Dec 202011

The Board of Patent Appeals and Interferences takes into account a number of authorities when deciding appeals. First at the BPAI’s disposal are the higher courts of the Federal Circuit and Supreme Court. Then there are the rulemaking guidelines issued by the PTO. Then of course there’s the MPEP. I’ve been interested in the whether the Federal Circuit affects the BPAI in terms of the number of rejections the Board issues.

Appeals before the Board are initiated after an examiner rejects a claim at least twice. The applicant, rather than continuing to spend time arguing with the examiner, can elect to appeal to the Board where a panel of three judges will hear both arguments. The Board then has three options. It can reverse the rejection, it can affirm the rejection, or it can introduce a new rejection. Since Bilski v. Kappos has been decided, the Board has used § 101 to reverse 95 times, affirm 166 times, and introduce 65 new rejections. Up until today, the percent of new rejections to how many times the Board has acted is about 20%.

To see whether the Board is affected by Federal Circuit cases, I divided the time frames up into intervals roughly 6 months apart when big Federal Circuit cases were decided. Here are the Federal Circuit cases: Research Corp v. Microsoft, Ass’n for Molecular Pathology v. Myriad, and Ultramercial v. Hulu. At times, there were two Federal Circuit cases decided within a short period of time, which I just combined.


A little about the time frames. The first time period is from June 28, 2010 to December 9, 2010, starting with the Supreme Court case Bilski v. Kappos and ending with the first big Federal Circuit decision decided on the merits of § 101. In this time period, the Board introduced new rejections 22.4% of the time, higher than the overall average. This was likely a result of the recent Supreme Court case and the PTO publishing post-Bilski guidelines a month after Bilski. In addition to these factors, two Federal Circuit cases that did not receive that much attention mentioned § 101 subject matter patent-eligibility: Intervet v. Merial Ltd included a dissent with a 101 focus and Astrazeneca v. Apotex was mostly decided on other grounds, but did mention subject matter. Both cases used 101 to poke holes in the patent at issue and the effect may have been felt at the BPAI.

Research Corp v. Microsoft was a subject matter game changer in the sense that it broadened the Bilski analysis by saying that unless the invention was very obviously an abstract idea, the invention should be statutory subject matter. As noted on Ryan Alley’s blog, the case looked as if it would affect the BPAI’s decisions when followed by the BPAI. Prometheus v. Mayo was decided over a week later which was also favorable to patent-eligible subject matter, especially for diagnostic methods. This time period saw new rejections dip to 18.4%.

Next, AMP v. USPTO.  The now-famous gene patenting case is familiar to most. While the take-home message from this Federal Circuit case is that the District Court was wrong in concludingi gene patents are not statutory subject matter, the method claims which were affirmed received far less attention. As noted on the Patents4Life blog post, the method claim analysis was very brief and the arguments not very well developed. Very shortly after AMP, the Federal Circuit decided Cybersource v. Retail Decisions. These two cases seemed to propel the BPAI forward with new rejections, cresting to 24.3%.

Ultramercial v. Hulu was another game changer. Like Research Corp, Ultramercial was another Judge Radar decision which seemed to broaden the 101 analysis from the earlier cases of AMP and Cybersource. This decision until the present has seen a dip in the number of new rejections at the BPAI to 16.7%.

In conclusion, it is interesting to see how the patent tides of change can be felt not only in the higher courts, but at the Board and the effect most likely trickles down to each examiner. I found that differences in rejections in the different time frames were interesting and expected, but not all the time frames were statistically significant at an acceptable confidence level.

All data was mined from the website The word “affirmed” was searched in the outcome field for those decisions that were affirmed. The word “reversed” was searched for reversed decisions and the word “new” was searched for new rejections. Some cases performed multiple operations in one decisions, such as affirming one claim, reversing another or introducing a new rejection. In such cases of multiple operations, I included each operation separately. For instance, one decision could potentially yield a reversal, affirmation, and new rejection. Most decisions, however, had only one operation.

