Top of Notices Top of Notices   (228)  December 26, 2017 US PATENT AND TRADEMARK OFFICE Print This Notice 1445 CNOG  997 

Software, Computer-Implemented Referenced Items (227, 228, 229)
(228)        Subject Matter Eligibility of Computer Readable Media

   The United States Patent and Trademark Office (USPTO) is obliged to give
claims their broadest reasonable interpretation consistent with the
specification during proceedings before the USPTO. See In re Zletz, 893
F.2d 319 (Fed. Cir. 1989) (during patent examination the pending claims
must be interpreted as broadly as their terms reasonably allow). The
broadest reasonable interpretation of a claim drawn to a computer readablle
medium (also called machine readable medium and other such variations)
typically covers forms of non-transitory tangible media and transitory
propagating signals per se in view of the ordinary and customary meaning of
computer readable media, particularly when the specification is silent.
See MPEP 2111.01. When the broadest reasonable interpretation of a claim
covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as
covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346,
1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to
statutory subject matter) and Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009;
p. 2.

   The USPTO recognizes that applicants may have claims directed to
computer readable media that cover signals per se, which the USPTO must
reject under 35 U.S.C. § 101 as covering both non-statutory subject matter
and statutory subject matter. In an effort to assist the patent community
in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in
this situation, the USPTO suggests the following approach. A claim drawn
to such a computer readable medium that covers both transitory and
non-transitory embodiments may be amended to narrow the claim to cover only
statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding
the limitation "non-transitory" to the claim. Cf. Animals - Patentability,
1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants
add the limitation "non-human" to a claim covering a multi-cellular
organism to avoid a rejection under 35 U.S.C. § 101). Such an amendment
would typically not raise the issue of new matter, even when the
specification is silent because the broadest reasonable interpretation
relies on the ordinary and customary meaning that includes signals per se.
The limited situations in which such an amendment could raise issues of new
matter occur, for example, when the specification does not support a
non-transitory embodiment because a signal per se is the only viable
embodiment such that the amended claim is impermissibly broadened beyond
the supporting disclosure. See, e.g., Gentry Gallery, Inc. v. Berkline
Corp., 134 F.3d 1473 (Fed. Cir. 1998).

                                                            DAVID J. KAPPOS
                                            Under Secretary of Commerce for
                                                  Intellectual Property and
                                       Director of the United States Patent
                                                       and Trademark Office

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