1\.

c/o Commissioner of Patents and Trademarks

Box 4

Patent and Trademark Office

Washington,DC 20231

Dear Ms. Shaw:

I am providing an initial brief series of comments in order to get the
most

important points in early. If I have the time, I will supplement with

additional comments at a later date. My comments are personal and do not

reflect, one way or the other, the opinion of the firm where I am
employed.

My comments are located after each question. I am a senior associate in
the

chemical/biotech department of a Washington D.C. patent law firm.

1\. Is the most pertinent prior art being considered by patent

examiners during examination of patent applications?

\>\>Usually not (\>90%) and then only if we supply it to the Examiner.

If not, please

include the following in your response:

\(a\) Provide support for your conclusions and identify thefollowing:

\>\>The Examiner are given a few hours to search; we spend 100\'s of
hours and

\$50,000-100,000 developing compilations of information for preparing
our

IDS\'s. We also continuously update the compilations from our worldwide

prosecution and opposition activities. A complete IDS is a powerful
tool.

The Examiner\'s just can\'t compete.

\(i\) The area(s) of technology most affected;

\>\>I work predominantly in the chemical/biotech areas and cannot
comment on

other areas so well.

\(ii\) The type(s) of prior art most overlooked by the USPTO,

including but not limited to United States patents, foreign patent

documents, and nonpatent literature.

\>\>The Examiner frequently do not read what we send them - we are under
a

duty to send it and we want the benefits of sending the very best art SO
we

give it to them on a silver platter. Yet frequently they perform their
own

search and make their rejections based on that - which is invariably
weaker.

Additionally, Examiner\'s do not correlate their own PCT search results
with

the U.S..

\(b\) Identify why you perceive that patent examiners are not

considering the most pertinent prior art.

\>\>they don\'t ask us to point it out for them; the current rules rules
permit

us to just list it.

\>\>they don\'t search for long enough (like the EP examiners do)

\>\>many do not use highly valuable electronic search databases such as
Chem

Abstract Services (CAS)

\>\>some rely on non-peer reviewed Overview articles from 1975 showing
why

cancer will never be treatable etc.

2\. Do applicants submit the most pertinent prior art that they are

aware of in connection with a filed patent application?

\>\>Emphatically, YES. To not do so is to end up with a patent which is

dead-on-arrival; so why bother.

\>\>clients demand it, they want patents that will stand up and which
can be

licensed.

\>\>one neglected area is that in an \"Information Disclosure
Statement\" more

than just prior art is submitted. Many attorneys are unaware that \"any

information\" is fair game and that offers to sell and other information
must

also be submitted, not just \"prior art references\"

If not, please

include the following in your response:

\(a\) Provide support for your conclusions and identify thefollowing:

\(i\) The area(s) of technology most affected; and

\(ii\) the type(s) of prior art that is not being submitted by

applicants, including but not limited to United States patents, foreign

patents, and nonpatent literature.

\(b\) Identify why you perceive that applicants are not submitting

the most pertinent prior art.

3\. Are the current rules and procedures for obtaining prior art

during the examination of a patent application adequate and effective?

If not, please include the following in your response:

\(a\) Identify aspects of the rules and procedures that do not

facilitate the identification of pertinent prior art;

\>\>the current rules penalize attorneys for \"characterizing the
references\"

so we say nothing.

\(b\) Discuss any proposed changes to the rules or procedures to

improve the identification of pertinent prior art; and

\>\> require the applicant to identify the references in a letter to the

Examiner where the Examiner should start his review (i.e. the most

pertinent)

\>\>do not limit the number of references; do not charge for \"more than
50\";

generalized rules will wreck a system where honesty reigns and the

technology determines the number of items cited.

\(c\) Discuss potential advantages and hardships that patent

applicants and examiners would face if particular changes were adopted.

\>\>limiting the number or charging surcharges will discourage open
compliance

and put the ball clearly back into the attorney\'s lap. This is contrary
to

law as determined by the Federal Circuit. Examiner\'s, not attorneys,

determine what is material and what is not. Attorneys are not allowed

pre-judge the items cited.

4\. Are prior art searches typically conducted before filing a

patent application with the USPTO?

\>\>yes. in fact, prosecution is so troublesome when a search is not run

(i.e. the client indicates they do not want a search and opinion prior
to

filing) that we frequently require the clients to have a search
performed

(not an opinion) as part of the applicaiton drafting process to develop
the

background (they can always refuse but never have to date because they

understand the importance of good preparations).

If not, please explain. If so,

please include the following in your response:

\(a\) An identification of the area(s) of technology where it is most

likely that a prior art search would be conducted;

any areas which appear crowded as indicated by a quick search of the
USPTO

website.

\(b\) The scope of a proper prior art search (i.e., United States

Patents, foreign patents, journal articles, corporate bulletins, as

well as other types of nonpatent literature); and

\>\>CAS does pretty well worldwide, patents and literature. An
experienced

searcher can usually find stuff that CAS misses. A combination is the
best.

Frequently, Japanese patents and literature are the sleepers we use to

attack other people\'s patents.

\(c\) An identification of databases and Internet resources generally

searched or available to applicants and/or the USPTO.

\>\> CAS, USPTO website, EPO databases, INPADOC, DIALOG

5\. Please indicate whether Information Disclosure Statements are

frequently submitted and, if so, which of the following types of prior

art documents are included:

\(a\) United States patents;

\>\> yes

\(b\) Foreign patent documents and Patent Cooperation Treaty (PCT)

publications; and

\>\>yes

\(c\) Nonpatent literature, including but not limited to journal

articles, conference papers, corporate bulletins, and
Internetpublications.

\>\>yes, the scientists can\'t help but publish but we do all we can to
get an

appln on file before the online abstracts (for the typical upcoming

conference) publish.

If applicable, please explain why any of the aforementioned type(s)

of prior art documents are not normally submitted to the USPTO.

6\. Should applicants be required to conduct a prior art search and

submit corresponding search results, including where they searched, to

the USPTO when filing a patent application?

\>\>No; you will hurt the small inventor.

The patent office should do a better search (i.e. more Examiner time)
for

the money you get now.

If not, should applicants

be required to disclose whether or not a search was conducted?

\>\>Yes, that may technically be considered \"Information\" material to

patentability

Please

explain your rationale and discuss any potential advantages
anddrawbacks.

\>\>the applicant can just submit his or her search results and the
Examiner

and applicant can start on the same page.

7\. Should applicants be required to submit all prior art relied

upon during the drafting of the claims of a patent application?

\>\>No; a lot of what we use is cut and paste from other people\'s
patents to

expand the specifcation for prophetic examples (i.e. basis for future

claims) so much of it is not relevant.

\>\>Yes; if a piece of prior art was used to draft a proviso or if the
claim

scope was narrowed because of it.

Please

explain your rationale and discuss any potential advantages
anddrawbacks.

8\. Should applicants be required to submit all nonpatent literature

directed to the same field of invention attributable to, authored by,

or co-authored by the applicant?

\>\>Yes; it is frequently overlooked by attorneys and Examiners alike.

Please explain your rationale and

discuss any potential advantages and drawbacks.

9\. Please identify any type(s) of nonpatent literature documents

applicants should be required to submit to the USPTO in connection with

any given patent application (e.g., conference reports, corporate

collections, documents relied on in drafting an application, etc.).

Please explain your rationale and discuss any potential advantages

anddrawbacks.

\>\>Requiring \"categories\" of documents which are \"required\" to be
submitted

is a bad idea; each application has to be looked at individually.
Besides

caselaw has already determined that private conference reports about

inventions are privileged and do not have to be submitted. The USPTO
should

not be deciding matters of evidence and privilege prospectively, it will

dilute your statutory authority and probably get your rules overturned.

10\. If you believe that the most relevant prior art is not being

identified during patent examination, please identify any suggestions

to obviate this problem. In your response, please:

\(a\) Discuss in detail any idea for addressing this problem
effectively;

\(b\) Explain how the proposal(s) should be implemented;

\(c\) Identify who should bear the cost; and

\(d\) Indicate any potential advantages and drawbacks for each
suggestion.

\>\>see above

11\. Please discuss any related matters not specifically identified

in the above questions. If this is done, parties are requested to:

\(a\) Label that portion of the response as \`\`Other Issues\'\';

\(b\) Clearly identify the matter being addressed;\[\[Page 28806\]\]

\(c\) Provide examples, where appropriate, that illustrate the matter

addressed; (d) Identify any relevant legal authorities applicable to the

matter being addressed; and

\(e\) Provide suggestions regarding how the matter should be

addressed by the USPTO.

