BPAI Again Rejects System Claims under Bilski

Ex parte Atkins (BPAI 2009)

The BPAI has again raised the issue of Post-Bilski patentable subject matter sua sponte. Like most claims challenged under Section101, Atkins claims also have serious nonobvousness and indefiniteness problems.

Atkins claims a method of "converting a unidirectional domain name to a bidirectional domain name." In reviewing the claim under Bilski, the BPAI noted that the claims do not "recite any machine or apparatus or call for transforming an article into a different state or thing. A domain name is simply a series of characters representing the address of a resource, such as a server, on the World Wide Web. All of the steps are data manipulation steps."

Atkins also claims a parallel "system" for converting the domain name. The BPAI rejected the system claims under Bilski since "those claims encompass any and all structures for performing the recited functions. As a result, [the system claims] are at least as broad as method claims ... which we have determined recite patent ineligible subject matter under Bilski."

• Ex parte Atkin.pdf

Comments

[Alan McDonald]

More good news.

THis is change we can believe in.

[6]

This is a strange case. Read that thing. They Miyazakied a claim into a 112 2nd AND 1st and Bilskied it.

They worked that mo fo over. On the other hand, he's off in terms of 103.

I love footnote 8.

"We leave it to the Examiner to determine in the first instance whether claims 5-8 and 14, which recite a “computer readable medium encoded with computer executable software,” recite patent eligible subject matter"

[6]

Ok I think I just hit "preview" instead of "post".

This is a weird decision. Read it and see a Miyazakied 112 2nd AND 1st and then a Bilski uppercut for the knockout.

They worked this app over, but on the other hand at least he got off of the 103.

[Just Visiting]

From the opinion:

"The term “system” in the preamble is broad enough to read on a method and thus does not imply the presence of any apparatus."

Yikes!

Next the opinion says:

"Although the body of the claim recites a “label definer,” an “inferencer,” and a “character reorderer,” those recitations fail to serve as structural limitations because (1) they are not “means” recitations subject to interpretation under 35 U.S.C. § 112, sixth paragraph, and (2) they would not have been understood in the art as implying any particular structure."

This isn't the law is it? Isn't the correct claim interpretation to invoke 112 6th when faced with functional language and no structure? Perhaps the applicant did not identify the claims as means plus function in the appeal brief.

Maybe the PTO got the result right, but this rationale doesn't seem right.

[6]

So it said if I make an account then I can display with an image.

ARG!

[6]

"This isn't the law is it? Isn't the correct claim interpretation to invoke 112 6th when faced with functional language and no structure?"

They didn't say that there was "no structure" they said there was "no particular structure". The limitations most certainly imply structure.

[Malcolm Mooney]

1. A method for converting a unidirectional domain name to a bidirectional domain name, said method comprising the steps of:

establishing a plurality of labels within a unidirectional domain name by using a pre-determined full stop punctuation mark as a delimiter between said labels, said labels having an original label display order as encountered from left to right;

within each said label, performing inferencing through resolving the direction of indeterminate characters by assigning a strong direction left or right to each indeterminate character;

and reordering said characters within each said label of said unidirectional domain name into character display order using the fully resolved characters previously inferenced, thereby
converting said uni-directional domain name to a bidirectional domain name in which said original label display order is preserved, and bidirectionality of characters within each label is produced.

Hmm. Let's see here. This is a method for converting a unidirectional "name" to a bidirectional "name". The steps are "establishing," "performing inferencing" (!!)and "reordering" characters.

Purely mental hoohaw, and extremely poorly drafted (as usual). Do people really think they are "inventing" when they come up with this garbage? Do software developers really think so highly of themselves and every keystroke they type?

Adding the word "system" should not be enough to turn this abstract puzzle solving exercise into a statutory claim. Might as well add a step of "pressing a button" or "breathing air."

By the way, was an example of source code provided with the specification? You know, to demonstrate possession, meet best mode requirements, and as an example to rely on when discussing unexpected results with the patent office. You know, sort of like what we in other art units routinely do before we ask the PTO to grant us years of exclusive rights to the methods we invented.

Or was it basically a bunch of handwaving like most of these software applications?

[Just Visiting]

6,

How do you feel about the BPAIs recent practice of reversing 103 rejections on claims that are arguably indefinite? Is the BPAI trying to discourage examiners from applying art rejections?

[Malcolm Mooney]

""Although the body of the claim recites a “label definer,” an “inferencer,” and a “character reorderer,” those recitations fail to serve as structural limitations."

Buh-bye Beauregard.

God, I am loving this.

[Just Visiting]

"They said there was 'no particular structure'"

I don't think that difference makes the difference. As an example, "mechanism" implies some structure, but is generally not enough to avoid 112 6th.

[Babel Boy]

"The meaning of “strong” in the Unicode context is explained in Wikipedia as follows:" -- BPAI

Since when has Wikipedia become a reference by which patent rights can be extinguished? Any monkey with a net-connection can modify any Wiki entry so that it reads anyway they want. The BPAI "judges" or the examiner could have altered the Wiki entries to say what they need to support a rejection.

Just this week some pea-brain modified Ted Kennedy and Robt Byrd's Wiki entries to say they are dead.

