Appeal No. 2006-2228
Application No. 10/231,678
The examiner’s rejection, in essence, appears to be based on the
examiner’s belief that the claimed invention is not limited to tangible products
or mediums, but could include a medium such as a carrier wave. The examiner
asserts that a signal encoded with functional descriptive material does not fall
within any of the categories of patentable subject matter under 35 U.S.C. § 101
[answer, pages 4-7].
Appellant argues that the requirement that the signal bearing media be
tangible is without support in the patent laws or regulations. Appellant argues
that the examiner is exalting form over substance. Appellant argues that there is
no reason why wireless forms of transmission should be treated differently from
disks, memories and tangible wires used for transmission. Appellant asserts
that if the medium is computer readable, then it is directed to patentable subject
matter under 35 U.S.C. § 101 [brief, pages 5-12].
The examiner remains unpersuaded by any of appellant’s arguments. The
examiner also responds that a carrier wave is not reproducible (useful) at any
time, but only works while being transmitted. The examiner notes that this is
different from a program stored on a disk which may be useful at any time
[answer, page 7].
Appellant responds that the claimed invention is directed to a computer
readable signal bearing media. Appellant acknowledges that such media
includes tangible media but may also include intangible media. Appellant
argues that the technology of today’s world requires that software that is
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