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`Prior Art in the Field of Business Method Patents -When is an Electronic Document a
`Printed Publication for Prior Art Purposes?
`
`Presented at AIPLA
`Fall 2002
`
`By
`
`Wynn W Coggins
`The United States Patent and Trademark Office
`
`I. EXECUTIVE SUMMARY
`
`Recent growth in business technologies, particularly in areas related to electronic commerce, has been substantial. Computers
`and the Internet have created an information age that is revolutionizing society, and although the economy has experienced recent
`highs and lows, patent protection is still being sought for areas related toe-commerce and the Internet. Thus, the areas of the
`United States Patent and Trademark Office (USPTO) that examine patent applications related to business method inventions
`continue to attract public attention. Industry and patent practitioners have voiced concerns about the availability of prior art and the
`quality of the searches being performed in these emerging technology areas.
`
`The one area in particular that receives the bulk of the public attention related to business method-type applications is the
`workgroup responsible for examining patent applications in automated business data processing technologies, U.S. Class 705.
`The majority of business method related applications are filed in this area since the methods and apparatuses claimed in these
`applications are related to financial and business data processing. However, not all business method claims are classified in Class
`705. For example, methods of teaching are classified in Class 434, Education and Demonstration. Methods of playing games are
`classified in Class 273, Amusement Devices, Games. Methods of improving crop yields are classified in Class 47, Plant
`Husbandry. These are only a few examples. Other process and apparatus claims which may be labeled a A" business methodA"
`are classified and examined according to their technology.
`
`There has been some confusion in the patent community over what constitutes a business method claim. A" Business methodA" is
`a generic term that has been used by many to describe various types of process claims. The Federal Circuit has not yet defined
`what it is that specifically characterizes a business method claim and separates it from other process claims. The Court has,
`however, stated that claims drawn to a method of doing business should not be categorized as a A" business methodA" claim,
`instead they should be treated like any other process claim. State Street Bank & Trust Co. v. Signature Financial Group, Inc., 47
`USPQ2d 1596, 1604 (Fed. Cir. 1998).
`
`On March 29, 2000, the USPTO announced an Action Plan for business method patents to improve the quality of the examination
`process in technologies related to electronic commerce and business methods. These initiatives have provided a forum through
`which mutual concerns, problems and possible solutions are being discussed, and USPTO operational efforts in this technology
`area are being shared. Feedback on prior art resources is also being gathered and input on expanding non-patent literature (NPL)
`information collections and databases is being solicited. There has been active discussion on these initiatives since their inception,
`and they will not be the focus of this paper.
`
`Instead, this paper defines what constitutes prior art in today A's information age. The evolution of prior art will be examined from
`its early foundation in published patents to its current non-patent literature and electronic formats. The challenge of identifying
`prior art in an emerging technology area such as business methods will also be discussed.
`
`II. THE EVOLUTION OF PRIOR ART
`
`Both U.S. and foreign patents have, in the past, been relied upon as the primary form of prior art during the examination process.
`However, in business methods, examiners must now rely heavily on non-patent literature (NPL), especially those in electronically
`searchable databases. To ensure that the appropriate electronically searchable databases were being utilized by the examiners in
`Class 705, a Federal Register notice was published in June, 2001 listing the current core NPL databases searched by the
`business method examiners and asking for public comment. This was and remains an opportunity for the public to inform the
`USPTO of searchable databases currently not being used and relative to the technology of Class 705.
`
`A. NPL COMMERCIAL DATABASES
`
`A new examiner is taught how to search the U.S. patent databases (known as EAST and WEST). Additionally, business method
`examiners are given training on searching commercial databases to locate relevant NPL documents such as professional journals,
`magazines, and conference proceedings. The business methods examiners have access to over 900 Commercial Databases of
`NPL.
`
`Examiners can also request a commercial database search by the Electronic Information Center (EIC) which is a branch of the
`USPTOA's Scientific and Technological Center (STIC). The EIC staff includes professional searchers who perform the searches
`for these examiners
`
`NPL encompasses a wide variety of diverse published materials, such as textbooks, newspaper articles, magazine articles, sales
`brochures, professional journals, and conference proceedings. While a patent examiner can find prior art patents in the U.S.
`Patent database for many of the technologies examined at the USPTO, this database may be less useful for rapidly emerging
`technologies such as business methods. Thus, NPL searching is critical to the examination process in Class 705.
