Subject Matter Eligibility of Computer Readable Media
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`The United States Patent and Trademark Office (USPTO) is obliged to give claims their
`broadest reasonable interpretation consistent with the specification dwing 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 foms 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 signalper 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 Insnuctions for Evaluat i g Subject Matter
`Eligibility Under 35 U.S.C.j101, Aug. 24,2009; p. 2.
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`The USPTO recognizes that applicants may have claims directed to computer readable
`media that cover signalsper se, which the USPTO must reject under 35 U.S.C. 8 101 as
`covering both non-statutory subject matter and statutory subject matter. In an effort to
`assist the patent community in overcoming a rejection or potential rejection under
`35 U.S.C. 4 101 in this situation, the USPTO suggests the following approach. A claim
`drawn to such a computer readable medium that covers both transitory and non-transitory
`embodiments may be amended to narrow the claim to cover only statutory embodiments
`to avoid a rejection under 35 U.S.C. $ I01 by ad&ng the limitation "non-transitory" to
`the claim. CJ: Animals - Patentability, 1 077 0 )Gaz. Pat. Ofice 24 (April 21, 1987)
`(suggesting that applicants add the limitation "non-human" to a claim covering a multi-
`cellular organism to avoid a rejection under 35 U.S.C. 5 101). Such an amendment
`would typically not raise the issue of new matter, even when the specificationis silent
`because the broadest reasonable interpretation relies on the ordinary and customary
`meaning that includes signals per se. The limited situations in which such an amendment
`could raise issues of new matter occur, for example, when the specification does not
`support a non-transitory embodiment because a signalper se is the only viable
`embodiment such that the amended claim is impermissibly broadened beyond the
`supporting disclosure. See, e.g., Gentqv Galleiy, Inc. v. Berkline Corp., 134 F.3d 1473
`(Fed. Cir. 1998).
`
`Date: 1/4[3 "
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`.
`L
`David J . % ~ ~ O S
`Intellectual Property and
`Under Secretary of Cornm
`Director of the United States Patent and Trademark Off~ce
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` Versata Exh. 2008
` Volusion v. Versata
` CBM2013-00017
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`Exh. 2008 - Page 1 of 1
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