 Posted by at 8:41 am
May 112011

I have been closely monitoring cases before the Board of Patent Appeals and Interferences since June 28, when the Supreme Court decided Bilski. The Board has been on fire, deciding 183 cases that deal with the merits of subject matter patent-eligibility. And many of these decisions were Board-initiated. I decided to look at the preambles of the claims at issue (or representative claims) to get a sense of how big of a factor the preamble plays. The preamble, the short introductory phrase that frames the context of the claim, is comparable to the subject in a typical English sentence. I found that the preamble does not have that big of an effect on whether the claim is statutory or not because a more important factor is what is included in the specification. For instance, the preamble “computer readable medium” can be statutorily OK if the specification limits this to not include a signal. Otherwise, the broadest reasonable interpretation standard is used and the claim falls outside the statutory subject matter. Furthermore, preambles are often narrowed in the body of the claim. For instance, “an article of manufacture” seems pretty broad, but “an article of manufacture comprising: a computer readable medium” could be patent-eligible subject matter.

I have included preambles from all 183 cases. I have divided up the claims into those that the Board held were non-statutory and those that were statutory (reversing the examiner). There are about three times as many non-statutory claims as statutory. For more information regarding these preambles, like the case they came from, the full claim, the citation to the decision, or the application number, please email me and I would be happy to provide you that information. It is simply too much to publish in one blog post.

Non-statutory preambles Statutory preambles
In control framework having a plurality of nodes, a subset of said plurality of nodes associated with a displayed portion of a graphical user interface (GUI), a method for tracking said plurality of nodes A data processing system to search for Web pages within a Web site
A computer program product for installing at least one file onto a data processing system A system for performing query operations
A method for verifying accuracy of a component that is implemented from a model A program product
A computer implemented system for detecting memory management antipatterns A graphics optimization system
A method of playing a game A system for presenting an image of a receipt to a consumer
A computerized method for measuring a consumer’s perception of a commercial entity’s brand equity, logo, trademark, tradename, tag line, product name and the like A program storage device readable by machine
A computer implemented method supporting competitive intelligent analyses of information A method making use of play on a board game for training a sales representative to make a sales call on a selected type of prospective purchaser
A process of informing potential consumers of a new product A method for producing a subject-specific skeleton from an external measurement data set and a generic skeleton, the generic skeleton comprising a plurality of parameters
A system for interpreting scan data A computer-based method for representing a project
An apparatus A computer program product
An article of manufacture for storing digital content in a clientside cache A computer-implemented system for measuring per-flow traffic delay between two routers having synchronized clocks
An electronic document management system A computer implemented method for presenting information associated with a trademark search for a first trademark
A hosting environment abstraction method A method for maintaining anonymity of a purchaser during a purchase transaction
A computer-implemented method carried out on a computer readable medium A method
An interactive viewer to view interactively a multi-media program derived from a real-world environment An autonomic grid comprising a plurality of hosting services communicatively coupled to one another
A method for generating object classification models to be utilized to predict object classes in an adaptive learning object classification data processing system A method of processing electronic assurances involving a requestor, a provider and an authority interconnected via a network, wherein the requester, the provider, and the authority are separate entities from one another
A data carrier A tangible medium comprising information encrypted according to a method as claimed in Claim 1.
A method of detecting intrusions in a computer network A tool for developing litigation discovery materials
A method for use in a device associated with a first party for performing a signature operation on a message substantially based on the digital signature algorithm (DSA) A tool for recommending a decision in litigation
A method of identifying optimal times for an end user to contact a target user of a messaging system A method for administering insurance claims and monitoring claim-related data in a database
A method A reseller program utilizing a computer network for allowing a plurality of Customers to register one or more domain names via a registrar web site
A computer program product A method for maintaining integrity of course data during offline utilization of a learning management system
A computer-readable medium A method for performing a money transfer transaction via a wireless communication device
A computer program product for secure communications in a message source, the computer program product having a computer readable medium with a computer program embedded thereon A computer implemented method for comparing a first object and a second object in an object-oriented operating system
A method for communicating between two endpoints connected to a network A computer readable medium including instruction for operating a computer that controls a laser source
A method for autonomic management of system resources on a grid computing system A knowledge system for solving a problem identified by a user
A method for modeling distributed generation for a customer A computer memory device storing an image produced by the method of claim 1
A computer program product in a computer readable medium for monitoring and correlating transactions Method of compiling Dictionaries for inputting into the memories of electronic speech-recognition devices
An article of manufacture A method of managing assets controlled by members of an organization, said organization having a central server configured to access data and software systems of said organization
A method of controlling processing of data A program storage device readable by machine, tangibly embodying a program of instructions executable by the machine to perform program steps for decoding video signal data for a picture having a plurality of motion blocks
A method for detecting fraud in relation to stored value products Method for purchasing and authenticating an electronic ticket
A computer readable storage medium A component based data processing system
A method for use in a device associated with a first party for performing a signature operation on a message substantially based on the digital signature algorithm (DSA), A computer-readable medium tangibly encoded thereon a data structure
A method for improved decoding of a binary representation of a[n] XML-based document For a client/server system having at least a client including a graphical user interface to display a content of virtual hosted stores to a user, the virtual stores being stored in databases managed by a database management system in a resource manager, the graphical user interface being operatively connected to an application server having a business logic module to select the content to be displayed, a method of managing the content of the hosted virtual stores
A discussion forum resource A drawing conversion management and assignment system
A method for determining similarity between portions of gene expression profiles in a computer A tangible computer readable storage medium on which is embedded one or more computer programs
A method of presenting data relating to skills distribution in an enterprise An online sales promotion method used in a system to purchase a product over a network
A machine-readable medium tangibly embodying a program of machine-readable instructions executable by a digital processing apparatus to perform a method of data retrieval in a computer  

