Appeal 2006-2228
Application 10/231,678
modifies the term “media.” The term “computer-readable
signal bearing media” is term is used by appellant to describe in
a succinct manner in the claims any media that is computer-
readable and that bears a signal. The claimed computer-
readable signal bearing media includes tangible embodiments,
such as recordable media recited in claim [36]. The claimed
computer-readable signal bearing media also includes
transmission media, which can include both tangible
embodiments (tangible wire transmission) and intangible
embodiments (wireless transmission).
The crux of Appellant’s argument is as follows (page 5 of Brief filed
November 28, 2005):
The examiner has imposed a requirement that the signal bearing
media be tangible without support in the patent laws or
regulations. In the Response to Arguments section of the final
office action, the examiner cites the State Street Bank case as
requiring that the claimed invention as a whole must
accomplish a practical application by producing a “useful,
concrete, and tangible result.” This citation to State Street
Bank confuses the issue of patentability under 35 U.S.C. § 101
with respect to the pending independent claims. [Emphasis
added.]
Appellant has admitted that in claims 35, 37, and 38, the “computer-
readable signal bearing media” includes “intangible embodiments (wireless
transmission).” On its face, this in turn includes “carrier waves” or
“propagated signals” which are not statutory subject matter. Claims that are
broad enough to include nonstatutory subject matter (intangible signals) as
well as statutory subject matter (tangible manufactures) are considered to be
unpatentable because applicant may always amend to limit the claims to
what is statutory. See Ex parte Lundgren, 76 USPQ2d 1385, 1417-24
(BPAI 2005) (Barrett, concurring-in-part and dissenting-in-part). A case
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013