Wiki is not an authority on anything for any reason except, maybe, high school essays. The BPAI judges are just being lazy here. They get paid to much for high school quality work like this.

[Just Visiting]

"Adding the word "system" should not be enough to turn this abstract puzzle solving exercise into a statutory claim."

I agree, but that's not what happened with the system claims. The applicant recited some structure to carry out the steps. The BPAI read the structure out of the claims, improperly in my opinion, to allow applying Bilski in a straight forward manner. It isn't clear to whether the BPAI is inviting the applicant to recite a little more structure or to simply invoke 112 6th to get the claims allowed.

[6]

"It isn't clear to whether the BPAI is inviting the applicant to recite a little more structure or to simply invoke 112 6th to get the claims allowed."

Couldn't he do either? Shouldn't an attorney know this? Shouldn't an attorney be able to make the decision for his client and then dictate to his client which it will be? lol, ok ok, maybe he should just suggest it.

Really though gtg

[Babel Boy]

"The term “system” in the preamble is broad enough to read on a method and thus does not imply the presence of any apparatus." -- BPAI

Since when is statutory class defined by the breadth of the claim? Breadth is something that happens WITHIN a statutory class. This "logic" is the crux of the BPAI jihad to set Bilski loose on all classes of claims. Bilski is about methods claims. Period. If the CAFC had wanted it extended to other classes, it would have said so. [At least that's the way courts see these sorts of things.]

If applicant claims a system in the preamble and then claims only methods steps, then smack him back with a 112 rejection, which is what they did. But don't come in here with a 101 rejection under Bilski and say a system claim can encompass methods.

This is a typical PTO grab-your-ankles sand-bagging case, if you don't mind me mixing my metaphors.

[The BPAI are dolts]

"The BPAI rejected the system claims under Bilski since 'those claims encompass any and all structures for performing the recited functions. As a result, [the system claims] are at least as broad as method claims ... which we have determined recite patent ineligible subject matter under Bilski.'"

I expect this level of "analysis" from GS-7's, but from APJ's? Sheesh. Lazy, unprofessional, and downright embarrassing.

I hope the next Under Secretary is Hercules, cuz he's gonna have some seriously stinky stables to clean out.

[David Stein]

Anyone keeping score of CAFC/BPAI 101 cases since Bilski? I think it's 12 invalidations and probably one validation (Ex parte Bo Li.)

At the very least, this is making an excellent case for SCOTUS appeal - since it's becoming increasingly indisputable that the CAFC's "there remains no categorical exclusion of patentability for software" statement is a lie.

- David Stein

[6]

12 to 1 means there is no catagorical exlusion. Sorry.

LOLOLOL :)

I just couldn't resist.

Sht is like comedy central around here.

[Malcolm Mooney]

"Since when has Wikipedia become a reference by which patent rights can be extinguished?"

Since always.

[Malcolm Mooney]

"12 to 1 means there is no catagorical exlusion. Sorry."

LOL. I smell toast. Badly burnt toast.

[BPAI is an embaressment]

This is what happens when attorneys not skilled enough to get a job at a real firm start monkeying around with the law.

Regardless, until the Federal Circuit buys into this BS, it doesn't mean much. The USPTO will still accept amendments that will overcome the 101 rejections.

As for the newly imposed 112 rejection, 1st paragraph rejection -- overreaching at its worse.

[Patent Quality]

Where do they find APJs nowadays? They pick'em up at the day laborer center each morning?

[Malcolm Mooney]

BB "Since when is statutory class defined by the breadth of the claim? "

Again: since always. When a claim is poorly drafted and can be read to cover natural laws or algorithms, abstract nonsense and/or any credible application of same, its non-statutory.

The only difference is that the PTO and everyone else is finally realizing what a giant pile of crap accumulates when the law isn't properly applied.

It's clean up time. Appeal all you want. The sad reality of whack-a-mole is that the mole is dead. The only thing that keeps it moving is a sucker's quarter and a metal rod up its hind end.

[Alan McDonald]

Sorry they let one slip through. Must be more careful in the future.

[Malcolm Mooney]

Just a random thought: I wonder whether companies that engage in software patent filing are using Bilski to attack software patents asserted against them ... i.e., is Bilski frequently showing up in district court and/or appellate court briefs to knock out the patents of trolls or genuine competitors? Or are tech companies avoiding the attack for fear of shooting their portfolios in the foot, so to speak?

[mmmbeer]

I've said it before, I'm not sure 101 is the proper place to address the real problem with these types of claims, but 112 definitely (no pun intended) is. The method claims of these sorts of patents are gibberish and basically encompass the universe and can't possibly be definite or enabled.

Second, to the extent Bilski is upheld, I do not think that wrapping a series of method systems into a "system" should save a claim under Bilski either. Anyone can write a "step" as an functional element "inferencing" becomes "an inferencer." Bilski applies. Patent law has enough magic words, this should not be any different. If you want an "inferencer" claim the thing that does it, not its abstraction. If you can't succinctly claim it, use means-plus-function and roll your dice.

Really, I don't see why there are so many people confused by claiming the ACTUAL invention and not some crazy level of abstraction.

[broje]

MM said, "By the way, was an example of source code provided with the specification? You know, to demonstrate possession, meet best mode requirements, and as an example to rely on when discussing unexpected results with the patent office."

