempting to secure patent claims that will withstand potential foreseeable changes to the patent laws; and
    – educating clients regarding the likely future “strength” of patent claims which one has obtained and claims which one seeks to obtain.

    In the case of medical diagnostic subject matter, judicial changes to valid/allowable subject matter surprised only the ignorant and practitioners who weren’t paying attention. Wiser (or, at least, more prescient) practitioners anticipated the possibility that the changes which did occur might occur and prosecuted their clients’ applications and advised their clients in ways that accounted for multiple possibilities.

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