# **A USPTO WHITE PAPER**

# 

# 

# **AUTOMATED FINANCIAL OR MANAGEMENT DATA PROCESSING METHODS (BUSINESS METHODS)**

###  {#section-2 .unnumbered}

###  {#section-3 .unnumbered}

#  

# **TABLE OF CONTENTS**

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<tbody>
<tr class="odd">
<td colspan="5">Executive Summary</td>
<td colspan="27"></td>
<td></td>
<td>iv</td>
</tr>
<tr class="even">
<td></td>
<td colspan="31"></td>
<td></td>
<td></td>
</tr>
<tr class="odd">
<td>I. Introduction</td>
<td colspan="31"></td>
<td></td>
<td>1</td>
</tr>
<tr class="even">
<td colspan="32"></td>
<td></td>
<td></td>
</tr>
<tr class="odd">
<td colspan="20">II. Origins of Financial/Management Business Patents –
Product, Apparatus and Method</td>
<td colspan="12"></td>
<td></td>
<td>2</td>
</tr>
<tr class="even">
<td colspan="30"></td>
<td colspan="2"></td>
<td></td>
<td></td>
</tr>
<tr class="odd">
<td colspan="21">III. Class 705 – Modern Business Data Processing</td>
<td colspan="11"></td>
<td></td>
<td>5</td>
</tr>
<tr class="even">
<td colspan="12">A. Type of Technology</td>
<td colspan="20"></td>
<td></td>
<td>5</td>
</tr>
<tr class="odd">
<td colspan="32"></td>
<td></td>
<td></td>
</tr>
<tr class="even">
<td colspan="19"><p id="b.-engineering-in-support-of-business"
class="heading">B. Engineering in Support of Business</p></td>
<td colspan="14"></td>
<td>6</td>
</tr>
<tr class="odd">
<td colspan="32"></td>
<td></td>
<td></td>
</tr>
<tr class="even">
<td colspan="16">C. Patent Assignees 1977-1999</td>
<td colspan="17"></td>
<td>6</td>
</tr>
<tr class="odd">
<td colspan="25"></td>
<td colspan="8"></td>
<td></td>
</tr>
<tr class="even">
<td colspan="15">D. Patent Application Filings</td>
<td colspan="18"></td>
<td>7</td>
</tr>
<tr class="odd">
<td colspan="25"></td>
<td colspan="8"></td>
<td></td>
</tr>
<tr class="even">
<td colspan="11">IV. Resources In Transition</td>
<td colspan="22"></td>
<td>8</td>
</tr>
<tr class="odd">
<td colspan="10">A. Patent Examiners</td>
<td colspan="23"></td>
<td>8</td>
</tr>
<tr class="even">
<td colspan="25"><ol type="1">
<li><p>Primary and Non Primary Examiners</p></li>
</ol></td>
<td colspan="8"></td>
<td>8</td>
</tr>
<tr class="odd">
<td colspan="15"><ol start="2" type="1">
<li><p>Internal Transfers</p></li>
</ol></td>
<td colspan="18"></td>
<td>8</td>
</tr>
<tr class="even">
<td colspan="3"><p id="section-5" class="heading"></p></td>
<td colspan="30"></td>
<td></td>
</tr>
<tr class="odd">
<td colspan="3"><p id="b.-hiring" class="heading">B. Hiring</p></td>
<td colspan="30"></td>
<td>9</td>
</tr>
<tr class="even">
<td colspan="27"><blockquote>
<p>2000 Hiring – Preparation for Transition</p>
</blockquote></td>
<td colspan="6"></td>
<td>9</td>
</tr>
<tr class="odd">
<td colspan="29"><p id="section-6" class="heading"></p></td>
<td colspan="4"></td>
<td></td>
</tr>
<tr class="even">
<td colspan="29"><p
id="c.-results-to-date-of-efforts-to-increase-examiner-resources"
class="heading">C. Results to Date of Efforts to Increase Examiner
Resources</p></td>
<td colspan="4"></td>
<td>9</td>
</tr>
<tr class="odd">
<td colspan="26"><blockquote>
<p>1. Profile – An Appropriate Balance</p>
</blockquote></td>
<td colspan="7"></td>
<td>9</td>
</tr>
<tr class="even">
<td colspan="31"><blockquote>
<p>2. Business Industry Experience – Shifting the Knowledge Base</p>
</blockquote></td>
<td colspan="2"></td>
<td>10</td>
</tr>
<tr class="odd">
<td colspan="28"></td>
<td colspan="5"></td>
<td></td>
</tr>
<tr class="even">
<td colspan="25" rowspan="2"><blockquote>
<p>D. Scientific &amp; Technology Information Center – Electronic
Information Center (STIC-EIC)</p>
</blockquote></td>
<td colspan="8"></td>
<td rowspan="2">11</td>
</tr>
<tr class="odd">
<td colspan="8"></td>
</tr>
<tr class="even">
<td colspan="25"></td>
<td colspan="8"></td>
<td></td>
</tr>
<tr class="odd">
<td colspan="7">V. Improving Quality</td>
<td colspan="26"></td>
<td>12</td>
</tr>
<tr class="even">
<td colspan="6">A. Introduction</td>
<td colspan="27"></td>
<td>12</td>
</tr>
<tr class="odd">
<td colspan="25"></td>
<td colspan="8"></td>
<td></td>
</tr>
<tr class="even">
<td colspan="14"><h2 id="b.-hybrid-examiner-trainer">B. Hybrid Examiner
Trainer</h2></td>
<td colspan="19"></td>
<td>12</td>
</tr>
<tr class="odd">
<td colspan="25"></td>
<td colspan="8"></td>
<td></td>
</tr>
<tr class="even">
<td colspan="4"><h2 id="c.-training">C. Training </h2></td>
<td colspan="29"></td>
<td>13</td>
</tr>
<tr class="odd">
<td colspan="11"><blockquote>
<p>1. Procedural</p>
</blockquote></td>
<td colspan="22"></td>
<td>13</td>
</tr>
<tr class="even">
<td colspan="22"><blockquote>
<p>2. Workgroup 2760 Training Manual</p>
</blockquote></td>
<td colspan="11"></td>
<td>13</td>
</tr>
<tr class="odd">
<td colspan="18"><blockquote>
<p>3. Search Strategy Training</p>
</blockquote></td>
<td colspan="15"></td>
<td>14</td>
</tr>
<tr class="even">
<td colspan="21"><blockquote>
<p>4. Commercial Database Searching</p>
</blockquote></td>
<td colspan="12"></td>
<td>14</td>
</tr>
<tr class="odd">
<td colspan="24"><blockquote>
<p>5. March 2000 Initiatives on Searching</p>
</blockquote></td>
<td colspan="9"></td>
<td>15</td>
</tr>
<tr class="even">
<td colspan="20"><blockquote>
<p>Class 705 Core Databases</p>
</blockquote></td>
<td colspan="13"></td>
<td>16</td>
</tr>
<tr class="odd">
<td colspan="9"><blockquote>
<p>6. Technical</p>
</blockquote></td>
<td colspan="24"></td>
<td>20</td>
</tr>
<tr class="even">
<td colspan="26"><blockquote>
<p>7. Field Trips, Conferences and Seminars</p>
</blockquote></td>
<td colspan="7"></td>
<td>20</td>
</tr>
<tr class="odd">
<td colspan="23"><blockquote>
<p>8. March 2000 Initiatives on Training</p>
</blockquote></td>
<td colspan="10"></td>
<td>20</td>
</tr>
<tr class="even">
<td colspan="25"></td>
<td colspan="8"></td>
<td></td>
</tr>
<tr class="odd">
<td colspan="26"><h2
id="d.-march-2000-initiative-for-additional-review">D. March 2000
Initiative for Additional Review</h2></td>
<td colspan="7"><h2 id="section-7"></h2></td>
<td><h2 id="section-8">21</h2></td>
</tr>
<tr class="even">
<td colspan="25"></td>
<td colspan="8"></td>
<td></td>
</tr>
<tr class="odd">
<td colspan="17"><h2 id="e.-measures-of-quality-efforts">E. Measures of
Quality Efforts</h2></td>
<td colspan="16"></td>
<td>21</td>
</tr>
<tr class="even">
<td colspan="13"><h3 id="in-process-review-review"
class="unnumbered">In-process Review<br />
review</h3></td>
<td colspan="20"><h3 id="section-9" class="unnumbered"></h3></td>
<td><h3 id="section-10" class="unnumbered">21</h3></td>
</tr>
<tr class="odd">
<td colspan="25"></td>
<td colspan="8"></td>
<td></td>
</tr>
<tr class="even">
<td colspan="8">VI. Customer Partnership Plan</td>
<td colspan="25"></td>
<td>22</td>
</tr>
<tr class="odd">
<td colspan="25"></td>
<td colspan="8"></td>
<td></td>
</tr>
<tr class="even">
<td colspan="2">VII. Conclusion</td>
<td colspan="31"></td>
<td>22</td>
</tr>
<tr class="odd">
<td colspan="25"></td>
<td colspan="8"></td>
<td></td>
</tr>
<tr class="even">
<td colspan="3">Appendix A - G</td>
<td colspan="30"></td>
<td>23</td>
</tr>
<tr class="odd">
<td colspan="25"></td>
<td colspan="8"></td>
<td></td>
</tr>
</tbody>
</table>

