USPTO Examiner Rejected 1-Click Claims As "Obvious"

theodp writes "Faced with a duly unimpressed USPTO examiner who rejected its new 1-Click patent claims as 'obvious' and 'old and well known,' Amazon has taken the unusual step of requesting an Oral Appeal to plead its case. And in what might be interpreted by some as an old-fashioned stalling tactic, the e-tailer has also canceled and refiled its 1-Click claims in a continuation application. As it touted the novelty of 1-Click to Congress last spring, Amazon kept the examiner's rejection under its hat, insisting that 'still no [1-Click] prior art has surfaced.' The Judiciary Committee hearing this testimony included Rick Boucher (VA) and Howard Berman (CA), both recipients of campaign contributions from a PAC funded by 1-Click inventor Jeff Bezos, other Amazon execs, and their families."

Comments

Computers automate work

[Anonymous Coward]

Probably 99% of patents where computers do work that could be done tediously and manually should be shot down.

Re:Computers automate work

[dosquatch]

A computer is a general-purpose machine. A computer's purpose is to process an organized collection of instructions to do a specific thing. These instructions are called "software". A computer without software is a doorstop. Patenting a particular collection of instructions (even if they do something really, really interesting) is, in effect, patenting the use of a thing for its intended purpose.

It would be akin to patenting "a method for dialling my phone number" and then going after royalties every time my phone rings. Or "a method for using an automobile to get to work" and suing everyone in rushhour traffic.

Re:Computers automate work

[fmstasi]

Well, that's the beauty of Wikipedia: I read the section of the article you quoted, and in this case I don't trust the author. Here is the text of the cited Article 52 (http://www.european-patent-office.org/legal/epc/e /ar52.html):

Article 52
Patentable inventions
(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
(d) presentations of information.
(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.
(4) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body shall not be regarded as inventions which are susceptible of industrial application within the meaning of paragraph 1. This provision shall not apply to products, in particular substances or compositions, for use in any of these methods.

So, "programs for computers" (and algorithms, mind you) are not patentable, period. IF you use a program for computers in a LARGER system, the system as a whole is (maybe) patentable. The point is not whether you solve a "technical problem" with the program; what else could you be doing, turning the computer's fingers?...

Re:Computers automate work

[crc32]

Under your logic, nothing at all could be patented. After all, a gear is an "instruction" for the conversion or translation of angular motion. All machines are merely sets of instructions, at some level of abstraction. Patents are designed to cover the use of things. See section 101 of the patent act. PS: This is not to say that software patents are good/bad for other reasons.

Re:Computers automate work

[dosquatch]

That's why the USPTO started allowing software patents in 1981.

Technically, they didn't. Software is not, nor has it ever been, patentable as software. Software patents all come in under the ruling that allows business methods to be patented. That's why they all begin "A method for [...]" and go to such lingual gymnastics to avoid using the word "algorithm" ever.

It might seem that this point is splitting a hair, but this happens to be a very important hair.

Re:Computers automate work

[Smidge204]

That argument doesn't quite hold up.

Discrete machine elements are the means to execute an instruction, not the instruction itself.

The gear or linkage is the element that enables execution of the instructions and should be patentable. The speed, position or displacement of the gear is the instruction and should not be patentable. To get a different output for the same input, you must alter the elements to the extent that it can no longer be considered the same device. Unique devices can qualify for a patent.

The transistor is the element that enables execution of instructions and should be patentable. The state of charge on a transistor is the instruction and should not be patentable. To get a different output for the same input, you need only change the state of charge on the transistors* - but the physical state of the machine is identical.

The important distinction is the seperation of the physical device and it's purpose from the conditions it operates under. Two devices that serve the same purpose but are physically unique should be patentable. Two devices that are physically identical but used for different purposes should be patentable.** Altering the operating conditions of the same device to get a different result is obvious and should not be patentable.

