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IBM's US 7,571,105: issues of patent quality and exam quality

By Lawrence B. Ebert, Esq.

The blog "12:01pm Tuesday" ( Aaron R. Feigelson ) has a post ( IBM Upsells Patent to PTO ) on another problematic issued IBM patent, 7,571,105.

The post has the (ridiculous) base patent claim, but the following analysis from the post is even more interesting (bolding added):

Note the extra computer beef there in bold. IBM added most of that in a preliminary amendment "in an effort to expeditiously move this case to allowance." A nice preemptive move, particularly since it was made pre-Bilski (I've tried this trick myself post-Bilski).

But it turns out it wasn't necessary here. The amendment didn't make it in front of the Examiner before the mailing of her first office action (May 2008), in which she allowed the original, unamended, broad method claims. Oops... Things got squared away with an Examiner's amendment that incorporated the changes, along with a few others (notably, the "using a computer" modifiers were not in IBM's preliminary amendment).

So IBM tried again, submitting those very same original method claims in a child application (that became this week's '105 patent) and it was examined by the same Examiner...who, as noted above, rejected them under M-O-T in August 2008, just three months after she had allowed them in the parent case. Go figure. There must have been a "memo" that went out last summer that caused the change of heart.

Yes, the same examiner ALLOWED patent claims in a FIRST Office Action and LATER rejected the SAME claims. IBM, and David Kappos, have first hand evidence of an examination quality issue at the USPTO but one guesses no one in the US Senate discussed it.

Of course, all the claims raise a patent quality issue, but that's nothing new for IBM. (eg 20090083107 on outsourcing).

The post notes IBM has an active continuation application in the case; yet, the IT people claim of continuation application abuse. Will Mark Lemley ever write about this matter?

**See also

http://ipbiz.blogspot.com/2009/07/kappos-at-senate-on-july-29.html

"Patent quality index"?

Both Kappos and Alison Frenkel should apply a quality index to the '105 patent!

Full post as published by IPBiz on August 07, 2009 (boomark / email).