DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
The claims filed 6/11/2024 are examined herein.
Claims 1-20 are pending and original.
Claim 1 is independent.
Claim Objections
Claim 20 is objected to because of the following informalities: The claim recites “presenting the method of claim 1 one or more people” instead of “presenting the method of claim 1 to one or more people”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 19 recites “The patent or patent application of claim 1.” The claim fails to include all the limitations of the claim upon which it depends. The claim only recites the patent or patent application of the base claim and omits other limitations of the claim, e.g. the “identifying” step.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 17-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter.
Claims 1-16 and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 17-19 do not fall within a statutory category, as a patent or patent application is not a process, machine, manufacture, or composition of matter (Step 1: NO). Thus, claims 17-19 are found ineligible under Step 1.
Claims 1-16 and 20 are directed to methods (processes) and thus fall within the statutory categories of invention. (Step 1: YES). The analysis proceeds to Step 2.
Step 2A - Prong 1
Claim 1 recites a method to demonstrate the subject-matter eligibility of a patent claim, comprising identifying that a judicial exception to statutory subject matter violates the Supremacy Clause of the United States Constitution, wherein the patent claim is a claim of a patent or a patent application. The claim limitations recite a legal evaluation that can practically be performed in the human mind. Thus, the claim recites an abstract idea falling within the mental processes grouping.
Claim 2 recites the method of claim 1, wherein the statutory subject matter is set forth in Title 35, Section 101 of the United States Code (35 U.S.C. § 101). The claim limitations further describe the abstract idea identified with regards to claim 1. Thus, the claim recites an abstract idea falling within the mental processes grouping.
Claim 3 recites the method of claim 2, wherein the judicial exception is selected from a rationale set forth in Alice Corp. Party v. CLS Bank Int’l, 573 U.S. 208 (2014), Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013), Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), Bilski v. Kappos, 561 U.S. 593 (2010), Parker v. Flook, 437 U.S. 584 (1978), Gottschalk v. Benson, 409 U.S. 63 (1972), or Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948). The claim limitations further describe the abstract idea identified with regards to claim 2. Thus, the claim recites an abstract idea falling within the mental processes grouping.
Claim 4 recites a method to obtain a United States patent, comprising paying an issue fee in a United States patent application that has a prosecution history before the United States Patent & Trademark Office, wherein: a portion of the prosecution history is a product of a method according to claim 3; and the United States patent grants from the United States patent application following payment of the issue fee. The claim limitations describe the abstract idea identified with regards to claim 3. Thus, the claim recites an abstract idea falling within the mental processes grouping. The claim limitations also recite paying an issue fee, which is both a commercial/legal interaction and fundamental economic practice. Thus, the claim also recites an abstract idea falling within the abstract idea grouping of “certain methods of organizing human activity”.
Claim 5 recites a method to maximize the enforcement value of a United States patent that has a serial number, comprising labeling one or both of a product and marketing materials with the serial number to indicate that either the product or a subject of the marketing materials is protected by the United States patent, wherein: the United States patent has a prosecution history before the United States Patent & Trademark Office; and a portion of the prosecution history is a product of a method according to claim 3. The claim limitations describe the abstract idea identified with regards to claim 3. Thus, the claim recites an abstract idea falling within the mental processes grouping. The claim limitations also recite limitations drawn to maximizing the enforcement value of a patent by labeling one or both of a product and marketing materials to indicate patent protection, which is a commercial or legal interaction. Thus, the claim also recites an abstract idea falling within the abstract idea grouping of “certain methods of organizing human activity”.
Claim 6 recites a method to maintain a United States patent in force, comprising paying a maintenance fee to maintain the United States patent in force, wherein: the United States patent has a prosecution history before the United States Patent & Trademark Office; and a portion of the prosecution history is a product of a method according to claim 3. The claim limitations describe the abstract idea identified with regards to claim 3. Thus, the claim recites an abstract idea falling within the mental processes grouping. The claim limitations also recite paying a maintenance fee, which is both a commercial/legal interaction and fundamental economic practice. Thus, the claim also recites an abstract idea falling within the abstract idea grouping of “certain methods of organizing human activity”.