=Smidge=

* - Does not count things like a new circuit design, which would produce a unique device and thus be patentable.

** - Providing that new use is not particularly "obvious."

Re:Computers automate work

[Bloke down the pub]

Ooops. Here comes Microsoft with a program that looks, acts, and feels EXACTLY the same. Microsoft makes millions and millions. Your father makes... nothing. You get nothing. Your father hires a lawyer, spends hundreds of thousands of dollars chasing Microsoft around in court, Microsoft gets away without paying a dime. That's what life would be like without software patents.

Not really, if it's that close a ripoff wouldn't it be covered by copyright? It's really just the same as rewriting a novel and changing the hero's name from Jake Grafton to Jack Griffin and sticking a different picture on the cover.

Re:Computers automate work

[Laur]

Also, software is already covered by copyright, so protecting it with patents also is overkill.

Even worse, software can (and frequently is in the US) protected by copyright, trade secret, and patents, all at the same time. In addition, vendors try to restrict your rights even further by draconian licenses. Overkill indeed.

Re:Computers automate work

[dgatwood]

Your argument fails to take into account the purpose of patents: to promote the progress of science and useful arts. Almost anything patentable in the physical space is doing something in a new way. Seeing the device is not enough to understand how it works, and the patent is designed to force the "how" to become public.

In ssoftware, with the exception of mathematical algorithms (which are excluded from patents), the "how" part is always obvious to someone skilled in the art. Tell a skilled programmer what something does, and they will be able to write a piece of software that does the same thing. There is nothing for the human race as a species to gain from forcing that knowledge to be public. Whether the "how" is "implements the foo algorithm" or "supports purchasing without a shopping card", as soon as the question is asked, the solution is always obvious.

Thus, the question is whether it should be reasonable to allow patents on something based solely on who did something first without regard to whether any first-year college grad would have done the same thing given the same set of problems. I would contend that the answer is no, that software should not be patentable because the entire process for creating software is obvious except for the very specific details of the source code.

That said, if you want software patents, I would be willing to concede their usefulness if and only if they provide substantial "how" information that could not have been guessed---in other words, if applying for a patent meant making the source code for the patented portion open source and outside the scope of copyright. Copyright or patents: choose one. Allowing software to be both copyrighted and patented is wrong. There is no reason why software should have special protection above and beyond all other technical fields.

As for one-click, no one else implemented it before because it was a fundamentally moronic idea. The last thing I want is to be able to spend money just by clicking on a link. I want some reasonable protection against accidental spending, and I want verification against somebody sitting down at my machine and buying something without me knowing it. No one did it before because the usefulness of the idea was not obvious, not because the idea or design itself wasn't obvious. There is a difference.

Just my $0.02.

wtf?

[User 956]

'still no [1-Click] prior art has surfaced.'

How can something surface when you're actively trying to drown it?

Re:wtf?

[Anonymous Coward]

09 f9 11 02 9d 74 e3 5b d8 41 56 c5 63 56 88 c0

I remember hearing about the 1 click patent

[burris]

Back in '95 or '96. We all thought it was so plainly obvious. In fact, the key thing that makes one-click shopping possible, the browser cookie, was put into the browser specifically for the purpose of associating a browser/session with stored data on the back end (payment/shipping details, purchase list.) The reason nobody did it is because engineers thought it was a BAD IDEA. Forcing people to enter their credit card and billing address details was a form of SECURITY. Being able to purchase things with one click was just too easy. Someone could come up to your computer and ring up a bunch of charges. Keeping payment details for thousands of customers on your computer was deemed too large a risk. It wasn't until the Marketeers at Amazon thought this was a good idea that it came about.

However, I think the fact that the cookie support was already in the browser is proof that the claims of the patent were obvious.

Re:I remember hearing about the 1 click patent

[catbutt]

Well if what you say is true, no one should really complain if no one but Amazon can do it. After all, its a bad idea.

Just sayin'.

