The Patent Eligibility Absurdity Continues

“Ignore everything tangible and you are left with an abstract idea—no kidding; of course! Under this rationale, nothing can pass the patent eligibility analysis.”

Recently, it has come to my attention that a system that utilizes a camera to capture images and software to run facial recognition is being rejected by the United States Patent and Trademark Office (USPTO) as an abstract idea. Why? Well, it unfortunately seems that the reason is simply because the purpose of this very tangible, working system is to identify people and charge them a fare. Because money is overtly involved, for reasons that make no rational sense, this is being deemed a business method, despite the facial recognition technology—and even though this is a clean, streamlined approach for conducting commerce.

Claim 1 of U.S. Patent Application No. 16/910719 is representative of the claims being rejected by the patent examiner as abstract:

A system, comprising: an image-capturing unit configured to capture an image in a predetermined region that accommodates a plurality of persons passing through; an identification unit configured to identify the plurality of persons based on respective faces of the plurality of persons included in an image generated by the image-capturing by the image-capturing unit; and a charging unit configured to charge the plurality of persons identified by the identification unit respective fares that are chargeable to the plurality of persons.

An Unreasonable Interpretation

The examiner says in the Final Rejection that the invention “at best” claims “features that may improve an abstract idea.” The examiner goes on to also make the all too familiar, disingenuous argument that if you take out all computer elements the claimed invention can be performed by a human, which is of course absurd. I know examiners hate it when it is pointed out that they are doing it, but the law says examiners are supposed to give the broadest REASONABLE interpretation to the claim. But even if you unreasonably interpret the breadth of the claim, as the examiner is doing here, it is ridiculous on its face to conclude a brain of a human is an image capture unit.

And the unreasonable breadth of how “image-capturing unit” is interpreted demonstrates the utter nonsense that has become patent eligibility analysis. There is nothing in the application that would suggest in any way, shape, or form that a human without the use of any tangible technology could perform this invention. Indeed, a camera is recited over and over again in the specification, and the specification couldn’t possibly support the unreasonable breadth the examiner is applying to the terms of the claim and the claim as a whole.

How is it possible that an examiner can interpret claim terms and claims in ways that would violate basic disclosure principles set forth in 35 U.S.C. 112? Simply stated, an interpretation of claim terms that is not supported by the specification, which fundamentally expands and alters the invention, cannot possibly be the correct construction. And if the specification can’t possibly support the interpretation by the examiner, that by definition means the interpretation by the examiner is unreasonable and unfounded. Yet, these types of unreasonable interpretations have become commonplace when dealing with patent eligibility analysis.

What the patent applicant should do is file new claims specifically and unambiguously covering a human without any technology performing this method. When the examiner issues a 112 rejection because the specification doesn’t support the claim, this issue can be properly set up for the Board and then ultimately the Federal Circuit. This unreasonable reading of claims to cover things clearly not envisioned by the specification must end.

Everything is Abstract When You Ignore the Tangible

We all know the real problem is that this camera system with facial recognition technology is being interpreted to be a business method since the use of the system is to charge fares. Under that rationale, nothing is patent eligible.

Someone really needs to sue the USPTO for equal protection. The giant corporations that are the Silicon Valley darlings, and the numerous mega banks, are allowed to patent their inventions—all of which are intended to drive money changing hands—but some inventors languish because unreasonably aggressive examiners believe tangible, real-world innovations are merely business methods when money is changing hands. Astonishingly myopic.

To read out the camera and other technologies and claim that once you have you are left only with money changing hands, or something a human could do, violates the most fundamental and basic tenets of claim construction. Ignore everything tangible and you are left with an abstract idea—no kidding; of course! Under this rationale, nothing can pass the patent eligibility analysis. When you read out everything that is tangible, there is nothing but ideas left, because, as even the Supreme Court understands, every invention starts with an idea.

Image Source: Deposit Photos
Author: aga77ta
Image ID: 202737996

Gene Quinn Gene Quinn is a patent attorney and a leading commentator on patent law and innovation policy. Mr. Quinn has twice been named one of the top 50 most influential people [...see more]

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

51 comments so far.

Gene Quinn
August 23, 2023 11:27 am
@still here friend

First, how brave you are! An anonymous coward is more like it. LOL. You wouldn’t have the guts to tell me any of this to my face! Must be pathetic going through life in such a scared state.

Second, you erroneously claim the examiner did not read out the technology. The examiner ADMITS to that in the office action. If you are going to go on the attack can you at least please inform yourself and not lie?

Third, you cannot cite any law or statute or rule that allows an examiner to interpret a claim in a way that has no support in the specification. It is unreasonable to interpret a claim so broadly that the phantom claim in the mind of the examiner would lack 112 support.

Fourth, none of your comments have been moderated out. Nice try though claiming non-existent censorship.

