Presented at AIPLA
Fall 2002
By
Wynn W.
Coggins
The United States Patent and Trademark Office
I.
EXECUTIVE SUMMARY
Recent growth in business
technologies, particularly in areas related to electronic commerce, has been
substantial. Computers and the Internet have created an information age that
is revolutionizing society, and although the economy has experienced recent
highs and lows, patent protection is still being sought for areas related
to e-commerce and the Internet. Thus, the areas of the United States Patent
and Trademark Office (USPTO) that examine patent applications related to business
method inventions continue to attract public attention. Industry and patent
practitioners have voiced concerns about the availability of prior art and
the quality of the searches being performed in these emerging technology areas.
The one area in particular
that receives the bulk of the public attention related to business method-type
applications is the workgroup responsible for examining patent applications
in automated business data processing technologies, U.S. Class 705. The majority
of business method related applications are filed in this area since the methods
and apparatuses claimed in these applications are related to financial and
business data processing. However, not all business method claims are classified
in Class 705. For example, methods of teaching are classified in Class 434,
Education and Demonstration. Methods of playing games are classified in Class
273, Amusement Devices, Games. Methods of improving crop yields are classified
in Class 47, Plant Husbandry. These are only a few examples. Other process
and apparatus claims which may be labeled a “business method” are classified
and examined according to their technology.
There has been some
confusion in the patent community over what constitutes a business method
claim. “Business method” is a generic term that has been used by many to describe
various types of process claims. The Federal Circuit has not yet defined what
it is that specifically characterizes a business method claim and separates
it from other process claims. The Court has, however, stated that claims drawn
to a method of doing business should not be categorized as a “business method”
claim, instead they should be treated like any other process claim. State
Street Bank & Trust Co. v. Signature Financial Group, Inc., 47 USPQ2d
1596, 1604 (Fed. Cir. 1998).
On March
29, 2000, the USPTO announced an Action Plan for business method patents to
improve the quality of the examination process in technologies related to
electronic commerce and business methods. These initiatives have provided
a forum through which mutual concerns, problems and possible solutions are
being discussed, and USPTO operational efforts in this technology area are
being shared. Feedback on prior art resources is also being gathered and input
on expanding non-patent literature (NPL) information collections and databases
is being solicited. There has been active discussion on these initiatives
since their inception, and they will not be the focus of this paper.
Instead, this paper defines what constitutes prior art in today’s information
age. The evolution of prior art will be examined from its early foundation
in published patents to its current non-patent literature and electronic formats.
The challenge of identifying prior art in an emerging technology area such
as business methods will also be discussed.
II. THE EVOLUTION OF PRIOR ART
Both U.S.
and foreign patents have, in the past, been relied upon as the primary form
of prior art during the examination process. However, in business methods, examiners
must now rely heavily on non-patent literature (NPL), especially those in electronically
searchable databases. To ensure that the appropriate electronically searchable
databases were being utilized by the examiners in Class 705, a Federal Register
notice was published in June, 2001 listing the current core NPL databases searched
by the business method examiners and asking for public comment. This was and
remains an opportunity for the public to inform the USPTO of searchable databases
currently not being used and relative to the technology of Class 705.
A.
NPL COMMERCIAL DATABASES
A new examiner
is taught how to search the U.S. patent databases (known as EAST and WEST).
Additionally, business method examiners are given training on searching commercial
databases to locate relevant NPL documents such as professional journals,
magazines, and conference proceedings. The business methods examiners have
access to over 900 Commercial Databases of NPL.
Examiners
can also request a commercial database search by the Electronic Information
Center (EIC) which is a branch of the USPTO’s Scientific and Technological
Center (STIC). The EIC staff includes professional searchers who perform the
searches for these examiners
NPL encompasses
a wide variety of diverse published materials, such as textbooks, newspaper
articles, magazine articles, sales brochures, professional journals, and conference
proceedings. While a patent examiner can find prior art patents in the U.S.
Patent database for many of the technologies examined at the USPTO, this database
may be less useful for rapidly emerging technologies such as business methods.
Thus, NPL searching is critical to the examination process in Class 705.
B.
ACTION PLAN SEARCHING INITIATIVES
The March
2000 Director’s Action Plan included initiatives on mandatory searching for
business methods. Examiners in Class 705 now perform a mandatory search for
all applications in Class 705 which includes a classified U.S. patent document
search, a text search of U.S. patent documents, foreign patent documents,
and a search of relevant NPL. The NPL search requires that search areas be
correlated to the U.S. classification system for Class 705. In addition to
these mandatory databases, the examiner also searches all appropriate databases
from among the 900 available databases (e.g., Software Patent Institute [SPI],
IEEE/IEE Electronic Library [IEL Online]).
III. THE CHALLENGE OF PRIOR ART
It can be extremely
difficult to identify business methods that may have been common practice
or common knowledge in an industry, but have not been documented properly,
nor dated, nor disclosed in a form that is easily accessible by patent examiners.
However, through communications and partnerships with industry, we are seeing
improvements in this area.
A.