Re:I remember hearing about the 1 click patent

[caffeinemessiah]

Forcing people to enter their credit card and billing address details was a form of SECURITY.

It seems you're using security as an argument against implementing 1-click. If thats the case, the argument isn't very well thought out. Even without 1-click, most sites offer to save your credit card and billing address, so it's just a matter of selecting which credit card to use without typing it in again. Furthermore, if someone comes up to your computer and rings up a bunch of stuff with 1-click, (a) the stuff's coming to your address anyway so they better be snooping your postal mail too (b) they would have to be authenticated with a username/password first to establish the cookie/session, unless you're in the habit of leaving un-expired sessions open on a public terminal and (c) if they had (b), they could do exactly the same thing without 1-click with ... TADA... just a few more clicks and your saved billing info!

So it seems your reasons for not pioneering 1-click have more to do with saving credit/billing information on your own supposedly secure server rather than with the idea of 1-click itself. I don't see how that translates to 1-click being a BAD IDEA.

Re:I remember hearing about the 1 click patent

[seanadams.com]

The reason nobody did it is because engineers thought it was a BAD IDEA.

I think the 1-click patent is a crock for many reasons, but to play devils advocate here: this point actually undermines the obvious argument, because it suggests that people in the field thought it could not be done. When prior art teaches _away_ from doing something in a particular way, and the patent in question finds a way to "make it work" in spite of that, then the solution is likely to be deemed non-obvious. From the Teleflex ruling;

The Court relied upon the corollary principle that when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious. Id., at 51-52. When Adams designed his battery, the prior art warned that risks were involved in using the types of electrodes he employed. The fact that the elements worked together in an unexpected and fruit-ful manner supported the conclusion that Adams's design
was not obvious to those skilled in the art

Re:I remember hearing about the 1 click patent

[FST777]

This patent is not the point. Software patents in general are the point. Especially those which are so patently obvious that any examiner who deems it patentable should be taken out and shot.

Re:I remember hearing about the 1 click patent

[mysidia]

The reason nobody did it is because engineers thought it was a BAD IDEA. I think the 1-click patent is a crock for many reasons, but to play devils advocate here: this point actually undermines the obvious argument, because it suggests that people in the field thought it could not be done. When prior art teaches _away_ from doing something in a particular way, and the patent in question finds a way to "make it work" in spite of that, then the solution is likely to be deemed non-obvious. From the Teleflex ruling;

Not really. It's different to say that people in a field to know how something could work and consciously decide it SHOULD NOT be done than to think that something CAN NOT be done.

One-click is obvious, from a marketing/business method point of view. From a technological point of view, the way it can be done is obvious. It is at the point of risk assessment, "is the technology safe", where enginners would conclude it should not be done, despite it being an obvious system.

Amazon's patent is not about a way of making one-click secure or safe. It is insecure, and it suffers from the problems that would lead engineers to believe it should not be done. It is risky in the sense that if you leave a browser open, your 12-year old could possibly get on your computer, find some $1000 product they want, hit the one-click buy, and complete an order using your saved credentials. Or if your next door neighbor figures out your one-click-site password, they could possibly one-click order some toy, and intercept the delivery.

It was just as much a security risk back then as it is today, and just as obvious then as today. The difference is, since one site chooses to do it, customers require it now -- they know how to complete a transaction on Amazon, due to the site's popularity, and their familiarity with the process. Over time, people have come to accept that it's OK to save their CC information with a website, DESPITE the substantial risk of id theft involved in allowing any merchant to retain that sort of information.

If customers have to enter their details on other sites, repeatedly, then they will be inconvenienced, so without considering the security implications: they will tend to stay with the sites that save their credentials, because it provides an upfront convenience, and the customers aren't thinking who use one-click aren't thinking enough about the security. Customers don't tend to think these things through, they offer a competitive advantage, despite the defects.

