USPTO Examiner Rejected 1-Click Claims As "Obvious" 195
theodp writes "Faced with a duly unimpressed USPTO examiner who rejected its new 1-Click patent claims as 'obvious' and 'old and well known,' Amazon has taken the unusual step of requesting an Oral Appeal to plead its case. And in what might be interpreted by some as an old-fashioned stalling tactic, the e-tailer has also canceled and refiled its 1-Click claims in a continuation application. As it touted the novelty of 1-Click to Congress last spring, Amazon kept the examiner's rejection under its hat, insisting that 'still no [1-Click] prior art has surfaced.' The Judiciary Committee hearing this testimony included Rick Boucher (VA) and Howard Berman (CA), both recipients of campaign contributions from a PAC funded by 1-Click inventor Jeff Bezos, other Amazon execs, and their families."
Boucher no slouch (Score:3, Informative)
Re:Standard Patent Prosecution Procedure (Score:5, Informative)
It would be more interesting to find that they were given a divisional; implying validity.
Actually a divisional (aka a restriction requirement) says absolutely nothing about validity. What it says is you have a lot of claims in your application and the Examiner isn't going to be bothered to look at all of them. Split the application into multiple applications (so the Examiner gets more points, and the PTO more money) and then they'll look at the claims.
Yes, pretty much everything gets a 103 (obvious) rejection. Sometimes this only means your Examiner put all your key words into a search engine and cited 5 unrelated pieces of prior art against you (i.e. the lazy Examiner). Sometimes, the 103 is well done. Merely telling me you have a 103 rejection tells me little.
A continuation isn't a stalling tactic. It is a way to get better claims with the same filing date as the original, but after getting a look at the cited prior art. Perfectly normal. In fact, you often use a continuation with a "bird in the hand" strategy. You take the claims the Examiner allows in the parent application (which then issue as a patent), and then continue to argue the unallowed claims in the continuation. There is no stalling. Actually, a continuation is quicker than an appeal.
I am glad to see an Examiner taking Official Notice. They do it rarely and even more rarely do it correctly. There is a correct way to take Official Notice and so few Examiner's follow it.
Also the Oral Hearing in the Appeal is unusual, but something they are allowed by right. What is usual is waiving that right and just not showing up. But if Amazon has DC based attorneys, the PTO is just down the road.
Re:Prior art or not (Score:5, Informative)
Actually it is even broader than that. A patent is considered obvious if not merely a moron, but even someone having ordinary skill in the relevant field, could have been expected to come up with the same solution.
Patents exist so investition in research and development can be reimbused.
Not quite. They exist to encourage invention, by securing the inventors exclusive right to produce his inventions. If the inventor happens to have some sunk costs then he might be better able to recover them by having a patent, but that is incidental.
If you have no expense for research and development, you deserve no patent.
So what if an idea comes by a stroke of pure genius?
Re:Prior art or not (Score:5, Informative)
no they exist (at least under the american system) primerally to discourage trade secrets. You give your invention to the public in exchange for getting a time limited (and unlike copyrights patent time limits havn't exactly spiraled out of control) monopoly on the invention. Whether your idea is the result of years of R&D or a stroke of genius isn't really relavent.
sadly the system has been abused in a number of ways
1: obviousness: many patents give soloutions that would be obvious when presented with the problem. This means that next time someone runs into that problem they either have to pay the patent holder a license fee (if the patent holder will even accept one), take the legal risk of ignoring the patent or try and find a less obvious (and possiblly less efficiant) soloution to the same problem.
2: prior art: again the system has been very poor at recognising prior art leading to people getting and keeping patents for things that are already public.
3: areas patentable: a number of new areas (software, buisness methods) were made patentable by court descisions bypassing the normal procedures of governement. Now other countries are being pressured into making those things patentable as well. The lack of patented prior art (which is all the PTO seems to care about) means theese areas suffer from 1 and 2 far more than other areas.
Re:Computers automate work (Score:3, Informative)
It basically means that just because something uses a computer program doesn't mean it's *not* patentable. It's something you have to think about for a second, but it makes sense. It lets people patent things like ATMs, printers, and electronic parking meters.
Re:Oral appeal? (Score:2, Informative)
Oral [chambersharrap.co.uk]...ETYMOLOGY: 17c: from Latin oralis, from os, oris mouth
Re:There is prior art (Score:2, Informative)
The patent's claims are specifically for storing payment and shipping information so that a one-click transaction can be done. It's a narrow scope, and I don't think anyone has shown prior art for the limited situations it applies to. So IMO Amazon did invent *something*.
What I think needs to be questioned is if that specific, limited scope is significant and non-obvious enough of an invention to deserve a patent.
Re:it should be "braver than I" (Score:3, Informative)
Err, no it shouldn't. Saying "A is braver than B" is perfectly grammatical. "A is braver than B is" is reduntant, and generally frowned upon. Following "than" in the former case should be an indirect pronoun, in this case "me".
Your grammar-nazi status has been hereby revoked. Heil Fowler!
Re:I remember hearing about the 1 click patent (Score:5, Informative)
in logical terms, your argument is valid, but unsound; that is, at least one of the premises is untrue. specifically, you assert that "1-click requires said store of credit card information in said exploitable database", and your (mis-)linked example indicates that "said" database is a vendor's. that is not in any way required for 1-click to work. in common practice in online shopping sites generally, 1-click or no, the credit card number is sent one time to the CC processor, who responds with a unique key that the vendor uses in subsequent transactions. that key, not the CC number, is then stored in the database and used for subsequent transactions. the number is useless to anyone other than the initial vendor, thus eliminating the financial exposure to customers if the vendor's database is cracked.
it's tempting to point out that this practice, which is generally considered best practice in the payments inudstry, simply shifts the burden from the vendor to the processor. this is untrue; instead, it reduces the exposure. the CC processor has this anyway; we're simply reducing the burden on the vendor. if the fact that the processor stores the information bothers you, then your argument is against credit/debit cards in general, not 1-click (and it'd be a reasonable argument to make; the entire system is frighteningly fragile).