by Jeffrey R. Kuester
Mr. Kuester (firstname.lastname@example.org) is a partner with the patent, copyright and trademark
law firm of Thomas, Kayden, Horstemeyer & Risley, LLP (www.tkhr.com) in Atlanta, Georgia. This article was originally published in the September 2000 issue of Patent Strategy & Management.
While there is still a chance that 35 U.S.C. § 101 could be amended by Congress to remove all business methods from the category of statutory subject matter, thereby statutorily overruling at least a portion of the State Street Bank decision, it is more likely that the Patent Office and the courts will begin tightening down on business methods through a more stringent application of the obviousness requirement under 35 U.S.C. § 103.
However, since obviousness is a standard with few bright lines and few have applied the obviousness standard to business methods at this point, it is unclear how the Patent Office and courts will apply the obviousness standard to business method patent applications. Evaluating obviousness has always tended to be a very subjective determination, and business methods will certainly complicate the determination.
In response to the uncertainty in this area, the Patent Office has now published on its website at http://www.uspto.gov/web/menu/busmethp/busmeth103rej.htm a paper entitled FORMULATING AND COMMUNICATING REJECTIONS UNDER 35 U.S.C. 103 FOR APPLICATIONS DIRECTED TO COMPUTER-IMPLEMENTED BUSINESS METHOD INVENTIONS. In that paper, the Patent Office provides nineteen (19) examples of how it apparently intends to apply the non-obviousness requirement under 35 U.S.C. § 103 to computer-implemented business methods.
A thorough examination of that paper will assist anyone in evaluating the likelihood that a particular business method will be patentable. Furthermore, patent attorneys would be well-advised to understand the contours of the cited examples in order to properly draft business method claims and effectively respond to rejections from patent examiners.
After providing a synopsis of the general law and governing procedures for applying the obviousness test, the paper reminds examiners of their statutory and administrative due process obligations to adequately notify applicants of the reasons for the rejection since such is "critical to proper action taking." According to the paper, an examiner should "appropriately communicate":
(1) the particular part of a reference being relied upon should be designated as nearly as practicable; 37 CFR § 1.104(c)(2);
(2) the differences between the claimed invention and the closest prior art;
(3) where the differences are found or suggested in the prior art;
(4) how the teachings of the prior art are combined; and
(5) why the combination of those teachings would have been obvious to one of ordinary skill in the art at the time the invention was made. Do not recite the disclosure of the prior art which reads on the claimed invention as the motivation. Communicate why the references themselves, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved establishes a motivation to combine the prior art references.
The paper then gives detailed examples of written obviousness rejections illustrating the preferred manner of communicating the supporting rationale. The paper groups the examples "into two broad categories: those where the rationale is either implicitly or explicitly contained in a reference, and those where the rationale is based upon a technical line of reasoning, such as established business principles, art-recognized equivalents, legal precedent, common knowledge or official notice."
While the first category may seem reasonably definite, the second category is fairly open ended and could lead to great variance between examiners. Nonetheless, the paper does indicate that "a simple statement that a difference is a 'design choice' or 'lacks an advantage or unexpected result' is insufficient rationale to support a well written and legally sufficient rejection."
One example supports obviousness with rationale reasoned from an established business principle. More particularly, the invention is drawn to an online bookstore that sell books with an added feature of e-mailing the customer sometime after the purchase with a customer service survey to enable the customer to comment on the condition of the books as delivered, the ease of use of the web pages and any other comments the customer would like to add. The cited reference teaches an online bookstore with the exception that the reference is void of any customer survey e-mail.
According to the paper, a proper rejection could include the following rationale:
Customer service is a key factor in the success of any business, whether it be brick and mortar or online. The most common vehicle for businesses to measure customer service is by asking the customers directly what they believed was good or bad about their experience with the business. Businesses have resorted to many different techniques of obtaining customer comments including comment cards, follow-up telephone calls, as well as mailing customer surveys to customers. This practice is well known in the business community and would follow in the Internet world as well where competition is sometimes worldwide and customers have a greater influence on the success of a business. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have added the well-known steps of asking the customer for an e-mail address at the time of the on-line purchase and then later e-mailing a customer service survey to the process of [the cited reference] for the purpose of gaining information about their service from the customer.
With other examples adopting similarly subjective reasoning based on such things as automation of a known manual process, including automation on the Internet, the chances are low that there will be any bright lines of easy patentability in the area of obviousness for business methods. The Patent Office has made it clear with these examples that there are various weapons at their disposal for rejecting business method patent applications.