Board reverses 101 "transitory" rejection because specification amendment removed reference to signals

Takeaway: The Patent Trial and Appeals Board reversed a § 101 rejection of a "computer program product tangibly embodied in an information carrier" because the Applicant had amended the specification during prosecution to remove references to signals and carriers. Although recognizing that In re Nuijten required a rejection under § 101 "when the broadest reasonable interpretation of a claim covers a signal per se," the Board determined that the broadest reasonable interpretation should take into account the specification amendment that removed the reference to signals and carriers.

Details:
Ex parte Pyka
Appeal 2010005667; Appl. 11/025,686; Tech. Center 2100
Decided:  Dec. 31, 2012

The application on appeal was directed to computer searching using global agreed-upon data structures. A representative claim on appeal read:

     14. A computer program product tangibly embodied in an information carrier, the computer program product comprising instructions that, when executed, cause at least one processor to perform operations comprising:
...
     wherein the request broker is configured to receive the search request and to transmit the search request to one or more non-local servers for execution of the search request; and
     wherein the standardized data structure is a globally agreed-upon data structure.
(Emphasis added.)

During prosecution, the Examiner rejected claim 14 under § 101 as being directed to non-statutory subject matter. Based on a particular paragraph in the specification, the Examiner noted that "Appellant intends the information carrier to include signals as such the claim is drawn to a form of energy." However, the Examiner further noted that "energy is not one of the four categories of invention."

In response, the Applicant amended the specification to delete the sentence upon which the § 101 rejection was based: "Optionally, further carriers and further signals embody computer program products (CPP) to be executed by further processors in computer 901 and 902." In the Remarks section, the Applicant stated that the amendment overcame the rejection "by narrowing the scope of the claim to statutory subject matter."

In a Final Office Action, the Examiner maintained the § 101 rejection and added an objection to the specification, alleging that the amendment by deletion introduced new matter.

The Applicant appealed the § 101 rejection and various prior art rejections. In the Appeal Brief, the Applicant first addressed the new matter objection. According to the Applicant, "a change does not equate to an addition" and "narrowing a specification's disclosure by deleting material is .... the antithesis of adding matter."  Turning to the § 101 rejection, the Applicant argued that claims should be interpreted in light of the amended specification; without the carriers and signals language in the specification, the claim was statutory.

The Examiner elaborated on his reasoning in the Answer:

The question here is given Appellant's specification would one of ordinary skill in the art interpret "information carrier" to include signals which are not statutory subject matter. The deletion of the phrase does not change what is meant by "information carrier". Appellant's specification states "Generally, carrier 970 is an article of manufacture having a computer-readable medium with computer-readable program code to cause the computer to perform methods of the present invention. Further, signal 980 can also include computer program product." Given this statement information carrier is would generally (most of the time) be a computer readable medium (as defined on pages 11 and 12 of the specification). However, an information carrier could also include the signal that holds the computer program product as stated.

The Applicant filed a Reply Brief. After noting that "removing material from the specification is specifically permitted by the [C.F.R.]", the Applicant explained that the Examiner's insistence that only originally filed matter be considered led to nonsensical results.

For example, if the reasoning in the Examiner's Answer were applied to the interpretation of claims, then the claims as originally-filed would indicate an intention on the part of an applicant to broadly claim his or her invention, any amendments to those claims would not and could not overcome that original intention, and the amended claims might never be allowed based solely on the original claiming intention of an applicant. The Appellant respectfully submits that this simply cannot be what the Patent statute and the rules of the Patent Office dictate ...

The Board reversed the § 101 rejection. The Board first noted that In re Nuijten required a rejection under § 101 "when the broadest reasonable interpretation of a claim covers a signal per se." However, the broadest reasonable interpretation should take into account the specification amendment that removed the "carriers and signals" sentence.

Thus, the broadest reasonable interpretation of claim 14's preamble ("[a] computer program product tangibly embodied in an information carrier") only covers a computer program product embodied in physical media (i.e., a nontransitory tangible media). When the scope of the claim language is considered in light of Appellants' amended Specification, we conclude that the claimed "tangibly embodied in an information carrier" means "materially or physically" embodied in a physical media (non-transitory tangible media), and not embodied in non-physical media (transitory propagating signals).

My two cents: Not sure why the Applicant deleted from the spec rather than amended the claim to add "non-transitory." The appeal was filed back in 2009, and I don't think adding "non-transitory" was in vogue back then like it is now.

I've seen many Board decisions that affirmed § 101 rejections when the spec was silent about signals, so it's interesting that the Board used the absence of signals in the amended spec to reverse the rejection. The PTO's current position is that silence in the spec about signals and computer readable media means signals are covered:

The broadest reasonable interpretation of a claim drawn to a computer readable 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.
(PTO 2010 Memo "Subject Matter Eligibility of Computer Readable Media.")

Says who? How did the PTO decide that the ordinary and customary meaning of CRM covers signals?

The Applicant's blanket statement that deleting from the spec can't possibly be new matter ignored Federal Circuit precedent. When the Appeal Brief was filed in 2009, the controlling law was Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008). In Baldwin, the Federal Circuit held:

The examiner rightly refused to allow the applicants to amend the specification to remove references to `heat' as the way of sealing the sleeve," for the change "would have broadened the patent and introduced impermissible new matter" and rendered the reissue claims "invalid for lack of support in the initial disclosure." 

The Federal Circuit reiterated this position more recently in Anascape, Ltd. v. Nintendo of America, Inc., 601 F. 3d 1333 (Fed. Cir. 2010).