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In an homage to John Welch’s well-known TTAB Blog, today we ask “Would you have appealed this 35 U.S.C. § 101 rejection?
In a straightforward decision today, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner’s 35 U.S.C. § 101 rejection of a computer program product claim based on the disclosure of a transitory medium in the specification. This blog post highlights a very common rejection for software-related claims. Recall that “A transitory, propagating signal . . . is not a process, machine, manufacture, or composition of matter [under 35 U.S.C. § 101] and, therefore, does not constitute patentable subject matter under § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Claims that are so broad that they read on nonstatutory as well as statutory subject matter are unpatentable. Cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA 1972) (citation omitted) (‘Claims which are broad enough to read on obvious subject matter are unpatentable even though they also read on nonobvious subject matter.’). See my previous post regarding 35 U.S.C. § 101 rejections.
The case of Ex parte Castaneda involved a software application that provided calendaring services. The Examiner rejected a “computer useable medium” claim because it encompassed carrier waves. Thus, the Examiner found that the claim was directed to non-statutory subject matter under 35 U.S.C. § 101 (In re Lintner notwithstanding).
The Appellant’s specification clearly
disclosed that a computer usable medium may include propagation
mediums, such as electronic, magnetic, optical, electromagnetic, or infrared
signals. Still, the Appellant decided to appeal and simply argued that the
computer usable medium “could” encompass statutory subject matter and
that sufficed in overcoming a non-statutory subject matter.
In light of Appellant’s disclosure
in the specification, the Board decided:
“…
we find that the claimed “…computer useable medium embodying computer
usable program code…” can be broadly, but reasonably construed to
encompass a transitory, propagating signal, which is non-statutory subject
matter. Further, since the claim is not limited to a non-transitory, tangible
medium within one of the four statutory classes of 35 U.S.C. § 101, we agree
with the Examiner that independent claim 13 is directed to nonstatutory subject
matter.”
I would not have
appealed this 35 U.S.C. § 101 rejection. Mainly because it would have been so
easy to amend the specification or the claim to eliminate non-statutory subject
matter. It would have taken no time to delete the non-statutory language from
the specification or insert the phrase “wherein computer usable medium
does not include transitory subject matter” in an amendment. This often
happens when the patent attorney misses the time frame for amending the claim
before the Notice of Appeal or Appeal Brief was due and then is stuck having to
assert a bogus argument against the 101 rejection. If the due date for filing
an Appeal Brief has arrived, it’s too late to enter a substantial amendment.
What
does this mean for practitioners? This means that if you define your
claim term, such as “computer usable medium,” to include transitory
media, such as carrier signals, then you can expect a 35 U.S.C. § 101
rejection. It doesn’t matter that your claim term “could possibly”
include statutory subject matter. If the claim term’s ascribed meaning includes
non-statutory subject matter, then a 35 U.S.C. § 101 rejection will survive
appeal.
Further, watch your docketing due
dates and make sure that if you have to amend the specification or claims to
avoid a 35 U.S.C. § 101 rejection, it is done as soon as possible.
Specifically, the amendment should be completed within a month of the Final
Rejection, so it will most likely be entered. Don’t wait until the date the
Appeal Brief or Notice of Appeal is due. Otherwise, you could find yourself in
the same predicament as Ex parte Castaneda, which resulted in a full
affirmation of the Examiner’s rejections – a total loss.
Mark Terry is a registered
patent attorney with over a decade of experience prosecuting patent and
trademark applications before the U.S. Patent and Trademark Office. Mark is
located in the City of Miami.
We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.