In Ex parte Mewherter, a recent decision by the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO), the Board handed down a precedential decision regarding the language of computer-readable medium (CRM) claims. Particularly, this decision established that computer readable storage media (CRSM) claims are not patent eligible unless the claims recite the magic term “non-transitory,” or the specification adequately limits the term “storage media” to exclude signals, carrier waves, or other transitory signals. These transitory signals are not patentable subject matter under the Federal Circuit’s In re Nuijten decision, because they do not fall into any of the four statutory categories (i.e., process, machine, manufacture, or composition) set forth in 35 U.S.C. § 101.
In Ex parte Mewherter, the applicant claimed a “machine readable storage medium having stored thereon a computer program for converting a slideshow presentation for use within a non-presentation application.” Among the various rejections issued by the Office, claims 16-22 were rejected under 35 U.S.C. § 101 for failure to claim statutory subject matter. In particular, the Office indicated that claiming a “machine readable storage medium” does not satisfy the requirements of 35 U.S.C. § 101 since a broad interpretation of the claim language would cause the term to encompass transitory media, such as signals, carrier waves, etc., as taught in the Office’s guideline Subject Matter Eligibility of Computer-Readable Media. These guidelines require that the Office construe a claim reciting computer-readable storage media as encompassing a signal per se unless amended to avoid such language. In its rejection of claims 16-22 under § 101, the Office found that the claim language did not expressly or implicitly limit the medium to “non-transitory” embodiments. Thus, the Office interpreted the claim language as encompassing transitory signals and rejected the claims under § 101.
In response to the § 101 rejections, the applicant asserted that the claimed “machine-readable storage medium” is distinguishable from a “machine-readable medium” because the former is limited to a medium for permanently storing information, whereas the latter includes a transitory medium such as a carrier wave. The applicant submitted that the claims satisfied the § 101 requirements due to a difference between a transmission medium (e.g., light, electricity, EMF, etc.) not allowed by In re Nuijten and a “storage” medium (e.g., memory, hard disk, CD-ROM, etc.) as expressly claimed. The applicant further asserted that “machine-readable storage medium” stores computer-readable instructions that, when executed, cause a computer to perform certain functions, thereby establishing structural and functional interrelationships between the computer and the stored instructions, resulting in the claim being directed to a statutory class of subject matter (e.g., a machine).
On appeal, the Board considered several basic factors derived in prior cases to determine whether a “computer readable storage medium” avoided encompassing a non-statutory signal. First, the Board recognized that the applicant’s specification failed to expressly limit the term to differentiate it from the non-statutory signal as noted by the USPTO. Therefore, the Board relied on extrinsic evidence to determine the meaning of “machine-readable storage medium.”
The Board found that a “growing body of evidence . . . demonstrated that the ordinary and customary meaning of ‘computer readable storage medium’ to a person of ordinary skill in the art was broad enough to encompass both non-transitory and transitory media.” The Board looked at extrinsic evidence in the form of published applications, including other applications by the applicant, that indicated that a person of ordinary skill in the art would view understand the term to encompass transmission media. In addition, the Board found applications of industry participants (e.g., Hewlett-Packard and Cisco) within the field also used the terms “machine-readable storage medium” to encompass signals or waves. Based on finding many examples of the term to include signals or waves in the applicant’s own prior patent applications as well as the industry participants’ applications, the Board held that the USPTO correctly interpreted the claim language of the application to encompass non-statutory transitory media.
Ultimately, the Board stated that “[g]iven the significant amount of available guidance and evidence supra, we conclude that those of ordinary skill in the art would understand the claim term ‘machine-readable storage medium’ would include signals per se,” and held that the Office’s rejection of claims 16-22 under § 101 was proper. The Board noted, however, that the applicant was not precluded from amending the claims to overcome the rejection under § 101, such as by including the term “non-transitory” in the claim.
