Instruction from PTO on Software Composition Claims

Scott Daniels | August 28, 2013

Ex parte Mewherter, 2012-007962 (PTAB, 2013)

The Patent Office rarely designates decisions of the Patent Trial and Appeal Board as being “precedential,” but when it does, practitioners take note.  The Patent Office’s designation last week of Ex parte Mewherter, 2012-007692 as falling in that category will be of particular interest to those handling software patent applications. 

The involved application, owned by IBM, claimed:

 A machine readable storage medium having stored thereon a computer program for converting a slide show presentation for use within a non-presentation application, the computer program comprising a routine set of 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 Examiner rejected the claims for failing to comply with 35 U.S.C. § 101 because the claim phrase “machine readable storage medium” encompasses transitory propagating signals, such as signals and carrier waves, and further, the specification does not define that phrase as excluding transitory propagating signals.  The Examiner drew on a guidance statement from the Patent Office in 2010 that “[t]he broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent.”

On appeal, the Board framed the issue:

Under 35 U.S.C. § 101, did the Examiner err in concluding that claims 16-22 encompass transitory media such as “signals, carrier waves, etc.” (Answer 5), i.e., that claims 16-22 are directed to nonstatutory subject matter.

Applicants argued that the word “storage” in the claim phrase distinguished it from “machine-readable medium,” by limiting the claims to “a medium for permanently storing information” (emphasis added).  Applicants explained that claim recites statutory subject matter because “the recited storage medium stores computer-readable instructions that, when executed, cause a computer to perform certain functions, thereby establishing structural and functional interrelationships between the computer and the stored instructions.”  Applicants also cited a series of non-precedential Board decisions interpreting the claim phrase “machine readable storage medium” as reciting statutory subject matter.

The Board agreed with the Examiner.  The Board noted, as had the Examiner, that the specification was silent on whether the word “storage” excluded transitory media, and in fact, the specification never mentions “medium” or “media.”

Citing a series of examples from the extrinsic literature, the Board found “a growing body of evidence … demonstrating that the ordinary and customary meaning of ‘computer readable storage medium’ to a person of ordinary skill in the art was broad enough to encompass both non-transitory and transitory media.”  On the other hand, a dictionary definition of “storage medium” offered by the applicants was considered to be inconclusive.

The Board acknowledged that the decisions cited by applicants were non-precedential, involved specifications which did expressly exclude transitory media, and did not take into account the extrinsic evidence presented in this appeal.

The Board concluded “that those of ordinary skill in the art would understand the claim term ‘machine-readable storage medium’ would include signals per se … [so that] the claims must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter.”

On the bright side, the Board stated that applicants “are not precluded from amending these claims to overcome this rejection,” citing a passage in the 2010 guidance statement to the effect that claims might be amended to define the medium as “non-transitory” or a similar expression – though the words “physical” or “tangible” would not do the trick.


Claims reciting “a machine readable storage medium,” even if allowed, should be amended to recite that the medium is non-transitory.  Surprisingly, the Patent Office does not appear to be concerned about whether the specification contains written description support for such an amendment.

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