tag:blogger.com,1999:blog-6733236595417664807.post6011010017803688539..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: Board reverses 101 rejection based on a server recited in the preambleKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger15125tag:blogger.com,1999:blog-6733236595417664807.post-61501742677590176042013-11-22T14:01:17.503-05:002013-11-22T14:01:17.503-05:00Is anyone aware of an analysis, or even a catalog,...Is anyone aware of an analysis, or even a catalog, of post-Bilski patent eligibility decisions at the PTAB so far? I started to research this, and after studying about 10 of them, they seem to have no consistency whatsoever. Looking for other people's global insights (if any are to be had).Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-36242123065963806102013-10-17T20:59:56.784-04:002013-10-17T20:59:56.784-04:00You don't seem to have ignored it. You seem t...You don't seem to have ignored it. You seem to have responded to it. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-67930785433491357292013-10-16T08:05:02.412-04:002013-10-16T08:05:02.412-04:00Since it takes about 5 seconds
... to identify a p...<i>Since it takes about 5 seconds</i><br />... to identify a post from 6, they are easy to ignore.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-85043762526676119352013-10-09T20:39:17.763-04:002013-10-09T20:39:17.763-04:00"Adding a limitation in the preamble leaves o..."Adding a limitation in the preamble leaves open to interpretation which of the steps in the body of the claim need to be performed by the computer, arguably making the claim broader. "<br /><br />And also in need of a rejection under Miyazaki. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-10761346892466796862013-10-09T20:34:21.291-04:002013-10-09T20:34:21.291-04:00The only "factor" relevant to the 101 in...The only "factor" relevant to the 101 inquiry is whether or not an abstract idea is preempt by the claim. Since it takes about 5 seconds to see the abstract idea at issue in this case, and that it is preempt, it should have taken a mere minute or two for the board to write a proper 101. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-74314685711887785992013-10-04T17:18:20.040-04:002013-10-04T17:18:20.040-04:00Nice to see the other two APJ's read what they...Nice to see the other two APJ's read what they signed off on closely.ThomasPainenoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-70633256298214033932013-10-04T11:47:21.228-04:002013-10-04T11:47:21.228-04:00On a lighter note, typo on page 5 made me do a dou...On a lighter note, typo on page 5 made me do a double-take: "A preamble is of no significance unless it is not necessary to give life, meaning, and vitality to a claim." Say what?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-64891301070930200012013-10-03T22:02:15.741-04:002013-10-03T22:02:15.741-04:00In fairness to the Examiners, the Supreme Court cr...<i>In fairness to the Examiners, the Supreme Court created the confusion by creating these exceptions without clearly spelling out their scope.</i><br />The blame should be split. SCOTUS clearly doesn't understand the impact of their <i>non-rigid tests</i>. Instead of drawing a line in the sand, they give us a malleable "I know it is abstract when I see it" non-test that is impossible to predictably apply. The second part of the blame goes to the USPTO, which sanctions (or perhaps even encourages) lousy 101 rejections. In my conversations with Examiners, many of them have essentially "thrown up their hands" in frustration because they are getting mixed messages from management. At the USPTO, it is safer to reject than not to reject so many Examiners will reject because the odds of negative fallout are much less.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-26654567859236358752013-10-03T15:24:10.810-04:002013-10-03T15:24:10.810-04:00I've had the same experience. Examiners often,...I've had the same experience. Examiners often, in my opinion, incorrectly apply "field of use" and "insignificant pre-/post-processing activity" exceptions to patent-eligible subject matter. A lot of times they use a shotgun approach and just throw any possible argument at the claim without much thought as to whether the argument fits the language in the claim. In fairness to the Examiners, the Supreme Court created the confusion by creating these exceptions without clearly spelling out their scope.Adam Ellsworthhttps://www.blogger.com/profile/10713475788934761605noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-4408570978578244172013-10-03T14:36:42.065-04:002013-10-03T14:36:42.065-04:00Adding a limitation in the preamble leaves open to...<i>Adding a limitation in the preamble leaves open to interpretation which of the steps in the body of the claim need to be performed by the computer, arguably making the claim broader.</i><br />I understand the logic behind that. However, from my experience, attempting to claim 100% of patent scope generates far more trouble than attempting to claim 80% or 90% of patent scope. Don't get me wrong, I try to get as broad of claims as I can. However, even 80% of patent scope will probably get you 95+% of patent infringers, which is more than enough. When you get really close to that line (i.e., the line that divides what is patentable from unpatentable), you subject yourself to bad (or perhaps even reasonable) interpretations that could sink you.<br /><br />IMHO, the object isn't to get perfect claims. The object is to get good, allowable claims for which infringement arguments can easily be made.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-27664320084347395642013-10-03T13:26:09.663-04:002013-10-03T13:26:09.663-04:00What I find interesting about the MOT test is that...What I find interesting about the MOT test is that Examiners apply it to require that a claim recite a machine (for that prong) -- although the law only states that the claim must be tied to a machine.<br /><br />The funny part is that when you do recite a machine, then they state "it isn't the sole test" and then proceed to ignore the claim language as "field of use" limitations or insignificant post-/pre-processing activity.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-11360795292561811292013-10-02T12:27:19.307-04:002013-10-02T12:27:19.307-04:00Chris, typically clients are OK with your approach...Chris, typically clients are OK with your approach, but some clients prefer to invest more money into prosecution to squeeze every ounce of breadth they can out of a claim. Adding a limitation in the preamble leaves open to interpretation which of the steps in the body of the claim need to be performed by the computer, arguably making the claim broader. <br /><br />Also, in this case, the applicants attempted to do what you suggest in an amendment after final, but the Examiner stated in the Advisory Action that the amendment was still insufficient to render the claim patent-eligible. I suppose the applicants felt that they had just as much chance of success obtaining a patent with the limitation in the preamble as in the body of the claim with this Examiner, since the Examiner had rejected both approaches.Adam Ellsworthhttps://www.blogger.com/profile/10713475788934761605noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-25657607002988065732013-10-02T12:17:23.603-04:002013-10-02T12:17:23.603-04:00OK, Mr. Practical here. Why not just add more mach...OK, Mr. Practical here. Why not just add more machine language in the body of the claim to avoid going to appeal on a freakin' 101 issue and/or winning by a hair? Chrisnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-8827541641672283102013-10-02T03:02:34.015-04:002013-10-02T03:02:34.015-04:00OP here. The original post was meant to have the ...OP here. The original post was meant to have the quote:<br /><br />Interestingly, the Examiner cited the Supreme Court decision Bilski v. Kappos, 95 USPQ2d 1001 (2010) as a reference in the Final Office Action, even though that case states that the machine-or-transformation test is not the sole test to apply to determine patent eligibility.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-166469294030734132013-10-02T03:00:06.764-04:002013-10-02T03:00:06.764-04:00<>
Where does Bilski say whether:
(1) If t...<><br /><br />Where does Bilski say whether:<br /><br />(1) If the claim fails the MOT test, other tests may show the claim complies with 101 anyway;<br /><br />or <br /><br />(2) If the claim passes the MOT test, other tests may show the claims fails to comply with 101 nonetheless?Anonymousnoreply@blogger.com