David Kappos: Next USPTO Director

Congratulations!

The White House has announced its intent to nominate David J. Kappos as Director of the United States Patent and Trademark Office (USPTO) with the official title of Under Secretary of Commerce for Intellectual Property. Mr. Kappos has spent his entire career with IBM – both as an electrical engineer and later as a patent attorney. Kappos ends his IBM career (at least for now) as Vice President and Assistant General Counsel, Intellectual Property Law. He is a board member of both AIPLA and IPO.

From the get-go, Mr. Kappos has been a rumored frontrunner to replace Director Jon Dudas and Interim Director John Doll.  In a May 2009 article, I announced my support for Mr. Kappos. In that article, I noted the value of having “a patent office director who understands patents and who has been fully involved with all aspects of the patent system for the past twenty years. I believe that Kappos will be a careful shepherd of the system - leaving it better off in six years than it is today.”

As someone who writes daily about US Patent Law, I am excited about the Kappos nomination because he is likely to open access to previously hidden data and information.  He will also work to create systems that work and measures that are meaningful.

I suspect that the biggest challenge for Mr. Kappos will be moving beyond the unique IBM perspective. Big Blue is an atypical patent owner in its internal systems, patenting volume, and licensing power. As I discussed earlier, it will be important for him to spend time understanding how the rest of the patent community operates.

Notes:

• White House Announcement
• Leahy Statement: “The USPTO faces serious challenges in this difficult economic environment, and the office requires strong leadership.  David Kappos is such a leader.  I look forward to working with him on issues confronting the USPTO, including reducing the backlog and pendency of patent applications and modernizing the patent system as Congress considers the Patent Reform Act.”
• EETimes Article: Quoting Mark Lemley: "The PTO is in crisis, and I think Dave Kappos understands that, and will work creatively to try to find ways out of the crisis, I also think he is sensitive to the need for patent reform, which is a good thing."
• March 2009 Testimony of Kappos
• IP Law Insights (Perkins Coie Blog) summarizes an earlier Kappos article: (1) Patent applicants are responsible for the quality and clarity of their patent applications. (2) Patent applications should be available for public examination. (3) Patent ownership should be transparent and easily discernable. (4) Pure business methods without technical merit should not be patentable.
• Patent Prospector on Kappos and the recent poorly researched WSJ Article.
• From the USPTO Website: “If he is confirmed by the U.S. Senate, Kappos will take control of an office that provides incentives to encourage technological advancement and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace. The office continues to deal with a patent application backlog of more than 770,000, long waiting periods for patent review, information technology systems that are regarded as outdated and an application process in need of reform.”

Comments

[Where is that moon-faced monkey?]

Who wants to place a bet on whether the USPTO will be going aggressively after software-related applications and Beauregard claims under 35 USC 101 after Kappos is confirmed?

[anon]

I guess we can all expect the IBM patent train to continue full speed ahead - - choo!! choo!!

[Michael Valentine Smith]

At least he has some real experience at prosecuting patents, though he probably will need to come up to speed on the many internal problems at the PTO.

Personally, I still think Q. Todd would have been preferable, but Kappos definitely appears to be a big improvement of the JDs we have had running things the last few years, as well as Rogan & Lehman variously before them.

Let us hope that he has some good, new ideas as to how to seriously improve the patenting system for all: examiners, attorneys, and both big AND small entity applicants and can forget a little about where he comes from & their perspective about the patent system. I am hopeful & wishing him success.

MVS

[Malcolm Mooney]

"Who wants to place a bet on whether the USPTO will be going aggressively after software-related applications and Beauregard claims under 35 USC 101 after Kappos is confirmed?"

--Kappot: Pure business methods without technical merit should not be patentable. ----

That is the loose thread that will unravel the software patent troll's hideous sweater.

[West Coast Guy]

Wasn't IBM behind the infamous restroom reservation method?

[Where is that moon-faced monkey?]

"That is the loose thread that will unravel the software patent troll's hideous sweater."

Not very perceptive? Kappos stated

pure

business methods should not be patentable. You should have read IBM's brief to the Federal Circuit in Bilski. Software is not a pure business method.

[Bilski rocks]

"Wasn't IBM behind the infamous restroom reservation method?"

It was tied to a specific machine -- an airplane. A-OK under Bilski.

[dms]

We should all feel very fortunate with this selection as he is a smart, tireless worker who understands the needs of patentees. He will upgrade our PTO and patent system, no doubt.

[Malcolm Mooney]

"You should have read IBM's brief to the Federal Circuit in Bilski. Software is not a pure business method."

No, but pure business methods claimed as software are pure business methods. And Kappos won't be able to do anything to save Beauregard claims.

[Interloper]

Does anyone have a feel for where Kappas stands on the continuation rules and related issues?

[MaxDrei]

I see attributed to Mr Kappos the words:

"Pure business methods without technical merit should not be patentable."

and immediately think:

That's the settled European jurisprudence.

I read some of the recent comment on Bilski, to the effect that the USPTO is harder on 101 than Europe is, and I think:

Just as those polar opposites the UK (think: peripheral claiming) and Germany (think: central claiming ie claim the best mode) have by now come to have the same view of Article 69 EPC "scope of protection" of any claim of any European patent, I expect to see Europe and the USA now to move to a common sense shared view on the patentability of business methods, software and Beauregard claims. Is that a good thing? For IBM I would guess yes and, what's good for IBM is good for America, no?

