31 January 2010

USPTO on patentability of computer readable media

As also reported on Patentability and IP Spotlight, the USPTO published a notice on "Subject Matter Eligibility of Computer Readable Media". Therein the problem is addressed that a claim directed to a compter-readable medium (or the like) currently is likely to be interpreted by the authorites (in the boadest reasonable way, as required according to MPEP 2111.01) as comprising non-statutory subject-matter, since the subject-matter claimed may cover "forms of non-statutory tangible media and transitory propagating signals per se" and thus has to be rejected under 35 U.S.C. 101. In this situation, the USPTO now tries to assist applicants in overcoming such (potential) rejection and suggestes the following appoach: 
A claim drawn to such a computer readable medium that covers 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.  Cf. Animals Patentability, Off. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation “non-human” to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. 101).
Regarding the concern that such amendment could lead to a new matter objection, it is further explained that
such an amendment would typically not raise the issue of new matter, even when the specification is silent, because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se.  The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure.  See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).