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.

Details:
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.