A method of option creation for an asset that has a value that varies over time

A computer system for controlling access to certain files by processes An intelligent electronic mail (e-mail) gateway
A method of determining a price at which a supplier provides a commodity to a customer A computer readable storage medium comprising program instructions, or triggers to launch execution of program instructions
A processor-based method of applying a policy A fire fighting system comprising
A program product In a World Wide Web (Web) communication network with user access via a plurality of data processor controlled interactive receiving display stations for displaying received hypertext Web documents, transmitted from source sites on the Web, including at least one display page containing text, images and a plurality of embedded hyperlinks, each hyperlink being user activatable to access and display a respective linked hypertext Web document from source sites on the web, a system for controlling access activity from activated hyperlinks and their respective Web document source sites
A method for determining relative positions of nodes of a network A computer-implemented method for facilitating procurement functions over a computer network
A method of preparing a wire harness production


A method of tetrahedral interpolation
A system for converting slide show presentations for use within non-presentation applications
A hierarchical grouping system
A computer-implemented method for creating rules for the administration of end-user license agreements (¿EULAs’)
A method of operating a decision feedback equalizer having a feed forward filter and a feedback filter
A method of evaluating a proposed solution to a constraint problem
A computer program product storable on a medium readable out by a computer system
A method for maximizing opportunity sales by moving a purchaser off an original travel reservation purchase choice and onto a substitute travel reservation purchase
A computer implemented method for generating an electronic equipment demanufacturing price quote
A system for benefits management
A financial instrument issued by a stock company and held by a holder, shares of stock of the company trading at a price, the instrument having a market price
A system for authenticating a transaction
A method for managing the assets of holders of rights in a property
A method for encouraging transactions between a customer and a business entity, each of at least one transaction having an assigned value
A computer program product for displaying explain data for an SQL query of a database, the compute program product disposed upon a computer readable, signal bearing medium
A computer program product for evaluating a software component adapted to interact with a resource-residing in a production environment
A computer program product
A method for managing membership in a collaborative computing environment community
A method of searching a database
A system searching a database
A computer program product for searching a database
A method for integrating file system events into a database management system (DBMS)
A system for integrating file system events into a database management system (DBMS)
A computer programming product for integrating file system events into a database management system (DBMS)
A method of analyzing a sub-model of a full system model
A method implemented in a computer for calculating a probability that one ore more automobiles will be sold by a future date
1. A markup language enabled device included within an environment of physical objects. A device according to claim 1
A service level agreement (SLA) breach value estimator
A method for processing a life insurance facultative case summary submission over a network between a ceding company and a reinsurer
A method of generating employment market statistics from a network
A method for ensuring airline safety while safeguarding personal passenger information
A system for communicating a message
A computer program product for mirroring database statistics, the computer program product disposed upon a signal bearing medium
A system for discovering I/O bus capabilities on a computer system via ACPI
A terminal module for using services at a terminal, at which services can be called up via a user interface, wherein the terminal module contains a program code which can be carried out by control means of the terminal
A program product
A system of providing ancestor information in a remembrance program which will continue automatically and extend to their genealogy for all current direct descendants
A computer usable medium having a computer readable program for remote access by a remote computer system to a shared resource over a communications channel, the remote computer system having a plurality of commands including a plurality of resource commands and a plurality of local commands
In a data processing system including distributed processing units, a method of analysis of performance of the data processing system
A method of reporting the presentation of data
A data processing system for retrieving data
A transmittable signal comprising information encrypted according to a method as claimed in Claim 1.
A method of classifying tissue in a magnetic resonance image
An apparatus for displaying supplemental information particular to a user regarding displayed web pages for the user
A method for name searching within an employee records database
An apparatus for name searching within an employee records database
