Non-Transitory Computer-Readable Media Rejections
Within the past year, 35 U.S.C. § 101 rejections have arisen for software claims alleging that the preambles of the claims should recite “non-transitory” computer-readable
media. While quite rare at first, it appears that these rejections are being issued more and more frequently due to a change in USPTO policy. Such rejections
typically are along the lines of the following:
Claims X-Y recite a 'computer readable medium'. None of the claims, specification or record disclose that the claimed 'computer readable medium' is a non-transitory
medium. The Examiner asserts that the claimed 'computer readable medium' can be a transitory signal, which is non-statutory. The Examiner suggests that Applicant
replace 'computer readable medium' with 'non-transitory computer readable medium' or clarify that the 'computer readable medium' is non-transitory either in the
specification or on the record.
There appear to be three options for responding to such a rejection:
(1) Amend the claims to recite a “non-transitory computer-readable medium”;
(2) Amend the specification to either state that computer-readable media described therein are non-transitory or to state that signals are excluded; or
(3) Argue without amendment that the claimed computer-readable media are non-transitory.
While it appears that the USPTO only wishes to ensure that non-statutory propagating signals are excluded from the claim scope, it seems possible to draw a more broad
definition of what constitutes “non-transitory” computer-readable media. An attempt to define “non-transitory”, a discussion of the USPTO’s policy with respect to the
term and an analysis of each of the above-enumerated approaches follows below.
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While it does not appear that a technical definition of the term is available in the online technical dictionaries that we searched, Dictionary.com defines
“transitory” as “not lasting, enduring, permanent, or eternal” or “lasting only a short time; brief; short-lived; temporary” (see
Dictionary.com definiton, based on the Random House
Dictionary, © Random House, Inc. 2010). Adopting the definition that transitory means “temporary or short-lived”, it follows that “non-transitory” should mean
“enduring or long-lived”. Such a definition appears to potentially capture many forms of computer-readable media that store data only for short periods of time
and/or only in the presence of power, such as register memory, processor cache and Random Access Memory (RAM).
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The term “non-transitory” appeared in USPTO training material at least as early as August 25, 2009 (see
USPTO 101 Training Materials,
particularly slides 4 and 10). In slide 4, the USPTO lists “Transitory signals per se” as subject matter that is not patent-eligible. Slide 10 further states
that a “non-transitory computer-readable storage medium” is an article of manufacture.
Further, in a memo on January 26, 2010, Director Kappos stated that:
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.
(See Memo, emphasis added). While the
statements allude to forms of non-transitory storage media other than a signal, such media are not specifically listed. Accordingly, it appears that Director Kappos
only intended to remove signals from the scope of the claims. The memo recommends amending the claims to recite “non-transitory” storage media since such an amendment
will typically not raise the issue of new matter. However, amending the claims or specification to recite that the computer-readable media are “non-transitory” alone may
leave the application open to later mischief during claim construction.
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Because the memo from Director Kappos directly suggests such an amendment, and because the Examiner’s rejections generally also make such a suggestion, amending the claims
to recite a “non-transitory” computer-readable medium appears to be the most expedient method to address the rejection. However, we further suggest stating in the
Response to the Office Action that non-transitory computer-readable media comprise all computer-readable media, with the sole exception being a transitory,
propagating signal. This should help to defend against any interpretation that certain forms of tangible computer memory are transitory (and therefore excluded)
later on.
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It should also be acceptable to amend the specification to recite that only non-transitory computer-readable media are within the scope of the application. As with
option 1, we suggest further stating in the specification that non-transitory computer-readable media comprise all computer-readable media except for a
transitory, propagating signal to mitigate against adverse claim construction. While similar in result, amending the specification probably requires more effort, and
verbage, in the Response. Further, a subsequent Examiner may not discover that such an amendment was made during prosecution and may accidentally assert the rejection
again, wasting time and money. Many applications have at least two Examiners during the course of prosecution.
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A third option is to argue that the claims comply without amendment. The above example rejection by an Examiner appears to permit such an approach, and Applicants
surrendering such scope on the record should be permissible. However, there is still the chance that subsequent Examiners may not see the arguments and may issue
a similar rejection again in the future.
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Because amending the claims to recite a “non-transitory” computer-readable medium appears to be the most expedient way to address such as 35 U.S.C. § 101 rejection,
this seems to be the preferable approach. However, the amendment should be coupled with an argument in the Response that “non-transitory” computer-readable media
comprise all computer-readable media, with the sole exception being a transitory, propagating signal. Through this approach, Applicants should be able to overcome
the rejection without accidentally surrendering certain forms of computer-readable media that may potentially be characterized as transitory from the claim scope,
such as register memory, processor cache and RAM.