Dictionary Definintion of "Continously" Applied to Reverse Rejection

Ex Parte Timothy James Collin et al.
Decided: March 13, 2009

I find this decision interesting because the BPAI applied a dictionary definition for the term "continuously" because the applicant did not define that term in the specification. Also, I was happily surprised that there were no new grounds of rejection based on either Bilski or Nuitjen.

The subject matter of the Collins application was directed to a method and device for transmitting data on a channel within a given power range. The method and device begin transmitting data when a first condition has been met, such as a power level, a synchronization pulse, or a pseudo-random pause. The transmission stops when the power falls below the first power threshold or exceeds a second power threshold level.

Claim 1 of the application recited:

A method comprising the steps of:

receiving a carrier signal;

continuously monitoring the carrier signal for a first predetermined condition;

selecting a channel and continuously transmitting data on the selected channel if the first predetermined condition is satisfied and while transmitting the data continuously monitoring the carrier signal for a second predetermined condition; and

ceasing the transmitting of the data on the selected channel if the second predetermined condition is satisfied during the transmitting of the data on the selected channel, wherein the first predetermined condition is satisfied based on one of, when a received power level exceeds a first threshold and a synchronization signal, and the second predetermined condition is satisfied based on the received power level.

The claims were rejected under 103. The term at issue was "continuously." The specification was silent as to the terms meaning. As a result, the Board referred to Merriam-Webster's Online Dictionary and defined "continuous" as "marked by uninterrupted extension in space, time or sequence." Using this definition, the Board determined that cited references did not teach "continuously transmitting data on the selected channel . . . and while transmitting the data continuously monitoring the carrier signal for a second predetermined condition."

The Examiner had argued that the applicants narrowly construed the term “continuously." The Examiner found that a reference that repeated a loop pattern, when no acknowledgement was received, read on the above limitation. The Board disagreed and stated the reference included a delay period when no data is being transmitting within each loop, and thus the above limitation was not present. The Board also found another delay in the teachings of the reference.

Much to my surprise, there was no Bilski or Nuitjen analysis applied to the method claim.

Claim 6 was a system claim having elements such as:

a receiver for receiving a carrier signal;

a monitor ... for continuously monitoring the carrier signal;

a storage medium having data stored therein; and

a transmitter ...

The Board overturned the rejection of this claim using the same analysis above with respect to the term "continuously."

Again, there was no Nuitjen analysis. Also, there was no discussion of "storage medium." The specification did not define storage medium and we have seen the board apply both statutory and non-statutory definitions to this term on different occasions.

Congrats to the Applicants are in order.

New Poll Question

The new poll question is: "Will there be an en banc review of the Tafas decision?"

You can cast your vote on the right.

IS YOUR APPLICATION READY FOR APPEAL TO THE BOARD UNDER KSR?

To date, most of the focus on this blog has been on Bilski and 101. I thought it would be helpful to provide some insight into some other areas of interest at the BPAI. To get moving in that direction, I am happy to provide the first ever "guest post" on BPAI Watchdog. As the title shows, the focus of this post is obviousness (a.k.a. as 103).

The following post is by Jason D. Eisenberg. Jason is an associate at Sterne, Kessler, Goldstein & Fox, P.L.L.C.. This post contains content from a longer article on this subject, published March 11, 2009 by Law360. You can read that full article here.

The Supreme Court’s KSR v. Teleflex, 550 U.S. 398 (2007) decision dramatically impacted examination of patent applications by the U.S. Patent and Trademark Office. In our article, we outline the best way to structure an appeal to the Board of Patent Appeals and Interferences. In response to the KSR decision, patent examiners are increasingly denying patents asserting the protection sought is “obvious.” The increase in the number of rejections has led applicants to increasingly appeal the patent examiner's decisions to the Board.

As an example, the PTO reported the Board received about 6,385 ex parte appeals in the fiscal year 2008, almost double the 3,349 filed in fiscal year 2006, and concluding two consecutive years of 35% increases in appeals. The PTO reported that almost 950 ex parte appeals were filed per month at the Board since September 1, 2008. With this increasing workload, success at the Board requires careful groundwork in prosecuting the application and thoughtfully building the record for the appeal brief.

Over 200 post-KSR Board decisions that reversed the patent examiner were reviewed. Of these, emphasis was placed on the nearly 100 decisions in which the Board reversed the patent examiners’ finding of obviousness in the internet, software, circuits, and mechanical technologies (i.e., Technology Centers 2100, 2500, 2600, 2800, 3600, and 3700).

