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Topics - JimIvey

In several recent topics, my mind keeps turning to CIPs and wondering whether the AIA breathed some life into them.  Years ago, I posted a table to try to figure out whether it ever makes sense to file a CIP under pre-AIA 102.  At the time, several were of the opinion that CIPs never made sense.  I searched for the table but couldn't find it.  So, instead of reviving a really old thread, I'm staring a new one.

Parent not published prior to CIP filing.Not prior art.n/aNot prior art.
Parent published less than one year prior to CIP filing.Prior art.Not prior art.  Disclosure in the parent made by an inventor.Nor prior art.
Parent published less than one year prior to CIP filing.Prior art.Prior art.Prior art.

Same inventor(s).Not prior art.n/aNot prior art.
Names another inventor.Prior art.Not prior art.  Disclosure in the parent made by an inventor.Nor prior art.

If I'm not mistaken, it looks like the AIA is much kinder to CIPs.  It looks like the only time the parent would be prior art is when it was published more than a year prior to the filing date of the CIP.

I think I already know the answer to this, but I'll ask anyway.

I received a 101 rejection because a "tangible" CRM includes a carrier wave.  Yes, touch the rainbow, touch the carrier wave.

I'm annoyed because I'm tired of fighting the stupid.  I'm not saying examiners are stupid.  I've met a few and they're nice people, mostly.  However, a few examiners do stupid things.  And, saying you can touch a carrier wave is stupid.

Is "non-transitory" really the only allowable CRM?  Isn't there some Fed. Cir. decision that says "tangible" is sufficient?  Does the MPEP say that "non-transitory" is preferred but that "tangible" is also acceptable?

I know I'll probably end up amending the claim (the OA is non-final).  But how many times do I have to convince the PTO that the English dictionary is still a meaningful guide to claim interpretation?

We filed a response after final, the examiner initiated a telephone interview, and then issued an advisory action raising a new ground for rejection.  At first, the client wanted to have me prepare a response to be filed with the RCE to address the new grounds for rejection.  But the client went ahead and filed the RCE using the previously filed AF response as the submission.

I don't file many RCEs, so I tried to look up (i) whether we could file a supplemental response before the next OA and (ii) if so, what are the risks/consequences of not doing so?  I couldn't find anything (easily).

Does anyone have any thoughts?  or clues as to where I should look to find the answer?

I hear that this is a new and trendy rejection for computer-implemented inventions.

QuoteClaim(s) __________ are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement.  These claims are directed to a genus without sufficient written description.  More particularly, the claimed invention(s) appear(s) to be directed toward either generic and/or undisclosed computer programs (i.e. algorithms) which are merely generically described in the Specification (i.e., when the software is executed by a generic computer, undisclosed algorithms operate on generically described variables for the purpose of achieving a desired functionality). However, "Generic language in the application as filed does not automatically satisfy the written description requirement."  See MPEP 2161.01(I): Ariad Pharmaceuticals Inc. v. Eli Lilly & Co., 94 USPQ2d 1161, 1172 (Fed. Cir. 2010).  "[A] sufficient description of a genus ... requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can 'visualize and recognize' the members of the genus."  Id. at 1171.

WTF?!?!  Notice the mental jujitsu in melding "generic" into "genus"?  You only need to see the first 3 letters to see that the two words are synonymous.

There is so much wrong with this that it's hard to know where to begin.  Notice the rejection mentions undisclosed algorithms.  Some of you have seen my work.  I always include flowcharts or their equivalent in my applications and IGT says that such is adequate disclosure of an algorithm. 

I took a peek at MPEP 2161.01, thinking the examiner was out of her mind.  Nope, MPEP 2161.01 more or less says the same thing without any legal authority whatsoever.   No guidance as to what's "generic".  No guidance as to when an algorithm is undisclosed.  And absolutely no guidance as to when "generic" melds into "genus". 

Once it gets to genus, it cites just one case: a pharma case in which only one species of the claimed genus was shown to work as claimed.  The Fed Cir made a big deal about how this particular technology was unpredictable and how proving that one species of the claimed genus would work as claimed does not prove that any other species of the genus would do so.

Here's the response I came up with. 

QuoteThe Office Action cites Ariad Pharm. Inc. v. Eli Lilly & Co., 94 USPQ2d 1161, 1171,  598 F.3d 1336 (Fed. Cir. 2010) ("a sufficient description of a genus ... requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can 'visualize or recognize' the members of the genus.").  The Office Action continues to assert that claims _________ claim a genus of species that include "all algorithms which can achieve the claimed result/functionality (e.g., [claim elements])".

