Monday, May 23, 2011

BPAI reverses § 101 rejection of computer readable medium as "inoperative"

Takeaway: The BPAI reversed a § 101 "inoperative" rejection for a claim to a computer readable storage medium. (Ex parte Riley, June 24, 2010.) The specification stated that the computer readable medium encompassed electrical connections such as "wires," and "optical fibers," which the Examiner found were not capable of storage. Thus, the Examiner rejected the claim under § 101 as "inoperative and therefore lacks utility." The Board found that the reference to wires and optical fibers was in a description to a medium, not a storage medium, and that a POSITA would understand wires and fibers to be non-storage mediums. Thus, the claim did not encompass wires and fibers, and was not inoperative.

My two cents: I have never seen an § 101 inoperative rejection. I think the Examiner got a little too clever here and really missed the boat. Inoperability rejections are usually limited to crazy stuff like perpetual motion, cold fusion, and methods of controlling aging. See MPEP 2107.01, which goes on to state:


Situations where an invention is found to be "inoperative" and therefore lacking in utility are rare, and rejections maintained solely on this ground by a Federal court even rarer. ....

An invention that is "inoperative" (i.e., it does not operate to produce the results claimed by the patent applicant) is not a "useful" invention in the meaning of the patent law. See, e.g., Newman v. Quigg, 877 F.2d 1575, 1581, 11 USPQ2d 1340, 1345 (Fed. Cir. 1989); In re Harwood, 390 F.2d 985, 989, 156 USPQ 673, 676 (CCPA 1968) ("An inoperative invention, of course, does not satisfy the requirement of 35 U.S.C. 101 that an invention be useful."). However, as the Federal Circuit has stated, "[t]o violate [35 U.S.C.] 101 the claimed device must be totally incapable of achieving a useful result." Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1571, 24 USPQ2d 1401, 1412 (Fed. Cir. 1992) (emphasis added).

31 comments:

  1. "I think the Examiner got a little too clever here and really missed the boat."

    Do you think it was 6?

    Really, Examiner's are liked kids, they say the damndest things sometimes.

    You mentioned the top 10 things applicants do wrong ... we should have a top 10 things examiners do wrong. I nominate the following for #1 -- not reading the MPEP/rule/statute/case law.

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  2. "I think the Examiner got a little too clever here and really missed the boat."

    The examiner and whatever appeal conferees green lighted this heaping steaming pile of sh!t to go to the Board should be publicly flogged.

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  3. A finer analysis would not necessarily lead one of ordinary skill in the art to conclude that a wire or an optical fiber fails to constitute a storage medium.
    I know! I know!! As you read that statement you were thinking - Oh! Oh!! Here is another kook trying to stretch credibility.
    To which, I would suggest you consider the following:
    Can you clearly define what is meant by "storage" in terms of time?
    Does a DVD constitute a "storage" medium because it can store data for a long, long time (until it melts in the sun, or gets scratched)?
    What about a DRAM (what happens when power is disconnected, or the refresh charges are terminated?). For that matter any IC will eventually degrade and its contents corrupted (if you wait long enough or expose it to radiation, EMF etc) Now turning to a wire - a POSITA knows that it does indeed take a finite amount of time for data to propagate through a wire (granted, in nanoseconds) The POSITA also knows that a coaxial cable (distributed L-C constants element) can be used as a delay line element. So, even though the "storage" time in the wire or cable is very small - it does indeed exist - just ask a satellite engineer transmitting a signal through space!!
    In short, I suggest that the answer is really not that straightforward as someone would assume simplistically.
    And, if you think the above statements are a little bit weird let me assure you that they have come up in several Examiner interviews that I've had. The end result: pass the buck upstairs.

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  4. "Inoperability rejections are usually limited to crazy stuff like perpetual motion, cold fusion, and methods of controlling aging."

    Too bad the examiners can't even recognize these bad apples - see http://techroadmap.com/ipdirections/2010/10/04/why-we-dont-trust-the-patent-office/

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  5. After being reversed, the examiner re-opened prosecution. Same primary reference he was reversed on. No signature of the TC Director approving the re-opening.

    Applicant responded with no claim amendments.

    Examiner agreed applicant's arguments were persuasive. But sent a second non-final office action.

    When the h#ll is somebody over there going to step in and rein this examiner and his a$$hole SPE in? WTF do applicants have to do to get this kind of sh!t to stop?

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  6. >No signature of the TC Director approving the
    >re-opening.

    Wow, I've heard stories of reopening without proper approval. Yeah, I agree, this just sucks.

    AFAIK, the proper route to address this is petition. Though maybe I'd start with phone calls to Examiner, his SPE and then the Tech Director.

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  7. I'd be on the phone with Mr. Kappos today if I was representing the applicant.

