Examiner statistics can be used by expert patent practitioners in many ways. However, the USPTO does not enable (refuses to enable?) easy access to such data and so the void has been filled by various business concerns. Before there was much competition, the costs of obtaining examiner data was virtually prohibitive for all but the most well-funded applicants. Now, however, basic examiner data is freely offered in the marketplace as a marketing tool.

At the same time, some have tried to patent their approach to providing examiner data, including Lexis/ReedTech, as reported in a previous post (link here). As one might imagine, this is a heavy lift. Recently, one of ReedTech’s applications on appeal and was decided all rejections were affirmed by the PTAB. The application is 13/153,572. The applicant likely knew early on that prosecution would be tough from their own proprietary examiner data.

Claim 1 is reproduced below and it is easy to see that Section 101 rejections would be at play.

1. A computer-implemented method, performed by a computer with a computer processor, the method comprising:
receiving a patent examiner name, identifying a single named patent examiner that makes patentability decisions, input through a user interface display generated by the computer processor;
searching, with the computer processor, a patent examiner data store with a search query comprising the patent examiner name in order to identify a plurality of patent applications for which the single named patent examiner made at least one patentability decision;
calculating, with the computer processor, at least one decision outcome and at least one decision timing for the single named patent examiner based on a plurality of decision events associated with the plurality of patent applications for which the single named patent examiner made at least one patentability decision; and
automatically displaying the calculated at least one decision outcome and the calculated at least one decision timing, using the computer processor, for the single named patent examiner

The applicant put a lot of effort in attacking the Section 101 rejections every way they could think of, but to no avail. Specifically, the essence of the examiner’s rejection was that “calculating . . . at least one decision outcome and at least one decision timing” was an abstract idea, namely, “the observation or judgment about the actions the examiner has taken.” According to the examiner, these actions, under the broadest reasonable interpretation, cover performance of the limitations in the mind but for the recitation of generic computer components.

The following is a quick summary of the applicant’s specific arguments against the 101 rejection:

• the claims are not directed to “an abstract idea, such as a fundamental economic practice, a method of organizing human activities, an idea of itself, or a mathematical relationship/formula, but instead are directed to improving patent prosecution research”

• the rejected claims are not directed to “specific steps . . . that accomplish the desired result” in that there is “no contention that the only thing disclosed is the result and not an inventive arrangement for accomplishing the result”

• Core Wireless supports the eligibility of the claims because these claims are directed to a particular manner of summarizing and presenting information in electronic devices

• the claims are analogous to those in Enfish where the claims were “directed to steps of configuring a computer memory in accordance with a self-referential table, the claims of the present application are not claims ‘where a general-purpose computer components are added post-hoc to a fundamental economic or mathematical equation’”

• the Examiner is wrong in asserting that the claims in Electric Power are analogous

• the Examiner oversimplified the claims in “failing to account for the specific requirements of the claims” and that the Examiner utilizes an impermissibly high level of abstraction that is untethered from the actual claim language

The Board was not moved by any of these arguments. And not that the Board needed extra ammunition, but the specification was also unhelpful to the applicant in that it explained:

… there is currently no convenient way to efficiently gather information on an Examiner-specific basis.

Surprisingly, the applicant cited this language from the specification in arguing for eligibility. However, gathering information seems to be the last thing an applicant would cite in arguing against Electric Power.

The Examiner also applied prior art to claim 1, where the MPEP was cited as one of the prior art documents. Regarding the claim limitation “calculating . . . at least one decision outcome and at least one decision timing for the single named patent examiner based on a plurality of decision events associated with the plurality of patent applications for which the single named patent examiner made at least one patentability decision.”

In combination with another prior art reference, the examiner actually cited the MPEP’s teaching in Section 1705 of “calculating examiner credit for actions performed such as First action, second action, disposal, etc. where the credit is dependent on the timing of the action and the type of the action.” Given the subject matter of claim 1, it is not surprising that a document like that MPEP might be used as a prior art reference. While the Applicant had various arguments against the obviousness rejection, the Board was not moved.

So for now, at least with regard to this particular case, patent examiner data is not patent protected.