Should anyone have a monopoly on USPTO examiner data? Many have looked for ways to improve an applicant's ability to efficiency move a patent application through the patent office by using examiner statistics. Some sources are free, and some have looked for ways to monetize the data by adding value beyond the data. Similar approaches have long been used in other areas of the law, such as in how particular judges rule on certain issues, etc. These data collections can generate large revenues and thus some of the large legal aggregators are in the business.
In general, the USPTO has all of this data yet gives selective access only to certain vendors. Whether or not this practice is fair or appropriate, many believe that the data should be more easily available from the Federal Government. While this might reduce the fees that some of these companies have been able to successfully extract from law firms and large corporate clients, access to the data itself should be on a level playing field.
Some vendors, like Lexis/ReedTech, not only pursued special access to the data, but actually tried to use patent law to keep a monopoly on providing this data to users. As was their right (at least before Alice), they filed US 11/891,101 in 2007 for a computer-implemented method of generating patent examiner-specific responses to queries. Claim 21 on appeal is reproduced below:
As one might imagine, there was a Section 101 rejection. But, as you might not expect, it was recently reversed by the PTAB (essentially because of the Berkheimer memo and the lack of evidence for what was well-understood and routine). Nevertheless, the PTAB affirmed the rejection based on the cited combination of three references (and also affirmed the rejection that the claims were indefinite). The PTAB essentially relied on the Examiner's reasons for the rejection and brushed away the applicant's arguments as merely attacks on the references individually. As noted in a previous post (here), one must be exceedingly clear and logical in obviousness arguments on appeal to avoid a quick affirmance by the PTAB on the theory that the applicant has only attacked the references individually. Here, ReedTech essentially put forth a 1-paragraph argument against the combination rejection and did not sufficiently articulate why, even if combined as suggested, there was a problem with the rejection. In the end, it was relatively easy for the PTAB to sustain the rejection.
So, while one might have predicted an easy Section 101 affirmance, in the end it is the ole-fashioned issue of obviousness that determined the outcome in this examiner-statistics case. Also, maybe ReedTech should have checked the available examiner data for their case at bigpatentdata.com and they would have seen that prosecution was going to be difficult from the beginning: