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Aaron Feigelson
Chicago
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Thanks, Rusty. It's good to be back. The law is that patent term can be 17 years from issuance only if the application itself for that patent was filed prior to June 8, 1995. Part of the intent of the change was to end the practice of stringing out endless continuations over years and years (in some cases several decades), which resulted in "submarine" patents. Any application filed since then has a term of 20 years from earliest claimed priority date, regardless of whether that priority date is pre or post 1995.
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Les, you think too much of me. I posted the decision for download, and you should look at it for yourself. If you choose not to, here's what the Board said on abstractness: In Bilski, the Supreme Court held that there are other tools for establishing subject matter eligibility under 35 U.S.C. § 101. Those tools involve an inquiry into whether a process is merely an abstract idea. “In searching for a limiting principle, this Court’s precedents on the unpatentability of abstract ideas provide useful tools.” (Id.). According to Bilski, one tool for determining whether a process is an abstraction is the decision in Parker v. Flook, 437 U.S. 584, 590 (1978) (holding that the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity). “The Court, therefore, need not define further what constitutes a patentable ‘process,’ beyond pointing to the definition of that term provided in § 100(b) and looking to the guideposts in Benson, Flook, and Diehr.” Bilski v. Kappos, 130 S.Ct. 3218, 3231 (2010). Regarding claim 1, we find that there is not even a machine or transformation recited in independent claim 1 that would have qualified as “insignificant extra-solution activity.” We thus find that claim 1’s recitations are not statutory subject matter in accordance with the teachings of Bilski and Flook.
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If the patentee had paid the maintenance fees, then, yes. But the '141 patent expired on 3/5/1999 for failure to pay the eight-year fee. (You need to drill pretty far into PAIR to find this, however.)
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Mar 15, 2010
Good catch, Michele. It turns out here that the applicant was pretty explicit in his amendment that he was claiming priority ONLY to the first two applications in the chain. But you might not know that from the face of the patent. Yet another reason you can't always determine expiration dates without looking (sometimes deep) into the file history. -aaron
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What you're recalling, Broje, is 37 CFR 1.14 (parts iv and v, specifically). That says that an identified or relied upon application does become publicly available. The catch, however, is that it only becomes available once the relying application publishes or issues as a patent. So here, even though the '957 patent relies on several abandoned apps, those apps didn't become publicly available until the same December 1990 date, within one year of this patent's priority claim. So they aren't good for 102(b).... There's at least one other red herring in the file history here, too, such as an EP publication based on one of the ancestor applications that was cited by the examiner (albeit with the wrong identifying number). -aaron
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Michael, The patent is dead. 35 USC 154(a)(2) is quite clear here: "Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, or 365(c) of this title, from the date on which the earliest such application was filed." (emphasis added). Here, there is a specific reference to the 1984 application under section 120. Maintenance fees, in contrast, are always calculated based on issue date, regardless of the earliest claimed priority date. 35 USC Section 41(b). And the fact that the maintenance fee schedule is still in place means nothing -- the PTO will not modify those schedules based on patent expiration or invalidation. I can show you many other cases where maintenance fees have been mistakenly paid on dead patents. But at least all of those patents had some life to them...
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On the transformation question, I just read an interesting BPAI decision from last week, Ex parte Gardiner (decided 10/22/09), that may be on point. The Board upheld the 101 rejection of a claim for a method of "rendering a volumetric obscurant in a computer generated image." With respect to the transformation prong, here's what they said: "As claimed, this transformation is to create a volumetric obscurant, which Appellants argue has uses in simulations such as creating the visual effect of an airplane flying through a cloud. Reply Brief 5. These arguments, however, have not persuaded us that the claim is drawn to transforming an article to a different state or thing. The polygon is discussed on pages 1 and 2 of Appellants’ Specification as defining an area in which to simulate realistic-looking obscurant elements (e.g. clouds) in an image. Thus, neither the polygon nor the obscurant represents a physical item; rather, the polygon is an abstraction to define a region of an image. Thus, (1) the steps of spreading sub-pixels recited in claims 1 and 20, and (2) the step of modulating the density of the sub-pixels recited in claim 1 do not transform any physical object. The image is not a physical object and the data, which is part of a simulation, does not represent a physical object. Accordingly, we conclude that claims 1 and 20 do not transform such an object or data representing such an object." So are the virtual animals "representations" or "abstractions"? http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009001597-10-21-2009-1
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I think you are stretching here, Examiner. The simple explanation is that this was one very big oversight. It does happen. I've started looking for similar instances and have so far found seven cases of "pre-issue expiration." Some are from large, established R&D shops with reputable firms prosecuting. But each of those cases are to a different assignee, and in a different continuity chain, and not from a governmental organization funded by the taxpayers... -aaron
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Thanks for the added detail, LBE. I've got a feeling there are many good backstories here. As for the 102(e) question, another commenter raised that in response to Tuesday's post. The answer is that voluntary publication under 1.221 would likely have sufficed to get a 102(e) date (it counts as a publication "under 122(b)", as required by 102(e)), and would certainly have saved taxpayers thousands of dollars. Like the $930 it spent just last year on the 4 year maintenance fee for the '010 patent. (How'd I miss that...) Of course, the other big story here is to note that the PTO has absolutely no problem taking your money for all those fees... -aaron
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Rob, 154(d) would only apply if the Army had gone the publication route. That didn't happen here. -aaron
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Great. Now I will have to warn my kids about the trolls under the sukkah. Just when they thought it was safe...