    These examiners and SPE's are all cockroaches. They'll scurry around in the dark doing their dirtiest work, and run and hide as soon as you shine a light on them.

    Absolutely unforgiveable for applicant's rep not to point out the missing TC Director approval in the response to the re-opened prosecution. Sh!tty advocacy without a doubt.

    I would dispense with the petition and start making phone calls. Immediately.

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  8. The same thing happened to me, but at the pre-BPAI-decision stage, where only a SPE's signature is required - twice in a row.

    Here, I would call the TC Director straight. It's his/her signature that's missing. In my experience, examiners and SPEs have little respect for the signature requirements.

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  9. Where in the MPEP can I learn about these signature requirements?

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  10. Chapter 1000 is a good place to start. Not exactly on point, but gets you heading in the right direction. See, for example, MPEP 1003.

    In this particular app, see MPEP 1214.07.

    I wouldn't waste time on the TC Director. That fact that sh!t like this is going down in his TC without his knowledge is disgraceful. The only way a TC Director is going to put a stop to nonsense like this is if there is a consequence for him/her. If he got a phone call from Stoll or Kappos asking him to explain what the h#ll is going on in 10/915,174, do you think any SPE in his TC is ever again going to pull these shenanigans? I doubt it. That TC Director would let it be known to all the sh!tty little cockroaches in his/her TC that if they pull crxp like this, they're gonna feel some pain come review time.

    Not going to change any of this garbage over at the PTO with polite phone calls like, "Excuse me, TC Director, but I have a teensy weensy problem with a case in your TC. Could you maybe possibly take a moment out of your busy day of doing absolutely nothing and let me know what I can do to get the a$$holes who work for you to obey the law? Thank you so much for your time today."

    You gotta get these bxstards in trouble. Lots of trouble. Or they're gonna fxck your clients and you at will.

    A partner at a previous firm gave me some great advise: There's two kinds of people in this world - fxckers and fxckees. Don't be a fxckee.

    Words to live by.

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  11. "The same thing happened to me, but at the pre-BPAI-decision stage, where only a SPE's signature is required - twice in a row."

    This has happened to me some many times I've lost count.

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  12. "So, even though the 'storage' time in the wire or cable is very small - it does indeed exist - just ask a satellite engineer transmitting a signal through space!!"

    Point them to In re Nuitjen -- I'll let you figure out where. Also, discuss the standard of claim construction, which is broadest reasonable interpretation, not broadest convoluted interpretation.

    Cables, space, propagating signals per se, etc. are examples of transmission mediums, which are distinct from storage mediums. Whereas "storage" holds something, a propagating signal is "devoid of any semblance of permanence."

    Of course, I'm boring the rabble with claim cosntructions and case law. It is far easier to swallow these contrived claim interpretations than to actually argue them.

    Silly example, but a good one. I walk down the hallway -- thereby occupying it for some brief period of time. The fact that I was in the hallway for that brief period of time does not transorm the hallway into a storage closet.

    Reasonable claim constructions people -- reasonable.

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  13. The examiner probably did all this on paid overtime!

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  14. "Do you think it was 6?"

    Lulz, I'd give a 112 1st enablement on an "inoperative" device. Even so, I don't think that is what is going on in this case.

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  15. Actually I take that back, I've never really even messed with an "inoperative" device. I pretty much only ever see devices that are impossible to make. And those are what gets a 112 1st enablement. Although, come to think of it, you still have to have enabled one of skill to be able to use your device. So, idk, maybe a 112 1st would work on an "inoperative" device as well. I'd have to look into that.

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  16. The point about any transmission medium necessarily storing the data for at least long enough to transmit it is certainly true. However, I recall from law school that one of the reasons courts originally found propagating waves to be patent eligible subject matter under the manufacture category is because a demonstration was conducted in which a data wave was propagated in a loop of superconducting wire. The wire was shipped overseas on ice, and the data successfully read out. Apparently, we have very short memories if we think wires can't be storage mediums.

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  17. "Apparently, we have very short memories if we think wires can't be storage mediums."

    Yeah, but when all the electrons fall out of the wire, isn't the data lost?

    Lulz

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  18. >we have very short memories if we think wires
    >can't be storage mediums.

    But what about *reasonable* claim construction. Does a POSITA understand "computer readable storage medium" to encompass wire?

    As a software developer, I'm pretty sure I would have said that position was ridiculous.

    Of course, you gotta look to see if the Applicant defined the term in the spec. And this particular case, the spec says "computer readable medium includes wire". Even so, the BPAI found that the spec taught wire was non-storage, and reversed the 101 rejection on this basis.

    Absent any discussion of wires being CRM in the spec, do we really think a POSITA understands CRM to include wires?

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  19. "Yeah, but when all the electrons fall out of the wire, isn't the data lost?"

