Appeal No. 95-2552
Application 07/886,228
The reference to 35 U.S.C. § 194 is presumably meant to refer to § 105 since there is no § 194.
Section 105, entitled "Inventions in outer space," is contained within Chapter 10 of Title 35,
"Patentability Of Inventions," and is directed to conditions under which an invention made, used, or sold
in outer space shall be considered to be made or sold within the United States. Section 105 does not
address whether inventions used in space are statutory subject matter and therefore is not relevant to the
statutory subject matter issue.
The examiner further states (Examiner's Answer, page 3):
The instant claimed invention further does not claim the structure of the satellite to which
the country of registry would have legal territorial rights, what is claimed is a "satellite system"
that it [sic, is] neither a process nor an article of manufacture.
It is true that the claims do not recite detailed structure of the satellite, but we fail to see how this affects
the statutory subject matter analysis of the claimed "satellite system." The invention is the arrangement
of satellites to produce an improvement in elevation angle of the line-of-sight and not the structure of
the satellites themselves. The satellites are claimed broadly as "having communication means providing
communication with the Earth" (claims 1 and 15) or as "communicating with and orbiting the Earth"
(claim 27); however, this is sufficient to indicate that the satellites which form the system are real
physical objects, not just an abstraction.
The examiner lastly states (Examiner's Answer, page 3):
The mere mention in the claim that it is a communication system does not make the
"system" patentable under 35 USC 194 [sic, 105?], since it appears that the "novelty" lies in the
arrangement of the satellites not the fact that the satellites are able to communicate with the
United States.
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