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Good question, Garrett. Assuming the Army's goal was to get a 102(e) date for this application, you are asking if a voluntary publication would suffice. (102(e) requires the application to be published "under section 122(b)", and it's not clear that voluntary publications are so published.) The relevant MPEP section is 1133, which states: If an applicant wishes the Office to publish a utility or plant application filed before November 29, 2000 under 35 U.S.C. 122(b), applicant may file a request for voluntary publication under 37 CFR 1.221. It's not case law, but based at least on this passage, I'd say a voluntary publication gets a 102(e) date. -aaron
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Thanks for the comments, GoBlue. You're not the first to make this criticism... it seems to be a hot-button issue of prosecution style (and I've heard this Tip from more than "young attorneys"). I agree that clients (and pro se applicants) do like the background, and that a Background section can help make the spec read more cleanly. But my point is that the distinguishing characteristics do not need to be spelled out in a "Background" section -- there's no reason those same arguments can't appear in the Detailed Description, instead, where you may not risk overadmitting what was known in the art. Clearly something seems amiss when the Background is significantly longer than the rest of the spec. Finally, I'll posit for argument's sake that it may not always be in your clients' best interest to draft a "work of art" as an application, and that "drivel" --either uninspired or inspired--may be more valuable in the long run. I'm sure you don't need me to provide you examples where this "technique" has been used (or, as some would say, abused). And, not for argument's sake, I'll say that not every application needs to be a Cadillac; sometimes a Chevy will do the job just as nicely. Go Blue back at you. Nice to see the Wolverines winning again. -aaron
Toggle Commented Sep 23, 2009 on The Onion Gets a Patent at 12:01 Tuesday
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Perhaps you're right, Dave (& Les) -- the server with a hard drive containing the program should infringe, too. But the analysis still is not as clean. For example, you'd have to ask whether downloading a program from a server constitutes an infringing *use* of the server -- it's not a sale of an infringing product as we had in the CD scenario. And the "use" now would be simply the act of downloading/copying, and not the execution of the embedded method steps (which are almost certainly performed on the end user's machine.) Does that suffice? Consider the topic open for discussion.
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Thanks, Les. I'm sure some (not I) might say that the Nuijten decision serves to highlight the absurdities of Beauregard claims... And you're right -- the downloaded program would probably still cause the local hard drive to be an infringing product. But this changes the analysis from direct to indirect infringement, and it may not adequately account for programs that are now being run "in the cloud", such as Google's office apps. It certainly isn't as cleanly captured by Beauregard as it was in the old model of buying an installation disk from a merchant. -aaron
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To add some color to the debate, it may help to know that the "other art" cited by the Examiner were patents 2,783,637 and D225,301: http://www.google.com/patents/about?id=k19dAAAAEBAJ&dq=2783637 http://www.google.com/patents/about?id=9vo8AAAAEBAJ&dq=D225301 Some of those keys do have an elongated shape that conceivably could fit more nicely in a collar to act as a stay. This shouldn't affect the 102 analysis. Had the Examiner argued a 103 combination, however, the analysis would likely differ, though I'd expect the same ultimate result. -aaron
Toggle Commented Aug 27, 2009 on A key is not a collar stay at 12:01 Tuesday
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Broje, I criticize rejections all the time. There's a stack of such criticisms sitting on my desk, waiting to be filed as responses to pending office actions :) But seriously, because the blog is somewhat limited to *issued* patents, by its very nature the false positives will outweigh the false negatives, right? You can't tell from the face of a patent that an allowed claim was once rejected... For the record, the blog has noted other cases when the BPAI has reversed examiner rejections. See http://www.1201tuesday.com/1201_tuesday/2009/04/jaywalking.html for example. -aaron
Toggle Commented Aug 25, 2009 on A key is not a collar stay at 12:01 Tuesday
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So perhaps they were anticipating the spike in appeals when they introduced the Pre-Appeal Conference... but it was like trying to use an umbrella to protect against a hurricane.