So, why not come out of the closet and let us know who you are? Or is your style just to attack with lies and to ignore truth? No need to answer, it is obvious you are too afraid to use your real identity. Examiners like you are everything that is wrong with the patent system– bravely make anonymous, ignorant statements demonstrating no understanding of facts and law. Thankfully the overwhelming number of examiners are actually professionals.
still here friend
August 17, 2023 01:17 pm
Gene, lots of hot air, bloviating, and ad hom attacks, but no substance.

First, the examiner didn’t read out any “technology,” unless you refer to generic computer components as technology.

Second, Fed Cir routinely invalidates under 101 and says “the spec was detailed enough, but that detail isn’t in the claims.” WTF are you even arguing here? Do you read case law?

Third, interesting that you just spout off bloviating hot air and then say you refuse to debate an anonymous coward. Anonymity doesn’t seem to bother you when you’re engaging your little anonymous friends who agree with your nonsensical interpretation of the present 101 case law though. Funny how that works!

Is the state of 101 bad? Sure is. Doesn’t mean you should write these baiting articles about poorly written claim that anyone with half a brain could see would be invalidated.

I also see some of my follow-up comments were moderated out. Nice echo chamber you’ve built here geneous!
concerned
August 17, 2023 05:30 am
Mr. Quinn: A big thank you!

Curious keeps writing on this forum that my claims do not talk about consent. The importance of the consent is in my specifications and how my claims solve the important issue of consent.

I am not an attorney, yet Curious plays me as a fool. It just stood to reason to me that everything in the specifications cannot be in the claims or why have both?

But then again, I note that Curious will not put up the $500k and take my direct challenge to him regarding my claims.
Gene Quinn
August 15, 2023 06:15 pm
@here we go again-

You are wrong. You should read the patent, claims and action before you comment.

First, you say that the examiner did not read out the technology, but the exact opposite is explained in the rejection. Just exactly like I said in the article. Please inform yourself.

Second, you make the truly absurd claim that facial recognition is not in the claims, only facial information. You must be an examiner who works for the “no patent for you office” to make a distinction without any difference like that. How exactly is the innovation to use the images captured by the cameras to decide whether to charge the person a fare based on the facial information collected? Is it black magic? Nope, read the specification, which is supposed to inform the meaning and interpretation of the language in the claims.

And before you tell me that you are not allowed to read from the spec into the claims, learn patent law 101 which says the exact opposite. The specification is the glossary for the claims, and the meaning the applicant wants terms and limitations to carry in the claims is absolutely imparted into the claim from the specification. So, you can point to whatever language you want in the claims and pretend there is no facial recognition technology at play, but that is truly ridiculous on a very special level. And demonstrates an acute lack of understanding regarding basic patent law.

Happy to debate you if you want, but I’m not going to debate an anonymous coward– although it did feel good to prove you clearly wrong.
ghostndragon
August 14, 2023 03:52 pm
“While that may technically be true, that’s not how 101 works. Otherwise, you could get around any 101 rejection by saying the abstract idea is done with a computer.” – Tony

Aside from the astute points made by others regarding “playing games with 101” and the difference between 101 and 102 and 103, I’m going to point out that, even if you’re bothered by the wording, it is not reasonable to claim that this is just a computer implemented version on of an abstract idea. If it was an abstract idea, there would be no problem and solution. Problem: it’s hard and time consuming and expensive (and sometimes dangerous) to try to prevent fee/fare skipping via enforcing pre-paid fees/fares/ticketing. Solution: identify the people (sometimes lots of people, and certainly plenty of people that you don’t know) who need to pay fares/fees and charge them. I dare you to get a person to be able to do this (or even an army of people to do this) in a way that actually enables the solution.

“Most of the so-called ‘inventions’ are not much more than thought experiments with little to no implementation details. I mean, look at the claim from Gene’s article: charging people money based on facial recognition? A second-grader could have come up with that.” – Jack

If you’ve really been practicing for 10 years, I’m embarrassed for your clients, too. If a second-grader could have come up with that, then it would be no effort for the examiner to reject it on 102 or 103. Or if the issue is “implementation details,” then 112, WD or enablement – both, if you want. But the Patent Act sections are separate for a reason, and throwing them all under the 101 bus has made applicants and investors nervous enough that we are seeing a reduction in US-based applicants, while the rest of the world is doing the opposite. It will have real impacts on our economy and our ability to innovate.
Lab Jedor
August 12, 2023 02:17 pm
Tony,
Of course Canon invented technology: a system that charges a plurality of people fares that are chargeable based on machine face recognition is technology. The issue in 101 is not or should not be if it is novel or obvious. You know that right?

“I think most people would agree that this would be an abstract idea if the identification unit wasn’t positively recited. ” But the identification unit is positively recited. So the invention is not abstract per your own conclusion.

“If Congress wants to change this, they should do so by statute. ” Yes, absolutely. This misguided mediaeval thinking about scientific methodology based on uneducated opinions from technologically illiterate justices should be removed by Congress. ASAP please.
Anon
August 12, 2023 12:24 pm
“But that would take us back to the era of State Street, which the American public really didn’t like.”