**EXECUTIVE SUMMARY**

Recently there has been a marked increase in public attention to the
operations of the United Sates Patent and Trademark Office (USPTO), and
specifically, the workgroup responsible for examining patent
applications in automated business data processing technologies, Class
705. On March 29, 2000, the USPTO announced a plan to improve the
quality of the examination process in technologies related to electronic
commerce and business methods. This white paper discusses the patent
history of business data processing, the transition this technology is
beginning, and the initiatives the USPTO is engaged in to keep pace with
this transition and to improve quality in the examination of this
technology.

Origin and Evolution -- Business data processing has followed an
unbroken evolutionary path from mechanical technology up to today's
software controlled microprocessors. Automated business data processing
itself dates back over a hundred years. The business method claim format
has been used in various forms throughout that period. The increase in
its use today is an inevitable end result of our progress over the last
century.

Class 705 (Modern Business Data Processing) -- This class contains
numerous small groupings and four major groupings directed to specific
and general business data processing machines and methods. These
machines and methods still heavily reflect the electrical and computer
engineering that underlay them. Class 705 saw about 1% of the total
patent applications filed at the USPTO in FY 1999. Its 2658 applications
did not even place it among the top five Communications and Information
Processing technologies.

Resources In Transition -- In 1998, the [State Street]{.underline}
decision triggered an awareness of the "business method claim" as a
viable form of patent protection. We are at the beginning of a change in
the approach to how inventors choose to describe their inventions. This
change is in turn driving a shift in the required examiner knowledge
base for the examination of Class 705 inventions. As it has for over a
century, the USPTO is responding appropriately and is adapting its
knowledge base as the needs of business patent examination evolve.

Improving Quality -- It is universally agreed that high quality
examination by USPTO Patent Examiners must be ensured. Quality
initiatives are continuously updated. This white paper highlights
initiatives in place prior to March 2000, as well as, quality
initiatives announced in March by Q. Todd Dickinson, Under Secretary of
Commerce for Intellectual Property and Director of the United States
Patent and Trademark Office.

Customer Partnerships -- These are important to improving quality as the
USPTO gauges the future needs of Class 705. Customers will know first
the future evolution of business data processing technology. Customers'
application filings will control the transition of patent application
format towards the "business method form" and any future shift that will
be required in the knowledge base of Class 705 examiners. They are also
in a unique position to assist in providing training needed as part of
adapting the knowledge base.

#  {#section-11}

# **I. INTRODUCTION**

On September 23, 1975, Ivan E. Sutherland of the Rand Corporation
received the 1975 Award for Outstanding Accomplishment of the Systems,
Man, and Cybernetics Society. In his acceptance address entitled
"Computerized Commerce"[^1], Mr. Sutherland states "What we should be
building is a system of computerized commerce: a "smart" communications
network which can remember, process, forward, remind and schedule as
well as merely communicating". Mr. Sutherland continues "Computers will
become the repositories of manufacturing know-how. Parts lists,
purchasing specifications, lists of qualified vendors, design
information, fabrication directions, and production history will all be
stored in computers. Individuals will be free to take on new tasks more
easily than ever before, because the instructions required for those
tasks will be available through a variety of on-line computer
terminals".

In the mid-1990s, Mr. Sutherland's proposed "smart" communication
network, now called "Electronic Commerce" or "e-commerce" began finding
its niche in the business world. In recent years, the growth of the
business technologies, especially the electronic commerce business
industry has been phenomenal. This growth has resulted in an increase of
business technology patent application filings. Concomitant with this
increase in filings there has been a marked increase in public attention
to the operations of Workgroup 2760 of the United States Patent and
Trademark Office (USPTO) currently responsible for examining patent
applications in business related data processing methods and
technologies, Class 705.

One prominent portion of business method patents is the area of
"Automated Financial/Management Business Data Processing Method
Patents." Such automated business methods are found in U.S. Patent Class
705.

# **II. ORIGINS OF FINANCIAL/MANAGEMENT BUSINESS PATENTS - PRODUCT, APPARATUS AND METHOD**

The creation of a patent system was one of the acts performed by the
First Congress of the United States. The first patent statute was passed
on April 5, 1790, by the Congress of the twelve United States and signed
into law on April 10 by President Washington. Rhode Island ratified the
Constitution and joined the Union 49 days later on May 29, 1790. The
"Commissioners for the Promotion of the Useful Arts" granted the first
United States patent on July 31, 1790. The Commission consisted of
Secretary of State Thomas Jefferson, Secretary of War Henry Knox, and
Attorney General Edmund Randolph. This first patent was to a chemical
method for making potash and pearl ash.[^2]

Financial apparatus and method patents date back to this period. These
early financial patents were largely paper-related products and methods.
The first financial patent was granted on March 19, 1799, to Jacob
Perkins of Massachusetts for an invention for "Detecting Counterfeit
Notes." All details of Mr. Perkins invention, which we presume was a
device or process in the printing art, were lost in the great Patent
Office fire of 1836. We only know of its existence from other sources.
Mr. Perkins was perhaps our young nation's most prolific early inventor
with nearly 1% of all patents from our first quarter century. Upon his
death in 1849, his obituary filled three pages of the Commissioner of
Patents annual report to Congress.[^3] The first financial patent for
which any detailed written description survives was to a printing method
entitled "A Mode of Preventing Counterfeiting" granted to John Kneass on
April 28, 1815. The first fifty years of the U.S. Patent Office saw the
granting of forty-one financial patents in the arts of bank notes (2
patents), bills of credit (1), bills of exchange (1), check blanks (4);
detecting and preventing counterfeiting (10), coin counting (1),
interest calculation tables (5), and lotteries (17).[^4] Financial
patents in the paper-based technologies have been granted continuously
for over two-hundred years. See Appendix A for sample Patents.

