Patent tips, some useful, some not.

Ex Parte Moncla - BPAI Opinion

2011-03-15T12:14:00.000-07:00

This pecedential expanded board opinion of the Board of Appeals and Interferences would be interesting, but no reasoning is presented. Basically claims were rejected under both 102 and 103 by the Examiner. The board reversed, but does not explain why. I hope this is not a precedent as I find it quite useful to see the board's reasoning.

I'll show you my affinity if you show me yours.

2011-03-13T21:23:00.000-07:00

Microsoft has filed a patent application that allows users of a dating site to indicate hidden interests. A user can then find matches based on these otherwise unseen preferences.

As the patent says:

"For example, an ambitious professional is not likely to divulge that he likes, say, comic books, even though quite true. Appreciably, certain affinities especially those relating to fringe interests, eccentricities, or topics about which there is a common misconception or very little mainstream familiarity or understanding are generally omitted rather than included in conventional descriptions."

I'm guessing this is quite useful for interests for which the acronym 'nsfw' was invented.

The America Invents Act

2011-03-13T20:52:00.000-07:00

Patents, like Sergeant Pepper's Lonely Hearts Club Band, go in and out of style. Patents have had a tough go of it lately, what with Orrin Hatch saying "Our patent laws should be in the iPad age, not the sock hop age."

On March 8, 2011, the Senate passed S23, the somewhat cheekily named "America Invents Act," previously and more descriptively called the 'Patent Reform act of 2011'. What do I, unnamed blogger, think? It's a mixed bag. In the really really good column, patent fees will no longer be diverted away from the USPTO, as they have been in the past, creating budgetary problems for the office. A fully funded USPTO is a happy USPTO, filled with happy non-overworked examiners. Yes.

Failure to disclose a "best mode" will no longer invalidate patent claims.

In the 'neutral' column, the act would, eventually, make the patent system "first to file," standardizing the US system with most of the rest of the world, and freeing associates everywhere from hours of prior art searches during litigation.

The bill formerly had a section 18 which would have made business methods more difficult to patent, but thankfully it appears to have been removed.

The text of the Patent Reform bill can be found here.

Hyatt v. Kappos or Sec. 145 is more interesting than you thought

2011-03-13T18:42:00.000-07:00

The Federal Circult en banc decision in Hyatt v. Kappos 625 F. 3d 1320 concerns a hithertofore obscure section of 35 USC, the 35 USC 145 civil action to obtain patent, which reads, in part:

An applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134(a) of this title may, ... have remedy by civil action against the Director in the United States District Court for the District of Columbia ....

The short version of the case is that the inventor Hyatt introduced new evidence--never presented to the patent office--during the civil trial. The Federal circuit said "fine."

Here's a copy of all 80 pages of Hyatt v. Kappos via Google Scholar.

Europeans never discovered the moldboard plow

2010-01-18T11:26:00.000-08:00

Europeans, for a thousand years, approx., plowed their fields with various varieties of sharp sticks. The Chinese used a plow shaped like a v with the arms curved out. This was much more efficient and easier to use. It wasn't until the 1600's, when Dutch sailors brought Chinese plows to Europe, that Europeans adopted this improved technology.

Creating a new thing is difficult, even when similar things exist in a culture.

From the book 1491, thanks to Google books for the citation.

Preamble techniques.

2009-11-16T13:11:00.000-08:00

Any extra word in a claim "can and will be used against you in a court of law." Thus on the one hand, recitations in a detailed preamble may unduly limit the claim in unintended ways. By contrast, a generic preamble can never get you in trouble in that regard.

On the other hand, detailed-preamble claims can serve any number of useful purposes. The trick is to draft detailed preambles with our eyes open.

The pivotal issue is not the length of the preamble, per se, but coming to grips with what legitimate function (if any!!) is served by any particular preamble detail—be it a single word, a phrase or a whole paragraph.

It is important to note that a claim's preamble limitation can be deemed limiting when one goes to enforce the claim, even though the preamble limitation was given no patentable weight during prosecution, and thus did not help to secure the claim's allowance. Such a preamble limitation will have given up claim breadth without having received anything of benefit in return.

Consider the following claim to an automobile floor mat.

An automobile floor mat comprising

a semi-rigid monolayer having a gradually sloping edge portion extending outward from a central section, said edge portion terminating in a lip disposed at an elevation above the central portion, the lip having a plurality of indentations disposed a regular intervals around its periphery.

There is nothing in the body of this claim that requires the claimed structure to be an automobile floor mat. Thus an examiner may well regard "automobile" as being a mere statement of intended use and may reject the claim based on prior art disclosing the claimed "semi-rigid monolayer" whether or not the prior art structure was designed for use in an automobile. Or intended to be placed on a floor. Or perhaps even whether it was intended to be used as a mat.

Suppose, on the other hand, that there is no such prior art, so that the claim is allowable as presented above. Although the descriptive label "automobile" was of no help in securing allowance of this claim, it may come back to bite the patent owner when asserting the claim against suppliers of locomotive cab mats that cannot be used in automobiles (because, for example, they are too big). The patent owner will argue that the term "automobile" should be given no limiting effect because it is not necessary to give "life, meaning, and vitality" to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). That argument may or may not carry the day, depending on how the Markman judge understands what the gives-life-meaning-and-vitality test actually means and how that test applies to the invention at hand.

In any event, the Opposing Team will have a field day with this claim, hammering on the notice function that a patent's claims are supposed to serve and arguing that "if the applicant didn't intend to be limited to automobile floor mats, why did he put it in the claim?" The prosecuting attorney makes the job of the licensing/litigating attorney all the more difficult by opening the door for such an argument to even be raised.

Drafting this claim with a generic preamble, viz.,

A manufactured article comprising,

a semi-rigid monolayer…

may thus save everyone a lot of grief. Indeed, it may save the day.

Descriptive labels and modifiers, such as "automobile" and "floor" in the above example, should always be suspected as creating an infringement loophole without providing any countervailing patentability benefit. Other "usual suspects" are advantages and/or intended uses of the invention. Indeed, the reader should have little trouble in conjuring up reasonable technological embodiments in which claims having the italicized preamble language could be argued to be non-infringing even if the limitations of the body of the claim are met:

An optical system in which at least two out of phase light beams of different frequencies are combined with improved output efficiency, the system comprising…

An on-chip debug system for a programmable VLSI [very-large-scale-integration] processor, the debug system comprising…

A high speed rotor of a type applicable for use with a flywheel, the rotor comprising [no flywheel mentioned in the rest of the claim]

This is not to say that a detailed preamble is necessarily a bad thing. For example, certain intended-to-be-limiting recitations sometimes fit better in the preamble than in the body. In that situation, recitations that call out to be placed in the preamble during the course of the drafting the overall claim invariably tie into other limitations in the claim body and/or replicate them explicitly. Such preamble recitations will thus certainly give life, meaning and vitality to a claim and thus can be effectively relied upon in arguing the claim’s patentability.

Below is a claim that uses Dennis’s exemplary detailed preamble. Note how every limitation in the preamble ties into the body of the claim.

A method for content selection of digital media stored in a memory…, the method comprising,

assigning an individual portion of the digital media to a particular portion of the memory based on whether or not the content of that portion includes video data,

selecting one of the individual portions by …..

It is helpful to start out with a generic limitation, and not packing a limitation into the preamble until the structure of the evolving claim makes it clear that it is needed there. This helps protect the preamble from details that can only hurt and not help.

Copied from http://www.patentlyo.com/patent/2009/11/patent-prosecution-tips-drafting-preambles.html#more

Displaying web page creation date in google

2009-09-30T11:28:00.000-07:00

You're practicing a little Google-fu to figure something out, and the top few results look like they're exactly what you're looking for. The problem: When you get to the page, they're completely outdated.

To make sure you know when a page was published before you visit the site, just add the following to the end of the URL of your search results:

&as_qdr=y15

So, for example, the following URL searches Google for "Hackintosh" and displays datestamps on every result:

http://www.google.com/search?q=hackintosh&as_qdr=y15

When you're searching for something and the date is important—you probably don't want to follow an outdated Hackintosh guide, for example—you can quickly identify newer web pages. The operator you add to the end of the URL returns web pages indexed by Google over the past 15 years, but very old items will list as January 31, 2001.

http://lifehacker.com/5239562/display-the-date-a-web-page-was-published-in-search-results

Google can reorder search and news results from the last day, week, a few months, or entire year by adding a small string to the end of the search URL. Just add this string—&as_qdr=d—to the address bar and hit enter. You'll get a custom drop-down box that lets you re-order results based on date. It's great for getting past the same top results you've already looked through, as well as grabbing only the newest links related to gadgets, software, or whatever else you're searching. Sadly it doesn't work on Google Images, but let us know in the comments if it does work on other Google searches.

http://lifehacker.com/384375/filter-google-results-by-date-with-a-url-trick

Copyright outline

2009-09-21T12:47:00.000-07:00

Copyright Law
Spring 2001
Professor Susanna Fischer
Class Outline by
Christopher S. Lee

Exam Notes
1. 3 Hours
2. Problem Questions
3. Apply CR Act to problems
4. Policy Questions
5. Rule-based
6. Know Statutes well
7. Open Book

Answers to Frequent Asked Questions
1. Copyright (CR) protects original works of authorship including literary, dramatic, musical, and artistic works such as poetry, novels, movies, songs, computer software and architecture.
2. CR does NOT protect facts, ideas, systems, or methods of operation
3. CR may protect the way things are expressed.
4. Copies of all works under CR protection that have been published in the U.S. are required to be deposited in the Copyright Office within three months of the date of first publication.
5. Reasons to Register CR
a. To have facts on public record and certificate of registration.
b. Eligible for statutory damages and attorney’s fees.
c. Prima facie evidence if registered w/in 5 years of publication.
6. Registering CR
a. Application Form
b. $30 fee
7. Deposit
a. Unpublished – one copy
b. Published – two copies
c. Photographs for visual works
8. Works created after January 1, 1978 are not subject to renewal.
9. Architectural works became subject to CR protection on December 1, 1990.
10. Only the transferee (by will, by inheritance) can register CR in a diary. CR is the right of the author of the work or the author’s heirs or assignees, not the one who owns the physical work itself.
11. The creator of an original expression in a work is the author. The author is also the owner of CR unless there is a written agreement by which the author assigns the CR to another person or entity, such as a publisher. In cases of works made for hire the employer or commissioning party is considered to be the author.
12. Publication
a. The distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display constitutes publication. A public performance or display of a works does not itself constitute a publication.
b. Publication occurs on the date on which copies of the work are first made available to the public.
c. Publication is not necessary for CR protection.
d. Publication occurs at the discretion and initiative of the CR owner.
13. The owner may transfer all or part of the rights in a CR work to another.
14. Not copyrightable:
a. Names
b. Titles
c. Slogans
d. Short phrases
e. Ideas
f. Concepts
g. Systems
h. Methods
15. Fair Use for commentary, criticism, news reporting, and scholarly reports.
16. Change in own work to make a new claim of copyright:
a. Substantial and creative
b. More than just editorial or minor changes
c. New derivative work
17. You cannot claim CR to another’s work unless you have the owner’s consent.
18. CR notice is now optional.
19. Royalties
a. Private arrangement between author and publisher
b. Copyright licensing organizations
c. Publications rights clearinghouses
20. CR protects the original photograph, not the subject of the photo.

Copyright Duration
1. Works created after January 1, 1978
a. Life + 70 years
b. Joint work – 70 years after life of last surviving author
c. Anonymous, Pseudonymous, Works for Hire
i. 95 years from year of 1st publication; or
ii. 120 years from year of creation; whichever expires 1st
2. Created but not published before January 1, 1978
a. Life + 70 years
b. No expiration earlier than December 31, 2002
c. If published before December 31, 2002, the term will not expire before December 31, 2047.
3. Pre 1978 works in original or renewal term, total term extended for 95 years from date of original CR.

CR Basics
1. Bundle of rights
a. Exclusive Rights
b. Distribution
c. Display
d. Reproduction
2. Right to create and distribute
3. Sect. 106 – Exclusive Rights
a. Public Performance
b. Recordings
c. Separate Right of Performance
4. Exclusive v. Non-Exclusive Transfers
5. Limited duration, then falls to public domain
6. Constitution, Article I, Section 8
7. Trends
a. Increase in CR duration
b. Increase in CR extensions
c. New technologies forcing CR to adapt

Amendments to the 1976 Act
1. Visual Rights Recording Act (1990) – Moral Rights
2. Architectural Works Protection Act (1990) – Buildings
3. Digital Millennium Copyright Act (1998) – Software

Policy
1. CR benefits
a. Artists
b. General Public
c. Assignees and Licensees
2. CR burdens
a. Other artists
b. General Public
3. Economic Analysis

Originality
1. Burrow-Giles v. Sarony (1884)
a. Photo technology
b. Lithography
c. Idea of writing expanded over years
d. Creativity involved making photo
e. Writing v. originality
2. Bleistein v. Donaldson
a. Poster creator suing copier
b. Printer v. Printer
c. Advertisement v. Artistic Expression
d. J. Holmes – Okay to CR ads
e. Won’t establish standard for creativity
f. Keys
i. Originality required for CR
ii. Protect extent of originality
iii. Originality is not Novelty
3. Bell v. Catalda (1951)
a. Engravings
b. Old master payments
c. Originality issue
d. Author must construct something of his own.

CR and other IP
1. CR
a. Originality – Original work of authorship
b. Fixation – In a fixed, tangible medium of expression
2. Trademark
a. Color
b. Source
c. Description
3. Trade Secret
a. Formula
b. Contractual Obligation
4. Patent
a. Novel
b. Invented
c. Useful
d. Non-Obvious
e. Non-Artistic

Originality
1. Low threshold
2. More than trivial variation
3. Recognizable as “own” contribution to work
4. Slippery concept
5. Magic Marketing v. Mailing Services of Pittsburgh (1986)
a. Issue – CR of envelope
b. CT – Envelope not an original work
c. Insufficient originality for CR protection
6. Sweat of the Brow Doctrine – Not upheld by SC
7. Zapruder film of Kennedy Assignation – CR
8. Protects human expression
9. Elements of artistic creation required
10. Translation of Play
a. CR
b. Creative
c. But must have permission
d. Derivative work

Fixation
1. Generally requires some type of recording
2. See Section 102(a)
3. Improv is different from fixation
4. Fixed categories:
a. Copies – Everything else
b. Phonorecords - Sound
5. Example: Tennis
a. Event is not CR
b. Recording of event is CR
6. Anti-Bootlegging provision
a. Title 17, Sect 1101
b. Extension of TRIPS – Trade Related Aspects of Intellectual Property
c. Approved by the Uruguay Round 1994
d. Covers Live musical Performances
7. Right of 1st fixation covers live, physical performances
8. See U.S. v. Moghadam (1999)
a. 11th Circuit upholds Anti-bootlegging law
b. Based on Commerce Clause

Facts & Compilations
1. Sect. 102(b)
2. No protection of simple facts
3. But if selected & arranged – possible protection
4. Database issues
5. Sweat of the Brow Doctrine
a. 1909 CR Act protected Sweat of the Brow
b. SC overturns Sweat of the Brow in Feist v. RTSC (1991)
c. Issue: Can White Pages be CR’ed?
d. SC ends Sweat of the Brow doctrine
e. Directory can be CR’ed, but in this case lacks originality and creativity
f. Mere facts are not copyrightable
6. Compilation Elements
a. Thin CR protection
b. Elements
i. Pre-existing facts, material, data
ii. Selection or arrangement of materials
iii. Original work of authorship
c. May only CR data that has been selected or arranged
7. Nash v. CBS (1990)
a. John Dillinger Biography case
b. Facts, not expression taken
8. Toksvig (1950)
a. Hans Christen Anderson Bio
b. Historical Narrative
c. Sweat of the Brow Case
d. J. Easterbrook
i. Sweat of the Brow dying
ii. But must protect some efforts
iii. Some deference should be given
e. Overturned in Feist
9. Hoehling (1980)
a. Hindenberg Book/Movie
b. Historical Theory
c. J. Easterbrook – Holding goes too far.
10. Dutch
a. Ronald Reagan fictionalized bio
b. Fiction = CR
c. Marketplace of ideas
d. Want to encourage & permit exchange of ideas
11. CCC Information Services v. MacLean Hunter Maret Reports (1994)
a. Used car values
b. CT – CR Protection provided
c. Editors’ predictions and arrangement
d. Selection and arrangement
e. Not public domain information
f. Prediction in assessing value of car
12. Greeting Cards
a. Low threshold of originality
b. Pictures are CR
c. Text may or may not be CR
13. Yellow Pages
a. Compilation
b. Arrangement
c. Generally lacks originality
d. May be CR in particular communities
e. Standard yellow pages generally not CR
f. Ethnic yellow pages may be CR
14. Wrap-up
a. Factual works of histories and biographies may be CR; but underlying facts are not CR
b. Hard work is not CR protected
15. Sui Generis
a. EU Database Directive 96/9
i. Directives – Articles
ii. Article I – Defines a Database
iii. Article II – Only applies to EU member nations
iv. Article III – Generally follows Feist
v. Article VII – Protects Sweat of the Brow; 15 years from Jan. release of database
vi. Article IX – Exceptions
1. Teaching & Research
2. Extraction for non-electronic database
3. Public security
b. U.S. Considerations
i. Misappropriation Theory
1. H.R. 354 – similar to EU statutes
2. H.R. 1858 – alternative to H.R. 354
a. Can’t sell duplicate of database to another
b. Permits use of facts
c. Does not give use of database for commerce
ii. Issue: Can this coexist with CR?

Derivative Work
1. Sect. 101 of the 1976 CR Act
2. Keys
a. Recast
b. Transformed
c. Adapted
3. Requirements
a. Must be original – entire derivative work
b. Must have permission to use derivative work
4. Emerson v. Davies
5. Batlin v. Snyder
a. Public Domain loses CR protection
b. Metal v. Plastic Uncle Sam Banks
c. Majority – Batlin Originality Test
i. Substantial
ii. More than mere trivial variation
d. No genuine difference
e. Fear of public domain constraints
f. Dissent
i. Non-trivial variation
ii. Test applied in different ways creates subjective application
iii. Less concern for progress in the arts
iv. Protects original, creativity
6. Gracen v. Bradford Exchange
a. Wizard of Oz plates/paintings
b. Painter wins design contest; fails to obtain contract terms
c. 2nd painter copies design
d. CT – insufficient variation of underlying work
e. Derivative work
7. Sui Generis Conclusion
a. Protection outside of Cr
b. Exists in Europe
c. Issues – EXAM
i. Is legislation necessary?
ii. Is it constitutional? – Commerce Clause?
8. Durham v. Tomy
a. Not sufficiently original to be CR
b. No independent creation
9. Inconsistent Application of Batlin Test?
a. Eden
b. Tomy
c. Entertainment Research Group
d. 3 Cases with different standards applied
e. Functional v. Aesthetic
f. Stretch to see application of same test
g. Suggestions to rectify 2nd Circuit Interpretation
i. Are cases immediately discernable?
ii. What are the purposes – Aesthetic v. Functionality
10. Eden Toys v. Florelee Undergarment Company
a. Paddington Bear
b. CT – Author’s derivative work CR
c. Possible to infringe
11. Sherry Manufacturing v. Towel King (1985)
a. Substantially new material to make a derivative work
b. CT – Not enough variation to be CR
12. Entertainment Research Group (ERG) v. Genesis Creative Group
a. 2D to 3D costumes created
b. CT – Lacks sufficient originality to be CR
c. Function reason
13. Alva v. Winniger (1959)
a. Sweat of the Brow Doctrine
b. Hand of God Doctrine
14. Bridgeman Art v. Corel
a. Trashes Alva
b. Skill permits CR
15. 9th Circuit – Lesser standard of originality
a. Seems to follow Catalda case
b. De minumus standard
c. See Mirage Case – Mounting artworks on tiles
i. Is this a derivative work?
ii. CT says yes
iii. May not create an infringing derivative work

Pictorial, Graphic and Sculptural Works
1. Mayer v Stein (1954)
a. Lamp incorporated statute in base
b. CT – Works out of art incorporated into useful articles can be CR’ed
c. Novel at the time
d. Required separability between artistic/sculpture/utility/usefulness
e. Difficulty – where separability is conceptual and not actual
f. Function v. Aesthetics
g. CT – Const. to protect utilitatarian/fuctional works
2. Useful Article/Design Patents
a. Only protectable if can be identified separately from artistic v. utilitarianism
b. Costumes
i. Generally hostile to CR of costumes
ii. But fabric designs may be CR
iii. Function of clothing of wearer
c. Masks – May be CR
3. Kieselstein Cord v. Accessories by Pearl
a. Belt buckles are CR if they are sculptured designs, artistic work
b. Monopolization concerns
4. Conceptual Separability
a. Batlin Test
b. Potentially Inconclusive
c. Reconcile cases
i. Are differences between works immediately discernable?
ii. What is the purpose of making the changes
1. Functional
2. Aesthetic
d. Slavish Copies
i. Alva Case – Rodin Hand of God Sculpture CR
ii. Bridgeman v Corel – 2D photos reproductions are not CR; does not follow Alva
iii. EXAM: Is a photo of a 3D work in public domain sufficient for CR?
e. Originality
i. 9th Circuit requires a lesser standard of originality than 2nd Circuit Batlin Test
ii. Mirage following Catalda case – Only requires minimum/modest grade of originality
5. Carol Barnhart Inc v. Economy Cover
a. Mannequin Case
b. Can’t separate utilitarian from artistic function
c. Distinguishes and compares to Kesselstein-Cord belt buckle case
d. Must be able to separate art from utility to prove CR
e. Dissent
i. Majority applies wrong test
ii. Majority does not want to determine what is art
iii. Conceptual v. Physical Separability
6. Brandin v. Cascade
a. Bike rack case
b. Photo of bike rack is CR
c. Bike rack is not CR; can’t separate form from function
d. Denicola Test
i. Functionality
ii. Artistic Expression
iii. Conceptual Separability
7. No universally accepted test
8. Know all tests & apply on Exam
9. Then pick best test to use
10. Holden Test – J. Newman’s dissent test in Carroll-Barnhart
11. Superior Form Builders v. Dan Chase
a. Animal Mannequins for animal skins
b. CT permits CR
c. Underlying function submitted for art contest
12. Tests for Conceptual Separability
a. Courts disagree on proper standard
b. Know tests:
i. J. Newman’s dissent in Carol Barnhart
ii. J. Brandeis’ Denicola test
c. Issue: Extent of protection in industrial designs
i. Strikes Balance
ii. Artistic Creation v. Future Development
d. Concern – Judges become arbiters of artistic taste

Copyright Act Sect. 113
1. Limits on CR
2. Can’t get CR monopoly on all things
3. Typeface Designs
a. Eltra v. Ringer (1978)
b. Protection deferred
c. Typeface was not a work of art
d. Workaround – CR underlying code that generates fonts

