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Monday, 26 August 2013 15:57

Software Articles Must Disclaim Transitory Signals Under Section 101

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It was, perhaps illy established, that transitory signal claims are per se unpatentable under Section 101 of the U.S. patent laws.  This was established by in re Nuijten, a Federal Circuit decision dating back to 2007.  Recently, in Ex Parte Mewherter, the USPTO has went a step further to hold that a standard Beauregard claim (a computer program on a computer readable medium) is not patent eligible, simply because it could encompass transitory signals.  The case has recently been designated by the Patent Trial and Appeal Board (PTAB) as a precedential decision.

The patent on appeal in Mewhether involved a system for converting slide show presentations, the preamble of claim 16 at issue was written as follows:

16. A machine readable storage medium having stored thereon a computer program for converting a slide show presentation for use with a non-presentation application, the computer program comprising a routine of set instructions for causing the machine to perform the steps of:

Extracting a slide title for a first slide in a slide show presentation produced by a slide show presentation application executing in memory of a computer;
Converting said first slide with said slide title into a raster image;
Disposing both said slide title and said raster image of said slide in a markup language document; and
Repeating said extracting, converting and disposing steps for a selected group of other slides in the slide show presentation.

The claim was rejected under 35 USC 101 as claiming non-statutory subject matter.  Particularly, the examiner indicated that the instructions claimed could be embedded in a signal, and are therefore unpatentable under Nuijten.  On appeal to the PTAB, the Appilcant argued that the claim to a machine readable storage medium was sufficient to avoid transitory concerns expressed in Nuijten.  The PTAB, however, affirmed the examiner's rejection, because the broadest reasonable interpretation of a machine readable storage medium includes unpatentable transitory signals.

The takeaway?  Applicants must now expressly disclaim transitory signals as part of their Beauregard software claims.

Read 4011 times Last modified on Wednesday, 20 November 2013 19:46
Tony Guo

As a Registered Patent Attorney, Mr. Guo concentrates his practice in Patent Prosecution and Intellectual Property Litigation.  Mr. Guo has considerable hardware and software development experience, having worked in both development and IT roles for organizations such as Silicon Graphics International, Société Générale, and the University of Miami.  Mr. Guo earned his bachelor's degree in Computer Engineering from Purdue University, and his law degree, with honors, from the University of Miami School of Law.