Bulletin Board for Computer Law 484: Patent Law — Spring 2005+
Business Method Clinical Project

Current Items

• This bulletin board will be maintained during the life of this project and will be updated from time to time when events occur.

• We will meet as scheduled at 6 pm to 8 pm, at Conference Room B on the 4th floor of Kellogg Huber Hansen Todd & Evans, 1615 M Street NW - Suite 400, Washington, DC 20036. Just go to the 4th floor reception desk. If there is a problem, call 326-7900 or 7950.

• Use this link for the original claims. Use this link for the specification. See also Fig. 1; Animation of Fig. 1. See below for prosecution record of office actions, amendments, etc.

  Project objectives:

• The purpose of this project is to explore the contradictions that the current body of case law in the CAFC has created in the § 101 field — in particular, in regard to business methods, algorithms, and claims directed to playing golf, selecting jurors, incentivizing employees, and the like. The way that we will explore these contradictions is via a clinical project: the presentation to the PTO of a patent application on subject matter that in a rational world would not be permitted to be the subject of the patent system — perhaps, because it was not what MacPherson and Jefferson would have recognized as being within the useful Arts. In this first test case, the claimed subject matter is computerized voodoo, which intuitively is not within the useful arts.

• The plan for the project is to get a § 101 final rejection on claims that CAFC case-law deems statutory subject matter — for example, under In re Lowry or State Street Bank — where the subject matter is nonetheless intuitively hopelessly unpatentable. It is believed that an appeal to the CAFC will be successful, because the court will not likely be willing to recognize the problems (indeed, possible absurdities) of its case-law since Alappat and State Street Bank. (Of course, miracles do happen and the CAFC might overturn its case-law in this field and revert to a more well reasoned approach. In that event, this project will have been successful in a startling and wholly unexpected way — and will have been a pedagogic failure, in another way.) Upon the CAFC's reversal of the PTO as anticipated, at that point the only thing left for an honorable scholar to do is to advise the PTO Solicitor that the applicant will not oppose certiorari, given the public importance of the subject matter. (By that, I don't mean the public importance of computerized voodoo. I mean the public importance of getting the judicial treatment of § 101 set right.) Then, perhaps, we will find out if the Court will swallow the doctrinal mess that the CAFC has cooked up under § 101 or will reshape the law, say, in the direction it was going about 30 years ago.

• It is a major consideration in carrying out this project to push the envelope to or beyond its limit, indeed to a reductio ad absurdum of the case-law. Nonethless, it is important not to be offensive in language or disrespectful in a manner that will substantially antagonize those who will become involved with this matter. We may be trying to make a court or others recognize that the case-law has gone too far in some directions, and needs correction, but it is not our purpose to antagonize them. So, we all need to remember to watch our language. No flaming the examiner, PTO, CAFC, or patent system! At least, not on the record.

  Preliminary Project Matters (somewhat dated material)

• Let's read enough case law in the current chapters (and Bowman, Lundgren, and Ferguson) so that we can think meaningfully about how to write a specification, rejection, amendment (with arguments), Board opinion, CAFC appeal brief. Also, let's improve the claims to take full advantage of the case law. Maybe we'll even file it as a sort of clinical project. See whether you can find any prior art. The only art that I have located so far that seems remotely relevant is this: Aggression - relieving stuffed doll and Children's wishing game. See if you can do better in searching than I did. Here is some further art that I did not consider highly pertinent, but maybe I am missing the point. You can get these patents on the PTO Web site: Lamson, 6,425,764; Hodges, 6,012,926; Densky, 4,717,343; Weathers, 5,219,322. Maybe I am suffering from “It’s 102 or blue.” These references use computers and have therapeutic contexts, but that's like saying In re Grams and a video game makes everything in this field unpatentable. (Sounds like what the PTO argued in In re Lee, 277 F.3d 1338 (Fed. Cir. 2002).)

• 

  I just located a very close reference, although it is distinguishable. (Cache link.) You must have Java loaded to operate this page. Is this reference bad enough to create a § 103 problem? How is this reference best distinguished? Does it contain all elements of the claimed invention? For those claims, if any, for which this is not so, do selected elements of this and a second or several references combined together supply all the elements of the claimed invention, combined in the manner in which the present invention combines them? If so, consult the Lee case, above, for what the next step must be for a rejection to be sustained. What would the examiner or Board say in response to your In re Lee argument?
  