Applicant respectfully submits that the Office Action confuses species with embodiments.  37 C.F.R. § 1.146 refers only to "patentably distinct species."  In addition, the MPEP makes this abundantly clear: "In making a requirement for restriction in an application claiming plural species, the examiner should group together species considered clearly unpatentable over each other."  MPEP § 806.04(h), "Species Must Be Patentably Distinct From Each Other."  The court in Ariad went to significant lengths to establish that the technology at issue was particularly unpredictable:  "Lilly offered the undisputed expert testimony of David Latchman that the field of the invention was particularly unpredictable.  Thus, this invention was made in a new and unpredictable field where existing knowledge and prior art was scant."  Ariad at 1353.  Therefore, teaching that a particular compound of the genus functions as claimed doesn't mean that other compounds of the genus do so.  In contrast, computers are created by human beings and are designed to function exactly as instructed by humans, even faithfully carrying out erroneous instructions given by a fallible human computer engineer.  Accordingly, computer function is much more predictable than chemical interactions.

Thus, multiple embodiments covered by a claim are only "species" rather than mere embodiments if they are patentably distinct from one another.  The Office Action did not even allege that any of "all algorithms which can achieve the claimed result/functionality (e.g., [claim elements])" are patentably distinct from one another.  Absent some showing that embodiments of a claim are patentably distinct from one another, Applicant respectfully submits that the claims do not recite a genus having multiple species and that the rejection under 35 USC §112(a) or 35 USC §112 (pre-AIA), first paragraph, is improper and should be withdrawn.

Any thoughts, comments, improvements? 

Thanks in advance.
Okay, this sort of thing doesn't happen to me often.  But weird things happen when a case is prosecuted by different people.

Claims were rejected under references A, B, and C.  The claim were amended and filed with an RCE.  New practitioner handling the next OA sees that the amendments weren't needed and unnecessarily narrow the claims.  So, an amendment is filed to undo the last amendment and new (ultimately persuasive) arguments are filed.

In response, the next OA is final with a rejection under A, B, and D.  Of course, the fOA includes a statement that the new grounds were necessitated by the amendment.

I have two reasons to say that they weren't.  First, the claims in their current, amended form are in a form previously presented and previously rejected under A+B+C, same as the last rejection.  Second, the fOA says, "Although the A/B/C system discloses the invention, a new ground of rejection has been made in view of A, B, and D."  So, the examiner has stated that A+B+C could be used to reject these claims.  Doesn't that mean that the new ground of rejection wasn't necessitated by the amendment?

So, the 2014 IEG is a normal FR thing and you cite it accordingly.  And, one page of the July 2015 Update is the same.  So, I cite:

Quote"July 2015 Update on Subject Matter Eligibility" 80 Federal Register 146 (15 Jul 2015) at 45429 (the "July 2015 Update"), which is an update to the "2014 Interim Guidelines on Patent Subject Matter Eligibility" 79 Federal Register 241 (16 Dec 2014), pp. 74618-74633, ("The Interim Eligibility Guidelines" or "IEG").

I can cite specific pages of the IEG, e.g., IEG at 74624.  But the substance of the July 2015 Update is not in the FR but is instead in the form of a handful of PDFs you download from the USPTO website.  And, each PDF starts at page 1, so there are multiple page 1's in the July 2015 Update.  I think I've seen a reference to "A1 2" to cite page 2 of Appendix 1 -- or maybe something like "2A1".

Any ideas (or actual knowledge if you have some) as to how to cite specific pages in the July 2015 Update?

Okay, now I have it in writing.  In a final OA:

One way of arriving at the abstract idea for a computer-implemented method is to ignore all the physical components of the claim and consider the remaining intangible functional features to be the full abstract idea.  Examiner believes this is a non-arbitrary, and the correct, way to define the scope of the abstract idea for the preemption analysis.

Why look for an abstract idea in a claim (like the law requires) when you can just start with the claim itself as the abstract idea?

I wonder if the examiner is on the 101 panel....  After a couple rounds over Alice, the case was transferred to the new examiner and the new fOA goes into significant detail defending (without citing any law at all) the application of Alice as follows: strip all functional language, then see if a generic computer could be programmed to do whatever remains.  Garbage.

I'm responding to a first, non-final Office Action, and the client has decided to take a dramatic turn in strategy.  In effect, we'll be cancelling all claims and submitting new ones. 