Automated financial/management business data processing method patents
cannot trace their origins back to the founding of our nation. However,
contrary to popular view, they did not suddenly spring into being in the
late 1990's. On January 8, 1889, the era of automated
financial/management business data processing method patents was born.
United States patents 395,781; 395,782; and 395,783 were granted to
inventor-entrepreneur Herman Hollerith on that date.[^5] See Appendix B
for Mr. Hollerith's Patents. Mr. Hollerith's method and apparatus
patents automated the tabulating and compiling of statistical
information for businesses and enterprises. They were acclaimed
nationally and viewed as revolutionizing business data processing. The
protection of his patents allowed his fledgling Tabulating Machine
Company to succeed and thrive.\
In 1924, Thomas J. Watson, Sr. changed the company name to International
Business Machine Corporation. Hollerith manual punch cards (IBM punch
cards) and his methods for processing business data were still being
used up until the birth of the personal computer era.[^6]

The financial/management business data processing method patents of
today are more numerous and more sophisticated than those of 1889.
However, this is not a function of the business method ingenuity of our
forebears. Rather, this is directly a function of high cost, low speed,
and limited availability of automated data processing machines in the
1890's versus the low cost, high speed, and wide spread use of today's
computers. Put another way, we invented some automated business data
processing methods over the last one hundred years, but we spent the
bulk of that time perfecting the automated business data processing
machines upon which we will run the methods. It is only recently that
data processing systems have become sufficiently developed to begin to
allow us to fully tap our ingenuity in the business method arts.

The development of today's business data processing systems follows an
unbroken evolutionary path back to simple manually operated mechanical
registering devices that predate electrically controlled Hollerith type
machines. See Appendix C - 1870 to 1905. Purely mechanical business data
processing reached its zenith in the early 20^th^ century. For about
\$100 (\$2000 today), a 1909 merchant could purchase a cash register
system that even now is one of the most sophisticated mechanical devices
ever constructed. See Appendix D - 1906 to 1920. Unfortunately, business
data processing was simplistic in even the most powerful of these
totally mechanical registering systems. None were able to match the data
processing power of the electrical-mechanical systems such as the
Hollerith tabulator. However, manufacturing cost was a key issue and it
was not until the 1930s that electrical-mechanical superseded purely
mechanical in day-to-day business data processing systems. See Appendix
E - 1921 to 1940.

The full arrival of electricity as a component in business data
processing system was a watershed event. Electrical-mechanical devices
provided far more business data processing power than their mechanical
predecessors did. By the 1930s it was cost effective to build far more
complex data processing systems. A pattern was set that has repeated
itself in successive evolutionary steps since the 1930s.
Electrical-mechanical switches were replaced by individual transistors.
Individual transistors were replaced in turn by small-scale integrated
circuits which were replaced by large-scale integrated circuits. Each
new generation resulted in increased business data processing power and
new inventions. However, one key thing was not significantly improved by
each of these generations. Even with the arrival of larger-scale
integrated circuits, each data processing system had to be individually
designed at the transistor level and hard-wired to perform the correct
business data processing functions. The time from innovation through
design and manufacturing to market was too long and needed to be
improved. The replacement of specific function large-scale integrated
circuits by software controlled microprocessors allowed this to occur
and was the latest evolutionary step to bring us to the business data
processing systems of today. See Appendix F - 1941-1995.

# **III. CLASS 705 -- MODERN BUSINESS DATA PROCESSING**

## A. TYPE OF TECHNOLOGY

Class 705 encompasses machines and their corresponding methods for
performing data processing or calculation operations, where the machine
or method is utilized in the 1) practice, administration, or management
of an enterprise, or 2) processing of financial data, or 3)
determination of the charge for goods or services. This is the formal
definition of the subject matter classified in Class 705. See Appendix G
for a sample of patents issued on May 30, 2000.

In layman's terms, Class 705 is a collection of 20+ financial and
management data processing areas. These including data processing in
specific enterprises such as Insurance, Stock/Bond Trading, Health Care
Management, Reservation Systems, Postage Meter Systems (Computerized) as
well as more general enterprise functions such as Electronic Shopping,
Auction Systems, and Business Cryptography. The four largest groupings
in Class 705 are those directed to the general business operations of:

1)  Determining Who Your Customers Are, and The Products/Services They
    Need/Want

######### Operations Research - Market Analysis

2\) Informing Customers You Exist, Showing Them Your Products &
Services, and Getting Them to Purchase

> Advertising Management
>
> Catalog Systems
>
> Incentive Programs

######### Redemption of Coupons

3)  Exchanging Money and Credit Before, During, and After the Business
    Transaction

######### Credit and Loan Processing

######### Point of Sale Systems

> Billing
>
> Funds Transfer
>
> Banking
>
> Clearinghouses
>
> Tax Processing

######### Investment Planning

4\) Tracking Resources, Money, And Products

> Human Resource Management
>
> Scheduling
>
> Accounting

######### Inventory Monitoring

## B. ENGINEERING IN SUPPORT OF BUSINESS {#b.-engineering-in-support-of-business-1}

The systems and methods of Class 705 are directed to diverse business
functions. However, a strong understanding of certain non-business
fields is required to fully understand many inventions in this class.
Patent applications being examined in Class 705 still strongly reflect
the basic engineering that underlay each invention. Electrical and
computer engineering (e.g., databases, communication systems) will
continue to be a dominant feature of business data processing for
generations to come. A strong electrical and computer engineering
foundation is as important as a strong foundation in any of the diverse
business functions.

These and other shared non-business fields allow unique patent examining
flexibility across certain communications and information processing
technologies. This is particularly true in technologies where large
amounts of data must be stored and communicated from one location to
another prior to performance of some final end function such as product
sales. Patent examiners, from what appears on the surface to be diverse
technologies, can readily assist each other with respect to shared
non-business fields.

## C. PATENT ASSIGNEES 1977-1999

Class 705 was created in 1997 from the business and cost/price sections
of computer classes 395 and 364. These two sections having originally
evolved from class 235 - Registers, beginning in the late 1960\'s. The
evolution of the technologies in Class 705 can be seen by reviewing the
assignees of Business Methods in the three periods 1977-1989, 1990-1994,
and 1995-1999.