Certainly Amazon does not advertise one-click can possibly pose a security risk, despite the fact that it may.

Re:I remember hearing about the 1 click patent

[Colin Smith]

So it seems your reasons for not pioneering 1-click have more to do with saving credit/billing information on your own supposedly secure server rather than with the idea of 1-click itself. I don't see how that translates to 1-click being a BAD IDEA. Um. Because 1 click requires one to store the credit card information in database.

OK, try to follow me here. If it's not a great idea to store credit card information in a potentially exploitable database and 1-click requires said store of credit card information in said http://news.com.com/2100-1023-236815.html">exploit able database it follows that 1-click is a bad idea.

This is what is often called logic.

Re:I remember hearing about the 1 click patent

[el americano]

I tried this feature once. My order was promptly shipped to a prior address. I guess there's more than one reason to have an intermediate step before confirming the order.

One click is now turned off for me.
I wonder if that's part of the patent, "AND you can turn it off. Oooooh."

Re:I remember hearing about the 1 click patent

[decsnake]

Certainly Amazon does not advertise one-click can possibly pose a security risk, despite the fact that it may.

d'ya think that the fact that its not on by default might be a hint to folks that its not secure? And that they know it?

No prior art is hand waving

[Wizarth]

"No prior art" is being waved about as being the only significant aspect, and they are hoping no-one realizes the patent was rejected due to being obvious (or, not non-obvious).

As prior art is the usual counter-argument to patents, since it can be clearly proven to someone without expertise in the field, it seems unusual that one has actually been rejected due to being obvious. And since people are so used to hearing about prior art being the significant factor, it may sway a few people.

Re:No prior art is hand waving

[seanadams.com]

True in the past, but the tides have started to turn as of the Teleflex ruling. Obviousness has for a long time been very difficult to show because the courts had used a too rigid definition. However, SCOTUS has said that merely using components in a way that their combination yields only the expected result could be sufficient, and has also encouraged the use of "common sense" in determining obviousness, as opposed to the very narrow test. I hope to see a lot more BS patents like this invalidated in the coming years.

Prior art or not

[Opportunist]

If something is SO obvious that any moron can come up with it, it deserves no patent.

Patents exist so investition in research and development can be reimbused. If you have no expense for research and development, you deserve no patent.

This is only the start

[deblau]

Expect more applications to get section 103 "obviousness" rejections, in the wake of KSR v. Teleflex.

Standard Patent Prosecution Procedure

[aimless]

Nothing Mentioned here is out of the ordinary. All applications are rejected at least once...if it is not rejected your council has done something terribly wrong and drawn narrow-scope claims that will not yield any protection or competitive advantage. Cancellation and continuation are standard strategy as well. It would be more interesting to find that they were given a divisional; implying validity.

I thought the one-click patent was brought to its knees by the /. community riding on the back of an old ski-lift ticket system as prior art.

-A

"Put it on my tab"

[dfoulger]

One-click has been around as long as bartenders have been extending credit to known customers, but I suppose you can't see prior art rising when its obscured by a head of foam.

Hacking Congress ... again

[supersnail]

In much the same way that script kiddies and east european phishers all know how to hack PCs. All of corporate America knows how to hack congress.

Most hacks require only simple tools: PACs, straight contibutions, that important meeting with the lobbyist that needed to be in the lobby of a Hawian hotel.

Some hacks require more subtle tools: "Where was I gonna site that factory - remind me?", "You know if you ever get tired of congress and want a real job.", "I have absolutly no control over the editors of my newspaper/TV station if they print bad things about you thats tough."

It happens so regularly it doesnt even raise eyebrows anymore. So Bezos will probably lose his patents until congress changes the law so he can get them back.

Wouldnt it be much more efficient and simpler to introduce a "pay per vote" system. Represenitives could auction of votes on e-bay, and, the house seat themselves could be auctioned by the higest bidder. (This is a varation on tax farming which served to Ottoman empire well for 600 years).