I am going to call this out as the bu11sh1t that it is.

The American public was all FOR the leaps afforded by generous innovation protection.
Tony
August 12, 2023 09:22 am
“An identification unit in face recognition and vision systems is well known and is for instance freely available in OpenCV, an Open Source image processing package.”

So you acknowledge that Canon didn’t invent any new technology in this application (at least as recited in independent claim 1). The only ‘invention’ recited in the claim is the idea of charging fares based on identification of faces.

I think most people would agree that this would be an abstract idea if the identification unit wasn’t positively recited. And current jurisprudence is that you can’t make an abstract idea concrete simply by reciting known technology.

If Congress wants to change this, they should do so by statute. But that would take us back to the era of State Street, which the American public really didn’t like.
Lab Jedor
August 12, 2023 12:05 am
“For example, a human cannot perform computer implemented addition, but they can certainly perform addition. Saying it’s computer implemented is just playing games to get around 101.”

Yes Tony, exactly. Well, not playing games, but still getting around 101. Because a computer implementation of an addition is a technology. It includes AND and XOR switching devices called gates working on Low and High signals wherein no Numbers, no 0 or 1 and no True or False exist or are processed. An addition in the sense of addition as humans do does not exist in computers. But hopefully you knew that.

The relevant claim limitation says: “an identification UNIT configured to identify the plurality of persons based on respective faces of the plurality of persons included in an image generated by the image-capturing by the image-capturing UNIT;” which in the context of the specification is a machine or device, not a human. You are making your own point and confirm what most of us are saying: this is a technology based invention and not an abstract idea.

An identification unit in face recognition and vision systems is well known and is for instance freely available in OpenCV, an Open Source image processing package.

Which brings us back to the exchange about pre-cursor technology. You methodologically need such a recognition application to perform automatic fare collection based on face recognition. You may develop it yourself as a new application, or you use an existing technology, such as OpenCV. Canon in this case refers to its own technology.

To what extent patent law requires describing that pre-cursor technology is a different matter. But one of ordinary skill in image processing engineering would know what to do. I as a camera inventor do. And saying that it is all abstract is crazy nonsense.
Tony
August 11, 2023 02:34 pm
Lab,” For instance for the simple reason that computer implemented face recognition cannot be done without a computer”.

While that may technically be true, that’s not how 101 works. Otherwise, you could get around any 101 rejection by saying the abstract idea is done with a computer. For example, a human cannot perform computer implemented addition, but they can certainly perform addition. Saying it’s computer implemented is just playing games to get around 101.

The claim from this article merely states “identify the plurality of persons based on respective faces of the plurality of persons included in an image”. Clearly a human can do that.

If the claim had said something like identifying the plurality of persons by some specific computer-implemented algorithm, you probably have a good argument that that cannot be done by a human. But the claim doesn’t say that, hence the 101 rejection.
Anon
August 11, 2023 01:16 pm
Lab,

It would be easier (for you) to just admit that I was correct.

Your reply of “but you still need the enabling technology first.” does not contradict my point, nor address the point that your statement errantly went further than that first item.

You then double down with “Though even there, the invention of a new material nowadays requires quite extensive technology that you have to apply.” – You have added a non-sequitur to my direct point that showed your assertion to be in error.

I am not claiming that invention CAN be more than what I stated (and being more, may adhere to your assertions). But your assertions are not in accord with patent law.

You asserted too much.

That being said, the destination to which you want to take the conversation (exemplified by, “But don’t let them insult us with arguments like ” if you take out all technology from the claims you only have an abstract idea left.” That is crazy nonsense. It is anti-technology and it is anti-patent.“), we are in complete agreement.
Breeze
August 11, 2023 12:55 pm
“Respond with initials if you can guess”

I was on the 4th floor (“away from the flagpole” as my mentor used to say) and rarely went to the 5th floor. On one of the rare occasions where I did venture upstairs, the ever present, and pleasant, GM saw me and said, “What are you doing up here?”

There weren’t that many partners when I was there, so I would probably guess EW is the individual in question.

Nothing but fond memories for me now.
Lab Jedor
August 11, 2023 12:45 am
Anon: “One, an invented technology can be applied in a NON-novel invention.” Of course, but you still need the enabling technology first.

“Two, (directly quoting 35 USC 100(b)” Also true. Especially as it pertains to materials. Though even there, the invention of a new material nowadays requires quite extensive technology that you have to apply.

For instance device as well as method claims in USPTO issued patent claim the FFT. So the FFT has to be known, before you claim for instance a speech extraction device or method that applies the FFT.

I have never included the FFT in a claim, so I could not tell you if this sometimes triggers a 101 rejection. But it seems plausible to me that an Examiner agrees that an FFT or DFT is well known as a computer implemented technology and won’t reject as being abstract because Fourier wrote about component analysis in the Analytical Theory of Heat as a routine and well known application that has been applied now for centuries.