    When RAM is no longer powered, the electrons also "fall out" and the DATA is lost. Are you saying that you do not consider RAM to be a storage medium?

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  20. I was just making fun of 6. Sorry for the confusion.

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  21. "The wire was shipped overseas on ice, and the data successfully read out. Apparently, we have very short memories if we think wires can't be storage mediums."

    Cite please.

    A couple things, please find me the material that can be made into a superconductor with "ice." So called "high-temperature superconductors" are defined as being superconductive at temperatures greater than -196 Celsius (or 77K).

    Also, assuming you have such an enabled configuration, you've transformed what was once considered a transmission medium into a storage medium. Also, the 101 rejection based upon the invention being "inoperative" is still toast.

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  22. It's always best to review incoming Office Actions ASAP in order to bring crap like this to the attention of the Examiner's supervisors within a month of the mailing date. Filing a petition to invoke supervisory review is something that can be done in parallel with responding to the OA and, hopefully, be decided before the need to file a Notice of Appeal.

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  23. >bring crap like this to the attention of the
    >Examiner's supervisors

    This might work in situations where the supervisor is unaware of the rejection. So it doesn't hurt to consider a phone call or a petition, when appropriate.

    However, this case went to appeal, which tells us that a conference of Examiners signed off on it. Apparently none of them thought it was crappy enough to reopen prosecution to withdraw the rejection.

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  24. "However, this case went to appeal, which tells us that a conference of Examiners signed off on it. Apparently none of them thought it was crappy enough to reopen prosecution to withdraw the rejection."

    All of the conferees should be publicly horse whipped. The SPE and the TC Director should be fired for the shenanigans that have gone on post reversal.

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  25. "However, this case went to appeal, which tells us that a conference of Examiners signed off on it. Apparently none of them thought it was crappy enough to reopen prosecution to withdraw the rejection."

    True, but most SPEs and TC Directors who came up during the 2001-2008 years developed a circle the wagons mentality when it reaches the point of the pre-appeal conference. By signing off on the non-final and final Office Actions, the SPE is facing embarassment at the failure to recognize this nonsense early on. The attitude is that it is better for the BPAI to provide the Examiner and his/her bosses with some cover, most likely in the belief that if the BPAI doesn't support the Examiner's reasoning, the BPAI will substitute their own rationales for the rejections.

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  26. My point in the above post is that if you get to the SPEs/TC Directors early on, they won't have painted themselves too badly into a corner by letting just the first Office Action slip through. This allows them leeway to "reconsider" the rejections and decide that the rejections should be withdrawn.

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  27. >if you get to the SPEs/TC Directors early on,
    >they won't have painted themselves too badly
    >into a corner by letting just the first Office
    >Action slip through.

    Yeah, makes sense. Perhaps part of a larger philosophy of calling the PTO on crap early and often to try to prevent it from snowballing.

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  28. "By signing off on the non-final and final Office Actions, the SPE is facing embarassment at the failure to recognize this nonsense early on."

    Huh? None of these SPE's is "facing embarrassment" for signing off on anything. Who are they going to be embarrassed by? Their fellow SPE's? The TC Directors? Not a chance. They all sign off on total garbage for one reason and one reason only: it's easy and there are zero consequences for it. What, you think a bunch of SPE's and/or TC Directors are sitting around on their lunch two hour and one of them says to another, "Hey, Bob, I saw the Board reversed that case you sent up two and a half years ago. Said the rejections were based on speculation, unfounded assumptions, and hindsight. Boy, that's gotta sting, huh?"

    Puh-leeze. None of them give a sh!t what the Board says about their rejections. Their whole attitude is, "Well, we didn't allow it, the Board did. They don't know nothing anyway."

    "The attitude is that it is better for the BPAI to provide the Examiner and his/her bosses with some cover, most likely in the belief that if the BPAI doesn't support the Examiner's reasoning, the BPAI will substitute their own rationales for the rejections."

    This is why the BPAI backlog has, just from October 1, 2010 through April 30, 2011, gone from 19,000 to 22,500.

    I agree you should call them on crap early and often. Just don't be surprised when you're filing your brief and docketing a three year call up in your docketing system to see if the decision has been issued.

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  29. "Said the rejections were based on speculation, unfounded assumptions, and hindsight. Boy, that's gotta sting, huh?""

    Lulz, yeah that happens like all the time.

    "They don't know nothing anyway.""

    Now now, they say "they don't know ANYTHING anyway".

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  30. "Lulz, yeah that happens like all the time."

    I'm sure you can find a decision that reversed the rejections on those grounds issued within the last 2 weeks or so. I don't remember the serial number off hand, but I'm sure your superior searching skills will find it in no time.

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  31. "I was just making fun of 6. Sorry for the confusion. "

    You did such a good job of it, I thought you were 6. Sorry for the confusion.

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