Ex Parte Casazza

Board of Patent Appeals and Interferences

Sep 6, 2007

10231678 (B.P.A.I. Sep. 6, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES CASAZZA
____________________

Appeal 2006-2228
Application 10/231,678
Technology Center 2100
____________________

Decided: September 6, 2007
____________________

Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
GARY V. HARKCOM, Vice-Chief Administrative Patent Judge, and
LEE E. BARRETT, HOWARD B. BLANKENSHIP, and
ALLEN R. MacDONALD, Administrative Patent Judges.1

PER CURIAM

DECISION ON REQUEST FOR REHEARING

1 Originally heard by APJs Jerry Smith, Krass, and MacDonald. APJs
Barrett and Blankenship replace APJs Jerry Smith and Krass. Legal support
for substituting one Board member for another can be found in In re Bose
Corp., 772 F.2d 866, 869, 227 USPQ 1, 4 (Fed. Cir. 1985). Additionally,
the panel was expanded to include Chief APJ Fleming and Vice-Chief APJ
Harkcom.
Appeal 2006-2228
Application 10/231,678

STATEMENT OF CASE
Appellant requests reconsideration under 37 C.F.R. § 41.52 from a
decision of the Board of Patent Appeals and Interferences dated
September 28, 2006.
In the decision a majority opinion authored by Judge Jerry Smith,
joined by Judge Krass, and a concurring opinion authored by Judge
MacDonald, affirmed the rejection of the Examiner.
Appellant contends that the majority erroneously imposes
requirements that are not imposed by the statute.
[The Board’s] analysis incorrectly imposes a temporal
requirement, namely, that the program product reside on the
signal bearing media all at one time. This requirement is not
present in the claims, and is not imposed by 35 U.S.C. § 101.
This requirement was apparently derived from the Board based
on common examples of tangible media, such as magnetic and
optical disks that contain an entire computer program at one
time. This requirement, however, is not based in the statute or
legislative history, and unduly limits the scope of 35 U.S.C.
§ 101.
* * *
The Board has imposed artificial constraints on appellant's
claims, that the entire computer program recited in claims 35,
37 and 38 must reside on a carrier wave at a single point in
time, and that the functions of the computer program must be
available while being transmitted. These constraints are not
imposed by 35 U.S.C. § 101 or by the express language of
claims 35, 37 and 38.

(Request 2-3).
We grant-in-part.

2
Appeal 2006-2228
Application 10/231,678

ISSUE
Has Appellant shown that the Examiner has erred in rejecting
claims 35, 37, and 38, as failing to recite statutory subject matter under
35 U.S.C. § 101?

ANALYSIS
We review Appellant’s Brief anew and follow the position originally
set forth in the concurrence to the majority opinion of the original decision.
Our analysis is fully set forth infra. Our decision does not rely on the
requirements set forth in the majority opinion and renders moot Appellant’s
arguments in the Request. Due to our new reasoning, we designate our
decision as a new ground of rejection.
Claim 35 on appeal is directed to a “program product” comprising
“(A) a common session manager that stores data in the global data cache
. . . ,” “(B) an authorization mechanism . . . ,” and “(C) computer-readable
signal bearing media. . .” The “common session manager” and
“authorization mechanism” are software on the “signal bearing media.”
(Spec. 8:12-22, 10:21-24, and 11:1-4). The “global data cache” is not
included in the “program product.” Rather, the “global data cache” is
merely to be utilized at some future time by the common session manager
software on the computer-readable signal bearing media.
Appellant has admitted at pages 2-3 of the Reply Brief filed May 9,
2006, that claims 35, 37, and 38 are intended to include intangible
embodiments, as follows:
The word “signal” does appear in the claims, but taken in
context, the term signal is part of a phrase “signal bearing” that
3
Appeal 2006-2228
Application 10/231,678

