Most software or computer-related patent applications today include a number of different types of claims, such as method claims, device claims, and computer-readable medium (CRM) claims. Such CRM claims are usually directed to an article of manufacture, for example, a computer-readable medium, on which are encoded, typically, instructions for carrying out a method. This type of claim is often referred to as a Beauregard or a CRM claim, named after the decision In re Beauregard 53 F.3d 1583 (1995), in which the Federal Circuit noted that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101. Prior to this decision, claims to pure computer instructions were generally considered not patentable because they were viewed as "printed matter," that is, a set of instructions written down on paper as noted in an old U.S. Court of Customs and Patent Appeals case In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) ("printed matter by itself is not patentable subject matter, because [it is] non-statutory . . .").
A recent decision by the Patent Trial and Appeal Board (PTAB) at the U.S. Patent Office again considered a CRM claim type not patentable because it was viewed as "printed matter."
On September 28, 2015, the Patent Trial and Appeal Board (PTAB) at the U.S. Patent Office issued a decision captioned Ex parte Edward K.Y. Jung, Royce A. Levien, Robert W. Lord, Mark A. Malamud, and John D. Rinaldo (Appeal 2013-003143; Application 12/799,367; Technology Center 2600). A number of issues were appealed, and only the appeal of rejections of claims under 35 U.S.C. § 101 is discussed here.
In particular, claim 95 was rejected under 35 U.S.C. § 101 because the claimed subject matter was found to be nonfunctional descriptive material. Claim 95 is reproduced below:
95. One or more non-transitory media bearing one or more instructions for facilitating operations comprising:
obtaining at least one image representation from at least one image capture device;
identifying one or more entities authorized to receive the at least one image representation obtained from the at least one image capture device based on at least one indication of at least one subset list of one or more individuals selected from at least one larger list; and
transmitting at least one portion of the at least one image representation obtained from the at least one image capture device to at least some of the one or more entities identified as being authorized to receive the at least one image representation obtained from the at least one image capture device.
During prosecution, the Examiner had concluded that claim 95 encompasses non-functional descriptive matter because it recites instructions on non-transitory media without reciting that the non-transitory media is used or usable with a computer or machine. The Examiner explained that "the scope of the presently claimed non-transitory media can range from paper on which the program is written, to a program simply contemplated and memorized by a person."
The Appellants contended that the Examiner erred because the Examiner improperly applied the machine or transformation test to reject the claim under § 101.
However, the PTAB was not persuaded by the Appellants. The PTAB stated that Claim 95 is not a claim to a process, but rather it is a claim to media bearing instructions for a process. The PTAB stated that the Examiner has found, and the Board agreed, that claim 95 does not preclude embodiments that are merely printed instructions on paper, which is a non-transitory medium. The Board stated that claim 95 did not recite any new and unobvious relationship of the instructions with its substrate. The Board held that because of the finding of claim 95 encompassing printed matter by itself, the rejection of claim 95 under § 101 was affirmed.
Here, although claim 95 appears to recite functions performed by devices within the claim limitations (e.g., "obtaining at least one image representation from at least one image capture device…"), the preamble of the claim sets forth the statutory category by which the claim is judged. The preamble here in claim 95 is somewhat different from other traditional forms of CRM claims because the preamble only recites "One or more non-transitory media bearing one or more instructions for facilitating operations comprising". The preamble itself recites that the non-transitory media bears instructions, but no further details of the media are given. Thus, using a broadest reasonable interpretation of non-transitory media, the Patent Office is able to consider such media as anything on which the instructions are provided and last for more than a short period of time, such as secondary or persistent long term computer storage like read only memory (ROM), optical or magnetic disks, compact-disc read only memory (CD-ROM), for example, or more generically, such media here can include paper. Thus, this preamble in claim 95 can really cover any and all types of non-transitory "media".
Consequently, given the broadest reasonable interpretation of the term "media", the Examiner found that in claim 95, "media" can include paper on which the instructions are written, and thus, the printed matter rejection was issued and affirmed on appeal.
This may be a subtle or over-looked issue with respect to CRM claims, in that, although the claim is directed to the "non-transitory media", it is best practice to recite in the preamble that the media is used or usable with a computer or machine. Another common preamble that satisfies this requirement would include "A non-transitory computer readable medium, having stored thereon, instructions that when executed by a computing device, cause the computing device to perform operations comprising…". Of course, other variations of this preamble are possible, but when reciting that the instructions are stored on the medium and executed by a computing device, this is more likely to be interpreted by the U.S. Patent Office outside of the realm of printed matter.
Also, today most Examiners require the term "non-transitory" to be included in the preamble of CRM claims. Sometimes, Applicants try to avoid this term by reciting the preamble as "An article of manufacture including…" or other language specifically stating a physical/tangible storage device that stores the instructions. But, due to a memo titled "Subject Matter Eligibility of Computer Readable Media" issued by the U.S. Patent Office on January 26, 2010, Examiners usually quote the memo and require that the claim recite the media as "non-transitory" media. This memo indicated that the broadest reasonable interpretation of a claim drawn to a computer readable medium 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. The USPTO noted that 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 based on the decision In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007). The USPTO recognized that to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in this situation, the USPTO suggested that such CRM claims that cover 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. And it is this language of the memo that is often quoted by Examiners within a rejection under 35 U.S.C. § 101 of any CRM claims that lack the terminology "non-transitory".
Generally, it is not much of an issue to draft CRM claims to recite "non-transitory" and to recite that the media is used or usable with a computer or machine because the invention is not realistically limited in any narrower way by doing so. In any event, Applicants may not have much of a choice due to the lessons learned here from the PTAB.