BTW, who can tell me about Clarence Saunders? I read that he invented the supermarket in 1916, and patented that novel and innovative method of doing retail business. Did that have "technical merit"? I wonder what his main claim recited, and whether Mr Kappos would allow it tomorrow.

[A plurality of thresholding units]

Personally, I was rooting for Dickinson. The PTO needs someone who understands the plight of examiners and who is willing to offer more than mere platitudes to fend off complaints about production requirements being unreasonable (particularly during the first two years of service). Doll and Focarino are unwilling to make any serious moves to initiate production reform, and while Dickinson has in the past quoted the price tag for increasing hours-per-production-unit, he at least has made moves during his earlier tenure to try to increase retention.

Hopefully, Kappos will be open-minded enough to see that the production system is currently flawed and is pushing out people who could make a career at the PTO if they didn't burn out within the first two years.

[Mark Nowotarski]

"IBM strongly supports the concept of limits on continuation applications." http://bit.ly/IVcrY

[Who does patent reform benefit primarily?]

Read Kappos testimony on patent reform and tell me whether his stated position was not just a way for IBM to reduce litigation costs? How do the changes that he suggests benefit U.S. citizens and companies more than they benefit foreign entities and how does the patent reform act address the globalized world we find ourselves in as opposed to just reducing litigation costs for major multinational companies, both foreign and domestic?

[Erez Gur]

Max:
You can look Saunders up in Wikipedia and read his US patent 1242872, or I can send it to you.

Saunders claimed an apparatus and a store, no method

[Leopold Bloom]

"Read Kappos testimony on patent reform and tell me whether his stated position was not just a way for IBM to reduce litigation costs?"

Uh - Didn't Kappos work for IBM at the time? Are you suggesting that he should have advocated reforms that would actually hurt IBM?

One would think that lawyers of all people would understand the distinction between lawyer and client...

[Gideon Pope for a Month]

Heard a story once about IBM - they call up the smaller software/computer company and request a meeting to discuss the smaller company's concern that IBM is infringing.

At the meeting, small company takes out its shiny, ribbon copy and notes that one of IBM's products appears to be infringing one or more of its claims.

IBM's in-house then takes out a stack of about 150 patents and notes that, after thorough review, it appears that the small company has products that may be infringing various claims in the 150 patents. Would you like to cross-license on your single patent?

True story.

The first shop at which I worked did IBM work - it was considered bottom-of-the-barrel work because, at the time, IBM paid a flat fee of something like 2500 to prepare and file a patent application.

It's equivalent to the natural range of animal fecundity.

Some companies invest lots of time and money into one or a few patents that have a lot of value.

IBM is on the other end - they pop out millions of tadpoles and hope a few make it.

[Mark Nowotarski]

"Peer-to-Patent is just absolutely spot-on" David Kappos' (next USPTO Dir) view on social network review of patents http://bit.ly/1D6plf

[MaxDrei]

Seriously, are there really people (eg w d p r benefit) out there who think the goal of patent reform should be to make patent litigation more expensive, in order to "address the globalised world" and to re-balance the system against Big Corp? I think I may have misunderstood the contribution at 07.14 am. Have I?

And thanks Erez Gur.

[Public Searcher DIP]

He worked for Big Blue, so of course he espoused views that benefited them. That was his job. In a few weeks he will be working for us and we hopefully will learn if that unearths new views...

I just hope that someone at the top applies some new ideas to the PTO IT infrastructure. Maybe infringe a few of those patentented hardware/software systems and integrate PAIR and Maintenance data with the other weekly provided information. We need search engines/tools to be capable of providing current amended claims, application status, and other useful information more easily. This is particularly important for all those 18 month publications that are supposed to put us on notice of something, but read as rough drafts instead.

[Baltazar]

I do not believe Mr. Kappos is the right choice or even a good choice.

[Mark Nowotarski]

"I just hope that someone at the top applies some new ideas to the PTO IT infrastructure."

I would add that I hope their are opportunities to help the USPTO make those changes so that they focus on "promoting the useful arts".

[Who does patent reform benefit primarily?]

MaxDrei and Leopold Bloom:

With due respect your points are well taken and understood, but neither of you answered my questions:

(1) How do the changes that Kappos suggested benefit U.S. citizens and companies more than they benefit foreign entities?

(2) How does the patent reform act address the globalized world we find ourselves in as opposed to just reducing litigation costs for major multinational companies, both foreign and domestic?

Regards

[Jules]

This post is so much more clear than the last one, and Kappos now appears to be a reasonably good choice. Especially when I read the March '09 testimony, it is very convinving, and the views are very realistic. I just hope he does focus change on the production system moreso than patent reform, otherwise quality will not change and the same old views will persist. Now that he's shooed in he has my full support.

[Mark Nowotarski]

"I do not believe Mr. Kappos is the right choice or even a good choice."

As long as there is a strong steady wind, a good sailor can get to where he/she needs to go. The direction of the wind is secondary.

[whiskey]

A middle ground between peer-to-patent and the current system would be something like a time window for RFC after Notice of Allowance, I suppose, tracking roughly the idea of the principal register on the trademarks side; perhaps this could insulate all patents against newly-raised 102/103 issues in litigation (leaving open, at least, 101 and 112?)