\>\>Other Items

\>\>The PCT USRO Searching is severely mishandled. Some supervisor (I
would

say ding-a-ling but I wish to remain professional) is telling the
examiner\'s

that they only have 1 hour to do a PCT search and report. He is also
giving

out Requests for Additional Fees in the \$100,000\'s of dollars stating
that

Unity of Invention requires this division. After petitioning and being
told

that this fellow was within his rights to do this, we stopped being

outraged. We have given up on the USRO and we now get all our searches

performed through the EPO. The USRO has lost all credibility and has

marginalized itself to the fringes. Good Luck; you\'ll need it.

\>\>Examiner\'s have indicated that they are being pushed to grant
rushed

patents and that this is pushed from the top. Applicant\'s no longer
count

on the Examiner to provide any real input in the crafting of a valid
patent;

we have lost our negotiating partner on the other side and are now
forced to

attempt to represent our clients zealously while ensuring receipt of a
valid

patent. Speed has killed the person looking out for the public interest;

the Examiner.

Advice: people will wait outside a restaurant that serves good food,
they

will not tolerate a restaurant that serves double helpings of bad food.

Todd L. Juneau

Patent Attorney

1030 15th Street NW

Sixth Floor

Washington, D.C. 20005

<toddjuneau@yahoo.com>

2\.

Response to Request for Comment on Issues Related to Identification of
Prior Art

during Patent Examination

Question 7 asks whether applicants should be \"required to submit all
prior art

relied upon during the drafting of the claims.\" Question 8 asks a
similar \"all\"

question.

Unqualified no, for a number of reasons.

First, practically, any rule with the word \"all\" in it is likely to
generate a

large number of references in many cases, references that are specially
selected

for their low relevance.. Between my inventors\' and my own knowledge, I
often

consider (and thus rely on) two dozen items of prior art. Then I draft
the

claims specifically to exclude them., Thus, any \"all\" rule is likely
to be very

burdensome on all concerned, with very little improvement in the quality
of the

search.

Second, of course, this will spawn a large amount of satellite
litigation \--

exercises of good judgment, even conservative judgment, become
inequitable

conduct. The inventor mentions some prior art, only in the context of
showing

the contrast, or to show how a technique can be implemented \-- and now
it\'s

gotta be disclosed, no matter how irrelevant to the claims. The rules
should

not be changed to disallow the exercise of common sense.

Basically, I think that the present Rule 56 is roughly correct, but
could be

tweaked a bit at the edges. An applicant who has a valuable invention
has a

number of incentives to do a search, and submit the results. All
applicants

have strong incentives to disclose as much as they know (inequitable
conduct

questions of enforceability, the wrath of the Office of Enrollment and

Discipline). Applicants also have incentives to not clutter the
examiner\'s life

with art that prevents the examiner from giving the claims a focused and

thorough search.

To digress a bit from your questions\... Perhaps search should be made
more of a

cooperative effort between examiner and applicant. I think it would be
very

helpful if the examiner gave the applicant a phone call when beginning
to work

on a case. I find that roughly 10% of the time, it comes clear in the
1st or

2nd action that the examiner completely misunderstands the claim. With
an early

phone call, the scope of the claims could be clarified, so that the work
the

examiner does is more focused, more productive. Further, I often have

suggestions for searching the prior art. The suggestions aren\'t well
enough

formed that I can put them on the record \-- perhaps it\'s a dim memory
of a

computer made by a company that went out of business in the 1970\'s, and
neither

I nor the inventor have any access to information on which to confirm
that

hunch. I\'d be happy to give an examiner this lead, but there\'s really
no way to

convey this information in a 1449. I\'d also be happy, off the record,
to point

the examiner to the most relevant portions of each reference that I
file, and to

indicate which are really relevant, and which are there just to cover
any hint

of inequitable conduct. But given the realities of modern patent
litigation, I

can\'t say these things on the record.

First suggestion. Possibly there could be a limited exception to the
\"all

business in writing\" rule, allowing one free phone call before the
first search

(and after the examiner has formulated his own proposed search). In this
phone

call, applicant and examiner could discuss the scope of the claims, and
an

applicant could direct the examiner\'s attention to the key aspect of
the claims

(and possibly get one free amendment to clarify claim language that has
an

unintended meaning \-- recall, this is all happening before the first
search, so

no huge effort is invested before the amendment). In this phone call, an

applicant also could offer suggestions on searching. By making the first

examination really pay off, I suspect that the net effect would be to
reduce the

workload for each application.

Second suggestion. A letter from the Commissioner to all patent
attorneys might

be helpful to remind attorneys of the incentives to disclose. In my
practice, I

observe that much of the non-litigating-prosecution-only portion of the
patent

bar often forgets that the whole point is to get a patent that is valid
and

litigates well, rather than an empty piece of paper. To my way of
thinking,

disclosure under Rule 56 benefits of the client. I have heard many
attorneys

opine oppositely.

Third suggestion. Perhaps a letter could be sent to inventors and
assignees (at

the time of mailing the filing receipt?) pointing out the importance of

disclosure, and requesting prior art. The letter could hold out the
carrot of

the enhanced value of the patent if there is good disclosure. Perhaps
the

letter should ask the inventor/assignee to rat on the attorney if the
attorney

failed to serve the client\'s interest by not querying the inventor for
the best

available prior art.

I imagine that there are other opportunities for examiner and applicant
to work

together to get a good search and valid claims, and incentives that can
be

raised to make sure they get used, though they do not immediately come
to mind.

David Boundy

Reg. No. 36,461

212-848-7928

Of course, my opinions are my own, not those of my employer or clients.

3\.

# I suggest the PTO refund a portion of the filing fee to those applicants

submitting an IDS accompanied by a declaration containing details of the

prior art search that was made meeting standards set by the PTO as to

classes and subjects searched. These cases would not be searched by the

Examiner except for the art known to the Examiner.

Submitted by <wherrick@kcc.com>

4\.

\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--

Addressed to: June 18, 1999

DEPARTMENT OF COMMERCE

Patent and Trademark Office

RE:

Notice of Public Hearing and Request for Comments on Issues Related to

the Identification of Prior Art During the Examination of a Patent

Application (Ref: #1)

From:

Timothy Rue

1869-4 Hudson Crossing Rd., Tucker, GA 30084

\(404\) 728-1006 \<timrue@mindspring.com\> \<threeseas@earthlink.net\>

I do not represent an organization, so this response is my own.

\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--

Although I cannot specifically answer questions 1 - 9 of the PTO

RFC (Ref: #1), The subject matter of prior art and how well it is
accessed

does appear to be the general topic of concern and a concern to me. With

this, I hope to present such an \"opposite end of the spectrum view
point\"

that you may see a much WIDER SCOPE SOLUTION DIRECTION to what really
is:

A RECURRING SITUATION or ISSUE (Ref: #2).

I will do this by presenting a response to question 10:

\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--

10\. If you believe that the most relevant prior art is not being

identified during patent examination, please identify any suggestions

to obviate this problem. In your response, please:

\(a\) Discuss in detail any idea for addressing this problem
effectively;

\(b\) Explain how the proposal(s) should be implemented;

\(c\) Identify who should bear the cost; and

\(d\) Indicate any potential advantages and drawbacks for each
suggestion.

\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--

First My \"Point of View\" Concerns Related to the Current PTO RFC:

==================================================================

I have been intentionally using Usenet to create prior art evidence.

I am not one wishing to seek a patent grant but one wishing to prevent a

patent grant on something of physics and nature regarding our use of

abstractions, which requires a base in man made technology to
objectively

recognize and make productive use of. (Ref: #3) Ironic as it may be, I
do

believe this very thing (tool) can solve or greatly help to solve this

recurring issue.

Usenet in the current state I would say is a Hostile Environment!

However, as a value it is the only date time stamped public recorder

available.

Two questions in my thoughts, given the current PTO RFC:

\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--

1\) Is Usenet searched, in dealing with Intellectual Property issues?

2\) Should I need to know all there is about patents to prevent one by

establishing prior art?

What I understand Usenet origin to be:

\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--

The origin and reason by which Usenet was created is US National
Security

from the possibility of losing information in the event of nuclear or

other such attack. In other words, Usenet originated out of the concern

for protecting information, and initially done by the US government with

US Government National Security Specs, I would imagine.