Architectural Works
1. Prior to 1990
a. Protect building itself if met conceptual separability test
b. Decorative elements protectable
c. Gargoyle separable from building and CR
d. Buildings built before 1990 were not CR
e. May protect plan
f. Technical drawings, pictures, graphics, artworks
g. May not protect non-useful articles
h. Conceptual Separability Test
i. Overall design difficult to protect
j. Demetradis v. Kaufman (1988)
i. May not copy blueprint
ii. May copy from general measurements
iii. D may not rely on infringing copies/plans
2. Architectural Works CR Protection Act of 1990
a. Applies to buildings created on or after December 1, 1990
b. Also applies to unconstructed works as of 12/1/90 up to 12/31/02 (must be under construction by 12/31/02)
c. Complies with Berne Convention
d. Standard features (windows, doors…) are not CR
e. 2 Step Test – See House Report
i. Original Design Elements
1. Shape
2. Interior Elements
ii. Functional Requirements – If not functionally required, then CR
3. Is a church CR?
a. Post & beams are not CR – Purely functional
b. Cruciform shape of cross not CR
c. Shape of Steeple?
4. Is a bridge CR?
a. Pedestrian walkways not CR
b. Houses & office buildings CR
c. Individual units inside malls are not CR
d. Habitable structures, garden structures, churches, garden pavilions generally CR
e. Intersections, bridges, canals, dams not CR
5. Limits
a. Sect 120
b. Owner of a house may modify/add features to a house
c. May distribute pictures of buildings without permission

Copyright of Characters
1. Characters can be Trademarked
2. Nichols Test
a. J. Learned Hand
b. Detailed Characters can be CR
c. But not all chars. Can be CR
d. Stock chars. Can be CR
e. Can’t protect ideas
f. Need Expression
g. Idea-Expression Dichotomy
h. Vague, sliding scale
3. 9th Circuit Sam Spade Test
a. Warner Bros. V. CBS
b. Is there CR outside of story in Maltese Falcon?
c. Char. must be constructive of story being told; not just a chess piece in a plot
d. “Story being told” Test
e. Much more restrictive test – perhaps over restrictive
f. Protects chars less than 2nd Circuit
g. No char CR unless vehicle of story being told
h. May CR Sam Spade
i. May not CR idea of any detective story being told
4. Walt Disney v. Air Pirates (1978)
a. Clearly more CR protection
b. Distinguish from Sam Spade Test
c. Comic book characters easier to protect
d. Drawn chars easier to protect
5. Anderson v. Stallone
a. Derivative work
b. Sequel to Rocky III
c. Are Chars independent of movie?
d. CT – Passes 2nd and 9th Circuit Tests
e. Chars are so developed and central to story, they are central to “story being told”
6. Conclusion
a. Characters per se are entitled to CR protection outside of the story in which they appear
b. 2 Major Tests
i. Nichols Test – Specificity Test
ii. Warner Test – Story Being Told Test
1. Does not apply to pictured characters
2. Only applies to characters in words
c. Easier to CR cartoon char than literary character
d. KEY: Apply both tests
7. James Bond MGM v. American Honda
a. CT – Character is CR
b. Visually depicted character
c. Both Nichols and Warner Tests applied and satisfied
d. CR based on movie character, not literary character
e. Film, TV, cartoon chars easier to protect
f. Realm of Protecting idea
g. Shows broadness of protection
8. King Features v. Fleischar (1924)
a. Barney Google & Spark Plug – Cartoon Chars
b. Protects chars
c. Goes from expression to idea zone
9. Detective Comics v. Burns Publications Inc (1940)
a. Superman v. Wonderman
b. CT – CR infringement
c. Protects expression
d. Also protects idea of superhero
e. Key: Protectable expression
f. Ideas can’t be CR, but judge tends to lean towards idea at times

Government Works
1. Any work of U.S. Government prohibited from CR
2. Fed. Gov’t employees may hold CR if created on own time
3. Gov’t may own CR by assignment
4. West Case – Order and arrangement CR
5. Contracted work by Gov’t may be CR; depends on public interest

Mitchell Bros v. Cinema Adult Theaters
1. AV works CR
2. Producers claim theater illegally showed movie
3. D claims obscene materials not CR
a. Unclean Hands
b. Equitable Defense
4. DC – Accepts Equitable Defense
5. 5th Circuit Appeals Court – Not judge of taste; overturns
6. Obscenity standards based on local standards
7. CR is federal
8. See also Devil Films v. Nectar Video – Different outcome

Authorship
1. Conception – Whoever comes up with idea of work
2. Execution – Whoever made work
3. Financing – Whoever funded work
4. Adrien v. Southern Ocean County CC (1991)
a. Concept v. Execution
b. Adien Conceives idea of map
c. Carolyn Haines contracted to create the work
d. Issue: Is Adrien the author? Who is the author of the map?
e. Concept is author
f. Haines is only tool to the expression
g. Maps CR based on 1790 Act
h. Cartography is an art form, selection and arrangement
i. Thin CR protection – Facts/Data

Works Made for Hire
1. See H.R. 5107
2. EXAM
a. Made by employee within scope of employment; OR
b. Specifically commissioned works with numerous requirements; AND Express written Instrument (Works made for hire agreement)
3. Work for hire – Original Own
4. Assignment – Transfer of Work
5. See Sections 201, 201(b) – Unless previously written agreement “not for hire” then generally considered “work for hire”
6. CCNV v. Reid – EXAM
a. Dispute over material of sculpture
b. No written agreement
c. Authorship – Original owner
d. Ownership – May be transferred
e. Agency Law basis
f. Tests
i. Right to Control
ii. Actual Control
iii. Agency Law – SC application
iv. Formal Salaried employee test
g. Factors
i. Control – Limited
ii. Block payment
iii. Ability to select own assignments
iv. Used own tools/instrumentalities
7. Carter v. Helmsley-Spear
a. Was sculpture work made for hire? Yes
b. Visual Artists Rights Act (VARA)
i. Authors protected from altering, defacing,…
ii. But lose rights under work for hire
c. Seems to deny VARA
d. Factors most persuasive to CT
i. Benefits
ii. Taxes
iii. Control of Means
iv. Skill
v. Additional Projects
8. Aymes v. Bonelli
a. Swimming Pool Inventory Software
b. TC – Work for Hire
c. AC – Independent Contractor
9. Avtec v. Peiffer – Independent Contractor
10. Cramer v. Crestar – Work for Hire
11. Fine line between Independent Contract v. Work for Hire
12. Teacher Exception
a. Exception to the Work for Hire Doctrine
b. May or May not exist under the 1976 Copyright Act
c. Academic writings may be teacher’s own CR
d. Argument over whether exception exists
13. Specially Ordered/Commissioned Works – Lulirama v. Axcess
14. Work for Hire Agreements
a. Sect 101(2) – Timing
i. Commissioning Timing
ii. Commissioning party pays creator
iii. When work created
b. Schiller – Precedes Creation
c. Playboy – Meeting of the Minds; Looser requirement

Joint Works
1. Sect. 101 Definition – Each joint author has an equal and undivided interest in the work either can license, but must split the revenues accordingly. Prepared by two or more authors.
2. Thompson v. Larson
a. No Joint Authorship
b. Stringent Test – Childress v. Taylor
c. Should have written agreement to prove joint authorship
d. Percentage of authorship not discussed
e. Test – Co-Owner must establish
i. Each joint author contributed to the work
ii. Each fully intended joint authorship
3. Rights
a. Right to use.
b. Right to license.
c. Equal and undivided interest.
d. Obligation to account for profits to other author(s).
4. Intention – Difficult test to meet
a. If there is no written agreement, the use 2 Prong Test
i. Each co-author made individual copyrightable contribution; and
ii. Each co-author fully intended to be co-author.
b. See Childress v. Taylor – Old but valid test
c. Thompson v. Larson upholds Childress
d. Not just subjective
e. Must look at overall relationship
i. Billing
ii. Credit
iii. Decision making
iv. Right to enter into Contract
f. Intent is incumbent upon dominant party to prove

Transfer of Copyright Ownership
1. Sect. 101, 201, 204
2. Copyright is treated as a bundle of rights
3. Rights can be transferred separately, divisible
4. Sect. 106 – Bundle of Rights
5. Principle of Divisibility
6. Intangible Property Rights
7. Definitions
a. Sect 101 – Transfer of CR ownership; does not include a non-exemplary license.
b. Sect 201 – Transfer of ownership – how you transfer CR – 201(d)
c. Sect 204 – Execution of Transfer of CR ownership
i. Requires writing – memo, note,…)
ii. Effective Negotiation such that owner will not accidentally give away rights

Copyright Transfer by Operation of Law
1. Community Property
a. Is a spouse entitled to Joint Ownership in CR?
b. In re Marriage of Susan and Fred Worth (1987) Cal. - Federal Copyright does not preempt State Community property laws
c. Rodrigue v. Rodrigue (1999) Louisiana – National uniformity trumps state community property laws
2. Hypo
a. N gives T exclusive license to translate into Italian.
b. Is this valid? No
c. Writing - Note or memo required to validate transfer
3. Benefits for Exclusive License
a. Permits standing to sue for infringement
b. See BMI v. CBS
4. Effects Associates v. Cohen
a. Movie: The Stuff
b. Ownership of special effects footage license issue
c. Issue: Has there been a transfer of CR ownership/license?
d. CT – Written note required for transfer
e. Right to use footage in movie
f. Implied license – Non Exclusive
g. Implied by conduct of parties
h. Cohen does not infringe; but is liable for breach of contract
i. Keys
i. Can have implied non-exclusive license
ii. May not have implied exclusive license

Recordation of Transfers
1. Recorded at CR Office
2. Providing Notice
3. Includes Sect 101 licenses and assignments
4. Lends certainty and predictability to law
5. Enclose Transfer
a. Original or sworn signed copy
b. Send to CR Office
c. Pay Fee
d. CR Office records and enters
e. Sect 205(c)
6. Grants priority over conflict transfers as long as property is recorded
7. National Peregrine, Inc. v . Capitol Federal Savings and Loan
a. Must record with CR Office
b. Preempts state laws – can’t file at state level

Scope of Transfer
1. Transfer Ownership or Right to Use
2. Right to do one of exclusive rights of owner
3. What is being transferred?
4. What is the scope of transfer
5. Construe contract to identical items included in transfer
6. Cohen v. Paramount Pictures
a. Licensing Issue
b. Worldwide Television broadcast
c. Synchronization License
d. Way to use music to film
e. Synchs music to frames in film
f. Chain of Title
i. Cohen
ii. “Merry Go Round” Composition
iii. H&J Pictures Synchronization License
iv. Paramount Pictures “Medium Cool” film
g. Interpret scope of license
h. What has been transferred to Paramount Pictures?
i. P Cohen claims no right to distribute video included in license
j. CT – Agrees with Cohen & reverses DC decision
i. Not in the meeting of the minds
ii. NO new technology transfer
7. Boosey & Hawkes v. Disney
a. Fantasia – Movie
b. Stravinsky CR in foreign countries held by Boosey & Hawkes
c. 1939 Agreement
i. $6,000
ii. Non-exclusive
iii. Manner, medium, rule
d. Issue: Does license cover distribution abroad?
e. License Para 7: Licensor reserves all non-expressly granted rights
f. Moves into area of contract law – Reservation Clause
g. CT not impressed
h. ASCAP Condition
i. D – Limits preference to ASCAP licensed theaters
ii. CT – Boilerplate; no real applied meaning
i. Contract – Assignment v. License
8. Contrasted: Cohen and Boosey
a. Different Contracts – Scope of Grants
b. 9th Circuit gives more weight to reservation clause in Cohen
c. 2nd Circuit gives less deference to reservation clause

Duration of Copyright Ownership
1. Duration – How long can Copyright Last?
2. Constitution – “Limited times”
3. 1976 Act – Life + 50 years
4. Sonny Bono Term Extension Act – Life + 70 years – Only applies to works created after 1978
5. Debate
a. Protection is too long
b. Keeps work out of public domain
c. Can’t benefit other authors
d. Deters creativity
6. Policy – Constitutional Question
a. How long should CR last?
b. Protect authors v. encourage creativity
7. Renewal
a. Paternalistic Rationale
b. Permits authors to renegotiate Contracts and Bad Bargains
c. Protects Authors, heirs, and statutory beneficiaries
8. 1909 Act Renewal
a. File renewal registration with CR office
b. Technicality – if not filed, then not renewed
c. Issue: Can author assign renewal expectancy before term vested?
i. Fred Fisher v. Witmark (1943)
ii. Yes, Author can validly assign interest in CR
d. Death prior to vesting – renewal right goes to statutory beneficiaries
e. Corcovado Music v. Hollis Music
i. CT narrows in construction purports to assign renewal terms
ii. May assign renewal term, but must make CLEAR assignment
iii. “Perpetual Right”
iv. Scope of License Argument
f. Saroyan Case - Estranged wife/children inherit rights over other assignments
g. Vesting Term – Applies to works published before 1964
i. Marascalco – Survive through 1st Term
ii. Frederick Music – Author or Assignee alive to renew term

Duration Wrap Up
1. 1976 Act drops 2-term renewal process
2. Picks up life + term
3. Fairness to Authors
4. Entry to Berne Convention
5. 1998 Sonny Bono Term Extension Act
a. Adds 20 Years to term
b. Total 20 + 47 = 67 Years
6. Works published prior to 1964 had to file renewal registration in the 28th year of CR, or else work fell into PD
7. 1992 Amendment to the 1976 Act
a. Automatic renewal amendment
b. January 1, 1964 – December 31, 1977
c. Does not apply to pre 1964 works
d. Automatic CR
e. No rights lost
8. Today – Fewer ways to lose CR
9. Author can assign rights in renewal term before rights vest
10. Limit on author’s right to assign – must survive until renewal term to vest
11. Case law – unclear about 28th year renewal term
12. Automatic Renewal Provisions - Renewal vests on either of 2 dates
a. When registered/filed; or
b. At beginning of renewal term
13. 1976 Act does not resurrect works that have fallen into PD
14. 95 Years
a. 28 Years for 1st Term
b. 28 Years for Renewal Term
c. 19 Years Extension
d. 20 Years Sonny Bono Term Extension Act

Duration Review
1. Duration Issue Spotting
a. Copyright Protection
b. Term
c. Expiration
2. Public Domain
3. 4 Categories of work
a. Pure 1909 Works – Not on EXAM
i. Publication with CR Notice
ii. Does not extend to 1976 Act
iii. 28 year Initial Term +
iv. 28 year Renewal Term – Not Automatic; must Validly renew
v. 56 Years Total
vi. Survival – In last year of initial term and renewal filed
b. 1909 – 1976 Works
i. 28 Year Initial Term +
ii. 47 Year Renewal Term – Pre Sonny Bono Act
iii. 75 Year Total
iv. OR
v. 28 Year Initial Term +
vi. 67 Year Renewal (47 + 20 Sonny Bono Act)
vii. 95 Year Total
viii. 1992 Amendment
1. Some works have automatic/voluntary renewal – 1964-77
2. Some works have voluntary renewal – Prior 1964
3. Preferable to Voluntarily Renew
ix. Vesting at time of voluntary renewal – 1964-77
x. Types of works benefiting from automatic renewal – 1964-77
xi. Works published before 1964 – No Automatic Renewal
xii. 1909 Act – Unclear on Survival requirement – 28 or 29 years
c. 1976 – 1/1/1978
i. No 2 Term issues
ii. No Renewal issues
iii. Life + 70 Years
iv. Sect 302(a)
v. Wrinkles – EXAM
1. Sole Author
2. Joint Author
3. Work for Hire
vi. Joint Work – Sect 302(b) – 70 Years + Life of longest lived author
vii. 302(e) – Presumption of Author’s death
1. 95 years after publication date; or
2. 120 years after creation date
d. Created and NOT published/CR before 1/1/78
i. Sect 303 – Life of Author + 70 years
ii. Ex) Lincoln’s papers found in 2001
1. Life + 70; but
2. Sect 303 protection extends to 12/1/02
3. If published before 2002, CR extends to 12/1/47

Renewal for Works Made for Hire
1. Employer or proprietor gets renewal rights
2. Paternalistic laws don’t apply to employers
3. Renewals & Derivative Works Example
a. A – Author of underlying work conveys Initial term of CR & Movie/Derivative Work to B
b. B – Creates movie and owns movie Copyright
c. C – Statutory beneficiary renews CR – either A or C can renew
4. “New Estate Theory” for Renewal
5. Stewart v. Abend
a. Rear Window Case
b. Author granted movie right assignments to Hitchcock & Producer
c. Author agrees to assign renewal rights; but dies before vesting
d. Executors gain rights; assigns rights to Abend
e. Property of derivative works limited rights if there has been a reversion of the underlying work to author/heirs
f. Creates problem with person who obtains rights to works.
g. Limitations
i. Subject to CR prior to 1/1/1978
ii. Written outside work for hire
iii. Renewal term not effectively conveyed – ex) author dies prior to vesting term
iv. Renewal claimant must file timely
6. Russell v. Price
a. Public Policy Issue
b. Derivative Work – Film called Pygmalion
c. License granted to create film – Valid license
d. Problem: Derivative film CR falls into PD. Author licensed distribution rights to another.
e. Underlying work is not yet in PD
f. Only owner of underlying work can use derivative work

Termination of Transfers
Protects Authors and Heirs from bad bargains
Paternalistic function as in renewal
1. Situations
a. Life + 70
i. Works created after 1/1/1948
ii. Sect 203 CR Act
b. 1909 Act
i. 1st term or renewal term of CR
ii. Author validly conveyed 28 year renewal term
iii. Extended renewal term – 28 + 19 = 47; Sect 304 (c)
iv. Sonny Bono Act – 47 + 20 = 67
2. Termination under Sect 203
a. Not automatic
b. Must follow procedure established by statute
c. Can’t waive or assign termination rights
d. Grants, Assigns, License – On or after 1/1/1978
e. Key: Compliance permits term of transfer
f. Key: Date of transfer
3. Grants Covered under Sect 203
a. Applies to transfer or license of CR on or after any right under CR on or after 1/1/1978
b. By Author
c. Of Any CR right
d. Does NOT Apply to
i. Transfer/license in works made for hire; and
ii. Dispositions made by will
4. Who can Terminate
a. Author
b. Joint Work – Majority of authors who execute grant
c. Dead Author – Majority of statutory owners
d. If one of many authors is dead, then term interest of that author is exercised as a unity by statutory owners of term right

Ownership of Shares
1. Assuming Author is Dead
2. Widower with no children – Widow owns 100%
3. Widow with Children
a. Widow owns 50%
b. Children split remaining 50% - Per Stirpes
c. Children and Grandchildren exercise Per Stirpes
d. Widow must get beyond 50% to terminate grant

When Termination Takes Place
1. At any time for period of 5 years starting at the end of 35 years from date of execution of grant; or
2. If grant covers publication right, period starts either 35 years from publication, or 40 years from grant. See Sect 203

How to Terminate – Sect 203(a)(4)
1. Serve written notice
2. Between 2 – 10 years before effective term
3. Must state effective date of termination
4. Must comply with CR Office regulations
5. Must record in CR Office before effective date of termination

Effects of Termination of Transfer
1. All rights granted are terminated
2. Rights revert to those owning
3. Statutorily changes Pygmalion Case

Further Grants
1. If author alive – Author makes further grants
2. If author dead – Author’s widow or beneficiaries make further grants
3. Multiple beneficiaries – Per Stirpes

Transfer of Renewal Interests
1. Not for renewal rights
2. To get back extended renewal term rights
3. Additional 19 years of renewal term
4. Given to 1909 works prior to 1976 and/or 20 years additional – Sonny Bono Act
5. Not Automatic – Author and/or statutory beneficiaries must take necessary steps within statutory time limits; or transfer will continue with original grant.
6. Example
a. Arnie publishes a novel in 1935; assigns rights in 1936 – “Expectancy”
b. Will the renewal term vest?
c. Arnie must survive until 1963 – (28+35) so renewal term vests
d. Arnie has no rights in the renewal term; given away, vested
7. Sonny Bono Term Extension Act
a. 1st bite - If term under Sect 304(c) then may reclaim extra 19 + 20 years
b. 2nd bite – If no term under Sect 304(c) then may recover 20 years

Valid Notice Termination, Sect 304(c)(4)
1. Formalities
2. Window
3. Filing
4. Notice
5. Sect 304(c) – Author can terminate

Per Stirpes Termination Rights Examples
1. Husband, Wife, Child
a. Husband dies
b. Wife owns 50%; Child owns 50%
c. Both must agree to terminate (51% ownership must agree)
2. Husband, Wife, Son, Daughter
a. Wife Dies
b. Husband owns 50%; Son owns 25%; Daughter owns 25%
c. Termination right requires Husband + [Son or Daughter]
3. Husband, Wife, Son, Daughter, D1, D2, D3
a. Husband, Wife, Daughter die
b. Son owns 50%; D1, D2, D3 split remaining 50%
c. Per Stirpes requires a Majority
d. Termination right requires Son + [2 of 3 grandchildren]
4. Statutory Wrinkle in Sect 304(c)(1) – If someone else owns copyright through another, then it eliminates the per stirpes process

Timing
1. 1935 – Work Published
2. 1963 – Copyright renewed
3. 1991 – Term Ends; 19 year 1st term begins
4. 2010 – 20 Year 2nd term begins; Sect 304(d)
5. 2030 – Copyright ends – work falls into Public Domain

Summary
1. Sect 304(c)
a. For CR coming into being prior to 1978, one can reclaim extended renewal period given by the 1976 Act
b. Only a qualified person can terminate by giving notice 2-10 years prior to the date within the windows that generally opens at the start of 39 years – extended renewal date
2. Sect 203
a. On or after 1/1/78
b. May be terminated by a qualified person at any time within 5 year termination window open 35 years after transaction executed
c. 2-10 year notice prior to date within window
d. See Table, p. 376

Formalities
1. Publication
2. Notice
3. Deposit
4. Registration
5. Formalities have decreased over the years from 1909 to the Berne Convention

Publication and Notice
1. 1909 – Strict compliance
2. Publication central to 1909 Act
3. Focused on publication
4. Failure to comply with publication rules à work falls into Public Domain
5. Divestive Publication à Public Domain
6. 1976 Act liberalizes notice
7. Berne Convention – March 1, 1989; Notice no longer required
8. After 1976 Act, C/L CR gone; limited C/L protection available

What is Publication?
1. Not defined in 1909 Act
2. Ferris v. Fishman (1912) – Public performance of spoken drama not publication.
3. La Cienega (1995)
a. Sale of records of song is a publication
b. Impact – songs recorded and sold without CR no longer protected
c. Result – Congressional Amendment overruling La Cienega
4. Does publication of a derivative work a publication? Probably

Limited Publication
1. Limited to a small group of people
2. See Church of Scientology
3. Not distributed to the general public
4. Does not divest under 1909 Act
5. Public Affairs v. Rickover
a. Issue: Was this a general publication?
b. Performed speech
c. Distributed to press and others
d. Holding: General Publication
6. Estate of MLK v. CBS
a. Publication w/o CR symbol
b. Estate argues limited publication
c. Elements
i. Available to Press
ii. Broadcast on Radio & Television
iii. Excerpts in print, newspaper
d. Examples of formalities getting in the way
e. District Court
i. Clearly general publication
ii. Wide distribution
iii. Unlimited
iv. MSJ à CBS
f. 11th Circuit – J. Anderson, See Supplement
i. Limited publication
ii. Only distributed to press
iii. Distinguished from Rickover case
iv. Distributed to a large number of people equivalent to display in art exhibit
v. Publication Test – KEY – See Supplement p. 26
1. Distribution to General Public; OR
2. Exhibit or Display to General Public
vi. J. Cook – Concurring in Part/ Dissenting in Part – Performance can’t be public
vii. J. Rarely – Dissenting – District Court correct
g. Seminal case on limited publication
h. CR law is paternalistic – wants to protect the family
7. AMPAS v. Creative House Promo (1991)
a. Limited publication
b. No divestiture of C/L protection
c. Picture published in magazines

