Appeal No. 2006-2240
Application No. 10/232,015
were statutory. Articles of manufacture in designs manifestly require physical matter to provide
substance for embodiment of the design. Since an "article of manufacture" under § 171 has the
same meaning as a "manufacture" under § 101, it is inevitable that a manufacture under § 101
requires physical matter.
Some further indirect evidence that Congress intended to limit patentable subject matter
to physical things and steps is found in 35 U.S.C. § 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.
The signal of claim 36 does not have any physical structure or substance and does not
fit the definition of a "manufacture" which requires a tangible object. It is further worth
noting that we construe claim 36 to be claiming the signal as it is propagating, and not the
embodiment wherein the signal is stored on a medium, we consider claim 35 to be drawn to
this embodiment. As such the signal of claim 36 is also not a manufacture as it does not exist
as a whole at one time but is rather claiming a stream of information. The signal of claim 36
is considered an "abstract idea," as discussed supra. This analysis is consistent 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." Rather than invent reasons why this different
type of subject matter may be statutory and open up a whole new type of subject matter for
patenting, we leave it to our reviewing court, the U.S. Court of Appeals for the Federal
Circuit to make this decision. In summary, the signal of claim 36 is unpatentable subject
matter because it does not fall within any category of § 101.
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