After the Beauregard case, many commentators took the position that signal claims should also be statutory. Software developers have an interest in being able to protect against infringers who transfer software over the Internet. Such software would not be embodied in a computer readable medium (Beauregard). The U.S. Patent and Trademark Office was allowing patent applications including claims directed to a “carrier wave” embodying computer program code to perform various functions.
Ex parte Rice is a Board of Appeals decision for a patent application directed to a “spread Spectrum Transceiver.” The invention was directed to an electromagnetic signal” and an “electromagnetic signal” produced by a certain process. One representative claim was:
2. An assembly of simultaneously transmitted electromagnetic signals, said signals being related to each other in said assembly so as to communicate information to a receiver, said signals being structured so as to contain corresponding subsets of a set of binary spreading-code sequences, at least one subset of said set of binary spreading-code sequences containing more than one of said binary spreading-code sequences, each subset of said set of binary spreading-code sequences embodying a corresponding portion of said information.
After losing one appeal, independent claims were changed from reciting “signals” to “electromagnetic signals.”
The claims were rejected under 35 U.S.C. section 101 as being directed to nonstatutory subject matter. The examiner concluded that the claimed “electromagnetic signals” were nonstatutory subject matter because such signals were “transitory and ephemeral.”
The examiner stated that signals are neither a manufacture nor a composition of matter. The examiner made the same arguments in a previous appeal.
Appellant referred to a paper by Stephen G. Kunin, Deputy Assistant Commission for Patent Policy & Projects, titled Computer Program Product Claim, presented at a “Partners in Patents V Conference” sometime between October 22, 1996, and May 18, 2000, which indicated that the transitory nature of a signal did not make it nonstatutory subject matter, referring by example to U.S. Patent 3,156,523 to element 95 and citing In re Breslow, 616 F.2d 516 (CCPA 1980)(reversing the Board’s conclusion that compounds were not patentable subject matter because they were “transitory and ephemeral in nature”.
The Board of Appeals agreed that signals did not become unpatentable subject matter just because of their “transitory and ephemeral nature.” The Board said that there is no reason why the time of existence should affect a subject matter’s status under the four statutory categories of “process, machine, manufacture, or composition of matter,” or the three exceptions for “laws of nature, natural phenomena, and abstract ideas.”
The Board also noted that Mr. Kunin’s reasoning was incorporated into the Manual of Patent Examining Procedure section 2106 (8th ed. Aug. 2001), page 2100-14: “[A] signal claim directed to a practical application of electromagnetic energy is statutory regardless of its transitory nature. See O’Reilly, 56 U.S. at 114-19; In re Breslow, 616 F.2d 516, 519-21, 205 USPQ 211, 225-26 (CCPA 1980).”
Unfortunately, this decision was not written for publication and was not binding precedent. The U.S. Patent and Trademark Office apparently no longer agrees with this position. Though this is not a Federal Circuit case, it is being included here to show the change of attitude and to contrast with the Nuijten case.