The perhaps clause isn't really necessary, but if "privacy" is somehow a concern (and I don't know why, given pre-grant pubs), you'd at least get the initial back-and-forth solely between the applicant and the examiner.

Frankly, I don't really have a dog in the fight, though, so I'm just throwing this idea out there.

[West Coast Guy]

"It was tied to a specific machine -- an airplane. A-OK under Bilski."

No, it wasn't. Here it is...

1. A method of providing reservations for restroom use, comprising:
receiving a reservation request from a user; and
notifying the user when the restroom is available for his or her use.

Apparently, Kappos (i.e., IBM) was forced to disclaim the patent.

From www.1201tuesday.com:

"A few years ago, IBM was issued U.S. Patent No. 6,329,919 for a “System and method for providing reservations for restroom use.” This made news. The patent soon became the face of all that was evil with the recent patentability of business methods. In fact, public outcry rose to such a level that USPTO Director James Rogan ordered a reexamination of the patent. A couple months later, IBM disclaimed the patent."

[Bilski test is dumb]

"7. The method according to claim 1, wherein said reservations are provided on an airplane."

OK, so claim 7 passes Bilski...assuming a general purpose airplane is a particular machine.

Perhaps even claim 1 passes Bilski, assuming a "the restroom," presumably a general purpose restroom, is a particular machine...antecedent basis problems notwithstanding.

[Paul F. Morgan]

Dave Kappos will be the first PTO Director with real and current patent law and practice knowledge and experience since Todd Dickenson. [More so than many even earlier PTO Commissioners]. His original thinking is also evident in some recent amicus briefs - covering issues that others missed.
It will be a [long-lost] pleasure for practitioners to now be able to communicate serious patent reform suggestions for overcoming PTO problems to someone who can actually understand them, and who can also understand the consequences of ill-advised PTO internal rulemaking and practices.

[Malcolm Mooney]

"US patent 1242872"

Laughably obvious garbage that should never have been granted.

[Bilski rocks]

7. The method according to claim 1, wherein said reservations are provided on an airplane.
8. The method according to claim 1, wherein said reservations are provided on a passenger train or boat.

Claims 7 and 8 survive.

[Malcolm Mooney]

""7. The method according to claim 1, wherein said reservations are provided on an airplane."

OK, so claim 7 passes Bilski...assuming a general purpose airplane is a particular machine"

It dosen't matter if you "receive" and "notify" on a plane, on a hot air balloon, on a canoe or on a planet. It's mental baloney. The only "transformation" is the transformation of a thought about who gets to take a leak into a detectable articulation of that thought. Is that a substantial transformation under 101? Before the peanut gallery gets too excited, its members may want to ponder the consequences of an answer in the affirmative.

[Steve Catsens]

93 years hindsight? Cool.

MM is a better choice than Kappos

[Malcolm Mooney]

"7. The method according to claim 1, wherein said reservations are provided on an airplane.
8. The method according to claim 1, wherein said reservations are provided on a passenger train or boat.
Claims 7 and 8 survive."

This sort of bonehead interpretation of Bilski is exactly why what comes after Bilski will be worse than Bilski (from the perspective of the Sunner crowd).

[West Coast Guy]

"7. The method according to claim 1, wherein said reservations are provided on an airplane.
8. The method according to claim 1, wherein said reservations are provided on a passenger train or boat.

Claims 7 and 8 survive."

The "said reservations" modifies the preamble and not the elements. Also, "provided on" a machine is not the same as being performed by a machine.

Sorry, claims 7 and 8 do not pass the machine prong of Bilski. Nor do they pass the transformation prong of Bilski. As Malcolm as stated, there is no transformation of data -- just a manipulation of data.

[West Coast Guy]

Malcolm,

I going to guess that given IBM's predilection for "crap" (your words) applications, Mr. Kappos does not have your support.

[whiskey]

O'Reilly v. Morse (1853) is substantially the Bilski test with respect to claims 5 and 8.

[jed]

are all you guys shortsighted or just obama nut-huggers ?

IBM was in favor of all the patent changes being pushed on us. kappos will pretty much try to push the same stuff as dudas. seriously wtf.

obama=bush=obama=bush=obama

[Bewilderbeest]

1. A method of providing reservations for use of a facility, comprising:
receiving a reservation request from a user; and
notifying the user when the facility is available for his or her use; characterised in that:
the facility comprises a restroom.

101 or not, the question "does this deserve a patent?" kinda answers itself, no?

[Malcolm Mooney]

"101 or not, the question "does this deserve a patent?" kinda answers itself, no?"

Agreed. As with a lot of these "busy method" patents, they also fail 101 as lacking a substantial utility. Providing reservations? Give us a fracking break. If dog food isn't a substantial utility for a new compound, then why should "providing a reservation" qualify?

Not to mention anticipation and obviousness, which is what you were probably lacking.

[West Coast Guy]

Given the claims are given the broadest interpretation, this one clearly doesn't pass 101 muster:

1. A method of providing reservations for use of a facility, comprising:

[flight attendant] receiving a reservation request from a user; and

[flight attendant] notifying the user when the facility is available for his or her use; characterised in that: the facility comprises a restroom.

[Bilski rocks]

Wait a second. Claim 1 is tied to a machine/apparatus -- a restroom.

This is too easy.

[Dave Caracappa]

First, I expect an IBM employee to advance the interests of IBM, which, of course, are his own self-interests. But are all you out there citing his IBM comments admitting that you are incapable of taking a new position without bring your own old interests with you. If so, make sure you tell any new employers or new clients that you are going to continue to advance the interest of your old employers/clients because you're incapable of doing anything else.

