Appeal No. 2006-3121
Application No. 10/165,083
We will sustain the examiner’s rejection of claim 31 under 35 U.S.C.
§ 101. At the outset, we find that appellants’ description of transmission-type
media on page 16 of the specification as including “wired or wireless
communications links using transmission forms, such as, for example, radio
frequency and lightwave transmissions” certainly implicates carrier waves and
signals despite the absence of such terms in the description.
That said, the issue, quite simply, is whether a claimed computer program
product that is broad enough to include transmission-type media -- media that
includes carrier waves and signals -- is statutory subject matter. We
acknowledge that we are unaware of any case law that has specifically decided
this question either way. It could be argued that a carrier wave or signal is not
statutory subject matter because it does not fall within any of the four categories
of statutory subject matter.4 In this instance, claim 31 includes both statutory and
non-statutory subject matter that, according to recent proposed USPTO interim
guidelines, must be amended to recite solely statutory subject matter.5
Even if a carrier wave or signal could be considered to be an article of
manufacture, however, we find that such a carrier wave or signal does not
operate as the claimed computer program product. Claim 31 recites a computer
4 See, e.g., Ex Parte Hartmann, No. 2006-1607, 2006 WL 2700810, at 4 (B.P.A.I. 2006) (non-
precedential) (“‘Signals’ are not statutory subject matter. A case involving this issue is presently
on appeal to the Federal Circuit: In re Nuijten, No. 06-1301.”). See also “Interim Guidelines for
Examination of Patent Applications for Patent Subject Matter Eligibility,” 1300 Off. Gaz. Pat.
Office 142, Annex IV(c) (Nov. 22, 2005).
5 See “Interim Guidelines for Examination of Patent Applications for Patent Subject Matter
Eligibility,” 1300 Off. Gaz. Pat. Office 142, § IV(C)(2) (Nov. 22, 2005) (“[A] claim that can be read
so broadly as to include statutory and nonstatutory subject matter must be amended to limit the
claim to a practical application.”).
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