\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\-\--

Given my concerns above, I realize Usenet is a very large body of mixed

information to search, as is the rest of the internet. So, The
Problem\...

THE RECURRING ISSUE (MASS vs. TIME):

====================================

The RECURRING ISSUE is one of MASS (or quantity) VS. TIME. In this case,
it

is regarding Intellectual Property searches. The mass of information to

search vs. the time to do it with quality and completeness.

A matter of Physics and Nature.

But this \"MASS VS. TIME\" issue has been addressed and solved many
times

in human evolution. In recognizing the actions and sequences of actions

by which we do this, and all other things, we are provided the solution

direction for the current PTO RFC issues.

What we do with the recognized sequences of actions is to define them

to an abstraction for later use!

Simplification and obviousness may be inherent in the following,

depending on the reader, but these things need to be brought forward

so to explain the solution direction.

What We Do First:

==================

To streamline communications (solution direction)

We \"DEFINE\" Things, using of course ABSTRACTIONS.

Symbol(s) = Extended Definition

(I.E. Patent NAME and/or NUMBER = extended information of patent.)

This is the most basic action we use in dealing with mass vs. time. But

now we must deal with a growing mass of \"symbol(s) = extended
definitions\",

inclusive of sets of \"symbol(s) = extended definitions\" and details of

definitions.

We need to organize these for accessibility ease,

so here we \"DEFINE\" this term:

Knowledge Navigational Mapping\" (KNM):

=======================================

Knowledge

That which is or may be known; information.

Navigational

The act or process of navigating. The art or science of plotting,

ascertaining or directing the course of a ship.

Mapping

To represent or delineate on or as on a map.

This provides us with a general picture of what we need. Still needing
to

be filled in with more and more specific details. A \"Focusing In\"
process

not so different from searching for information, but here we are filling

information or details in.

Now we need a tool for DOING Knowledge Navigational Mapping (KNM):

===================================================================

The physics and nature of such a Tool will need to be:

\* Human oriented, because we are the ones generating the \"Knowledge\"

and the ones needing to use it. (must be as intuitive as possible)

\* Create no limitations on what knowledge may be accessed or processed

or even how it is processed, allowing the inclusion of current methods

and means. Must be versatile, able to handle exceptions, Always!

\* Must not evolve in such a manner to itself become increased overhead.

Must be streamlined and consistent in use and evolve in further

streamlining improvement only when this can be done without breaking

any maps previously done.

\* Must not require current knowledge content to be altered, if at all,

in such a way that distorts the knowledge. And if any alteration is

done to content, it is at absolute minimal and of such nature that it

improves the knowledge accessibility value.

\* Knowledge (Abstract Symbol(s) = Extended Definition) items remain

external to the tool.

\* Maps can be standardized, or custom made so to handle personal or
field

specific objectives, but most important maps can be shared and even

easily combined regardless of style.

\* Maps, like knowledge, remains external to the tool.

The above is more a brief reverse engineered wish list of such a tool,

but what is important is how we get to the point of looking back to see

these things are possible.

To start, we identify the fundamental SPACE and ACTIONS we use in all

things we do, and to streamline these through integrated teamwork of
this

space and action set (a small finite set of repeatable actions in
digital

space.) Then to provide the user with a KNM tool they can use to

dynamically automate these actions, in and on this digital space.

STARTING AT STATIC GROUND ZERO (available space):

==================================================

Existence exists - but what exists in existence is a variable.

This is Physical Space for content placement.

Consciousness exists - but what exists in consciousness is a variable.

This is Intellectual Space for content placement.

We record our intellectual space content into physical space content,

Symbol(s) = Extended Definitions, so to later access it and enable
others

to access it. The abstraction tool, computers, greatly aids and speeds

the process here, so it\'s digital space we are generally referring to.

MOVEMENT ONE LEVEL ABOVE GROUND ZERO:

======================================

We Consume and We Produce.

The process of this follows the primary production triplet (also found

in programming):

\"Input -\> Process -\> Output\"

Where ever we are between kids putting blocks together, to rocket

scientists putting things together in order to figure out how to put
other

things together, we put things together to produce additional sum value.

We use abstract communication (ABSTRACTIONS) to help us put things

together, including putting teams of people together so to put larger

things together. Even when working independently of each other, abstract

communication is being used between parties.

We start with building simple things and then move on to more complex

things, but all this is done by doing sequences of simple things. Simple

things that can be identified as a small finite set of repeatable
actions.

When we get to the point of having to much to deal with in any given
time

frame, we create above this level, that which allows us to go beyond
these

limits. Overcoming the MASS (physics) vs. TIME (nature) constraints via

Symbol(s) = Extended Definition.

MOVEMENT TWO LEVELS ABOVE GROUND ZERO:

=======================================

This is the third major time in human evolution we have reached such a

wide-scope of limitations impact. PTO recurring issues are only a part
or

symptom of a bigger problem.

First, we had to move from the bicameral mind to the conscious mind to
be

able to create and use higher level abstractions. Society had reached a

limitation on how much could be communicated with lower level or more

naturally direct abstractions. You can see this as moving from two
points

up to one, where analytical mind + creative mind = higher abstractions.

(Tower of Babel is one event of conscious evolution conflict. REF: #4)

Second was the Abstract concept of Zero. The \"nothing\" of Zero being a

\"placeholder\" for \"something.\" Business reached MASS vs. TIME
limitations

(counting inventory, money and simple math). The Zero placeholder with
the

Hindu-Arabic decimal system got us past limited Roman Numerals. (REF:
#5)

This Third time it is the MASS of Abstraction Sets and use of, as over

3000 programming languages are only a part of the computer industries

contribution to the new Tower of Babel. Abstraction overload leading to

a needed solution direction of using Abstraction-Placeholders in KNM.

Even the PTO has its given vocabulary or abstraction set, as any
industry

does. However, the PTO must also deal with vocabularies of many
industries

and the critical mass limitations of the primary production triplet.

To overcome this critical mass limitation, we identify that the primary

production triplet can be further broken down into nine user oriented

actions on Abstraction-Placeholders, or \"Virtual Interactions.\" (Ref:
#6)

This gives us finer tuned operation and control, than the triplet alone.

Putting these nine in a logical \"Configuration\", for recursion
control,

provides ultimate versatility, exception handling, for the user. Hence:

The Tool: \"Virtual Interaction Configuration\" (VIC):

=====================================================

The NINE-(9) actions we do in all things we do are:

1\) AI (Alternate Interface)

You start or begin things and stop or end things. In doing this you

change what you interface with. Here it is the startup and shutdown of a

VIC with optional startup settings and minimal external runtime control.

2\) PK (Place Keeper)

You need to know where you are in doing something, keep track of things,

especially if you need to set something aside to do other things before

you can go back and continue. Here you keep track of the nine actions

configuration values and optionally manipulate any of these values.

3\) OI (Obtain Input)

You get things into a \"holder\" to pass to a \"place\" of use by other
things.

This is one way we create symbols or \"holders\" for our definition
content.

Usually text based definitions or sequences would be originally created

using a text editor. Here we get user input into \"placeholder\"
variables.

4\) IP (InPut from)

You select where you are getting something from and optionally what part

to get when you get things.

5\) OP (OutPut to)

You select where you are sending something to and optionally what part

to send when you send things.

6\) SF (Sequence stufF)

You do things a step at a time, even when your doing more than one thing

at a time, each you do a step at a time. And the things you do includes

doing the nine things, but only as much as you need. This is where you

sequence sequences.

7\) IQ (Index Queue)

You look up what things mean, and use the meanings to (SF) \"Sequence

stufF.\" Often the meaning is from a Selected Abstraction Set. What you

pass to IQ can be through a placeholder variable you create.

8\) ID (IDentify things)

Sometimes you must know what something is before you know what to do.

(I.E. to put away the variable contents of incoming boxes, you must look

at what the contents is to then know where to put it.) So, you identify

things to see what they are. Once you know what something is, you can
(SF)

\"Sequence stufF\". What you pass to ID can be through a placeholder

variable you create.

9\) KE (Knowledge Enable)

When looking up or testing something (IQ and ID), you may only want a

certain part of it. This \"KE\" helps you narrow down what you want to

look up (IQ) or test (ID). When you look up a word in a dictionary,

you limit your search to the section starting with the first letter

of the Word. Additionally, you may want only a part of the definition.

Consider this like the legend key of a map, blueprint, \"how to read\"

instruction, etc. but applied in the space of abstractions.