1976 Act on Publication
1. Definition – p. 397; Sect 101
2. Phonorecords – 1 or more copies distributed in public à Publication
3. Pre Berne Convention – p. 402
a. Sect 405 1976 Act
b. Sufficient CR
i. Regular work within 5 years
ii. Then reasonable effort to add notice
c. See Hasbro v. Sparkle Toys case
i. Deliberate omission of CR
ii. Cured with liberal interpretation of CR
d. Innocent infringers – Good faith protection, Sect 405, 406

Berne Convention – March 1, 1989
1. Notice after Berne – Sect 401(b)(1-3)
a. Ó
b. Year
c. Name of Owner
2. Phonorecords – Sect 402(b)
a. P – Circled
b. Eliminates innocent infringers defense
3. Deposit after Act
a. Deposit original work with LOC, Sect 407
b. Registration required in Sect 408
c. Best edition requirement

General Public – Limited Occurrences, only 2 situations
1. Tangible copies of work distributed to general public in way to exercise dominion and control over work
2. Exhibit or display so as to permit unrestricted copying by general public

Notice
1. Prior to 1978
2. Notice Requirements – If notice failed, CR Lost, divests to PD
a. 1909 Act
b. 1976 Pre Berne
c. Post Berne

Deposit Requirement
1. For LOC Record – Sect 407
2. For registration – Sect 408
3. Different registration for S/W, Trade Secrets
4. 407 Sanctions
a. Failure to deposit within 3 months
b. $250 penalty for each late work
c. Otherwise, normal cost - $30 to CR
5. Reasonable retail price to purchase

Registration
1. Author
2. Exclusive right in book
3. Published or unpublished
4. One deposit serves both purposes
5. Form – differs depending on work
6. Can’t sue for infringement until work registered
7. No damages (statutory, attorney,…) prior to registration
8. Fee covers administrative costs

Infringement
1. Exclusive in bundle of rights
2. See Sect 106
3. Does not cover every type of work
4. Possible to infringe more than one right
5. Napster
a. Secondary CR infringement
b. Acts of user
c. 9th Circuit – Rights infringed
d. See www.mp3rockstheweb.com
6. Today – Right of reproduction
7. Copying – (see definition p. 417) – Perceive with machine or other device

Matthew Bender v. West Publishing
1. Bender suing West over declatory judgment
2. Star Pagination – West pagination/citation; indicates page cutoff/breaks
3. Matthew Bender – uses star pagination scheme
4. Compilation CR
5. Judicial opinions are not CR
6. CT – Star paginations are not original
7. No CR infringement

Arnstein v. (Cole) Porter
1. Test for Infringement
2. MSJ à D
3. AC – Has Porter infringed Arnstein’s songs?
4. Steps - Test
a. Copying
b. Unlawful Appropriation – enough to make CR infringing
5. Works must be similar
6. Must have access to work – one song must sell mult. copies
7. Access – Circumstantial evidence
8. Striking similarity – No other conclusion
9. Must be original and more than de minimus
10. Improper Appropriation = Substantial Similarity
11. Likely Audience
a. Ordinary Observer
b. Lay Observer
12. Judge
a. Leave issue to jury
b. Tryable issue of fact
13. Case law – varies
14. Dissent
a. No legal basis for infringement
b. Not enough taken for unlawful infringement
c. No case
15. Wrap up
a. P – Ownership
b. D – Copy
c. D – Unlawful Appropriation
d. Ownership
1. Original
2. CR subject matter
3. Compliance with form/statutes
1. 1976 Act – Publication & Notice not as important
2. 1909 Act – Publication & Notice critical for vesting/PD
4. P must show he owns CR or relationship to rights; documented
e. Keys
1. Ownership
2. Formalities
3. Infringement

Infringement
1. Notice Requirement
a. 1909 – Failure to Comply à PD
b. 1976 – Pre Berne
i. Cures 405/406 Problem
ii. Some requirements exist
c. March 1, 1989 – Berne Convention – No CR notice required, but recommended
2. Deposit
a. 1909 – 1976 – Pre-Berne deposit requirement
b. Berne – No longer requires deposit
3. Keys
a. P must show unusual copying
b. Rare to have direct evidence of unusual copying
c. Access can be inferred if facts show D had reasonable opportunity to view or copy the work
d. Wrongful Appropriation
i. Must be more than de minimus taking
ii. Taking of expression
e. Subconscious copying possible

Registration
1. U.S. works have higher hurdles; must register before CR infringement suit
2. No early registration option
3. Remedies, penalties
4. Limits amount of recovery
5. Non-U.S. works – No registration for U.S. non-Berne Works

Right of Reproduction
1. One of bundle of rights
2. 2 Methods of Copying
a. Copies
b. Phonorecords
3. Works can be copied digitally

Infringement
1. 2 Step process in Arnstein v. Porter
a. Copying
b. Unlawful Appropriation
2. Defenses
a. Admits copying
i. De minimus
ii. Ideas are not protected
iii. Parody
b. Denies copying
i. P must prove copying
ii. Infer D had access to work
3. Unlawful appropriation – enough unlawful appropriation such that it amounts to infringement
4. If works are similar – CR Issue
5. If works are unsimilar – No CR Issue
6. Dissection – Compare works and similarities
7. Ordinary Observer Test
8. Access + Similarity = Copying
9. Striking Similarity – Works are so similar that only inference is one work copied from another
10. Theory – Independent creation = CR
11. Reality – Independent creation is difficult to prove

Unlawful Appropriation
1. Only arises when CR proved
2. Test – Ordinary Observer
3. Not Permitted – Dissection or Expert Evidence
4. Question: Has D taken so much from P work such that he wrongfully appropriated?

Bright Tunes v. Harrissongs
1. D – claims no access to song
2. CT – Subconcious copying; finds plagiarism
3. Unlawful Appropriation
4. Ordinary Observer Test
5. Reversing order of notes probably not copying
6. CR = Strict Liability
7. Subjective Tests
8. EXAM: Use Reasonable Judgment in consideration

Striking Similarity
1. 7th and 2nd Circuits have differing approaches
2. Reasonable Inference – 2nd Circuit
3. Some availability of the Work – 7th Circuit

Striking Similarity Cases
1. Selle v. Gibb (1984) – Bee Gees did not copy from a wedding singer
2. Rapp v. Webber (1997)
a. Liturgy v. Musical
b. Striking similarity case
c. CT – Enough for D à MSJ
d. Trial – No Copying
e. If strikingly similar enough, may infer copying
3. Ty, Inc. v. GMA (1997) – 7th Circuit
f. D – No access to beanie baby
g. CT – Strikingly similar
4. Ringgold v. BET – De Minimus copying
a. Split second showing of quilt
b. CT – Not enough for infringement
c. D – De minimus – combats unlawful appropriation allegation
5. Peter Pan Fabrics v. Martin Weiner (1960)
a. J. Learned Hand
b. No Guidelines, Ad Hoc Basis
i. Unlawful appropriation
ii. Ordinary Observer
iii. Substantial Similarity
6. Herbert Rosenthal v. Kalpekien (1971)
a. Jeweled Bee Pins
b. Merger Doctrine – If idea can only be expressed in a limited number of ways, then no CR
c. Natural representation of lifelike image
d. Fischer – Perhaps merger doctrine doesn’t apply
7. Nichols v. Universal Pictures (1930)
a. Non-literal copying
b. Not copying word-for-word
c. Play on Jewish and Irish families – the Cohen’s and the Kelley’s
d. Holding – No infringement
8. Sheldon v. MGM (1936)
a. Dishonored lady
b. Holding – Infringement
c. Substantial similarity based on literary work
d. Idea-Expression Dichotomy
e. Key – Abstractions Test – p. 445
f. How abstract (realm of idea) are you taking?
g. Stock Characters – Not protected
h. Developed Characters – Protected
i. Issue: Infringement; not Derivative work issue
j. Similarities of Expression
k. Parallel Incident (plot, action)
l. Subjective – goes to a detailed level of similarities/incidences
m. Ex) Obscure South American Gaucho song

Total Concept and Feel
1. Collection of uncopyrightable elements
2. Greetings Cards – see Roth Greetings Cards case
3. Tee Shirts

Computer Software
1. Is code CR?
2. Is Structure & Originality CR?
3. Does not fit well with Patents/CR/TM
4. 1974 CONTU
a. S/W can be CR
b. S/W treated as a literary work – Sect 101
c. Idea-Expression Dichotomy
d. Broad Expression – Protects S/W Procedures
5. Early Cases
a. H/W Companies
b. Literal copying – Infringing CR
6. 2nd Generation Cases
a. Non-literal elements – Structure, sequence, organization
b. How far does CR protection extend?

Non-literal Copying Cases
Whelan v. Janslow
1. Overruled in Computer Associates (CA) case
2. Dental lab S/W
3. Only idea of computer program
4. CR protects expression, not idea
5. How do you separate idea from expression?
6. CT – Treats program like literary work
7. Case criticized in CR community

Computer Associates v. Altai (1992)
1. Idea v. Expression
2. Access and copying proven
3. Substantial Similarity
4. Abstraction/Filtration/Comparison
5. Ideas/Expression
a. Nichols Test – somewhat vague
b. Eliminate ideas
c. Compare Expression
6. Abstraction
a. Program – High Level
b. Modules – Low Level
7. Filtration – Defines scope of protectable expression
8. Comparison – of programs

Non-Literal Copying – Conclusion
1. Issue in most CR cases
2. Nichols v. Universal Pictures – L. Hand – Non-literal copying actionable
3. Scenes a Faire – Incidents, characters, settings indispensable to a topic
4. Steinberg v. Columbia Pictures
a. Moscow on the Hudson – Movie Poster
b. Based on New Yorker magazine illustration
c. CT – Scene a Faire does not apply
d. Ordinary Observer Test – Goes beyond copying
e. Was it taking?
f. Was it wrongful to take?

Software & CR Wrap up
1. CONTU – Recognized CR for S/W
2. No Alternative Intellectual Property Regime for S/W
3. Open Sourcing licensing does not apply
4. Increase in patent protection for S/W
5. Paper Idea: Need some middle ground for S/W CR
6. Non-literal copying harder to identify
7. CT – Non-literal CR possibly infringing, but test hard to identify
8. Policy
a. Economic arguments
b. Economic incentive to protect
c. No copying of non-literal works limits creativity
9. Jurisprudential arguments
a. De minimus
b. Fair Use
c. Idea-Expression – Merger Doctrine
10. Whelan v. Janslow
a. Idea-Expression Test
b. Heavily criticized
11. Computer Associates v. Altai (2nd Circuit, 1992)
a. Access found – but not a major issue
b. CT – Overturns Whelan
c. Abstraction/Filtration/Comparison Test (Based on L. Hand test)
d. Applies to non-literal S/W issues only
12. Problems with applying A/F/C to literary works
a. What is protectable?
b. Overall structure may be composed of unprotectable elements
c. Key: Ordinary observer can only see protectable expression; may look different with items removed
d. Counter: Too much protection is bad
e. A/F/C – Endorses limited S/W protection
f. Practical – How to decide what is protected looking at the structure of the program
13. Some courts have followed Altai; others have not
14. See Gates Rubber case (10th Circuit, 1985)
a. Uses A/F/C
b. Then adds guidelines for Abstraction
c. Main purpose – Algorithms-modules-code…
d. Filter – Ideas, facts, PD, common expression
e. Fuzzy Test

Kurt Adler v. World Bazaars (1995)
1. Substantial Similarity
2. Idea – not protectable
3. Can’t protect the idea of Santa Clause blowing bubbles
4. Can protect expression
5. Argue – What was taken was protectable and wrongful
6. CT – Protects expression
7. Difficult to apply Abstraction test
8. Criticisms by other courts

Making New Works after Assignment
1. Ex) Jill is author of a CR work
a. Assigns all rights to Andy
b. Can she make new work based on original after assignment?
2. Gross v. Seligman
a. Finds infringement
b. Copy of original work
3. Franklin Mint v. National Wildlife - If original work found elsewhere, may not be infringement.
4. Copying from public domain is okay
5. Copying from the CR original is infringement

Phonorecords
1. Covers CD’s, albums, DAT’s – See definition
2. Song with lyrics may have 2 different CR’s
a. Sound Recording may be CR
b. Lyrics may be CR
3. Compulsory licensing for phonorecords
4. Synchronization license – Negotiated
5. Compulsory license – Set fee, permission granted without negotiations

Mechanical Licenses
1. Separate Ideas, Separate CR
a. Reproduction Right
b. Sound Recording Right
2. Ex) Alison by Elvis Costello, wrote and owns CR
a. Rerecorded by Linda Rhonstadt
b. Right to reproduce phonorecord
c. Separate CR
i. Lyrics
ii. Music
iii. Song
d. If Linda wants license, obtains a compulsory (pre-negotiated) license
3. Mechanical license is one type of compulsory license
4. Mechanical licenses have pre-determined, set fees (which increase over time)
5. Music publishers v. Recording Industry
6. Arbitration panel decides fees
7. CR office supervises compulsory license process
8. Compulsory licenses – not on exam

Sect 115 – Making and Distributing Phonorecords
1. Must give notice to obtain compulsory license
2. Failure to comply nullifies license
3. See Harry Fox Licensing Agency – Mechanical licenses
4. Book recommendation – “This Business of Music”
5. 115(a)(2) – KEY – Fundamental work of Character
a. Basic melody and fundamental character of work
b. Sampling – copying sound recording; taken portion of song
i. Is it derivative?
ii. Rarely tested in CT
iii. CT tends to be hostile to idea
6. Sound Recording - 2 Separate issues; 2 Separate groups of royalties
a. 1st – Compulsory License
b. 2nd – Sound recording license
7. Mechanical License – Copy musical composition
8. Separate permission to distribute sound recording
9. Ex) Elvis Costello’s Song and Words Musical Composition; Sound Recording
a. For Linda Rhonstadt to distribute both Song and Words
b. Mechanical license for musical composition – song and words
c. Separate license for sound recording
10. Cherry River Music v. Scimitar Entertainment
a. Serious Remedy
b. Preliminary Injunction to stop further copying
c. Recalled all phonorecords distributed

Harry Fox Agency, Inc.
1. Collects mechanical royalties for Music Publishers
2. Power of ASCAP
3. Represents 22,000 U.S. Music publishers
4. Collections, auditing, mechanical and negotiated licenses,…

Sect 114 Copying of Sound Recording
1. Can’t rerecord original recording
2. May make recording of own creation
3. Audio Home Recording Act (1992)
a. 9th Circuit Napster Case – Not a home recording device
b. DAT Concerns by industry
c. Home Recording Analog & digital permitted
d. Charges imposed on manufacturers and importers of DAT recorders/tapes
e. Consumers may only use DAT for non-commercial purposes

RIAA v. Diamond
1. MP3 Download/player
2. Sued on Audio Home Recording Act
3. Serial Copy Management Systems
4. Some consumer digital
5. CT – No CR violation; not covered under AHRA
6. Big defeat for RIAA
7. Sect 1008 CR Act Amendment
8. Problem – Imposing technology on the law; legislating technology
9. Electronic signatures – Technology neutral

Digital Millennium Copyright Act
1. Sect 1201(k)
2. Home videotaping mandates technology fix in the law
3. Copy control technology for VCR’s
4. Specific technology fix
5. Restricts circulation; CR owners may “encode” audiovisual works

Right to Prepare Derivative Work
1. Sect 106(2)
2. Out of copying realm
3. Into realm of creating derivative work
4. Infringing derivative work does not have to be fixed
5. May be found in:
a. Copy, but no derivative work option
b. 1st Sale doctrine
6. Horgan v. MacMillan, Inc.
a. Pictures in sequence of ballet
b. Many photos from George Ballanchine version of Nutcracker
c. Substantial similarity test
i. Can infringe on different mediums
ii. Just a portion can be infringing
d. 2nd Circuit remand for further review
7. Derivative work must be based on 1st work – Sect 101 on Derivative works
8. Keys
a. Issues
b. Infringing CR Work
c. Separate CR
9. MicroStar v. Frogmen, Inc. – Duke Nuk’em Software Game
a. User – Created levels
b. Issue – Are these infringing derivative works?
c. Issue – Can audiovisual displays be CR?
d. Fixation – Are they in a sufficiently different format to cause infringement?
e. D – Not infringing derivative work
f. CT – Concern about harm to author – rationale
g. AV screenshots can be CR; but doubts about CR for all AV displays
i. Lacks originality for computer code
ii. Fixed – but user can alter display
10. Lee v. Art Co.
a. Annie Lee – Note cards affixed to tiles
b. See also – Mirage Editions v. Albuquerque Art
c. P – Unauthorized derivative work
d. D – Purchased cards, affixed to tiles and resold
e. Picture framing generally not considered derivative work
f. Recasting or transforming
i. 7th Circuit – Derivative work
ii. 9th Circuit – Original work
g. Profit from someone else’s creativity
11. National Geographic v. Class. Geographic, Inc.
a. D – purchased Nat’l Geographic, rebounds and resells
b. Infringed P right to compile
c. Consistent with Mirage case
d. Inconsistent with Lee case

Moral Rights
1. French law concept – le droit moral
2. Different from economic rights
3. Moral rights sticks with author
a. Certain rights go with author
b. Cannot be taken away
c. Cannot be given up
4. Types of Moral Rights
a. Integrity – not mutilated or destroyed
b. Paternity – Acknowledging author
c. Disclosure – When work is published
5. French Moral Rights
a. Perpetual
b. Unwaivable
c. Inalienable
6. Berne Convention
a. VARA 106(A)
b. Not really incorporated into U.S. Law
7. Gilliam v. ABC (1976)
a. CR infringement by unauthorized derivative work
b. Integrity
c. CT uses Lanham Act – Unfair Trademark Competition
d. Moral rights used, but rarely used since this case
e. 10 states have laws – NOT ON EXAM

Visual Artists Rights Act (1990)
1. A6-bis
2. Covers visual rights listed in VARA
3. Snapshot is not under definition
4. See Sect 106(A)
5. Can waive rights by signing written instrument
6. Cannot transfer
7. Doesn’t apply to works made for hire
8. Rights of Attribution and Integrity

Right to Adapt/Prepare Derivative Work
1. 106(2) – unauthorized recasting, transfer, adaptation
2. Derivative markets may be more imposing than original works
3. Generally applies to merchandizing characters
4. Substantial similarity test – must be derivative work to perform test

Right of Distribution
1. Sect 106(3) – Sale by rental, lease or lending
2. Video rental without permission
3. Public distribution through electronic devices
4. Infringing reproduction and distribution rights
5. “Transmission” term not added to 106(3)
6. Judges tend to infer limitations
7. Internet – Blurs bundle of rights

First Sale Doctrine
1. Sect 109(a)
2. Separate thing from CR work
3. Property v. Intellectual Property
4. Does not apply to bootlegged works
5. Prevents CR with interfering with trade, realienation of things
6. Faucett Publishing v. Elliot Publishing Co.
a. Resold comics under different cover
b. CT – finds practice acceptable
7. First Sale can clash with the following rights
a. Reproduction
b. Adaption

First Sale Exception
1. Sect 109(b) – Exception to the CR Ownership rules
2. Computer Records and Program
3. Record rental and Computer S/W Rental Amendments
4. Prohibits rentals of phonographs and S/W
5. Contrast
a. Book rentals permitted
b. S/W rentals prohibited
6. Exception for libraries and schools

Public Lending
1. Public lending right does not exist in U.S.
2. Public lending right does exist in Europe.

Droit de Suite
1. In California, for fine arts only
2. European concept
3. Artists gains % of sales each time work is sold or resold

Quality King v. L’Anza Research – Subject to 1st Sale Doctrine
1. Grey Market
2. Buying products cheaply, then reimporting and selling through discounters
3. Assumes strong dollar
4. Takes advantage of manufacturer’s discounting/benefits
5. Theoretically benefits consumers
6. P argues
a. Labels CR
b. 1st Sale Doctrine
7. Issue: Are goods imported from abroad subject to CR and 1st Sale?
8. D – Quality King – Reimports products and gets sued
9. Claim
a. 106(3)
b. 602 – Can’t import copies without permission of CR owner
10. CT – If product lawfully produced for export, subsequent reimportation permitted under 102(9)
11. Sect 501 – “or” who imports
12. SC – Good argument, but still loses; broad interpretation; unknown if applies to imports only.