It was observed that a small group of 7-10 administrative patent judges appeared on many of the Board decisions reversing obvious rejections in the predictable arts.

In this post-KSR world, applicants have obtained reversals of the patent examiners rejections in only 25% of appeals in the predictable arts. The Board has provided glimpses into what the appellant needs to present to successfully challenge the patent examiner.

Successful appellants have proven factual errors including claim and reference interpretation errors. Similarly, successful appellants have proven legal errors including (a) non-analogous art cited by the patent examiner, (b) impermissible hindsight by the patent examiner, (c) inoperable combination of references, and (d) references cited by the patent examiner that taught way from the patent application. Finally, successful appellants included (a) thoughtful definitions of a person having ordinary skill in the art (PHOSITA) and (b) records having evidence of secondary indicia of non-obviousness. However, even if successful in overcoming the patent examiner’s rejection, appellants must consider the chance the Board will assert sua sponte rejections for claims that (i) do not recite patentable subject matter, (ii) are indefinite Hybrid claims reciting two statutory classes, (ii) lack enablement, and (iii) lack written description even for patentable claim features added in amendments during prosecution.

An applicant should appeal when properly interpreted claim language recites features that distinguish over properly applied references. In the heat of prosecution, Applicants sometimes lose sight that the pending claims need to clearly recite what is argued. If the pending claims can be amended to better support the arguments, a request for continued examination should be filed with claim amendments instead of an appeal. However, if the applicant believes that the invention has been optimally claimed and that the claims are distinguishable over the applied references, continuing prosecution is usually an inefficient use of resources. Rather, appealing the application is necessary.

Take Aways

Appeal to the Board is worthwhile since after successful appeal to the Board 80% of applications issue as patents.

• Factual errors include claim and reference misinterpretations by the patent examiner.
• Legal errors include (a) non-analogous art cited by the patent examiner, (b) impermissible hindsight by the patent examiner, (c) inoperable combination of references, and (d) references cited by the patent examiner that taught way from the patent application.
• Success on appeals can increase when appellants include (a) definitions of a person having ordinary skill in the art (PHOSITA) and (b) records having evidence of secondary indicia of non-obviousness.
• Appellants must balance success on appeal with the risk of narrow claim interpretations and sue sponte rejections for claiming non-patentable subject matter or amended claims that, although allowable over art, fail written description requirements.
• In the end, Appealing final rejections from "hard-line" patent examiners may be an applicant’s only chance for reversing improper obviousness rejections to obtain an allowance for their application.

The views expressed here are those of the author, and should not be attributed to Sterne, Kessler, Goldstein & Fox P.L.L.C., or to any of its present or former clients.

Applicant defines herself out of the realm of 101

Ex Parte Daniela Giacchetti
Decided: March 11, 2009

This decision continues the BPAI string of 101 rejections where the claims can cover both statutory and nonstatutory subject matter.

The claim at issue in this decision recited:

1. A method of enabling display of a simulated facial image, the method comprising:
[1] facilitating display,

• on a display device,
• of a plurality of templates,
• wherein at least some of the templates are representative of a portion of a face having a simulation of use of a beauty product;

[2] enabling selection of at least one of the displayed templates; and

[3] facilitating display,

• on the display device,
• of a simulated facial image
• including at least one displayed facial portion having a simulation of use of a beauty product,
• wherein the displayed facial portion having a simulation of the simulated facial image corresponds to a facial portion of the at least one selected template, and
• wherein the simulation of the displayed facial portion corresponds to a simulation of the at least one selected template.
  

The applicant provided the following discussion in her specification regarding certain words in the claims.

Enabling the image to be displayed may be accomplished in one or more of a variety of direct and indirect ways, including directly displaying the image on a display device, providing access to software that facilitates display, providing network access which enables display of the image on a user-controlled device, providing a dedicated use device, or cooperating with an entity who either directly displays the image or who helps the user to display the image.

As with the definition of "enabling display" above, the term "applying" and "selecting" are also to be interpreted as including direct and indirect actions, such as, for example, providing access to software, providing access to a network site, cooperating with a third party who aids a user, or by participating in any way in activities that aid a user in applying and selecting.

The Examiner rejected this claim and those that depended from it as failing under 101. The Examiner reason, based on the above definitions, that the method steps of facilitating display and enabling selection did not require the actual display or selection step to be performed. Thus they could be understood as merely having an idea about how to arrange the selection of the information.