These NINE actions can easily be made available in the form of computer

functionality, easy for us to use. With this, we can Automate the things

we do through computers by sequencing of loops and search findings

(abstract definitions access).

This Virtual Interaction Configuration (VIC) provides us with the gears

and bearings or carrier wave for processing abstractions.

Because our minds are acting on abstractions far more often than we\'ll

do through computers, our ability to see ourselves doing these things is

extremely difficult (a matter of inherent subjectivity). But by doing

these \"actions on abstraction\" through the tool of computers, we can
be

far more objectively aware and productive with these actions.

(Also Ref: #3)

With the VIC we can organize and automate our use of abstraction sets

through the, wide scope capable, abstraction tool computers really are.

KEY TO GOING FULL CIRCLE:

==========================

We Define Things into abstractions (symbols).

Symbol(s) = Extended Definition

The media of our \"abstraction = definition\" can vary from ASCII based
to

binary based, to non-computer based forms such as printed text or other

non-digital based forms.

It is the definition part that we sequence here and what the nine
actions

pass around, act upon, and sequence. A defined sequence that can be of
any

mix of text to read or act upon, VIC action to do, programs to execute,

commands to control applications, etc. Focusing in through use of keys.

I.E. This Document itself is marked for KNM use.

The Key is optionally on the first line: \'filekey : :: :::\'

and could be changed to: \'filekey : \# :::\'

to \"focus in\" the References here

or for focus on the \'bullets\'. \'filekey : \* :::\'

For further \"manual focusing in\" on details of functionality see:

:::[http://www.mindspring.com/\~timrue/IQ-1-9-1999.html]{.underline}

Here you will find an AREXX application \'IQ\' that is a stand-alone
version

of the 7th command/action of the VIC, along with other examples, more

information, details and specs about the VIC.

In Summary:

============

Using Knowledge Navigational Mapping methods and tools to Map and
Navigate

Patent and other information, will inherently help improve the Quality
and

Completeness of Patent searches for Prior Art.

The main elements of KNM are:

:: Knowledge - symbol(s) = extended definition(s)

:: Maps to knowledge - where to look (search paths and loops.)

:: Keys to maps - what parts to look for (constrain to.)

KNM Possibilities (Advantages):

================================

The VIC tool is content independent, as is needed of a tool able to
handle

many different fields of knowledge.

The VIC tool is open system oriented (also see disadvantages.) This is

needed to support overall versatility and information format changes.

I cannot say exactly how mapping and navigation of Patent and non-patent

resources will happen here. But what I am sure of is that these nine

actions and the configuration (VIC) provides, in analogy would be of

symbols of mathematics. Where you know the base tools can get you where

you want to go, and it is possible to get to the same point from
different

maps, and to combine maps.

Nobody knows how knowledge will be represented tomorrow or years from
now

with the technology of computers. I.E. Multi-media 3D Virtual Reality

animation may be a valid means of describing an object of patent. Due to

this, it is important to have open systems so to easily enable the user

to include accessing such a \"player\" to run the given animation.

The PTO will develop it\'s own in-house use methodology, based on it\'s

expertise, focus and goals, just as all others will follow their own.

I.E. Given the different Patent databases both public and private and
the

differences in tools and how each is optimally used, one might want to

initiate the execution of the tools they have access to, each at it\'s

optimum performance. However, to do so via automated sequence, for the

user to later look over or further process (focus in) the findings.

Dynamic Automation:

A sequence can be defined with placeholder variables and set in sequence

execution later, with user input requested for filling in placeholder

variables content during sequence runtime, or from predefined variables.

Vocabularies or abstraction sets you will have available from specific

knowledge field or industry, company or organization, personal
preferences

and current goals. These will help you determine how \"you\" make use of
KNM.

In mapping, you only need to reference one thing to have the option of

accessing what all that one thing in turn references.

Users in general will become skilled dual role capable. Besides search
and

find (navigate), the same skill is used to insert (mapping). Though the

Patent office would have its official knowledge maps related to patents,

trademarks, etc., others will have their own custom mapping, This usage

consistency in general helps to inherently gear people to understand and

do better searching regarding Intellectual Property matters.

Perhaps the best advantage is the user is not required to sacrifice
current

skill but is allowed to integrate and automate as they may, and to
whatever

level or degree they want, when they want. All done by doing simple
things.

Much of current existing information can be easily mapped.

KNM Open Systems vs. Patent Incentive (Disadvantages):

=======================================================

Extreme Resistance To Genuine Open Systems! (REF: #7)

Although the VIC can work on even older closed systems, the more open a

system is, the greater potential the tool has for being productive.

Intellectual Property machinery provides incentive to pursue the
evolution

of Closed Systems rather than Open Systems, though Open Systems are more

productive of solutions needed. The Closed System Intellectual Property

incentive is to protect Intellectual Property return value longer in
this

fast moving industry and this inherently leads to Consumer Entrapment

Abuse and incompatibility.

Communication or \"vocabulary sets\" used with Patents includes heavy
use

of Intellectual Property \"Offensive\" and \"Broad Claims\" incentives.
Or

claim as much Intellectual space or land as you can, while doing what
you

will to constrain or prevent others from finding and going to land yet
to

be explored.

Ultimately, the problem here is one of personal stake in closed systems.

You might say closed system stake holders want the world to be flat, but

the world and knowledge of it is far more than just flat closed systems.

Implementation and Cost (Advantage vs. Disadvantage):

======================================================

This Advantage vs. Disadvantage issue is one of overcoming the

resistance to genuine open systems. This is the hard part.

What is an Open System if not a system that enables the user to put

things together? Moreover, to what degree must a system enable this

before it is considered a genuine Open System?

There is a need to increase the incentive to support Genuine Open
Systems.

The incentive target is perhaps the following equation:

Maximum employment rate + reduced tax dollar spent vs. advancement

constraints cause. Or - How many more people will it take to change the

light bulb tomorrow before everyone has a job? (Ref: #2 - Mr. GURAL)

A new field of Knowledge Navigational Mapping can replace that of pseudo

software engineering while increasing the call for and success of
genuine

software engineering (High Integration Mapping.) (Ref: #8)

\* Information mapping and Data Mining. Certainly the mapping of

information will help us better deal with accessing the ever increasing

information generation overload. Perhaps some information generators

will move to information mapping as a part of new information
generation.

\* Software Auto-Coding - solving the \"software crisis\" via
dynamically

automating the dos\', don\'ts\', standards and all other referenced

repeatable actions in the manual coding process, etc.

\* Artificial Intelligence by-product illusion via automation from KNM.

Likely to Pass Ultimate Turing Test via side effect illusion. (Ref: #9)

\* Current Virtual Reality will gain a boost via open system
multi-faceted

mapping and navigation automation. Note: there is value potential to

Virtual Reality beyond entertainment, spanning many fields.

\* Sum total of the above and beyond. Given the ease of combining maps,

such a tool will aid an increase to the rate of technology

advancement, via reduction in re-invention through automation and

AUTOMATION LAYERING and sequencing.

By allowing many more to put things together, and put new things
together,

without false limitations imposed by others, the better things we will
all

have available to us sooner. With this, it helps to provide incentive
and

focus for doing. This is the business aspect, also of obvious inherent

logic. To consume and to produce value is what we all do, but how fast
we

move forward is determined by how well we are able to do so.

With all of the above, it\'s easy to see that pursuing genuine Open

Systems in hardware and software user oriented modularity will also

fuel advancement by allowing more to do more!

Cost: The development of a small shell program code (abstract
definition).

Public generic source code - public (government) generated.

Platform specific public source code - public and private generated.

Abstraction sets - definition sequences, maps, and keys. Created

by the spectrum of users, field specific professionals and

developers of High Integration Maps.

GUIs - the VIC being a shell, these would be custom made if needed.

But through Open System modularity and Auto-coding,

Customizable GUI tools and definitions will come about.

Improvements and Standards - the VIC tool, maps and keys will evolve

with standards for the value of standards. Common agreed upon

understanding so to get things done, but exceptions allowed.

Government Funding:

You might say I don\'t know the vocabularies (abstraction sets and

rules of use) of government funding. To figure this out, I would access

someone knowledgeable and experienced with such vocabularies.