Right of Public Performance and Display – Sects 106(4), 106(5), 106(6)
1. Does not apply to all public performances and displays
2. Public Performance Issues
a. Is an act a performance?
b. Has it been publicly performed?
c. Is there an exemption from liability? – Sect 110
3. Public Place
a. Park, hotel
b. Place-specific clause in Sect 106(1)
4. Friends and neighbors at home – not considered a public display
5. Summer camp – found to be infringing and public place
6. Based on statutory exception
7. Not based on profit/non-profit issue
8. Narrowly worded exception
9. Consider hotel room transmission/broadcast

Columbia Pictures v. Aveco
1. VCR screening rooms
2. Rooms rented to general public
3. Public performance
4. Link to General Public = Public Performance

Performing Rights Society
1. 2 Biggest Societies
a. ASCAP
b. BMI
2. Act on behalf of artists to police rights
3. Terms to agreement
a. Polices infringement
b. Brings suits in name of member
c. Binds method of distributing royalties – Blanket licensing agreement

Ocasek v. Hegglund
1. P called to WY to obtain deposition
2. CT – forbids action

Grand and Small Rights
1. Grand
a. Dramatic rights
b. Individual basis with CR ownership
c. Musicals
2. Small
a. Non-dramatic musical rights
b. Licenses handled by ASCAP
c. Television

Right of Public Display
1. Right of Display
2. Sculptures
3. Pictures
4. Internet downloads
5. First Sale Doctrine – Owner may object display publicly or privately

Digital Performance Right – Sect 106(6), 110
1. Only applies to sound recordings
2. Digital Audio Transmissions

Public Interest Exceptions – Sect 110
1. In the public interest
2. Know Sect 110(1-4) for EXAM
3. Lists public interest exceptions

Compulsory Licenses – not on exam
1. Sect 115 – Recordings on Musical works may be on exam
2. Sects 111, 119, 116, 118, 114 not on exam
3. Non-negotiable license
4. Must be licensed
5. Statutory rate set by tribunal
6. Disputes resolved by arbitration or privately otherwise
7. Royalty panel abolished by Congress in 1993

Digital Performance Right in Sound Recording
1. Sect 106(6) – 1995 – Digital audio transmissions
2. Limited to right of public performance by certain audio transmissions
3. New compulsory right created in Sect 114 – Digital sound recordings
4. Complication
a. 1998 DMCA
b. Expands CR to non-sub. Individual web casting
c. Reasonable notice of use requirement
5. AM/FM broadcast signal over Internet subject to Sect 106 – Compulsory Licensing
6. Exclusive right
7. Not exempt under Sect 106
8. 114 exempt under certain performances
9. Royalty payment issues

Fair Use
1. C/L referred to as Fair Dealing
2. Sect 107
3. No Specific standards
4. Certain factors considered
5. Frustrating area of law
6. Factors
a. Purpose and character of use
i. Commercial; or
ii. Non-profit educational use
b. Nature of CR work
i. Creativity of work
ii. Core of Intended CR protection
iii. Factual v. Fictional
c. Amount and Substantiality of portion used
i. How much taken
ii. De minumus copying
d. Effect of use on Potential Market
i. Market/Value
ii. Harm to Market
iii. Incentive; Economic rationale
iv. Strong economic rights, weak moral rights

Campbell v. Acuff-Rose Music, Inc.
1. 2 Live Crew parody of “Pretty Woman”
2. Parody – Must refer to underlying work to be parody. Directed at original work
3. Parody special – Amount and Substantiality
4. Must be able to recognize original work
5. May be able to take more of original work than in other CR infringement cases
6. “No more taken than necessary” is general CR infringement standard
7. Market for or value – Parody unlikely to kill demand for original work
8. Question of law worthy of Supreme Court review
9. Parody is subject to the Fair Use Doctrine

Napster
1. P – Music publishers & recording industry artists, A&M Records et. al.
2. Situs – Northern District of California – 9th Circuit
3. Legal Arguments
a. Secondary Infringement claim
b. Vicarious liability
i. In a position to supervise
ii. Financial interest
c. Contributory Infringement
4. Must prove direct infringement, then prove Secondary infringement
5. If can’t prove direct infringement, then Secondary infringement also fails
6. Napster’s future revenues depend on infringement
7. S/W related issues
8. Fair Use Category
9. D – Argues space shifting
a. No denial of direct infringement by users
b. Not liable for
i. Contributory CR infringement
ii. Vicarious infringement
c. Space shifting
i. RealPlayer
ii. Diamond Rio MP3 Player
iii. Like taping a TV show
10. 9th Circuit
a. TV shows are different than music CD’s
b. TV is a private activity
i. Used in own home
ii. No distribution
c. Space Shifting = Distribution of music to the public
d. Evidence of Napster trying to supersede music marketers
e. Broad interpretation of Fair Use does not apply to Napster
f. D – Argues Sampling
i. Industry studies show damage to sales in college markets
ii. Commercial v. Personal use
iii. Sampling is commercial
iv. Promotional to make money
g. 9th Circuit dismissive of Napster’s arguments
h. Some arguments accepted
i. Sony-related videotaping arguments – not accepted by CT
i. TC – finds significant non-infringing uses
ii. SC – 5-4 decision
1. Manufacturers have only constructive knowledge of use
2. Sony doesn’t have actual knowledge of use
3. Don’t know of infringing v. non-infringing use
4. Possible for commercially significant non-infringing use
iii. Napster has actual knowledge of contributory infringement
iv. Napster can police work if so choosed
j. Swapping public domain songs, or by author permission permitted; but this argument doesn’t help Napster
k. Ray of Hope by appellate court
i. Injunction overbroad
ii. Must reformulate injunction
iii. Limited guidance
iv. There must be actual notice on part of Napster – register CR infringement
v. All burden put on Napster – Wrong
vi. Industry must identify and actively notify Napster of any infringements
vii. Napster has burden to police users
l. Injunction revised by TC
i. P must give Napster notice
ii. Reasonable measures to have variations on names
iii. Reasonable knowledge of infringement requires action
11. Napster Reaction
a. Implemented filtering system
b. P claims not enough action taken to stop CR infringement
12. Rule of Law in Society
a. Is technology a source of law?
b. 3rd party rights – Users
c. See Wired magazine online news site for more details

Reverse Engineering
1. Concern: Fair Use
2. Process
a. Purchase product
b. Work backwards to learn development of product
c. Trade Secrets & CR concerns
3. SW
a. Disassemble to create readable code
b. Use results to create commercial product
c. May end up competing with original product
4. Issue: Is this fair use?
5. Usually requires decompiling of program
6. Phases
a. Disassemble program
b. Use results to create commercial product
7. Sony & Sega cases
a. Reverse Engineering à Fair Use
b. Exception to access control measures in DMCA

Sega v. Accolade
1. Sega Genesis game console
2. Accolade – Game producer
3. Accolade RE’s Sega’s game console program; claims fair use
4. Intermediate, not final copying
5. Accolade Arguments
a. Intermediate copying is not infringement
b. Disassembly is lawful and Sect 102(b)
c. Disassembly authorized by Sect 117
d. Fair Use
6. CT
a. Fair use argument accepted
b. Other arguments rejected

Fair Use in Sega v. Accolade
1. Review all factors
2. Copying for commercial purposes is damaging to Fair Use Defense; but not always
3. Effect on market favors Accolade – triggers more Genesis console sales
4. Nature of CR favors Accolade – weak CR protection for part RE’ed
5. Certain public interest
a. Development of more independent games
b. No presumption of fairness in commercial use
6. Purpose
a. Independent creative expression
b. Opening market to new competitors
c. Does not destroy Sega’s market
7. Games are different
8. No monopoly granted on the market
9. Functional and creative
10. Hard to determine
a. Protected Expression
b. Unprotected Idea
11. Rejects clean room option
12. Recognizes Disassembly/Fair Use Defense

Sony v. Connectix
1. Connectix making Sony games playable on PC’s
2. Transformation of game console
3. Similar CT analysis on parts 1&4 of FU in Sony v. Sega

Copyright Misuse
1. Very few cases
a. Lasercomb v. Reynolds (1990)
b. Alcatel v. DGI (1994)
c. Morton Salt v. VGS Shipping (1942)
2. Patent Misuse – trying to get more than permitted under patent monopoly
3. CR Misuse – Trying to get more than permitted under CR laws
4. C/L + Antitrust
5. Not in statute
6. CT’s uphold C/L – 4th, 5th, 9th circuits
7. Abusing monopoly & leveraging power for bigger monopoly
8. Key in S/W licensing
9. Hypothetical
a. Reverse Engineering restriction in most S/W licenses
b. Is this CR Misuse?
c. Industry uses restrictively
d. Arguments
i. Reverse Engineering is fair use; therefore outside of CR
ii. Protection of Trade Secrets

Practice Management v. American Medical Association
1. D succeeds in case
2. AMA misusing CR
3. License = CR misuse in this case
4. CT appears to go out of way to find misuse
5. Don’t need to prove antitrust laws
6. C/L defense floating around statutes
7. Adds validity to theory of CR Misuse

Technical Protection Measures
1. Digital Copying
2. Copy protection measures – Digital watermarks
3. Access control measures – Passwords
4. CR management information measures
a. Tampering work
b. Removing name from work to personally benefit
c. See Sect 1202
5. DMCA 1201
a. Access Measures – Technical Blocking
b. Copy Control Measures – Subsequent Copies

Bilski Examiner Guidelines

2009-08-27T13:44:00.001-07:00

http://www.patentlyo.com/patent/2009/08/interim-guidelines-on-statutory-subject-matter.html#comments

Don't just assert cited references don't show all claim elements

2009-08-24T15:31:00.000-07:00

Ex Parte Dandekar:

Specifically, with respect to claims
1-6, at pages 3-4 of the Appeal Brief, Appellants argue:
Lee does not teach or suggest a computer implemented
system for enabling configuration of an information handling
system which includes a configurator, a service activation
module for enabling a user to activate a service for use on an
information handling system, and a database where database
receives information from and supplies information to the
configurator and the service activation module, all as required
by claim 1. Accordingly, claim 1 is allowable over Lee. Claims
2 - 6 depend from claim 1 and are allowable for at least this
reason.
The Appeal Brief presents no other arguments with respect to claim 1.

Appeal board says that Examiner had "specific and detailed findings" while the Applicant had only "arguments not supported by further evidence...." Examiner won.

International Searching Authority advice

2009-08-24T14:47:00.000-07:00

From Patently Defined, here.

Omnibus rejection of multiple claims

2009-08-24T14:43:00.000-07:00

From Patently Defined, here
"We have all seen rejections in which an Examiner has erroneously characterized several independent claims, grouped them together, and generically rejected the group. In situations like this in which an Examiner has grouped claims together to make a generic, omnibus rejection, §707.07(d) of the MPEP may be of interest. That section warns:"

707.07(d) Language to be Used in Rejecting Claims

*****

A plurality of claims should never be grouped together in a common rejection, unless that rejection is equally applicable to all claims in the group.

Enablement rejection response examples

2009-08-24T13:54:00.000-07:00

Examples of Enablement rejection responses thanks to Patently Defined.

Noncompliance checklist for Appeal Briefs

2009-08-24T13:49:00.001-07:00

Appeal Brief Tips from Patently Defined

USPTO Appeal Brief checklist download here.

Microsoft v. ATT

2009-08-24T12:41:00.000-07:00

Microsoft v. ATT Wikipedia.

Parker v. Flook

2009-08-24T11:37:00.000-07:00

[7]

The Court did not agree with Flook's assertion that the existence of a limitation to a specific field of use made the formula patent-eligible. The majority opinion said of this argument:

A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques.

The court moderated that assertion by agreeing that not all patent applications involving formulas are patent-ineligible by saying, "Yet it is equally clear that a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm." Patents involving formulas, laws of nature, or abstract principles are eligible for patent protection if the implementation of the principle is novel and unobvious—unlike this case, in which it was conceded that the implementation was conventional.[8] Accordingly, in Flook's case, there was no "other inventive concept in its application," and thus no eligibility for a patent.
Summary Totally from Wikipedia, here.

List of 101 Case Links

2009-08-24T11:15:00.000-07:00

101 cases:
1854 O'Reilly v. Morse 15 How. 62. Electrical Signal itself (morse code) not patentable but repeaters to allow morse code to be transmitted long distances is patentable. Wikipedia.

Gottschalk v. Benson 409 U.S. 63 (1972). process claim directed to a numerical algorithjm , as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." BCD (binary coded decimal) to digital converter unpatentable as algorithm. Wikipedia.

Parker v. Flook 437 U.S. 584 (1978). Claims directed to "alarm limits," algorithm values that indicated catalytic converter malfunctioning.

Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application. Wikipedia

Diamond v. Diehr, 450 U.S. 175 (1981), was a 1981 U.S. Supreme Court decision which held that the execution of a physical process, controlled by running a computer program was patentable. Wikipedia

State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), Claim eligible for patentability if "it produces a useful, concrete and tangible result." Opened door to business method patents.

In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385(Fed. Cir. 2008), “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.” Wikipedia

Words not to use in Patent Applications

2009-08-19T13:18:00.000-07:00

“The invention …,” essential, must, needed, desirable, usual, correct, required requirement, laborious, expected, never, must, significant, majority, peculiar, most, should, surely, none, only, rarely, "limited success with," "free of," "substiantially free of," typically, highly, absolutely, frequently, difficult, conveniently, "time consuming," commonly, generally, uncommon, usually, few, "as much as," "substantially XXX," "majority of XXXX," special, "fully", "clearly", "concisely" and "exactly." Some of then are not really NO NO, but I would think that if you use them, you better have a definition somewhere.

With respect to "surprisingly discovered," see Purdue Pharma L.P., et al. v. Endo Pharmaceuticals, Inc., et al.

With respect to "standard," "conventional,"
"normal," see PC Connector Solutions LLC v. Smartdisk. Claim terms such as "standard", conventional", and "Normal" limited the claim limitations "to technologies existing at the time of the invention."

With respect to "at least one of A, B, C, D, and E" -- not a NO NO, but proceed with caution with the rather screwy case, SuperGuide Corp. v. DirecTV Enters., Inc., 211 F. Supp. 2d 725

With respect to "contain" or "containing" not a NO NO, but why bother, why not just use "comprise" or "comprising" to avoid disputes down the road. See Mars, Inc. v. H.J.Heinz Co. 03-1617

from htp here

Regarding negative implications arising out of use of the term "invention" in the specification, see, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) ("[w]hen a patent thus describes the features of the 'present invention' as a whole, this description limits the scope of the invention."); Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1318-19 (Fed. Cir. 2006); Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (“[T]he characterization of the coaxial configuration as part of the ‘present invention’ is strong evidence that the claims should not be read to encompass the opposite structure.”); see also Andersen Corp. v. Fiber Composites, LLC, 474 F3d 1361, 1368 (Fed. Cir. 2007) (specification’s description of a “critical element” found limiting).

But in partial support of Mr. Cole's second posting, see Praxair, Inc. v. ATMI, INC., No. 2007-1483 (Fed. Cir. 9/29/2008) (Fed. Cir., 2008):
However, it is generally not appropriate “to limit claim language to exclude particular devices because they do not serve a perceived ‘purpose’ of the invention. . . . An invention may possess a number of advantages or purposes, and there is no requirement that every claim directed to that invention be limited to encompass all of them.” E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed. Cir. 2003) (citation and footnote omitted); see also Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., No. 2007-1363, 2008 WL 4072052, at *6 (Fed. Cir. Sept. 2, 2008) (quoting and applying E-Pass). The language here does not suggest that each embodiment of the invention must serve the uniformity objective.

But nearly all of the parts of the specification that discuss uniform capillaries cover only specific embodiments of the invention of the ’609 patent and not the invention as a whole. As such, these parts of the specification are not properly construed as limiting the meaning of the claim language. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2007).

The exception is statements such as the language in the Summary of the Invention section of the ’609 specification that “[t]he apparatus of this invention provides a flow restrictor in the storage container in the form of a tube having multiple uniformly shaped capillaries . . . .” ’609 patent col.3 ll.54-56. A somewhat similar statement appears in the Detailed Description of the Preferred Embodiments. See id. col.7 ll.27-29 (“A useful feature of this invention is the provision of the essentially round outer
cross section of the tube with the relatively uniform internal capillary passages.”); see also id. col.9 l.66-col.10 l.9 (“A number of other forming techniques and material properties can be important to obtaining a uniform multi-capillary structure. . . . Uniformity of the resulting capillaries also improves as the alignment of the conduits in the drawing stock becomes more parallel.”).

Although these statements appear to pertain to the invention overall, rather than a specific embodiment of the invention, they are contradicted by a number of express statements in the ’609 specification clearly indicating that uniformity of the capillary tubes is a feature only of certain embodiments, and not of all embodiments, of the invention. The Summary of the Invention states “in a limited apparatus embodiment this invention is an apparatus for controlling the discharge of pressurized fluids . . . . The apparatus comprises . . . [a] tube defining multiple and uniformly sized capillary passages . . . .” Id. col.4 l.66-col.5 l.17 (emphasis added). Another passage from the Summary of the Invention confirms this understanding, describing capillary uniformity as an aspect of “a broad embodiment [of] this invention”. Id. col.4 ll.22-34 (emphasis added). Likewise, the Detailed Description of the Preferred Embodiments section of the specification explains that “[t]he preferred structure of this invention is a uniform multi-capillary assembly that virtually eliminates the presence of irregular capillaries. . . . The most preferred

Process defines product by process claims

2009-08-11T11:27:00.000-07:00

Abbott Labs v. Sandoz, 566 F.3d 1282 (Fed. Cir. 2009),

In Abbott Labs, the Federal Circuit resolved this long-standing inconsistency and upheld the view expressed in Atlantic Thermoplastics that “process terms in product-by-process claims serve as limitations in determining infringement.” 566 F.3d at 1293 (citing Atlantic Thermoplastics, 970 F.2d at 846-847). The Court expressly overruled Scripps to the extent that it conflicted with this ruling. Id. The Court determined that this view comported with the Supreme Court’s opinion in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), in which the high court stated that “(e)ach element contained in a patent claim is deemed material to defining the scope of the patented invention.” 520 U.S. at 19.

The Court acknowledged the validity of product-by-process claims, though it made clear that the process terms are limiting in terms of enforcement. The court based its holding on the public notice function of patent claims, holding that where a patent holder claims a new product solely in terms of a particular process, infringement must be determined by “comparison of the claimed and accused infringing processes.” 566 F.3d at 1294.

Three judges led by Judge Newman filed a long dissent, arguing that the majority opinion overturned a century of precedent that allowed patent applicants to protect a new product whose structure is not fully known or readily described by merely including sufficient reference to the process required to create it. 566 F.3d at 1299-1300. The dissent calls for a “rule of necessity” for difficult-to-define inventions. Id. at 1300.

Copied from this web post.

No software means plus function claims anymore

2009-07-31T16:56:00.000-07:00

http://www.patentlyo.com/08-1368.pdf

Blackboard's patent covers an internet-based educational support system and method. (U.S. Pat. No. 6,988,138). On summary judgment, the district court (Judge Clark, E.D. Tex.) found claims 1-35 invalid as indefinite, but a jury found found that Desire2Learn liable for infringement of claims 36-38. On appeal, the Federal Circuit agreed that Claims 1-35 are indefinite, and – after altering the claim construction – held that the remaining claims were also invalid as anticipated.
Means-Plus-Function: Blackboard's seemingly broadest claim (claim 1) includes several means-plus-function clauses, including a "means for assigning a level of access and control." The specification briefly discusses an "access control manager" (ACM) with an "access control list." On appeal, however, the court found that brief description to be an insufficient "disclosure of the structure that corresponds to the claimed function" and consequently indefinite under 35 U.S.C. §112 ¶2. See In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1994)(en banc).
"[W]hat the patent calls the 'access control manager' is simply an abstraction that describes the function of controlling access to course materials, which is performed by some undefined component of the system. The ACM is essentially a black box that performs a recited function. But how it does so is left undisclosed."
Important for patent drafter, means-plus-function claims require disclosure in the specification even if the means are already well known in the art.
The fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users' predetermined roles goes to enablement. The question before us is whether the specification contains a sufficiently precise description of the "corresponding structure" to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function.
Because claims 2-35 all depend upon claim 1, they are all invalid as indefinite
Claim construction: At the trial, Blackboard's expert could only identify one difference between claims 36-38 and the prior art. Namely, that the Blackboard patent identified a "single login" feature that allowed one user to have various roles within the system. "For example, Blackboard asserted that its claimed method would allow a graduate student who was a student in one course and a teacher in another to use a single login to obtain access to both courses and to obtain access to the materials for each course according to the graduate student’s role in each." However, on appeal, the Federal Circuit determined that the claims do not actually require that feature -- leading them to hold the claims invalid based primarily on the admissions of Blackboard's own expert.
[O]nce the claims are properly construed, the conclusion of anticipation is dictated by the testimony of Blackboard’s own witnesses and the documentary evidence that was presented to the jury. Based on that evidence, and in the absence of a “single login” requirement in claims 36-38, it is clear that the prior art contains every limitation of those claims.Defendant Desire2Learn wins a complete victory (after a few million in attorney fees).

That/which

2009-06-23T14:50:00.001-07:00

that, which (pronouns) Use that and which in referring to inanimate objects and to animals without a name. Use that for essential clauses, important to the meaning of a sentence, and without commas: I remember the day that we met. Use which for nonessential clauses, where the pronoun is less necessary, and use commas: The team, which finished last a year ago, is in first place.

(Note that this formulation folds in a recommendation against that used to refer to human beings.)

Uniquely referring NPs like the only solution to the problem can have either sort of relative:

The only solution to the problem that will satisfy them is to abandon the project. [restrictive]

The only solution to the problem, which will satisfy them, is to abandon the project. [non-restrictive]

Passive voice

2009-06-23T14:03:00.000-07:00

Identifying the passive voice is simple. It is formed by auxiliary verb "to be" and the -N form of the verb (the "past participle" if you like that name), which, of course, may actually end in -T or -ED.

BOTH elements must be present for the sentence to be passive voice, not just the participle (which is used in the perfect) and not just "auxiliary to be" which is used in the progressive, and certainly not just plain "to be" all by itself as the main verb.

And Dan T., I'm not sure how correct this is, but the way I've been checking whether a sentence is passive is by adding "by John" (or whomever) to it and seeing if it still makes sense. So, "The cake was made" becomes "The cake was made by John", so I think it's in the passive voice, but "There are salt and pepper shakers that have come into the house over the years" doesn't work. I have no idea if this is correct, but I think it's worked every time I've used it so far.

On checking my copy of Strunk & White (sorry - it's a long story) for this implausible clause I found: "My first visit to Boston will always be rememembered by me."

On the other hand, if it said "My first visit to Boston will always be remembered by the Mayor, the City Council, and the Boston Police Department", it would be much more difficult to rewrite it into the active voice without, at the very least, radically altering the emphasis of the sentence, possibly greatly disserving the narrative which the reader is led to expect from such a beginning.

Which goes to show that the passive voice (even in the strict grammatical sense) has its uses, and teachers ought to adopt a more nuanced approach to it. Even if a given student is using the passive voice badly, telling them not to use it at all doesn't address the real problem and potentially deprives them of a useful tool for some situations.

'He was exhausted by the journey' is clearly in the passive voice; 'He was exhausted', on the other hand, is the verb 'to be' with the adjective 'exhausted' as complement.

[In the vast majority of cases it will work very nicely indeed. There may be a few cases of actives where accidentally an irrelevant by-phrase can be added, and perhaps the occasional passive that doesn't sound right when a by-phrase is explicitly added (if I was born in Oregon is a passive, it is one that does not allow an agent by-phrase); but those will be highly unusual cases. In general, John's test is very useful. And it completely negates the idea that passive clauses are vague about agency, of course, since the whole point of the by-phrase that you can usually add is to lay emphasis on the identity of the agent. —GKP]

[I'm sorry to say it is much more complicated than this. What Karen has said would not cover the passive clauses (underlined) in sentences like She went out and got herself arrested by the vice squad or I'll have your bags brought up to your room by the porter or This change went unnoticed by most people, where there is no auxiliary be; and it would not cover "concealed passives" like This thing really needs repairing by a professional, where there is no past participle.

Defining the class of passive clauses in English is not that simple, and I never suggested that it was. I'm only drawing attention to the fact that people keep using the term when they have not idea at all how it is defined or employed in the field of grammar but they throw the term around anyway. —GKP]

"operable to" pitfalls

2009-04-29T06:40:00.000-07:00

Prouse's appeal focused on overcoming a 102(b) rejection of certain pending claims. Claim 1 recited:
1. A system in an electronic device for emitting light from a light-emitting diode (LED) at a variable brightness, comprising:

a waveform generator for generating an LED signal waveform comprised of a plurality of LED signal values; and

a processing unit operable to determine a scaling value for one or more LED signal values in the plurality of LED signal values, wherein the scaling value scales the one or more LED signal values based upon a percentage of a particular LED brightness.
The BPAI stated that "speculation and conjecture must be utilized by us and by the artisan inasmuch as independent claim 1 on appeal does not adequately reflect what the disclosed invention is." In analyzing the claims, the Board compared the "processing unit operable to determine" against the method claim that positively recited determining the scaling values. They stated:
In direct contrast to the positive statement of determining in independent claim 9, a processing unit is merely recited in independent claim 1 to be “operable to determine a scaling value.” Thus, it is merely capable of performing the recited or desired function of determining a scaling value. In other words, there is no present tense, positively recited determination of a scaling value in claim 1. Thus, since the scaling values are not actually determined, they cannot be used to scale the LED values as recited in the claim. This situation clearly renders the entire subject matter of independent claim 1 and its respective dependent claims 5-8 indefinite within the second paragraph of 35 U.S.C. § 112.
In view of the above, the Board reversed the Examiner's anticipation rejection of claims 1 and 9 and those claims depending from the independent claims. However, the Board issued a new ground of rejection with respect to claim 1 under the second paragraph of 35 U.S.C. § 112.