During the appeal, the applicant argued that the reference to direct activities made the claim statutory.

Not surprising, the Board agreed with the Examiner and confirmed the 101 rejection. They explained that during examination claims are given their broadest reasonable construction that is consistent with the specification. Relying on the above passages, the Board agreed that the applicant acted as her own lexicographer. They determined that the limitations of enabling and facilitating in the three steps of claim 1 to include indirect activity such as providing access to software, providing access to a network site, cooperating with a third party who aids a user, or by participating in any way in activities that aid a user in what is enabled or facilitated. The BPAI concluded that broadest reasonable construction would not necessarily include that performance within the scope of the three steps in claim 1.

Using these definitions, the BPAI applied Bilski's machine or transform test. Their analysis stated that:

[t]hese process claims recite a series of process steps that are not necessarily tied in any manner to a machine, because the scope of the steps also reach activities that do no more than provide some access or aid. In other words, these claims do not limit the process steps to any specific machine or apparatus. Thus, the claims fail the first branch of the machine-or-transformation test because they are not tied to a particular machine or apparatus. The steps of these process claims also fail the second branch of the machine-or-transformation test because nothing must be transformed, not even data, when the steps are construed as encompassing no more than providing access or aiding. Thus, the process of claim 1 fails the machine-or-transformation test and is not patent-eligible under 35 U.S.C. § 101.

Poll Results

The BPAI Watchdog's first poll question was: "Are the BPAI and the PTO abusing Bilski?"

84% of those who responded said they were.

BPAI Remains Split on "Computer-Readable Medium"

Ex Parte Scott Alan Isaacson, Stephen R. Carter and Frank Allan Nutt
Decided: February 26, 2009

This decision, also from Technology Center 2100, continues on the Ex parte Mitchell path. The Board determined that "medium" when modified by "computer-readable" is not limited to only tangible embodiments.

The claims of the Isaacson et al. application were directed to for assembling or otherwise aggregating electronic identities. Representative claim 1 recited:

[a] method implemented in a computer-readable medium to aggregate an identity, comprising:

accessing one or more identity authorities and one or more identity stores with a schema to acquire identifiers and attributes associated with the aggregated identity, wherein the identifiers are information used to identify the identity; and

assembling the acquired identifiers and attributes to aggregate the identity.

Also, the preamble of independent claim 9 recited a “data store implemented in a computer-readable medium, residing in a computer-accessible medium.” Likewise, the preamble of independent claim 16 recited a “schema data structure used to aggregate an identity and implemented in a computer accessible medium.” Finally, the preamble of independent claim 22 recited a “system implemented in a computer-readable medium.”

Arguably, the specification did not include an express definition of "computer-readable medium." However, the specification included the following:

[o]f course, the invention can be implemented in a variety of applications, systems, schema conventions, programming languages, and data formats. Additionally, the invention is not limited to any particular network. Thus, any hardwired (direct or indirect), or wireless network can be used.

FIG. 1 is a flowchart representing one method 100 to aggregate an identity, according to one embodiment of the invention. The method is implemented in an electronic environment on a network. The network can be, without limitation, a Local Area Network (LAN), a Wide Area Network (WAN), or a combination of LANs and WANs interfaced together. Furthermore, as mentioned above, the network can be hardwired or wireless.

The examiner rejected all the claims under 101.

During prosecution, Isaacson et al. added the "implemented in a computer-readable medium" type limitations to the preamble. Also, they argued that those amendments recite structure and indicate that the claims are limited to computer implemented embodiments.

The Board discussed the limitations in the preambles. They said that:

to the extent that the preamble has any bearing upon the broad recitations in the body of representative independent claim 1 on appeal, the subject matter also appears to be proscribed by the reasoning in In re Nuijten, 500 F.3d 1346, 1359 (Fed. Cir. 2007). The broadly claimed “medium” in the preambles of all independent claims on appeal is not necessarily required to be embodied in a tangible computer-readable medium. Indeed, the subject matter is so broadly disclosed that there is no discussion of what the claimed “medium” is supposed to be or otherwise be comprised of in the Specification as filed. As such, the medium appears to be a broadly definable wireless network that encompasses signals per se proscribed by Nuijten ...