As for me, I like to think that I am intelligent enough and sophisticated enough, and competent enough to be able to see that positions which I previously took for a prior employer/client are not to be brought forward to the next employer/client. I also like to think that if the government selected me to be head of the PTO, I could put aside all my past positions in favor of past employers/clients and move into the position of representing the whole of the patent community. I don't know this guy, but is he so stupid he can't do this? It doesn't sound like it to me.

Frankly, I'd feel better with ANYONE with actual long term patent prep/pros experience than the political hacks we've seen lately!

[McCain '12]

Its probably the toughest job in the Patent Industry, and is probably under paid. If he executes honorably, and plays the diplomacy needed to allow people to get along and progress, I am all for him.

I should say ... Other appointments (such as Dept. Agric, etc.), probably invoke less scrutiny and scathing criticism than the pitiless wrath of intelligent patent lawyers. It takes guts and I applaud him for his service, in what is probably the most difficult job in the industry.

[West Coast Guy]

"Wait a second. Claim 1 is tied to a machine/apparatus -- a restroom.

This is too easy."

It is not tied to a "particular" machine when given its broadest construction:

"1. A method of providing reservations for restroom use, comprising:
[flight attendant or matre d'] receiving a reservation request from a user; and
[flight attendant or matre d'] notifying the user when the restroom is available for his or her use.

Sorry, but this doesn't pass Bilski's particular machine or apparatus test.

[The Mad Prosecutor]

What is a "particular" restroom? See, here is my restroom with a number display outside the door - "particularly" set up for use with a reservation system. It is no longer a general purpose restroom on a general purpose air plane. So, it must be okay under Bilski.

[West Coast Guy]

"What is a "particular" restroom? See, here is my restroom with a number display outside the door - "particularly" set up for use with a reservation system. It is no longer a general purpose restroom on a general purpose air plane. So, it must be okay under Bilski."

If you're taking about the IBM method, the limitations with which you state are not included in the claim. Hence, the claim as stated fails Bilski.

How would your restroom reservation method be claimed with the "number display outside the door" so that you would think it passes Bilski's machine/appartus test?

[curious]

"Patent Proposal Puts Property and Innovation at Risk"

interesting article

http://www.heritage.org/Research/LegalIssues/lm0040.cfm

[curious]

"invoke less scrutiny and scathing criticism than the pitiless wrath of intelligent patent lawyers. It takes guts and I applaud him for his service, in what is probably the most difficult job in the industry."

I agree

[All hail Bilski]

"It is not tied to a 'particular' machine when given its broadest construction."

Without using examples, explain the difference between a particular machine and one that isn't? What is the law the governs this distinction?

[Steve M]

"IBM is on the other end - they pop out millions of tadpoles and hope a few make it."

... resulting in IBM being the patent world's own version of Octomom ... yet many magnitudes more prolific.

[Chief Patent Counsel]

Really? You waste this discussion talking about airplane toilets. Do you really think Dave read and approved each application filed by IBM. That is like saying the Director knows about every patent allowed by an Examiner.

[Tony]

MM, this patent was issued in 1917. According to a New York Times article:

"Another indication of malleability is that I.Q. has risen sharply over time. Indeed, the average I.Q. of a person in 1917 would amount to only 73 on today’s I.Q. test. Half the population of 1917 would be considered mentally retarded by today’s measurements, Professor Nisbett says."

So maybe this patent seems obvious to you, but you have to judge it by 1917 standards. Plus, I think there might be a giant case of hindsight bias in your comment.

[please]

"What is a "particular" restroom? See, here is my restroom with a number display outside the door - "particularly" set up for use with a reservation system. It is no longer a general purpose restroom on a general purpose air plane. So, it must be okay under Bilski."

Is the restroom performing the method? because bilski needs the method to be performed by the particular machine, not that the particular machine is somehow affected by or used in the method.

[West Coast Guy]

"Without using examples, explain the difference between a particular machine and one that isn't? What is the law the governs this distinction?"

Here's a start...

According to Bilski (p. 11 of slip opinion), a claimed process should use a particular machine or apparatus -- not a particular machine or apparatus should use a claimed process.

Applying this to the IBM restroom reservation claim, the reservation method should use a particular machine or apparatus -- not a particular restroom should use a claimed reservation method.

The IBM claimed method uses no machine (let alone a particular machine).

[6]

Hey Lowly, have you ever read In re Shreiber?

http://www.ll.georgetown.edu/Federal/judicial/fed/opinions/97opinions/97-1201.html

Pretty nice opinion :)

[Malcolm Mooney]

"Really? You waste this discussion talking about airplane toilets. Do you really think Dave read and approved each application filed by IBM. That is like saying the Director knows about every patent allowed by an Examiner."

Indeed. And without blogs keeping track of the crap, NOBODY would know about the crap. Even with the blogs, there are few attempts to seriously document *all* the offensively invalid crap flowing out of the PTO every week.

But that doesn't stop otherwise respectable patent bloggers who should know better from pretending that the swing patent and the one-click patent are "exceptions" (and I'm not talking about Professor Crouch). They're not exceptions at all, except to the extent they are stronger patents than the crappiest of the crap that issues every week.