I don't think the use of "operable to" was the problem here. Rather, it was "operable to" in combination with the clause "wherein the scaling value scales the one or more LED signal values based upon a percentage of a particular LED brightness."

The question is, how can the scaling value do any scaling when its existence isn't certain?

I would try to fix this by saying something like "wherein the processor is further operable to scale the one or more LED signal values based upon a percentage of a particular LED brightness using a determined scaling value."

From http://bpaiwatchdog.blogspot.com/2009/04/processor-operable-to-peform-function.html#comments

103 patent drafting

2009-04-17T18:09:00.000-07:00

• Unexpected results more important
– Stress this in specification
– Describe how invention surpasses ordinary innovation
/ common sense
• Avoid discussing “the problem” in the
background

Emphasize in specification the new functionality
that is not achieved by prior art
• Capture new functionality in claims
– Avoid list of elements that may be considered old
individually
• Submit objective evidence of nonobviousness in
a declaration under 37 CFR §1.132 by an
inventor or other witness
– Show evidence of unexpected results, commercial
success, long-felt need, failure of others, copying by
others, licensing, and skepticism of experts.

103 strategies

2009-04-17T17:53:00.000-07:00

Effective Response Tactics
• (1) Combining prior art elements according
to known methods to yield predictable
results
– One or more element not in prior art
– Combination not according to known methods
– Results not predictable

(2) Simple substitution of one known
element for another to obtain predictable
results
– One or more element not in prior art
– Substitution not “simple”
• Requires inventive activity; modification of other
elements
• Contrary to common sense
• Destroys intended purpose of one or both references
– Results not predictable

(3) Use of known technique to improve
similar devices
– Technique is not known
– Devices not similar
– Technique not applicable to this device
• Requires inventive activity; modification of other
elements
• Contrary to common sense
• Destroys intended purpose of reference

(6) Known work in one field of endeavor may
prompt variations of it for use in either the same
field or a different one based on design
incentives or other market forces if the variations
would have been predictable to one of ordinary
skill in the art
– Work not actually known
– No recognition of problem to prompt variation
– Application of known work to different field
contravenes common sense in context of proposed
combination / modification of prior art
– Variations not predictable

(7) Some teaching, suggestion, or motivation in
the prior art that would have led one of ordinary
skill to modify the prior art reference or to
combine prior art reference teachings to arrive at
the claimed invention (similar to old test)
– Modification / combination contravenes common
sense
– Modification / combination destroys intended purpose
of prior art
– No TSM shown in prior art, and examiner provides no
convincing line of reasoning to support

(4) Applying a known technique to a known
device ready for improvement to yield
predictable result
– Device is not known
• At least one element missing
– Technique is not known, or
– Application of known technique to this device
contravenes common sense
– Result not predictable

• (5) “Obvious to try”—choosing from a finite
number of identified, predictable solutions,
with a reasonable expectation of success
– Number of solutions not finite
– Solution not identified
– No reasonable expectation of success
• Solution contravenes common sense in the context
of the proposed combination/modification of prior
art

Prima facie obviousness still requires showing
apparent reason for combination
– Contest this if not shown by examiner
– Do not accept conclusory statements of obviousness

• Dispute all un-supported assertions by examiner
– Legal conclusions
• Existence of TSM
• Common sense
• Level of skill in the art
– Factual conclusions
• Finite number of known solutions
• Known work in field
• Predictability of results
• Rule 1.104(d)(2)
– Allows applicant to request affidavit from Examiner in support of
statements made based on personal knowledge
– Often forces Examiner to find additional prior art and issue new,
non-final office action

Supreme court cases

2009-04-09T19:02:00.001-07:00

http://www.kashalaw.com/inrebilskiflowchart2

Important Cases

Supreme Court

KSR
Rationales for arriving at a conclusion ofobviousness suggested by the SupremeCourt’s decision in KSR include:
(A)
Combining prior art elements accordingto known methods to yield predictableresults;
(B)
Simple substitution of one known elementfor another to obtain predictable results;
(C)
Use of known technique to improve
similar devices in the same way

Gottschalk v. Benson - On November 20, 1972 the Supreme Court found a method for converting numerical information from binary-coded decimal numbers into pure binary numbers to be unpatentable even though this method recited a reentrant shift register.

Parker v. Flook- On June 22, 1978 the Supreme Court found a method for updating alarm limits during catalytic conversion processes to be unpatentable under 35 U.S.C. § 101.

Diamond v. Diehr - On March 3, 1981 the Supreme Court found a process for molding raw, uncured synthetic rubber into cured precision products to be patentable subject matter under 35 U.S.C. § 101. The Federal Curcuit in Bilski said, "[t]he process claimed in Diehr, for example, clearly met both criteria [machine and transformation]. The process operated on a computerized rubber curing apparatus and transformed raw, uncured rubber into molded, cured rubber products."

Federal Circuit

In re Abele - On August 5, 1982 the Federal Circuit's predecessor court found that claims directed to displaying data were unpatentable, while dependent claims specifiying X-ray data were patentable.

In re Schrader - On April 13, 1994 the Federal Circuit found that a method for competitively bidding on a plurality of related items, such as contiguous tracts of land or the like was patentable under 35 U.S.C. § 101.

State Street v. Signature Financial - On July 23, 1998 the Federal Circuit found that a system claim involving managing a financial services portfolio was patentable under 35 U.S.C. § 101. 5,193,056

In re Bilski - On October 30, 2008 the Federal Circuit found a method for managing the consumption risk costs of a commodity unpatentable under 35 U.S.C. § 101. This case also overruled all tests for patentability other than the machine-or-transformation test. In re Bilski blog entry

Classen Immunotherapies v. Biogen IDEC - On December 12, 2008 the Federal Circuit found a method of determining whether an immunization schedule affects the incidence or severity of a disorder. Claim 1 of U.S. Patent 5,723,283

In re Comiskey - On January 13, 2009 the Federal Circuit found claims directed to "the mental process of resolving a legal dispute between two parties by the decision of a human arbitrator" to be unpatentable under 35 U.S.C. § 101.

BPAI

Ex parte Bo Li - This November 6, 2008 decision was the first decision from the Board of Patent Appeals and Interferences to address a computer readable medium claim after the ruling in In re Bilski. The Board found that the claim should no longer be rejected under the In re Bilski test. Ex parte Bo Li blog entry

Ex parte Cornea-Hasegan - On January 13, 2009 the Board of Patent Appeals and Interferences found that "the recitation of a 'processor' fails to impose any meaningful limits on the claim's scope" and, therefore, "is insufficient to establish patent-eligibility under 35 U.S.C. § 101," according to the In re Bilski decision. Ex parte Cornea-Hasegan Flowchart

Ex Parte Gutta - On January 15, 2009 the Board of Patent Appeals and Interferences found that "the recitation in the preamble of '[a] computerized method performed by a data processor' adds nothing more than a general purpose computer that is associated with the steps of the process in an unspecified manner." They also found that step of "displaying" the result to a target user in claim 1 is a post-solution activity insufficient to impart patentability.

Ex parte Barnes - On January 22, 2009 the Board of Patent Appeals and Interferences found that the claims "call for the gathering, analyzing and displaying of data without any details as to how the data is gathered, analyzed or displayed." This case is interesting because a § 101 rejection was not before the Board, but they entered it as new grounds for rejection. U.S. Publication No. 20060133206

Ex parte Becker - On January 26, 2009 the Board of Patent Appeals and Interferences found that "Appellants’ claimed 'method for creating a hierarchically structured automation object and embedding said automation object into an engineering system' (see preamble, claim 7) does not require a particular machine or apparatus, nor do these claims transform any article into a different state or thing." In this case also a § 101 rejection was not before the Board, but they entered it as new grounds for rejection. This case is interesting because claim 7 included modules, but was still rejected. U.S. Publication No. 20020072819

Ex parte Atkin - On January 30, 2009 the Board of Patent Appeals and Interferences found that a method and system for converting a unidirectional domain name to a bidirectional domain name were unpatentable under 35 U.S.C. § 101. The Board found that a "domain name is simply a series of characters representing the address of a resource, such as a server, on the World Wide Web." The Board reasoned that the ruling in Bilski was also applicable to a system claim, because the "term 'system' in the preamble is broad enough to read on a method and thus does not imply the presence of any apparatus."

Ex Parte Motoyama - On February 27, 2009 the Board of Patent Appeals and Interferences found that a method for a monitoring device to obtain an identifier of a monitored device was unpatentable under 35 U.S.C. § 101. The Board found that while "the preamble of claim 1 recites a method 'for a monitoring device,' the method of claim 1 is not recited in terms of hardware or tangible structural elements. In this case as in Barnes and Becker, a § 101 rejection was not before the Board, but they entered it as new grounds for rejection.

Bilski examples -- Claim Drafting

2009-04-09T16:37:00.000-07:00

Include unique hardware to enhance the likelihood of being assigned to a different patent group.
Illustrate a hardware device in the first drawing.
Describe the hardware device in the abstract.
Draft the first patent claim so that it is directed to the hardware device.

If possible, make your first patent claim narrow and easy to understand.
Many Examiners do not read the patent application in detail. Instead, the Examiners tend to focus on the first patent claim.
Draft a first claim that is narrow and is in plain English.

In the patent claims consider using the phrase “one or more computer processors.”

In the first patent claim consider also using the phrase “transforming data X into data Y.”

Ex Parte Dickerson: (BPAI Opinion)

In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008) (en banc).
Claims 23, 29, and 30 are drawn to processes (FF 1-10) which are
statutory if they meet the machine-or-transformation test. “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.” Id. at 954, citation omitted. We find that claims 23, 29, and
30 recite a computerized method which includes a step of outputting
information from a computer (FF 7 and 9-10) and therefore, are tied to a
particular machine or apparatus.

6. Claim 23 recites:
assessing impacts of applications of the set
of solutions on the operational metrics for the
specific industry, wherein the assessing includes
determining which of the set of solutions has a
negative impact on an operational metric and
determining which of the set of solutions has a
positive impact on the operational metric.

7. Claim 23 recites “outputting the solution from the computer
system.”
8. Claim 29 recites a method including “first identifying a plurality of
operational metrics for the specific industry, wherein the
operational metrics include a factor used to measure health or
viability of a generic company in the specific industry, wherein the
specific industry is a grocery store industry.”
9. Claim 29 also recites “outputting the value proposition from the
computer system.”
10. Claim 30 recites a method including the same two steps recited in
claim 29 above.

Claim 23 in its entirety:
23. A computerized method for identifying a solution to address exposed performance gaps of a company in a specific industry, comprising:

first identifying a plurality of operational metrics for the specific industry, wherein the operational metrics includes a factor used to measure health or viability of a generic company in the specific industry, wherein the specific industry is a grocery store industry, wherein the operational metrics include at least one of a rate of inventory turnover and a number of customers per day;
assembling a set of solutions for application by the specific industry, wherein the set includes one of a decision, an action, a product, and a service;

assessing impacts of application of the set of solutions on the operational metrics for the specific industry, wherein the assessing includes determining which of the set of solutions has a negative impact on an operational metric and determining which of the set of solutions has a positive impact on the operational metric;

after identifying, assembling, and assessing, then comparing a current operational performance of the company to an operational performance of another company within the specific industry to obtain at least one performance gap, wherein the operational performance includes a performance of a company based upon the operational metric for the specific industry;

identifying a solution based upon the impacts to address the exposed performance gaps, wherein the solution is at least one of a decision, an action, a product, and a service that impacts a problem in a positive manner; and

outputting the solution from the computer system.

(found in Patently Defined)

Joe Sixpack says these forms worked:
1) This language overcame a Bilski rejection at the appeals board.
Appeal 2009-1485
A computer-readable medium having stored thereon instructions that, when executed, direct a printer to…

2) This language was offered by an examiner in 11/423,538:

Suggested change: “A computer readable storage medium storing instructions which, when executed on a programmed processor…”

In practice I think you’re really limited by the type of specification you’ve inherited or created. I’ve seen a few Bilski rejections in software applications I’ve inherited. I’ve been able to overcome them using language similar to that found above. These rejections, however, were first office actions, not appeals. Bottom line is that you need some support in the specification to overcome these rejections. I’m giving myself more support now that Bilski was grated certiorari.

From commenter Dr. Sinai Yarus
generic Example:
A method to satisfy the Bilski machine or transformation test, the method comprising:
A) Receiving a data input at a data reception module;
B) Transferring the data to a processing module;
C) Processing the data to produce transformed data.

Each of the three steps is linked to the machine.

C explicitly states there is a transformation.

Most Examiners are looking at 101 as an “easy way out”. Writing a good 101 rejection for a claim in this style is generally too much work and they don’t bother.

From commenter Aristo:
Returning to the wild variability in applications of Bilski by staff at the USPTO, and the uncertainty as to how a general purpose computer may be treated by the Federal Circuit, a stronger strategy than arguing a tie to a particular machine alone may be to argue both prongs of the Bilski test, including an argument with respect to a transformation. In the case of software, memory (registers, cache, RAM, etc.) must naturally undergo physical transformations when a processor runs since the physical semiconductor material changes state. While the Federal Circuit discussed transformations of data in Bilski, the physical transformations to matter that occur when running software on a machine were not specifically addressed. Accordingly, bolstering 101 arguments with such language may be beneficial and in my practice has worked in a handful of cases on its own when clients would not agree to amend method claims to include structure.

All comments above found on string Here.

"An electronic device comprising:
a housing;
a display carried by said housing; and
a processor carried by said housing and cooperating with said display, said processor configured to:
perform software step a,
perform software step b, and
perform software step c."

Epo 2 year deadline on filing divisionals

2009-04-01T15:14:00.000-07:00

There have been mutterings and papers for some time about the EPO restricting the filing of divisional applications. They were viewed by some at the EPO as a thorn in the side of 3rd party rights.

It is now official – the EPO Administrative Council met 26 March 2009 and considered the filing of divisional applications to be “abusive” so they have signed off on an EPC rule change to Rule 36 severely limiting the opportunities to file divisional applications.

Under present Rule 36 EPC, a divisional application can be filed at any time before grant, abandonment or withdrawal of the parent case.

The new rule will restrict this deadline in two ways:

1. If the EPO do not raise an objection of unity of invention. Any divisional application(s) can only be filed within 2 years of the first communication from the examining division; and

2. If the EPO do raise an objection of unity of invention. Any divisional application(s) can only be filed within 2 years of the first communication from the EPO (not when acting as the International Search Authority) which identifies that there is more than one invention.

Here are some examples of how the new rule will work: An applicant can voluntarily file a first divisional from an original parent application, and a second divisional, from the first divisional. However both divisionals must be filed in the 2 years after the first examining division communication on the original parent application.

If the EPO identifies 3 different inventions in a search report on an original application, then the applicant must file divisional applications to each of the 2 additional inventions within two years of that search report. However, if one of those divisionals provokes a new lack of unity objection, then the new objection starts a fresh 2 year term for filing divisional applications for the newly-identified inventions.

There will be clarification to this proposed system in the year before the new rule takes effect. In the meantime, if you have any specific questions on how the new system will operate, please let us know.

The new rule will come into force on April 1, 2010. There will be a 6 month grace period, until October 1, 2010, for filing divisional applications outside the new two year periods.

Copied from patent baristas, here.

Amendment Support boilerplate

2009-04-01T14:59:00.000-07:00

Applicant has amended claim 1. Support for this amendment may be found at least at, for example, paragraph [0025] of the Specification as originally filed. Thus, no new matter has been added.

Inherency general rules

2009-04-01T14:55:00.000-07:00

In rejecting claim 1 under 35 U.S.C § 102, the Office Action concedes that the Smith patent does not expressly or impliedly teach the aforementioned claim feature of a widget. (Office Action, page 3). Nonetheless, the Office rejects claim 1, contending that the feature of a widget is inherently taught by Smith. Applicant respectfully traverses this rejection at least because the Office has not met its burden to fully develop reasons supporting its reliance on the doctrine of inherency.

The Office always bears the initial burden to develop reasons supporting a reliance on inherency. (MPEP 2112 (IV)). To satisfy this burden, the Office must identify some basis in fact or articulate some reasoning at least tending to show that allegedly inherent subject matter necessarily (i.e., inevitability) flows from cited art. Indeed, the MPEP expressly instructs that:

“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Further, since a basis in fact and technical reasoning is required when inherency is invoked, a failure to provide such evidence or rationale is fatal to the reliance on this doctrine. This is only logical since evidence “must make clear” that the allegedly inherent subject matter is necessarily present in (i.e., necessarily flows from) the disclosure of cited art. (MPEP 2112).

A review of page 3 of the Office Action reveals the absence of the required rationale or evidence at least tending to show that the feature of a widget inevitably flows from the disclosures of Smith patent. Indeed, the Office Action merely asserts that a red widget is inherently present in the Smith patent. (Office Action, page 3). This naked assertion, a mere conclusory statement, cannot reasonably be said to be a development of any reason supporting the Office’s reliance on inherency. Consequently, the Office Action’s reliance on inherency is unsupported and thus improper.

In sum, the Office Action concedes that the Smith patent does not teach the feature of claim 1 of a widget and any reliance on the doctrine of inherency to provide this necessary teaching is improper.

2. A Substantive Response

In rejecting claim 1, the Office Action concedes that the Smith patent does not expressly or impliedly teach the aforementioned claim feature of a red widget. (Office Action, page 3). Nonetheless, the Office rejects claim 1 under 35 U.S.C. § 102, contending that a red widget is inherent from the disclosures of the Smith patent. This contention is respectfully traversed, at least because express teachings of the Smith patent preclude reliance on the doctrine of inherency, as a matter of law.

It is well settled that subject matter is inherent only when extrinsic evidence makes it clear that the subject matter necessarily (i.e., inevitably) flows from a disclosure of cited art. (MPEP 2112). This requirement is a prerequisite to invoking the doctrine of inherency and cannot be avoided. Consequently, inherency may never be established by mere probabilities or even possibilities and the mere fact that a certain thing may be present (or may result) is always insufficient. (MPEP 2112).

A review of the Smith patent reveals no less than three separate teachings that the Smith widget cannot be red. Applicant respectfully submits that these express teachings so heavily weigh against the inevitable presence of a red widget that they preclude reliance on the doctrine of inherency as a matter of law. Stated another way, the presence of these express teachings means that the subject matter alleged by the Office Action to be inherent can never reasonably be said to necessarily flow from the Smith patent. Thus, the Office’s current reliance on inherency can never satisfy the standard set forth in MPEP § 2112 for proper reliance on inherency.

From Patently Defined, date: Sept. 17th, 2008. Here.

Disclosure Meeting Checklist.

2009-04-01T14:46:00.000-07:00

Remind inventors:
Never criticize claims in an email. Call to make the criticisms.

Once the process is explained, I have one warning: do not criticize my claims in an email. Most of my inventors are tech savvy and use email for everything. I stress to them that even though out conversations may be protected by attorney/client privilege, there is no need to generate unnecessary problems.

I paint them a picture of their competitor’s attorney standing in front a big easel with their email blown up to giant size, explaining to a jury “The Inventor himself said that this claim is not patentable” or “Look, the Inventor said this limitation is too broad”.

I implore them to call me or send an email requesting a telephone call. We can talk about the claims all we want, beat them around, get other people’s opinions, or argue about them, but please do not write those kind of comments and send them to me.

Office action steps.

2009-04-01T14:34:00.000-07:00

1. Check that the dates of all cited references qualify as prior art.
2. Check if patent entity owns any of the references.

Words to check--Refer to "cited publication" not "prior art."

Check that there are no occurances of the words "must," "Prior art," "invention" or "reference."

A recent litigated case involving a Colorado inventor hinged on the fact that the patent drafter stated “the benefit is…” rather than “a benefit is…” or “a potential benefit is …”. The entire case hinged on the fact that the court read the phrase to mean that the claimed invention must have the limitation. Literally millions of dollars were on the line because of an inadvertent error during patent drafting.

From http://www.krajec.com/index.php?/weblog/prohibited_words_in_a_patent_must/

Official Notice -- from Patently Defined, mostly

2009-04-01T14:31:00.000-07:00

Whole post from Patently Defined is here.

Example 1 - An Improper Taking of Official Notice

Applicant respectfully traverses the rejection of independent claim 1 at least because the Office has failed to establish a prima facie case of obviousness.

In rejecting independent claim 1 under 35 U.S.C § 103, the Office Action contends:

It would have been obvious to one having ordinary skill in the art at the time the invention was made to replace the printer of Smith with the plotter of Jones since the Examiner takes Official Notice of the equivalent use in the art and the selection of any of these known equivalents to write information on a plastic card would be within the level of ordinary skill in the art.

Applicant respectfully traverses this attempted use of Official Notice as improper. Consequently, a necessary element of a prima facie case is absent.

Firstly, it is to be appreciated that the Office Action attempts to officially notice legal conclusions, –namely “the equivalent use in the art and the selection of any of these known equivalents to write information on a plastic card would be within the level of ordinary skill in the art.” Official Notice, however, is only proper for facts. (MPEP § 2144.03). Indeed, Official Notice is only permissible for those few facts that are of a “notorious character” and that are “capable of instant and unquestionable demonstration”. (MPEP § 2144.03(A)). It is improper to use Official Notice for conclusions of law.

Secondly, the Office Action relies on Official Notice as the “principal evidence” upon which the rejection of claim 1 is based. Official Notice cannot be used in this manner. As Section 2144.03(A) of the MPEP expressly warns, it is never appropriate to rely solely on Official Notice as the principal evidence upon which a rejection was based. Instead, Official Notice is only appropriate for facts and that serve to “fill in the gaps” in a rejection. (MPEP § 2144.03(A)). This is why official notice is to be judicially applied. (MPEP § 2144.03). It is unreasonable to conclude that the Office has used Official Notice to “fill in” a gap in this rejection.

Thirdly, the Office attempts to take Official Notice of matter that is not “capable of instant and unquestionable demonstration”, as expressly required by section 2144.03(A) of the MPEP. Indeed, even assuming arguendo that the equivalence of the subject printer and plotter is a fact, this fact would be neither of notorious character nor instantly and unquestionably demonstrable. Moreover, courts have long rejected the notion that official notice can be taken on the state of the art. (See Memorandum to Patent Examining Corps from the Deputy Commissioner for Patent Examining Policy regarding Procedures for Relying on Facts Which are Not of Record as Common Sense or for Taking Official Notice, n.6, citing In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973)). Thus, the Office’s attempt to officially notice the level of ordinary skill in the art is improper as a matter of law.

In sum, the Office’s attempts at Official Notice are improper and traversed. Consequently, there are evidentiary gaps in the rejection of independent claim 1 that are fatal to a prima facie case of obviousness.

Example 2 - An Ambiguous Taking of Official Notice --e.g., Well Known or the like.

Lastly, Applicant notes, at page 4 of the Office Action, an apparent attempt to officially notice a fact. If the Office has intended to take Official Notice, such an attempt is traversed, at least because it is not in compliance with the Office’s own procedures.

