Appeal No. 2006-2228
Application No. 10/231,678
Judge MacDonald, concurring.
A. INTRODUCTION
I concur with the result reached by the majority and add the following
analysis.
Appellant has admitted at pages 2-3 of the Reply Brief filed May 9, 2006,
that claims 35, 37, and 38 are intended to include intangible embodiments, as
follows:
The word "signal" does appear in the claims, but taken in
context, the term signal is part of a phrase "signal bearing" that
modifies the term "media." The term "computer-readable signal
bearing media" is term is used by appellant to describe in a
succinct manner in the claims any media that is computer-readable
and that bears a signal. The claimed computer-readable signal
bearing media includes tangible embodiments, such as recordable
media recited in claim [36]. The claimed computer-readable signal
bearing media also includes transmission media, which can include
both tangible embodiments (tangible wire transmission) and
intangible embodiments (wireless transmission).
The crux of Appellant’s argument is as follows (page 5 of Brief filed
November 28, 2005):
The examiner has imposed a requirement that the signal
bearing media be tangible without support in the patent laws or
regulations. In the Response to Arguments section of the final
office action, the examiner cites the State Street Bank case as
requiring that the claimed invention as a whole must accomplish a
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