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Software Articles Must Disclaim Transitory Signals Under Section 101

by | Aug 26, 2013 | Patent | 0 comments

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.