Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Continued Examination under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 23 December 2025, has been entered.
The following is a Non-Final office action on the merits in response to the communications filed on 23 December 2025. Claims 1-4, 7-12 and 15-17 are currently pending. Examiner withdraws the rejections of claims 1-4, 7-12 and 15-17 under 35 USC § 101 directed to non-statutory subject matter (abstract idea). However, a new rejection under 35 USC § 101 directed to non-statutory subject matter is stated below.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 17 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claim does not fall within at least one of the four categories of patent eligible subject matter because the recited “a computer program product embodied in a tangible computer readable storage medium” fails to exclude non-transitory embodiments.
The broadest reasonable interpretation of a “computer readable medium” typically covers both forms of non-transitory media and transitory propagating signals per se in view of the ordinary and customary meaning of computer-readable media (for example, as defined by usage in issued patents and published patent applications). According to the specification, the computer readable medium may be broadly interpreted to include a signal or carrier wave. The preamble does not claim a non-transitory medium as disclosed in the specification. Therefore the broadest reasonable interpretation of machine readable medium in light of the specification includes a signal (see Spec para [0016] and [0025]). A signal does not constitute statutory subject matter, because it is neither a process, a machine, an article of manufacture, nor a composition of matter, and therefore does not fall within any of the statutory classes of invention. The Applicant can choose other ways to amend the claim in accordance with the original disclosure. It is not acceptable to just add “physical” or “tangible” - Nuijten' s ineligible signals were physical and tangible. It is not acceptable to add “storage” absent support in original disclosure because the broadest reasonable interpretation of computer readable storage media based on common usage covers signals/carrier waves. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007), and MPEP § 2106.03(1). See also “Subject Matter Eligibility of Computer Readable Media”, 1351 Off. Gaz. Pat. Office. When a claim encompasses both statutory and non-statutory subject matter, the claim as a whole is considered to be directed to non-statutory subject matter. See MPEP § 2106(11).
Examiner Note; Applicant can amend to narrow the claim to cover only statutory embodiments by adding the limitation “non-transitory” to the claim (i.e. A non-transitory computer readable recording medium …”), such an amendment would not raise the issue of new matter, even when the specification is silent, unless the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment.
Response to Arguments
Applicant's arguments with respect to 35 USC § 101 directed to non-statutory subject matter been fully considered and deemed to be persuasive and the rejections of claims 1-4, 7-12 and 15-17 under 35 USC § 101 directed to non-statutory subject matter is withdrawn. However, a new rejection under 35 USC § 101 directed to non-statutory subject matter is introduced above. Therefore, Applicant’s arguments are moot in view of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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Respectfully Submitted
/HANI M KAZIMI/Primary Examiner, Art Unit 3691