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It's even more interesting that the upturn happened about the same time as the introduction of the Pre-Appeal Conference Brief (7/2005), which was supposed to help eliminate the necessity of filing appeal briefs in many situations.
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Yes, 101 says processes are patentable. But Section 100(b) gives a circular definition for "process", so perhaps it is not so clear...
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1. A method of synthesizing a set of digital speech samples corresponding to a selected voicing state from speech model parameters, the method comprising the steps of: dividing the speech model parameters into frames, wherein a frame of speech model parameters includes pitch information, voicing information determining the voicing state in one or more frequency regions, and spectral information; computing a first digital filter using a first frame of speech model parameters, wherein the frequency response of the first digital filter corresponds to the spectral information in frequency regions where the voicing state equals the selected voicing state; computing a second digital filter using a second frame of speech model parameters, wherein the frequency response of the second digital filter corresponds to the spectral information in frequency regions where the voicing state equals the selected voicing state; determining a set of pulse locations; producing a set of first signal samples from the first digital filter and the pulse locations; producing a set of second signal samples from the second digital filter and the pulse locations; combining the first signal samples with the second signal samples to produce a set of digital speech samples corresponding to the selected voicing state.
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C'mon, Les.. I know you've made this argument before, but even you must admit that your quoted passage (which you apparently read the "if" to be "if AND ONLY IF") still requires there to be *some transformation* of the data in the first place. Otherwise, any claim that mentions a particular type of data automatically passes. The data here isn't even being transformed, here. So regardless of what it represents or where it was obtained, if it isn't being transformed then it can't pass Bilski's transformation prong. Agreed? -aaron
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Thanks, Lazarus.. you're right, I need to do more searching. My searching was only on issued patents, not PGPubs. And I was not aware of the Barfield or Gallagher patents, so thanks for sharing. The guy I'm thinking of is a bigger name than both of those. If my kids let me off with an easy bedtime tonight, I'll post about it in a few hours. And I'll take a look for that Gutman book, too. -aaron
Toggle Commented Jun 18, 2009 on Major League Patents at 12:01 Tuesday
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Congrats, Matt -- you've set a 12:01 record for reply length! I understand your point, but I disagree. While a patentee can be his own lexicographer and define terms like "kerplunking", it's also true that claim terms should be given their ordinary and customary meaning unless it is clear that the patentee intended otherwise. I don't think that's the case here. One solution might be for the patentee to expressly define those terms in the spec (e.g., "the term 'receiving' as used herein means electronically obtaining a transmission from..."). Most inventors (and attorneys) I know don't want to make such limitations, even though it may be the best approach in some circumstances. I also think your 'inherency' argument can be played at certain times, as discussed in a few posts on this blog (see, e.g., Ex Parte Borenstein discussion). But not here. Also, recall that the machine test was never at issue in the Bilski claims -- it was all about transformation, as Bilski admitted. I don't see any reason why the "receiving" and "automatically performing" language here imply a particular machine any more than the "identifying" and "initiating" claims of Bilski. (And I'd like to -- if I could, I'd have a good response to a few of the Office Actions sitting on my desk...) Of course, the spec of the Bilski app is not public, so we can't be sure. But if it is anything like Bilski's other app (published here: http://www.google.com/patents/about?id=JgOGAAAAEBAJ&dq=2003/0233323 and curently on appeal for a statutory double patenting 101 rejection), then we can see that it also should "inherently" be tied to a machine. Right? As to your last example about the camera, I'd suggest that the "transformation" prong is a better way to analyze under Bilski for image-related claims. -aaron
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