DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 20 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.
In view of Applicant's disclosure, the medium is not limited solely to tangible embodiments. The specification does not further mention a recording media referred to in Claim 20. The claimed subject matter, given the broadest reasonable interpretation, may be a carrier wave comprising of instructions and is, therefore, non-statutory. The phrase “but is not limited to” and “any other medium which can be used to store the desired information” do not specifically exclude the use of carrier waves for storing information.
The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2.
To overcome this type of 101 rejection, the claims need to be amended to include only the physical computer media (e.g. non-transitory computer readable storage medium) and to be unassociated with any transmission media or other intangible or non-functional media.
Allowable Subject Matter
Claims 1-19 are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY R HSU whose telephone number is (571)270-3012. The examiner can normally be reached 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lin Ye can be reached at (571)272-7372. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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AMY R. HSU
Examiner
Art Unit 2664
/AMY R HSU/Primary Examiner, Art Unit 2638
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