I recall that Applicant's are specifically discouraged from submitting source code. Psuedocode is another matter.

[Malcolm Mooney]

"I don't see why there are so many people confused by claiming the ACTUAL invention and not some crazy level of abstraction."

The answer is that many of these people have never done anything BUT that crazy level of abstraction, and if they actually tried to structurally describe these "inventions" or the physical acts that are occuring, their heads would explode.

Feeling sorry for such folks, the PTO allowed Beauregard claiming for a time. That led to the madness we see today. One reliable method for stopping the spread of corn smut is to burn the field.

[curious]

The Board entered a series of new rejections. It is thus critical that the long delay in getting decisions from the Board be significantly reduced. As a practical matter this long delay means that patent protection is not available for many products with short commercial lives.

[Malcolm Mooney]

"As a practical matter this long delay means that patent protection is not available for many products with short commercial lives."

As a practical matter, it shouldn't make any difference if a product with a short commercial life is patented or not.

[jk]

"As a practical matter, it shouldn't make any difference if a product with a short commercial life is patented or not."

MM, define "short commercial life" please. It is 1 year, 5 year, or 10 years.

Your comment is meaningless unless we know what is "short commercial life".

The same goes to the debate over "Business Method Patent", It is meanless to debate over it if we even do not know what it is.

[curious]

I keep forgetting that patent are only for drugs; patents are only for drugs.

[Malcolm Mooney]

CNN right now: "Some of the security officials at Sunday's Super Bowl will be scrutinizing the body language and demeanor of fans as part of the effort to spot suspicious and possibly dangerous people in the crowd. The TSA says it will have several teams of behavior-detection officers working with local police in Tampa, Florida, as an added security measure for the game"

I wonder if those methods are patented. If not, someone should file right away. And the method could surely be improved if it was carried out with the aid of a POWERFUL COMPUTER BRAIN.

[death to business methods]

>

That's what you get for claiming a "system" when the statute doesn't define any statutory-eligible class as a "system" - - deal with it, or stop being wishy-washy with your preamble language and clearly define what the hell it is you're intending to claim - - a method/process or apparatus.

[snake]

The decisions coming out of the BPAI are all over the place "a label referencer" and an "inferencer" are not structure because they are not recognized in the art....WHAT!?! The claims are read in view of the specification and the Applicant is permitted to be their own lexicographer. WOW

As for the incessant posting about Beauregard claims being dead, not really, depends on the panel, see the Bo Li decision. Other Board decisions seem to go the other way, but those seem to be based on preemption (although never clearly explained). Also, Lowry and Warmerdam cannot be overruled at the BPAI.

The complete lack of consistentcy and cogent reasoning in these decisions is appalling.

[NIght Writer Patent Attorney]

What is being transformed is the representation of information. Information cannot be transformed without energy and space.

Therefore, the Bilski test is satisfied. That is the argument that should go to the Supremes.

Did you know that Deener got a patent for a process of refining wheat when it was physical steps? It was merely steps that any old human could have done, but a patent was issued!! And in fact, they give all these patents for methods that any old human body could do. Outrageous!

Mental step? Moore reads a claim and then thinks, but I understand that. My brain could do that. The idea Judge Moore is to build a machine to do that. Hopefully, one day--I am sure it will only happen if we continue to encourage software patents--we can replace Judge Moore with a machine. The machine would be performing only mere mental steps.

The idea you see is to patent machines and allow the method of the machine because otherwise work arounds are too easy. It is that simple.

A good definition of a business method--I think--is a method that isn't for protecting a machine and is performing information transformations for people to practice. I think there is a good analogy between business method patents and patents to people performing physical act, e.g. a golf swing.

My guess: Supremes grant cert to Bilski. It would better if this were to wait for a couple of new appointments from Obama. The oldest member of the court is 101 challenged.

[Malcolm Mooney]

Re "short commercial life" : if the commercial life of your product is so short that having to appeal your claims means that your patent will be worthless when the claims issue, then you shouldn't have filed an application in the first place.

Ever.

You are wasting your money.

Of course, you could just file narrow claims drawn very specifically to your product, but then nobody seems to ever want to do that for some reason.

[Malcolm Mooney]

snake "The claims are read in view of the specification and the Applicant is permitted to be their own lexicographer"

So what was the express definition given to "inferencer" in the specification?

[Malcolm Mooney]

NWPA "Moore reads a claim and then thinks, but I understand that."

You don't know what she's thinking. She could be thinking about how to maximize profits from her hedge funds, or what movies to recommend to her friends. Get it?

"I think there is a good analogy between business method patents and patents to people performing physical act, e.g. a golf swing."

Why don't you patent your method of creating analogies and persuading people with them?

Now watch this drive.

[AJ]

Pg. 4 1st par. of the decision the BPAI cited Wikipedia as evidence. So wiki is valid source of information now in legal matters in front of the PTO?!

[6]

"The decisions coming out of the BPAI are all over the place "a label referencer" and an "inferencer" are not structure because they are not recognized in the art....WHAT!?!"

F o r t h e l a s t t i m e. I t w a s n o t a " p a r t i c u l a r s t r u c t u r e".

