Appeal 2007-2020
Application 10/028,906
instant claim 1 recites five instances of “code,” each “operable” to perform
specified functions. “Code” may be considered as comprising a computer
program listing per se, “operable” in the sense that, once compiled and
reduced to machine-executable form, the computer may be caused to
function as specified by the code. “Code” may also be considered as
referring to machine-executable instructions that are resident on a computer.
However, in the present proceedings we cannot discard the broadest
reasonable interpretation of the claims, consistent with the Specification, in
favor of an interpretation that may limit the claims in such a way to require
statutory subject matter. “An essential purpose of patent examination is to
fashion claims that are precise, clear, correct, and unambiguous. Only in
this way can uncertainties of claim scope be removed, as much as possible,
during the administrative process.” In re Zletz, 893 F.2d 319, 322, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989).
Indeed, the Examiner’s rejection appears to include an indication of
how the claims may be amended to render the claimed matter statutory,
consistent with the Manual of Patent Examining Procedure (MPEP)
§ 2106(IV)(B), p. 2100-10 (8th Ed., Rev. 5, Aug. 2006). The Examiner’s
position is, further, consistent with current Office practice. See MPEP
§ 2106.01(I), p. 2100-18 (8th Ed., Rev. 5, Aug. 2006), which spells out how
one may avoid having claims interpreted as directed to a computer listing
per se: “[A] claimed computer-readable medium encoded with a computer
program is a computer element which defines structural and functional
interrelationships between the computer program and the rest of the
computer which permit the computer program's functionality to be realized,
and is thus statutory.”
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