As to computer implemented face recognition from a camera generated image. That is presently a well known technology. As a method and as a machine. So to arrive at the claim limitation to have an automatic fare charge, you need all this computer stuff, including the machine face recognition.

It is probably futile to argue with the Examiner on the “directed to an abstract idea” allegation. He just says “take out all technology and what you have left is charging for a ticket.”

For the new Bill that supposedly addresses these issues, it should be recognized that inventions like the current one under discussion cannot be performed without a computer. For instance for the simple reason that computer implemented face recognition cannot be done without a computer.

The sine qua non means that in those inventions computers are the essential precursor. Without it, no computer implemented invention can exist. If a majority doesn’t want computer implemented inventions, so be it and let them decide so. But don’t let them insult us with arguments like ” if you take out all technology from the claims you only have an abstract idea left.” That is crazy nonsense. It is anti-technology and it is anti-patent.

As to Terry Pratchett. He has this wonderful story about the invention of creating movies, with crazy fast painters inside the camera or projector. Proving that movies are essentially abstract ideas in his World. Well, they may well be in our patent world.
Anon
August 10, 2023 07:56 pm
Sorry Lab, but your statement of (emphasis added),

“This is the sine qua non with inventions: you first have to invent the technology and then apply the technology.

For instance, you first invent a phase-locked loop (PLL) using generic electronic components, and then you apply the PLL in a novel invention,”

Two avenues:

One, an invented technology can be applied in a NON-novel invention.
Two, (directly quoting 35 USC 100(b): The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
B
August 10, 2023 07:11 pm
@ Breeze “You’ll have to be more specific.”

He was famous in the firm for incredible inefficiency – and his office was on the top floor of the Atrium building – up from Tom Pardini half a hallway.

Respond with initials if you can guess
Lab Jedor
August 10, 2023 03:40 pm
This is the sine qua non with inventions: you first have to invent the technology and then apply the technology.

For instance, you first invent a phase-locked loop (PLL) using generic electronic components, and then you apply the PLL in a novel invention, for instance as a clock-extraction circuit or as an FM demodulator. (thank you B for bringing up memories about PLLs).

Or you first invent a Fast Fourier Transform (FFT) and then you create a digital spectrum analyzer applying the FFT, again applying generic computer components.

The same is the case with image recognition. You first have to develop the recognition technology, for instance by image segmentation, or by deep learning of features combined with feature detection. Using generic computer technology. You then can apply the recognition technology: in medical applications, to detect abnormalities or in facial recognition for entry systems or for fare charging.

Every single of the above inventions works based on technology, which now in hindsight may be routine, but it still is technology, and most importantly all these inventions do absolutely not work without the technology.

Using face recognition computer implemented technology is a technology, not an abstract idea. The fact that humans can recognize a face has absolutely nothing to do with computer implemented facial recognition. To suggest that computer implemented facial recognition is equivalent to “merely do it on a computer” of what a human does has no idea what they are talking about.

Furthermore, Canon clearly invented a novel and non-obvious machine as it overcame earlier 102 and 103 rejections. And the only remaining issue is the 101 rejection. They do not have to “claim what they invented” because they already did. And the Examiner agrees with that.

The issue is that the Examiner literally (and he says so explicitly) removes all computer elements from the claim and then says what is left is an abstract idea. Even Alice does not do that.

One common argument is that “a human could perform the claimed invention.” That allegation is absolutely incorrect here, because no human ever did such a thing, and cannot practically do such a thing, and no person would ever do such a thing. It is only because an Examiner or a Judge will say these things in hindsight taught by the specification of the applicant. As such the invention never occurred, either physically or in the abstract. (it would require a conductor to recognize at least two train passengers based on a picture, have names and bank accounts of all passengers, note the passenger getting off with other passengers, recognizing again multiple passengers, and charging the bank account of the passenger for that specific fare. All based on a picture, never having seen the passenger before among a plurality of other passengers the conductor doesn’t know and all based on pictures carried along. That really is a Terry Pratchett story. But applied in patent law without a second thought) Even in the abstract the invention cannot be performed by a human, unless you apply a fictitious wonder-person with unhuman skills. This invention can only be performed using computer technology.
Breeze
August 10, 2023 12:20 pm
” I remember once fighting with a less than bright junior partner in front of The Notorious James A. Oliff…”

You’ll have to be more specific.

Lulz
Addy
August 10, 2023 10:18 am
Canon indeed is a powerhouse in the area of facial recognition technologies, and I’m certain they invented a novel system to do facial recognition at scale, coupled with payment of fares.

