Appeal 2007-1341
Application 09/894,065
§ 112, sixth paragraph, which states that an element in a claim for a
combination may be expressed as a "means or step" for performing a
function and will be construed to cover the corresponding "structure,
material, or acts described in the specification and equivalents thereof."
"Structure" and "material" indicate tangible things made of matter, not
energy.
As discussed above, claim 21 includes an intangible embodiment that
does not have any tangible physical structure or substance and does not fit
the definition of a "manufacture" which requires a tangible object.
Our conclusion that a "signal" does not fit within any of the four
categories of § 101 is consistent with In re Bonczyk, 10 Fed. Appx. 908
(Fed. Cir. 2001) (unpublished) ("fabricated energy structure" does not
correspond to any statutory category of subject matter and it is unnecessary
to reach the alternate ground of affirmance that the subject matter lacks
practical utility) and with the Interim Guidelines for Examination of Patent
Applications for Patent Subject Matter Eligibility, 1300 Off. Gaz. Patent and
Trademark Off. (O.G.) 142, 152 (Nov. 22, 2005), in the section entitled
"Electro-Magnetic Signals."
Claims 23-27 and 31, each of which depends from claim 21, are thus
also directed to an intangible embodiment. These claims are rejected under
35 U.S.C. § 101 for the same reasons discussed with respect to claim 21.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides that, "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
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