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BPAI: 101 Rejections Shouldn't Be Based on Implication If Hardware is Disclosed

By Peter Zura

Ex Parte Azuma, Appeal 2009-003902 (BPAI, September 14, 2009)

The Appellant filed a patent application which claimed, among other things,

?[a] computer program product for causing a computer to translate a text in a first language into a second language, the computer program product comprising: a computer usable medium having computer usable program code embodied therewith.?

The specification disclosed that storage media could be a memory, hard disk, floppy/disk drive and "various other hardware configurations" such as, a CD-ROM or DVD-ROM drive. The computer program for controlling the CPU was disclosed as being stored upon such computer usable media as ?a distributed magnetic disk, an optical disk, semiconductor memory, or other recording media, or distributed over a network.?

In light of this, the Examiner rejected the claims as being directed to nonstatutory subject matter.

Specifically, the Examiner argued that, even though the Specification suggests that the computer usable medium may be a CD-ROM or DVD-ROM, the Specification also suggests that "other configurations are possible as well." The Examiner therefore concluded that the computer usable medium is open to any reasonable interpretation and that one of ordinary skill in the art can appreciate that a computer usable medium can be interpreted as a carrier wave or a network signal, both of which are considered non-statutory under 35 U.S.C. § 101.

The BPAI ruled that since hardware was disclosed, the Examiner could not implicate non-statutory subject matter into the meaning of the claim term

Referring to the Examiner?s finding that the Specification also suggests that "other configurations are possible as well," we find that the Specification teaches in particular that ?various other [hardware] configurations are possible? . . . Since hardware is a tangible medium, we find that the reference to ?various other [hardware] configurations? meets the tangibility requirement to be a manufacture.

Thus, based upon the Specification as a whole, we find that Appellant?s description of a ?computer usable medium? is based upon tangible storage media, such as a server, floppy drive 109, main memory 103 and hard disk 105 as specified by Appellant.

We find that the Examiner erred in finding that the cited claims implicate the use of carrier waves that embody a machine executable program or data structure. Therefore, since Appellant?s independent claim 13 is limited to being recorded on a (tangible) computer-readable medium, we reverse the Examiner?s rejection of independent claim 13 under 35 U.S.C. § 101 as being directed to nonstatutory subject matter.

The BPAI should consider issuing a precedential or informative opinion on the practice of reading non-statutory features into claims by implication. This has become a common practice in certain areas of the USPTO that creates needless conflict for Applicants when a Specification contain catch-all statements ("other configurations are possible") with regard to mediums.

Read/download the opinion here (link)

Full post as published by Two-Seventy-One Patent Blog on September 24, 2009 (boomark / email).