The Intellectual Property Forum

In the ... jeez, what's the new title for the BPAI? ... there's that silly decision in which failure to require a computer in method claims ran afoul of Section 101 and adding the computer back in the CRM and system claims didn't help.  Now, there's the CLS Bank Fed. Cir. decision that says more or less the same thing: that a computer can be an abstract idea, despite the fact that you can throw your pen at it and hit it.  In CLS Bank, there's that bizarre footnote that suggests that claims of different 101 categories fall or rise together in 101 analysis.

So, I'm wondering, what if I leave the method claims out and only pursue CRM and system claims?  These ridiculous opinions always grab the low hanging fruit first -- a method is just things you do, not actual things.  Then, they use the similarity of the method claims to say that the method and the machine that performs the method are one and the same.  What if all they have are CRM and system claims?  The absense of structure in a method claim seems to make it vulnerable to people who ignore the fact that "process" is a permissible type of invention according to S 101.

Admittedly, I have to read that 135+-page opinion and try to divine how that would play out, but it seems to deny the PTO a silly, contrived way to reject claims without examining them on the merits.

Any thoughts?

A client wants a search conducted and the guy I normally use has a conflict of interest with this particular technology.  Any recommendations?  As is typical, this client isn't yet fully funded, so cost is an issue.

Thanks in advance.

This topic has been moved to Patent Filing and Prosecution.

http://www.intelproplaw.com/ip_forum/index.php?topic=24110.0

Quote from: JimIvey on 01-29-13 at 12:03 pm

Quote from: khazzah on 01-29-13 at 11:31 am

How about this as a workaround ... file the inventor-approved app as a provisional, then send out for declaration signatures, then file as a utility claiming priority to the provisional.

Well, you know how I feel about that. 

I know how you feel about *non-enabling* provisionals. I'm talking about filing something that has been reviewed and approved by the inventor. I didn't explicitly say so, but in my scenario, the content of the provisional and the utility is *exactly* the same. The only difference is that the provisional isn't filed with a declaration.

I know AIA doesn't require a utility filing to include a declaration -- but if you go this route, you owe a fee. Seems like filing the same content but as a provisional is a way to have your cake and eat it too.

Can you explain this in greater detail?

My knee-jerk reaction is that using a provisional application for anything other than the intended purpose of provisional applications is like driving a nail with a cell phone.  Use the tool intended for the purpose and you'll always be better off.

I understand that I'm talking about filing without fees and signatures and that you're only talking about filing without signatures -- fees are paid.  What's the problem to be solved by filing a provisional?  Is the overall cost really covered by paying the $100 for a provisional (or whatever the filing fee is; I never file them so I don't know off the top of my head)?

It would really help me to have cites to the AIA so I can avoid reading the whole darned thing for yet another day. 

Regards.

This topic has been moved to Suggestions/Comments on these Forums.

http://www.intelproplaw.com/ip_forum/index.php?topic=24014.0

Years ago, someone posted a javascript bookmark for using Google to search the online MPEP.  I tweaked it a bit and made a bookmark that uses Google to search these forums.

Just use this as your URL for a bookmark:

javascript:s='';function%20gS(w){for(var%20i=0;i<w.length;i++){gS(w.frames[i])};%20try{s+=w.document.getSelection()}catch(e)%20{try{s+=w.document.selection.createRange().text}%20catch(e){s+=''}}}gS(top);if(!s){void(s=prompt('Enter%20text%20to%20search%20the%20IntelPropLaw%20forums%20using%20Google.%20You%20can%20also%20highlight%20a%20word%20on%20this%20web%20page%20before%20clicking%20Google%20Search.',''))}if(s)location.href='http://google.com/search?q='+escape(s)+'%20site:www.intelproplaw.com%20inurl:(www.intelproplaw.com/ip_forum/)'
I think it has to be all one line with no spaces.

Here's the original for searching the MPEP:

javascript:s='';function%20gS(w){for(var%20i=0;i<w.length;i++){gS(w.frames[i])};%20try{s+=w.document.getSelection()}catch(e)%20{try{s+=w.document.selection.createRange().text}%20catch(e){s+=''}}}gS(top);if(!s){void(s=prompt('Enter%20text%20to%20search%20the%20MPEP%20using%20Google.%20You%20can%20also%20highlight%20a%20word%20on%20this%20web%20page%20before%20clicking%20Google%20Search.',''))}if(s)location.href='http://google.com/search?q='+escape(s)+'%20site:uspto.gov%20inurl:(www.uspto.gov/web/offices/pac/mpep%20htm)'
Regards.

I've been seeing a lot of In re Nuijten rejections.  Just add "non-transitory" -- easy peasy nice and squeezey.  But I'm beginning to think I should just address it in the spec.  Here's what I've come up with so far:

As used herein, “computer-readable medium” excludes any transitory signals but includes any non-transitory data storage circuitry, e.g., buffers, cache, and queues, within transceivers of transitory signals.

Does it make sense to include receivers and transmitters with transceivers?  Am I pushing it by mentioning transceivers at all?  Should I just put "non-transitory" in the claims at filing?

All thoughts are welcome.

Regards.

This topic has been moved to Trademark Forum.

http://www.intelproplaw.com/ip_forum/index.php?topic=21253.0