[123]

I agree with Snake, the BPAI is now making up reasons to reject under Bilski. If "label referencer" and "inferencer" aren't particular structure, then what is? What sort of language is particular enough?

Ideally, method claims shouldn't require any structure at all - that's why they're called method claims and not apparatus claims.

Examiners refuse to consider functional language in apparatus claims, method claims aren't statutory subject matter unless they include "particular structure" (whatever that is)...I have no idea what the overall direction is for claim drafting. I suspect there isn't one - its just becoming a hodgepodge of incoherent rules.

[Argues with MM]

Further proof MM does not understand even the basic economics of patenting:

"Of course, you could just file narrow claims drawn very specifically to your product, but then nobody seems to ever want to do that for some reason."

[birth, school, work, death]

I also don't know HTF I am to compose claims. Someone made an excellent suggestion recently that the BPAI should be physically located far from the PTO. I agree. How about Wasilla Alaska?

[Babel Boy]

That's what you get for claiming a "system" when the statute doesn't define any statutory-eligible class as a "system" - Death to BMs

Death, I don't think you get it. One does not have to identify the statutory class. That is well settled law. Claiming a system is well settled, too.

I can claim "a vehicle comprising:..." I don't have to allege in the claim or spec that the vehicle is a machine or other statutory class.

The problem is that the law was written 200 years ago and the courts have had to expand it to accommodate progress that was unforeseen by the drafter. Phone, computer, and radar systems probably weren't foreseen by the drafters of 101. Same with the Constitution. I think it was Brennan, J that referred to the Constitution as "living," suggesting it grows. Of course, Thomas, J and Scalia, J think of the Constitution as dead -- a stone tablet with commands chiseled into it.

[off-topic]

NWPA, back in the 70's or maybe the 80's it was still funny to call the Supreme Court "The Supremes." Now just let it go.

[Malcolm Mooney]

"So wiki is valid source of information now in legal matters in front of the PTO?!"

No reason why it shouldn't be. Wiki is no less accurate than any other reference, particularly if that reference is older than the wiki page.

Of course, it's obvious why a someone prosecuting in the computer or software fields would want to avoid references to wikipedia.

[fing with 6's constitution is no small matter]

" I think it was Brennan, J that referred to the Constitution as "living," suggesting it grows. Of course, Thomas, J and Scalia, J think of the Constitution as dead -- a stone tablet with commands chiseled into it."

This is only one of the smaller reasons why Scalia is a better man than you will ever be. Even while he suffers the handicap of enormous weight which is even more embarrassing to you.

Interpretloling the constitution to make it say things it does not say should be punishable by death. Especially for SC justices who should dmn well know better. In this country it is the apex of "treason". If you want it to say something it does not say then you dmn well better lobby congress.

[Malcolm Mooney]

"This is only one of the smaller reasons why Scalia is a better man than you will ever be. Even while he suffers the handicap of enormous weight which is even more embarrassing to you."

Comment of the Year candidate.

[West Coast Guy]

The use of Wikipedia is wrong. Because it may be edited by anyone, such content would not be admissible in a court because it is not reliable of its face. Furthermore, it is hearsay, i.e., "an out of court statement offered to prove the truth of the matter asserted."

See http://en.wikipedia.org/wiki/Evidence_(law)#Hearsay

No adjudicator -- whether it be a administrative agency or court of law -- should use hearsay as support for its opinion. Not one.

Wikipedia is hearsay. The use of Wikipedia by the administrative judges is flat out wrong as it is improper. Period.

They have set a bad precedent, and it needs to be rectified.

[New Light]

Interesting irony that the two patents that the examiner used in his 103 rejection:

Abir US 6,738,827 B1 May 18, 2004
Feinberg US 6,944,820 B2 Sep. 13, 2005

both fail the test as applied by the Board.

Re-exam anyone?

[West Coast Guy]

Is this the holding of Ex parte Atkins:

a claim of a mere conversion of data does not a Bilski transformation make?

[SF]

Anybody can write a patent application. (Can I get a witness??) Once published, patent applications are fully citable by the USPTO.

Published patent applications are as much "hearsay" as wikipedia.

The teachings of the prior art in all publications are viable evidence because the 102/103 statutes permits one to consider publications.

[6]

"The use of written publications is wrong. Because they may be written by anyone, such content would not be admissible in a court because it is not reliable of its face. Furthermore, they are hearsay, i.e., "an out of court statement offered to prove the truth of the matter asserted.""

Why, I think you're on to something. No more art rejections WOOO HOOO!

Geniuses up in here today.

[6]

Sorry this post got delayed by network traffic.

"Death, I don't think you get it. One does not have to identify the statutory class. That is well settled law. Claiming a system is well settled, too."

Also, you blatantly don't get it. Nobody said you had to recite the stat class. Someone said that if you don't then don't be surprised when your claim dies in some weird ways. And they are right to say it.

Oh, and hey, I'm sorry about all the claims you've drafted that are about to die. You should do the gladiator salute.

http://www.youtube.com/watch?v=2sQ27R4rICI&feature=related

[West Coast Guy]

"Published patent applications are as much "hearsay" as wikipedia."