A computer-readable medium
A computer program product
A method for frequency planning in a wireless cell network
An operating center for managing a group of individual distributed databases
A memory storing program instructions
A computer-readable medium having stored thereon a data structure
A computer program product to estimate the cost of distributing software updates
A computer readable medium having computer-executable instructions for combining a precision estimate of a database entry’s coordinate value with the coordinate value into a single index
A computer program for providing computer archive system accountability
A keyword generation method
A computer program product comprising program instructions recorded on a computer readable medium, wherein upon execution on a computer, said program instructions decide whether to make a loan to an applicant
A content data structure stored on a recordable medium
A method for transcopying data
A knowledge system for solving a problem identified by a user
A method of implementing a value-added service (VAS) in a warehouse management system
A method for allocation of channels by a cellular network operator to base stations, where each of the base stations is assigned within one of a plurality of base station cells of a tiered cellular communications system
A method for providing detailed information regarding the preparation of mail entities and the processing of mail entities
A gaming method
A method of managing assets using at least one policy
A computer program product tangibly embodied in a machine-readable medium, the computer program product including instructions that, when executed, perform a method for providing a scratchpad window in a graphical user interface (GUI) while using an application that manages an interaction between an agent and an individual
A service discovery system
A computer program product, intended for use in performing an automated method of control for a configuration bridge system
A method for providing customized health information to an individual
A computer program product
A method for managing health services
A computer-readable medium
A computer data signal representing a sequence of instructions
A method for identifying competencies (soft skills) required for superior performance for a given job
A computer implemented method of determining the consequences of an investment transaction to a potential total future tax liability of a user
A method for providing a Mailer, Post or Recipient with detailed information regarding attributes of mail entities
A method of filtering an image
A computer readable medium tangibly embodying program instructions for managing images within an image manager
A computer program product for managing a remotely located, independent data storage system
A storage medium which stores program instructions, wherein the program instructions are executable by a programmable control device
A method of conducting transactions
A computer readable medium encoded with computer executable instructions
An audio file stored in a computer readable medium
A computer-readable medium containing instructions for performing a method for managing calls directed to one or more communications devices associated with a user of a communications network
A computer system for ranking service offerings in a service-oriented architecture, in which said service offerings are offered by a Service Broker to a Service Requestor
A tangible, computer accessible medium storing program instructions computer executable to implement a distributed data system client
A program for facilitating a purchasing transaction between a medical resource supplier and a client
A computer program embodied on a computer-readable medium, wherein the computer program comprises a plurality of instructions
A World Wide Web (Web) hypertext document including at least one display page containing text, images and a plurality of embedded hyperlinks, each hyperlink being user activatable to access and display a respective linked hypertext Web document from source sites on the Web
A computer useable medium having a computer readable program stored thereon for controlling access activity from activated hyperlinks and their respective Web document source sites in a World Wide Web (Web) communication network with user access via a plurality of data processor controlled interactive receiving display stations for displaying received hypertext Web documents, transmitted from source sites on the Web, including at least one display page containing text, images and a plurality of embedded hyperlinks, each hyperlink being user activatable to access and display a respective linked hypertext Web document from source sites on the Web,
A service
A method for providing a benefit program
A computer readable medium encoded with computer executable instructions
A computer-implemented method of constructing a hedge fund index
A system for processing a request by a researcher to perform a data processing function
A usage history description scheme for at least one of an audio, an image, and a video comprising a plurality of frames
An electronic publishing system to offer an item for sale, over a network
A system for forming a target error model to facilitate spell checking input text to a target collection
A lightweight pattern validation system for a client device receiving markup defining a form
A computer-implemented method for evaluating routing diversity
 Posted by at 9:59 am
Apr 302011