`
`http://www.uspto.gov/patents/resources/methods/aiplafal102paper.jsp
`
`11/24/2014
`Verizon Wireless
`Exhibit 1025-0001
`
`
`
`Prior Art in the Field of Business Method Patents- When is an Electronic Document a Pri... Page 2 of 4
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`B. ACTION PLAN SEARCHING INITIATIVES
`
`The March 2000 Director A's Action Plan included initiatives on mandatory searching for business methods. Examiners in Class
`705 now perform a mandatory search for all applications in Class 705 which includes a classified U.S. patent document search, a
`text search of U.S. patent documents, foreign patent documents, and a search of relevant NPL. The NPL search requires that
`search areas be correlated to the U.S. classification system for Class 705. In addition to these mandatory databases, the examiner
`also searches all appropriate databases from among the 900 available databases (e.g., Software Patent Institute [SPI], IEEE/IEE
`Electronic Library [IEL Online]).
`
`Ill. THE CHALLENGE OF PRIOR ART
`
`It can be extremely difficult to identify business methods that may have been common practice or common knowledge in an
`industry, but have not been documented properly, nor dated, nor disclosed in a form that is easily accessible by patent examiners.
`However, through communications and partnerships with industry, we are seeing improvements in this area.
`
`A. 37 CFR 1.105
`
`37 CFR 1.105 gives the examiner the authority to require certain information from the applicant 37 CFR 1.1 05(a)(1) states in part
`that A"the examiner or other Office employee may require the submissionAof such information as may be reasonably necessary to
`properly examine or treat the matter A" An example of the type of information that may be required under the rule is the existence
`of any relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.
`Invoking 37 CFR 1.105 can be helpful to examiners in understanding the invention and creating search strategies.
`
`B. THIRD PARTY SUBMISSION 37 CFR 1.99
`
`37 CFR 1.99 permits a member of the public to submit patents or publications relevant to a pending published application. These
`submissions under 37 CFR 1.99 may be entered in the application file if the requirements of the rule are complied with. The
`submission must be filed within two months of the publication date, or prior to the mailing of a notice of allowance whichever is
`earlier.
`
`IV. WHAT CONSTITUTES PRIOR ART?
`
`A. PICTURES AND DRAWINGS
`
`Pictures and drawings can be used as prior art to the extent they show sufficient structural claim element detail. See MPEP 2125.
`
`B. U.S. AND FOREIGN PATENTS
`
`Patents are relevant prior art for: the specification, non-preferred embodiments, disclosed examples, subject matter incorporated
`by reference, and anything that would have been reasonably suggested to one having ordinary skill in the art See MPEP 2127.
`
`C. U.S. PUBLISHED PATENT APPLICATIONS
`
`For applications filed on or after November 29, 2000 or filed prior to November 29, 2000 and voluntarily published, U.S. application
`publications are also available as prior art under 35 U.S. C. 102(e) as of their filing dates. See MPEP 706.02(a) and 2136.
`
`D. PRINTED PUBLICATIONS
`
`A reference is a printed publication if it is accessible to the public. A reference is proven to be a A" printed publicationA" A" upon a
`satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested
`and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate itA" In re Wyer, 655 F.2d 221, 210
`USPQ 790 (CCPA 1981 ). Orally presented papers can constitute a A" printed publicationA" if written copies of the paper(s) are
`made available without restriction to all interested persons. MIT v. AB Fortia, 77 4 F.2d 1104, 1109, 227 USPQ 428, 432 (Fed. Cir.
`1985).
`
`Internal documents intended to be confidential are not A" printed publicationsA" and are unavailable for use as prior art This is
`regardless of how many copies are distributed. Additionally, note that A"[w]hile distribution to government agencies and personnel
`alone may not constitute publicationAdistribution to commercial companies without restriction on use clearly does. A" Garrett v.
`United States., 422 F.2d 87 4, 878, 164 USPQ 521, 524 (Ct Cl. 1970).
`
`And finally, publication disseminated by mail is prior art on the date it is received by at least one member of the public. In re
`Schlittler, 234 F.2d 882, 110 USPQ 304 (CCPA 1956).