37 CFR 1.105
37 CFR 1.105 gives the examiner the authority to require certain information
from the applicant. 37 CFR 1.105(a)(1) states in part that “the examiner or
other Office employee may require the submission…of such information as may
be reasonably necessary to properly examine or treat the matter” An example
of the type of information that may be required under the rule is the existence
of any relevant commercial database known to any of the inventors that could
be searched for a particular aspect of the invention. Invoking 37 CFR 1.105
can be helpful to examiners in understanding the invention and creating search
strategies.
B.
THIRD PARTY SUBMISSION 37 CFR 1.99
37 CFR 1.99
permits a member of the public to submit patents or publications relevant
to a pending published application. These submissions under 37 CFR 1.99 may
be entered in the application file if the requirements of the rule are complied
with. The submission must be filed within two months of the publication date,
or prior to the mailing of a notice of allowance whichever is earlier.
IV.
WHAT CONSTITUTES PRIOR ART?
A.
PICTURES AND DRAWINGS
Pictures and drawings
can be used as prior art to the extent they show sufficient structural claim
element detail. See MPEP 2125.
B.
U.S. AND FOREIGN PATENTS
Patents are relevant
prior art for: the specification, non-preferred embodiments, disclosed examples,
subject matter incorporated by reference, and anything that would have been
reasonably suggested to one having ordinary skill in the art. See MPEP 2127.
C.
U.S. PUBLISHED PATENT APPLICATIONS
For applications filed
on or after November 29, 2000 or filed prior to November 29, 2000 and voluntarily
published, U.S. application publications are also available as prior art under
35 U.S.C. 102(e) as of their filing dates. See MPEP 706.02(a) and 2136.
D.
PRINTED PUBLICATIONS
A reference is a printed
publication if it is accessible to the public. A reference is proven to be
a “printed publication” “upon a satisfactory showing that such document has
been disseminated or otherwise made available to the extent that persons interested
and ordinarily skilled in the subject matter or art, exercising reasonable
diligence, can locate it.” In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981).
Orally presented papers can constitute a “printed publication” if written
copies of the paper(s) are made available without restriction to all interested
persons. MIT v. AB Fortia, 774 F.2d 1104, 1109, 227 USPQ 428, 432 (Fed. Cir.
1985).
Internal documents
intended to be confidential are not “printed publications” and are unavailable
for use as prior art. This is regardless of how many copies are distributed.
Additionally, note that “[w]hile distribution to government agencies and personnel
alone may not constitute publication…distribution to commercial companies
without restriction on use clearly does.” Garrett v. United States., 422 F.2d
874, 878, 164 USPQ 521, 524 (Ct. Cl. 1970).
And finally, publication
disseminated by mail is prior art on the date it is received by at least one
member of the public. In re Schlittler, 234 F.2d 882, 110 USPQ 304 (CCPA 1956).
E.
DOCUMENTATION AND/OR ADMISSIONS BY APPLICANT
Applicant’s
own work, available to the public more than one year prior to the filing date,
is prior art. Applicant’s disclosure of his or her work within the year before
the application filing date of the invention cannot be used as prior art to
reject patent claims. Additionally, submissions to other government agencies
that are made public can be used as prior art e.g., U.S. Securities and Exchange
Commission’s EDGAR database http://www.sec.gov/edgar.shtml
F.
PUBLIC USE OR ON SALE BAR (35 U.S.C. 102(b))
An invention is in
“public use” if that invention is publicly used without restriction or obligation
of secrecy. A single sale or offer to sell the invention may constitute a
bar to patentability. See MPEP 706.02(c) and 2133.03(b).
G.
ELECTRONIC PUBLICATIONS
An electronic publication,
like any publication, may be relied upon for all that it would have suggested
to one having ordinary skill in the art. See MPEP 2121.01, 2123 and 2128.01.
One should note that for a document to be considered a published document,
that document need not necessarily be a printed document. “Given the state
of technology in document duplication, data storage and data systems retrieval,
the ‘probability of dissemination’ of an item very often has little to do
with whether or not it is ‘printed’ in the sense of that word when it was
introduced into the patent statutes in 1836.” In re Wyer, 655 F.2d 221, 226,
210 USPQ 790, 794 (CCPA 1981).
An electronic publication,
including an on-line database or Internet publication, is considered to be
a “printed publication” within the meaning of 35 U.S.C. § 102(a) and
(b) provided the publication was accessible to persons concerned with the
art to which the document relates. Thus, “whether information is printed,
handwritten, or on microfilm or magnetic disk or tape, etc., the individual
who wishes to characterize the information as a printed publication…should
produce sufficient evidence of its dissemination or that it has been otherwise
available and accessible to persons concerned with the art to which the document
relates…” Wyer, 655 F.2d at 227, 210 USPQ at 795, Amazon.com v. Barnesandnoble.com,
73 F. Supp. 2d 1228, 53 USPQ 2d 1115, 1119 (W.D. Wash. 1999)
In situations where
the electronic version and the published version of the same or corresponding
document differ appreciably, each version may need to be cited and relied
upon as independent references based on what they each disclose. MPEP 2128.