  --------- ---------------- ----- ----------------- ---- ---------------- ----
  Ranking   1977-1989              1990-1994              1995-1999        

            (13 year span)         (5 year span)          (5 year span)    

  1         Pitney-Bowes     134   Pitney-Bowes      47   Pitney-Bowes     77

  2         Sharp            39    IBM               32   \*Fujitsu LTD    64
            Corporation                                                    

  3         Omron            31    Hitachi           23   IBM              58
            Electronics                                                    

  4         IBM              26    Sharp             11   NCR              30

  5         Casio            21    Omron             9    Hitachi          27

  6         Tokyo Electric   21    \*Alcatel         9    \*Citibank       22
                                   Business System                         

  7         Hitachi          10    NCR               6    \*EDS            21

  8         NCR              7     \*AT&T            6    \*Microsoft      20

  9         Toshiba          6     \*Unisys          6    \* Neopost       16

  10        Merrill Lynch    5     Casio             5    \*Matsushita     16
                                                          Electric         
                                                          Industrial       

            Attalla          5     \* Frama A.G.     5                     
            Technovations                                                  
  --------- ---------------- ----- ----------------- ---- ---------------- ----

> \* indicates a new assignee from previous period

##### In the period prior to 1990, the Business Methods patents were heavily focused on computerized postage metering and cash register systems. By the end of 1994 heavier emphasis was placed on financial transaction systems which moved postage metering to the second place category. By the end of 1999, electronic shopping and financial transaction systems were the two dominant categories moving postage metering systems down to third. A review of the newly filed applications shows that postage metering will be moved to the fourth spot by the emerging technology of advertising management systems.

## D. PATENT APPLICATION FILINGS

Class 705 has seen strong filing growth in FY 1998 and FY 1999. However,
it represented only about 1% of the total patent applications filed at
the USPTO in FY 1999. The *2658* applications filed in Class 705 did not
even place it among the top five Communication and Information
Processing technologies.

The digital and multiplex communication technologies of Classes 370 and
375 which form the backbone of all modern communication systems saw
*7131* patent applications in FY 1999. Class 345 - Display data
processing (e.g., graphical user interfaces, web browsers) saw *3898*
applications; Class 455 - Telecommunications (e.g., radio, cellular
telephones) saw *3480* applications; Class 709 -- Networked computer
data processing saw 3190 applications; Class 707 -- Databases and Word
Processors saw *3068* applications; and Classes 360 and 369 - Dynamic
Information Storage (e.g., disk drives) saw *2905* applications.

Collectively the communications and information technologies saw 57,000
applications in FY 1999. Class 705 received less than 5 % of that total.

#  {#section-12}

# **IV. RESOURCES IN TRANSITION**

A component of addressing the needs of an emerging technology is
expansion of available resources commensurate in scope to the expansion
of the technology. This is particularly true in the people resource
intensive profession of patent examining. Additional resources can only
help the Office to continue to meet its statutory mandates. The key
resource is the patent examiner who is supported by the other resources
of the USPTO.

#### A. PATENT EXAMINERS

### **Primary And Non-Primary Patent Examiners**

Patent examining is a profession learned through 5 to 7 years of on the
job training reinforced by classroom training. It is analogous to the
master-apprentice system. Primary Examiners and their managers are the
Office's master patent professionals. These master professionals are
delegated signatory authority from the Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and
Trademark Office to grant patents for the United States. Non-Primary
patent examiners are the Office's apprentices in the process of learning
their profession. All work by a non-Primary Examiner must be reviewed
and signed by a person with signatory authority. Class 705 began Fiscal
1998 with three Primary Examiners and nine non-Primary Examiners.

Patent examiners are the key resource of Class 705. Critical to the
managed growth of this technology is an adequate supply of this key
resource.

### **Internal Transfers**

The first step in expanding the examining resources available to Class
705 was to find individuals with appropriate backgrounds among the
current examining corps. Since late 1997, a number of Examiners
volunteered to transfer to Class 705. This group included several
electrical engineers each with a Masters of Business Administration, an
examiner with banking management experience, and a Ph.D. in Information
Science with 30 years work experience developing business information
systems.

## B. HIRING {#b.-hiring-1}

### **2000 Hiring - Preparation for Transition** {#hiring---preparation-for-transition .unnumbered}

Workgroup 2760 will hire sufficient Class 705 examiners in FY 2000 to
cover attrition and modest expansion. However, expansion of the number
of Class 705 examiners will not be the primary focus for this year.

Class 705 is in the first stage of a transition period. In 1998, the
[State Street]{.underline} decision triggered an awareness of the
"business method claim" as a viable form of patent protection. As noted
in Section II above, such patents express the practical application
(useful, concrete and tangible result) of technology that is the essence
of an innovation. This segment of Class 705 is transitioning away from
technology towards the end result the inventor is attempting to achieve
with that technology. Inventors are changing the approach to how they
choose to describe their inventions. This change is in turn driving a
shift in the knowledge base of the Class 705 examiners.

However, it must be noted that most patent applications being examined
in Class 705 still strongly reflect the implementing or enabling
engineering (see Section III B) used to carryout the practical
application being claimed. Databases, communication systems, circuits,
and wires (i.e. electrical and computer engineering) will continue to be
a dominant feature of business data processing for generations to come.
A business data processing method is implemented on a data processing
machine which is still reflected in the patent application. The USPTO
will also continue to grant patent protection for the business data
processing machine itself. See Appendix G for a sample of patents issued
on May 30, 2000.

In FY 2000, the focus for Class 705 is to ensure that high quality is
maintained by its examiners as this transition moves forward. Numerous
quality efforts are being implemented as discussed below. Such quality
efforts are resource intensive. The collective result of these efforts
will be proportional to the USPTO's ability to marshal the needed
resources.

## C. RESULTS TO DATE 

### **Profile - An Appropriate Balance**

Today thirty-eight examiners work in Class 705. This is an increase from
twelve in late 1997. The total number, knowledge, and experience pool
has been increased. Seventeen of the 38 examiners have advanced or
multiple degrees. Of these 4 have an MBA or other business degrees, 4
have a JD degree, 4 have Ph.D. degrees, and 7 have Masters Degrees.

Every examiner in Class 705 has data processing and computer education
or experience. The majority of examination in Class 705 is still
centered on the data processing and computer technologies used to
perform business functions. See Appendix G.

For over 100 years the USPTO has maintained quality by adapting its
knowledge base continuously as business technologies have evolved. It
has adjusted the mix of training and experience of its examiners. The
USPTO will continue to maintain an appropriate mix of electrical
engineering, computer science, and business knowledge balanced to the
contents of the business data processing inventions it is asked to
examine.

#  {#section-13}

### **Business Industry Experience - Shifting the Knowledge Base**

The patent applications of Class 705 have begun a transition to become
more business function focused. Although still present in these patent
applications, implementing technologies such as databases, communication
systems, and circuits are becoming less prominent. However, as was
previously discussed, this transition has only begun. As this transition
continues the USPTO is appropriately responding by increasing examiner
training and hiring, particularly by increasing the number of examiners
with 3 years of business industry work experience.

Fourteen (14) patent examiners working in Class 705 have business
industry work experience that pertains directly to the examination of
patent applications in Class 705. Of these, ten have three or more years
of work experience in various fields including Banking, Securities,
Business Development, Marketing Analysis, Real Estate Analysis, Business
Consulting, Management, Sales, Insurance, Business Information Systems,
and Financial Analysis. This is 26% of the current Class 705 examiners.
The combined business industry work experience of these 14 examiners is
over 120 years.

