Ex parte Jung (PTAB 2015)

Computer-Readable Medium Claims vs. Printed Matter

By Joseph Herndon --

Most software or computer-related patent applications today include a number of different types of claims, such as method claims, device claims, and computer-readable medium (CRM) claims.  Such CRM claims are usually directed to an article of manufacture, for example, a computer-readable medium, on which are encoded, typically, instructions for carrying out a method.  This type of claim is often referred to as a Beauregard or a CRM claim, named after the decision In re Beauregard 53 F.3d 1583 (1995), in which the Federal Circuit noted that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101.  Prior to this decision, claims to pure computer instructions were generally considered not patentable because they were viewed as "printed matter," that is, a set of instructions written down on paper as noted in an old U.S. Court of Customs and Patent Appeals case In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) ("printed matter by itself is not patentable subject matter, because [it is] non-statutory . . .").

A recent decision by the Patent Trial and Appeal Board (PTAB) at the U.S. Patent Office again considered a CRM claim type not patentable because it was viewed as "printed matter."

On September 28, 2015, the Patent Trial and Appeal Board (PTAB) at the U.S. Patent Office issued a decision captioned Ex parte Edward K.Y. Jung, Royce A. Levien, Robert W. Lord, Mark A. Malamud, and John D. Rinaldo (Appeal 2013-003143; Application 12/799,367; Technology Center 2600).  A number of issues were appealed, and only the appeal of rejections of claims under 35 U.S.C. § 101 is discussed here.

In particular, claim 95 was rejected under 35 U.S.C. § 101 because the claimed subject matter was found to be nonfunctional descriptive material.  Claim 95 is reproduced below:

95.  One or more non-transitory media bearing one or more instructions for facilitating operations comprising:
    obtaining at least one image representation from at least one image capture device;
    identifying one or more entities authorized to receive the at least one image representation obtained from the at least one image capture device based on at least one indication of at least one subset list of one or more individuals selected from at least one larger list; and
    transmitting at least one portion of the at least one image representation obtained from the at least one image capture device to at least some of the one or more entities identified as being authorized to receive the at least one image representation obtained from the at least one image capture device.

During prosecution, the Examiner had concluded that claim 95 encompasses non-functional descriptive matter because it recites instructions on non-transitory media without reciting that the non-transitory media is used or usable with a computer or machine.  The Examiner explained that "the scope of the presently claimed non-transitory media can range from paper on which the program is written, to a program simply contemplated and memorized by a person."

The Appellants contended that the Examiner erred because the Examiner improperly applied the machine or transformation test to reject the claim under § 101.

However, the PTAB was not persuaded by the Appellants.  The PTAB stated that Claim 95 is not a claim to a process, but rather it is a claim to media bearing instructions for a process.  The PTAB stated that the Examiner has found, and the Board agreed, that claim 95 does not preclude embodiments that are merely printed instructions on paper, which is a non-transitory medium.  The Board stated that claim 95 did not recite any new and unobvious relationship of the instructions with its substrate.  The Board held that because of the finding of claim 95 encompassing printed matter by itself, the rejection of claim 95 under § 101 was affirmed.

Here, although claim 95 appears to recite functions performed by devices within the claim limitations (e.g., "obtaining at least one image representation from at least one image capture device…"), the preamble of the claim sets forth the statutory category by which the claim is judged.  The preamble here in claim 95 is somewhat different from other traditional forms of CRM claims because the preamble only recites "One or more non-transitory media bearing one or more instructions for facilitating operations comprising".  The preamble itself recites that the non-transitory media bears instructions, but no further details of the media are given.  Thus, using a broadest reasonable interpretation of non-transitory media, the Patent Office is able to consider such media as anything on which the instructions are provided and last for more than a short period of time, such as secondary or persistent long term computer storage like read only memory (ROM), optical or magnetic disks, compact-disc read only memory (CD-ROM), for example, or more generically, such media here can include paper.  Thus, this preamble in claim 95 can really cover any and all types of non-transitory "media".

Consequently, given the broadest reasonable interpretation of the term "media", the Examiner found that in claim 95, "media" can include paper on which the instructions are written, and thus, the printed matter rejection was issued and affirmed on appeal.

This may be a subtle or over-looked issue with respect to CRM claims, in that, although the claim is directed to the "non-transitory media", it is best practice to recite in the preamble that the media is used or usable with a computer or machine.  Another common preamble that satisfies this requirement would include "A non-transitory computer readable medium, having stored thereon, instructions that when executed by a computing device, cause the computing device to perform operations comprising…".  Of course, other variations of this preamble are possible, but when reciting that the instructions are stored on the medium and executed by a computing device, this is more likely to be interpreted by the U.S. Patent Office outside of the realm of printed matter.

Also, today most Examiners require the term "non-transitory" to be included in the preamble of CRM claims.  Sometimes, Applicants try to avoid this term by reciting the preamble as "An article of manufacture including…" or other language specifically stating a physical/tangible storage device that stores the instructions.  But, due to a memo titled "Subject Matter Eligibility of Computer Readable Media" issued by the U.S. Patent Office on January 26, 2010, Examiners usually quote the memo and require that the claim recite the media as "non-transitory" media.  This memo indicated that the broadest reasonable interpretation of a claim drawn to a computer readable medium 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.  The USPTO noted that when the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter based on the decision In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007).  The USPTO recognized that to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in this situation, the USPTO suggested that such CRM claims that cover both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation "non-transitory" to the claim.  And it is this language of the memo that is often quoted by Examiners within a rejection under 35 U.S.C. § 101 of any CRM claims that lack the terminology "non-transitory".