Programming Talent:

Although I know enough about electronics and programming to know

there is no physical or logical constraints preventing the VIC from
being

built, again you might say that I do not know the vocabularies (the use

experience) of programming well enough to create this with the ease of a

programmer having a few years of experience (3-5). I do know what the
VIC

tool needs to do and I believe there is likely shell code in public
access

to work from, so talent would be obtained by whatever method appropriate

and commonly used. I believe with the right programming maps I would be

able to easily create it, but that is the catch 22 for me. Although I
have

aced all courses I have taken in computer electronics and programming,
my

background is based in carpentry and the trade shows industry
multi-talent

pool where I get a good overview of large projects and multi-industries.

FINAL NOTE:

============

Again, it is the Knowledge Navigational Mapping Tool, the Virtual

Interaction Configuration of which I have worked to prevent a patent

or other Intellectual Property control grant from being issued on. But

rather worked to insure no exclusive rights are placed on it.

Having first sat down to use the VIC via combining existing tools (which

closed system elements or remnants prevented) I KNOW it is of the
natural

law logic of the physical phenomenon of using high level (consciously

created) abstractions. Much like mathematical algorithms or more like
the

primary mathematical elements. Except here, we are able to go beyond
math

abstraction sets to handle abstractions in general.

References:

=========================================================================

#1)
[http://www.uspto.gov/web/offices/com/sol/notices/priorart.htm]{.underline}

The above file References \"35 U.S.C. 102 & 103 (1996)\"

Which can be found at: Manual of Patent Examining Procedure

[http://www.inpress.com/knowbase/mpep/toc.htm]{.underline}

more specifically:

[http://www.inpress.com/knowbase/mpep/2100/toc.htm]{.underline}

#2) UNITED STATES DEPARTMENT OF COMMERCE PATENT AND TRADEMARK OFFICE

PUBLIC HEARING ON TECHNICAL DOCUMENTATION STRATEGY

Friday, May 31, 1996

[http://www.uspto.gov/web/offices/com/sol/notices/techhear.txt]{.underline}

(The above is three years old but it provides insight into the

complexities of mapping and navigating knowledge in very real world

terms. Reading it can help one better understand the depth and width

of the current \"Request For Comment\" (RFC) regarding \"Prior Art.\"

#3) Computers are unique in that they are the only man made tool which

allows us to move our thought directly into functioning reality.

Computers allow us to objectively see and use the natural laws of the

physical phenomenon of using abstractions. Just because computers are

man made and a direct application or program of these natural laws

can also be man made, should not mean the application is patent-able.

To be patented would be to indirectly own that which is not supposed

to be own-able, simply because there is no other option to so

objectively access and use these natural laws. To indirectly own

the natural laws of our ability to do things through computers, is to

cause a dictatorship effect of who can and who cannot use a computer

to be productive and make advancements using computers.

#4) Julian Jaynes - The Origin of Consciousness in the Breakdown of the

Bicameral Mind. Published by: Houghton Mifflin ISBN 0-395-56352-6

#5) Yasuhiko Kimura - Neo-Tech, The Philosophical Zero.

[http://www.neo-tech.com/finalevo/evo-041.html]{.underline}

#6) The World of Elementary Particles, by Kenneth Ford. A diagram of:

\"a network of virtual interactions\" used here as a metaphor for

the \"virtual interaction\" concept we are targeting for abstraction

usage (rather than subatomic particles).

#7) It may be worth mentioning that the improved productive value of

\"open architecture\" or \"open system\" is something to keep in mind.

Consider that the Amiga, an \"open architecture system\" began it\'s

fall (\*) at the time \"open system\" research (Carnegie Mellon

University Software Engineering Institute) was beginning to show

increased productivity over \"closed systems\".

\[\* Two consecutive bankruptcies and other pointless delays, but never

was the Amiga credited with the falls, rather it was the PC side of

these companies that pulled the company owning the Amiga down.\]

This along with no real open system to replace or compete with the

Amiga as a genuine consumer level open system (\*\*) causes eyebrows to

raise and suggest evidence of resistance to open systems.

\[\*\* Linux is the closest thing but lacking in some important ways.\]

#8) Scientific American September 1994, Pg. 86, Software\'s Chronic
Crisis

Pg. 92 \-- the engineering evolution paradigm parallel pointed out by

Mary M. Shaw of Carnegie Mellon University. I (Tim Rue) believe this

Virtual Interaction Configuration is the missing tool to bridge

commercialization, science and professional software engineering.

#9) If Man Created Consciousness (Julian Jaynes) \| MASS=Physics=SPACE
\|

Then What Is The: \| - - - \|

KNM tool - Virtual Interaction Configuration \| TIME=Nature=ACTION \|

?

5\.

In regard to Question #6:

\"6. Should applicants be required to conduct a prior art search and
\...\"

Let me make my answer simple: Absolutely not.

Too many practitioners in the \"technical\" arts think too highly of
themselves and overlook some basic fundamentals concerning human
behavior and

human psychology.

It is well known in the arts of human behavior that people see only that
which they are pre-disposed to seeing.

A patent applicant will be pre-disposed to viewing the prior art in the
light most favorable to his/her case. It is not psychologically possible
for a patent applicant

to perform a search in the same way as would a dettached third person.
It would be a big waste of time & resources to demand that all
applicants conduct their own search. The worst case outcome would be if
Examiners come to rely

on the search results of applicants instead of doing their own
independent search.

Also, it is understood that there are certain specialized skills and
tricks of the trade that are known to experienced searchers. For sake of
efficiency to society as a whole, searching should be left to the
pro\'s.

Thank you for considering this answer.

Respectfully,

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Gideon Gimlan

Fliesler, Dubb, Meyer & Lovejoy LLP Voice 408.748.7300

3945 Freedom Circle, Suite 770 FAX 408.748.7310

Santa Clara, California 95054 ggg@fdml.com

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

6\.

item 2: Yes, in my practice.

item 4: Yes, in my practice. Scope is U. S. Patents and business
publications.

searching the IBM and uspto sites and private searching in the PTO.

item 5: Yes, in my practice. Including U. S. patents, and nonpatent
literature.

item 6: No to both questions. Inferior searches could be made and that
would render useless a requirement for searching.

item 7: No. I believe that is already implicit in presenting a
disclosure

statement and the claims.

Item 8: Yes. Where it is more than one year in publication.

item 9: (responded to under item 8)

I believe the present rules and law adequately govern the disclosure of
prior

art, and no further rules are necessary.

Arthur J. Hansmann

# Reg. No. l7,113

7\.

Subject:

PTO Public Hearings

see
\<[http://www.uspto.gov/web/offices/com/sol/notices/priorart.htm]{.underline}

Dear Ms. Shaw:

I have been alterted to your Public Hearing ( Docket No.
99-0512128-9128-01 )

on software prior art identification. Your hearing was publicized on the
web

site of the League for Programming Freedom
\<[http://lpf.ai.mit.edu/index.html]{.underline}\>.

The LPF has sited numerous examples of difficulties relating to the

discovery of prior art in software. I recommend that your staff
carefully examine

the citations on the LPF web site to help improve the examination
procedures

of the PTO.

My personal exploration of the LPF material has motivated me to express

my own concerns regarding prior art. I will be general, and I will not
list

citations in this email, but I urge you and your staff to visit the LPF
site as

background to my comments.

A. THE IMPOSSIBILITY OF DOCUMENTING ALL INVENTIONS IN SOFTWARE

It appears that PTO statute, and case law, permits anyone to patent

software prior art, even if original inventor\'s source programs were
made

available to the public. As I understand it, this can occur if the
original

inventor did not fully document every invention incorporated into the
software. The citations from LPF sources, strongly imply that software,
written years before a patent applicant made a submission, were denied
as prior art. This state of

affairs is intolerable in light of the mandate to the PTO to \"Promote
the Progress

of Science and Useful Arts\". Software developers typically incorporate

dozens, or hundreds of inventions in each program. Large computer
systems, such as the X window system developed with federal and industry
funds, and released to industry and academia in source form, over 15
years ago, probably

incorporates hundreds or thousands of inventions. The X system is very
large, and it\'s specifications and manuals encompass many volumes.
Nevertheless, the

software inventions were not documented! The X system requires a full
bookshelf

of documents to be used effectively by developers, but full
documentation

of all software inventions for X would probably require a small library
room

full of bookshelves!.

Instead of the several millions of dollars invested in the X window
system, rapidly developed by gifted MIT technologists, several tens or
hundreds of millions of dollars would have been required for complete
documentation of all software inventions expressed in the X window
software. Clearly, documenting all inventions, beyond release of the
source code, is impractical in many cases.