Yesterday I participated in “The TTAB comes to Boston” event at Northeastern University School of Law. I didn’t quite know what to expect from the invitation, but the event turned out to be an actual TTAB proceeding with actual attorneys and actual judges, the only unique aspect was that the arguments were held in Boston. Rather than focus on the case, which was Lockheed Martin v. Raytheon, arguing whether Paveway, a term associated with laser-guided bombs, is generic by virtue of its use, I wanted to talk about some interesting points that were raised in the couple of talks given immediately preceding the hearing.

Prior to the hearing, Pamela Chestek, gave a talk on the trademark issue of ownership. By the way, she has a blog ( She highlighted that unlike copyright or patent law, where the statute explicitly deals with ownership, the Lanham Act does not have a provision for determining ownership. Consider a group of people using a mark and then individuals within the group going off on their own to use the mark. This happens in family businesses, churches, and entertainment groups, where individuals splinter off from the original entity. How do you analyze the ownership issue? First use? Not really, because both parties were using the mark at the same time originally. Priority? No again. Dilution? Likelihood of confusion? It’s a stretch because both inquiries deal with an original standard from which both parties stemmed from. Trademark law is ill-equipped at handling ownership currently, but it is developing case law at the TTAB. Pamela cited to a few recent cases in particular. Please check out her blog for further information.

The next speaker was one of the judges for the hearing, David Mermelstein. He gave advice for those who would be arguing cases before the TTAB. He then talked about an interesting procedure that the TTAB allows, accelerated case resolution. Through this, parties can agree to certain procedural rules, which speeds up the case, reduces risk and reduces cost for both parties. I do not believe that the BPAI has a similar procedure, but I was really impressed with the program. Maybe the BPAI should look in to something similar.

Overall, it was a great event. Trademarks is an interesting area of IP, that I’d like to get more familiar with.

 Posted by at 1:18 pm
Apr 152011

The B.P.A.I. recently decided an interesting case, Ex Parte Dwight Williams, 2009-010882, 2011 WL 1131340 (B.P.A.I. Mar. 28, 2011). The patent application at issue involved a system performing certain methods. The examiner had rejected certain claims as non-statutory subject matter because by combining two types of classes (systems and processes) the invention does not fall in any of the statutory classes. The question for the Board became whether the invention was a system or whether it was a method and if you can combine a system with a method. A representative claim is as follows:

1. A fire fighting system comprising:
pumping at least 2000 gpm water from a large water reservoir toward an industrial hazard using a standard pump having a water manifold inlet but no special approximately 2 1/2 inch inlet; and
adding, in an around-the-pump system, at least one water additive from a water additive source to the pumped water through a fitting at least initially separate from the standard pump, the fitting established on a suction side of the pump upstream of the pump water manifold inlet and in fluid communication between a reservoir outlet and the suction side.

The Board used a dictionary definition of system, which included a method: procedure. Because claims 1, 2, 5-8, 13, 16, and 17 only recited method steps, no structure was claimed. Accordingly, claims 1, 2, 5-8, 13, 16, and 17 were not improper hybrid claims. The Board stressed that a system can have methods as long as structure is not claimed. Therefore, it was “clear that these claims are method claims directed to one of the enumerated statutory classes.”

To me, this case highlights that 101 rejections at the PTO appear to be growing in number and scope. I appreciate that the Board set this point straight. The argument that the examiner made with regards to subject matter made little sense to me. If there were two or more statutory classes in one claim, the rejection should have been based on indefiniteness alone. See IPXL Holdings, LLC v., Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (“Because [the claim] recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2.”). But 101 should be used to disqualify subject matter when the subject matter does not fit within any class. See In re Nuijten, 515 F.3d 1361 (Fed. Cir. 2008).

 Posted by at 4:38 am