Two days ago, I tweeted a link to an article, the anatomy of a bogus Alice rejection (https://twitter.com/danbeckr/status/757969463694258176 ).
Written by Gene Quinn of ipwatchdog.com, A relatively prolific writer of ip-articles, I felt some security in posting a link to it…
The article is purportedly about how badly rejections are being carried out with respect to the still-fresh bruise of the Alice vs CLS bank precedent. There is some of that, in there, for sure. However, what stood out for me was the, to use Gene Quinn’s own word, conclusory statement that examiners don’t read the specification.
There was no caveat. ALL examiners? After making the statement an unquestionable premise, Gene proceeded to then point out that examiners cannot possibly understand the true nature of an invention without reading the specification. To which I say:
WTH is wrong with everyone’s claims, if you are asserting that it’s a matter of fact that they aren’t enough to adequately convey what has been invented, without reading the spec?
Turnabout is fair play, so I’ll go ahead and fling out my own oversimplification: claims are stating that the inventor has done something which has never, ever, been done before. HOW to do it lives in the spec. WHAT it is, in its broadest meaning, is in the claims. The only time the how should be in the claims is where it sounds like a how… in conversation.
Conversation: “we managed it by doing a process which did an additional step D before proceeding on to step E.”
But it should read like a WHAT in a claim:
“The process of claim x, further wherein step D is recursively iterated to the condition to initiate step E.”
(Going a bit away from my contravention of Mr. Quinn to indulge a segue: While I’m doing my who/what/how… Why is in the background… And summary is the plainspeak what. Detailed description is the captioned, sample example of more about the what than you really wanted to know).
A person having ordinary skill in the art can tell you if something has been done before. However, if he can’t, then, imagine the conversation, if patent prosecution was literally a conversation over drinks with a PHOSITA:
“You did what? I’ve never heard of that. …HOW did you do it?”
How is therefore a second question, and thereby is condoned to not be asked, if someone else can already refute the What, which again, is the claims. If an examiner chooses not to look through the spec, that’s only contemptible where it is an ALLOWANCE. Because that would be turning a blind eye to a 112 rejection, adequacy of the disclosure. Rejecting the claims is about what they can discern as having been done, not whether or not someone can say how it’s been done.
Gene presumptuously elevates himself to a philosopher beyond the law by asking whether anything can be abstract at all, if the examiner makes a pronouncement of it being not novel and/or not obvious. Gene, you’re a lawyer. You know why.
YOU BRING YOUR REJECTIONS ALL RIGHT AWAY, or else you risk being held to have completely waived them for the future. If an examiner was required to pick between a power-move “IT IS NOT A PRODUCT OF THE INGENUITY OF MAN!” 101 rejection and a playing-it-safe “bawwww, shucks. I think I know somebody could figure that out… Thar’s lotsa smawrt peeepol out thar, but pulleeze, whah dunt you tell me whether you think utherwaaaase” 103 rejection, then you risk putting the entire examining Corp in a position for letting every half-baked, “hey, what if…” notion run screaming through the office, creating a completely unnavigable space in which to not-innovate.
And it IS NOT conclusory for your mother to tell you not to cross the road because she said so. It might be condescending, since it denies you an opportunity to be heard for your own assessment. But it isn’t defining itself. It would conclusory for your mother to say, “it’s not safe. Because it’s not safe.”
It’s also bogus to attack whether an examiner is being hypocritical with respect to a mechanism of shuffling around money being an abstract idea, when he himself is paid that way. We use gravity all the time. It’s an abstract idea. We have no idea what the F gravity is. You might argue that I’m talking about a physical phenomena, I am not an abstract idea. But really, think about it. Go ahead and claim gravity:
1. A force which attracts all masses in the universe toward one another.
2. The force of claim one, wherein it holds in an enduring revolving circuit a mass around another mass in a repeating motion while one mass maintains a sufficient relative tangential velocity
WHAT?! that is abstract as all get-out. you know how abstract that is? Conscious organisms are hundreds of millions of years old, but we, just the human species, has only understood that to be the way it works for about 450 years. No, I am not going to look up the exact date. The fact that it’s been discovered, let alone used to shoot free throws and launch missiles and maintain satellites doesn’t make it any less abstract. We can know all about it without being able to explain it sufficiently for anyone to practice it. If it lacks additional detail to describe it as anything more than a judicial exception, then it fails.
Also, go back to the claims I wrote for Gravity. Those are totally reasonable to reject as a 102. It is known to the public before the time of filing by the applicant. You can effect the force of gravity without having been the one to invent it. Shoot a free throw. It came back down. Claim 1. Launch a rocket into space, carrying an astronaut to go hang out in the ISS for a few months. Claim 2.
Totally without reaching the question of whether it is abstract, we know that it has been practiced. Ergo: since it is abstract (three paragraphs up), and anticipated (previous paragraph), declaring a 102 doesn’t mean admitting that rejecting under 101 was inappropriate.
Perhaps I ran close to 101/112 confusion with my abstract idea argument. Oh well. I’ll only feel bad about it as much as there are people who read this far.
Please don’t be mad, though, Gene. I can’t create as much content in a year as you do in a week. I just needed to boost my SEO somehow, and this one seemed a bit vulnerable.
Oh right, irony: I posted the article for others to read, and assumed that I understood its merit in order to “allow” it as a tweet carrying a link of which I approved. I didn’t read it until 2 days later.
Did you know that I was an examiner for a little while?