Ex Parte Keohane et al - Page 13


               Appeal No. 2006-3121                                                                         
               Application No. 10/165,083                                                                   


               program product for managing source information where the product comprises                  
               instructions that interact with the computer to perform specific functions.  It is our       
               view that the computer cannot perform the claimed functions while the                        
               instructions are within a carrier wave or a signal.                                          
                      Specifically, information sent by carrier waves or signals is transmitted by          
               modulating the carrier wave or signal with the information.  This information must           
               be received and demodulated before the information is available for use.  Thus,              
               the information, while on the carrier wave or signal, is unavailable to the                  
               computer for performing the functions recited in claim 31.  It is also likely that all       
               the information necessary to perform the functions of claim 31 never exists within           
               the carrier wave or signal at any one time.  In other words, it is typical for               
               information that is transmitted by carrier wave or signal to begin to be received at         
               the receiver before all the information is transmitted.  Therefore, it appears to us         
               that a computer program product for carrying out the claimed invention cannot                
               exist while the information is being transmitted on a carrier wave or signal.                
                      For the above reasons, we find that claim 31 recites non-statutory subject            
               matter.6  Accordingly, we will sustain the examiner’s rejection of claim 31 under            
               35 U.S.C. § 101.                                                                             

                                                                                                            
               6 Although not before us on appeal, similar considerations apply to claim 25.  Although the  
               examiner finds claim 25 statutory since the computer program product is “stored in” a computer
               readable medium (as opposed to merely being “in” the medium), we find such a distinction does
               not negate non-statutory subject matter (i.e., carrier waves or signals) from being included in
               claim 25 for the reasons that we discussed with respect to claim 31.  In our view, merely reciting
               that the product is stored in a computer readable medium does not preclude such storage to   
               occur in transmission-type media (e.g., carrier waves or signals).  Accordingly, the examiner
               should reconsider whether claim 25 complies with 35 U.S.C. § 101.                            

                                                    13                                                      


Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next

Last modified: September 9, 2013