A second set of eyes? LOL. Intermittent, arbitary and erratic quality control isn't quality control at all. Whose eyes were watching that Capital One patent as it sailed out the door?

[6]

I love how newman just doesn't get how functional claiming and intended use limitations work and dissents. Here's a clue Newman, the claim is for the top. Not anything else. Except maybe in claim 14.

I honestly do not understand how this lady got to commandeer a federal judgeshiplol.

[West Coast Guy]

"Really? You waste this discussion talking about airplane toilets. Do you really think Dave read and approved each application filed by IBM. That is like saying the Director knows about every patent allowed by an Examiner."

Chief, I'm from the old school of military leadership (with the emphasis on leadership). In his position, he is responsible for what his unit does and fails to do.

He shares responsibility for the restroom reservation system. If he fails to accept responsibilty, I don't care if he is a paper tiger. If he fails to accept responsibilty, then he doesn't deserve to be Director despite his otherwise empressive credentials of "working up throught the ranks."

Now that responsibility has been addressed, the next step to address is accountability. How should he be held accountable? It depends. IBM finally disclaimed the patent after the PTO threw it into reexamination and public outcry. The question to me is this: what action did Kappos take after this public spectacle? Did he issue a directive reviewing and/or curtailing the practice of claiming methods like the restroom reservation method? Or did he just sit still maintaining the IBM status quo and waiting for the issue to go awaay?

Knowing his response or actions to this episode will shed light on the leadership traits he currently possesses and what to expect if he becomes the Director.

[Malcolm Mooney]

Which PTO director had the shortest term in history?

[6]

I also love how Newman flat out refuses to recite even one claim limitation which is supposedly not met by the reference. Of course, this is because there are none, but that doesn't stop her! All limitations must be shown! And even when they are, all limitations aren't shown!

She just fills her dissent with empty platitudes to caselaw which does not directly support her.

[West Coast Guy]

From the WSJ article:

"The Patent Office now gets some 500 million applications a year[.]"

Is this true? A half a billion? Or does the reporter have his number wrong?

[MaxDrei]

I'm astonished that any contributer to this blog even has to ask the #61 question. My guess is that the journalist heard 500,000, but the briefer was intent on emphasising the ludicrous enormity of the number. These days, no WSJ number under a billion is in any way remarkable for its size. Hence, by the time it was published, the number had become a cool 1/2 billion.

[Paul F. Morgan]

Re the question: "Which PTO director had the shortest term in history?"
I believe it was the late Don Banner, who [unfortunately] quit shortly after his appointment, reportedly as soon as he found that a then-applicable rule or regulation would effectively prevent him from working as a patent attorney in many respects afterwards if he stayed on.
{I don't normally answer trivia questions, but this one illustates one of the reasons [in addition to huge pay cuts] why it is hard to get highly directly experienced competent people into government management and judicial positions without personal sacrifices.]

[West Coast Guy]

Here's more on Banner....

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

[patent attorney]

I worked at Don Banner's firm years ago, and yes, he was a real gentleman.

[curious]

"IBM was in favor of all the patent changes being pushed on us. kappos will pretty much try to push the same stuff as dudas"

fellow bloggers, is this true?

[6]

"AK Steel is not controversial because its outcome is intuitively correct. Claims that cover materialdisclaimed in the specification should not be upheld. However, AK Steel’s invalidity finding shouldnot have been based on the enablement requirement. The specification discussed aluminum coatingsthat contain ten percent by weight silicon, albeit as the prior art. Thus, there was a reasonable basisfor concluding that the specification did enable a person of ordinary skill to make the claimed steelstrips using ten percent by weight silicon. The better basis for an invalidity finding would have been35 U.S.C. § 112 ¶ 2 which requires that “[t]he specification shall conclude with one or more claimsparticularly pointing out and distinctly claiming the subject matter which the applicant regards as hisinvention.”58Clearly, the applicant believed that its invention did not include using aluminum coatingmetal containing ten percent by weight silicon because that material did not wet well. Since AK Steeldid not have to rely (and probably should not have relied) on the enablement requirement toinvalidate the claims at issue, it could have simply found that claims did not reflect what theinventors regarded as their invention."

From http://74.125.93.132/search?q=cache:P-SwuhXdKS4J:stlr.stanford.edu/pdf/chao-rethinking-enablement.pdf+Liebel-Flarsheim,+Automotive+Technologies,+and+Sitrick&cd=6&hl=en&ct=clnk&gl=us

Oh, look at that, a respectable journal author espousing a rejection under U.S.C 112 2nd because, and I quote, "Since AK Steeldid not have to rely (and probably should not have relied) on the enablement requirement toinvalidate the claims at issue, it could have simply found that claims did not reflect what theinventors regarded as their invention". Stated another way, claims are susceptable to 112 2nd issues for not actually having claimed what the inventor regarded as their invention. That is, claims do not make the reality of what inventors regard as their invention, but rather are subject to that reality in order to be valid.

Amazing concept, isn't it? And yet, the court chooses not to go down that road, and instead, change the enablement requirement. Interesting that either one or the other of the old fashioned constructions of the enablement law or the 112 2nd law had to change. I suspect that the both will go the way of the dinosaur before my stint in this field is through.

[Actual Inventor]

Max wrote:

"BTW, who can tell me about Clarence Saunders? I read that he invented the supermarket in 1916, and patented that novel and innovative method of doing retail business. Did that have "technical merit"? I wonder what his main claim recited, and whether Mr Kappos would allow it tomorrow."