Resources must be made available to continue to attract and retain
greater numbers of these skilled experts. Without sufficient resources
to continue both training and hiring, it is possible that as business
data processing inventions continue to evolve the USPTO knowledge base
will not keep pace with that change.

## D. SCIENTIFIC & TECHNICAL INFORMATION CENTER -- ELECTRONIC INFORMATION CENTER (STIC -- EIC)

Patent examining in Class 705 is filled with challenges. This class
contains diverse business topics (e.g. insurance and inventory systems).
Prior art references can be found in many diverse sources (e.g. an
Internet web site, a sales brochure, or a 120-year-old textbook). There
is poor tabulation of all the available references for a particular
topic (e.g. not all the insurance prior art is found in one location).

The STIC -- EIC provides search and library support to help examiners
meet these challenges. The professional searchers of the EIC routinely
perform non-patent literature (NPL) searches requested by Class 705
examiners. The number of EIC professional searchers has expanded from
two in 1995 to twelve in FY 2000. Although the EIC provides searching
for all 703 examiners in Technology Center 2700, requests from the Class
705 examiners represented their largest technology specific group of
search requests during FY 1998 and FY 1999. In the first half of FY
2000, this trend continued.

Among the library support functions currently being performed by the EIC
are the locating of additional electronic business literature sources;
the continued expansion of a conventional library of business books; and
the retrieval of hard copies of pertinent NPL documents requested by
examiners.

STIC is currently working on an initiative to collate examining
resources into a web-based tool for Class 705 examiners. This tool will
connect with databases, web sites, electronic and print literature
resources on Class 705 topics.

#  {#section-14}

# **V. IMPROVING QUALITY** 

## A. INTRODUCTION

It is universally agreed that high quality examination by USPTO Patent
Examiners must be ensured. Quality initiatives are continuously updated.
The detailed discussion below highlights initiatives in place prior to
March 2000, as well as, quality initiatives announced in March by Q.
Todd Dickinson, Under Secretary of Commerce for Intellectual Property
and Director of the United States Patent and Trademark Office. Each new
quality initiative follows the pre-March 2000 initiative discussion it
relates to most closely.

The mission of the USPTO is to help our customers get patents. However,
not all applications are patentable. The patent examiner is tasked with
helping the inventor including pointing out patentable inventions
disclosed but not claimed in the originally presented claims. The
examiner is also tasked with analyzing the scope of the claims and
determining if sufficient evidence exists to meet the burden of proof to
deny the granting of a patent on some or all of the presented claims.
The patent statute is quite specific: "A person shall be entitled to a
patent unless" this burden of proof is met. In Class 705, the examiners
are able to grant patents on presented claim(s) about 57% of the time.

## B. HYBRID EXAMINER-TRAINER {#b.-hybrid-examiner-trainer-1}

To assist first-line supervisors with training and review of work,
Workgroup 2760 is using Examiner-Trainers in the Class 705 arts to
promote consistent examination. An Examiner-Trainer is a Primary
Examiner that spends 50% of the time examining patent applications, and
50% of the time training others in legal, procedural, and technological
aspects of patent examining. On each application they examine, the new
examiners work extremely closely with the Examiner-Trainers learning
patent examining practice and procedure. In this way, the workgroup was
able to properly train and integrate all their new hires in Fiscal Years
1999 and 2000.

#  {#section-15}

# **C. TRAINING**  {#c.-training-1}

## 1. Procedural

All examiners receive legal, procedural and technical training
throughout their career at the USPTO.

When first hired, patent examiners undergo two weeks of intensive
training in patent examining procedure. Here, the new employees learn
the various statutes (35 USC) and rules (37 CFR) that govern the patent
system. Using generic examples and lectures, they also learn how to
properly examine an application and provide feedback (in the form of an
Action) to the applicant. Upon successful completion of this course, the
new examiners are released to the art units/workgroups for further
training.

Upon their arrival in Workgroup 2760, the new Class 705 examiners learn
of the policies and procedures of Workgroup 2760 and Technology Center
2700. Their orientation covers the workgroup training manual (to be
discussed later in this paper), administrative procedures of the
workgroup and of the technology center, and a discussion of training
opportunities available.

Within the first month, new examiners are also trained on the various
electronic and computerized systems used within the USPTO for searching,
preparing actions, and tracking workflow. Either the workgroup or the
technology center provides most of this training.

After approximately 2 months on the job, the new Class 705 examiners
attend two more weeks of intensive training (called Introduction to
Practice and Procedure - IPP) where they learn more aspects of searching
and writing actions. Managers from the Technology Center teach the IPP
course. These examiners receive training in the computer arts as they
examine their own application.

Following the two week long IPP course, the new examiners begin
attending weekly courses on advanced practice and procedure. Topics
include affidavit practice, Patent Cooperation Treaty (PCT) procedures,
and 35 U.S.C. 101 training.

### **Workgroup 2760 Training Manual**

Typically, a new examiner works side by side with an experienced
examiner (called a Primary Examiner) learning how to analyze an
application, search the invention, and provide feedback to the applicant
in the form of a written Action. In Workgroup 2760, to provide more
guidance for the examiner, the managers working in cooperation with the
Primary Examiners developed a training manual for the workgroup. The
initial chapters of the manual focus on three critical steps: analyzing
the disclosure and claims, searching for the invention, and preparing a
written report (office action) to be sent to the inventor.

The intent of the training manual is to bring the new examiner up to
speed with the basics of examining within 6 months. The manual also
ensures that all examiners, new and experienced, are consistent in the
manner they examine patent applications. The manual contains over 100
pages directed to analyzing the specification, searching, writing the
action, handling amendments, responding to amendments, and samples of
each. The manual is distributed to each new examiner within days of
their entry into the workgroup. The Examiner Trainers provide an
orientation for the new examiners and among other activities, acquaint
the new examiner to the training manual. Over the two years since it's
introduction to the examiners, the 2760 training manual has been used to
assist in the apprentice training of new business patent examiners.

### **Search Strategy Training**

A proper search is the mainstay of the U.S. Patent system. It usually
takes years of training to fully develop the skills required to
ascertain a proper search strategy after analyzing an application. The
examiner must be trained in the art of analyzing the scope of the claims
and searching. With this in mind, the managers and Primary Examiners of
Workgroup 2760 have formulated standardized base search strategies for
the varying aspects of the business technology. Thus, once an examiner
knows the technology and concepts cited in the application, the examiner
can utilize the standardized search strategy to determine not only where
to search in the U.S. Patent system, but also which data files to search
in Dialog and/or STN. While each application is unique and requires
individual attention, these strategies assist a patent examiner, new or
experienced, in searching the appropriate areas and finding references
relevant to the application at hand.

To further assist the Class 705 examiners, a search strategy advisory
panel comprised of managers and experienced examiners has been
established to assist all Class 705 examiners in developing a search
strategy for the application under examination. This panel may also be
used to provide legal and procedural assistance.

### **Commercial and NPL Databases**

During the first month of an examiner's career, and as new systems are
introduced, the USPTO through the Patent Academy teach examiners how to
search the U.S. patent databases (known as EAST and WEST). Commercial
databases, searched by Class 705 examiners, provide "non-patent
literature" (NPL) documents such as professional journals, magazines,
and conference proceedings. Some commercial databases also offer
abstracts of foreign documents.