Software written many years ago is now threatened with patent
infringement because of the nature of program creation, as elaborated
above. Damage to the public due to patent of prior art software is
doubly harmful when the original software was contracted for by the
federal government, and then released to industry and the public in
source form, to promote economic progress. This state of affairs is a
downright tragedy.

It is obvious, that as long as software patents are permitted, a great
deal of prior art will be patented. The developers and users of this
prior art must not be held hostage to large corporate interests who can
afford to submit hundreds or thousands of prior art claims. There should
be injunctive relief for any firm or developer who can show that prior
art, in the form of source code, was in the public domain prior to the
patentholder\'s submission.

B. EXTREME OBVIOUSNESS OF BUSINESS PROCESS AND EXAMINER LIMITATIONS

Extreme instances of obvious business process patents have occured,
these ridiculous patents ( eg. 5,883,870 ) are not worthy of the PTO.
The above patent refers to the incorporation of bar code into the
business process of filling a prescription. Pardon me, but the
obviousness of the application of bar code ( a 30 year old technology )
to the claims of 5,883,870 should be perceivable to any american born
computer literate teenager, or to anyone who has been developing bar
code technology for the retail trade.

As to the question of business process patentability, the mere
utilization of

computers must not be an excuse for patent. If examiners are to be
competent to evaluate new art which is a blend of software and business
process, they must be multi-disciplined. Examiners should be hired who
are CPA\'s with a solid minor in computer science. There are thousands
of accounting systems documented in reference volumes in public,
university, and business libraries. These texts dating back to the
1920\'s and further, document a massive number of business processes.
Many of these processes can be implemented verbatim in software. There
are certainly thousands or millions of obvious adaptations of these
systems to make them compatible with computer operations. All of these
sources have persisted into the computer age. Any inquisitive, native
born american, with the aptitudes to become a PTO examiner, and training
in modern accounting/business system principles, would have been exposed
to this prior art.

C. EXAMINER COMPETENCIES

I am concerned that examiners are not being trained who are
technologically

literate. Merely possessing a computer science degree does not equip one

for multi-disciplinary evaluation of patent claims. Most computer
science

majors do not have concurrent majors in engineering or physics.
Therefore, all

prior art in the domains of information theory, digital communications,
and control

theory is not pursued by them. A great many \"inventions\" dealing with
software

for networking, the internet, multimedia, and general data
transformation over

communication channels, have direct analogs in applications for the
switched

telephone system, satellite broadcasting systems, and military
communications. Citations for these mature, heavily engineering oriented
technologies, do not appear with popular computer terms like
\"client/server\", metadata, multi-tier, etc. Nonetheless, much of what
appears novel when confined to ACM and other computer publications, has
already been exploited if a careful reading of communications and
digital electronics periodicals over the last 50 years is made.

The PTO must take into careful consideration the millions of lines of
source

code in the public domain, accessable thru the worldwide internet. I am

making a copy of this email available to my elected representative, and
am

urging him to consider legislation that would give full protection to
prior art

source code, without descriptive documentation, under Section 10.35 USC.
102,

a, b, and g.

The courts have unwisely thrust the PTO into the realm of software
patents. As a technology professional, with over 30 years of experience,
I must strenuosly oppose them. My sentiments, in regards to obviousness
challenges for hardware, versus software, would see 100 software patent
applications rejected, for every one hardware.

And I am being generous.

Stan Katz

1 Reeder Place

Suffern, NY 10901

# 8.

# 

# To: Ms. Lois Boland

Re: USPTO notice of public hearing and request for comments on issues
related

to the identification of prior art during the examination of a patent
application.

Dear Lois:

I currently practice as a US Patent Agent #37930. I have filed hundreds
of

patent documents and prosecuted most of these patents to issue.

Recently I attended a monthly luncheon of the Orange County Patent Law

Association at which the speaker, a research specialist, to my
amazement,

spent about 90 minutes presenting dozens of patent cases where little or
no

proper prior art was recognized by either the filing attorney or the
Examiner

or both. I have a strong background in research and believe that most of

these cases should have had cited art. One issued patent presented zero

prior art. After research, the speaker found a technical paper published
by

the same inventor two years prior to patent filing, that fully disclosed
the

patented matter.

When I asked the speaker what was \"going-on,\" his reply astonished me.
It

was his opinion, after working closely with hi-tech companies for years,
that

some (many?) large technology based companies, such as IBM, have a
policy of

filing patents on everything they can think of, with as little prior art
as possible. \"Let the competitor spend the money to invalidate the
patent if they can\" seems to work better than spending research money
upfront only to self-disqualify possible profitable commercial
positions.

This issue seems to define a juncture between legal and business

cross-purposes.

I believe that the solution is to have the inventor sign a mandatory
further

declaration when filing his application. This declaration would clearly,
define in detail, what was searched and what was found by the inventor.
There should be no excuse today with the type and quantity of research
material available, literally for free, on the Internet for anyone to
complain of a hardship in prior art discover.

I believe that the PTO should reject any application that does not
present a

best efforts prior art discovery and teach its relevance to the novel
matter.

Doesn\'t it seem odd that the Examiner is faced with the full burden of
prior

art discovery when the inventor has worked in his art field for years in
most

cases? Lets face it, if an inventor thinks he/she has invented something

novel, shouldn\'t he/she be required to have a reasonable basis for such
an

opinion?

Respectfully,

Gene Scott

9\.

This mail arrives pursuant to the Federal Register excerpt at

[http://www.uspto.gov/web/offices/com/sol/notices/priorart.htm]{.underline}

requesting comments on how the U.S. Patent and Trademark Office can

improve its procedures

In the area of computer software, a major and important source of

prior art presently not recognized by the USPTO is archives of

open-source software; that is, software distributed in source code

form and made available under licenses that permit redistribution

and modification of the source without fee or legal restriction.

Major open-source repositories include:

Metalab: [http://metalab.unc.edu/pub/Linux/welcome.html]{.underline}

Python Software Activity: [http://www.python.org]{.underline}

CPAN [http://www.perl.com]{.underline}

Pointing a browser at
[http://metalab.unc.edu/pub/Linux/!INDEX.html]{.underline}

and exploring a bit should prove especially instructive.

Open source should be particularly important to the USPTO because it

effectively expresses (indeed, it \*defines\*) the state of common

engineering art among software designers in the Internet and Unix

communities, both of which are rapidly growing in importance as the

Internet becomes more pervasive in the world economy.

There are many, many bad software patents that would never have ben

issued had the PTO been aware of prior art existing for many years

(in some cases for decades) in open source.

On this page, you request:

\> 1. Name and affiliation of the individual responding; and

I am Eric S. Raymond, the president of the Open Source Initiative

(OSI). The OSI promotes and maintains the Open Source Definition,

which is a set of criteria for open-source software licenses that is

widely recognized as authoritative both by the Internet community and

by major software vendors such as IBM, Netscape, and Apple.

For more information on OSI, please see our site at

[http://www.opensource.org]{.underline}

\> 2. If applicable, indications of whether comments offered represent

views of the respondent\'s organization or are the respondent\'s
personal

views.

The OSI Board has not approved this note (the timing was bad; your
hearings begin tomorrow, I only found out about them last night, and we
won\'t meet until Wednesday). However, I confidently predict that it
will endorse the representations about the parlous state of the present
system made here.

Your solicitation of comments requested the following specifics.

\(a\) Provide support for your conclusions and identify the

following:

\(i\) The area(s) of technology most affected; and

Computer software. Especially, technologies bearing on operating

systems, networking, the Internet, distributed computing, graphics,

and multimedia.

\(ii\) The type(s) of prior art most overlooked by the USPTO,

including but not limited to United States patents, foreign patent

documents, and nonpatent literature.

Open-source software archives. Especially, the codebases for the

major open-source products that are the running gears of the Internet:

\* The Linux operating system (which by many estimates now runs a

plurality of all the Internet servers in the world).

\* The various open-source BSD Unix operating systems (important at

several high-volume web and FTP sites).

\* The BIND library, used everywhere for DNS resolution.

\* The Apache web server, which runs 63% of the world\'s web sites.

\* Perl, the engine for about 85% of the Internet\'s live content.

\(b\) Identify why you perceive that patent examiners are not

considering the most pertinent prior art.

Ignorance of its existence.