Its been a while since I studied his app and don't have it front of me at the moment. But I seem to recall his actual claim was for a "circuitous pathway" in a store.

In other words he put the concept of a maze in a shopping market and got a patent on the application of this innovative idea.

Now today, people that are anti business method, which is just code word for anti patent, would argue what did he invent? Where is the machine, transformation, technical merit? blah, blah, blah.

But the United States Congress in 1952 had the opportunity to ask the same questions and make sure that so called pure business methods like Saunders never received patent protection again and guess what?

The congress kept the 101 statute broad and open by making pure processes like Saunder's patentable subject matter in the 1952 patent act! And thats all a business method is really, a process!

And the Supreme court has upheld the congressional intent for processes as patentable subject matter for over 50 years. And I will bet anyone that SCOTUS will continue to do so by ruling against the PTO in Bilski.

As far as software in concerned, I 've come off the fence, its patentable, hands down. And I am not a software guy, just someone that believes in the benefits and incentives of a good patent system that has a broad and wide open 101 front gate!

[Actual Inventor]

Malcolm Mooney said...
""7. The method according to claim 1, wherein said reservations are provided on an airplane."

OK, so claim 7 passes Bilski...assuming a general purpose airplane is a particular machine"

It dosen't matter if you "receive" and "notify" on a plane, on a hot air balloon, on a canoe or on a planet. It's mental baloney. "

And what rule of law, or congressional statute gave you the power to extract mental steps from a process claim for the purpose of dissecting claims into statutory and non statutory elements??

Ahhh..Mooney Silence

[Actual Inventor]

please said...

"Is the restroom performing the method? because bilski needs the method to be performed by the particular machine,

No, Bilski does not say that.
The machine does NOT have to perform the method. I see so many people on this blog make this crucial error when quoting Bilksi, and I always go back and read the case, and its not there.

[MaxDrei]

Thanks for the comment, Actual. Saunders has no method claim, as was noted already upstream. Kappos only wants to exclude "pure" business methods. I see a parallel with the European view, which narrows the "methods of doing business" with the "as such" qualifier. You make a good point about the claims in the Saunders patent: are they characterized by a "transformation" or a "particular" machine? I guess a shop is a machine, and a Saunders shop back then really was pretty special. In Europe, we don't confine patentability to a transformation or a particular machine. For that very reason (if for no other) I expect SCOTUS to disapprove of that particular measure of patentability.

[West Coast Guy]

What do you think Bilski says?

[Actual Inventor]

West Coast Guy wrote:

"What do you think Bilski says?"

I cut and paste exactly what Bilksi says....

" (p. 10 of the opinion), The Supreme Court, however, has enunciated a definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself. A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or
thing."

As you can read above Bilski only says "tied". Bilski does not say the machine or apparatus must "use" the claimed process. So certainly a process that requires a human operator is patent eligible as long as it's tied to a particular machine, or apparatus, or transforms..

Thus the IBM patent was statutory since human operators ran the process and used the tied airplane machine and tied toilet apparatus.

[Actual Inventor]

Max wrote:

" Actual. Saunders has no method claim, as was noted already upstream. Kappos only wants to exclude "pure" business methods."

You are correct in that Saunders did no particularly point out and specifically claim a process or method. Keep in mind that the claims and application were written prior to the 1952 Patent Act so its not going to meet every aspect of current law and policy, particularly 112.

But a close read and analysis of the application and claims clearly shows a process albeit one tied to apparatus. Even the claims require the actions of a customer using the apparatus and moving through the circuitous pathway.

This is why all patent applications are essentially processes and business methods. They require the step by step acts to be carried out and reduced to practice. The fact that some applications are tied to other categories is more out of a necessity to overcome prior art than it is any difference from so called "pure business methods". If an invention is innovative and pioneering enough to overcome all prior art it, without laying claim to a law of nature or abstract idea, it should be eligible subject matter, or what is a patent system for?

[6]

Hey Eugene, I know you're lurking. I just did you a FOAM on an application which was filed in the late months of 08'. What can I say? I read the claims, and I already knew of art that 102'd the whole thing. It's a free count.

Sincerely,
6

[West Coast Guy]

You know, my wife and I were traveling the other day. Sitting next to me and busy re-reading one of the Harry Potter books as she always does on flights, she asked me to let her know when the lavatory was vacant. I received her request, and upon looking and seeing that the occupied sign was not illuminated, I told her that it was vacant.

Had the IBM claim not been disclaimed, I would have infringed it.

And you're trying to convince me and others on this blog that the claim is "tied" to a particular machine (let alone a machine at all)? No, the claim is not, and merely citing a restroom(s) doesn't make it so. This doesn't pass the Bilski machine prong.

[West Coast Guy]

"Bilski does not say the machine or apparatus must "use" the claimed process."

That is not my position, and I agree with your sentence. See #54 above.

[Malcolm Mooney]

"Thus the IBM patent was statutory since human operators ran the process and used the tied airplane machine and tied toilet apparatus."

[insert cuckoo clock sound]

[Actual Inventor]

West Coast Guy said in reply to Actual Inventor...