Workgroup 2760, with the support of the Technology Center and the USPTO
Academy, provides both basic and advanced training to the Class 705
examiners in DIALOG and STN/CAS. These courses utilize specific examples
compiled by the workgroup managers and the Examiner Trainers so the
trainees are searching "real world" situations during their training.

If examiners do not wish to search the commercial databases themselves,
they can request a commercial database search by the Electronic
Information Center (EIC) -- a branch of the USPTO's Scientific and
Technological Center (STIC) supported by Technology Center 2700. The EIC
staff includes 12 professional searchers who perform the searches for
these examiners. One searcher also collects new and interesting business
information (including web sites) and provides them to the Class 705
examiners in a daily e-mail newsletter.

Non-patent literature (NPL) encompasses a wide variety of diverse
published materials, such as textbooks, newspaper articles, magazine
articles, sales brochures, professional journals, and conference
proceedings. A patent examiner can find patented art in the U.S. Patent
database for many business technologies. However, for rapidly emerging
technologies, and/or simple accounting procedures, the U.S. Patent
database is of less value. The Class 705 examiner will rely on NPL to
provide the relevant art in these situations.

Begun in 1994, the EIC of Technology Center 2700 has worked hard to more
readily provide NPL to the examiner. To assist the patent examiner in
finding relevant NPL, the USPTO provides access to scientific and
business related articles in over 900 databases through two commercial
NPL database providers --

1.  DIALOG

2.  STN/CAS

All Class 705 examiners receive training in one or more of these two
commercial database providers. The training is taught in two parts. The
first part is an orientation into how the database operates, and how to
establish a simple search query. The second part of the course is hands
on with specific examples related to the business arts.

### **March 2000 Initiatives on Searching**

Examiners perform a mandatory search for all applications in Class 705
to include a classified U.S. patent document search, and a text search
of U.S. patent documents, foreign patent documents, and non-patent
literature (NPL). The NPL searches include required search areas
mapped/correlated to the U.S. classification system for Class 705.

For example, if an examiner is searching an insurance patent application
classified in class 705/4, the examiner would have to search the 22
mandatory general business databases as well as the 3 mandatory
databases specific to insurance. See figures NPL-1 to NPL-4 for a
listing of class 705 core databases.

In addition to these mandatory databases, the examiner would search all
appropriate databases from among the 900 available databases (e.g.
Software Patent Institute \[SPI\], IEEE/IEE Electronic Library \[IEL
Online\], etc.).

**[CLASS 705 CORE DATABASES]{.underline}**

***[Non-Patent Literature Core Databases]{.underline}***

All Class 705 applications will be searched in the following databases:

*ABI/INFORM®* \[Bell & Howell Information and Learning\]

*Business & Industry^™^* \[Responsive Database Services, Inc.\]

*Business Week* \[The McGraw-Hill Companies Publications Online\]

*Business Wire* \[Business Wire\]

*Computer Database™* \[The Gale Group\]

*Conference Papers Index* \[Cambridge Scientific Abstracts\]

*Dissertation Abstracts Online* \[Bell & Howell Information and
Learning\]

*Globalbase^™^* \[The Gale Group\]

*Inside Conferences* \[The British Library\]

*INSPEC* \[INSPEC, Inc.\]

*Internet & Personal Computing Abstracts®* \[Information Today, Inc.\]

*The McGraw-Hill Companies Publications Online* \[The McGraw-Hill
Companies, Inc.\]

*Microcomputer Software Guide Online®* \[R. R. Bowker Company\]

*New Product Announcements /Plus®* (*NPA/Plus)* \[The Gale Group\]

*Newsletter Database^™^* \[The Gale Group\]

*Newspapers*

-   *Financial Times Abstracts*

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-   *New York Times Abstracts*

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-   *San Jose Mercury News*

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-   *Wall Street Journal Abstracts*

*PR Newswire* \[PR Newswire Association, Inc.\]

*PROMT®* \[The Gale Group\]

*Softbase: Reviews, Companies, and Products* \[Information Sources,
Inc.\]

*Trade & Industry Database™* \[The Gale Group\] *Wilson Applied Science
and Technology Abstracts* \[The H.W. Wilson Company\]

*World Reporter* \[The Dialog Corporation, Dow Jones & Company, and
Financial Times Information\]

**Figure NPL-1**

***[Subject Specific Databases]{.underline}***

Many databases contain significant non-patent literature resources
relevant to specific Class 705 subclasses. Therefore, additional core
databases are listed for the subclasses indicated in this section.
Examiners are required to search these databases during the examination
of cases classified under these subclasses. In this list, the subclass
numbers have been listed to the left of the subclass description.

**2 Health Care Management**

**In addition to Core databases, search:**

> *American Medical Association Journals* \[The American Medical
> Association\]
>
> *BIOSIS Previews®* \[BIOSIS®\]
>
> *EMBASE®* \[Elsevier Science, B.V.\]
>
> *Health & Wellness Database*^SM^ \[The Gale Group\]

*Health News Daily* \[F-D-C Reports, Inc.\]

> *HealthSTAR®* \[U.S. National Library of Medicine (NLM)\]
>
> *MEDLINE®* \[U.S. National Library of Medicine (NLM)\]

*New England Journal of Medicine* \[Massachusetts Medical Society\]

> *SciSearch®* \[Institute for Scientific Information® (ISI®)\]
>
> ***If drugs/pharmaceuticals are involved. . . . .***

*Drug News & Perspectives* \[Prous Science Publishers\]

> *International Pharmaceutical Abstracts* \[American Society of
> Health-System Pharmacists\]
>
> *Pharmaceutical and Healthcare Industry News Database* \[PJB
> Publications Ltd.\]
>
> *Pharmaceutical News Index (PNI®)* \[Bell & Howell Information and
> Learning\]

**4 Insurance**

**In addition to Core databases, search:**

*American Banker Financial Publications* \[American Banker-Bond Buyer\]

> *Insurance Periodicals Index* \[NILS Publishing Company\]

*The Journal of Commerce* \[The Journal of Commerce, Inc.\]

**7 Operations Research**

> **In addition to Core databases, search:**

**Inventory Monitoring Databases**

**Figure NPL-2**

**13 Transportation Facility Access**

**In addition to Core databases, search:**

> *Aerospace/Defense Markets & Technology®* \[The Gale Group\]
>
> *Aerospace Database* \[AEROPLUS ACCESS\]

*The Journal of Commerce* \[The Journal of Commerce, Inc.\]

> *NTIS - National Technical Information Service* \[National Technical
> Information Service, U.S. Department of Commerce\]
>
> *Transportation Research Information Services* \[Transportation
> Research Board\]

**14 Advertising/Coupon Redemption/Incentives**

**In addition to Core databases, search:**

*Business Dateline®* \[Bell & Howell Information and Learning\]