`
`E. DOCUMENTATION AND/OR ADMISSIONS BY APPLICANT
`
`ApplicantA's own work, available to the public more than one year prior to the filing date, is prior art. ApplicantA's disclosure of his
`or her work within the year before the application filing date of the invention cannot be used as prior art to reject patent claims.
`Additionally, submissions to other government agencies that are made public can be used as prior art e.g., U.S. Securities and
`Exchange CommissionA's EDGAR database http:/Avww.sec.gov/edgar.shtml (http://wv.wuspto.gov/cgi-bin/exrtconf/internet exitconf.pl?
`target=www.sec.gov/edgar.shtrnll
`
`F. PUBLIC USE OR ON SALE BAR (35 U.S.C. 102(b))
`
`An invention is in A"public useA" if that invention is publicly used without restriction or obligation of secrecy. A single sale or offer
`to sell the invention may constitute a bar to patentability. See MPEP 706.02(c) and 2133.03(b).
`
`G. ELECTRONIC PUBLICATIONS
`
`An electronic publication, like any publication, may be relied upon for all that it would have suggested to one having ordinary skill
`in the art. See MPEP 2121.01, 2123 and 2128.01. One should note that for a document to be considered a published document,
`that document need not necessarily be a printed document A"Given the state of technology in document duplication, data storage
`and data systems retrieval, the A'probability of disseminationA' of an item very often has little to do with whether or not it is
`A'printedA' in the sense of that word when it was introduced into the patent statutes in 1836.A" In re Wyer, 655 F.2d 221, 226, 210
`USPQ 790, 794 (CCPA 1981).
`
`http://www.uspto.gov/patents/resources/methods/aiplafal102paper.jsp
`
`11/24/2014
`Verizon Wireless
`Exhibit 1 025-0002
`
`
`
`Prior Art in the Field of Business Method Patents- When is an Electronic Document a Pri... Page 3 of 4
`
`An electronic publication, including an on-line database or Internet publication, is considered to be a A"printed publicationA" within
`the meaning of 35 U.S. C.§ 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the
`document relates. Thus, A"whether information is printed, handwritten, or on microfilm or magnetic disk or tape, etc., the individual
`who wishes to characterize the information as a printed publicationAshould produce sufficient evidence of its dissemination or that
`it has been otherwise available and accessible to persons concerned with the art to which the document relatesAA" Wyer, 655
`F.2d at 227, 210 USPQ at 795, Amazon. com v. Barnesandnoble.com, 73 F. Supp. 2d 1228, 53 USPQ 2d 1115, 1119 (WD. Wash.
`1999)
`
`In situations where the electronic version and the published version of the same or corresponding document differ appreciably,
`each version may need to be cited and relied upon as independent references based on what they each disclose. MPEP 2128.
`
`Note: Prior art disclosures on the Internet or in an on-line database are considered to be publicly available as of the date the item
`was publicly posted. This is provided that the item is dated and not temporal, and can be indexed for subsequent retrieval. An
`example of a temporal item is a web broadcast that cannot be saved, retrieved or printed, e.g., a live simulcast feed that is not
`archived, and a A"streamingA" audio or video that A"flashesA" across the screen.
`
`1. THE RULES ARE THE SAME FOR ELECTRONIC OR PRINTED PRIOR ART
`
`Regardless of whether the prior art is in an electronic or printed form, the rules govemng the use of the prior art are the same.
`There must be a satisfactory showing that the document(s) have been disseminated or otherwise made available to persons with
`interest and ordinary skill in the art.
`
`Examples: A document distributed internally within an organization, which was intended to remain confidential, does not qualify as
`a A" printed publicationA" just as a confidential internal website available only to specific users may not qualify as prior art
`However, documents downloaded from an online database or website that was only available for a limited time may be considered
`prior art if an adequate showing is provided that the database or website was properly dated and publicly accessible at the time of
`document retrieval.
`
`Note: The office policy requiring recordation of the field of search and search results weighs in favor of finding that Internet and on
`-line database references cited by the examiner are A"accessible to persons concerned with the art to which the document relates
`and thus most likely to avail themselves of its contents. A" In re Wyer, 655 F.2d at 221, 210 USPQ at 790. Office copies of an
`electronic document must be retained if the same document may not be available for retrieval in the future. This is especially
`important for sources such as the Internet and on-line databases. See MPEP 2128.
`
`H. WEBSITES AS PRIOR ART
`
`Websites can be used as references if posting dates can be found, and those posting dates predate the invention.