West Coast Guy wrote:

"You know, my wife and I were traveling the other day. Sitting next to me and busy re-reading one of the Harry Potter books as she always does on flights, she asked me to let her know when the lavatory was vacant. I received her request, and upon looking and seeing that the occupied sign was not illuminated, I told her that it was vacant.Had the IBM claim not been disclaimed, I would have infringed it. And you're trying to convince me and others on this blog that the claim is "tied" to a particular machine (let alone a machine at all)?"

You were riding on an airplane. An airplane is a particular machine. This claim may fail for many other reasons, like 112, 102, 103. Heck you can even make an argument about the lack of a "common actor" for carrying out the process.

But there can be no doubt an airplane is a particular machine. And so long as the process is not described so broadly in the spec that it could be performed with any type of machine or apparatus, or none at all, so as to preempt the idea of asking for someone to let you know when the bathroom is free, it's considered tied.

Now if you disagree then you have to explain why an airplane is not a particular machine, and why a toilet is not an apparatus for that matter.

[6]

"An airplane is a particular machine"

Substantial lulz are to be had at this gentleman's expense.

"But there can be no doubt an airplane is a particular machine."

Except for the 100% doubt.

"Now if you disagree then you have to explain why an airplane is not a particular machine"

Because it is a huge genus encompassing only the general features of the genus. Furthermore, even those are not specifically defined.

"and why a toilet is not an apparatus for that matter."

A toilet is an apparatus and nobody disputes that.

Why do you have such a hard time reading AI?

Looking at the situation from another point of view, AI is the perfect example of how the common man is hopelessly left behind by patent law which makes for a strong argument to simplify things.

[6]

http://cosmos.bcst.yahoo.com/up/player/popup/?rn=3906861&cl=14074179&ch=4226723&src=news

"when I read the blogs everyday"

[Claim construction isn't for wimps]

"Sitting next to me and busy re-reading one of the Harry Potter books as she always does on flights, she asked me to let her know when the lavatory was vacant. I received her request, and upon looking and seeing that the occupied sign was not illuminated, I told her that it was vacant.Had the IBM claim not been disclaimed, I would have infringed it."

No. You are dead wrong. You did not receive a "reservation request." Perhaps you received a request to notify her when the lavatory was vacant, but she did not reserve anything -- hence a "reservation."

A nice example, BTW, of what I see from the USPTO all the time. It is easy to finding anticipatory (or in your case, an infringing) method when you ignore claim terms.

[West Coast Guy]

Second draft with the reservation request added.

Sitting next to me and busy re-reading one of the Harry Potter books as she always does on flights, she asked me to let reserve the lavatory when it became vacant. Upon receiving her request, I got up from my seat, went to the lavatory, stood in front of the door, and blocked the door to prevent others from using it. When the current occupant existed the lavatory, I notified my wife that it was vacant.

Here, given the broadest construction, the claimed method can be tied to a human and not a particular machine or apparatus. The method, as claimed, can use a human only and not a machine or apparatus -- let alone a "particular" machine. It fails the Bilski machine prong.

[Paul F. Morgan]

Re the above question: "How do the changes that Kappos suggested benefit U.S. citizens and companies more than they benefit foreign entities?"
It might be domesticly popular if the [nearly 50%]* foreign applicants in the U.S. PTO could be socked with higher fees, or otherwise discriminated against. However, besides violating various international treaties, it would simply invite dangerous retaliations against the U.S., which files more patent applications abroad than any other single country.
*[Foreign entity filing in the U.S. is popular not just because of the U.S. market size, but also because U.S. patents have more real and effective infringement enforcement teeth, including high damage recoveries [contrary to all the current "the sky is falling" hyperbole], and relatively low costs.]

[6]

""Sitting next to me and busy re-reading one of the Harry Potter books as she always does on flights, she asked me to let her know when the lavatory was vacant. I received her request, and upon looking and seeing that the occupied sign was not illuminated, I told her that it was vacant.Had the IBM claim not been disclaimed, I would have infringed it.""

And somewhere near the end of the 40 page long description of the "infringing method" or "reference" was stated "Oh, and in this method she happened to mention for me to hold the restroom for her".

"A nice example, BTW, of what I see from the USPTO all the time. It is easy to finding anticipatory (or in your case, an infringing) method when you ignore claim terms."

A nice example, btw, of what I see from attorneys all the time. A request for hand holding.

[West Coast Guy]

Here, given the broadest construction, the claimed method can be tied to a human and not a particular machine or apparatus. The method, as claimed, can use a human only and not a machine or apparatus -- let alone a "particular" machine. It fails the Bilski machine prong. You don't even have to go to 102, 102, 112.

Contrary to what you say, merely reciting restroom or airplane does not tie the method to a machine or apparatus to avoid the Bilski machine prong.

Want this claim to pass 101 under Bilski? Here's an example:

1. A method of providing reservations for restroom use, comprising:

receiving a reservation request signal from a user input device; and

notifying the user associated with the user input device when the restroom is available for his or her use.

Here, the claimed method is tied to a particular apparatus of the user's input device. Hence, it passes Bilski's machine prong. You'll still have to deal with 102, 103, and 112 issues, but not 101.

[Claim construction isn't for wimps]

"Here, given the broadest construction, the claimed method can be tied to a human and not a particular machine or apparatus."

Broadest construction? How can it be the broadest construction when you are excluding disclosed embodiments (i.e., "not a particular machine or apparatus")? To me, that is a narrow claim construction, not the broadest construction.

[Claim construction isn't for wimps]

"A nice example, btw, of what I see from attorneys all the time. A request for hand holding."

