Ex parte Mewherter : Subject Matter Eligibility of Software Media

Author: Michelle Pacholec Ph.D.
Editor: Adriana L. Burgy

PTAB Decision: Ex parte Mewherter, Appeal No. 2012-007692 (May 8, 2013)

BackgroundThe technology at issue was directed to a software system for converting slide show presentations into raster imagery. The claim at issue recited “a machine readable storage medium.” Relying on PTO guidelines and Federal Circuit precedent, the Examiner rejected the claim as directed to non-statutory subject matter because it could encompass transitory signals. See Subject Matter Eligibility of Computer-Related Media Guidelines, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); In re Nuijten, 500 F.3d 1346, 1356-57 (holding that transitory embodiments such as signals and carrier waves are not directed to statutory subject matter). The appellants argued that “machine readable storage medium” is distinct from “machine readable medium” because the former was limited to permanently and physically stored information and thus excluded transitory signals.

Issue: Under 35 U.S.C. § 101, are computer program product terms that encompass transitory media directed to nonstatutory subject matter?

Outcome: Noting that neither the claims nor the specification expressly disclaimed such transitory media, the Board upheld the rejection and endorsed adding the limitation “non-transitory” to the claim. The Board also considered and affirmed rejections for lack of written description and obviousness.

Prosecution Takeaway: Consider whether computer product terms encompass transitory media; if so, subject matter eligibility may be raised and consider possible ways in which to disclaim or limit the inclusion of such transitory signals to avoid running afoul of § 101.


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