`
`I. SOFTWARE PRODUCTS AS PRIOR ART
`
`Software products can be relied upon as prior art as of the date they were first installed or released. In re Epstein, 32 F.3d 1559,
`31 USPQ2d 1817 (Fed. Cir. 1994). Additionally, database printouts of abstracts which were not themselves prior art publications
`were properly relied upon as providing evidence that the software products referenced therein were A"first installedA" or
`A"releasedA" more than one year prior to applicantA's filing date.
`
`V. RESOURCES BUSINESS METHODS EXAMINERS USE TO ESTABLISH WEBSITE DATES
`
`Examiners utilize commercial databases and the Wayback Machine to help establish website posting dates in order to qualify the
`website as prior art
`
`A. COMMERCIAL DATABASES
`
`Commercial Databases are often used by Examiners to discover dates for websites. Articles can be used to provide the date of
`the website, however, only information in the website that can be traced back to the date provided by the article can be relied
`upon.
`
`B. WAYBACK MACHINE
`
`The Wayback Machine finds archived web pages back to 1996 (each archived page is dated), and it covers many, but not all, web
`pages.
`Find archived pages for: http://attrasoft.com (http://www.uspto.gov/cqi-bin/exitconf/internet exitconf.pl?target-attrasoft.coml
`
`Electronic documents that are not themselves dated and have no posting date, but are/were available as links on a website that is
`archived on the Wayback Machine, are dated as of the archived date of the website.
`
`1. WAYBACK MACHINE- CAUTION
`
`Clicking on links within an archived web page does not always take you to another archive page. It may link you to a current web
`page.
`
`If A"web.archives.orgA" and the archive date is part of the URL, you are still in the archived pages. If it is not part of the URL, copy
`the URL you linked to, paste it into the Wayback Machine, and search for archived pages of that URL.
`
`VI. COMMUNICATE QUESTIONS/PROBLEMS
`
`It is important that the lines of communication between the USPTO and the applicant are open and productive. If you have any
`questions on how prior art has been applied in an Office action, please contact the examiner or the examinerA's supervisor.
`Additionally, if you have questions or problems that are not being resolved, don't hesitate to call the Technology Center Director.
`See Table 1 (#table1) for a list of manager contacts in Class 705.
`
`Table 1
`
`Group 3620- Class 705
`Director John J. Love (703)308-1020
`
`http://www.uspto.gov/patents/resources/methods/aiplafal102paper.jsp
`
`11/24/2014
`Verizon Wireless
`Exhibit 1 025-0003
`
`
`
`Prior Art in the Field of Business Method Patents- When is an Electronic Document a Pri... Page 4 of 4
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`AU 3621 -Business Cryptography
`SPE- Jim Trammell (703) 305-9768
`
`AU 3622- Incentive Programs/Coupons
`SPE A-- Eric Stamber (703) 8469
`
`AU 3623 - Operations Research, Voting,
`Transportation
`SPE- Tariq Hafiz (703)305-9643
`
`AU 3624- Finance & Banking
`SPE- Vincent Millin (703) 308-1065
`
`AU 3625- E-shopping
`SPE A- Wynn Coggins (703) 308-1344
`
`AU 3626- Health Care/Insurance
`SPE A-- Joe Thomas (703) 305-9588
`
`AU 3627- Point of Sale/Inventory/Accounting
`SPE A-- Robert Olszewski (703)308-5183
`
`AU 3628 -A- Finance & Banking
`SPE (acting)- Franzy Poinvil (703) 305-9779
`
`AU 3629 A- Business Processing, Cost/Price,
`Reservations
`SPE A-- John Weiss (703) 308-2702
`
`VII. CONCLUSION
`
`In addition to the traditional sources of prior art, examiners are now focusing on electronically searchable databases and other
`forms of NPL to examine patents in business methods. The USPTO has provided the tools and the resources to search hundreds
`of NPL sources, and the courts have provided guidelines on how some NPL is to be treated. Please refer to MPEP Chapter 2100
`for more detailed instruction regarding the application of prior art.
`
`This page is owned by Patents.
`
`Last Modified 7/4/2009 648 55 PM
`
`http:/ /www.uspto.gov/patents/resources/methods/aiplafal102paper.j sp
`
`11/24/2014
`Verizon Wireless
`Exhibit 1 025-0004
`
`