Thursday, October 14, 2010

BPAI finds "stored on a recordable media" to be transitory and invalid under 101 (Ex parte Kelkar)

Takeaway: In Ex parte Kelkar, the BPAI affirmed a § 101 rejection of claims to "program products stored on a recordable media." Without explanation, the Board adopted the Examiner's reasoning that the claims read on "carrier wave storage," which was transitory and thus non-statutory under In re Nuijten.

Ex parte Kelkar
Appeal 200904635 , Appl. No. 10/629,448, Tech. Center 1600
Decided September 24, 2010

All independent claims were rejected under § 101, including several claims of the form "A program product having computer readable code stored on a recordable media ... comprising: programmed means for ..."

The Examiner rejected the program product claims under In re Nuijten, stating that "the program products stored on a recordable medium read on carrier wave storage (see specification at page 7, lines 14-15) and therefore are not statutory." The relied-upon portion of the specification read:

These programs are contained in media 55 such as a diskette or compact disc or they are part of a communication signal received at a modem or other communications connection version of media 55. Media 55 is connected to bus 52 by an adapter 61 which may be in the form of a communications adapter.
(Emphasis added.)

The Applicant argued that

Applicants' specification does not say "carrier wave storage" which is a novel creation of the Examiner and not contemplated by applicants. One stores programs in a memory which may be solid state circuits, optical or magnetic discs. Programs may be transmitted to a memory in a computer by a communications connection as applicants' specification states but "carrier wave storage" is not real world and is not being claimed by applicant.

The Board did not address the Applicant's argument, but summarily concluded that under the broadest reasonable interpretation, "program products stored on a recordable medium" read on carrier wave storage. As authority, the Board then simply cited to In re Nuijten:
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 nonstatutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter).

My two cents: This decision bothers me because of the lack of guidance from the Board.

The Examiner performed implicit claim construction on "recordable media" and got "carrier wave storage". Assuming the claim construction is correct, the Board should have explained (at a minimum) just exactly why "carrier wave storage" is "transitory" and thus non-statutory under Nuijten. At first glance, "storage" and "transitory" seem to be opposites. So if there is a strained or devious reading in which "carrier wave storage" is "transitory," I want the Board to explain it.

I still think the claim is invalid under the Board's current interpretation of Nuijten  — but they went off track by buying into the storage angle used by the Examiner. Under the Board's reading of Nuijten, a claim that covers both statutory and non-statutory embodiments is non-statutory under § 101. The spec does say "programs can be signals." Since signals are non-statutory, that statement in the spec is fatal to the claim.

However, I'm not convinced the Board's reading of Nuijten is correct, because the Federal Circuit decision was about a claim to a signal. The Federal Circuit didn't say anything about a claim that reads on a signal and on storage.

I actually think the Federal Circuit got In re Nuijten wrong. I was instead persuaded by Judge Linn's dissent, which said that Nuijten's signal claim was valid under § 101 because it was directed to a new and useful manufacture. I was disappointed when the Federal Circuit denied an en banc rehearing.


  1. I was disappointed too.

    This is esp. so considering that Scalia - the swing vote in Bilski - said that signals could be statutory in the Bilski oral arguments.

  2. 1. BPAI Fail.

    >Since signals are non-statutory, that
    > statement in the spec is fatal to the claim.

    I'm not following why you think that the claim as written is nonstatutory. It seems they narrowed it to exclude the signals referenced in the spec.

    Sounds like the "non-transitory" language suggested by the PTO is the way to go.

  3. This issue comes up on each and every Examiner interview I've had where computer-readable media is involved. Several Examiners recommend adding the word "non-transitory" and appear quite willing to overlook enablement issues in spite of the spec failing to teach what is meant by "non-transitory." Another problem - use of this phrase may lead to issues with devices such as DRAMs which need to be periodically refreshed in order to maintain their content. Then the interesting question becomes what is the meaning of transitory - 100ms in a DRAM versus 10ns in a transmission line? So, now it appears to boil down to "how long does a signal have to be stored for the storage to be termed non-transitory?"

    1. I think that's easily addressed. The full storage is not simply the DRAMs alone, it's the DRAMs plus the electronics which refresh them. Those, together as a functional unit, constitute the non-transitory storage.

  4. Karen said:
    >Since signals are non-statutory, that
    > statement in the spec is fatal to the claim.

    Chris said:
    >I'm not following why you think that the claim
    >as written is nonstatutory. It seems they
    >narrowed it to exclude the signals referenced
    >in the spec.

    Yeah, you got me. Reading it again -- this time more carefully - I say the word "recordable" excludes the transitory/non-statutory embodiment in the spec.

  5. The whole Nuitjen line is disappointing. Most plastics are transitory - leave them in the sun for a couple of months and they disintegrate. CDs, DVDs, magnetic tapes, IBM punch cards all degrade with time - does that mean they are transitory? Seems like we lost a lot of the data stored on the dead sea scrolls - does that mean they are transitory? In contrast, a propagating electromagnetic signal will keep going unless it is absorbed by something.

  6. The latest posting by Anonymous comes across as quite philosophical :-)
    One can add - "life itself is transitory."
    But then, so is the USPTO!!
    I'm sure they will eventually backpedal and come up with something acceptable - hopefully that recommendation will be in line with other rational rulings of the courts.
    Microsoft has a vested interested in getting this issue resolved. I assume others such as Google and HP will also be spending a lot of money and effort on this.

  7. I just amended a computer-readable medium claim to include 'non-carrier wave storage medium' as I know in my heart that some outlier district court judge eventually come up with an extremely pro-defense claim construction for 'non-transitory'.

  8. >'non-carrier wave storage medium' [in case a]
    >district court judge eventually come up with an >extremely pro-defense claim construction for

    Interesting. Wonder if there's a good way to address this uncertainty in a tree of dependent claims.

    Something along the lines of "storage" in the independent, if that's acceptable to the Examiner. Then maybe narrow in dependents to non-transitory, non-carrier-wave, etc. etc.

    The idea being that if you express it enough different ways, one of them will withstand a Nuijten attack.

  9. The BPAI needs to reminded that it bears the onus of explaining unpatentability for lack of utility per In Re Brana.

    [T]he PTO has the initial burden of challenging a presumptively correct assertion of utility in the disclosure. Only after the PTO provides evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince such a person of the invention’s asserted utility. In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995) [emphasis added].

  10. >BPAI needs to reminded that it bears the onus
    >of explaining unpatentability for lack of
    >utility per In Re Brana.

    Nah, that whole line of cases is inapplicable here. Because Kelkar really isn't about "utility". Nor is Nuijten or Bilski.

    Section 101 involves different three requirements: utility, subject matter (sometimes called "statutory class"), and inoperability.

    Kelkar, Nuijten and Bilski involve "subject matter" rejections, not utility rejections.

    Where In re Brana involved a utility rejection -- ie, of what use is this chemical compound.

    But practitioners -- myself included -- sometimes get sloppy and refer to any 101 rejection as a "utility."

  11. Good point Karen. Thanks for saving me on this one, I was about to drop the citation into a response. Whew! Close one. This is what happens when my bank of case-law citations grows too large and disorganized.