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Monday, 26 August 2013 00:33

Software Articles Must Disclaim Transitory Signals Under Section 35 USC 101

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It was, perhaps illy established, that transitory signal claims are per se unpatentable under Section 101 of the U.S. patent laws. This was established by in re Nuijten, a Federal Circuit decision dating back to 2007. Recently, in Ex Parte Mewherter, the USPTO has went a step further to hold that a standard Beauregard claim (a computer program on a computer readable medium) is not patent eligible, simply because it could encompass transitory signals. The case has recently been designated by the Patent Trial and Appeal Board (PTAB) as a precedential decision.

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.

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Tony Guo

As a specialized technology counsel, Tony supports his clients in the high tech, creative, and online industries. His primary areas of practice include intellectual property protection, Internet law, and startups. Tony is a USPTO registered patent attorney, as well as a licensed lawyer in California and Florida. He comes from a background involving considerable hardware and software development experience, having worked in both development and IT roles in the tech and finance industries.

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