2\. Do applicants submit the most pertinent prior art that they are

aware of in connection with a filed patent application? If not, please

include the following in your response:

\(a\) Provide support for your conclusions and identify the following:

\(i\) The area(s) of technology most affected; and

\(ii\) the type(s) of prior art that is not being submitted by

> applicants, including but not limited to United States patents,
> foreign patents, and nonpatent literature.

Same as above under question 1\...

\(b\) Identify why you perceive that applicants are not submitting

the most pertinent prior art.

Because it would render them unable to get the patents they desire?

Really, expecting \*applicants\* to voluntarily submit invalidating

prior art is expecting them to behave against their own interests. It

would be absurd to expect great diligence here, or anything more than

minimum compliance with law and procedure.

\> 3. Are the current rules and procedures for obtaining prior art

during the examination of a patent application adequate and

effective?

In software, they are not. In fact, there is widespread feeling in

the Internet developer community that the patent system (at least as

regards software) is presently serving its Constitutional charter very

badly. It rewards large corporate entities with the legal staff to

push through bogus and over-broad patents on obvious techniques, and

then penalizes the working engineer and entrepreneur who \`infringes\'

them through independent use or reinvention of the same obvious

techniques.

\>If not, please include the following in your response:

\(a\) Identify aspects of the rules and procedures that do not

facilitate the identification of pertinent prior art;

1\. Failure to recruit or consult technical experts who are really

conversant with what constitutes \"common\" or \"obvious\" art in

software. (Most patent examiners, not having specific knowledge

of software, seem too ready to assume that an obscure or complex

claim is an indicator of novelty. In fact, truly novel ideas

in software are very uncommon.)

2\. Failure to tap the 30-year-old tradition of open-source

development, despite its creation of a huge body of common art

that today\'s Internet utterly relies on.

3\. Over-reliance on applicants\' representations based on applicants\'

self-servingly narrow definitions of what constitutes relevant

literature.

\(b\) Discuss any proposed changes to the rules or procedures to

improve the identification of pertinent prior art; and

\(c\) Discuss potential advantages and hardships that patent

applicants and examiners would face if particular changes were

adopted.

We have a problem here.

USPTO does not have the resources to research prior art in terabytes

of open-source software code, and cannot reasonably be expected to
develop

same in the near term. Therefore the review process must depend on

applicants and thrird parties.

On the other hand, we cannot reasonably expect applicants to go beyond

the letter of the USPTO requirements when doing so might go against

their own interests.

Therefore, a requirement that applicants certify there is no prior art

in open-source software should be made part of the letter of USPTO

procedure, with the patent instantly being declared invalid and your

normal penalties for fraudulent application assessed if this turns out

not to have been the case.

I recommend that the USPTO develop a list of well-known repositories

which applicants are required to certify against before grant of a

patent. I would be glad to assist in developing such a list.

Forthermore, I recommend USPTO develop a practice of announcing

software patent applications to appropriate public channels on

the Internet for challenge by the Internet population at large.

The idea here is that any pointer to an implementation of the

technique prior to the date of the patent application could be

considered invalidating prior art. In many cases the Internet

community would be both able and highly motivated to produce such

pointers.

\> 4. Are prior art searches typically conducted before filing a

patent application with the USPTO?

I am not sufficiently familiar with typical applicant procedures to

answer the questions under point 4 and 5 with confidence.

\> 6. Should applicants be required to conduct a prior art search and

submit corresponding search results, including where they searched, to

the USPTO when filing a patent application? If not, should applicants

be required to disclose whether or not a search was conducted? Please

explain your rationale and discuss any potential advantages and

drawbacks.

Please see my answer to point 4. I propose that applicants should in

fact be required to do a prior art search on well-known open-source

repositories, with teeth put in the requirement by the threat that the

patent will be annulled and fraud penalties assessed if they fail to

disclose prior art of which they should have been aware.

\> 7. Should applicants be required to submit all prior art relied

upon during the drafting of the claims of a patent application? Please

explain your rationale and discuss any potential advantages and

drawbacks.

\> 8. Should applicants be required to submit all nonpatent literature

directed to the same field of invention attributable to, authored by,

or co-authored by the applicant? Please explain your rationale and

discuss any potential advantages and drawbacks.

\> 9. Please identify any type(s) of nonpatent literature documents

applicants should be required to submit to the USPTO in connection with

any given patent application (e.g., conference reports, corporate

collections, documents relied on in drafting an application, etc.).

Please explain your rationale and discuss any potential advantages and

drawbacks.

These are not issues of primary concern to me or OSI. We are primarily

concerned with preventing the cornering of common engineering art that
is

already present in open source by bad patents.

\> 10. If you believe that the most relevant prior art is not being

identified during patent examination, please identify any suggestions

to obviate this problem. In your response, please:

\(a\) Discuss in detail any idea for addressing this problem

effectively;

\(b\) Explain how the proposal(s) should be implemented;

I believe I have done so above.

\(c\) Identify who should bear the cost; and

Applicants accrue benefits from patents; they should therefore bear

the burden of establishing that they are legitimate.

\(d\) Indicate any potential advantages and drawbacks for each

suggestion.

These additional requirements would make the acquisition of software

patents more difficult. This would be an advantage, as the threat of

patent litigation is proving a serious drag on software innovation (I

know of skilled developers so terrified by it that they contemplate

leaving the industry).

Investors in bogus patents would, of course consider it a drawback.

\--

\<a href=\"http://www.tuxedo.org/\~esr\"\>Eric S. Raymond\</a\>

An armed society is a polite society. Manners are good when one

may have to back up his acts with his life.

\-- Robert A. Heinlein, \"Beyond This Horizon\", 1942

10\.

To Commissioner of Patents and Trademarks (Attention of Elizabeth Shaw)

Concerning searches for prior art, I quote the following from the
\"Background\" text of the Supplementary Information Email circulated
with the Notice of Hearing and Request for Public Comments:

However, searching prior art in emerging technologies presents
challenges. First, the terminology in such fields may not be
standardized, which makes it difficult to

conduct automated searches based on key terms. Second, prior art
information in new technologies is frequently not categorized or indexed
in a fashion that facilitates searching and accessibility. Lastly, prior
art in certain areas, such as software-related inventions, may not be
available through customary or predictable means.

In my opinion, this description of the task of searching for prior art
reflects the main problem for which PTO has been justly and severely
criticized: The above complaint describes why PTO now is in trouble.

The task of the PTO is to recognize true innovation and present it to
the public, carefully distinguishing it from false claims, and thus to
assist the patent assignee in exercising the exclusive right of the
Letters Patent.

Innovation rarely will fall into past categories; so, while sorting-out
the past and giving access to it to the examiners will help, the job
description of a patent examiner must include the ability to find
relevant prior art without assistance and

with ingenuity and insight of a successful inventor.

It must be taken for granted that any application describing an
\"invention\" that falls into an easily identified category probably
does not describe an invention at all, but merely a copy of something
already in the art.

I therefore suggest that mechanisms for searching the PTO prior art
database, whatever its form, should NOT rest solely on predefined
keywords or category names, but should include optional full-text search
capability of all relevant

documents or secondary indices.

Of course, the PTO definition of \"prior art\" should include, pending
examination, anything in the Library of Congress.

\--

John

jwill@pacbell.net

John Michael Williams

11\.

This mail arrives pursuant to the Federal Register excerpt at

[http://www.uspto.gov/web/offices/com/sol/notices/priorart.htm]{.underline}

requesting comments on how the U.S. Patent and Trademark Office can
improve

its procedures.

In the area of computer software, a major and important source of prior
art

presently not recognized by the USPTO is archives of open-source
software;

that is, software distributed in source code form and made available
under

licenses that permit redistribution and modification of the source
without

fee or legal restriction.

Major open-source repositories include:

Metalab: [http://metalab.unc.edu/pub/Linux/welcome.html]{.underline}

Python Software Activity: [http://www.python.org]{.underline}

CPAN [http://www.perl.com]{.underline}

Pointing a browser at
[http://metalab.unc.edu/pub/Linux/!INDEX.html]{.underline} and

exploring a bit should prove especially instructive.

Open source should be particularly important to the USPTO because it

effectively expresses (indeed, it \*defines\*) the state of common
engineering

art among software designers in the Internet and Unix communities, both
of

which are rapidly growing in importance as the Internet becomes more

pervasive in the world economy.