modifies the term “media.” The term “computer-readable
signal bearing media” is term is used by appellant to describe in
a succinct manner in the claims any media that is computer-
readable and that bears a signal. The claimed computer-
readable signal bearing media includes tangible embodiments,
such as recordable media recited in claim [36]. The claimed
computer-readable signal bearing media also includes
transmission media, which can include both tangible
embodiments (tangible wire transmission) and intangible
embodiments (wireless transmission).
The crux of Appellant’s argument is as follows (page 5 of Brief filed
November 28, 2005):
The examiner has imposed a requirement that the signal bearing
media be tangible without support in the patent laws or
regulations. In the Response to Arguments section of the final
office action, the examiner cites the State Street Bank case as
requiring that the claimed invention as a whole must
accomplish a practical application by producing a “useful,
concrete, and tangible result.” This citation to State Street
Bank confuses the issue of patentability under 35 U.S.C. § 101
with respect to the pending independent claims. [Emphasis
added.]
Appellant has admitted that in claims 35, 37, and 38, the “computer-
readable signal bearing media” includes “intangible embodiments (wireless
transmission).” On its face, this in turn includes “carrier waves” or
“propagated signals” which are not statutory subject matter. Claims that are
broad enough to include nonstatutory subject matter (intangible signals) as
well as statutory subject matter (tangible manufactures) are considered to be
unpatentable because applicant may always amend to limit the claims to
what is statutory. See Ex parte Lundgren, 76 USPQ2d 1385, 1417-24
(BPAI 2005) (Barrett, concurring-in-part and dissenting-in-part). A case
4
Appeal 2006-2228
Application 10/231,678

involving the issue of whether intangible signals are patentable is presently
on appeal to the Federal Circuit: In re Nuijten, No. 06-1301.
A man-made signal represents coded information. A signal can be an
abstract quantity describing the information (numbers) or a measurable
physical quantity (e.g., the fluctuations of an electrical quantity, such as
voltage) containing information. See In re Walter, 618 F.2d 758, 770, 205
USPQ 397, 409 (CCPA 1980) (“The ‘signals’ processed by the inventions of
claims 10-12 may represent either physical quantities or abstract quantities;
the claims do not require one or the other”). Here we interpret the
“computer-readable signal bearing media” of claim 35 to include a time
varying electromagnetic signal instead of just an abstract quantity, such as a
data format.
The “computer-readable signal bearing media” of claim 35 is
considered to be nonstatutory subject matter because a “carrier wave” or a
“propagated signal” does not fall within one of the four statutory categories
of subject matter under 35 U.S.C. § 101.
The categories of statutory subject matter are “process, machine,
manufacture, or composition of matter.” 35 U.S.C. § 101. “[N]o patent is
available for a discovery, however useful, novel, and nonobvious, unless it
falls within one of the express categories of patentable subject matter of
35 U.S.C. § 101.” Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 483,
181 USPQ 673, 679 (1974).
A “process” is a series of acts and, since claims 35, 37, and 38 do not
recite acts, it is not a process. Compare the method of sharing data in
claims 20-22, which are not rejected.
5
Appeal 2006-2228
Application 10/231,678

The three product classes of machine, manufacture, and composition
of matter have traditionally required physical structure or substance. “The
term machine includes every mechanical device or combination of
mechanical powers and devices to perform some function and produce a
certain effect or result.” Corning v. Burden, 56 U.S. 252, 267 (1853); see
also Burr v. Duryee, 68 U.S. 531, 570 (1863) (“a machine is a concrete
thing, consisting of parts, or of certain devices and combination of devices”).
Machines do not have to have moving parts. In modern parlance, electrical
circuits and devices, such as computers, are referred to as machines. The
intangible “carrier wave” or a “propagated signal” embodiment of claim 35
has no concrete tangible physical structure, and does not itself perform any
functions. Therefore, such an intangible does not fit within the definition of
a “machine.”
A “manufacture” and a “composition of matter” are defined in
Diamond v. Chakrabarty, 447 U.S. 303, 308, 206 USPQ 193, 196-97
(1980):
[T]his Court has read the term “manufacture” in § 101 in accordance
with its dictionary definition to mean “the production of articles for
use from raw or prepared materials by giving to these materials new
forms, qualities, properties, or combinations, whether by hand-labor
or by machinery.” American Fruit Growers, Inc. v. Brogdex Co.,
283 U.S. 1, 11 (1931). Similarly, “composition of matter” has been
construed consistent with common usage to include “all compositions
of two or more substances and ... all composite articles, whether they
be results of chemical union, or of mechanical mixture, or whether
they be gases, fluids, powders or solids.” Shell Development Co. v.
Watson, 149 F. Supp. 279, 280 (D.C. 1957) (citing 1 A. Deller,
Walker on Patents § 14, p. 55 (1st ed. 1937). [Parallel citations
omitted.]