Claim 7 recites a method to enforce a United States patent, comprising asserting an infringement claim of infringement of the United States patent in either a United States federal court established under Article III of the Constitution of the United States or the United States International Trade Commission, wherein: the United States patent has a prosecution history before the United States Patent & Trademark Office; and a portion of the prosecution history is a product of a method according to claim 3. The claim limitations describe the abstract idea identified with regards to claim 3. Thus, the claim recites an abstract idea falling within the mental processes grouping. The claim limitations also recite asserting an infringement claim, which is a commercial/legal interaction. Thus, the claim also recites an abstract idea falling within the abstract idea grouping of “certain methods of organizing human activity”.
Claim 8 recites the method of claim 4, wherein: the portion of the prosecution history comprises immediate prosecution history of an immediate United States patent application from which the United States patent granted; and the patent or patent application is the immediate United States patent application. The claim limitations describe the abstract ideas identified with regards to claim 4. Thus, the claim recites abstract ideas falling within both groupings of mental processes and “certain methods of organizing human activity”.
Claim 9 recites the method of claim 4 wherein: the portion of the prosecution history comprises parent prosecution history of one or more parent United States patent applications to which the United States patent claims priority; and the patent or patent application is a parent United States patent application of the United States patent and the United States patent application. The claim limitations describe the abstract ideas identified with regards to claim 4. Thus, the claim recites abstract ideas falling within both groupings of mental processes and “certain methods of organizing human activity”.
Claim 10 recites the method of claim 3, wherein the identifying is performed during a legal proceeding that contests the patentability of the claim, and the legal proceeding has a record. The claim limitations describe the abstract ides identified with regards to claim 3. Thus, the claim recites an abstract idea falling within the mental processes grouping. The claim limitations also recite performing the identification during a legal proceeding, which is a commercial/legal interaction. Thus, the claim also recites an abstract idea falling within the abstract idea grouping of “certain methods of organizing human activity”.
Claim 11 recites the method of claim 10, wherein: the legal proceeding is a proceeding before the Patent Trial and Appeal Board of the United States Patent & Trademark Office; and the legal proceeding is a Post Grant Review. The claim limitations further describe the abstract ideas identified with regards to claim 10. Thus, the claim recites abstract ideas falling within both groupings of mental processes and “certain methods of organizing human activity”.
Claim 12 recites the method of claim 10, wherein the legal proceeding is a proceeding before either a court established under Article III of the Constitution of the United States or the United States International Trade Commission. The claim limitations further describe the abstract ideas identified with regards to claim 10. Thus, the claim recites abstract ideas falling within both groupings of mental processes and “certain methods of organizing human activity”.
Claim 13 recites the method of claim 10, comprising obtaining a damages award for infringement of the claim. The claim limitations further describe the abstract ideas identified with regards to claim 10. Thus, the claim recites abstract ideas falling within both groupings of mental processes and “certain methods of organizing human activity”.
Claim 14 recites the method of claim 10, comprising obtaining an injunction that enjoins a person from infringing the claim, wherein the person is a natural person or a legal entity. The claim limitations further describe the abstract ideas identified with regards to claim 10. Thus, the claim recites abstract ideas falling within both groupings of mental processes and “certain methods of organizing human activity”.
Claim 15 recites the method of claim 10, comprising executing an agreement that settles the legal proceeding. The claim limitations further describe the abstract ideas identified with regards to claim 10. Thus, the claim recites abstract ideas falling within both groupings of mental processes and “certain methods of organizing human activity”.
Claim 16 recites the method of claim 1, wherein one or more attorneys perform the method. The claim limitations further describe the abstract ideas identified with regards to claim 1. Thus, the claim recites an abstract idea falling within the mental processes grouping. The claim limitations further describe an attorney performing the method, which is a commercial/legal interaction. Thus, the claim also recites an abstract idea falling within the abstract idea grouping of “certain methods of organizing human activity”.
Claim 20 recites an education method to educate one or more people on patent strategy, comprising presenting the method of claim 1 one or more people. The claim limitations further describe the abstract ideas identified with regards to claim 1. Thus, the claim recites an abstract idea falling within the mental processes grouping. The claim limitations also recite presenting the method for education, which is managing personal behavior or relationships or interactions between people (teaching). Thus, the claims also recite an abstract idea falling within the grouping of “certain methods of organizing human activity”.
The limitations of claims 1-16 and 20, under their broadest reasonable interpretation, cover performance of the limitation as “Mental Processes” and/or “Certain Methods of Organizing Human Activity” as set forth above. The claims with limitations identified as falling within both groupings of mental processes and “certain methods of organizing human activity” are considered together as a single abstract idea for further analysis. Accordingly, the claims recite an abstract idea. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
Step 2A - Prong 2
This judicial exception is not integrated into a practical application. The claims do not recite any additional elements which could provide integration into a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. The claims do not recite any additional elements which could provide significantly more. (Step 2B: NO. The claims do not provide significantly more)
Thus, claims 1-16 and 20 are found ineligible under Step 2.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 16, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Killian (“Corrected Petition for Writ of Certiorari”, 4/24/2023, attached) in view of Aruknachalam (“Petition for Writ of Certiorari”, 6/5/2020, attached).
Regarding claim 1, Killian teaches a method to demonstrate the subject-matter eligibility of a patent claim, comprising identifying that a judicial exception to statutory subject matter violates the United States Constitution (see pp. 32-33), wherein the patent claim is a claim of a patent or a patent application (see pp. 3-6).
Killian does not explicitly teach, but Arunachalam teaches identifying a violation to the Supremacy Clause of the constitution (see pg. 9: “Alice and District Circuit Court rulings… violate Supremacy and Contract Clauses of the Constitution”; pp. 21-22).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Killian to include the argument of Arunachalam.
One of ordinary skill in the art would have been motivated to make the modification to supplement the argument that the basis for ineligibility is unconstitutional (see Arunachalam, pg. 9).
Regarding claim 2, Killian teaches wherein the statutory subject matter is set forth in Title 35, Section 101 of the United States Code (35 U.S.C. § 101) (see pp. 32-33).
Regarding claim 3, Killian teaches wherein the judicial exception is selected from a rationale set forth in Alice Corp. Party v. CLS Bank Int’l, 573 U.S. 208 (2014), Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013), Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), Bilski v. Kappos, 561 U.S. 593 (2010), Parker v. Flook, 437 U.S. 584 (1978), Gottschalk v. Benson, 409 U.S. 63 (1972), or Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) (see pg. 38).
Regarding claim 16, Killian teaches wherein one or more attorneys perform the method (see pg. 1).
Regarding claim 19, Killian teaches the subject patent or patent application (see pp. 3-6).
Regarding 20, Killian teaches educating one or more people on patent strategy, comprising presenting the method to one or more people (see Killian, pp. 3-6, 32-33).
Claims 4-15 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Killian (“Corrected Petition for Writ of Certiorari”, 4/24/2023, attached) in view of Aruknachalam (“Petition for Writ of Certiorari”, 6/5/2020, attached), further in view of Official Notice.
Regarding claim 4, Killian and Aruknachalam do not explicitly teach, but Official Notice is taken that it was old and well known before the effective filing date of the claimed invention to obtain a United States patent, comprising paying an issue fee in a United States patent application that has a prosecution history before the United States Patent & Trademark Office and the United States patent grants from the United States patent application following payment of the issue fee, wherein a portion of the prosecution history includes an argument for eligibility.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claim 3 by incorporating it into the known issue fee payment and grant process.
One of ordinary skill in the art would have been motivated to make the modification because obtaining a patent grants exclusive legal rights.
Regarding claim 5, Killian and Aruknachalam do not explicitly teach, but Official Notice is taken that it was old and well known before the effective filing date of the claimed invention to maximize the enforcement value of a United States patent that has a serial number, comprising labeling one or both of a product and marketing materials with the serial number to indicate that either the product or a subject of the marketing materials is protected by the United States patent, wherein: the United States patent has a prosecution history before the United States Patent & Trademark Office.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claim 3 by incorporating it into the known patent labeling process.
One of ordinary skill in the art would have been motivated to make the modification to provide notice to the public and potential infringers that the invention is patented.
Regarding claim 6, Killian and Aruknachalam do not explicitly teach, but Official Notice is taken that it was old and well known before the effective filing date of the claimed invention to maintain a United States patent in force, comprising paying a maintenance fee to maintain the United States patent in force, wherein: the United States patent has a prosecution history before the United States Patent & Trademark Office;
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claim 3 by incorporating it into the known patent maintenance process.
One of ordinary skill in the art would have been motivated to make the modification to continue to preserve the patent.