Published patent applications and written publications are "self-authenticating" and admissible. Under the FRE, they are treated as either an exception to the hearsay rule or are not considered hearsay.

http://en.wikipedia.org/wiki/Self-authenticating_document

Because of the self-authenticating nature of prior art, I have no problem with the use of judges or their taking judicial notice of them.

Wikipedia, on the other hand, is not self-authenticating. It may be edited by anyone. Hence, it is not reliable as self-authenticated documents such as patent applications, texts, magazine articles, etc....

[West Coast Guy]

6,

"The use of [written publications] is wrong."

Nice try, geniuse, but my comment is not as you have quoted. My quote: "The use of Wikipedia is wrong."

Wikipedia does not fall under the category of a self-authenticating document.

http://en.wikipedia.org/wiki/Self-authenticating_document

6, how familiar are you with the rules of evidence under the FRE?

[Malcolm Mooney]

"Because it may be edited by anyone, such content would not be admissible in a court because it is not reliable of its face. "

Sorry, that makes no sense. Is wiki unreliable?

Prove that wiki is less reliable than any other encyclopedia. News flash: "anyone" may publish a "learned treatise" as well.

There is a world of difference between an online encyclopedia that "may" be edited by anyone, and an utterance or observation made by some out of court declarant.

Maybe you were thinking of Conservapedia. In that case, everyone would agree that it's a collection of disgusting lies that has no place in civilized discourse.

[Anonymuss]

The BPAI just administratively remanded three cases for 101 examination: Ex parte Sharma, Bhogal, and Ahmed.

http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20090749-01-30-2009-1

http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20090632-01-30-2009-1

http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20086308-01-30-2009-1

So this means...the Examiner should reject all claims under 101 on the FAOM?

6 - you know what is going on?

[West Coast Guy]

Malcolm,

"Prove that wiki is less reliable than any other encyclopedia."

I do not have to because that is not the issue.

What the BPAI has essentially done is take judicial notice of Wikipedia.

http://en.wikipedia.org/wiki/Judicial_notice

Assuming the quote of FRE 201(b) is correct, then:

"FRE 201(b)) permit judges to take judicial notice of two categories of facts:

Those that are "generally known within the territorial jurisdiction of the trial court" (e.g. locations of streets within the court's jurisdiction) or

Those that are "capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned" (e.g. the day of the week on a certain date)."

Because it is subject to editing by anyone at any time, the "accuracy" of Wikipedia as a source CAN BE reasonably questioned. As such, a court or administrative adjudicative body should refrain from citing to or taking judicial notice of Wikipedia as it is hearsay and not self-authenticating.

[SF]

Does anyone else find it amusing that West Coast Guy is citing wikipedia, which he says is unreliable?

[West Coast Guy]

Malcolm,

""anyone" may publish a "learned treatise" as well."

Then, such source CAN BE reasonably questioned and the BPAI should refrain from citing to it and/or taking judicial notice of it.

"There is a world of difference between an online encyclopedia that "may" be edited by anyone, and an utterance or observation made by some out of court declarant."

Well, eh, ...no, there is not. An editing is nothing more that a written utterance by the out of court declarant.

[West Coast Guy]

SF,

"Does anyone else find it amusing that West Coast Guy is citing wikipedia, which he says is unreliable?"

I use it all the time for background material, keeping in mind that it is still unreliable for the purposes of introducing it in court. I would be laughed out of court if I cited it in a brief, used it in a declaration, or cite to it in a legal opinion as a judge.

[6]

"6, how familiar are you with the rules of evidence under the FRE?"

I've perused them before. And I see no reason why a wiki is an exception to your exception. As I have told you already, you may review when changes were made at any time. The page at the time of filing is no different than any other webpage all across the web. If you're about to tell me that published webpages are not considered standard publications and are thus not admissible also then I call you out on being misinformed. And I will simply leave it as an exercise to you to figure out why.

"What the BPAI has essentially done is take judicial notice of Wikipedia."

Would it calm you if they did as they normally do and give whatever definition they personally feel like making up? Probably not.

"Does anyone else find it amusing that West Coast Guy is citing wikipedia, which he says is unreliable?"

Yes, yes I did. Very. I am consoled however by the knowledge that he won't dare to make such a ridiculous argument in public. At least I hope, for his sake.

He also feels like the BPAI was precedential with the use of the wiki in this case. I got a small kick out of that one as well. He is woefully under read lately I'm assuming.

"6 - you know what is going on?"

It is pretty blatant what is going on. The BPAI told the admin guys to start kicking back method cases so that they don't have to 101 all of them themselves. I don't know if they trained the admin guy to only kick back really suspect ones or not. We'll see.

[SF]

"I use it all the time for background material"

Why? Don't you know that ANYONE can edit it? LOL

The issue I have is that the Board is citing a January 2009 publication (wikipedia), which is not a publication at the time the invention was made and thus can hardly be considered relevant to the meaning of a term at the time the invention was made. I'd appeal on that basis.

The USPTO gets to consider all sorts of statements made in patent applications, which are hearsay, because it's just too f-ing time consuming to allow testimony for each patent application. They also get to consider all the hearsay they want in declarations too, even though the declarants are very much available. Get over it.

[West Coast Guy]

SF,

I have no problem of examiners using Wikipedia during prosecution. The give and take between the applicant and examiner can flesh out the reliability and trace the previous edits.