Back in my early law firm days, someone reviewing my work told me never to do that.  I didn't understand why at the time, so I don't remember.  Instead, he had me make extensive amendments to one claim so that it's still there and cancel the rest, replacing them with new claims.

Out of sheer laziness, I don't want to do that.  I also think the examiner would rather see the very different claims cleanly and not all marked up.

Is there a reason to not cancel all claims?

The Chinese associate wants a "color scan of a certified copy of the priority document."  WTF? 

I dug around a bit and found form SB/0038 that gives the USPTO to provide priority documents electronically.  The new AIA declaration includes a checkbox that does the same thing.  However, assume the checkbox is not checked or that the declaration hasn't been filed yet.

I need to have this resolved in about a week.  My hope is that filing the SB/0038 today will allow SIPO and USPTO to cooperate and resolve the issue in about a minute on Monday.  But, what if that doesn't do it?

I'm looking around for any guidance on getting a priority document to me within a few days so that I can "color scan" the black and white document to e-mail to my Chinese associate.  But I'm finding nothing.   It looks like all of the old paper ways are gone.  My Chinese associate is out for the weekend already and I'm really worried about waiting until Monday to try to expedite a paper certified copy here when so few days are left to get this done.

Any ideas?

Many thanks.
After having claims rejected under Alice for not having novel and non-obvious hardware for the umpteenth time, I decided to hit this issue as hard as I can -- particularly since I expect to be copying and pasting this argument many times.  I decide to share my argument here so that (i) others can offer improvements and (ii) others can tutor examiners in the same way.

I end the Issue portion of IRAC, after establishing that the examiner has rejected the claims for failing to include non-obvious hardware, with:

QuoteApplicant respectfully submits that this evidences a fundamental misunderstanding and misapplication of the law established by the Supreme Court in Alice Corp.

Then, I immediately proceed to the Rule portion of IRAC.

The Alice Court did not suggest that a claim is patent ineligible if its steps could be implemented in a routine way or if the recited method could be implemented on a generic computer or any other "routine" or "generic" hardware.  The Alice Court did not require novel or non-obvious hardware recited in the claim to be patent eligible.  Instead, the Alice Court held that a claim is patent ineligible when it recites a computer implementation of an abstract idea so generically as to effectively pre-empt all computer implementations of that abstract idea.

In Alice Corp., the Supreme Court described the second, "significantly more" step in determining patent eligibility: "the relevant question here is whether the claims here do more than simply instruct the practitioner to implement the abstract idea ... on a generic computer."  573 U.S. at ____ (slip op., at 14) (emphasis supplied).  In other words, a claim that effectively recites implementation of an abstract idea and nothing else in a generic and routine manner does not recite "significantly more" than the abstract idea itself.

"A claim that recites an abstract idea must include additional features to ensure that the claim is more than a drafting effort designed to monopolize the abstract idea."  573 U.S. at ____ (slip op., at 11) (internal quotation marks omitted) (emphasis supplied).  The Court further held that "transformation into a patent-eligible application requires more than simply stating the abstract idea while adding the words 'apply it.'"  Id. (internal quotation marks omitted).  Thus, a claim recites significantly more than the abstract idea itself when it seeks to monopolize significantly less than the whole of the abstract idea.

The Alice Court stated, "We have described the concern that drives this exclusionary principle as one of pre-emption."  573 U.S. at ___ (slip op., at 5).  The Court further quoted Bilski v. Kappos, 561 U.S. 593 (2010) that upholding the patent "would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea."  Id.  Thus, a claim recites "significantly more" than the abstract idea and is patent eligible when it does not effectively pre-empt the entirety of an abstract idea or all machine implementations of the abstract idea.

Here, claims 1-n would recite significantly more than an abstract idea if they do not pre-empt all ways and fields in which one could implement [insert your abstract idea here].  In the words of the Alice Court, "the relevant question here is whether the claims here do more than simply instruct the practitioner to implement the abstract idea of [ -insert your abstract idea here- ] on a generic computer."  573 U.S. at ____ (slip op., at 14) (emphasis supplied).

Note that I use this argument when the proffered abstract idea appears reasonable on its face.  In one case, the proffered abstract idea was "organizing human activities", so it wasn't hard to show that my claims do not attempt to effectively pre-empt all implementations of organizing human activities.