Additionally, based upon the analysis in the previous and this paragraph at least, the data store broadly recited in the preamble of independent claim 9 is not positively stated to be embodied in a tangible device conventional in the arts since it is merely recited to be “implemented in a computer-readable medium, residing in a computer-accessible medium.” A similar observation is appropriate for the schema data structure of independent claim 16. We are not aware of any authority which permits the direct claiming alone of a data structure per se. With respect to the system of claim 22, it is not necessarily recited to be a tangible computer system since all the recited elements are inclusive of non-tangible embodiments or abstract concepts as already discussed with respect to independent claims 1, 9, and 16.

BPAI Confirms 101 Rejection of Method, Beauregard, and System Claim

Ex parte Nick M. Mitchell and Gary S. Sevitsky
Decided: February 23, 2009

This decision is interesting because the Board broadly applied Bilski to reject not only method claims, but also Beauregard and system claims. Also, the decision appears to conflict with aspects Ex parte Mazzara (see previous posting) regarding the BPAI's view of a "computer readable medium."

The claims of this appeal were directed to diagnosing memory leaks. The representative claims at issue on appeal included a method claim, a Beauregard claim, and a system claim. The Examiner rejected each of the claims under 101. The claims recite:

1. A method for identifying co-evolving regions in the memory of a target application, comprising:

receiving information identifying a set of data structures that are evolving; and

classifying the constituents of the data structures based on their likelihood to evolve in a single coherent manner.

10. A computer readable medium for identifying co-evolving regions in the memory of a target application, comprising instructions for:

receiving information identifying a set of data structures that are evolving; and

classifying the constituents of the data structures based on their likelihood to evolve in a single coherent manner.

11. An information processing system comprising:

a processor comprising logic for performing instructions of:

• identifying a set of data structures that are evolving; and
  
• classifying the constituents of the data structures based on their likelihood to evolve in a single coherent manner; and
  

a memory for storing the instructions.

The Board began their 101 analysis with the method claim and applied the "machine-or-transformation test.” In an attempt to pass the "machine" part of the test, the applicants argued that claim 1 was “clearly computer-implemented,” based on the allegation that the preamble “recites a memory wherein the co-evolving regions are identified.” The Board didn't buy it. They responded with:

[w]e find nothing in the steps of claim 1 that are specific to a computer. Nor do we find that the recitation of a “memory” in the preamble serves as antecedent for anything in the body of the claim, other than, inferentially, may evidence intent that the “memory” might contain the set of data structures that relate to “information” that is gathered and received in some unspecified manner.

The Board quickly addressed the "transformation" prong by finding that claim 1 did not require any kind of electronic transformation of data into a different state or thing.

The BPAI next addressed the Beauregard claim. As expected, the applicants argued that claim 10 was directed to the “manufacture” class of statutory subject matter as set forth in § 101. In response, the Board said that:

[a]lthough a “computer readable medium” may nominally fall within the statutory class of “manufacture,” claim 10 would effectively pre-empt the abstract idea represented by instant claim 1.

The Board's footnote discussing "manufacture" is interesting. The footnote states:

[a] computer readable “medium” that comprises “instructions” as recited in claim 10 does not necessarily fall within any statutory class. A computer, properly equipped, can receive instructions via electronic data transmission over a wired network or over the air. However, a carrier wave or signal does not fall within any of the four categories of statutory subject matter, and is thus not statutory subject matter. See In re Nuijten, 500 F.3d at 1357.

The panel in Ex parte Mazzara, decided on February 5, 2009, is in opposition with the above reasoning. The Mazzara panel found that the term "computer usable medium", when not defined in the specification, was limited to only tangible manufactures. The Mazzara panel relied on the the fact that there was no express statement in the Specification, nor any other indication in the record, that the term "computer usable medium" was intended to include non-statutory subject matter such as signals or paper. (Note that Technology Center 2600 decided Mazzara and Technology Center 2100 decided Mitchell)

In addressing system claim 11, the Board acknowledge that on its face the claim appeared directed at patentable subject matter (e.g., a “machine”). Despite this, the Board found that the claim was not 101 eligible. They reasoned that:

[t]he use of a “processor” and “memory” for storing and performing the broadly recited “instructions” of claim 11 would be, in practical effect, a patent on the abstract idea of “identifying” and “classifying constituents” of data structures as recited. Limiting the claim to part of a system comprising a “processor” and “memory” does not add any practical limitation to the scope of the claim. Similar to a field-of-use limitation in a process claim, the use of a general “processor” and “memory” is insufficient to render an otherwise ineligible claim patent eligible. See Bilski, 545 F.3d at 957

Transforming Digital Content Does Not Pass Bilski's Transformation Test

Ex parte Taiga Nakamura, Ryuki Tachibana, Suichi Shimizu, and Seiji Kobayashi
Decided: February 18, 2009

This decision interests me because it sheds a little light on how the BPAI views the "transform" prong of the Bilski analysis.