Within Examiner training guidelines issued by the USPTO, procedures are set forth to evaluate CRM claims. Specifically, the guidelines state that “[w]hen the specification is silent, the broadest reasonable interpretation of a CRM and a CRSM in view of the state of the art covers a signal per se. Thus, in this case, a claim to a CRM or CRSM is ineligible unless amended to avoid the signal embodiment.” If the patent application, as filed, provides a “special definition that explicitly draws a distinction between computer readable storage media, defining it as hardware discs, and computer readable transmission media, defining it as signals per se”, then a claim limited to storage media could rely on the special definition and would be eligible. Thus, it appears that the USPTO initially presumes that a CRM claim lacking the term “non-transitory” is directed to signals per se unless the applicant provided explicit support in the specification limiting the claim to hardware media. The USPTO is looking for applicants to distinguish hardware storage vs. signals per se so that claims are clearly and unmistakably directed only to the hardware storage.
The USTPO guidelines further explain that a transitory, propagating signal is not within one of the four statutory categories under 35 U.S.C. § 101. The USPTO guidelines state that an electric or electromagnetic transmission is manmade and physical (i.e., it exists in the real world and has tangible causes and effects), but was found not to qualify as a manufacture, or any of the other statutory categories by the Federal Circuit (In re Nuijten). However, it is arguable as to whether the Federal Circuit in In re Nuijten was concerned with physical storage (as recited in most CRM claims) versus a claimed signal being “physical and real” or not possessing “concrete structure.” In the case of In re Nuijten, the Federal Circuit seemed to be concerned that “the electromagnetic wave, or perhaps the particles that make it up (modern physics teaches that both features are present simultaneously)” are not a mechanical “device” or “part”, and thus, would not qualify as a “machine” as that term is used in § 101. Whether a CRM claim reciting physical storage media would qualify as a machine was not at issue for the Federal Circuit. Thus, the USPTO guidelines seem to take the holding of In re Nuijten to require that CRM claims recite an invention in a way that can only be interpreted as non-transitory media.
The USPTO guidelines state examples of unacceptable techniques to overcome § 101 rejections for CRM claims. For instance, the USTPO guidelines state that it is not acceptable to just add “physical” or “tangible” to CRM claims to overcome § 101 rejections, nor is it acceptable to simply add “storage” absent support in the original disclosure. The strict rule in the USPTO guidelines that “physical”, “tangible”, or “storage” are terms that can still encompass carrier waves does not seem supported by the decision of In re Nuijten. One would think that such terms are sufficient to indicate a permanency of the signal on the manmade thing to alleviate the USPTO concerns of transitory or non-permanent signals carried on carrier waves.
Nonetheless, to satisfy USPTO guidelines and U.S. patent Examiners, a best practice approach may include providing the special definition in the patent specification that explicitly distinguishes computer readable storage media (defined as hardware) and computer readable transmission media (defined as signals per se), so that a claim limited to storage media could rely on the special definition and would be eligible for patenting under § 101. For additional support, it may be worthwhile to include dependent claims reciting various structural components of the hardware, as well as reciting the magical “non-transitory” term to cover all bases.
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 Ex parte Mewherter, No. 2012-007692 (P.T.A.B. May 8, 2013).
 Id. at 13.
 In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007).
 Ex parte Mewherter, at 3 (claim 16).
 Id. at 5.
 Id. at 6.
 Id. at 6-7.
 Id. at 13.
 Id. at 4-5.
 Id. at 5.
 Id. at 6.
 See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (“[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.”).
 See Ex parte Mewherter, at 7-8.
 Id. at 8.
 Id. at 9.
 Id. at 8-12.
 Id. at 13.
 Id. at 14.
 See U.S. Patent and Trademark Office, Evaluating Subject Matter Eligibility Under 35 USC § 101 (August 2012 Update) at 13, available at http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf [hereinafter USPTO Guidelines].
 Id. at 12.
 In re Nuijten, 500 F.3d at 1355.
 USTPO Guidelines, at 14.