Generally, it is not much of an issue to draft CRM claims to recite "non-transitory" and to recite that the media is used or usable with a computer or machine because the invention is not realistically limited in any narrower way by doing so.  In any event, Applicants may not have much of a choice due to the lessons learned here from the PTAB.

Ex parte Jung (PTAB 2015)
Before Administrative Patent Judges Thomas, Winsor, and Trock
Decision on Appeal by Administrative Patent Judge Winsor

Comments

[Mark Summerfield]

It is not true that the Federal Circuit has ever held claims in the Beauregard form to be patent-eligible. The court did not decide In Re Beauregard, on account of lack of jurisdiction:

'Briefly, on August 4, 1994, the Board rejected Beauregard's computer program product claims on the basis of the printed matter doctrine. Beauregard appealed. The Commissioner now states "that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101 and must be examined under 35 U.S.C. §§ 102 and 103." The Commissioner states that he agrees with Beauregard's position on appeal that the printed matter doctrine is not applicable. Thus, the parties are in agreement that no case or controversy presently exists.'

Personally, I think the Commissioner was correct to agree with Beauregard. The European Patent Office Boards of Appeal have reached the same conclusion, as had the UK High Court. Claims in this form are now regarded as patent-eligible (so long as the underlying computer-implemented process is patentable) in all jurisdiction of which I am aware.

But the position in the US really should not be regarded as settled.

[skeptical]

Mark,

Issue estoppal...?

[skeptical]

...by that, I mean, since the case was before the court, the court COULD HAVE weighed in and stated that the government's position was wrong, and that therefor, even if the government was "in agreement," there remained a true issue because the government's original assertion was still "true."

At least for argument's sake, the court has weighed in, since a decision not to decide is in itself a decision.

Also, contrast with the Alice case, in which both parties stipulated that claims MET the "hard goods" category prong of 101, and yet the Court continued onward to make a decision directly contradicting an item that lacked "present case or controversy."

Can the courts have it both ways?

[Paul F. Morgan]

Thanks Mark, for noting this common misrepresention of the NON-decision in In re Beauregard.

"Skeptical", the Court could NOT have "weighed in," and had to dismiss the case without any decision, because, as noted, there was no requisite "case or controversy" left after the PTO Commissioner formally fully agreed with the appellant.
UNlike Alice, where only one aspect of the unpatentable subject matter issue [which has always been broader than the literal 101 language]* was undisputed.
*Even the Supreme Court in Diamond v. Chakrabarty specifically stated that: "This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed. 588 (1948); O'Reilly v. Morse, 15 How. 62, 112-121, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 175, 14 L.Ed. 367 (1853). "

[skeptical]

Mr. Morgan,

You quite miss the point that the court in order to do what it did had to agree with the Office that the change in Office stance was indeed correct.

They very easily could have taken the Office view, said, "No, you are not correct, and thus the ORIGINAL complaint remains."

They did not do that.

In order to reach their conclusion they NEEDED to rest on a decision agreeing with the Office.

As to your view for Alice, you also are in error, as there, the stipulations by both parties was very much affected by the Court.

Your quote to Chakrabarty does NOT help you in this facet.

[Paul F. Morgan]

That misses the point of the "case or controversy" requirement for an Article III court. If there is no controversy left between any parties to the case, whatever the validity or reason for that situation, the court no longer has jurisdiction left to decide anything, much less give sua sponte advisory opinions.
Not to be confused with PTO post grant proceedings, where the PTO, as an interested party, can continue the proceeding in some cases even if the adverse party petitioner drops out.

[skeptical]

Paul,

It is you that misses the point (again).

The court has to decide whether or not it believes the Office position IN ORDER TO REACH the point of whether or not any case or controversy has gone away.

You are STILL not viewing, thinking about, comparing and contrasting THE VERY SAME THINGS that went on in the case you want to "dismiss" and the Alice case.

I have no idea why you want to drag into THIS conversation your love of the post grant proceedings. Maybe you want to have another "hoo rah" before those are tanked in an unconstitutional blow back....

[David Boundy]

Skeptical --

Cool off. Your understanding of constitutional "case or controversy" is incorrect. If a court lacks jurisdiction, that's the end -- without constitutional jurisdiction a court is forbidden from expressing any opinion on either party's view.

Beauregard stands for nothing, for the reason Paul explained.

[skeptical]

Respectfully Mr. Boundy, it is you that is mistaken.

This is perhaps a subtle point, so let me guide you.

Ask yourself what would have happened if the court did not agree with the government's position.

The fact that no standing was found mandates that the court did in fact decide to agree with the government's position.

I think that you missed the subtle difference between that agreement and the different point of deciding a case on the merits of the case.

If you STILL disagree, then I invite you to actually think about and compare and contrast what the Court did in the Alice case - especially concerning those claims removed from case or controversy by the mutual stipulation of the parties involved. I noticed that you were TOO COOLED OFF to take that step, and yet, the point of my post hinges on the very evident dichotomy and the plain fact that you (the royal you, of course) simply cannot have it both ways.

[David Boundy]

Skeptical --

If the court did not agree with the government's position, but the government and Beauregard agreed with each other, the court would have written exactly what it did in Beauregard. Word-for-word.

"Case or controversy" is constitutional. If there's no case or controversy (or any other defect in subject matter jurisdiction), an Article III court can't do anything more than you see in the excerpt quoted by Mr Summerfield. For any issue where jurisdiction is lacking, a court is forbidden from deciding, or even hypothetically opining, on any issue.