The problem I have is a court (or adjudicative body) taking judicial notice of Wikipedia and citing it for support of the court's or body's opinion. I would raise it as an error of law on appeal.

"The issue I have is that the Board is citing a January 2009 publication (wikipedia), which is not a publication at the time the invention was made and thus can hardly be considered relevant to the meaning of a term at the time the invention was made. I'd appeal on that basis."

I agree and would assign it as another error on appeal.

[Choose Disco]

"I've perused them before. And I see no reason why a wiki is an exception to your exception. As I have told you already, you may review when changes were made at any time."

A learned treatise must be sufficiently authoritiative in its field to be admissible as evidence in a court. Generally, an expert witness (professors, experts, etc.) must state that he relies on such a learned treatise. Hard core researchers don't rely on Wikipedia because its almost completely out of date for their work.

Using wikipedia for proving the truth is evidence of the BPAI's sloth. If it is so well known, then would it be so much more difficult to cite a technical journal or book by IEEE? I can accept that I may be wrong, but if you want to be convincing, use the best evidence you can find. On the flip side, when I want to convince the Examiner that his interpretation is egregious, I cite to the IEEE 100 and not wikipedia.

[6]

"Then, such source CAN BE reasonably questioned and the BPAI should refrain from citing to it and/or taking judicial notice of it."

Ok, so now all NPL academic publications are subject to hearsay review. Guys, just let WCG go figure this one out on his own. He's a big boy. Have fun WCG.

[West Coast Guy]

6,

"Ok, so now all NPL academic publications are subject to hearsay review. Guys, just let WCG go figure this one out on his own. He's a big boy. Have fun WCG."

No, not at all. I would consider them as self-authenticting:

http://en.wikipedia.org/wiki/Self-authenticating_document

(Oops, there I go again citing Wikipedia again for the sake of blog discussion. LOL, 6).

Also, please take note of my previous comment to SF saying that "I have no problem of examiners using Wikipedia during prosecution. The give and take between the applicant and examiner can flesh out the reliability and trace the previous edits."

It is simply wrong for a court or BPAI to take judicial notice sua sponte of Wikipedia. A party raising this issue on appeal should easily prevail while simultaneously affording the CAFC an opportunity to slap the BPAI for the gross and improper usage of a source that CAN BE reasonably questioned.

[West Coast Guy]

6, SF, and Malcolm,

Here are some links in which the courts have shot down the use of Wikipedia for judicial notice:

http://government.zdnet.com/?p=4182

http://arstechnica.com/tech-policy/news/2008/09/appeals-court-smacks-down-judge-for-relying-on-wikipedia.ars

http://law.marquette.edu/facultyblog/2008/11/24/court-holds-that-wikipedia-entries-are-inherently-unreliable/

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1272437

Best of luck to Atkins on his appeal.

[NIght Writer Patent Attorney]

West Coast Guy:
>>Is this the holding of Ex parte Atkins:
>>a claim of a mere conversion of data does not >>a Bilski transformation make?

That is what I think the holding is. They do seem to be aimed at all software patents.

[Babel Boy]

When I first raised this Wiki issue days ago, I pointed out that Ted Kennedy and Robt. Byrd both had their Wiki entries modified by anonymous hooligans to read the senators are dead.

Here's a clip from WaPO Jan20.09 quoting the false entry for Kennedy.

"Edward Moore 'Ted' Kennedy (born February 22, 1932- January 20, 2009) was the senior United States Senator from Massachusetts," began the erroneous entry, a version of which can be seen here. It went on to report, "Kennedy suffered a seizure at a luncheon following the Barack Obama Presidential inauguration on January 20, 2009. He was removed in a wheelchair, and died shortly after."

Even Wiki admits that it is unreliable -- WaPo continuing...

"As Wikipedia itself acknowledges, "Allowing anyone to edit Wikipedia means that it is more easily vandalized or susceptible to unchecked information, which requires removal." In one well-publicized case, the Wikipedia biography of journalist John Seigenthaler was edited to suggest he was complicit in the assassinations of both John F. Kennedy and Robert Kennedy. While Kennedy and Byrd's entries were fixed within minutes, Seigenthaler's was wrong for months."

If you need any more evidence than that of the unreliability and inadmissibility of Wiki, you are brain dead.

A text reference has a known author that cannot be altered after it is published and has a fixed reference date of publication. Wiki is just an amorphous glob of blog-goo.

Anyone who would seriously argue that Wiki is an authoritative reference sufficient for denying one his patent rights is working at a grade-school level understanding of legal procedure.

[6]

Show us one from the CAFC. Then I'll show you one where the CAFC itself uses a wiki to define something. Sorry WCG, just because some ol' time religion courts have held your view doesn't mean all of them will. Those guys will come around soon enough. Two years max.

[6]

"A text reference has a known author that cannot be altered after it is published and has a fixed reference date of publication. Wiki is just an amorphous glob of blog-goo. "

So all those dated anon publications on IBM's site are now inadmissible? No author :(

Since you went through all that trouble I'll tell you one last time: you can check the date of any given wiki page anytime you like.

Waste your apps money all you like. Be sure to post serials so I can have some lulz at your additional expense. I'm already having them on your dime right now as a matter of fact.

