By Dennis Crouch
Ex parte Mewherter (PTAB 2013)
The USPTO has recently designated Ex parte Mewherter as a precedential decision with regards to its treatment of rejections under 35 U.S.C. § 101. The opinion basically holds that standard Beauregard claims (computer readable storage media) are not patent eligible because they could encompass transitory signals that are unpatentable under the Federal Circuit's Nuijten decision.
IBM's Patent Application Serial No. 10/685,192 is directed to a "system for converting slide show presentations" that converts each slide into "raster imagery" and then extracts contextual data (such as titles) and places those "in proximity to the raster imagery." The claim at issue here is claim 16, that is written as follows:
16. A machine readable storage medium having stored thereon a computer program for converting a slide show presentation for use with a non-presentation application, the computer program comprising a routine of set instructions for causing the machine to perform the steps of:
Extracting a slide title for a first slide in a slide show presentation produced by a slide show presentation application executing in memory of a computer;
Converting said first slide with said slide title into a raster image;
Disposing both said slide title and said raster image of said slide in a markup language document; and
Repeating said extracting, converting and disposing steps for a selected group of other slides in the slide show presentation.
The examiner rejected the claim under 35 U.S.C. § 101 as claiming non-statutory subject matter. In particular, the examiner indicated that the instructions could be imbedded in a signal or wave and are therefore unpatentable under In re Nuijten (Fed. Cir. 2007). In its appeal to the PTAB, IBM argued that its claimed "machine readable storage medium" is sufficiently fixed to avoid the transitory concerns expressed by the Federal Circuit in Nuijten. In the appeal, however, the PTAB affirmed the examiner's rejection – finding that under the "broadest reasonable interpretation" a "machine readable storage medium" continues to encompass unpatentable transitory signals. Here, the specification does not particularly define the claim term and IBM did not offer any promise that the claim is limited to non-transitory signals.
In its 2012 examination training, the USPTO offered parallel guidance:
When the specification is silent (no special definition of a CRM provided in original disclosure):
– It is acceptable to amend the claims to exclude the signal embodiment by adding "non-transitory" to modify the computer readable media.
– See "Subject Matter Eligibility of Computer Readable Media" (Jan. '10)
"Non-transitory" is not a requirement, but simply one option.
– Applicant can choose other ways to amend the claim in accordance with the original disclosure.
– Not acceptable to just add "physical" or "tangible"
– Nuijten's ineligible signals were physical and tangible.
– Not acceptable to add "storage" absent support in original disclosure because the broadest reasonable interpretation of computer readable storage media based on common usage covers signals/carrier waves.
The bottom line here is that patent applicants must now specifically disclaim transitory waves or signals as their compositional carrier of any software claims.