> *Marketing & Advertising Reference Service®* \[The Gale Group\]
>
> **Newspapers**
>
> *The Atlanta Journal/The Atlanta Constitution*
>
> *The Arizona Republic/The Phoenix Gazette (Phoenix)*
>
> *The Sun (Baltimore)*
>
> *The Boston Globe*
>
> *Chicago Tribune*
>
> *The Christian Science Monitor*
>
> *Detroit Free Press*
>
> *The Denver Post*
>
> *Houston Chronicle*
>
> *Independent (London)*
>
> *The Irish Times*
>
> *Los Angeles Times*
>
> *The Miami Herald*
>
> *Newsday and New York Newsday*
>
> *The Oregonian (Portland)*
>
> *The Plain Dealer (Cleveland)*
>
> *The Philadelphia Inquirer*
>
> *Rocky Mountain News (Denver)*
>
> *San Francisco Chronicle*
>
> *St. Louis Post-Dispatch*
>
> *St. Petersburg Times*
>
> *Times/Sunday Times (London)*
>
> *USA Today*
>
> *Washington Post Online*

**Figure NPL-3**

**26 Electronic Shopping**

**In addition to Core databases, search:**

**Advertising/Coupon Redemption/Incentives Databases**

> *Magazine Database™* \[The Gale Group\]

**28 Inventory Monitoring**

**In addition to Core databases, search:**

*Ei Compendex®* \[Engineering Information, Inc.\]

> *ISMEC: Mechanical Engineering Abstracts* \[Cambridge Scientific
> Abstracts\]
>
> *JICST-EPlus - Japanese Science & Technology* \[Japan Information
> Center for Science and Technology (JICST)\]
>
> *NTIS: National Technical Information Service* \[National Technical
> Information Service, U.S. Department of Commerce\]
>
> *SciSearch®* \[Institute for Scientific Information (ISI®)\]

*Social SciSearch®* \[Institute for Scientific Information (ISI®)\]

**35 Banking/Finance/Investments**

**In addition to Core databases, search:**

*American Banker Financial Publications* \[American Banker-Bond Buyer\]

*Banking Information Source* \[Bell & Howell Information and Learning\]

*Bond Buyer Full Text* \[American Banker-Bond Buyer\]

> *DIALOG Finance and Banking Newsletters* \[The Dialog Corporation\]
>
> *EconLit* \[American Economic Association\]

**36 Portfolio Selection**

> **In addition to Core databases, search:**
>
> **Banking/Finance/Investment Databases**

**37 Trading, Matching or Bidding**

> **In addition to Core databases, search:**
>
> **Banking/Finance/Investment Databases**

**38 Credit Processing or Loan Processing**

> **In addition to Core databases, search:**
>
> **Banking/Finance/Investment Databases**

**39 Including Funds Transfer or Credit Transaction**

**In addition to Core databases, search:**

**Banking/Finance/Investment Databases**

> *Knight-Ridder/Tribune Business News™* \[Knight-Ridder/Tribune
> Business News\]

**Figure NPL-4**

### **Technical**

The patent examiner's training does not end with procedural training.
The workgroup also provides technical training to both the new and the
experienced Class 705 examiner. In keeping with the latest trends in
"electronic business practice", the Class 705 examiners have received
training over the last two years in -- Computer networking, Computer
organization and architecture, Electronic Payments, Electronic Catalogs,
and Computer Security

Courses in the planning stage for the year 2000 include --

1.  Advanced Computer Networking

2.  Financial Transaction (including ATM)

3.  Smart Cards

4.  General Accounting Procedures

The intent of the technical training course is to provide the examiners
with current information in the various fields of endeavor, and the
history of that field. In this way, every Class 705 patent examiner has
the same baseline of knowledge regardless of previous training or course
work.

### **Field Trips, Conferences, and Seminars**

Field trips to industry are important to the examining process as such
trips give the examiner first hand knowledge of the inventive process
and augment technological knowledge and expertise. Such trips also
enable the examiner to sit down with the inventors to see the patent
process through the eyes of the customer. Field trips also enable the
examiner to understand the efforts put into the inventive process and
the application process by the applicant. Workgroup 2760 is planning a
business field trip during the summer of 2000 to Wall Street.

Conferences and seminars are important to the examining process as they
provide tutorials and information on new technology and processes. In
November of 2000, Workgroup 2760 is planning to send a contingent of
Class 705 examiners to New York City to the Financial Tech Conference,
which covers technologies used in insurance, banking and Wall Street.

### **March 2000 Initiatives on Training**

Workgroup 2760 will maintain technical currency for examiners and
continue current training efforts/partnerships with industry
associations and various individual corporate sponsors.

Business practice specialists will be pursued from industry to serve as
a resource for examiners on common or well known industry practices,
terminology, scope and meaning, and industry standards in four basic
areas: banking/finance, general\
e-commerce, insurance, and Internet infrastructure.

The USPTO will publish the areas of training needs for public comment
and outside offers to provide such training.

## MARCH 2000 INITIATIVES FOR ADDITIONAL REVIEW

A new second-level review of all allowed applications in Class 705 is
required to ensure compliance with the mandatory search requirements,
clarity and completeness of reasons for allowance, and to determine
whether the scope of the claims should be reconsidered.

The sampling size for quality review by the Office of Patent Quality
Review is being substantially expanded for Class 705.

The Examination Guidelines for Computer-Related Inventions and the
relevant training examples are being revised in light of the *State
Street Bank* and *AT&T v. Excel* decisions.

## MEASURE OF QUALITY EFFORTS

The value of the quality initiatives is dependent upon associated
measurement systems. Workgroup 2760 has two measuring components in
place to measure their quality and the effectiveness of any initiatives
implemented.

### **In-Process Review** {#in-process-review .unnumbered}

Since 1998, Workgroup 2760, as well as TC 2700, have been performing
in-process reviews of applications after a first office action to assist
them in determining areas for quality improvement within the business
area. These reviews check numerous items in the office actions but have
a particular emphasis on the field of search of the prior art and
patentability determinations under 35 U.S.C. 102 and 103. The data from
each of these in-process reviews is compiled and provided to the
workgroup managers. Results from these reviews are used to determine
areas for improvement in application prosecution. Over the past two
years, several areas have been identified and addressed with appropriate
training by the Tech Center Quality Assurance Specialist (QAS).

# **VI. CUSTOMER PARTNERSHIP**

In 1999, Technology Center 2700 and Workgroup 2760 began customer
outreach initiatives and the formation of customer partnerships directed
to Class 705.

On October 26, 1999, a *Customer Focus Session on Quality of USPTO Prior
Art Searches in the Business Method Area* was held to identify strengths
and weaknesses in the quality of searches being completed at the USPTO.
This session included officials of the USPTO and a number of patent
practitioners from the East Coast. Valuable information was received
from customers that will be utilized in crafting initiatives to improve
performance.

Technology Center 2700 has begun the process of forming customer
partnerships to jointly address the issues of examination in Class 705.
These customer partnerships will be a key mechanism in continuing to
properly address the patent examination impacts of business data
processing. Customer partnerships will allow the USPTO to properly gauge
numerous items. Customers of the USPTO will know first the future
evolution of business data processing. Their application filings will
control the transition of patent application format towards the
"business method form" and any future shift that will be required in the
knowledge base of Class 705 examiners. They are also in a unique
position to assist in providing training needed as part of shifting the
knowledge base.

# **VII. CONCLUSION**

The growth of the business technology industry has been reflected in the
increase in the quantity and complexity of patent applications filed in
Class 705. This paper has discussed many initiatives that have been
implemented to improve quality and begin customer partnerships for Class
705. More will be required in the future to meet the needs of this
emerging technology and the needs of our customers. The USPTO management
is committed to the successful examination of these applications to
ensure continued growth and innovation in this important area.

## APPENDIX A

+-----------+--------------+------------+-----------------------------+
| Patent    | Issue Date   | Inventor   | Title                       |
| Number    |              |            |                             |
+-----------+--------------+------------+-----------------------------+
| X2301     | April 28,    | Kneas      | Bank Note Printing          |
|           | 1815         |            |                             |
|           |              |            | \*Note this is a restored   |
|           |              |            | Patent taken from court     |
|           |              |            | records                     |
+-----------+--------------+------------+-----------------------------+
| 871       | August 3,    | Watson     | Bank Note                   |
|           | 1838         |            |                             |
+-----------+--------------+------------+-----------------------------+
| 63889     | April 16,    | Hawes      | Hotel-Register              |
|           | 1857         |            |                             |
+-----------+--------------+------------+-----------------------------+
| 138,891   | May 13, 1873 | Hunter     | Revenue Stamps              |
+-----------+--------------+------------+-----------------------------+
| 575,731   | January 26,  | Powers et  | Insurable Property Chart    |
|           | 1897         | al.        |                             |
+-----------+--------------+------------+-----------------------------+
| 853,852   | May 14, 1907 | Adams      | Insurance System            |
+-----------+--------------+------------+-----------------------------+
| 1,406,561 | February 14, | Howard     | Business Form               |
|           | 1922         |            |                             |
+-----------+--------------+------------+-----------------------------+
| 3,556,563 | July 9, 1969 | Scheinberg | Booklet and Cards For Use   |
|           |              | et al.     | In A Limited Credit System  |
+-----------+--------------+------------+-----------------------------+

##  APPENDIX B

  ------------ ------------ ------------ ---------------------------------
  Patent       Issue Date   Inventor     Title
  Number                                 

  395,781      January 8,   Hollerith    Art of Compiling Statistics
               1889                      

  395,782      January 8,   Hollerith    Art of Compiling Statistics
               1889                      

  395,783      January 8,   Hollerith    Art of Compiling Statistics
               1889                      
  ------------ ------------ ------------ ---------------------------------

## APPENDIX C

  ------------ --------------- ---------- ---------------------------------
  Patent       Issue Date      Inventor   Title
  Number                                  

  209,827      November 12,    Moss et    Ticket Printing and
               1878            al.        Recording-Machine

  774,322      November 8,     Hepfer     Profit Sharing Sales Counter
               1904                       

                                          
  ------------ --------------- ---------- ---------------------------------

## APPENDIX D

  ------------ --------------- ---------- ---------------------------------
  Patent       Issue Date      Inventor   Title
  Number                                  

  915,090      March 16, 1909  Fuller     Cash Register

  920,110      May 4, 1909     Cleal et   Cash Register
                               al.        

                                          
  ------------ --------------- ---------- ---------------------------------

## APPENDIX E

  ------------ --------------- ----------- ---------------------------------
  Patent       Issue Date      Inventor    Title
  Number                                   

  1,710,691    April 30, 1929  Carroll     Combined Sorter and Tabulator

  2,052,444    August 25, 1936 Breitling   Bookkeeping Machine

  2,126,615    August 9, 1938  Campbell    Accounting Machine
  ------------ --------------- ----------- ---------------------------------

## APPENDIX F

  ------------ --------------- ------------- -----------------------------
  Patent       Issue Date      Inventor      Title
  Number                                     

  2,594,865    April 29, 1952  Bumstead      System for Making
                                             Reservations

  2,916,212    December 8,     Yoshiharu     Electro-Analog Model
               1959            Mita          Equipment of National
                                             Economic System

  3,017,103    January 16,     Goldberg et   Service Charge Calculation
               1962            al.           System

  3,018,050    January 23,     Barrell       Economic Data Computer
               1962                          

  3,638,003    January 25,     Meixner       Credit-Accumulating
               1972                          Arrangement

  4,365,314    December 21,    Badagnani et  Electronic Accounting Machine
               1982            al.           With Split Display

  5,058,009    October 15,     Yoshino et    Financial Calculator for
               1991            al.           Calculating, Graphically
                                             Displaying and Confirming
                                             Results of Loan Amortization
                                             Calculation
  ------------ --------------- ------------- -----------------------------

## APPENDIX G

  ------------ --------------- ------------- -----------------------------
  Patent       Issue Date      Inventor      Title
  Number                                     

  6,070,147    May 30, 2000    Harms et al.  Customer Identification and
                                             Marketing Analysis Systems

  6,070,148    May 30, 2000    Mori et al.   Electronic Commerce System
                                             and Method for Providing
                                             Commercial Information in
                                             Electronic Commerce System

  6,070,149    May 30, 2000    Tavor et al.  Virtual Sales Personnel

                                             

                                             

                                             
  ------------ --------------- ------------- -----------------------------

##  {#section-16}

[^1]: ^1^ "Computerized Commerce"; Ivan E. Sutherland; September 1975.
    Acceptance address for the 1975 Award for Outstanding Accomplishment
    of the Systems, Man, Cybernetics Society, San Francisco, California,
    September 23, 1975.

[^2]: ^2^ Kenneth W. Dobyns, The Patent Office Pony: A History of the
    Early Patent Office, Sergeant Kirkland's Museum and Historical
    Society (1994).

[^3]: "One of the most important of his inventions was in the engraving
    of bank bills. \[Fifty\] years ago counterfeiting was carried on
    with an audacity and a success which would seem incredible at the
    present time. The ease with which the clumsy engravings of the bank
    bills of the day were imitated, was a temptation to every knave who
    could scratch copper; and counterfeits flooded the country, to the
    serious detriment of trade. Perkins invented the stereotype
    check-plate, which no art of counterfeiting could match; and a
    security was thus given to bank paper which it had never known.";\
    \
    The Patent Office, Report of the Commissioner of Patents for the
    Year 1849, Part I. Arts and Manufactures (1850).

[^4]: Edmund Burke Commissioner of Patents, List of Patents for
    Inventions and Designs, Issued by the United States from 1790 to
    1847 (1847).

[^5]: ^5^ <http://www.invent.org/book/book-text/57.html> and

    <http://www.computer-museum.org/collections/hollerith.html>

[^6]: ^6^ Business Method Patents, i.e. automated financial/management
    business data processing method patents, were patented long before
    the USPTO's "Examination Guidelines for Computer-Related
    Inventions," 1184 Off. Gaz. Pat. Office 87 (March 26, 1996) and the
    decision in *State Street Bank & Trust v. Signature Financial Group,
    Inc.*, 149 F.3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998), cert. Denied,
    \_\_U.S.\_\_, 119 S. Ct. 851 (1999). *State Street* merely modified
    the test used to determine "statutory subject matter." It is
    important to understand that many business data processing methods
    were deemed statutory subject matter under the old "Business Method
    Exemption" test. For example, the claims in *State Street* were
    deemed by the USPTO to meet the statutory subject matter requirement
    under the old test.