6
Appeal 2006-2228
Application 10/231,678

The intangible embodiment is not composed of matter and is clearly
not a “composition of matter.”
A “manufacture” is the residual category for products. 1 Chisum,
Patents § 1.02[3] (2004) (citing W. Robinson, The Law of Patents for Useful
Inventions 270 (1890)). If a signal falls within any category of § 101, it
must fall within this category. The definition of “manufacture” from
Diamond v. Chakrabarty requires a tangible article prepared from materials.
“Tangible” refers to something that is discernible by touch. The other cases
dealing with manufactures also require a tangible physical article. The
CCPA held in In re Hruby, 373 F.2d 997, 153 USPQ 61 (CCPA 1967) that
there was no distinction between the meaning of “manufacture” in § 101 and
“article of manufacture” in § 171 for designs. The issue in Hruby was
whether that portion of a water fountain which is composed entirely of water
in motion was an article of manufacture. The CCPA relied on the analysis
of the term “manufacture” in Riter-Conley Mfg. Co. v. Aiken, 203 F. 699 (3d
Cir.), a case involving a utility patent. The CCPA stated in Hruby: “The gist
of it is, as one can determine from dictionaries, that a manufacture is
anything made 'by the hands of man' from raw materials, whether literally by
hand or by machinery or by art.” 373 F.2d at 1000, 153 USPQ at 65. The
CCPA held that the fountain was made of the only substance fountains can
be made of--water--and determined that designs for water fountains were
statutory. Articles of manufacture in designs manifestly require physical
matter to provide substance for embodiment of the design. Since an “article
of manufacture” under § 171 has the same meaning as a “manufacture”
7
Appeal 2006-2228
Application 10/231,678

under § 101, it is inevitable that a manufacture under § 101 requires physical
matter.
Some further indirect evidence that Congress intended to limit
patentable subject matter to physical things and steps is found in 35 U.S.C.
§ 112, sixth paragraph, which states that an element in a claim for a
combination may be expressed as a “means or step” for performing a
function and will be construed to cover the corresponding “structure,
material, or acts described in the specification and equivalents thereof.”
“Structure” and “material” indicate tangible things made of matter, not
energy.
By Appellant’s admission, claims 35, 37, and 38, include intangible
embodiments that do not have any tangible physical structure or substance
and do not fit the definition of a “manufacture” which requires a tangible
object.
Our conclusion that a “signal” does not fit within any of the four
categories of § 101 is consistent with In re Bonczyk, 10 Fed. Appx. 908
(Fed. Cir. 2001) (unpublished) (“fabricated energy structure” does not
correspond to any statutory category of subject matter and it is unnecessary
to reach the alternate ground of affirmance that the subject matter lacks
practical utility) and with the Interim Guidelines for Examination of Patent
Applications for Patent Subject Matter Eligibility, 1300 Off. Gaz. Pat. Off.
142, 152 (Nov. 22, 2005), in the section entitled “Electro-Magnetic Signals.”

8
Appeal 2006-2228
Application 10/231,678

CONCLUSION OF LAW
(1) Appellant has failed to establish that the Examiner erred in
rejecting claims 35, 37, and 38 as failing to recite statutory subject matter
under 35 U.S.C. § 101.
(2) Claims 35, 37, and 38 are not patentable.

DECISION
In light of the foregoing, Appellant’s request is granted to the extent
of reconsidering and modifying our decision with respect to our rationale for
affirming the Examiner’s rejection of claims 35, 37, and 38.
We recognize that this opinion significantly modifies the rationale for
affirming the Examiner’s rejection. Accordingly, in an attempt to minimize
any prejudice to applicant, we exercise our discretion by authorizing
applicant to proceed under any one of the following options, the choice of
the option being up to applicant.
Option 1: Submit an appropriate amendment of the claims so
rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. 37 C.F.R.
§ 41.50(b)(1).
Option 2: Within two (2) months of the date of this decision,
Appellant may file a request for rehearing. 37 C.F.R. § 41.50(b)(2).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
9
Appeal 2006-2228
Application 10/231,678

GRANTED-IN-PART

ce

MARTIN & ASSOCIATES, LLC
P.O. BOX 548
CARTHAGE MO 64836-0548
10