Proper use of Official Notice requires compliance with several obligations expressly set forth in the Manual of Patent Examining Procedure. The Office has failed to meet these obligations. Specifically, the Office has failed to satisfy its obligations under MPEP § 2144.03. MPEP § 2144.03 (B), for example, expressly requires the Office to provide specific factual findings predicated on sound technical and scientific reasoning to support taking Official Notice. The MPEP goes on to explain that this means that the Office should present an Applicant with the explicit basis on which Official Notice is based so that the Applicant is able to challenge the assertion in the next reply after the Office action. (MPEP §2144.03(B)). Naked assertions about what is allegedly known in the art, like those made at page 4 of the Office Action, cannot satisfy these requirements.
In the event that the Office is not attempting to take Official Notice, Applicant respectfully requests confirmation of this fact.

Also:• Rule 1.104(d)(2)
– Allows applicant to request affidavit from Examiner in support of
statements made based on personal knowledge
– Often forces Examiner to find additional prior art and issue new,
non-final office action

Factors in determining enablement--the Wands factors

2009-04-01T14:25:00.000-07:00

Copied from Patently Defined

The Basis for the Enablement Requirement

The enablement requirement arises from the first paragraph of 35 U.S.C. § 112, which states in relevant part:

[t]he specification shall contain a written description of the invention, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . .

The purpose of the enablement requirement is to ensure that patented inventions are communicated to the public in a meaningful way.

Fundamentals of the Enablement Requirement

1. The USPTO’s guidelines for examination of patent applications for compliance with the enablement requirement are found in Section 2164 of the MPEP. This should be an Applicant’s primary resource for authority when articulating responses to enablement rejections.

2. All questions of enablement are evaluated against claimed subject matter. (MPEP 2164.08).

3. The test for enablement is whether one of ordinary skill would need to engage in undue experimentation to practice the claimed invention. (MPEP 2164.01).

4. Whether experimentation is “undue” is determined based on the following eight Wands factors:

1. Breadth of the claims;
2. Nature of the invention;
3. State of the prior art;
4. Level of ordinary skill in the art;
5. Predictability of the art;
6. Amount of direction provided in the specification;
7. Any working examples; and
8. Quantity of experimentation needed relative to the disclosure.

(MPEP 2164.01(a), citing In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)).

5. A proper analysis of whether any experimentation is undue requires an analysis of all of the Wands factors. (MPEP 2164.01(a)). It is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others. (Id.).

6. The amount of guidance or direction needed to satisfy the enablement requirement is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. (MPEP 2164.03). Thus, the question of enablement is one of predictability in view of what is known in the art.

Additional Points

1. The fact that experimentation may be complex does not necessarily make it undue, if the art typically engages in such experimentation. (MPEP 2164.01).

2. A patent need not teach, and preferably omits, what is well known in the art. (MPEP 2164.01). Further, an Applicant need not “enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect.” (MPEP 2164).

3. Any part of the specification can support an enabling disclosure, even a background section that discusses, or even disparages, the subject matter disclosed therein. (MPEP 2164.01, citing Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 77 USPQ2d 1041 (Fed. Cir. 2005)(discussion of problems with a prior art feature does not mean that one of ordinary skill in the art would not know how to make and use this feature)).

4. The specification need not contain an example if the invention is otherwise disclosed in such manner that one skilled in the art will be able to practice it without undue experimentation. (MPEP 2164.02).

5. As long as the specification discloses at least one method for making and using the claimed invention that bears a reasonable correlation to the entire scope of the claim, then the enablement requirement of 35 U.S.C. 112 is satisfied. (MPEP 2164.01(b)).

6. Claims must be enabled as of their filing date. (MPEP 2164.05(a)).

7. Enablement is judged from the perspective of an ordinarily skilled artisan. (MPEP 2164.05(b)).

The Office’s Burden

1. It is always incumbent on an Examiner to fully develop the reasons for a technical rejection (enablement, written description, etc.).

Section 706.03 of the MPEP warns Examiners that “[w]here a major technical rejection is proper (e.g., lack of proper disclosure, undue breadth, utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion coupled with some stereotyped expression.” Thus, mere conclusory statements are insufficient to support a rejection under Section 112. Consequently, the Office must arguably provide a reasonable basis to reject a claim for failing to satisfy the enablement requirement, and this requires “a full development” of the reasons for the rejection.

This obligation to establish a prima facie case is affirmed by the MPEP in its discussions of each requirement of the first paragraph of 35 U.S.C. § 112. (See, e.g., MPEP § 2163 (III)(A) (written description); MPEP § 2164.04 (enablement)). A prima facie case requires a reasonable basis to challenge the adequacy of the written description. (MPEP § 2164.04).

In accordance with the principles of compact prosecution, if an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so that all such rejections can be withdrawn if applicant provides appropriate convincing arguments and/or evidence in rebuttal. The principles of compact prosecution also dictate that if an enablement rejection is appropriate and the examiner recognizes limitations that would render the claims enabled, the examiner should note such limitations to applicant as early in the prosecution as possible. (MPEP 2164.04).

2. An Examiner should always look for enabled, allowable subject matter and communicate to applicant what that subject matter is at the earliest point possible in the prosecution of the application. (MPEP 2164.04). Thus, if a rejection is made based on the view that the enablement is not commensurate in scope with the claim, the examiner should identify the subject matter that is considered to be enabled. (MPEP 2164.08).

3. The Examiner’s analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole. (MPEP 2164.01(a)).

4. Only after the Examiner has weighed all the evidence and established a reasonable basis to question the enablement provided for the claimed invention, does the burden fall on applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would be able to make and use the claimed invention using the application as a guide. (MPEP 2164.05). The evidence provided by applicant need not be conclusive but merely convincing to one skilled in the art. (Id.).

5. The MPEP instructs Examiners that they must assume compliance with the enablement requirement when an application includes a teaching of how to make and use invention “in terms which correspond in scope to the claims.” This mandate may be only ignored when there is a basis to doubt the objective truth of the teaching. (MPEP 2164.04).

So, unless a rejection articulates “evidence or some technical reasoning” that either (i) an enabling teaching does not correspond to the claims or (ii) a reason to doubt the objective truth of such a teaching, the mere presence of a teaching requires that the Office assume that this requirement is satisfied.

Bilski Transformation, claims that didn't make it

2009-04-01T12:50:00.000-07:00

Claim 16 and Claim 18 were the focus of the Appeal and stated, respectively:

16. An additional information embedding method, for adding additional information to digital content to determine whether said digital content has been processed, comprising the steps of:

generating multiple sets of additional information that are correlated with each other and that correspond to the data form of predetermined digital content; and

synthesizing said additional information and content data for said digital content; and

wherein the additional information are correlated with each other by a mapping relationship defined by a predetermined function, said predetermined function dependent on a data string, the data string forming a predetermined message.

18. An additional content detection method, for detecting additional information added to a digital content in order to determine whether said digital content has been processed, comprising the steps of:

detecting, from content data for digital content, multiple sets of additional information that are correlated with each other, but that in robustness differ from each other;

evaluating relationships dependent on a data string, the data string forming a predetermined message, existing between said multiple sets of additional information; and

determining, based on said detected additional information and the evaluation of said relationships, whether said content data has been processed, and determining the type of processing performed when said content data has been processed.
In explaining their Bilski analysis, the BPAI said that the method steps of claims 16 and 18 can reasonably be interpreted to encompass a human being performing these steps. Thus, the claims fail the "particular machine requirement."

The BPAI's discussion of the "transformation requirement" is more interesting. They said that:

[h]ere we do not have a transformation of subject matter but merely an abstract expression that is created from synthesizing two types of digital content. However, such synthesizing does not require any tangible output into the real world. These steps describe nothing more than the manipulation of basic mathematical constructs, the paradigmatic "abstract idea." See In re Warmerdam, 33 F.3d 1354, 1360 (Fed. Cir. 1994). As a whole, the claim involves no more than the manipulation of abstract ideas. See id.

The BPAI went on to say in other words that the claims were directed to merely looking at transforming one digital representation into another digital representation. As such, they are not within the scope of 101.

Copied from BPAI Watchdog.

Appeal grounds, ideas

2009-04-01T12:46:00.000-07:00

Successful appellants have proven factual errors including claim and reference interpretation errors. Similarly, successful appellants have proven legal errors including (a) non-analogous art cited by the patent examiner, (b) impermissible hindsight by the patent examiner, (c) inoperable combination of references, and (d) references cited by the patent examiner that taught way from the patent application. Finally, successful appellants included (a) thoughtful definitions of a person having ordinary skill in the art (PHOSITA) and (b) records having evidence of secondary indicia of non-obviousness. However, even if successful in overcoming the patent examiner’s rejection, appellants must consider the chance the Board will assert sua sponte rejections for claims that (i) do not recite patentable subject matter, (ii) are indefinite Hybrid claims reciting two statutory classes, (ii) lack enablement, and (iii) lack written description even for patentable claim features added in amendments during prosecution.

An applicant should appeal when properly interpreted claim language recites features that distinguish over properly applied references. In the heat of prosecution, Applicants sometimes lose sight that the pending claims need to clearly recite what is argued. If the pending claims can be amended to better support the arguments, a request for continued examination should be filed with claim amendments instead of an appeal. However, if the applicant believes that the invention has been optimally claimed and that the claims are distinguishable over the applied references, continuing prosecution is usually an inefficient use of resources. Rather, appealing the application is necessary.

Take Aways

Appeal to the Board is worthwhile since after successful appeal to the Board 80% of applications issue as patents.
Factual errors include claim and reference misinterpretations by the patent examiner.
Legal errors include (a) non-analogous art cited by the patent examiner, (b) impermissible hindsight by the patent examiner, (c) inoperable combination of references, and (d) references cited by the patent examiner that taught way from the patent application.
Success on appeals can increase when appellants include (a) definitions of a person having ordinary skill in the art (PHOSITA) and (b) records having evidence of secondary indicia of non-obviousness.
Appellants must balance success on appeal with the risk of narrow claim interpretations and sue sponte rejections for claiming non-patentable subject matter or amended claims that, although allowable over art, fail written description requirements.
In the end, Appealing final rejections from "hard-line" patent examiners may be an applicant’s only chance for reversing improper obviousness rejections to obtain an allowance for their application.

Copied from BPAI Watchdog, here. http://bpaiwatchdog.blogspot.com/

Software per se--arguing against 101

2009-04-01T12:15:00.000-07:00

http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20082854-02-27-2009-1

Above is aBPAI decision stating that "a component executing on a computer" in the body of the claim means that the claim is not software per se.

"Regarding the non-statutory test, while the storage of information in independent claim 1 could arguably be done as a mental process, the recitation of a structured relationship between multiple stores that requires 'path information' inherently implies that this information must be stored on a computer or database. This 'particular' computer or database is sufficient structure to meet the machine prong of the machine-or-transformation test of In re Bilski."

http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20083475-03-28-2009-1
Ex parte Borenstein.

Functional language not improper -- MPEP cites

2009-03-13T15:26:00.000-07:00

The method steps merely describe the "functionality" imparted by the computer readable medium to the computer. As discussed in MPEP 2173.05(g):
"There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper."

Claim must be considered as a whole, refs

2009-03-13T15:03:00.000-07:00

Flook, 437 U.S. at 594 ("Our approach to respondent's application is, however, not at all inconsistent with the view that a patent claim must be considered as a whole."); Diehr, 450 U.S. at 188 ("It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.").

As such, if you claim a DVD (an example of a computer readable medium), when the "claim as a whole" is considered, the DVD is patentable subject matter because you cannot ignore that a DVD is neither a law of nature, natural phenomena, nor abstract idea.
"If the only difference between the alleged invention and the prior art is based on content or information, then the alleged invention isn't really tied to a particular machine."
If you ask one having ordinary skill in the art, they will say that a "general purpose computer" with the DVD (or other computer readable medium) encoded with the instructions for perform a method (i.e., the typical Beauregard language) is measurably different than an identical general purpose computer in which the DVD (or other computer readable medium) does not include the encoded instructions.
There may be a difference "based on content or information," as you allege, but that difference is measurable.
FYI your statement that "the alleged invention isn't really tied to a particular machine" ignores that Beauregard claims are product claims, not method claims. Just because you burn instructions on a DVD doesn't magically convert the DVD from a product into some "abstract method."

From MPEP 2141.02:
In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. (underlining under "as a whole" omitted."

Under 35 USC 102, you have to establish that the prior art teaches ALL of the claimed limitations.

Thus, you have to look at the claimed invention AS A WHOLE, which includes ALL of the limitations. A blank DVD is not 102/103 art for the average Beauregard claim for those reasons.

The method steps merely describe the "functionality" imparted by the computer readable medium to the computer. As discussed in MPEP 2173.05(g):
"There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper."

Commenter at Patentlyo.com

Kyle Rules

2009-01-03T19:47:00.000-08:00

Don't delete dependent claims, just add new dependent claims.

If dependent claims are allowed, add them separately to independent claims, pay for the extra independent claims, if necessary.

Kyle's preferred format

2009-01-03T19:18:00.001-08:00

Claims 1-4, 6-10, and 28-33.
Neither Rojewski nor Schumacher, either separately or in combination teach or suggest, e.g., the amended claim 1 language
…receiving a plurality of internal macro actions passed as one or more opaque recorded step tokens from the graphical user interface-based application across a native recording interface to the external UI recorder, the internal macro actions recorded in native format for the graphical user interface-based application; …
wherein the one or more opaque recorded step tokens comprise discrete chunks of data opaque to the external UI recorder that are not interpreted by the external UI recorder but are recognizable in the graphical user interface-based application. [Emphasis added.]

Tokenization is described, e.g., in the Specification as follows:
The application 240 converts each discrete recorded step into a token, or the application 240 groups multiple recorded steps as a single token. As for the mechanics of the tokenization, the application 240 may group recorded step data into one or more fields of a data structure for a token, which is then passed by copy or reference to the tool 220. Or, the application 240 may pass recorded step data as parameters of a method call, which the tool 220 receives and handles as opaque data. The application 240 may use an XML rules sheet (which defines a set of rules for tokenizing recorded step data) to reformat or reorganize the recorded step data into tokens. Or, the application 240 uses some other mechanism for tokenization. Conceptually, the tokenization may be viewed as placing the recorded step data in a token data structure, or wrapping the recorded step data with token information. This “hides” the macro language instructions from the tool, creating a token that is macro language independent but whose contents are recognizable in the appropriate native recording environment.
Specification p. 17, lines 7-19.

Rojewski discusses processing a user interaction with a browser-based application. [Rojewski, Abstract.] Instructions are passed from a user application to a “web recording service” where they are then packaged into macros. [Rojewski, Fig. 4, ¶¶ 0044-0047.]
A number of paragraphs are used by the Action to allegedly teach or suggest the above unamended claim 1 language. [Action, page 4.] Each will be discussed in turn.
To teach or suggest the unamended claim 1 language that currently reads “…receiving a plurality of internal macro actions passed as one or more opaque recorded step tokens from the graphical user interface-based application across a native recording interface to the external UI recorder, the internal macro actions recorded in native format for the graphical user interface-based application….” [emphasis added], the action cites to Rojewski, ¶ 0047, reproduced below:
[0047] In one implementation, a user could employ a "web-recording service" to record a macro for the user's interaction with one or more applications, that could later be accessed by the user from the web-recording service. In this implementation, data items representing the user's interaction with the browser-based applications are sent by the one or more software frameworks executing with the browser-based applications to the web-recording service for storage. The web-recording service can then package the data items into a macro for subsequent use by the user, which macro can be made available to the user, for example, by way of the web-recording service's website, or by e-mail.

When the web recording service of Rojewski collects “data items representing the user's interaction with the browser-based applications” [id.], it then “package(s) the data into a macro for subsequent use by the user….” [id.]. Assuming, for argument’s sake only, that the data items of Rojewski are equivalent to the “internal macro actions” of claim 1, and the web recording service of Rojewsk is equivalent to the “external UI recorder” of claim 1, the data items cannot be opaque to the web recording service, because if the data items were truly opaque to the web recording service, the web recording service would not understand how to package the opaque data items into a macro. Thus, Rojewski does not teach or suggest receiving “receiving a plurality of internal macro actions passed as one or more opaque recorded step tokens” as found in claim 1.
Further, Rojewski teaches away from the above-quoted language from claim 1. In Rojewski, a customer support person can “listen” to the user’s interaction with the browser, which includes “relaying the data items to the software framework 150 at the second browser 145, and processing the data items in the software framework 150 (Step 525).” [Rojewski, 0054] None of these actions could take place if the data items were opaque, as, shown by Rojewski ¶ 0054, quoted below:

[0054] The listening mode can be used for customer support of the browser-based application 110. Referring to FIGS. 3 and 5, a user of the browser-based application 110, executing in the first browser 120 who is experiencing difficulty contacts customer support for the browser-based application, for example, by email or telephone (Step 505). A customer support worker instructs the user to enter recording mode (Step 510). At the same time, the customer support worker enters listening mode, with respect to the browser-based application 110 executing at the first browser 120 (Step 515). The user then interacts with the browser-based application 110 (Step 520), while the customer support worker "listens" to the interactions, by retrieving data items from the data store, representing the user's actions, relaying the data items to the software framework 150 at the second browser 145, and processing the data items in the software framework 150 (Step 525). The customer support worker can therefore see how the user is interacting with the browser-based application 110, and how the application 110 is behaving in response to the user input. The customer support worker can use this information to isolate and solve the user's problem (Step 530).

The requirement in Rojewski that a “customer support worker” listen in on the interactions between the user and the other components, such as the browser, requires that the data elements passed to the browser be understandable at all steps, directly teaching away from any opaque actions. Thus, Rojewski not only does not teach or show, but explicitly teaches away from the claim 1 language, e.g., “receiving a plurality of internal macro actions passed as one or more opaque recorded step tokens….” For at least this reason, claim 1 is in condition for allowance.

From 3382-67840-01, 19-23-2008

Kyle's preferred format

2009-01-03T19:18:00.000-08:00

USPTO 101 guidelines

2008-12-30T08:39:00.001-08:00

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/section_101_05_15_2008.pdf

Office claims only "functional descriptive material."

2008-12-30T08:33:00.000-08:00

Non-final office action, received post-Bilski, directed to claims with the preamble: "A computer-implemented method comprising:", followed by steps of computer file selection, storage, and network transfer/copy. Examiner rejection as follows:

The claims lack the necessary physical articles or objects to constitute a machine or a manufacture within the meaning of 35 USC 101.They are clearly not a series of steps or acts to be a process nor are they a combination of chemical compounds to be a composition of matter. As such, they fail to fall within a statutory category. They are, at best, functional descriptive material per se.

Possible reply 1:I would then change preamble to recite A method carried out by a digital computer and comprising: selecting ..., storing, transmitting ...

I would then point out that Benson recognized a "digital" computer as being a particular machine distinct from an analog computer and that this claim does not preempt the public from wholly practicing a fundamental principle with machines other than digital or from practicing manually. I would ask the examiner to particularly point out that which he regards as the fundamental principle and explain why this is so.

Possible reply 2:Each rejected claim comprises a traditional series of process steps. Rejection that said claims "are clearly not a series of steps or acts to be a process" is hence respectfully traversed.

The "physical article or object" to which each claim is directed comprises a set of files stored on electromagnetic or optical medium. Each file itself constitutes a physical article. Electromagnetic and optical storage is well known to those of ordinary skill in the art of computerized digital storage. Such storage is inherent within any claim of a "file" as an article.

Claimed files may comprise, for example, music or video files. Each commercial music CD or movie DVD sold in the United States carries a warning from the FBI, promising "severe civil and criminal penalties for the unauthorized reproduction, distribution and digital transmission of copyrighted recordings." Even the FBI, not known to be skilled in any art, recognize electromagnetic and optical file storage as comprising a crime-worthy article. As abstract thought is not yet a crime in the United States, the FBI warning must be referring to statutory articles stored on computer media.

Each possible claimed file corresponds to a representation of a physical article, an object which may at the least be visually depicted, either on-screen or in printed form. The Court of Appeals, Federal Circuit, recently affirmed the patentability of such claimed subject matter.

We further note for clarity that the electronic transformation of the data itself into a visual depiction in Abele was sufficient; the claim was not required to involve any transformation of the underlying physical object that the data represented. We believe this is faithful to the concern the Supreme Court articulated as the basis for the machine-or-transformation test, namely the prevention of pre-emption of fundamental principles. So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle. See In re Bilski __F.3d__ (CAFC 2008-1130) (en banc) at 26, referring to Abele, 684 F.2d at 908-09.

As the claims are directed to a practical application, comprising electronic transformation of data renderable as a visual depiction, they are statutory under 35 USC §101. Rejection respectfully traversed.

from patenthawk

Bilski Examples -- USPTO Rules

2008-12-30T08:14:00.000-08:00

In the patent claims consider using the phrase “one or more computer processors.”

In the first patent claim consider also using the phrase “transforming data X into data Y.”

Limitations Summary
• If It Can Be Tied To A Machine, Use A
Component Of The Machine In Each Step
• If It Represents A Physical Object, Display It
• If It Cannot Be Tied To A Machine And Does
Not Represent A Physical Object, Use Software
Modules From here. Look at this.

Preambles:

(not allowed) Gutta - A computerized method performed by a data processor for recommending one or more available items to a target user, comprising the steps of:

(ALLOWED) Bo Li - A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising

(not allowed) Cornea-Hasegan - A computer readable media including program instructions which when executed by a processor cause the processor to perform the following:

Suggested examples:
Barnes Claim 1 Tied To A Machine
• Claim 1. A fault identification method that
comprises:
• obtaining seismic data using a seismic detector;
• recording the seismic data on a record medium;reading the seismic data from the record medium
using a computer; and
• for each of multiple positions of an analysis
window in the seismic data, determining a
planarity value for discontinuities in the analysis
window using the computer.

Barnes Claim 32 (In Indep. Form)
Representing A Physical Object
• Claim 32. A fault identification method that
comprises:
• determining discontinuity values from seismic
data;
• applying principal component analysis to the
discontinuity values to identify faults that
represent rock layer features associated with
hydrocarbons; and
• displaying the identified faults in a vertical slice
view to allow a user to specify subregions of the
seismic data for examination.

Comiskey Claim 17 As A Method Claim
• A method for mandatory arbitration resolution regarding one
or more unilateral documents comprising:
• providing a system, wherein the system comprises distinct
software modules embodied on a computer‐readable
medium, , wherein the distinct software modules comprise a
registration module, an arbitration module, an arbitration
resolution module, and an arbitrator database access module;
• enrolling a person who is executing and one or more
unilateral documents associated with the person in a
mandatory arbitration system at a time prior to or as of the
time of creation of or execution of the one or more unilateral
documents using the registration module; …

• A computer program product, comprising a computer usable
medium having a computer readable program code embodied
therein, said computer readable program code adapted to be
executed to implement a method for mandatory arbitration
resolution regarding one or more unilateral documents comprising:
• providing a system, wherein the system comprises distinct
software modules embodied on a computer‐readable medium, ,
wherein the distinct software modules comprise a registration
module, an arbitration module, an arbitration resolution module,
and an arbitrator database access module;
• enrolling a person who is executing and one or more unilateral
documents associated with the person in a mandatory arbitration
system at a time prior to or as of the time of creation of or
execution of the one or more unilateral documents using the
registration module; …

Suggestion--tie each step into the computer.

