[LMB] Re: Gratitude OT: (was Re: list demographics)

[Nicholas Rosen]

Michael Bauminger wrote:

> On Tuesday, August 20, 2002 10:58 PM, "Nicholas Rosen"
> ndrosen at erols.com wrote:
> 
> ><snip> but I'll be happy to accept the public's
> > gratitude, should it ever hear of me, for all I
> > do to protect it from patent applications that
> > should not issue.
> 
> Thank you, Nicholas. I just wish you and your colleagues were doing
> more. The US Patent Office has been issuing a lot of patents that it
> should not have, recently. A good example of this is Amazon.com's
> patent on one-click shopping. I cannot imagine what they were
> thinking.

You're welcome.  I am not a spokesman for the US Patent Office,
and nothing I say should be accepted as in any way representing
the USPTO unless it's a signed Office action regarding a patent
application I've examined, which this post certainly isn't, but that
said --

I don't know what they were thinking, but I can imagine it.  They
may well have been thinking, "I've done the search, and I can't find
any good prior art against this claim element, so I'm going to allow 
the claim."

They were Demetra Smith, assistant examiner, and James Trammell,
supervisory patent examiner, both friends of mine, and people whom
I believe to be competent.  Demetra left the Patent Office to take a
job elsewhere (IIRC, for some law firm, or some company's intellectual
property department), probably at a substantially higher salary.  Jim
Trammell is still flourishing as a supervisor, and was my supervisor
until the business methods work group was expanded and reshuffled.

There was litigation over the Amazon one-click patent, and the
last I heard, the courts had *not* overturned it.  I suggest that
you may want to read the actual patent, and especially the claim
language, not just judge by the phrase "one-click patent."  If
you know of someone doing the same thing before the inventors'
filing date, the legal departments of a number of businesses
involved in electronic commerce will want to hear from you.  In
fact, they'll be interested even if you just know of several sources
which can plausibly be combined to yield what is claimed by the
Amazon.com patent.  However, they'll be unlikely to reward you
just for saying, "It all sounds obvious to me now."  When a patent
examiner says anything close to that, patent attorneys are apt to
scream, "Impermissible hindsight reasoning!"  If "It all sounds
obvious to me now" were a valid and sufficient rejection, I could
get my work done a lot faster. 
 
Please forgive me if this comes off as snarky.  I don't mean to
be impolite, but I do want to point out that patent law has its
complications, and while the Patent Office isn't infallible, a
decision you don't like is not necessarily a mistake.  It may be a
correct application of the appropriate statutes and precedents
to the situation at hand.  Granted, the situation at hand may be
something never contemplated by the Congressmen who wrote
the law and the judges who have interpreted it, but the Patent
Office, of its nature, must deal with new situations.

> We're just lucky that they didn't give Amazon a patent on
> online credit card acceptance, as well.

Actually, they do have patents covering particular techniques
for accepting and transmitting credit card numbers -- try
searching at www.uspto.gov -- but not, of course, a general
patent on online credit card acceptance.


Regards,
Nicholas Rosen, patent examiner

Standard disclaimers apply.  I am not speaking for the United
States Patent Office, and nothing I say here should be relied
upon in making patent-related legal or business decisions.