Board Reverses Rejection of Beauregard Claim Based on Specification

Ex parte Stanley Bruce Holmstead and Jody L. Terrill
Decided: May 20, 2009

This decision, again, highlights how the specification can be used to ensure that a Beauregard claims survives a 101 challenge.

The claims at issue were directed to a printer system for managing printable assets. The system could examine the content of the print job elements to determine (1) if the print job element(s) already exist in local memory, and (2) a location in the local memory to store the print job elements if any elements do not already exist in local memory.

Claim 10 is the Beauregard claim. It recites:

A computer-readable medium having stored thereon instructions that, when executed, direct a printer to:

receive a print job ticket that references one or more print job elements, each of the print job elements containing contents that enable generation of a printable document;

examine the contents of the one or more print job elements to determine if one or more of the print job elements is already present in a local memory of the printer; and

ascertain a location in the local memory of the printer to store any of the one or more print job elements that do not already exist in the local memory.

The Examiner rejected claim 10 using 101. The Examiner reasoned that “[t]he computer program product claimed is merely a set of instructions per se. Since the computer program is merely a set of instructions not embodied on a computer readable medium to realize the computer program functionality, the claimed subject matter is non-statutory.”

In response, the Applicants argued that claim 10 recited a computer-readable medium that was an article of manufacture—one of the statutory categories of subject matter under § 101. They also argues such a tangible computer-readable medium was deemed statutory by the Federal Circuit as well as MPEP § 2106.01.

The Panel reviewed the specification. They found the that it described examples of a computer-readable medium a ROM and/or firmware. The specification, with respect to firmware, stated that:

Printer 100 may include a firmware component 110 that is implemented as a permanent memory module stored on ROM 106. Firmware 110 is programmed and tested like software, and is distributed with printer 100. Firmware 100 can be implemented to coordinate operations of the hardware within printer 100 and contains programming constructs used to perform such operations.

The Panel began with providing definitions for a machine and a manufacture. As we have seen before, the definition of a machine comes from Nuitjen and is "is a concrete thing, consisting of parts, or of certain devices and combination of devices." The definition of a manufacture also comes from Nuitjen and is "(in its verb form) is defined as the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery."

Using these definitions, the Panel determined that in view of the specification the recited computer-readable medium fully comports with the definition of a “machine." Thus, the reversed the 101 rejection. Further, the Panel also determined that the computer-readable medium of claim 10 could be a “manufacture” under § 101 and therefore constitutes statutory subject matter for this additional reason.