From in re Gutta, commentary

"Here is one interesting part of the decision, however: "Regarding claim 1, the step of “displaying” need not be performed by
any particular structure. It may be accomplished simply by writing the
resulting score on a piece of paper. A conclusion that such post-solution
activity is sufficient to impart patentability to a claim involving the solving
of a mathematical algorithm would exalt form over substance."

("wherein said process takes place in a structure, wherein said structure includes a furnace or air conditioner for modulating air temperature" -- look, the method is tied to a particular machine!!). Suggestion

Rejected in re Gutta claim

1. A computerized method performed by a data processor for
recommending one or more available items to a target user,
comprising the steps of:
obtaining a history of selecting one or more available items by
at least one third party;
partitioning a third party selection history into a plurality of
clusters, wherein each cluster contains items that are closer to
the mean of the cluster than any other cluster from among the
plurality of clusters,
modifying a target user's history of selecting said one or more
available items with one or more third party clusters to produce
a modified target user's history;
processing the modified target user's history to generate a target
user profile, wherein the modified target user's history
characterizes preferences of the target user as modified to
reflect preferences of the third party;
generating a recommendation score for at least one of said
available items based on said target user's profile; and
displaying the recommendation score to the target user.

The BPAI said that the displaying step could be performed by a human writing down the answer on a piece of paper, so tie the dispaying directly into the processor, or something.

http://www.uspto.gov/web/offices/pac/dapp/opla/documents/bilski_guidance_memo.pdf
Bilski USPTO rules link

From the Rules:

There are two corollaries to the machine-or-transformation test. First, a mere field-of-use limitation is generally insufficient to render an otherwise ineligible method claim patent- eligible. This means the machine or transformation must impose meaningful limits on the method claim's scope to pass the test. Second, insignificant extra-solution activity will not transform an unpatentable principle into a patentable process. This means reciting a specific machine or a particular transformation of a specific article in an insignificant step, such a data gathering or outputting, is not sufficient to pass the test.

The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article. See Benson, 409 U.S. at 70. Certain considerations are applicable to analysis under either branch. First, as illustrated by Benson . . . the use of a specific machine or transformation of an article must impose meaningful limits on the claim’s scope to impart patent-eligibility. See Benson, 409 U.S. at 71-72. Second, the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity. See Flook, 437 U.S. at 590.

In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir. 2008).

Rule???? Under Bilski, the patentability test has a very context-sensitive angle in order to conclude whether a step is integral to the invention or if it is extra-solution.

Suggested by a commentor at Patent Hawk:

Claims, below, invalid under 101 re Bilski.
1. A method for optimizing a query in a relational database management system, the method comprising:
evaluating the query to determine whether a sub-expression of the query is being joined to itself and whether a predicate of the query comprises an equality test between a same column of the sub-expression;
determining whether a first row set producible from a first set of references of the query to the sub-expression is subsumed by a second row set producible from a second set of references of the query to the subexpression; and
reforming the query to eliminate the joining of the sub-expression to itself based on evaluation of the query and determination of whether the first row set is subsumed by the second row set.

Suggestion 1: add "said method being implemented by a digital machine and comprising:" the reasoning being that a "digital machine" is a "particular machine."

Suggestion is to reformulate as follows:

1. A method for optimizing a query for a relational database management system, the method comprising:
receiving the query in a computer system implementing an optimization algorithm, the optimization algorithm:
evaluating the query to determine: whether a sub-expression of the query is being joined to itself and whether a predicate of the query comprises an equality test between a same column of the sub-expression;
determining whether a first row set producible from a first set of references of the query to the sub-expression is subsumed by a second row set producible from a second set of references of the query to the subexpression; and
reforming the query to eliminate the joining of the sub-expression to itself based on: (i) evaluation of the query, and (ii) determination of whether the first row set is subsumed by the second row set.

Fed. Circuit case law that may come in hand

There is one further rationale used by both the board and the examiner, namely, that the provision of new signals to be stored by the computer does not make it a new machine, i.e. it is structurally the same, no matter how new, useful and unobvious the result. . . . To this question we say that if a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed. Bernhart, 417 F.2d at 1400.

(1) For a machine implementation, that issue was not decided by the CAFC; and

(2) For a transformation, it must be central to the purpose of the claimed process and the electronic transformation of the data itself into a visual depiction was sufficient in Abele.

Fundamentally, one can maybe look to the EP's handling of software claims related to "technical effect" that goes beyond the normal physical interactions between the program and the computer, as a guide. See, http://www.epo.org/patents/law/legal-texts/html/guiex/e/c_iv_2_3_6.htm

Maybe?

(from patentlyo comments - Jim)

Claim 1 recited

(GL- not 101 patentable subject matter) 1. A computerized method comprising:
inputting multiple extensible Markup Language (XML) documents;
creating a data representation of said multiple XML documents; and
reducing redundancy across said multiple XML documents via a fixed set of tables.
According to the BPAI,

[T]he recited method, while being computerized, is not tied to a particular machine for executing the claimed steps. We find that the computerized recitation purports to a general purpose processor (Fig. 2.), as opposed to a particular computer specifically programmed for executing the steps of the claimed method [271 Note: what's the difference?]. Next, while it can be argued that the creating step transforms the input XML documents into represented data (i.e. a different state), we find that the documents are not an article (i.e. physical entities). Rather, they are mere data that represent such entities. Similarly, while it can be argued that the redundancy reducing step transforms the XML documents into a smaller set of the documents, they are not an article being transformed.
However, a related apparatus claim recited

(gl-patentable subject matter) 25. An apparatus comprising:
means for creating a graph based data structure representing multiple standard XML tree structures;
means for transforming said graph based data structure to a fixed set of tables; and
means for using said fixed set of tables.
Here, the BPAI found the language rendered statutory subject matter into the claim:

Appellants argue that the recited apparatus refers to the general purpose computer depicted in Figure 2. (App. Br. 33.) Further, Appellants submit that the different means recited in the claim correspond to the different modules in the computer for performing the recited functions. (Id. at 12.) We find that since the claim recites a physical apparatus with physical modules for transforming a data structure into a fixed set of tables, it is not a directed to an abstract idea. Therefore, Appellants have shown that the Examiner erred in finding that claim 25 is directed to an abstract idea. Thus, we will not sustain this rejection.
Apparently, the Board did not see fit to explain why a "computerized method" to a "general purpose computer" is nonstatutory, while an "apparatus" directed to the same general purpose computer is. The implication here is that, if the method claim recited the computer, the claims would be statutory. However, other BPAI precedent (Ex parte Gutta) states that this would not be enough.

From BPAI opinion here. Application here.

Teaching Away--case law

2008-12-30T08:08:00.001-08:00

"'A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.'" Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (quoting In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (refusing to conclude that prior art disclosure taught away from the claimed invention where the disclosure did not "criticize, discredit, or otherwise discourage the solution claimed").

Rule 105 requests -- IDS more information

2008-12-29T15:27:00.000-08:00

1)Rule 105 request may be made for "Factual" information. Asking for any type of judgement on patentability is NOT allowed - an Examiner may ask for factual informtion concerning accuracy of the Examiner's interpretations or may ask stipulations as to facts with which the applicant MAY agree or disagree. Asking for the applicant to make interpretations is not appropriate.

2)Appropriate (and complete) responses to a Rule 105 request include "The information required to be submitted is unknown" as well as "The information required to be submitted is not readily available."

Rule 105 requests--requests for more information.

from http://www.patentlyo.com/patent/2008/11/responding-to-e.html#comments

Teaching away.

2008-12-29T15:10:00.001-08:00

A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).

Analysis: The key is whether it would lead away because it wouldn't functionally work

Title Objections

2008-12-08T11:54:00.000-08:00

Objection to Title
The Examiner has asked that the title of the invention contain the word “Testing.” Applicant respectively disagrees with this objection. Applicant respectively disagrees with this objection. Nonetheless, Applicant has amended the title in an effort to expedite prosecution. Specifically, the title has now been amended to read “A B C” Applicant notes that the title in no way limits the scope of any given claim. Rather, the language of each of the respective claims speaks for itself. Applicant respectfully requests withdrawal of the objection to the title.

Remarks Block

2008-12-05T13:13:00.001-08:00

Reconsideration of the application is respectfully requested in view of the foregoing amendments and following remarks. Claims 1, 3, 4, 6-10, 12-13, 15-17, and 20-25 are pending in the application. No claims have been allowed. Claims 1, 15, and 20 are independent. Claims 2, 5, 11, 14, 18, and 19 have been canceled without disclaimer and without prejudice to pursuing in a continuing application.

Dependent claims different art rejections.

2008-11-26T10:05:00.000-08:00

For multiple claims

The Action asserts a rejection of claims 21-23 and 26 under 35 U.S.C. § 103(a) as being unpatentable over Hegedus, and further in view of Hamynen. Applicants respectfully assert that Claims 21-23 and 26 recite novel and nonobvious features allowable over the proposed Hegedus - Hamynen combination. Further since claims 21-23 and 26 are dependent claims of allowable independent claim 1, they should also, therefore, be allowable for at least the reasons stated for claim 1. Claims 21-23 and 26 also present independently patentable combinations. Claims 21-23 and 26 should be allowable. Such action is respectfully requested.

For a single claim
The Office asserts a rejection of claim 19 as obvious over Herz, Yoshinobu, and Alexander, in view of Lazarus, and further in view of Daniels, U.S. Patent Publication No. 2002/0032907 (“Daniels”). Applicants respectfully assert that claim 19 recites novel and nonobvious features allowable over the proposed Herz-Yoshinobu-Alexander-Lazarus-Daniels combination. Further, since it depends from allowable claim 14, it should be allowed for at least the reasons stated for claim 14. Claim 19 should be allowable. Such action is respectfully requested.

Pointing out added language to differentiate asserted art

2008-11-26T10:01:00.001-08:00

Language when you wish to point out added language

Claim 1 includes further distinguishing language. Finally, even if Taubin serendipitously organized by region, the claim includes further features, such as “sub-dividing the input mesh into plural sub-regions,” that are not found in Taubin. If the Examiner is relying on Taubin’s clusters as regions, Applicant points out that there is no plurality of refinement operations per cluster in Taubin. Instead, a cluster is simplified to a single vertex (See, FIG. 6 of Taubin).
Applicants have added the language “plurality of” to clarify that grouping involves more than one refinement operation. Similar language has been added to claims 31 and 40. Applicants find significant other differences between Taubin’s clusters and the recited arrangement, and amend the claims to clarify that the recited arrangement is fundamentally different from Taubin’s clusters.
The claimed arrangement is thus not inherent in Taubin, and the claims overcome the rejection.

Bilski-Bouregard claims

2008-11-17T12:35:00.000-08:00

Ex Parte Bo Li (precedental) explicitly allows Bouregard claims under Bilski

Add to end of patent: “The following claims do not cover a process performed entirely by acts of a human being without use of any machine or physical transformation.”

from Ex Parte Bo Li

"It has been the practice for a number of years that a "Beauregard Claim" of this nature be considered statutory at the USPTO as a product claim. (MPEP 2105.01, I). Though not finally adjudicated, this practice is not inconsistent with In re Nuijten. Further, the instant claim presents a number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium. This combination has been found statutory under the teachings of In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994). In view of the totality of these precedents, we decline to support the rejection under 35 U.S.C. § 101."

Allowed claim

42. A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising:

providing a system, wherein the system comprises distinct software modules, and wherein the distinct software modules comprise a logic processing module, a configuration file processing module, a data organization module, and a data display organization module;
parsing a configuration file into definition data that specifies: a data organization of the report, a display organization of the report, and at least one data source comprising report data to be used for generating the report, and wherein said parsing is performed by the configuration file processing module in response to being called by the logic processing module;
extracting the report data from the at least one data source, wherein said extracting is performed by the data organization module in response to being called by the logic processing module;
receiving, by the logic processing module, the definition data from the configuration file processing module and the extracted report data from the data organization module; and
organizing, by the data display organization module in respone to being called by the logic processing module, a data display organization of the report, wherein said organizing comprises utilizing the definition data received by the logic processing module and the extracted report data received by the logic processing module.

101 case law for OA

2008-11-17T12:29:00.000-08:00

Claim found to be not patent eligible (Ex parte Halligan (BPAI 2008) (recitation of a programmed computer is insufficient to tie process claim to a specific machine).

Opinion is here

8. Use Abele: Per Bilski approval of result in In re Abele, 684 F.2d 902 (CCPA 1982), require that transformed data represent physical, tangible objects and require visual display of that transformed data.
9. Use Lowry: In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) (allowing “a memory for storing data for access by an application program being executed on a data processing system, comprising: a data structure stored in said memory, ….”).
10. Use Alappat: In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (a general purpose computer “in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”)
11. Use WMS Gaming: WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999) (in a means-plus-function claim “in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.”)
12. Maybe Even Comiskey: In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007) (dependent claims survived Sec. 101 scrutiny by reciting “wherein access to the mandatory arbitration is established through the Internet, intranet, World Wide Web, software applications, telephone, television, cable, video [or radio], magnetic, electronic communications, or other communication means.”)
13. Target Most Particular Points of Infringing Technology’s Life Cycle: Consider how infringing technology will move from conception to stored information to physical testing to commercial processing to products of that processing, etc., and target the most “particular” domestic points along the path. E.g., consider these types of claims—and add supporting disclosure to the specification:
a. Computer-Readable Media Storing Instructions for Performing Particular, Limiting Hardware/Transformative Process: If process could not be performed in one’s head (hence “hardware/transformative process”) and requires particular and limiting hardware or transformation, it may survive § 101 scrutiny.
b. Processing Device/System in State of Execution: Claim a processor, computer, or combination of multiple processors or computers in state of execution of recited information. Even if counterpart method-of-execution claim could be rejected as mental process, Lowry + Alappat + WMS Gaming may protect this claim from being sacked by Bilski, at least.
c. Thread or Process of Execution: Claim to thread of execution including a data structure in memory or other processing device/system state of execution with currently useful dynamic information.
d. “Product” by Process: Similarly, claim the processor, computer, or combination of multiple processors or computers (or perhaps, memory or other media) in state created by executing recited information. But do not draft IPXL-invalid hybrid machine-method claim.
e. Signals in a Particular Physical Medium or Form: Claim signals having specified physical form or medium. (Signal claims in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) did not do this.)

Remarks block

2008-11-13T13:42:00.000-08:00

Remarks block.

Reconsideration of the application is respectfully requested in view of the foregoing amendments and following remarks. Claims 1-12 and 14-25 are pending in the application. No claims have been allowed. Claims 13 and 31 have been canceled without disclaimer and without prejudice to pursuing in a continuing application. Claims 26 and 27 are new.

103 Header

2008-11-12T09:30:00.001-08:00

Claim Rejections under 35 USC § 103
To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. [MPEP § 2142.]

Limitation Missed by Examiner

2008-11-10T14:06:00.000-08:00

Neither Bischof nor Schumacher, either separately or in combination, teach or suggest, e.g., the claim 11 language: a module for verifying the set of tokens as internally consistent, the verifying comprising considering marking information added to the tokens. Applicant’s representative has carefully read the Office action and cannot locate a rejection of the above portion of the claim. Applicant respectfully submits that this omission amounts to a failure to articulate a prima facie case of unpatentablity and the burden to rebut this “rejection” has not yet shifted to the Applicant. For at least this reason, claim 18 is in condition for allowance.

Or
Initially, it is noted that the Office has not identified where in either Smith or Jones an alleged anticipatory teaching is to be found. Thus, the Office has failed meet its evidentiary burden and provide a prima facie case against claim 1. For at least this reason, claim 1 is in condition for allowance.

or

Additionally, Applicant has carefully reviewed the remainder of patent to Smith, and the patent to Jones and finds no teaching of “a widget” in either reference either individually or in combination. Thus, for at least this reason, neither Smith nor Jones teach or suggest independent claim 1.
Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under 35 U.S.C. §103 are respectfully requested.
In the event that the Office maintains the rejection of independent claim 1 under 35 U.S.C. §102, Applicant respectfully requests that the Office, in the interests of compact prosecution, identify on the record and with specificity sufficient to support a prima facie case of anticipation, where in the Smith patent the subject feature of independent claim 1 of “a widget” is alleged to be taught.

CIP not prior art

2008-10-07T15:28:00.001-07:00

The Cheung patent is a continuation-in-part with a filing date after the filing date of the instant application. The material in Cheung relied on in the rejection to allegedly reject the claims has a priority date after the filing date of the instant application.
The instant application was filed on February 25, 2005. Cheung was filed on Jun 12, 2006, and claims priority through a provisional patent application filed June 10, 2005, after the filing date of the instant application. Cheung also claims priority, as a continuation-in-part, through Patent no. 7,116,976 to Thomas filed Dec. 7, 2004 (Thomas), which, in turn, claims priority through provisional application no. 60/527,565 filed on Dec. 8, 2003 (provisional). A continuation-in-part, by its very nature, adds matter not disclosed in the earlier filing. “A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.” MPEP 201.08, emphasis in original. The Cheung Patent adds considerable matter not disclosed in the earlier priority documents with the earlier filing dates (Thomas and the provisional), and only receives the priority date for the matter that was present in the priority documents.

Dependent claims with different reference asserted

2008-10-07T08:54:00.000-07:00

Claim Rejections Under 35 USC § 103(a)
The Action rejects claims 6, 8, 10-13, 24, and 26 under 35 U.S.C § 103(a) as unpatentable over Fetzer in view of Rudys. Applicants respectfully assert that claims 6, 8, 10-13, 24, and 26 recite novel and nonobvious features allowable over the proposed Fetzer - Rudys combination. As understood by Applicants, Rudys fails to remedy the deficiencies of Fetzer. Further, since they depend from allowable claim 1 or allowable claim 18, they should be allowed for at least the reasons stated for claims 1 and 18. Claims 6, 8, 10-13, 24, and 26 should be allowable. Such action is respectfully requested.

Arguing against combinations--MPEP Aug 08 language

2008-10-07T08:28:00.001-07:00

Horiguchi cannot be combined with Korn.
The Action asserts that Korn’s teaching can be combined with Horiguchi’s teaching. The motivation given is that “one would have been motivated to do so to handle primary (parent) thread (parent) and other (child) threads when parallel executing as suggested by Korn (e.g., col. 3: 47- col. 4:14.) Applicants respectfully disagree. To combine references, there must be some expectation of some advantage. MPEP 2144.IV. However, “the proposed modification cannot render the prior art unsatisfactory for its intended purpose.” MPEP 2143.01.V. Also, The proposed medication cannot change the principle of operation of a reference. MPEP 2143.01.V1.
Further, the MPEP requires explicit analysis, and not conclusory statements. As MPEP § 2142 states: The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
The two references that the Action purports to combine are so different that combination makes no sense at all, and so would certainly render Horiguchi unsatisfactory for its intended purpose, if combined with Korn, and would also change the principle of operation of Horiguchi, to say the least.
Horiguchi is concerned with “processing an asynchronous interrupt of a processing entity.” [Horiguchi, Abstract.] The processing runs strictly on a single (multi-threaded) operating system. By contrast, Korn is concerned with porting processes that run on single-thread operating systems to those that run on multi-threaded operating systems. [Korn, abstract.] As Horiguchi has nothing to do with porting one operating system portion to another, it is nonsensical to place a feature for porting an operating system portion into a patent that does no such thing. Further, as to the suggested improvement, it is unclear, to say the least, why “handing primary (parent) threads and other (child) threads” (the improvement suggested by the Action, pp. 5-6) would produce any sort of improvement to Horiguchi. Horiguchi does not even discuss parent or children threads, let alone any sort of parent-child relationships. Shoehorning in a parent-child thread relationship into a patent that has no such constructs, nor any use for such constructs would do nothing but require additional constructs with no apparent purpose, making Horiguchi unsatisfactory for its intended purpose, as it would either not work, or at a very best case scenario, be unnecessarily complicated for no perceived benefit. As there is no improvement suggested, nor any improvement even envisioned, the statement, on its face, is conclusory, as is not allowed.
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant’s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
As only a conclusory statement was provided to combine Horiguchi with Korn, it appears that impermissible hindsight was used to make the determination that these two references could be combined, and as Horiguchi cannot be combined with Korn because the Korn techniques to port one type of operating system to another have nothing to with Horiguchi’s techniques to process asynchronous interrupts, Applicants respectfully submit that the Examiner has failed to establish a prima facie case of obviousness on the basis of these two references.

Small Entity Rules

2008-09-25T15:20:00.000-07:00

Brown & Michaels
Am I entitled to Small Entity fee status?
Many USPTO fees are discounted by 50% for applicants and patentees who qualify as "Small Entities". Determining whether or not you fit within the "Small Entity" class or not can be complicated. However, it is important to do it right, because the consequences of claiming Small Entity status when you are, in fact, a Large Entity, can be draconian - complete invalidity of a patent and loss of patent rights due to "fraud on the Patent Office".
Assuming you are entitled to it, you must make an assertion of your Small Entity status when you file the application. You do this either by checking the "Applicant claims small entity status" box on the transmittal form, or by paying the small entity fee exactly.

This is the last time you get to claim small entity status just by paying the right fee, though - if your status changes before you have to pay the issue fee (or one of the maintenance fees after issue) you must file a written assertion that you are now a Large Entity when you pay the fee. Merely paying the Large Entity fee will not correct your status. Similarly, if you filed your application as a Large Entity, and at the time of paying an issue or maintenance fee you are entitled to Small Entity status, you must file a written assertion of your new status.

Once you've established your Small Entity status when you file the application, you can continue to pay small entity fees until you (a) file a continuing application (continuation, division, CIP), or (b) file a reissue application, or (c) pay the issue fee, or (d) pay any maintenance fee which is due after the patent issues. Before you take any of these actions, you need to make a new determination of your eligibility for small entity treatment. This is set forth in the Patent Rules at 37 CFR 1.27(f) and (g):

(f) Assertion requires a determination of entitlement to pay small entity fees. Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. ...

(g)

(1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.

(2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due. Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.

Note that the "Small Entity" or "Large Entity" status applies to the owner of the patent rights - not the inventor or inventors, who would always be individuals under US law. If the owner has granted patent rights to an entity which is not a Small Entity, then the owner cannot claim Small Entity status.

As stated in 35 U.S.C. 41(h)(1) and 37 CFR 1.27(a), an owner of a patent or patent application is entitled to Small Entity Status if and only if:

The owner is a "person" (i.e. individual or individuals) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.; or
The owner is a "small business concern", meaning a business which meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees.
Those standards (13 CFR 121.802) say that a concern eligible for reduced patent fees is one:

(a) Whose number of employees, including affiliates, does not exceed 500 persons; and

(b) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.

The regulations of the SBA define how you count an "employee", what is an "affiliate", and over what period that counting is done. If you really want to find out exactly, you will need to review all of the regulations and your employment records very carefully, and account for all of the "employees" who worked for your business or its "affiliates" at any time during the previous 12 months. If your business concern (counting its parent company, subsidiary companies and any affiliated companies) was anywhere near 500 employees at any point, you should probably pay Large Entity fees, just to be safe.

Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416;
or

The owner is a nonprofit organization, meaning (37 CFR 1.27(a)(3)) any nonprofit organization that:
(i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and

(ii) Is either:

(A) A university or other institution of higher education located in any country;

(B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 19 86 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));

(C) Any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country (35 U.S.C. 201 (i)); or

(D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country.

What about rights held by Government Agencies?

Normally, transfer of any rights to an entity which does not qualify for Small Entity status means that Large Entity fees must be paid. Government agencies are not, themselves, Small Entities. The MPEP says so explicitly in section 509.02 - "Federal government agencies do not qualify as nonprofit organizations for paying reduced fees under the rules ... 37 CFR 1.27(a)(3) is not intended to include within the definition of a nonprofit organization government organizations of any kind located in any country".

There are certain exceptions to the general rule where some licenses to government agencies by those who themselves qualify as Small Entities will not preclude Small Entity treatment. Those exceptions deal with compulsory licenses granted the government under Executive Order 10096 (inventions by government employees) and 35 USC 202(c) (inventions by private contractors who make inventions while receiving Federal funding, where a license is required as a condition of financing).

If a Federal agency (or any other government body) is an owner of a patent or application (even a co-owner), rather than a licensee, the application/patent would NOT qualify for Small Entity fees.

For details on this, see MPEP 502.09, particularly section VI - RIGHTS HELD BY GOVERNMENT ORGANIZATIONS - http://www.uspto.gov/web/offices/pac/mpep/documents/0500_509_02.htm

From http://www.bpmlegal.com/howsmall.html

Conclusory Obviousness Statements pt. 2

2008-09-17T16:16:00.001-07:00

Claims 26-27.
The Action rejects claims 26 under 35 U.S.C § 103(a) as unpatentable over Friedman in view of Gupta.
Neither Friedman nor Gupta teaches or suggests the claim 26 language:
a process requesting the system level service add-in manager to enumerate at least one category of the media filters installed on the system;
the process, using an interface to the system level service add-in manager, selecting an enumerated media filter; and
the process invoking the selected media filter outside of the process so that an error within the filter will not cause the process to fail during operation;
wherein the selected media filter can receive its input from a different media filter A and provide its output directly to a different filter B as directed by the process, and wherein the selected media filter is not installed within the process.

The Action concedes that neither Friedman nor Gupta disclose the above features of claim 26. [Action, p. 11.] However, the Action states that it would be obvious to add them, with no suggestion or teaching required, to Friedman.
To render claim 26 unpatentable, however, the Office must do more than merely “consider” each and every feature for this claim. Instead, the asserted combination of the patents to Friedman and Gupta must also teach or suggest each and every claim feature. See In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974) (emphasis added) (to establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art). Rather, a proper obviousness determination requires that an Examiner make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” See In re Wada and Murphy, Appeal 2007-3733, citing In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). “Thus, obviousness requires a suggestion of all limitations in a claim.” In re Wada, citing CFMT, Inc. v. Yieldup International Corp., 349 F.3d 1333 (Fed. Cir. 2003, emphasis added).
As the limitations of claim 26, above, are conceded by the Office to neither be taught nor suggested by either the primary or the secondary reference, a prima facie case has not been made against claim 26.
KSR International. Co. v. Teleflex, Inc., et al., 550 U.S.___(2007) requires that an Examiner provide “some articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” [KSR Opinion at p. 14]. Further, an Examiner must “identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” [KSR Opinion at p. 15].
The Action has failed provide such articulated reasoning. In determining that it is obvious to add the undisclosed claim feature “a process requesting the system level service add-in manager to enumerate at least one category of the media filters installed on the system,” (emphasis added) the Action states: “It would have been obvious for one of skill in the art at the time the invention was made to implement Friedman’s installation so that the ID of the codecs would have a registry entry based on the well-known practice for incorporating codecs in the OS and registry with regard to Windows installing practices for future access verification or upgrade … to the corresponding Windows media applications.” [Action, page 11, internal cites omitted.] However, the claim language reads “…to enumerate at least one category…” The stated reasons for combination do not discuss categories at all and as such fail to provide “articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” For at least this further reason, claim 26 is in condition for allowance.
Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 26 and its dependent claim 27 under 35 U.S.C. §103 is respectfully requested. Claim 27 also recites novel and nonobvious features allowable over the Friedman-Gupta combination.

Conclusory Obviousness Statements

2008-09-16T16:07:00.000-07:00

Second, regarding the Examiner’s obviousness argument, the MPEP requires explicit analysis, and not conclusory statements. As MPEP § 2142 states:
The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
One conclusory statement made by the Examiner in support of the obviousness rejection is, “However, it would have been obvious to one of ordinary skill that Shoff-Schein would have been motivated to limit the number of times an icon is shown during a particular broadcast if the user did not respond the first time.” This conclusory statement is not supported by explicit analysis or "articulated reasoning with some rational underpinning." The statement merely concludes that one would be motivated to conceive the invention of claim 25. The Examiner’s subsequent two sentences at the bottom of page 6 of the Action do not provide explicit analysis as they are totally unrelated to the claim language (for example, see the emphasized language from claim 25 above), instead they are related to options available on a television guide display.
It appears that the Examiner is trying to establish a prima facie case of obviousness under one of the exemplary rationales illustrated in MPEP § 2143. Specifically, the Examiner appears to be relying on rationale (E) or (F). Rationale (E) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(E):
(1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (E), the Examiner has not established at least findings (1) and (2). Regarding finding (1), the Examiner has not provided any evidence that there was a recognized problem or need in the art, such as a need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content. Applicants recognized this problem (Application, original claim 9 and page 16, lines 3-15). However, relying on Applicant’s recognition of this problem to satisfy (1) would be impermissible hindsight. As MPEP § 2142 states (emphasis added):
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant"s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
Regarding finding (2), the Examiner has not provided any evidence that there were a finite number of identified solutions to the problem. First, there is no evidence that the prior art even recognized the problem (see previous paragraph). Second, even if the prior art did recognize the problem, the identified solutions were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). The Examiner has not pointed to any evidence describing the claimed solution as an identified, predictable potential solution in the prior art. For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (E).
Rationale (F) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(F):
(1) a finding that the scope and content of the prior art, whether in the same field of endeavor as that of the applicant's invention or a different field of endeavor, included a similar or analogous device (method, or product);
(2) a finding that there were design incentives or market forces which would have prompted adaptation of the known device (method, or product);
(3) a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art;
(4) a finding that one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art; and
(5) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (F), the Examiner has not established at least findings (2) and (3). Regarding finding (2), the Examiner has not identified any design incentives or market forces which would have prompted adaptation to result in the invention of claim 25. In the Action, page 8, the Examiner concludes that design incentives or market forces exist, but does not provide any evidence of either. The Examiner merely points to Applicants identification of a problem and Applicants claimed solution (need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content). The Examiner’s approach is not valid because it uses impermissible hindsight by relying on the Application.
Regarding finding (3), once again the Examiner has not provided any evidence of known variations or principles that would encompass differences between claim 25 and the prior art. The only options pointed to by the Examiner were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (F).
For at least the reasons discussed above, the Examiner has not established a prima facie case of obviousness with regards to claim 25. Because the Examiner has not established a prima facie case, Applicants are under no obligation to provide evidence of nonobviousness. As MPEP § 2142 states:
The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.

"Well Known" asserted by Examiner

2008-09-09T14:45:00.000-07:00

The Action rejects claim 11 under 35 U.S.C. § 103(a) as allegedly being unpatentable over Cheung in view of what was alleged to be well-known in the networking art. The Action states that “the use of expiration dates for assigned attributes were well-known at the time of the invention.” Applicants disagree, and traverse. Applicants respectfully request that the examiner produce authority for his statement that “the use of expiration dates for assigned attributes were well- known at the time of the invention. “See Zurko, 258 F.3d at 1386, 59 USPQ2d at 1697 ("[T]he Board [or examiner] must point to some concrete evidence in the record in support of these findings" to satisfy the substantial evidence test). If the examiner is relying on personal knowledge to support the finding of what is known in the art, the examiner must provide an affidavit or declaration setting forth specific factual statements and explanation to support the finding. See 37 CFR 1.104(d)(2).” MPEP 2144.03

New Claims

2008-09-09T10:45:00.000-07:00

Support for New Claim
There is support for the subject matter of the new claim throughout the Specification and Figures as originally filed. Additionally, the Applicants provide the following example of support:
Claim 37: 4:6 to 4:8.

Telephonic Interview

2008-09-09T08:26:00.001-07:00

Telephonic Interview
Applicant wishes to thank the Examiner for extending a brief telephonic Examiner Interview on September 9, 2008. Priority date problems with the cited art were discussed. Although specific agreement was not reached, Applicant now presents reasoned arguments in light of the Examiner’s discussion.

Co owned patent Cannot use patent as 103 reference

2008-09-08T07:45:00.000-07:00

Lawler, U.S. Patent 5,907,323, Cannot Be Used as a 103 Reference.
35 U.S.C. §103(c)(1) states:
Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
The instant application was assigned to Microsoft (through its parent application, No. 09/870,267, now issued as U.S. Patent 7,383,564), on June 21, 2004, at reel 014754, frames 0553-0565. Lawler, patent 5,907,323 (“Lawler ‘323”) (Application number 08/969,979) also is assigned to Microsoft, as can be seen on the front of the Lawler patent.
Lawler ‘323 qualifies as prior art to the instant application only under subsection (e) of section 102, as Lawler’s first publication date was its issue date of May 25, 1999. The priority date of the instant application is November 30, 1998. Further, Lawler ‘323 and the instant application were, to the knowledge of the undersigned attorney, at the time the claimed invention was made, both owned by Microsoft. Therefore, Lawler ‘323 cannot be used by the Office as a 35 U.S.C. §103 prior art reference. Lawler ‘323 is incorporated into the instant application by reference in the Specification on page 9, lines 24 through 26 as application number 08/969,979.

103 Header

2008-08-12T09:29:00.001-07:00

Claim Rejections under 35 USC § 103
Claims 1, 2 and 5-12 are rejected under 35 U.S.C. § 103(a) as being anticipated by Apple in view of Berry. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Apple and Berry and further in view of Peach.
Applicant respectfully disagrees, and traverses. To establish prima facie obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art. In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). "All the words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).

Refusal to examine -- claim terms unclear

2008-08-12T08:55:00.001-07:00

Refusal to Examine.
The Action declines to perform a prior art rejection on these claims as it is alleged that “it is unclear as to where exactly said transformations/operations are stored.” [Action page 5.] The MPEP states that only “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim” is it proper to not “reject such a claim on the basis of prior art.” [Emphasis added.] Moreover “considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims” is required to properly fail to provide a prior art rejection. [MPEP 2173.06, emphasis added.]
Here, the claim terms at issue are common terms explained and pictured in the Specification and Figures as filed. As only when “considerable speculation” is required about the meaning of claim terms, a rejection under 35 U.S.C. 103 is not proper, and as the claim terms at issue are easily understood, expressly pictured, arguably expressly described, and certainly implicitly described, in no way could “considerable speculation” be required to determine the meaning of the claim terms. Applicant thus respectfully requests that the next application not be made final, and that the next Action properly rejects the claims on the basis of prior art or find the claims allowable.

112 Rejection All Language Not rejected

2008-08-12T08:45:00.000-07:00

Claims 1-11 and 21-26 are rejected under the first paragraph of 35 U.S.C. § 112, as failing to comply with the written description requirement. Specifically, the Action alleges that the Specification does not describe the limitation "having more characters than the restricted character set" and the limitation is unclear to the Examiner. Applicants respectfully disagree with the Office’s reasoning, and believe that the claims in their original format satisfied 35 U.S.C. § 112, but have amended the claims to expedite prosecution.
When a disclosure describes a claimed invention in a manner that permits one skilled in the art to reasonably conclude that the inventor possessed the claimed invention the written description requirement is satisfied. [MPEP §2163, emphasis added]. This possession may be shown in any number of ways and an Applicant need not describe every claim feature exactly because there is no in haec verba (in the exact language) requirement. [MPEP § 2163.] Rather, to satisfy the written description requirement, all that is required is “reasonable clarity.” [MPEP § 2163.02.] Also, an adequate description may be made in any way through express, implicit, or even inherent disclosures in the application, including words, structures, figures, diagrams, and/or formulae.. [MPEP §§ 2163(I), 2163.02.] Amended claim 1 recites a method to determine and order keyword search terms on a portable electronic device, comprising, e.g.,:

responding to an input sequence associated with a restricted character set having a given number of characters;
mapping the characters of the input sequence to a full character set having more characters than the given number of characters to produce an expanded lookup set; [and]
using the expanded lookup set to search a database of keywords producing keyword results, the keyword results comprising at least one associated keyword;

The amended terms "restricted character set having a given number of characters" and "a full character set having more characters than the given number of characters to produce an expanded lookup set" find support at multiple points through the Application. For example, element 402 of Figure 4 is labeled as "responding to a input sequence using a restricted character set being input" and element 404 is labeled "mapping restricted character set to full character set to produce expanded lookup set." (Emphasis added.) The specification additionally describes a restricted character set being mapped to a fuller character set having more characters than the number of characters in the restricted character set at, for example:
An exemplary embodiment comprises a restricted character set - the numbers 1-0 - mapped onto a full character set, the letters of the alphabet and the original numbers. (Para. 0020)

For example, certain character-based languages such as Chinese have systems where complex characters can be assembled using a series of predefined strokes - this "stroke alphabet" could be the restricted character set. A user may enter the character set using a touch-pad, by pressing a button, by writing on a tablet, by toggling a switch, and so on.
At process block 404 the restricted character set is mapped to a fuller character set. (Paras. 0027, 0028.)

In an alternate embodiment, the transformation maps two roughly equal character sets. In such a case, the English alphabet may be mapped onto the French alphabet, with each English letter (the first character string) transformed into the corresponding set of French letters including those with diacritical marks. So, the "E" would map to "E", "È", "É", and "Ê". (Para. 0055.)

There are also several other points in the specification supporting the above recited language. By way of example, for an embodiment, Para. 0020 describes the restricted character set comprising the numbers 1-0 -- 10 characters; and also describes the full character set as the alphabet, which commonly comprises 26 characters. Those of ordinary skill in the art would understand that such a disclosure clearly discloses mapping the characters of the input sequence to a full character set having more characters than the number of characters (of the restricted set.)
As the above recited amended language is supported by the specification, the §112 rejections of claims 1-11 and 21-26 should be withdrawn. Applicants respectfully request such action.

Examiner Interview Language

2008-08-01T10:03:00.000-07:00

Telephonic Interview
Applicant wishes to thank the Examiner for extending a telephonic Examiner Interview on September 1, 2006. Claim 11 and Lindstrom were discussed. Although specific agreement was not reached, Applicant now presents reasoned arguments in light of the Examiner’s description of Lindstrom.

112 computer readable medium not mentioned in spec

2008-07-31T14:32:00.000-07:00

Claims 17-20 have been rejected under the first paragraph of 35 U.S.C. § 112 for allegedly failing to comply with the written description requirement. Specifically, the Action contends that Applicant’s disclosure does not sufficiently describe the limitation of a “computer-readable medium” of amended claims 17-20. This contention is respectfully traversed. Video arrays, various types of ….etc.
As the Office Action notes, independent claim 17 recites a computer readable medium. Applicant submits that one of ordinary skill in the art would reasonably conclude that Applicant’s disclosure adequately described the claimed invention at the time of filing at least because:
(1) the feature of a computer readable medium is at least impliedly taught by the present application as it was originally filed; and
(2) art to which the disputed limitation belongs (basic computer configurations) is mature and the predictable nature of the art mandates a generally lower showing of possession.
A review of the present application reveals that Applicant describes a user interface for use with a video on demand system. [See Specification, e.g., page 5, line 25 to page 6, line 3, Fig. 3 at 56.] This interface is stored as instructions within RAM memory. [Id. Also see Specification, e.g., page 4, lines 23-28 for further discussion of the RAM memory.] Other computer readable media are also mentioned; e.g., non-volatile memory [e.g., block 42 in Fig. 2] including ROM, EPROM, flash memory, and magnetic disk storage [Specification, page 4 lines 25-28].
Those of ordinary skill in the art would understand that such a disclosure at least implies (and arguably expressly describes) that such a RAM memory is a computer-readable medium. Further, one of ordinary skill in the art would recognize that such computer instructions would be stored internally in non-volatile memory, and can also be stored on other computer-readable media, such as removable disks, CD-ROMs, or any other medium which can be used to store information.
In view of the foregoing, Applicant respectfully submits that ordinarily skilled artisans would reasonably conclude that Applicant possessed the claimed language on the basis of the aforementioned at least implicit descriptions. Applicant further submits that this conclusion is buttressed by the maturity and predictability of the art and because an adequate disclosure need not be express or even implied. Thus, the present application adequately describes the claimed invention.
Applicant thus respectfully requests favorable reconsideration and withdrawal of the rejection under 35 U.S.C. § 112.
In the event that the Office maintains this rejection, Applicant respectfully requests, in the interest of its policy of compact prosecution, that the Office explain how the aforementioned portions of the present application fail to communicate to a skilled artisan that Applicant possessed the claimed invention.

Examiner misses claim elements, whole claims

2008-07-31T10:19:00.000-07:00

Finality of the Next Action Is Precluded
Applicants note the Office Action does not specifically reject the core feature of independent claim 1 . Indeed, although the Summary of the Office Action indicates that claim 1 stands rejected, the Detailed Action omits any explanation of how any cited art anticipates the core feature “via application of the one or more subtractive filters, determining intersection of the associated sets of user interface element definitions as a display set of user interface element definitions….” of this claim. Applicants respectfully submits that this omission amounts to a failure to articulate a prima facie case of unpatentablity and the burden to rebut this “rejection” has not yet shifted to the Applicants. Consequently, a next Office action rejecting claim 1 cannot properly be made final since only then would the Applicant be obligated to rebut the rejection, presuming that such an Office action sets forth a prima facie case. (See MPEP § 706.07(a)).

102 enablement-Ref just must be mentioned, even negatively

2008-06-05T09:55:00.001-07:00

Summary--102 reference just needs to mention element for it to be an enabling reference.

However, this clashes with ruling that the same exact invention must be disclosed. (Ref provided later, I hope)

On the other hand, it must be noted that the CAFC has held that proving "enablement" of prior art under 102(a) or 102(b) requires less than proving enablement for 35 U.S.C. 112P1 purposes.

Also, as we know, the burden is on applicants and patentees to prove that a prior art reference is inoperable. But the CAFC has set that bar quite high.

The most interesting case in this regard is Rasmussen:

http://www.cafc.uscourts.gov/opinions/04-1191.pdf

In Rasmussen (an interference), the Board found a patent valid in view of 102(b) art, a published EP application, because (the Board concluded) the EP application was not enabled. The Board made two key findings of fact to support its conclusion: (1) there was no reasonable scientific basis for a person of ordinary skill in the art to conclude that the method in a prior art EP application would be effective [in treating prostate cancer]; and (2) a person of ordinary skill in the art as of the publication date of the EP patent would not have believed that the method described in the patent would be effective.

The CAFC **overturned* the conclusion of non-enablement based on those findings of fact, stating that "Under the legal standard set forth in Hafner and the cases that have followed it, those findings are insufficient to support the Board’s conclusion that EP ’383 is not an enabling reference
for purposes of anticipation."

In other words, a prior art method is enabled even if the reference which discloses the method "teaches away" (only relevant for obviousness); even if the reference states flat out that the method does not yield successful results; and even if as of the date of publication of the reference nobody skilled in the art believed that the method could yield the results later obtained by the patentee.

That's a very low standard.

http://www.patentlyo.com/patent/2008/06/question-on-pro.html#comment-117547596

102 enablement-Ref just must be mentioned

2008-06-05T09:55:00.000-07:00

On the other hand, it must be noted that the CAFC has held that proving "enablement" of prior art under 102(a) or 102(b) requires less than proving enablement for 35 U.S.C. 112P1 purposes.

Also, as we know, the burden is on applicants and patentees to prove that a prior art reference is inoperable. But the CAFC has set that bar quite high.

The most interesting case in this regard is Rasmussen:

http://www.cafc.uscourts.gov/opinions/04-1191.pdf

In Rasmussen (an interference), the Board found a patent valid in view of 102(b) art, a published EP application, because (the Board concluded) the EP application was not enabled. The Board made two key findings of fact to support its conclusion: (1) there was no reasonable scientific basis for a person of ordinary skill in the art to conclude that the method in a prior art EP application would be effective [in treating prostate cancer]; and (2) a person of ordinary skill in the art as of the publication date of the EP patent would not have believed that the method described in the patent would be effective.

The CAFC **overturned* the conclusion of non-enablement based on those findings of fact, stating that "Under the legal standard set forth in Hafner and the cases that have followed it, those findings are insufficient to support the Board’s conclusion that EP ’383 is not an enabling reference
for purposes of anticipation."

In other words, a prior art method is enabled even if the reference which discloses the method "teaches away" (only relevant for obviousness); even if the reference states flat out that the method does not yield successful results; and even if as of the date of publication of the reference nobody skilled in the art believed that the method could yield the results later obtained by the patentee.

That's a very low standard.

http://www.patentlyo.com/patent/2008/06/question-on-pro.html#comment-117547596

CIP apps don't get presumption of priority

2008-06-05T09:52:00.000-07:00

PowerOasis v. T-Mobile (Fed. Cir. 2008)

The district court granted summary judgment to T-Mobile — finding the PowerOasis cell-phone vending machine patents invalid.

The patent family history includes a continuation-in-part (CIP) preceded by a continuation and an original utility patent application. Based on the prior art date, the issue boiled down to whether the asserted patents could claim priority through the CIP to the original application.

Patentee Bears Burden of Proving Priority. Despite the statutory presumption of validity, the CAFC first held that the patentee normally has the burden of proving priority. The exception is when the PTO considers the issue of priority during prosecution. In drafting the opinion, Judge Moore shifted the decision from a question of validity (where a presumption lies) to a question of effective filing date (where there is no statutory presumption). “When neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.”

Interestingly, this decision falls runs parallel to Microsoft’s recent petition for certiorari in the z4 case.

Written Description: To claim priority to the original application date, that original application must “convey with reasonable clarity to those skilled in the art, as of the filing date sought, [that the inventor] was in possession of the [claimed] invention.” (Quoting Vas-Cath). Here, the original application disclosed a “display” and “user interface” while the asserted patent claimed a “customer interface.” Although these terms appear quite close, the CIP had added specific examples of a laptop customer interface while the original application only included interface embodiments attached to the vending machine. This makes a difference because the accused device uses a laptop and the patentee asked for a construction of the term that would include the laptop interface.

Holding: “Because none of this support was present in the Original Application and because the Original Application did not disclose a customer interface apart from the vending machine, the asserted claims are only entitled to the 2000 CIP Application.”

http://www.patentlyo.com/patent/2008/04/patentee-has-no.html

Computer Readable Medium Claims

2008-06-05T09:24:00.000-07:00

From Kyle, 6-4-08

67. (Currently Amended) A computer–readable medium having stored thereon computer program instructions for creating an X , the X comprising:
...; and
the computer-readable medium further having stored thereon computer program instructions comprising:
instructions for a;
instructions for b, and
instructions for c.