Patenting Patent Examiner Data in view of Alice

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.

Commercial Success for Start-up Commercial Products

My kids are well past playing with food and utensils, but I remember the constant clean-up of those times. We used to joke about lining the kitchen with plastic wrap.

Which brings us to the “pre-spoon” - something you use to train your children before they graduate to a real spoon. Numnum’s has a well-designed site selling their pre-spoon (https://numnumbaby.us/pages/pre-spoon-gootensils) using the slogan “When it’s too soon to spoon, it’s the perfect time for NumNum.”

What it was not the perfect time for was getting their patent through the USPTO without improper rejections. Appeal 2022-001343. Application 15/294,414.

Claim 1 is reproduced below. The Office rejected claim 1 based on a combination of three references.

1. A utensil comprising:
a rounded handle end; and
a food end consisting of an exterior edge and a non-concave surface having interior extending arms,
wherein the utensil is approximately four inches long,
wherein the food end is to enter into a person’s mouth, and
wherein the arms in combination with portions of the non-concave surface together define a food retaining edge, wherein the food retaining edge defines a hole.

The applicant here strategically prepared for the appeal by not only having various arguments against the combination, but also by including declaration evidence to support commercial success. As is often the case with “simple” mechanical inventions, the Office can successfully string together a combination and utilize various doctrines related to intended use and the like to reject the claims. However, examiners often discount evidence of commercial success as lacking the required ‘nexus’ (between the claimed invention and the commercial success). Here, Numnum’s declaration hit all the necessary points to tip the PTAB from sustaining to reversing the rejection.

Specifically, the applicant tried seven arguments against the combination, from hindsight to lacking an expectation of success and everything in between. The PTAB swatted each one by the wayside. But when the issue of secondary considerations came up, the PTAB found that the examiner erred.

Some relevant aspects of the declaration in this case (linked here) are how it shows that the commercial product embodies the claimed invention. Specifically, the declaration shows, with images of the commercial product, how the commercial products “are essentially the claimed invention.” Further, the declaration explained how the commercial products contain no additional unclaimed elements that contribute to the commercial success of the products, as supported by the pictorial comparison. The declaration went on to link the commercial success to the claimed features by showing the applicant was able to charge nearly double the price of most typical early utensils and that there was no impact from sales/marketing, while also including customer reviews praising function according to the claimed structure (e.g., retaining yogurt). Finally, the declaration laid out sales data and linking that growth to the product by explaining that there could have been more but for production limitations.

This case represents a good example of how to establish commercial success for applicants developing new products in a small business where patent protection can be critical. Just because you cannot successfully spoon feed your commercial success evidence to the examiner does not mean you do not have potential to convince the PTAB. But, there are many pitfalls to relying on commercial success so be careful with the declaration and supporting evidence to avoid leaving a gap that allows the PTAB to affirm.