The Ongoing Mysteries…

An applicant’s ability to secure patent protection for certain types of subject matter continues to be unpredictable. On September 29, 2015, the Patent Trial and Appeal Board of the U.S. Patent Office decided Ex parte Mishra et al., No. 2013-008084, 2015 Pat. App. LEXIS 9210 (P.T.A.B., Sept. 29, 2015) (nonprecedential). The claims on appeal were directed to a computer-server implemented method, and a related computer program product in a computer storage medium, involving receiving a message, sending the message, receiving a request to recall the message, and sending an instruction to delete the message to all receivers who had not yet opened the message. Such functionality at least appears to be similar to message recall in Microsoft Outlook.

According to the Patent Trial and Appeal Board’s precedential decision in Ex parte Mewherter et al., No. 10/685,192, 2013 Pat. App. LEXIS 2924 (P.T.A.B. May 8, 2013) (precedential), claims directed to computer-implemented programs must require that the storage media storing the programs be non-transitory. Otherwise, the broadest reasonable interpretation of the term “storage medium” encompasses transitory signals, which are not patentable subject matter. Mewherter, 2013 Pat. App. LEXIS 2924 at *7–8. Following this precedent, the Examiner had rejected the claims as encompassing non-statutory subject matter.

The Examiner had pointed to a paragraph from the specification where the term storage media was defined to support the conclusion that the claimed storage media were not limited to non-transitory media. Specifically, the paragraph defined computer-readable storage media as being “any storage medium that participates in providing instructions and/or data to the computer system … for execution and/or processing.” The paragraph then provided examples of storage media meeting that definition, including “floppy disks, magnetic tape, CDROM, a hard disk drive, a ROM or integrated circuit, USB memory, a magneto-optical disk, or a computer readable card such as a PCMC1A card and the like, whether or not such devices are internal or external of the computer module ….” The Appellant had argued that the paragraph was “not relevant.”

Disagreeing with both the Examiner and the Applicant, the Patent Trial and Appeal Board concluded that the identified paragraph supported finding the claimed subject matter patent-eligible. The Board stated that the paragraph amounted to “an express intent to limit the claims to patentable subject matter.” Accordingly, the Board reversed the rejection, holding that the claims were directed to patent-eligible subject matter. The claims ultimately stayed under rejection because the Board sustained the Examiner’s rejection of the claimed subject matter as obvious in view of the prior art.

Interestingly, the definition provided in the specification did not expressly limit storage media to non-transitory media. Ineligible transitory signals are capable of “providing instructions and/or data to the computer system … for execution and/or processing,” as defined by the application’s specification. Therefore, it appears that the Board imported a limitation that was, as best, only implied by the specification into the claims, which is improper. MPEP § 2111.01(II). Patent applicants whose innovations involve specialized computer programming should seek expert advice when drafting and prosecuting patent applications to ensure that their efforts do not fall into any of the many pitfalls currently presented by the law on subject-matter eligibility.