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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 With the latest batch, Amazon's high-priced law firm even requested that USTPO examiners review an archived page of Norm Quotes (yes, Norm from Cheers) and rule that it does not invalidate CEO Jeff Bezos' 1-Click patent."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."
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USPTO Examiner Rejected 1-Click Claims As "Obvious"
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Computers automate work (Score:5, Insightful)
Re:Computers automate work (Score:5, Interesting)
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.
Re:Computers automate work (Score:4, Interesting)
Level of abstraction? Okay, explain how you're a walrus.
Software patents make as much sense as mechanical patents because both cover how to change something in one state to something that might be more useful in a different state. The usefulness of the patent is up for debate as it would be in any new industry, as is the innovation. The debatable questions are whether the innovation that goes into creating something that is novel in software deserves a patent, and whether allowing patents in software is good for society. Once those questions are sufficiently answered there will always be the secondary questions of a particular patent's worthiness, but it will be far easier to answer.
Re:Computers automate work (Score:4, Insightful)
Your argument fails to take into account the purpose of patents: to promote the progress of science and useful arts. Almost anything patentable in the physical space is doing something in a new way. Seeing the device is not enough to understand how it works, and the patent is designed to force the "how" to become public.
In ssoftware, with the exception of mathematical algorithms (which are excluded from patents), the "how" part is always obvious to someone skilled in the art. Tell a skilled programmer what something does, and they will be able to write a piece of software that does the same thing. There is nothing for the human race as a species to gain from forcing that knowledge to be public. Whether the "how" is "implements the foo algorithm" or "supports purchasing without a shopping card", as soon as the question is asked, the solution is always obvious.
Thus, the question is whether it should be reasonable to allow patents on something based solely on who did something first without regard to whether any first-year college grad would have done the same thing given the same set of problems. I would contend that the answer is no, that software should not be patentable because the entire process for creating software is obvious except for the very specific details of the source code.
That said, if you want software patents, I would be willing to concede their usefulness if and only if they provide substantial "how" information that could not have been guessed---in other words, if applying for a patent meant making the source code for the patented portion open source and outside the scope of copyright. Copyright or patents: choose one. Allowing software to be both copyrighted and patented is wrong. There is no reason why software should have special protection above and beyond all other technical fields.
As for one-click, no one else implemented it before because it was a fundamentally moronic idea. The last thing I want is to be able to spend money just by clicking on a link. I want some reasonable protection against accidental spending, and I want verification against somebody sitting down at my machine and buying something without me knowing it. No one did it before because the usefulness of the idea was not obvious, not because the idea or design itself wasn't obvious. There is a difference.
Just my $0.02.
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."
Re:Computers automate work (Score:4, Interesting)
No, all software patents should be shot down. Patents should only be given to inventions which operate in the physical world.
Software can operate in the physical world. That's why the USPTO started allowing software patents in 1981. Anyways, I like the europeean take on software patents, which says that "any invention which makes a non-obvious "technical contribution" or solves a "technical problem" in a non-obvious way is patentable even if a computer program is used in the invention." http://en.wikipedia.org/wiki/Software_patent#In_Eu rope [wikipedia.org]
I just don't see anyone can be against that.
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?...
Re:Computers automate work (Score:4, Insightful)
Technically, they didn't. Software is not, nor has it ever been, patentable as software. Software patents all come in under the ruling that allows business methods to be patented. That's why they all begin "A method for [...]" and go to such lingual gymnastics to avoid using the word "algorithm" ever.
It might seem that this point is splitting a hair, but this happens to be a very important hair.
wtf? (Score:5, Insightful)
How can something surface when you're actively trying to drown it?
Re:wtf? (Score:4, Insightful)
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'.
Re:I remember hearing about the 1 click patent (Score:5, Insightful)
Re:I remember hearing about the 1 click patent (Score:4, Insightful)
One click is now turned off for me.
I wonder if that's part of the patent, "AND you can turn it off. Oooooh."
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.
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).
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)
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?
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.
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.
Boucher no slouch (Score:3, Informative)
Same trick? (Score:2, Interesting)
There is prior art (Score:5, Interesting)
"Put it on my tab" (Score:5, Insightful)
What is it they're fighting to protect? (Score:1)
Most folks like to confirm a purchase rather than have one click buy something; it protects against simple mistakes and allows them a chance to back out if the terms aren't what they were expecting.
It's a simple thing to work around; just add an "are you sure?" prompt and you've bypassed this patent. Given the obvious nature of the patent and the limited profit potential - why put so much time and money into defending it?
I'm sure Mr. Bezos isn't a stupid person. But sometimes I've got to wonder...
The rejection will be overturned. (Score:2)
Here is your prior art (Score:2)
If that isn't so close to one click shopping it would invalidate the patent, then I don't know what is...
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.
Re:Amazon is a victim of the patent system, not v- (Score:4, Insightful)
Just because something is legal and possible does NOT make it 'right'. If it was found that it was legal to kill people by some method, does that make it right for everyone to kill everyone they can by that method? Too extreme? How about a corporation that takes advantage of the tax system to pay as almost no taxes, so that everyone else has to pay their share? How about police that run reds lights in their cars because it's legal for them to, even when they don't have the need? How about a teacher that hands out religious pamphlets right outside the school grounds? How about someone standing outside a playground and screaming at the children?
I bet I just hit on the sensibilities of most of the people that read this. There's plenty of examples of things that are totally legal, but not 'right' in any way.
Amazon may be within their rights to attempt to patent this, but that does not mean they are 'doing the right thing' in any way shape or form. Amazon should be considering their customers in this. If it angers your customers, it's probably not a good idea. Since any global online retailer's goal is to have the whole world as customers, they should be thinking about everyone.
So I guess these must be Democrats... (Score:2)
We're using the mainstream media method now of ignoring party affiliation when casting Democrats in a bad light, eh?
How about refunding license payments if this falls (Score:3, Interesting)
bias showing (Score:1)
Hmmm... negative spin + democrat == censor affiliation
Rick Boucher was interview on Slashdot (Score:2)
The article summary is misleading. Rick Boucher has sponsored both DMCA reform [slashdot.org] and Net neutrality [slashdot.org] legislation. (The net neutrality legislation, BTW, comes in spite of the fact one of his #3 largest contributer ($14K) is AT&T). Hell, we even interviewed him on slashdot [slashdot.org]! Doesn't anyone have a memory? He's one of the "better guys".
And for the record, Amazon isn't wholly evil either. They're heavy users of OSS and favor policies like net neutrality. Maybe, just maybe, they sent him money for that reason? (For the record, the amount was a whopping $2.5K out of $933K in 2006.)
Isn't the fact that Boucher gave us net neutrality, the DMCRA, and was interviewed on slashdot more relevant than a piddly campaign contribution from Amazon?
Re:Oral appeal? (Score:2, Informative)
Oral [chambersharrap.co.uk]...ETYMOLOGY: 17c: from Latin oralis, from os, oris mouth
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!