Wednesday, January 13, 2010

Examiner can't infer non-statutory embodiments (Ex parte Azuma)

Ex Parte Azuma
Decided September 14, 2009
(Appeal 2009-003902, Appl. No. 10/726,443, Tech. Center  2600)

I missed this decision when it came out, but I'm glad I became aware of it (through this post at 271 Patent Blog.) I can use it when pesky Examiners reject my computer-readable medium claims under §101 as allegedly covering a signal — when my spec never talks about a "signal" !

In Ex Parte Azuma, one of the claims recited "a computer usable medium having computer usable program code embodied therewith.” The specification referred to "such computer usable media as a distributed magnetic disk, an optical disk, semiconductor memory, or other recording media, or distributed over a network." The spec further stated that "the hardware configuration may include several storage media: main memory 103, hard disk 105, floppy/disk drive 109 and various other hardware configurations such as, a CD-ROM or DVD-ROM drive."

The Examiner rejected this claim under §101, reasoning that because the spec did not specifically limit the medium to a storage medium, the medium then includes a signal under the broadest reasonable interpretation. In particular, the Examiner pointed to the "various other hardware configurations" phrase in the spec. 

The Board acknowledged that computer instructions embodied in a signal are not statutory under In re Nuijten, but did not agree with the Examiner's interpretation of "computer usable medium." According to the Board, this term did not stretch to cover a signal in this instance because the "other configurations" were "hardware configurations," which implied a tangible embodiment. 

This case will be useful to those of us dealing with "software" claims, because it addresses the practice of an Examiner reading non-statutory signal embodiments into a claim. That said, don't assume all is well for computer-readable medium claims, since a number of BPAI decisions rejected such claims under §101. The most widely reported is probably Ex parte Cornea-Hasegan, which used Bilski to affirm a rejection of a computer readable medium claim, holding that "the analysis of a 'manufacture' claim and a 'process' claim is the same under §101."

By the way, if you want to know more about how the BPAI has been applying Bilski, check out this article reviewing BPAI decisions that discuss Bilski (up to Sept. 2009).

6 comments:

  1. I find it interesting that the Examiner zoomed in on the phrase "various other hardware configurations" rather than on "distributed over a network." Unless the "network" was described as a FEDEX/UPS/USPS type of network, I would assume that the "network" refers to Internet/WAN/LAN. Based on that assumption, I would be inclined to interpret the phrase "distributed over a network" as indicating a signal transmitted over the network.

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  2. Yeah, I can see your point. The sentence you refer to does seem like better ammunition to reject under Nuijten. But I'll play devil's advocate.

    If I were arguing to save this claim, I would argue that in this context, "distributed" does not mean "transmitted". The sentence actually says "the program may be...distributed over a network". I'd argue that "distributed" means that different pieces of the program *reside* in different places. And so has nothing to do with a signal carrying the program.

    I'm not sure which of us has the stronger position.

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  3. Food for thought: can you save a claim from invalidation under Nuijten by deleting the problematic portion of the spec?

    I've heard some practitioners say that deleting material from the spec can be new matter. That makes sense if the effect of deleting is to broaden the meaning. But I don't see how changing "any media which can store or propagate the program" to "any media which can store the program" broadens the meaning. Doesn't it narrow the meaning? And if so, how does this change introduce new matter?

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  4. What the Azuma's specification actually said was:

    "The program for controlling the CPU 101 may be provided in the form of a distributed magnetic disk, optical disk, semiconductor memory, or other recording media, or distributed over a network"

    So while the spec did talk about transmitting a program over a network, the spec clearly did *NOT* identify the network as a computer usable medium. Instead the network is an alternative to using a disks, recording media, etc.

    "can you save a claim from invalidation under Nuijten by deleting the problematic portion of the spec?"

    Deleting might be problematic. Attempts to narrow meanings (e.g. narrowing ranges, add negative limitations, specify specific materials) often do add new matter, so perhaps narrowing is not a good indicator.

    That said, I believe its possible to find some way to limit the claim to tangible media without delecting or adding anything to the spec. I'd try adding the word "tangible" even if it were not in the spec.

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  5. "But I don't see how changing "any media which can store or propagate the program" to "any media which can store the program" broadens the meaning. Doesn't it narrow the meaning? And if so, how does this change introduce new matter?"

    Think about making that change in the context of a claim which uses "comprising" then get back to me.

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  6. >Think about making that change
    >[deleting "or propagate" from "any media which
    >can store or propagate the program"]
    >in the context of a claim which uses
    >"comprising" then get back to me.

    I'm not following you when you say "in the context of a claim that uses comprising". Can you give an example?

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