Ex parte Mewherter

When a claim recites a "machine-readable storage medium" (or computer-readable storage medium), the specification is silent as to its meaning, and extrinsic evidence shows that those of ordinary skill at the effective filing date understood the term to include both non-transitory and transitory media, the Board will construe the claim under the broadest reasonable interpretation as covering a signal per se. Where the broadest reasonable interpretation of the claim covers a signal per se, the claim "must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter." Adding the word "storage" does not by itself exclude transitory media; the applicant may amend, e.g., by adding "non-transitory." No prior precedential decision is named as addressed; the Board treated earlier nonprecedential Board decisions (Mehta, Dureau, Bash) as non-binding and distinguishable, and it relied on Office guidance (Subject Matter Eligibility of Computer-Readable Media, 1351 Off. Gaz. Pat. Office 212) rather than any prior Board precedent. For an examiner, the decision supports a § 101 rejection of storage-medium claims without proving a specification definition, using dated extrinsic evidence such as published applications that use the term to include carrier waves. For an applicant, a bare "storage" label, or saying the medium is "physical" or tangible, will not avoid the rejection; the claim must be narrowed, for example with "non-transitory," and the Board designated its affirmance as a new ground under 37 C.F.R. § 41.50(b). The Board relied on Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) for ordinary and customary meaning at the effective filing date and on In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) for the view that transitory embodiments are not statutory subject matter. LEGAL TEST OR STANDARD: Broadest reasonable interpretation of the claim term, informed by factors: (1) extrinsic evidence relevant to the meaning as would be understood by one skilled in the art at the time of the effective filing date of the patent application; (2) whether there is express intent in applicant's specification to limit the term, i.e., applicant's specification is not silent as to the meaning of such terms; (3) whether the claim expressly limits the medium to "non-transitory" embodiments; (4) whether the claim implicitly limits the medium to "non-transitory" embodiments, most commonly by means-plus-function elements (a true Beauregard type claim). If the BRI covers a signal per se, the claim is rejected under § 101. TRIGGERING FACTS: Claims 16-22 recited a "machine readable storage medium" storing a program; the specification did not use the terms "medium" or "media" and set no limit on the form of the medium; the claims lacked "non-transitory" or means-plus-function language; published applications filed in 2001-2003 (including IBM's) used the identical or similar term to include carrier waves and transmission media. Appellants' dictionary definition of storage medium did not exclude a signal with embedded data. A party avoids the rule through a specification that expressly excludes transitory media, a claim limited to "non-transitory" embodiments, or an earlier effective filing date (before 2002) with little contrary evidence. KEY QUOTE: "Further, where, as here, the broadest reasonable interpretations of all the claims each covers a signal per se, the claims must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter." (p. 13) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board declined to follow, as nonprecedential and distinguishable, Ex parte Mehta, No. 2008-004853 (BPAI Nov. 18, 2009), Ex parte Dureau, No. 2009-007211 (BPAI Aug. 23, 2010), and Ex parte Bash, No. 2009-007202 (BPAI Dec. 20, 2010); it followed Office guidance, Subject Matter Eligibility of Computer-Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). PRACTICE TIP: When drafting or defending claims to a computer- or machine-readable storage medium, add "non-transitory" to the claim (or define the term in the specification to exclude signals) instead of relying on the word "storage" or on describing the medium as physical or tangible, and do not rely on nonprecedential Board decisions.