Unfortunately, the claims only now with the most recent amendment reflects what Canon invented. Current Claim 1 recites a number of generic computer components as such (e.g., first imaging device, second imagine device, a third processing circuit, etc., an aside – only some of these terms are also defined in the spec, leaving the Examiner/appeal board to figure out what the undefined terms are and how they operate, which is naive at best, bad lawyering at worst). In the most recent response (part of an RCE) the practitioner **finally** adds some algorithmic structure (see the amended “wherein the third procesing circuit…”) – what Canon actually invented is starting to creep into the claims. Finally. Now I suspect the applicant will start to see progress…it only took two full rounds of prosection.

We can all wait with baited breath to see what the next rejection looks like. Now that we have some technical definition to the third processing unit introduced by the wherein clause in latest amendment, it’s no longer a generic component – it has structure to carry out a function. My money says the 101 goes away (at least for Claim 1). I do think a prior art rejection will be raised.

IMHO, the issue here isn’t a poor application of 101, it’s counsel’s inability to deal with a 101, spending response after response introducing more generic components, hoping doing the same thing over and over will lead to a different result. The most recent response does finally do something different, and should lead to a different result.

Maybe Gene will keep following this one and alert us to what happens in the next office actions.

High drama in patent law!
here we go again
August 10, 2023 09:56 am
Gene- is your problem with the Supreme Court or TC 3600? This examiner is merely following the guidance provided. They aren’t “reading out” the technology in the claims, they merely following the two-step framework. They specifically discuss the additional elements in the rejection. Their position is clear in the rejection and the response to arguments sections in the Office actions. The claims that were finally rejected have two cameras that each take an image, and two analysis steps. The “facial recognition technology” is not in the claims, only facial “information.” The claims were properly rejected under 101. An RCE has been filed with further amendments that could overcome the 101 rejection.
Anon
August 10, 2023 08:00 am
Jack,

I do hope that you notice just how much you have moved the goal post between your first post and your most recent post.
concerned
August 10, 2023 06:51 am
Curious:

The 500k challenge is also offered to your buddies at the USPTO or CAFC.

They write, you write, the claims are abstract and can be done in the mind. Prove it.
concerned
August 10, 2023 06:40 am
Curious: “No one accepts a challenge from someone who is unwilling/incapable of understanding the law.”

That is as lame as it gets. And you usual dodge when called out.
Jack
August 9, 2023 10:19 pm
Anon,

A lawyer’s job is to zealously represent their client within the bounds of the law, regardless of their personal beliefs. Criminal defense attorneys represent clients that they know are guilty all the time, and there’s nothing unethical about that.

My job as a patent attorney is to zealously represent my clients by presenting the best case for the patentability of their inventions to the Patent Office. But that doesn’t mean I have to like it.
Pro Say
August 9, 2023 06:54 pm
Susan Powter had it right: Stop the insanity!

https://www.youtube.com/watch?v=ZjfB4qDx3RM
Anon
August 9, 2023 06:06 pm
Jack,

You absolutely missed the point. It was NOT that you do work for money, as much as it is HOW you emphasized that you would do slipshod (and lacking ethics) for money.

Keep on confirming Breeze’s suppositions.
Patent Attorney Actual
August 9, 2023 05:47 pm
The last response confirms that Jack is clearly not a patent attorney.
B
August 9, 2023 05:02 pm
@ Jack “I’m also a taxpayer who cares about the legitimacy of the patent system. And it’s frankly embarrassing looking at the kind of claims my clients want me to file (which I do of course, gotta bring in that $$$).”

We’ve all been there – whether it’s a perpetual motion machine or a claim that reads on a mirror on a wall. I remember once fighting with a less than bright junior partner in front of The Notorious James A. Oliff about a claim that was supposed to be directed to a phase lock loop but read on a light switch.
B
August 9, 2023 04:51 pm
@ Gene

This should come to no surprise to you. Alice/Mayo is nothing but an exercise in ignoring those pesky claim limitations and/or facts.

Taking a wild guess – this level of stupidity must come from TC 3600
Jack
August 9, 2023 04:05 pm
Oh pardon me Anon, I didn’t realize you were so high-minded that you do all your patent work pro bono. I guess I should start sending all my clients to you so then can avoid those annoying legal fees!

I’m not aware of any ethical rule that prohibits an attorney from filing claims that they suspect will get a 101 rejection, as long as you’re upfront about it with the client. But if you know of one, please let me know.
Siva
August 9, 2023 02:47 pm
If the applicant is Canon (like Lab Jedor mentioned), i wonder how/ why even big businesses waste their resources on such petty claims. I side with the Examiner 100% that, this is classic 101 rejection material. Even if there’re plurality of people (let’s say 2 or even 3) to be identified in one glance on the fly, human operator can do it.
Ostriches
August 9, 2023 02:34 pm
“There is nothing inventive at all in that claim.”

Whether something is “inventive” has absolutely nothing to do with whether it is patent eligible subject matter.
usual suspect
August 9, 2023 02:20 pm
The claim at issue is a 112/6 claim. Therefore, according to law (but not practice) the claim needs to be interpreted according to the embodiments disclosed in the specification, and not merely as functional language divorced from the specific structures disclosed.