Patents are a major deterrent to continued advances in software. There
are

many software patents that would never have been issued had the PTO been

aware of prior art existing for many years (in some cases for decades)
in

open source, and that are used by their holders (generally large
companies)

as barriers to market entry by small and innovative companies: the
converse

situation, in which a small company uses patents as an appropriate lever
for

its own advancement, is rare in comparison. Thus preventing the awarding
of

inappropriate patents would be of major benefit to the industry. We are

prepared to provide the PTO with background material discussing this
point

in depth.

On this page, you request:

\> 1. Name and affiliation of the individual responding; and

This statement is being made by the board of directors of the Open
Source

Initiative (OSI). The OSI promotes and maintains the Open Source

Definition, which is a set of criteria for open-source software licenses

that is widely recognized as authoritative both by the Internet
community

and by major software vendors such as IBM, Netscape, and Apple. The

statement has been reviewed by each member of the board, all of whom are

experienced and respected software developers, several of whom have

participated in founding highly successful software businesses, and one
of

whom (Deutsch) has done significant reading specifically on issues of

software patents. The complete list of board members\' names and

affiliations may be found at

[http://www.opensource.org/board.html]{.underline}

For more information on OSI, please see our site at

[http://www.opensource.org]{.underline}

\> 2. If applicable, indications of whether comments offered represent

\>views of the respondent\'s organization or are the respondent\'s
personal

\>views.

The comments have been approved by the board as the view of OSI as an

organization, as well as having been reviewed by each board member

individually.

Your solicitation of comments requested the following specifics.

\> (a) Provide support for your conclusions and identify the

\> following:

\> (i) The area(s) of technology most affected; and

Computer software. Especially, technologies bearing on operating
systems,

networking, the Internet, distributed computing, graphics, and
multimedia.

\> (ii) The type(s) of prior art most overlooked by the USPTO,

\>including but not limited to United States patents, foreign patent

\>documents, and nonpatent literature.

Open-source software archives. Especially, the code bases for the major

open-source products that are the running gears of the Internet:

\* The Linux operating system (which by many estimates now runs a
plurality

of all the Internet servers in the world).

\* The various open-source BSD Unix operating systems (important at
several

high-volume web and FTP sites).

\* The BIND library, used everywhere for looking up domain names and
locating

the computer system to which they refer.

\* sendmail, used for forwarding mail throughout the Internet.

\* Netscape\'s Web browser, the first commercial Web browser and until

recently the one most widely used on the Internet.

\* The Apache web server, which runs 63% of the world\'s web sites.

\* Perl, the engine for about 85% of the Internet\'s live content.

\* The GNU software tools and applications, many of which are shipped
with

Linux but which are identifiably separate from it and in many cases
predate

it, and which are used to develop much of the abovementioned software.

\> (b) Identify why you perceive that patent examiners are not

\>considering the most pertinent prior art.

Ignorance of its existence.

\> 2. Do applicants submit the most pertinent prior art that they are

\>aware of in connection with a filed patent application? If not, please

\>include the following in your response:

\> (a) Provide support for your conclusions and identify the

\>following:

\> (i) The area(s) of technology most affected; and

\> (ii) the type(s) of prior art that is not being submitted by

\>applicants, including but not limited to United States patents,
foreign

\>patents, and nonpatent literature.

Same as above under question 1.

\> (b) Identify why you perceive that applicants are not submitting

\>the most pertinent prior art.

Expecting \*applicants\* to voluntarily submit invalidating prior art is

expecting them to behave against their own interests. It would be

unreasonable to expect great diligence here, or anything more than
minimum

compliance with law and procedure.

\> 3. Are the current rules and procedures for obtaining prior art

\>during the examination of a patent application adequate and

\>effective?

In software, they are not. In fact, there is widespread feeling in the

Internet developer community that the patent system (at least as regards

software) is presently serving its Constitutional charter very badly. It

rewards large corporate entities with the legal staff to push through

inappropriate and over-broad patents on obvious or well-known
techniques,

and then penalizes the working engineer and entrepreneur who
\`infringes\'

them through independent use or reinvention of the same techniques.

\>If not, please include the following in your response:

\> (a) Identify aspects of the rules and procedures that do not

\>facilitate the identification of pertinent prior art;

1\. Failure to recruit or consult technical experts who are really
conversant

with what constitutes \"common\" or \"obvious\" art in software. (Most

patent examiners, not having specific knowledge of software, seem too

ready to assume that an obscure or complex claim is an indicator of

novelty. In fact, truly novel ideas in software are very uncommon.)

2\. Failure to tap the 30-year-old tradition of open-source development,

despite its creation of a huge body of common art that today\'s Internet

utterly relies on.

3\. Over-reliance on applicants\' representations based on applicants\'

self-servingly narrow definitions of what constitutes relevant

literature.

\> (b) Discuss any proposed changes to the rules or procedures to

\>improve the identification of pertinent prior art; and

\> (c) Discuss potential advantages and hardships that patent

\>applicants and examiners would face if particular changes were

\>adopted.

USPTO does not have the resources to research prior art in terabytes of

open-source software code, and cannot reasonably be expected to develop
same

in the near term. Therefore the review process must depend on applicants

and third parties.

On the other hand, we cannot reasonably expect applicants to go beyond
the

letter of the USPTO requirements when doing so might go against their
own

interests.

Therefore, a requirement that applicants certify there is no prior art
in

open-source software should be made part of the letter of USPTO
procedure,

with the patent instantly being declared invalid and your normal
penalties

for fraudulent application assessed if this turns out not to have been
the

case.

We recommend that the USPTO develop a list of well-known repositories
which

applicants are required to certify against before grant of a patent. We

would be glad to assist in developing such a list.

Furthermore, we recommend USPTO develop a practice of publishing
software

patent applications to appropriate public channels on the Internet for

challenge by the Internet population at large. This population is

collectively far more skilled in and knowledgeable of prior art than any

team that the USPTO could assemble within its own organization. Any

implementation of a technique prior to the date of the patent
application

could be considered invalidating prior art, and in many cases the
Internet

community would be both able and highly motivated to produce evidence of

such implementation.

\> 4. Are prior art searches typically conducted before filing a

\>patent application with the USPTO?

We are not sufficiently familiar with typical applicant procedures to
answer

the questions under point 4 and 5 with confidence.

\> 6. Should applicants be required to conduct a prior art search and

\>submit corresponding search results, including where they searched, to

\>the USPTO when filing a patent application? If not, should applicants

\>be required to disclose whether or not a search was conducted? Please

\>explain your rationale and discuss any potential advantages and

\>drawbacks.

Please see our answer to point 4. We propose that applicants should in
fact

be required to do a prior art search on well-known open-source
repositories,

with teeth put in the requirement by the threat that the patent will be

annulled and fraud penalties assessed if they fail to disclose prior art
of

which they should have been aware.

\> 7. Should applicants be required to submit all prior art relied

\>upon during the drafting of the claims of a patent application? Please

\>explain your rationale and discuss any potential advantages and

\>drawbacks.

\> 8. Should applicants be required to submit all nonpatent literature

\>directed to the same field of invention attributable to, authored by,

\>or co-authored by the applicant? Please explain your rationale and

\>discuss any potential advantages and drawbacks.

\> 9. Please identify any type(s) of nonpatent literature documents

\>applicants should be required to submit to the USPTO in connection
with

\>any given patent application (e.g., conference reports, corporate

\>collections, documents relied on in drafting an application, etc.).

\>Please explain your rationale and discuss any potential advantages and

\>drawbacks.

These are not issues of primary concern to OSI. We are primarily
concerned

with preventing the issuing of inappropriate patents that result in
\`locking

up\' common engineering art that is already present in open source
software.

\> 10. If you believe that the most relevant prior art is not being

\>identified during patent examination, please identify any suggestions

\>to obviate this problem. In your response, please:

\> (a) Discuss in detail any idea for addressing this problem

\>effectively;

\> (b) Explain how the proposal(s) should be implemented;

We believe we have done so above.

\> (c) Identify who should bear the cost; and

Applicants accrue benefits from patents; they should therefore bear the

burden of establishing that they are legitimate.

\> (d) Indicate any potential advantages and drawbacks for each

\>suggestion.

These additional requirements would make the acquisition of software
patents

more difficult. This would be an advantage, as the threat of patent

litigation is proving a serious drag on software innovation (we know of

skilled developers so terrified by it that they contemplate leaving the

industry). Investors in questionable patents would, of course, consider
it

a drawback. It is our deeply considered judgment that the software
industry

as a whole would on the balance derive great benefit from the steps we
have

recommended above.

For the OSI board: Ian Murdock, Secretary