Appeal 2007-2225
Application 10/054,809
OPINION
Section 101 rejection
Claims 110 and 111 recited a “tangible, computer accessible medium”
configured to store program instructions. The claims were rejected (Final
Rejection 2) because, in the Examiner’s view, they were not limited to
tangible embodiments. The rejection made reference to page 127 of the
Specification, referring to tangible embodiments (storage media) and
intangible embodiments (transmission media or signals). The Examiner
directed that the rejection could be overcome by amending to include only
physical computer media and not transmission media or other intangible
media. The Examiner further indicated that transmission media would not
be statutory but storage media would be. (Id.)
Appellants submitted an amendment after final rejection, proposing to
amend claims 110 and 111 to their present form. The Examiner indicated
that the amendment would be entered for purposes of appeal (Advisory
Action mailed Sept. 13, 2006), and that an explanation of how the amended
claims would be rejected was “provided below or appended.” (Id.) The
Advisory Action, however, does not explain how the amended claims would
be rejected, other than by reference to “prior art.”
The Examiner in the Answer (4) again rejects claims 110 and 111 as
being directed to nonstatutory subject matter, again referring to page 127 of
the Specification. According to the rejection in the Answer, the
Specification provides evidence that Appellants intend “the medium” to
include signals, a form of energy, which is not one of the four categories of
invention. The rejection in the Answer also submits that claims 35-38, 43,
44, 46, and 61 are drawn to a form of energy and not statutory, but we
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