Regarding claim 7, Killian and Aruknachalam do not explicitly teach, but Official Notice is taken that it was old and well known before the effective filing date of the claimed invention to enforce a United States patent, comprising asserting an infringement claim of infringement of the United States patent in either a United States federal court established under Article III of the Constitution of the United States or the United States International Trade Commission, wherein: the United States patent has a prosecution history before the United States Patent & Trademark Office.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claim 3 by incorporating it into the known infringement enforcement process.
One of ordinary skill in the art would have been motivated to make the modification to defend intellectual property rights granted by the patent.
Regarding claim 8, Killian and Aruknachalam do not explicitly teach, but Official Notice is taken that it was old and well known before the effective filing date of the claimed invention that a portion of prosecution history may comprise immediate prosecution history of an immediate United States patent application from which the United States patent granted; and the patent or patent application is the immediate United States patent application.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claim 4 by incorporating it into the known patent prosecution process.
One of ordinary skill in the art would have been motivated to make the modification because obtaining a patent grants exclusive legal rights.
Regarding claim 9, Killian and Aruknachalam do not explicitly teach, but Official Notice is taken that it was old and well known before the effective filing date of the claimed invention that a portion of a prosecution history may comprise parent prosecution history of one or more parent United States patent applications to which the United States patent claims priority; and the patent or patent application is a parent United States patent application of the United States patent and the United States patent application.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claim 4 by incorporating it into the known patent prosecution process.
One of ordinary skill in the art would have been motivated to make the modification because obtaining a patent grants exclusive legal rights.
Regarding claims 10-12, Killian and Aruknachalam do not explicitly teach, but Official Notice is taken that it was old and well known before the effective filing date of the claimed invention to present an argument during a legal proceeding that contests the patentability of the claim, and the legal proceeding has a record, (claim 11) wherein: the legal proceeding is a proceeding before the Patent Trial and Appeal Board of the United States Patent & Trademark Office; and the legal proceeding is a Post Grant Review; and (claim 12) wherein the legal proceeding is a proceeding before either a court established under Article III of the Constitution of the United States or the United States International Trade Commission.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claim 3 by incorporating it into the known legal proceeding processes.
One of ordinary skill in the art would have been motivated to make the modification to defend the patentability of the claim.
Regarding claims 13-15, Killian and Aruknachalam do not explicitly teach, but Official Notice is taken that it was old and well known before the effective filing date of the claimed invention to obtain a damages award for infringement of a claim; (claim 14) to obtain an injunction that enjoins a person from infringing a claim, wherein the person is a natural person or a legal entity; and (claim 15) to execute an agreement that settles a legal proceeding.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claim 3 by incorporating it into the known legal processes.
One of ordinary skill in the art would have been motivated to make the modification to exercise legal rights associated with the patent.
Regarding 17, Killian and Aruknachalam do not explicitly teach, but Official Notice is taken that it was old and well known before the effective filing date of the claimed invention to obtain a United States patent comprising a prosecution history.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claim 1 by incorporating it into the known patent process, thereby rendering a patent with a prosecution history that is a product of a method according to claim 1.
One of ordinary skill in the art would have been motivated to make the modification because obtaining a patent grants exclusive legal rights.
Regarding claim 18, Killian and Aruknachalam do not explicitly teach, but Official Notice is taken that it was old and well known before the effective filing date of the claimed invention to obtain a patent comprising a litigation history.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claim 1 by incorporating it into the known patent litigation process, thereby rendering a patent with a litigation history that is a product of a method according to claim 1.
One of ordinary skill in the art would have been motivated to make the modification to exercise legal rights associated with the patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Killian v. Vidal, No. 22-1220, “Amicus Brief of US Inventor Inc. and Eagle Forum Education & Legal Defense Fund in Support of Petitioner”, 7/17/2023.
Killian v. Vidal, No. 22-1220, “Supplemental Brief for Petitioner”, 9/13/2023.
Killian v. Vidal, No. 22-1220, “Request for Rehearing”, Supreme Court of the United States, 10/21/2023.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC T WONG whose telephone number is (571)270-3405. The examiner can normally be reached 9am-5pm M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIC T WONG/Primary Examiner, Art Unit 3693
ERIC WONG
Primary Examiner
Art Unit 3693