GO GO GO JOSEPH, Reject That Business Method

JosephProfessor Joshua Sarnoff of American University just directed me to a gem of a response by occasional Patently-O reader Dean Alderucci.  The Examiner rejected Walker Digital’s the pending claim 2 with the most ancient of references:

In Genesis, Chapter 41, we are told that Pharoah appointed Joseph to be his representative and instructed him to enter into contracts to purchase grain.  These contracts included an offer with an activity (supply grain) and a benefit (get paid for the grain). Payment was made upon delivery of the grain.  The story of Joseph is about 4,500 years old. . . . the principal/agent relationship is of immemorial antiquity.  It no doubt predates civilization itself. . . . Many of Applicant’s [other] claims could also be rejected using the same reference.

Dean.bmpIn response, Alderucci notes that the Examiner “has completely misinterpreted the most popular and analyzed book in all of human history. . . . [Nevertheless], the claims as pending have been carefully amended to steer clear of embracing of any of ancient practices of Joseph, the Pharoah, or the [ancient] Egyptians.” 

File Attachment: Bible Response.pdf (218 KB)

The application (10/212,636) is sitting on a response after final. Amended claim 2 reads as follows:

2. A method comprising:

  determining a recipient;
  determining an offer which includes an activity and a benefit;
  transmitting to a representative instructions to provide the offer to the recipient;
  determining whether the recipient has performed the activity; and
  providing the benefit to the recipient if the recipient has performed the activity, in which the recipient is a player at an electro-mechanical gaming device.

16 thoughts on “GO GO GO JOSEPH, Reject That Business Method

  1. 16

    I disagree with the examiner …. He should have used this part of the bible instead …

    – determining an offer which includes an activity and a benefit;

    Genesis 29:18 -> Jacob saying that he will work (an offer) for Laban for three years (activity) and get Laban’s daugther Sarah (benefit).

    – transmitting to a representative instructions to provide the offer to the recipient;

    Genesis 29:15 -> Conversation between Laban and Jacob. An instruction was transmitted (via conversation) to the recipient (read Jacob). And Jacob can be considered a representative (you can always represent yourself right?)

    – determining a recipient (Jacob)

    – providing the benefit to the recipient if the recipient has performed the activity (what he probably wrote in the first place anyway)

    Genesis 29:24-25 -> after three years Jacob supposed to get Sarah to his wife (the proposed benefit) but got some other chick instead (the real benefit).

    Okay …. so he didn’t really get the benefit his supposed to but he did got a benefit ….

    Okay … I need to get back to my paper …..

    Bottom line ….

    The examiner is funny (but misguided in the way of the Bible). The lawyer should be disbarred for wasting people’s time (read the client and the examiner)

  2. 15

    LOL, indeed, Lazy Thinker!

    Who among us has not picked up the cell phone and called up an escort service while playing online poker?

  3. 14

    Well, one could argue that this is nothing more than describing the world’s oldest profession (therefore much older prior art than gambling), using gaming as a front or cover.

    Isn’t there a prohibition against issuing utility patent for immoral purposes? LOL.

  4. 13

    Moe,

    Quick follow up:

    When you say “The subject matter was allowable, but the claims were so sloppy, I had to completely rewrite them”, do you mean that the claims themselves were allowable but sloppy, or do you mean that the claims would pass muster under 102 & 103 but not 112 second paragraph?

  5. 11

    1. Yes. I am frustrated by broad claims that could be rejected by poker, blackjack, slots, bingo, etc., all for the same claim. This is extremely common, 30-40% of the time.
    2. No, not just 101, but sloppy claim language in general. I just got one case because the examiner was no longer here. The subject matter was allowable, but the claims were so sloppy, I had to completely rewrite them. It took five revisions, all day, to get all the bugs out. The attorney agreed to my proposed claim language, no questions asked.
    3. While TSM is fairly consistent and repeatable to keep down patents being found invalid, judges being overturned on appeal, etc., I don’t believe it leaves enough room for engineering judgement. I had to allow another case, because the best reference (the others didn’t even come close) did not teach or suggest the particular feature of an invention (can’t say what it is). On my last job, I would have found this feature obvious in light of the reference, but it was non-obvious in light of TSM, so I have to allow it. Can’t go into detail, but you understand.
    4. This lack of detail doesn’t happen too often, but it happens often enough, and usually with the same applicants.

  6. 10

    Moe,

    Thank you for your comments. Let me try to restate them to make sure I understand.

    1. As an examiner, you find it very frustrating when you have to examine an application that has extremely broad claims that could be rejected for multiple reasons.

    2. You are also frustrated by the large number of claims that appear to ignore the current 101 guidelines (e.g. signal claims).