The sad thing is that while all this malarky is going on Wolfowitz and Bolten are lecturing the rest of the world about the evils of corruption.

Amazon is a victim of the patent system, not v-v

[joe_n_bloe]

Corporations have never determined the direction of the patent system. Corporations are legally and ethically bound to pursue business practices that are in the interests of shareholders. When the software patent genie was let out of the bottle in the 1980s, software companies had absolutely no option except to pursue their own patents vigorously.

Amazon has never done the wrong thing by pursuing the "one-click" patent. Patents, especially software patents, are interpreted very narrowly. What sounds to a layman as a "patent on online sales" (for example) turns out to be much more specific in print, and more importantly has been interpreted very narrowly by Federal courts. You can't patent the process of online sales, but you can patent a detail of it. When a court sets out to determine the validity of such a detail, it doesn't examine it in the context of "is it a logical implementation of a larger, obvious system." The court sets out to determine whether it is a detail that someone else has used. Basically, as the law has been interpreted for the past two decades, whether something has already been patented is the greatest determining factor on whether it can be patented. That isn't how a layperson reads the law, and in fact it is probably contrary to the intent of the law. But that's how it is.

The US Supreme Court has indicated an interest in changing the interpretation of software and process patents so that courts must interpret patents and patent applications in a way that sounds more in the spirit of the law. I don't think most conventional companies oppose this, because the expense and uncertainty involved in patent applications, cross-licensing, and God forbid, litigation, is considerable. Patent holding firms are probably distressed about it, but I think most people perceive patent holding companies as an aberration.

The fact that Amazon has its "one-click" patent means that Amazon was doing the right thing as far as the system is concerned. It also means that the system is counterintuitive and, a majority of people probably think, out of whack with the original intent of US patent law.

Re:Boucher no slouch

[CptNerd]

This is Slashdot, where you can be praised to the stars one week and subject to "Two Minute Hate" the next. As far as contributions go, the conventional "wisdom" is that they always corrupt, no exceptions. Therefore, we should only elect people who have enough money to afford the election. Wait, no, we should never allow people to contribute to campaigns. No, wait, wait, we should only allow campaign contributions from the "right" people. Hm, well, we should all be taxed to pay for anyone and everyone who wants to run for office. Um, that is, not *everyone* or *anyone*, only the ones who "qualify" to run.

Anyway, Boucher is now one of the "bad guys" because he took money from the current "bad guys". Next week we will be at war with Eastasia again...

Re:Amazon is a victim of the patent system, not v-

[Aladrin]

Get your head out of your ass for a moment.

Just because something is legal and possible does NOT make it 'right'. If it was found that it was legal to kill people by some method, does that make it right for everyone to kill everyone they can by that method? Too extreme? How about a corporation that takes advantage of the tax system to pay as almost no taxes, so that everyone else has to pay their share? How about police that run reds lights in their cars because it's legal for them to, even when they don't have the need? How about a teacher that hands out religious pamphlets right outside the school grounds? How about someone standing outside a playground and screaming at the children?

I bet I just hit on the sensibilities of most of the people that read this. There's plenty of examples of things that are totally legal, but not 'right' in any way.

Amazon may be within their rights to attempt to patent this, but that does not mean they are 'doing the right thing' in any way shape or form. Amazon should be considering their customers in this. If it angers your customers, it's probably not a good idea. Since any global online retailer's goal is to have the whole world as customers, they should be thinking about everyone.

I'll tell you why

[djw]

If someone develops a truly novel business model, why shouldn't they be able to patent it and profit from it, just as if they had developed a new machine?

Because if the only environment where that business model can be successful is an artificial one in which the government has restrained all competition, then it's not really a business model.

Machines are different because you have to not only design and build them but also develop mass production processes, and that takes time and money. Business methods have to succeed or fail on their own merits, or we don't have capitalism anymore.