[6]

On a totally OT topic, why does cable TV suck so much? It has OVER 100 CHANNELS.

[West Coast Guy]

6,

"Show us one from the CAFC. Then I'll show you one where the CAFC itself uses a wiki to define something. Sorry WCG, just because some ol' time religion courts have held your view doesn't mean all of them will. Those guys will come around soon enough. Two years max."

Do you have access to a case law database to the CAFC so that you could query for the term "wikipedia"? If so, please provide us with the appeal numbers. Sorry, I'm a solo practitioner without the luxury of having a case law database affordably accesible.

If not you, any takers? Law students? Law professors? Anybody else on whom Westlaw slathers free accessibility?

[Babel Boy]

West CG

I find only one case, an open-source copyright case. Jacobsen v. Katzer, 535 F.3d 1373 (Fed. Cir., 2008)

The CAFC does not cite a Wiki article, but rather it cites an amicus brief filed by the Wiki Foundation:

"The Wikimedia Foundation, another of the amici curiae, estimates that the Wikipedia website has more than 75,000 active contributors working on some 9,000,000 articles in more than 250 languages."

It is at least reassuring to know that the CAFC has not yet stooped to the sloth of the BPAI and examiners such as IQ=6 in denying patent rights to applicants because it's easier for them to key in a search term on Wiki than get off their buttts and find a proper reference.

[West Coast Guy]

Babel Boy,

Thx.

[6]

badda bing

http://www.altlaw.org/v1/search/advanced

http://www.altlaw.org/v1/search/boolean?q=%22wikipedia%22~5+court%3A(%22Fed.+Circuit%22)+

[6]

Don't worry, I'm a patient man we can wait for the day the CAFC sees this. BPAI is throwing it around left and right. Certainly one app has too much money on his hands.

[West Coast Guy]

6,

Thx for the Alt Law resource.

[Nurse Ratched]

Mooney must have forgotten his Ritalin again. I always know, because he goes and gets metal rods stuck in the strangest places. We can't seem to kick the smile off of his face thereafter.

[NIght Writer Patent Attorney]

Judge Rich wrote, “We have observed with regret that the briefs filed by the Solicitor General for Acting Commissioner Parker in Parker v. Flook, … badly, and with a seeming sense of purpose, confuse the statutory-categories requirement of § 101 … “ In re Bergy 596 F.2d 952, 962 (CCPA 1979).

[NIght Writer Patent Attorney]

The argument that the functional claims in claim 9 are too broad and thus not enabled is contradicted by the following very well known case.

In re Tarczy-Hornoch, 397 F.2d 856 (CCPA 1968). Judge Rich argues that it does not make sense to not be able to claim the function of a single machine when one can claim a process as a process is just the function of multiple machines.

[NIght Writer Patent Attorney]

“That a process may be patentable, irrespective of the particular form of the instrumentalities used cannot be disputed. If one of the steps of a process be that a certain substance is to be reduced to a powder, it may not be at all material what instrument or machinery is used to effect that object, whether a hammer, a pestle and mortar or a mill. Either may be pointed out; but if the patent is not confined to that particular tool or machine, the general process being the same. A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suitable to perform the process may or may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain things be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence.” Cochrane v. Deener, 94 U.S. 780, 785-6 (1876).

Information takes space and energy to transform. A sort transforms the information as is clear from the fact that patents were issued to card sorting machines. Why should we say that a sort on data in a computer memory is not transformative, but that a sort of cards is transformative?

[BM Examiner]

When I reviewed the system claims, the "structure" appears to be just software. These should have been rejected under 101 because the claims were directed toward "software per se."

[NIght Writer Patent Attorney]

“Assault on the Citadel: Judge Rich and Computer-related Inventions” Odd, Samuael, A., Assault on the Citadel: Judge Rich and Computer-related Inventions, (Houston Law Review 2002). This paper equates Benson to Winterbottom and the battle to allow computer-related inventions analogous to the assault on privity.

You can use this article as a blueprint for the case law that is being reversed by the PTO and the Fed. Cir.

[6]

You know its polite to actually post a link.

http://www.houstonlawreview.org/archive/downloads/39-4_pdf/oddi.pdf

[bsn]

I know of a case where the applicant wanted to argue that 'X' was a recognised term of art. The applicant amended the relevant Wikipedia entry, and then pointed the examiner to it. "See? It's a term of art! It's in Wikipedia".

The application was accepted.

[Confused]

I do not understand why transforming electrons in a computer is different from transforming a traditional apparatus.

The only reason I can come up with is that it makes the test meaningless because under this interpretation everything would pass the test. The problem with that though is that the line seems to be being drawn completely arbitrarily.

[2600examiner]

"I know of a case where the applicant wanted to argue that 'X' was a recognised term of art. The applicant amended the relevant Wikipedia entry, and then pointed the examiner to it. "See? It's a term of art! It's in Wikipedia".

The application was accepted."
------------------------------
I estimate that there is a 7000% chance that that is inequitable conduct.

[Night Writer Patent Attorney]

------------------------------
I estimate that there is a 7000% chance that that is inequitable conduct.

Posted by: 2600examiner | Feb 01, 2009 at 11:58 PM

Actually, not. If he believed what he wrote in wiki was true and he didn't misrepresent that he wrote it (does not mean he had to disclose that he wrote it), then it was not inequitable conduct.