    3. You feel that the current TSM standards are too narrow and that if applied rigorously, they will result in the allowance of patents that shouldn’t be allowed.

    4. That most applicants do not provide enough disclosure in their applications to support their claims.

    Is this a fair restatement of your concerns?

  7. 9

    GO GO GO …
    1. Dennis Crouch’s blog program determines a recipient for his emailed blogs;
    2. Dennis Crouch emailing program determines an offer which includes an activity and a benefit – in fact, there are five offers in his email, each of which has a benefit: (i) Click link to read rest of post, (ii) Email to a friend, (iii) Safely unsubscribe , (iv) Find related content to this feed, and (v) Quickly add automatic email updates to your site or blog
    3. Determining whether the recipient has performed the activity- (did recipient click any of the links in the email?); and
    4. providing the benefit to the recipient if the recipient has performed the activity (self-evident)
    5. in which the recipient is a player at an electro-mechanical gaming device. Life on the Intenet is a game and we merely are all players.

  8. 8

    I wonder if the “examiner” is really from Bell Boyd. He/she does have some valid points however when it comes to broad claims and proving obviousness. Clients always want broader claims even against professional advice. Most times clients don’t even want to pay for a search so you are left with making broad claims.

    Lets face it, most of us have had allowed claims that in our own professional opinion did not deserve to be allowed.

  9. 7

    The new rules will actually increase pendency instead of reducing it.

    Take the “One RCE” rule. If you get a final action on your first RCE, you have three choices. You can abandon your application — which isn’t going to happen. You can petition to file another RCE — in which case, the application will sit over in the petitions branch for 2-3 years (their current backlog) waiting for the petition to be granted (which it will be if you pay the right fee) and then go back on the examiner’s docket for another go. Your third option is to file an appeal — thus requiring patent law judges to make decisions better made by GS-7’s and GS-9’s — all after a wait of 2-3 years.

    The other proposals are all of a piece.

  10. 6

    Funny how the PTO Employee Locator doesn’t list anyone called Horowitz, isn’t it? That’s a pity, because if you are an examiner I won’t know if I get an Office Action from you.

    The new rules package is a nightmare. Anything that makes us do that much more work results in higher charges to our clients, which they won’t be happy about. It’s actually a fairly reasonable expectation that the government will spend the fees on examining the application, but they would rather divert the money and try to push the work back to the applicant.

    We are also worried that the rules package will force us into doing things that will later be found inequitable conduct by the courts.

    As for the TSM test, whoever said it was in the constitution? Surely you know the pecking order, i.e. constitution, statute, and then precedent. This is CAFC precedent.

    It’s true that this this will be the first time it’s been reviewed by the Supreme Court, but it arose as an attempt to set an objective standard that Graham v John Deere had not done.

    I’m sure you would like it replaced with a ‘because the Examiner says so’ standard, but hopefully we will see something better than that. In fact, that’s inevitable, as the courts need something that can be applied interpartes.

    Alun Palmer, Patent Agent

  11. 4

    The Super Mario Brothers analysis seems right on but we needn’t even get that technologically advanced.

    Let’s take this claim:

    A method comprising:
    determining a recipient;
    determining an offer which includes an activity and a benefit;
    determining whether the recipient has performed the activity; and
    providing the benefit to the recipient if the recipient has performed the activity, in which the recipient is a player at an electro-mechanical gaming device.

    This is pinball. The light says: hit the bumper to collect your points. Whoopee.

    But wait! Let’s throw this allegedly “new” limitation into the mix: “transmitting to a representative instructions to provide the offer to the recipient”.

    WOW!!!! WOW!!!!! Who is this “representative”? Who does the “transmitting”?

    Answer: Who cares? The idea that a challenge can be “transmitted” to a “recipient” by a “representative” is older than the hills, regardless of who the recipient is, who the “representative” is, or how it is transmitted (unless the mode of transmission is novel, which we can rest assured it isn’t).

    But wait — it’s the machine itself that does the “transmitting,” not a “representative.” So nobody would ever think to have a “representative” do the “transmitting” of challenges to the player.