  Does this reference call for any additional limitations to be added to any claims? Does it suggest adding any further claims? Is it nonpurgeable misuse not to cite this reference?

• This is a reference to a PTO template for making § 101 rejections. Please apply this to our proposed claims to the extent it is applicable. Also, use the Board opinion in Ex Parte Ferguson for the same purpose. Suggest responses or amendments to the claims.

  In reading the claims, you should think about why they were so written, and what case-law from Chapter 8 suggested writing them in a particular way. Read Lowry in Chapter 9, too. (The claims were written in a manner to come within the CAFC's statements in certain decisions in the course materials.)

  Prosecution History

  Link to PTO PAIR (information retrieval) site for this application, providing access to all papers. If you have a problem, gain access by entering 11/166991 as application no. at PAIR portal ( http://portal.uspto.gov/external/portal/pair ).

• Application filed June 27, 2005, with petition to make special (under the PTO rule creating an irrebuttable presumption of imminent death at age 65). Original claims and specification. See also Fig. 1; Animation of Fig. 1.

• The PTO granted (Nov. 18, 2005) the petition to make special. A telephonic restriction (Dec. 2005), in effect, knocked out claims 15 and 20. The invention has been classified into Class 434 — EDUCATION AND DEMONSTRATION; Art Unit 3721. (Not Business Methods.) Upon receipt of the first merits action, which will confirm the election of Group I (cls. 1-14, 16-19), the applicant is entitled to traverse the restriction. Do you consider that worthwhile? [We did not traverse. Needless delay. Also, test case good enough without those claims.]

• A first office action (Jan. 6, 2006) on the merits is posted at this link.

• Here is the Amendment filed in response to the first merits office action (Jan. 26, 2006).

• Here is the Second Office Action on the merits (mailed May 23, 2006). Here's the Larson patent on which the PTO relied. What's wrong with it as a prior art reference?

• Here is the Amendment filed (July 31, 2006) in response to the second merits office action.

• The case has now (Oct. 12, 2006) been assigned to a different examiner. (Apparently, the previous examiner left the PTO.) The application was published Dec. 28, 2006, and is at these links: PTO text link; Free Pats. On-line link. Still waiting for next office action!

• The next office action may take a long time to come – perhaps after the end of this semester. 35 U.S.C. § 135(a) provides: “An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.” The claims now stand rejected twice. What are the pros and cons of appealing now to the Board instead of awaiting a further examiner action?

• Link to current version of claims pending before PTO. Link to worksheet for amending claims during classroom discussion. (Print out copy to mark up with your notes.)

• Link to non-final rejection mailed March 19, 2007.

• A question has been raised about the use of this language as possibly being indefinite: "monitoring said first person's level of fear, anger, or negative thoughts or feelings by receiving and monitoring an input reresentative of said first person's blood pressure, pulse rate, sweating, or other measurable physical parameter representative of a level of fear, anger, or stress; . . ." It was suggested that MPEP 2173.05(b)(F) may indicate existence of a problem. That section reads: "The term 'or like material' in the context of the limitation 'coke, brick, or like material' was held to render the claim indefinite since it was not clear how the materials other than coke or brick had to resemble the two specified materials to satisfy the limitations of the claim. Ex parte Caldwell, 1906 C.D. 58 (Comm'r Pat. 1906)." What do you think? Does "or other measurable physical parameter representative of a level of fear, anger, or stress" resemble "or like material" in "coke, brick, or like material"?

• Link to non-final rejection mailed Nov. 29, 2007.

• Link to Amendment of Feb. 2008 filed in response to Rejection of Nov. 2007.

• Link to non-final rejection mailed June 18, 2008.

• Link to Amendment of Aug. 2008 filed in response to Rejection of June 2008.

• Link to non-final rejection mailed Dec. 9, 2008.

• Link to current draft Amendment

Convenient Links Claims currently on file Worksheet for amending current claims Discussion version of current amendment Main bulletin board for patent class Bulletin board for clinical project

This page was last modified: