Slashdot Log In
USPTO Examiner Rejected 1-Click Claims As "Obvious"
Posted by
kdawson
on Tue May 15, 2007 01:15 AM
from the well-duh dept.
from the well-duh dept.
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."
Related Stories
[+]
Amazon Using Patent Reform to Strengthen 1-Click 71 comments
theodp writes "As some predicted, lawyers for Amazon.com have recently submitted 1-Click prior art solicited by Tim O'Reilly under the auspices of Jeff Bezos' patent reform effort to the USPTO, soliciting a 'favorable action' that would help bulletproof the patent. Last June, an Amazon lobbyist referred to deficiencies with the same prior art as he tried to convince Congress that 1-Click was novel, prompting Rep. Howard Berman to call BS."
[+]
Amazon's Lawyers Jerking USPTO Around? 134 comments
theodp writes "Reacting to an actor's do-it-yourself legal effort that triggered a reexam of Amazon.com's 1-Click patent, attorneys for Amazon have fired back, deluging the USPTO with documents to review, including Wikipedia articles. With the latest batch, Amazon's high-priced law firm even requested that USTPO examiners review an archived page of Norm Quotes (yes, Norm from Cheers) and rule that it does not invalidate CEO Jeff Bezos' 1-Click patent."
[+]
USPTO Increases Scope Of Amazon's 1-Click Patent 98 comments
An anonymous reader writes "While the patent office had rejected earlier attempts by Amazon to get a continuation patent on its infamous "1-click" patent, it appears that an impatient USPTO examiner has approved the continuation, apparently because of the failure of BountyQuest to come up with prior art. This continuation adds claims like contacting the recipient of an order via e-mail or a phone call to obtain additional info."
[+]
Eolas vs. Microsoft Lawsuit Settled and Sealed 45 comments
theodp writes "The Seattle P-I's Todd Bishop reports that Microsoft has settled its 8-year-old web browser plug-in patent dispute with Eolas. The spat begat the click-to-activate Web after Microsoft was slapped with a $500+ million patent infringement judgement. Neither Eolas nor Microsoft will be disclosing terms of the deal, although Eolas told investors to expect a dividend (PDF). Microsoft didn't say whether or how the settlement would affect its approach to the underlying technology in IE or other programs. Just last month, the USPTO issued a non-final rejection of the patent's claims, citing the work of Pei-Yuan Wei as prior art."
[+]
USPTO Reaffirms 1-Click Claims 'Old And Obvious' 80 comments
theodp writes "After USPTO Examiner Mark A. Fadok rejected Amazon CEO Jeff Bezos' 1-Click Patent claims as 'old and obvious,' Amazon canceled and refiled its 1-Click claims in a continuation application as it requested an Oral Appeal, a move that smacked of a good old-fashioned stalling tactic. But the move may have backfired, as Fadok has just completed his review of the continuation app and concluded that all of the refiled 1-Click claims should be rejected, providing explanations of why the Board of Patent Appeals was wrong to reverse his earlier decision after listening to Amazon's lawyers in September. In October, USPTO Examiner Matthew C. Graham rejected most of the 1-Click claims as part of the reexam requested by LOTR actor Peter Calveley, a decision that attorneys for Amazon are currently trying to work around with some creative wordsmithing. Can't see how all of this means 'less work for the overworked Patent and Trademark Office.'"
This discussion has been archived.
No new comments can be posted.
The Fine Print: The following comments are owned by whoever posted them. We are not responsible for them in any way.
Full
Abbreviated
Hidden
Loading... please wait.
Computers automate work (Score:5, Insightful)
Re:Computers automate work (Score:5, Interesting)
Parent
Re:Computers automate work (Score:5, Insightful)
A computer is a general-purpose machine. A computer's purpose is to process an organized collection of instructions to do a specific thing. These instructions are called "software". A computer without software is a doorstop. Patenting a particular collection of instructions (even if they do something really, really interesting) is, in effect, patenting the use of a thing for its intended purpose.
It would be akin to patenting "a method for dialling my phone number" and then going after royalties every time my phone rings. Or "a method for using an automobile to get to work" and suing everyone in rushhour traffic.
Parent
Re:Computers automate work (Score:5, Insightful)
Discrete machine elements are the means to execute an instruction, not the instruction itself.
The gear or linkage is the element that enables execution of the instructions and should be patentable. The speed, position or displacement of the gear is the instruction and should not be patentable. To get a different output for the same input, you must alter the elements to the extent that it can no longer be considered the same device. Unique devices can qualify for a patent.
The transistor is the element that enables execution of instructions and should be patentable. The state of charge on a transistor is the instruction and should not be patentable. To get a different output for the same input, you need only change the state of charge on the transistors* - but the physical state of the machine is identical.
The important distinction is the seperation of the physical device and it's purpose from the conditions it operates under. Two devices that serve the same purpose but are physically unique should be patentable. Two devices that are physically identical but used for different purposes should be patentable.** Altering the operating conditions of the same device to get a different result is obvious and should not be patentable.
=Smidge=
* - Does not count things like a new circuit design, which would produce a unique device and thus be patentable.
** - Providing that new use is not particularly "obvious."
Parent
Re:Computers automate work (Score:5, Insightful)
Article 52
Patentable inventions
(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
(d) presentations of information.
(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.
(4) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body shall not be regarded as inventions which are susceptible of industrial application within the meaning of paragraph 1. This provision shall not apply to products, in particular substances or compositions, for use in any of these methods.
So, "programs for computers" (and algorithms, mind you) are not patentable, period. IF you use a program for computers in a LARGER system, the system as a whole is (maybe) patentable. The point is not whether you solve a "technical problem" with the program; what else could you be doing, turning the computer's fingers?...
Parent
wtf? (Score:5, Insightful)
How can something surface when you're actively trying to drown it?
Re:wtf? (Score:4, Insightful)
Parent
I remember hearing about the 1 click patent (Score:5, Insightful)
However, I think the fact that the cookie support was already in the browser is proof that the claims of the patent were obvious.
Re:I remember hearing about the 1 click patent (Score:5, Insightful)
Just sayin'.
Parent
Re:I remember hearing about the 1 click patent (Score:5, Insightful)
Parent
Re:I remember hearing about the 1 click patent (Score:5, Insightful)
OK, try to follow me here. If it's not a great idea to store credit card information in a potentially [bbc.co.uk]exploitable database [washingtonpost.com] and 1-click requires said store of credit card information in said http://news.com.com/2100-1023-236815.html [com.com]">exploi
This is what is often called logic.
Parent
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).
Parent
No prior art is hand waving (Score:5, Insightful)
As prior art is the usual counter-argument to patents, since it can be clearly proven to someone without expertise in the field, it seems unusual that one has actually been rejected due to being obvious. And since people are so used to hearing about prior art being the significant factor, it may sway a few people.
Re:No prior art is hand waving (Score:5, Insightful)
Parent
Prior art or not (Score:4, Insightful)
Patents exist so investition in research and development can be reimbused. If you have no expense for research and development, you deserve no patent.
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?
Parent
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.
Parent
This is only the start (Score:5, Insightful)
Standard Patent Prosecution Procedure (Score:4, Insightful)
I thought the one-click patent was brought to its knees by the
-A
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.
Parent
There is prior art (Score:5, Interesting)
"Put it on my tab" (Score:5, Insightful)
Oral Appeal? (Score:5, Funny)
I'd like to introduce you to our spokeslawyer, Heidi. She is ready to meet with you for her oral appeal.
Hacking Congress ... again (Score:5, Insightful)
Most hacks require only simple tools: PACs, straight contibutions, that important meeting with the lobbyist that needed to be in the lobby of a Hawian hotel.
Some hacks require more subtle tools: "Where was I gonna site that factory - remind me?", "You know if you ever get tired of congress and want a real job.", "I have absolutly no control over the editors of my newspaper/TV station if they print bad things about you thats tough."
It happens so regularly it doesnt even raise eyebrows anymore. So Bezos will probably lose his patents until congress changes the law so he can get them back.
Wouldnt it be much more efficient and simpler to introduce a "pay per vote" system. Represenitives could auction of votes on e-bay, and, the house seat themselves could be auctioned by the higest bidder. (This is a varation on tax farming which served to Ottoman empire well for 600 years).
The sad thing is that while all this malarky is going on Wolfowitz and Bolten are lecturing the rest of the world about the evils of corruption.
Amazon is a victim of the patent system, not v-v (Score:5, Insightful)
Amazon has never done the wrong thing by pursuing the "one-click" patent. Patents, especially software patents, are interpreted very narrowly. What sounds to a layman as a "patent on online sales" (for example) turns out to be much more specific in print, and more importantly has been interpreted very narrowly by Federal courts. You can't patent the process of online sales, but you can patent a detail of it. When a court sets out to determine the validity of such a detail, it doesn't examine it in the context of "is it a logical implementation of a larger, obvious system." The court sets out to determine whether it is a detail that someone else has used. Basically, as the law has been interpreted for the past two decades, whether something has already been patented is the greatest determining factor on whether it can be patented. That isn't how a layperson reads the law, and in fact it is probably contrary to the intent of the law. But that's how it is.
The US Supreme Court has indicated an interest in changing the interpretation of software and process patents so that courts must interpret patents and patent applications in a way that sounds more in the spirit of the law. I don't think most conventional companies oppose this, because the expense and uncertainty involved in patent applications, cross-licensing, and God forbid, litigation, is considerable. Patent holding firms are probably distressed about it, but I think most people perceive patent holding companies as an aberration.
The fact that Amazon has its "one-click" patent means that Amazon was doing the right thing as far as the system is concerned. It also means that the system is counterintuitive and, a majority of people probably think, out of whack with the original intent of US patent law.