    Unless the player is blind (more apologies to The Who) …

  12. 3

    I’m an examiner in at the PTO and I see this kind of stuff all the time from attorneys and agents who should know better. I for one, would never allow this claim in a million years, even if meant getting fired. People come in with really short broad claims, and then become irate and threaten to appeal when we don’t allow them. My area has a very low allowance rate–20 to 30%. I have some cases where I could literally reject the claims ten different ways. Most, but not all, applicants do little if any prior art searching, because of laziness, fear of charges of willful infringement, fear of art rejections, or whatever. If you guys complain about “bad” allowances by the PTO, it’s partly your own fault. I regularly get signal claims, 101 problems, lack of antecedent basis, inconsistent terminology, lack of enablement, overly broad claims, ad nauseum. Read the 101 guidelines on the PTO website. Another problem I see regularly is that the specification is so short, the applicant has no room to flesh out the claims to overcome a rejection. If any of you are new lawyers, pull up the pre-grant pubs on Public Pair for Bell, Boyd, and Lloyd–they do it right, and are the best I have seen since I have been at the PTO, by a mile. For one, I understand the motivation behind the “teaching, suggestion, motivation” test, but many attorneys act as if all 103 combinations are impermissible. Since when do two references explicitly refer to each other? Motivation to combine CAN come from the knowledge of one of ordinary skill in the art. When I was working on equipment in the ***REAL*** world, such a TSM test would have meant I would have never gotten anything done. I would not have been allowed to hook up a motor to a motor driver circuit because the data sheet for the motor did not refer to the part number for the motor driver circuit and vice versa. If we had a problem, we analyzed it, did some calculations, put the parts together, and tested it out–voila!! Problem solved! No TSM test at all, we just went out, kicked @$$, took names, and got the job done. If you ever look on the back of a piece of heavy equipment, you will often see a steel name plate with twenty or thirty patent numbers on it. One patent for the computer, one for the data acquisition cards, one for the hydraulics, one for the pneumatics, one for the instruments, one for the real-time software, one for the operating system, and so on. The engineers who put all of the parts and subsystems together (all differnet parts, with their own patents and their own references, no TSM test) analyzed the problems, did the calculations, assembled everything they needed for the job, put it together, and tested it out. Believe me, they weren’t looking at the references for motivation to combine–they found it from their own experience and knowledge. The engineers I worked with were all ones of ordinary skill in the art, some better. The CAFC needs to wake up and smell the coffee. I didn’t see the TSM test anywhere in the Constitution. I hope the Supreme Court gets it right in the Teleflex case–read the solicitor’s amicus curiae to see how it should be done. I also support the rule package 100%. It’s already just as tough for the examiners; it’s about to get tough for the applicants. You guys better do a thorough search and write your claims to distinguish above the prior art before you walk in the door. Get to know the subclasses really well and search every subclass you think the examiner will search. I personally will do what I can to put the good cases in form for allowance, without making spiteful final rejections, but I can’t speak for the other examiners…

  13. 2

    Based upon the claim, a good guess is that the claim revolves around gambling.

    Consider the following rejection:

    2. A method comprising:
    determining a recipient (I’m a casino and I want gamblers at my casino — gambler is recipient);
    determining an offer which includes an activity and a benefit (offer — play at my slot machine for sufficient period of time, and I’ll reward you points);
    transmitting to a representative instructions to provide the offer to the recipient (direct marketing department to advertise offer);
    determining whether the recipient has performed the activity (have casino personal watch players and track their playing time or use a card inserted into a machine to track playing time) ; and
    providing the benefit to the recipient if the recipient has performed the activity, in which the recipient is a player at an electro-mechanical gaming device (reward the points).

    Even simpler:
    2. A method comprising:
    determining a recipient (I’m a casino and I want gamblers at my casino — gambler is recipient);
    determining an offer which includes an activity and a benefit (offer — play at my slot machine and pull the handle so that triple cherries in all three reels is shown and I’ll reward you 10000x your bet);
    transmitting to a representative instructions to provide the offer to the recipient (direct marketing department to advertise offer);
    determining whether the recipient has performed the activity (machine detects when triple cherries in all three reels are shown); and
    providing the benefit to the recipient if the recipient has performed the activity, in which the recipient is a player at an electro-mechanical gaming device (reward money).

    I’ll be the first to defend an inventor’s right to obtain a patent on just about anything, and I’m not one to criticize another practitioner’s work, but that claim (as amended) doesn’t even pass the sniff test. It is claims like this that get people up in arms over the type of subject matter that is trying to be claimed.

    I just took the opportunity to look at the three office actions, and in the first office action, the Examiner does not perform much better. The 102(f) rejection in the first office action is unnecessary. Also, the citation to the Holy Bible with the authors being Levite, Moses, etc. is patronizing. The other citation to ‘Letric Law Library Legal Lexicon isn’t much better. The Examiner gets wrapped up in the “concept” of the claim rather than just setting forth how the particular reference identically discloses each of the claimed elements. The second office action is much better (new examiner — examiner for first office action was a primary, not much of a surprise … primaries tend to be the worse because they think they can get away with anything). Regarding the last office action, the rejection of claim 17 under 112 is bogus. The 101 rejection is as well (how are those claims any different, within the meaning of 101, than the claims found in Ex parte Lundgren?).

  14. 1

    Don’t all the limitations of the claim happen in Super Mario? You choose a level which has a prize at the end. Upon traversal of the level, you get the prize, save the princess, etc.

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