The Nakamura et al. application included claims directed to a system, method, and computer readable medium for providing an electronic watermarking technique that is used to detect whether digital content has been copied or altered. The Examiner had not issued a 101 rejection during prosecution. The BPAI added a 101 rejection at the end of their decision.

Claim 16 and Claim 18 were the focus of the Appeal and stated, respectively:

16. An additional information embedding method, for adding additional information to digital content to determine whether said digital content has been processed, comprising the steps of:

generating multiple sets of additional information that are correlated with each other and that correspond to the data form of predetermined digital content; and

synthesizing said additional information and content data for said digital content; and

wherein the additional information are correlated with each other by a mapping relationship defined by a predetermined function, said predetermined function dependent on a data string, the data string forming a predetermined message.

18. An additional content detection method, for detecting additional information added to a digital content in order to determine whether said digital content has been processed, comprising the steps of:

detecting, from content data for digital content, multiple sets of additional information that are correlated with each other, but that in robustness differ from each other;

evaluating relationships dependent on a data string, the data string forming a predetermined message, existing between said multiple sets of additional information; and

determining, based on said detected additional information and the evaluation of said relationships, whether said content data has been processed, and determining the type of processing performed when said content data has been processed.

In explaining their Bilski analysis, the BPAI said that the method steps of claims 16 and 18 can reasonably be interpreted to encompass a human being performing these steps. Thus, the claims fail the "particular machine requirement."

The BPAI's discussion of the "transformation requirement" is more interesting. They said that:

[h]ere we do not have a transformation of subject matter but merely an abstract expression that is created from synthesizing two types of digital content. However, such synthesizing does not require any tangible output into the real world. These steps describe nothing more than the manipulation of basic mathematical constructs, the paradigmatic "abstract idea." See In re Warmerdam, 33 F.3d 1354, 1360 (Fed. Cir. 1994). As a whole, the claim involves no more than the manipulation of abstract ideas. See id.

The BPAI went on to say in other words that the claims were directed to merely looking at transforming one digital representation into another digital representation. As such, they are not within the scope of 101.

BPAI Again Uses "Software" Embodiment to Uphold 101 Rejection

Ex parte Robert Mark Magid
Decided: February 19, 2009

I find this decision interesting because it continues the BPAI's trend finding claims that may have a software embodiment unpatentable.

Claim 21 of Magid's application recited:

A computer program device for intercepting user exit interfaces in IMS programs, comprising:

logic means for communicating between an interception routine and an interface routine to resolve name ambiguity and enable simultaneous use of a single exit by plural users.

The Examiner issued a 101 for this means-plus-function claim because the claimed "logic means" were limited to logic, i.e., program code or software per se, which is not the same as physical means, such as hardware.

Magid's specification stated that:

[i]t is to be understood that in the system 10 described above, the logic of the present invention can be contained on a data storage device with a computer readable medium, such as a computer diskette. Or, the instructions may be stored on a magnetic tape, hard disk drive, electronic read-only memory (ROM), optical storage device, or other appropriate data storage device or transmitting device thereby making a computer program product, i.e., an article of manufacture according to the invention. In an illustrative embodiment of the invention, the computer-executable instructions may be written using mainframe assembler language. Moreover, the IMS user program 24 may be written using assembler, PL/I, FORTRAN, COBOL, Pascal, REXX, or Java.

The flow charts herein illustrate the structure of the logic of the present invention as embodied in computer program software. Those skilled in the art will appreciate that the flow charts illustrate the structures of computer program code elements including logic circuits on an integrated circuit, that function according to this invention. Manifestly, the invention is practiced in its essential embodiment by a machine component that renders the program elements in a form that instructs a digital processing apparatus (that is, a computer) to perform a sequence of function steps corresponding to those shown.

The BPAI sided with the Examiner, appears rightly so, and concluded that "consistent with the Specification, we find that the 112, sixth paragraph scope of the claimed 'logic means' broadly encompasses at least a first embodiment that consists of software per se." The Board did note that the claim also covers logic circuits on an integrated circuit, which is within the scope of 101. Thus, the claims cover both hardware and software.

Citing Nuijten, the Board said "[o]ur reviewing court has clearly stated that “[t]he four categories [of § 101] together describe the exclusive reach of patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” As a result, the Examiner's 101 rejection was confirmed.

