Appeal 2006-2228
Application 10/231,678
STATEMENT OF CASE
Appellant requests reconsideration under 37 C.F.R. § 41.52 from a
decision of the Board of Patent Appeals and Interferences dated
September 28, 2006.
In the decision a majority opinion authored by Judge Jerry Smith,
joined by Judge Krass, and a concurring opinion authored by Judge
MacDonald, affirmed the rejection of the Examiner.
Appellant contends that the majority erroneously imposes
requirements that are not imposed by the statute.
[The Board’s] analysis incorrectly imposes a temporal
requirement, namely, that the program product reside on the
signal bearing media all at one time. This requirement is not
present in the claims, and is not imposed by 35 U.S.C. § 101.
This requirement was apparently derived from the Board based
on common examples of tangible media, such as magnetic and
optical disks that contain an entire computer program at one
time. This requirement, however, is not based in the statute or
legislative history, and unduly limits the scope of 35 U.S.C.
§ 101.
* * *
The Board has imposed artificial constraints on appellant's
claims, that the entire computer program recited in claims 35,
37 and 38 must reside on a carrier wave at a single point in
time, and that the functions of the computer program must be
available while being transmitted. These constraints are not
imposed by 35 U.S.C. § 101 or by the express language of
claims 35, 37 and 38.
(Request 2-3).
We grant-in-part.
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