I feel like the numerous quotes are a bit of "piling on" and hurt the flow of the argument.  I think flow is important in an argument -- the simplest and clearest arguments are the most persuasive.  But, like I said, I want to hit the PTO hard with this issue because their application of Alice is just silly and thoroughly annoying.

Thoughts?  Feel free to edit the argument.  All feedback is welcome.

I'm travelling, so apologies for not linking up all the pertinent posts and such....

I'm seeing a lot of the rejections I predicted:  summarizing a claim, declaring that the summary (which includes sending/receiving specific types of data to make specific decisions, etc.) is an abstract idea, then finding that the claim doesn't recite "significantly more" than the entire claim summarized. 

Someone linked to an article that argued that only economic practices that date back a few centuries are really "abstract ideas".  I think that's an interesting notion, but the Court never explicitly stated that and, as I've observed numerous times, the PTO doesn't do nuance, unless it helps reject a claim rather than allow it.

But, I'm coming up with something less than centuries-old economic practices but still effective against these ridiculous rejections.  I don't believe I've ever seen a court opinion that's held that specific types of data manipulation by a computer is an abstract idea -- specific types recited in a claim, not the basic idea that a computer can manipulate data.  The computer seems to only come into the analysis of what's "significantly more" than the abstract idea. 

Has anyone come across a court opinion in which physical manipulation of specific types of data to make specific decisions has ever been held to be an abstract idea and not just used on the "significantly more" analysis?

I would like to argue that nothing that passes the machine-or-transformation test could ever be an abstract idea, though it seems clear that requiring a machine or transforming matter might not be enough "significantly more".

Just curious how pre-orders/pre-sales count in trademark use.  A website uses the mark to solicit (and gets) pre-payment for goods that don't exist yet.  Does that count as actual use?

Quote from: khazzah on 01-07-15 at 12:01 AM
So sometimes the Examiner uses the magic word "Official Notice" and sometimes he does something close enough that we can call him on it.

But what about instances where Examiner uses something that may be more like "common sense" or "common knowledge" as discussed in KSR and it's progeny? It's not clear to me that this is equivalent to taking Official Notice, nor that documentary evidence is required for such instances.

Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009):
QuoteWe therefore hold that while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.
In re Nouvel, 493 Fed.Appx. 85, 92 (Fed. Cir.2012):
QuoteWe have required that rejections grounded in "common sense" must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness.

If this is a reduced standard with loopholes for findings of fact, then it sure sucks for Applicants. Sure, "explicit and clear reasoning" that's "rational" is *something* but it's a lot less than an evidentiary showing.

I'd really like to have a better idea about what exactly is required to successfully challenge/traverse Official Notice or "common sense."

In Perfect Web Techs., Inc. v. InfoUSA, Inc., the only new step involved repeating the known steps until a desired level of success is achieved.  It would be challenging to argue that such was not obvious.  As the court noted:

Quotethe district court explained: "If 100 e-mail deliveries were ordered, and the first transmission delivered only 95, common sense dictates that one should try again. One could do little else."

It's hard to argue with that.  But I'm wondering what would be required to force the PTO to present evidence to that effect.

The facts in In re Nouvel were more sympathetic to the applicant.  The "common sense" employed by the PTO was thickening just one arm of pliers (though this was disputed in the dissenting opinion).  Here's the applicant's traversal/challenge:

QuoteBecause gripping forces are distributed equally between both arms of a pair of pliers, Nouvel contends that a tool having one stronger and one weaker arm is no stronger than a tool having two weaker arms. Thickening only one of Liou's arms, Nouvel argues, would only add undesirable weight and material cost to Liou's pliers without actually strengthening them, and so the Board's approach would be contrary to a skilled artisan's goals.

Nouvel actually provided evidence supporting their argument, in the form of expert testimony.  Here's how the court summed up Nouvel's challenge/traversal:

QuoteIn its briefs and at oral argument, Nouvel provided multiple reasons, grounded in mechanics, why an ordinary artisan aiming to increase strength by increasing size would enlarge both arms of the pliers.

I'm curious where the line between the cases lies.  Nouvel provided expert testimony at the Fed. Cir. (not sure they provided something similar to the PTAB).  Has the burden shifted to the applicant?  Are we now required to prove a negative?  Should we all start employing experts whenever "common sense" is used to reject a claim?  Or is it enough to challenge with reasoned logic that the ordinary artisan wouldn't make the assumptions that the PTO does?

Actually, using an expert probably isn't as hard as it might seem.  The inventors usually know somebody who can fill that role at a reasonable price.


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