Means-Plus-Function Claim Goes Down for Reference to Software and Signals

Ex parte John D. Morris and Daniel J. Clark
Decided: February 13, 2009

I find this decision interesting because it uses statements often found in software and hardware applications to reject means-plus-function claims under 101.

Morris and Clark claimed a system, method, and computer program product for processing or rasterizing graphic objects. Claim 33 recited a system having a means for rasterizing the graphic objects, including, for each of the graphic objects, using the tracking list to identify unmarked segments in the scan line, the unmarked segments corresponding to markable pixels in the pixel array.

In correctly construing the "means for" elements in light of the specification, the BPAI noted that the specification recited that "[t]he invention and all of the functional operations described in this specification can be implemented in digital electronic circuitry, or in computer software, firmware, or hardware." Various forms of this type of language can be found in a large number of applications past and present.

The BPAI pointed out the above passage unequivocally describes the various implementations in the alternative. The Board reasoned that the invention can exist solely in software. As a result, the Board found that means-plus-function limitations is not limited to only statutory subject matter under 101.

The Board also piled on by applying what I refer to as the "Death by Carrier Wave" 101 rejection. The Specification also mentioned that the invention could be implemented as a computer-readable product (i.e., a Beauregard type embodiment). The specification included the following language:

The invention can be implemented as one or more computer program products, i.e., one or more computer programs tangibly embodied in an information carrier, e.g., in machine-readable storage device or in a propagated signal for execution by, or to control the operation of, data processing apparatus, e.g., a programmable processor, a computer, or multiple computers.

The BPAI again took this opportunity to apply Nuitjen and issue a new 101 rejection to the means-plus-function and Beauregard claims.

The BPAI reminded the Applicants that according to USPTO guidelines set forth in MPEP § 2106(IV)(C)(2)(2)(a), claims must be amended to recite solely statutory subject matter.

Post Bilski Guidlines

For those of you who might have missed the PTO's take on Bilski you can find "Guidance for Examining Process Claims in view of In re Bilski" at the following link:

http://www.uspto.gov/web/offices/pac/dapp/opla/documents/bilski_guidance_memo.pdf

BPAI Uses Preamble to Find Beauregard Claim 101 Eligible

Ex parte William E. Mazzara
Decided: February 5, 2009

I find this decision interesting because it appears to continue to blur the BPAI's view of the patentability of Beauregard claims.

Less than a month after the BPAI held a Beauregard claim unpatentable (see Ex Parte Cornea-Hasegan), they overturned an Examiner's 101 rejection of computer readable medium claim. Might the BPAI returning to their Ex Parte Bo Li line of thinking?

Claim 17 of Mazzara's application recited:

A computer usable medium including a program for storing an alert message request for a mobile vehicle communication system into a queue comprising:

computer program code that determines service type availability for the mobile vehicle communication system;

computer program code that receives an alert message request from a wireless communication system;

computer program code that sets a preferred roaming list flag
for the mobile vehicle communication system;

computer program code that stores the alert message request into a mobile vehicle communication message queue;

computer program code that initiates a parameter call to the wireless communication system to service the alert message request in the message queue; and

computer program code that services the alert message request to a mobile communication system until completion.

In rejecting this claim, the Examiner applied reasoning similar to that in Cornea-Hasegan. The Examiner stated that "“claims to a computer usable medium including a program and then listing program codes are not physical ‘things’ and do not define any structural and functional interrelationships between the computer program and other claimed elements of a computer, which permit the computer program’s functionality to be realized."

In reversing, the BPAI reminded the Examiner that "the fact that the claims covers methods which are essentially mathematical in nature ... is not dispositive [of whether the claims is directed to statutory subject matter]. Claims should be evaluated by their limitations, not by what they incidentally cover.” In re Warmerdam, 33 F.3d 1354, 1359 (Fed. Cir. 1994). The BPAI went on to determine that the term "computer usable medium" was limited to only tangible manufactures relaying on a "skilled artisan's" understanding of that term (note that no express definition was provided in the specification). However, the BPAI needed to go further and determine that the preamble of claims 17 was limiting before confirming patentablity of the Beauregard claim.

In view of this decision, it appears that a standard "Beauregard" preamble (i.e., one that recites a "computer readable medium") is not enough to ward off 101 scrutiny. This appears contrary to PTO's long running practice of holding Beauregard claims as patentable under 101.