Why is this lost on the FedCir, USPTO, patent attorneys, and clients? [am I the only one?)

1. A system, comprising:
an image-capturing [means for] captur[ing] an image in a predetermined region that accommodates a plurality of persons passing through;
an identification [means for] identify[ing] the plurality of persons based on respective faces of the plurality of persons included in an image generated by the image-capturing by the image-capturing unit; and
a charging [means for] charg[ing] the plurality of persons identified by the identification unit respective fares that are chargeable to the plurality of persons.
Anon
August 9, 2023 01:59 pm
Thanks Breeze,

I had a similar reaction – after I realized that this person would have been admitting ethical violations and malpractice if indeed he was merely ‘filing for the $$$.’
come on man
August 9, 2023 01:16 pm
LOL come on Curious don’t be disingenuous. Conservation of energy? I’ve seen a lot of bad 101 rejections and that takes the cake. I’d probably get attorneys’ fees if you filed a 12(b)(6) with that sort of rationale.

What’s more disingenuous is Gene’s inflammatory and, frankly, wrong assertion that the PTAB found “a camera” to be an abstract idea. No. The court found the claims were directed to an abstract idea implemented on known technology (camera, computer, whatever). There’s a distinction there. Strange that nearly a decade post-Alice you can’t recognize that. The fact that the claim recites some piece of hardware or that you can wheel it into the PTAB during oral arguments is irrelevant.

The fact that you guys go to such great lengths to defend legitimately garbage claims does harm to your cause. Just admit that you need 101 to revert back to continue making money because your client base is in this pseudo business method area or because you learned to write purely functional claims and can’t fix yourself for whatever reason.
Breeze
August 9, 2023 12:42 pm
“I’ve been a practicing patent attorney for 10 years, and I deal with 101 rejections all the time. While getting rid of 101 requirements would certainly make my life easier, and result in much greater profits for our profession, I’m also a taxpayer who cares about the legitimacy of the patent system. And it’s frankly embarrassing looking at the kind of claims my clients want me to file (which I do of course, gotta bring in that $$$).”

It could not be more clear that you are not a practicing patent attorney.

“Most of the so-called ‘inventions’ are not much more than thought experiments with little to no implementation details. I mean, look at the claim from Gene’s article: charging people money based on facial recognition? A second-grader could have come up with that.”

It’s clear from this that you are most likely a patent examiner.
Lab Jedor
August 9, 2023 11:52 am
The applicant in this case is Canon, a powerhouse in image processing and face recognition.

There are some significant aspects in this invention that are not claimed or that are not emphasized. The independent claim requires a recognition of a plurality of faces. While not claimed, the specification also teaches that a plurality of faces is recognized at the same time. This is based on Canon’s entry system technology that performs on-the-fly face recognition of multiple people at virtually the same time, which prevents bottlenecks, like by requiring swiping entry cards. The system, as described, is based on taking a single or a limited number of pictures of a person during registration.

This and other aspects cannot be performed by a human. So, if you take away the computer, the invention cannot be practiced. Not just, cannot reasonably be practiced, but cannot be practiced at all, full stop. These 101 rejections are idiotic and they get worse.

Examiners are inspired to come up with novel interpretations of Alice. And they get away with it. Like “when taking out all the additional elements or computer elements from the claims…” What kind of novel rule is that? Just taking out claim limitations from examinations? So, when I design a novel digital camera, which I claim (and I have a patent on it) and then I take out all the computer elements, I have not even an abstract idea. I have just pure nonsense. It seems that Quality Control or the Director has to interfere in this case. The whole thing is idiotic, even under Alice.

I don’t think Canon needs my help in this. However, I would not have drafted the claims as presented, as it almost seems a taunt to be declared ineligible by non-technically focused Examiners. Still, I find the whole case very upsetting.
Curious
August 9, 2023 11:34 am
Gene is completely wrong here as usual. There is nothing inventive at all in that claim. The days of getting over a 101 rejection by saying “with a computer” (or a camera) are over. Nowadays you have to actually invent something, not just charge money for performing a known method.
If there is nothing but performing a known method on a computer (i.e., “nothing inventive at all in that claim”), then this is an easy 102 or 103 rejection. Performing a previously non-computerized method on a computer is an easy rejection under 103 if all the steps are the same.

The problem identified by Gene is that once an Examiner takes out everything technical from a claim it is axiomatic that what is left is an abstract idea.

A chair comprising: a seat; four legs extending in a first direction from the seat; a back extending in a second direction from the seat, the second direction opposite the first direction; a rotatable hand crank supported by the seat; two blades; and a transmission operably connecting the hand crank to the two blades such that rotating the hand cranks results in rotation of the two blades.
The claim invention is directed to mere application of the law of the conservation of energy. The rotatable hand crank, two blades, and transmission are merely known elements used in a known way to transmit energy (i.e., implement the abstract idea). The seat, back, and four legs merely limit the claims to the field of chairs and do not provide an inventive concept.