Imasge if an expert told you to look in his treatise. Is that inequitable conduct? That is the problem with using wiki.

[BigGuy]

"... does not mean he had to disclose that he wrote it ...."

Are you serious?

[snake]

New Light,

You can't request re-exam for 101 issues.

MM, as for the "express" definition of inferencer, there is no requirement under US law for "express definitions." As long as one of skill in the art would understand what was meant in the app.

Finally, the fact that the board is including wikipedia references in an opinion is very troubling to say the least.

[MaxDrei]

I'm not following this. On mainland Europe, if it was written before the priority date of the claim, then it isn't hindsight-tainted, and therefore deserves weight. But, if it (eg an Affidavit, or a Google page) was written after the date of the claim, then we will take it with such a large dose of salt that it is, to all intents and purposes, probatively useless for telling us anything that we can rely on, about the state of the art prior to the date of the claim.

[Night Writer Patent Attorney]

>>"... does not mean he had to disclose that he >>wrote it ...."
>Are you serious?
>Posted by: BigGuy | Feb 02, 2009 at 10:12 AM

Well, you can't be sure in this witch-hunting era we live in, but I don't see why it would be. Imagine if I wrote a chapter of a book and was prosecuting a patent application, would I have to point out to the examiner that I was the author of that book? I don't see why I would.

Does the examiner make an inquiry into who wrote the wiki article before making a decision or does the examiner use the wiki article based on it being from wiki? The problem is that the examiner shouldn't be using wiki.

[New Light]

snake,

I believe that you are mistaken - re-exam exists for any question of patentability including 101.

In re Swanson is key.

You may be thinking of:
(B) Prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103;

However, the key parts involved are

(C) A substantial new question of patentability must be present for reexamination to be ordered;
(35 U.S.C. 303(a)) "...with or without consideration of other patents or printed publications."

and

(A) Anyone can request reexamination at any time during the period of enforceability of the patent;

Clearly, with the Law being rewritten regarding section 101, a substantial question of patentability is present. Thus, combined with the In re Swanson doctrine, ANY prior art serves as a proxy to reexamination for almost ALL patents in the computer realm. Any art of record will do, especially since it is inconceivable that the Office has applied the art in the Bilski sledgehammer mode.

Or to use another analogy, the china shop door is opened by the key of any art (In re Swanson). Once the door is open, the Bull of In re Bilski is let loose.

At this rate, nothing survives in the china shop.

[Night Writer Patent Attorney]

>> was written after the date of the claim, then >>we will take it with such a large dose of salt >>that it is, to all intents and purposes, >>probatively useless for telling us anything that

But, you see, here in the U.S.A. what the examiners do ---just read the posts on this blog--is figure out what the invention is and then think backwards of what they could combine to make it and then generate arguments why it would be obvious. They have not been trained to understand hindsight and even trying to discuss it with them ---just read this blog--is impossible.

So, you get an an unintended result of this hindsight driven practice of the examiners also not understanding not to use current resources, but to use resources contemperaneous with the invention. It is just ridiculous.

Just read this blog and outline the thought process that examiners use to argue that something is obvious.

[Magic Words]

In re Warmerdam 3 F.3d 1354, 31 USPQ2d 1754 (Fed. Cir. 1994).

Claim 5. A machine having a memory which contains data representing a bubble hierarchy generated by the method of any of Claims 1 through 4.

As stated by the Federal Circuit, "[c]laim 5 is for a machine, and is clearly patentable subject matter."

FN5 reads "This notion is sometimes phrased in terms of requiring a transformation or reduction of ‘subject matter.’ In Schrader, we determined that the phrase ‘subject matter’ is not limited to tangible articles or objects, but includes intangible subject matter, such as data or signals, representative of or constituting physical activity or objects. Id. at 295, 30 USPQ2d at 1459 n.12."

[Babel Boy]

Max

Aren't you scrambling prior art references with references such as dictionaries used to define the terms of the spec/claims and, hence, the scope.

I would be shocked if EPO has a cut-off date on the publication dates of dictionaries that can be used to define terms.

If my application is filed in 2007 and not examined until 2009, isn't a dictionary published in 2008 still a good reference for defining terms?

[MaxDrei]

Night, yes I do see the problem. But when the courts elevate "secondary factors" to the level that it decides cases, how can you blame junior Examiners for not understanding the problem of hindsight bias. When the EPO started up, in 1978, with Examiners arriving from all over Europe, each from a different national patent Office, management needed an approach to obviousness that would be fair to Applicants, and would immediately deliver consistent results, regardless who was examining any particular application. The members of the Boards of Appeal, while waiting for the first appeal cases to come through, worked out the EPO Problem and Solution Approach (the best invention in the history of patent law) which excludes hindsight inherently. Shame nobody outside EPO circles, (and not even all within them), bothers to try to understand EPO-PSA, because it is ideal for imposing discipline on unruly, young and headstrong, over-confident and under-trained USPTO Examiners, and prevents them using hindsight. For the life of me, I don't understand why EPO-PSA isn't by now universal. It's unassailable at the EPO, and nobody there complains about it, neither the Applicant/Owner, nor the Opponent.