Did you cut and paste the wrong quote? An examiner's failure to consider the actual language of the claims has nothing to do with "[a] request for hand holding."

Are 6 and Malcolm Mooney the same? When faced with logic they don't like, they are prone to throw out non sequiturs.

[West Coast Guy]

Actual Inventor,

Let me see if I understand you.

Suppose I invent a new technique of throwing a curve ball. If I mention "baseball" in the preamble and an element of a method claim (like restroom is used) and describe the sequential techniques of gripping and throwing the baseball with reference to the baseball seams, that my claimed method passes 101 under the Bilski machine prong because I recite the apparatus of a baseball? That I can claim a method of throwing a curve ball?

Note that I do not mention in my claim a robotic machine with mechanical fingers and arms that has a sensors means of identifying the seams on the baseball and throwing the baseball.

[West Coast Guy]

Actual Inventor,

Let me see if I understand you.

Suppose I invent a new technique of throwing a curve ball. If I mention "baseball" in the preamble and an element of a method claim (like restroom is used) and describe the sequential techniques of gripping and throwing the baseball with reference to the baseball seams, that my claimed method passes 101 under the Bilski machine prong because I recite the apparatus of a baseball? That I can claim a method of throwing a curve ball?

Note that I do not mention in my claim a robotic machine with mechanical fingers and arms that has a sensors means of identifying the seams on the baseball and throwing the baseball.

[6]

"Did you cut and paste the wrong quote? An examiner's failure to consider the actual language of the claims has nothing to do with "[a] request for hand holding.""

An attorneys not understanding that a hypo which is poorly crafted in one respect which is not directly related to the subject at hand is irrelevant if the hypo was well crafted with respect to the subject at hand (whether the method was tied to a particular machine or not) is an indirect request for hand holding. And so is them taking only a small tidbit from the recited passage and ignoring the rest of what was likely a 40 page disclosure/description of an infringing act.

In any event, I'm thinking about launchin me a blawg :) It isn't all that hard and it might be funzors.

[6]

"When faced with logic they don't like, they are prone to throw out non sequiturs."

I think you meant to say "when faced with logic that is not even nearly related to the discussion at hand, they are prone to throw out non sequiturs". You could also have said "when faced with "logiclol" which they find funny or ridiculous, they are prone to throw out non sequiturs"

[Actual Inventor]

West Coast Guy wrote:

"Contrary to what you say, merely reciting restroom or airplane does not tie the method to a machine or apparatus to avoid the Bilski machine prong."

That is not what I said. The claims have to be read in light of the application. And if indeed the process is tied to an airplane in the spec it's statutory, since an airplane is a particular machine. Again, you have failed to explain why an airplane is not a particular machine. And you have also failed to explain why a rest room is not a particular machine or apparatus so the claim passes 101.

[Actual Inventor]

"explain why an airplane is not a particular machine"

6 wrote:

"Because it is a huge genus encompassing only the general features of the genus. Furthermore, even those are not specifically defined."

According to the CAFC and SCOTUS you are wrong. When the Bilski court referred to a particular machine they cited the following:

The CAFC in Nuitjen relied on the Supreme Courts defintion of a machine as a concrete thing,consisting of parts, or of certain devices and combination of mechanical powers and devices to perform some function and produce a certain effect or result.

An Airplane meets this definition.

CASE CLOSED

[6]

AI, I'm unfamiliar with any court case dealing with anyone named Nuitjen, but tell me, what did the Nuijten court define a "particular machine" to be?

Oh? What's that? They didn't define it?

Whoopsie, case is back open again!

Like I said, you're a prime example of why the law is too complicated for the everyman.

[Crusty]

"1. A method of providing reservations for restroom use, comprising:
receiving a reservation request from a user; and
notifying the user when the restroom is available for his or her use.
7. The method according to claim 1, wherein said reservations are provided on an airplane.
8. The method according to claim 1, wherein said reservations are provided on a passenger train or boat."

A method step is tied to a particular apparatus when that step is performed by the particular apparatus. Whether an airplane or a toilet is a particular machine is moot seeing as neither is mentioned in either of the method steps. Claims 7 and 8 are intended use. The claim does not define that an airplane receives the reservation request, nor does the claim define that a toilet receives the reservation request. Likewise, the claim does not define that an airplane or a toilet notifies the user. Therefore, neither step positively recites a particular machine. Therefore, the method is not tied to a particular machine.

Bilskied.

[Crusty]

9. The method according to claim 1, wherein said reservations are provided in an alternate universe where this method is patentable.

Maybe that would work?

[Actual Inventor]

6 wrote:

"Oh? What's that? They didn't define it?"

The SCOTUS defined it as:

" a concrete thing,consisting of parts, or of certain devices and combination of mechanical powers and devices to perform some function and produce a certain effect or result. "

Now can you provide any legal justification in ignoring this definition or refusing to apply it when determining if something described in the claims and/or application is a machine, particular or otherwise? And please cite case law and not your own non legal opinion. Until you do the SCOTUS definition stands and the case remains closed.

[Crusty]

AI, from one of the PTO Bilski memos: "a mere field-of-use limitation is generally insufficient to render an otherwise ineligible method claim patent-eligible."

That's exactly what you have here.

See here: http://www.uspto.gov/web/offices/pac/dapp/opla/documents/bilski_guidance_memo.pdf