Give me $50K to write a Motion to Dismiss under Rule12b6 and I can make the foregoing sound a lot prettier. If I had a specification that explained what you are trying to do with your chair + propeller I could extract a better abstract idea to accompany this analysis.

It is trivial to come up with 101 rejections these days. The triviality of the task is evidenced by how little time examiners put into the written analysis. I’ve seen 101 rejections that probably took 20 minutes to write (if that).
Model 101
August 9, 2023 11:27 am
More crookery.

The ptab is completely crooked.

Your lawyers didn’t tell you?

Shame on them.

Unfortunately you just told everyone how to do it.
KMH MVS
August 9, 2023 11:25 am
How can words in a claim be ignored?
The Federal Circuit has stated that “we must give meaning to all the words” in claims. See Exxon Chemical Patents v. Lubrizol Corp., 64 F.3d, 1553, 1557 (Fed. Cir. 1995); Funai Elec. Co. v. Daewoo Eloctronics Copr. 616 F.3d 1537, 1372 (Fed. Cir 2010).
Nearly 150 years ago in a patent infringement case, the Supreme Court acknowledged the “well-settled rule” of construing all instruments that some importance must be attached to all the words of the instrument, otherwise the words are useless. Merrill v. Yeomans, 94 U.S. 568, 571 (1877) .
Ingoring the words in a claim does not give the words their common ordinary meaning.
Jack
August 9, 2023 11:23 am
Anon,

I’ve been a practicing patent attorney for 10 years, and I deal with 101 rejections all the time. While getting rid of 101 requirements would certainly make my life easier, and result in much greater profits for our profession, I’m also a taxpayer who cares about the legitimacy of the patent system. And it’s frankly embarrassing looking at the kind of claims my clients want me to file (which I do of course, gotta bring in that $$$).

Most of the so-called ‘inventions’ are not much more than thought experiments with little to no implementation details. I mean, look at the claim from Gene’s article: charging people money based on facial recognition? A second-grader could have come up with that.

And if you read the specification, there are no technical details about improved facial recognition algorithms or anything else, just flowcharts about how data is moved around. I think this is pretty clearly a business method that is not deserving of patent protection.
Curious
August 9, 2023 11:19 am
I am told all the time that my claims can be done by a human and the claims are abstract.
The abstract idea embodied in your claims can be done in the human mind. All you are doing is seeing if someone is eligible for SSDI adult child benefits based upon their parents and/or spouse. This can be done mentally so long as one has access to the records. Look at your Figures 7-9 (processes 700, 800, 900). All the determinations being made can be performed in the human mind.

This is from Figure 8:
Person Disabled prior to age 22?
If yes, Obtain SSN.
Parent SSN available?
If yes, Retrieve parent data from SS database using parent SSN.
Parent(s) Insured Under SS Program and Either Parent Drawing Social Security Benefits on or after age 62, deceased, or has a disability and is drawing monthly disability Social Security Benefits and at any Age?
If yes, Notify Casework of Eligibility and Apply for SSDI?

That’s your invention in a nutshell.

The fact that the records are stored electronically and/or require “consent” to be accessed is not a ‘get out of jail free’ card when it comes to patent eligibility. That you are electronically storing/displaying the results of this analysis is a not a ‘get out of jail free’ card when it comes to patent eligibility.

If a person cannot abstractly waive consent without my process and my claims, a human being simply cannot get my outcomes.
How many times do I have to tell you that your claims say nothing about consent?

Curious: Before you rip me again about my claims for the zillionth time, put up a $500k bond and let’s tango. No double talk again.
You’ve already lost at the Federal Circuit — on claims that were unpatentable based upon the law on the books the day you filed them.

Nobody accepts the challenge because those people are all blow and no go.
No one accepts a challenge from someone who is unwilling/incapable of understanding the law.

This article does not surprise me as anything can be said to reject claims, fact or fiction.
This article has little to do with your claims. This article addresses claims directed to technology — not a business method.
S
August 9, 2023 09:59 am
I am of two minds. Yes, many 101 rejections could be phrased as rejections under obviousness, enablement, etc. But 101 simply askes the inventor to pinpoint what their invention is and how it departs from the prior art. If a drafter can’t explain that, then the inventor should look for representation from elsewhere or go back to the drawing board.
KenF
August 9, 2023 09:03 am
Life as a patent attorney sucks when your last, greatest hope is Congress…… Think it’s time to become a carpenter or auto mechanic….
Anon
August 9, 2023 08:51 am
Jack,

I have to wonder that in your hurry to bash Mr. Quinn, did you neglect to have any understanding of actual patent law or the history of patent law.

If I may ask (with no intention of “outing” you), what IS your relation to patent law?
examiner
August 9, 2023 07:47 am
No one ignored your limitations. Your claim simply has two parts: the abstract idea, and the general purpose computer “system” with a bunch of software units attempting to “draft around” 101. The examiner considered both halves of the claim, and found that the generic computer half was, indeed, not significantly more. Considering limitations under step 2b is not the same as “ignoring” them.

