The patent on appeal in Mewhether involved a system for converting slide show presentations, the preamble of claim 16 at issue was written as follows:

16. A machine readable storage medium having stored thereon a computer program for converting a slide show presentation for use with a non-presentation application, the computer program comprising a routine of set instructions for causing the machine to perform the steps of:

Extracting a slide title for a first slide in a slide show presentation produced by a slide show presentation application executing in memory of a computer;
Converting said first slide with said slide title into a raster image;
Disposing both said slide title and said raster image of said slide in a markup language document; and
Repeating said extracting, converting and disposing steps for a selected group of other slides in the slide show presentation.

The claim was rejected under 35 USC 101 as claiming non-statutory subject matter. Particularly, the examiner indicated that the instructions claimed could be embedded in a signal, and are therefore unpatentable under Nuijten. On appeal to the PTAB, the Appilcant argued that the claim to a machine readable storage medium was sufficient to avoid transitory concerns expressed in Nuijten. The PTAB, however, affirmed the examiner's rejection, because the broadest reasonable interpretation of a machine readable storage medium includes unpatentable transitory signals.

The takeaway? Applicants must now expressly disclaim transitory signals as part of their Beauregard software claims.