Note:
Prior art disclosures on the Internet or in an on-line database are
considered to be publicly available as of the date the item was publicly posted.
This is provided that the item is dated and not temporal, and can be indexed
for subsequent retrieval. An example of a temporal item is a web broadcast
that cannot be saved, retrieved or printed, e.g., a live simulcast feed that
is not archived, and a “streaming” audio or video that “flashes” across the
screen.
1.
THE RULES ARE THE SAME FOR ELECTRONIC OR PRINTED PRIOR ART
Regardless
of whether the prior art is in an electronic or printed form, the rules governing
the use of the prior art are the same. There must be a satisfactory showing
that the document(s) have been disseminated or otherwise made available to
persons with interest and ordinary skill in the art.
Examples:
A document distributed internally within an organization, which was intended
to remain confidential, does not qualify as a “printed publication” just as
a confidential internal website available only to specific users may not qualify
as prior art. However, documents downloaded from an online database or website
that was only available for a limited time may be considered prior art if
an adequate showing is provided that the database or website was properly
dated and publicly accessible at the time of document retrieval.
Note:
The office policy requiring recordation of the field of search and
search results weighs in favor of finding that Internet and on-line database
references cited by the examiner are “accessible to persons concerned with
the art to which the document relates and thus most likely to avail themselves
of its contents.” In re Wyer, 655 F.2d at 221, 210 USPQ at 790. Office copies
of an electronic document must be retained if the same document may not be
available for retrieval in the future. This is especially important for sources
such as the Internet and on-line databases. See MPEP 2128.
H.
WEBSITES AS PRIOR ART
Websites
can be used as references if posting dates can be found, and those posting
dates predate the invention.
I.
SOFTWARE PRODUCTS AS PRIOR ART
Software
products can be relied upon as prior art as of the date they were first installed
or released. In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994).
Additionally, database printouts of abstracts which were not themselves prior
art publications were properly relied upon as providing evidence that the
software products referenced therein were “first installed” or “released”
more than one year prior to applicant’s filing date.
V.
RESOURCES BUSINESS METHODS EXAMINERS USE TO ESTABLISH WEBSITE DATES
Examiners
utilize commercial databases and the Wayback Machine to help establish website
posting dates in order to qualify the website as prior art.
A.
COMMERCIAL DATABASES
Commercial Databases
are often used by Examiners to discover dates for websites. Articles can be
used to provide the date of the website, however, only information in the
website that can be traced back to the date provided by the article can be
relied upon.
B.
WAYBACK MACHINE
The Wayback Machine
finds archived web pages back to 1996 (each archived page is dated), and it
covers many, but not all, web pages.
Find archived pages for: http://attrasoft.com
Electronic documents
that are not themselves dated and have no posting date, but are/were available
as links on a website that is archived on the Wayback Machine, are dated as
of the archived date of the website.
1. WAYBACK MACHINE
- CAUTION
Clicking on links
within an archived web page does not always take you to another archive page.
It may link you to a current web page.
If “web.archives.org”
and the archive date is part of the URL, you are still in the archived pages.
If it is not part of the URL, copy the URL you linked to, paste it into the
Wayback Machine, and search for archived pages of that URL.
VI.
COMMUNICATE QUESTIONS/PROBLEMS
It is important
that the lines of communication between the USPTO and the applicant are open
and productive. If you have any questions on how prior art has been applied
in an Office action, please contact the examiner or the examiner’s supervisor.
Additionally, if you have questions or problems that are not being resolved,
don't hesitate to call the Technology Center Director. See Table 1 for a list
of manager contacts in Class 705.
Table
1
Group 3620
- Class 705
Director John J. Love (703)308-1020 |
AU 3621 - Business
Cryptography
SPE - Jim Trammell (703) 305-9768 |
AU 3622 - Incentive
Programs/Coupons
SPE – Eric Stamber (703) 8469 |
AU 3623 - Operations
Research, Voting, Transportation
SPE - Tariq Hafiz (703)305-9643 |
AU 3624 - Finance
& Banking
SPE - Vincent Millin (703) 308-1065 |
AU 3625 - E-shopping
SPE – Wynn Coggins (703) 308-1344 |
AU 3626 - Health
Care/Insurance
SPE – Joe Thomas (703) 305-9588 |
AU 3627 - Point
of Sale/Inventory/Accounting
SPE – Robert Olszewski (703)308-5183 |
AU 3628 – Finance
& Banking
SPE (acting) - Franzy Poinvil (703) 305-9779 |
AU 3629 – Business
Processing, Cost/Price, Reservations
SPE – John Weiss (703) 308-2702 |
VII. CONCLUSION
In addition
to the traditional sources of prior art, examiners are now focusing on electronically
searchable databases and other forms of NPL to examine patents in business
methods. The USPTO has provided the tools and the resources to search hundreds
of NPL sources, and the courts have provided guidelines on how some NPL is
to be treated. Please refer to MPEP Chapter 2100 for more detailed instruction
regarding the application of prior art.