When the Supreme Court said eligibility isn’t a draftsman’s art, they meant it. You can accept it, or call your congressional rep. But acting like Kim Davis won’t get you anywhere.
concerned
August 9, 2023 05:19 am
Jack:

Inventing a process that has never been performed using a computer does not get a patent either. And when proved the process has never been performed with or without a computer, the rejection reason changes. The only thing being invented is law made by judges to get the desired outcome in their own image.

Over 50 pages in the MPEP trying to explain an inventive concept after 9 years of Alice. In 20 years, it will be over 100 pages in the MPEP trying to explain an inventive concept.

In Kindergarten, the rules of tag changed and expanded after every recess. It has to be a tag with both hands, then one hand above the waist, one hand below the waist, then three hands on Wednesday, etc.

Everything you needed to learn about patents, you learned in Kindergarten. The rules change to get the desired outcome. Over 50 pages in the MPEP because nobody will give an inventor a simple definition of invented concept. And do not argue the everyday dictionary meaning, Webster is a fool as judges have their own “undefined” 50-page version, going to 100 pages.

How can any trained and licensed professional even begin to support this nonsense in a legal setting?
Jack
August 8, 2023 08:58 pm
Gene is completely wrong here as usual. There is nothing inventive at all in that claim. The days of getting over a 101 rejection by saying “with a computer” (or a camera) are over. Nowadays you have to actually invent something, not just charge money for performing a known method.
Frank Bernstein
August 8, 2023 04:49 pm
Thanks for this, Gene. I certainly do feel your pain on every aspect of this issue (and so do my clients).

Your suggestion that an applicant should file claims that are unambiguously performed by a human makes me think of the following.

Would these claims be supported by the same specification that supports the hardware?

If so, I think that if you also include hardware claims, the Examiner could well take the position that of course the hardware claims are patent ineligible because they are broader and therefore read on a human performing the functions. Potentially you are digging yourself a bigger hole.

If not, then you may have an argument, before the Examiner or before the PTAB, that the human claims and the hardware claims recite two different inventions. But if you file claims that you intend not to be supported, could that technically be considered an ethical violation for filing claims that you know to be unpatentable? Seems to me you could argue that your actual goal is to get the hardware claims issued, and that you’re trying to obtain a well warranted modification, extension, or reversal of existing law.

Thank you for keeping this important conversation going.
Lab Jedor
August 8, 2023 04:40 pm
I urge people to read the Office Actions and responses in Patent Center in this case. I can follow the arguments by the Examiner, stating explicitly that all the steps (after taking out all the computer elements) can be performed in the mind and thus is abstract or directed to an abstract idea. Yeah, if I take out all the computer elements of the RSA claims, then all remaining steps can be performed in the human mind. That is like saying, if I take out all the physical elements out of an invention, then all I have left is an idea.

The amended claim requires: “transmitting the captured first image to a server.” The applicant logically and reasonably observes that this limitation cannot be performed in the human mind and thus cannot be abstract. (well, if you don’t take out the computer elements, of course).

Face recognition technology is one of the most innovative and recent applications of image processing. It is of an exceptional level of technological achievement. You cannot take out computer technology out of computerized face recognition. It is like suggesting to take out the engine out of an automobile, and then asserting what you have left is the abstract idea of a vehicle on wheels.

It is clear is that a) the claimed invention has a practical application, and b) the claimed invention cannot be practically performed without a computer.

This current type of rejection should be impossible in the future, if and when the suggested Patent Eligibility Bill passes. If we cannot get a guarantee on that, the Bill should not be supported.
not again
August 8, 2023 03:31 pm
LOL don’t die on this hill my man. This is like the cashier at a high school football game looking at a family and saying OK 2 adults $5 each 3 kids $3 each.

And no, not everything is abstract:

A chair comprising: a seat; four legs extending in a first direction from the seat; a back extending in a second direction from the seat, the second direction opposite the first direction; a rotatable hand crank supported by the seat; two blades; and a transmission operably connecting the hand crank to the two blades such that rotating the hand cranks results in rotation of the two blades.
concerned
August 8, 2023 01:55 pm
I am told all the time that my claims can be done by a human and the claims are abstract.

Nobody accepts my $500k challenge, which I would want IPWatchdog to oversee and report the results.

Nobody accepts the challenge because those people are all blow and no go. The posters can state anything until challenged to back it up.

Curious: Before you rip me again about my claims for the zillionth time, put up a $500k bond and let’s tango. No double talk again.

I’m ready because I think you, nor the USPTO, nor the PTAB nor the CAFC judges can abstractly waive consent.

If a person cannot abstractly waive consent without my process and my claims, a human being simply cannot get my outcomes.

This article does not surprise me as anything can be said to reject claims, fact or fiction.