THE BATTLE FOR 35 U.S.C. 101 RAGES ON AT THE USPTO: One might think that after the BPAI's decision in Ex Parte Lundgren and the Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility, rejections based on non-statutory subject matter were all-but-dead at the USPTO.

Well, they're not.

In fact, it's now worse than ever.

Anyone in the electronic/software arts can tell you that, over the last 6 months or so, rejections from the USPTO based on 35 U.S.C. 101 are legion and are being spontaneously introduced at all stages of prosecution. In the overwhelming majority of cases, the rejections are almost reflexive in nature, and contain incorrect applications of law (e.g., "claim 1 is clearly aimed at a method executed in a processing device, but does not recite a processor or memory. Applicant's claims merely recites an abstract idea that produces no useful, concrete, or tangible result).

Through numerous conversations with USPTO personnel, it appears that there is a concerted push by PTO management to have examiners aggressively question applications on 101 and 112(1) grounds. While Internet/business method applications are targeted most aggressively, non-Internet software methods are a close second, followed by methods performed in telecommunications systems (apparently division multiplexing has raised someone's ire . . .). Also, foreign-origin applications are being scrutinized more closely on issues of enablement.

While the PTO has taken a more hard-line approach to 35 U.S.C. 101, applicants also continue to test the limits of the statute. Recently, the IPO has jumped into the fray by filing an amicus brief to the Federal Circuit on behalf of inventor Petrus Nuijten, who filed an application directed to the digital watermarking of signals. The rub in this case is that one of the claims (claim 14) is to the signal itself, which was rejected by the examiner and the BPAI, claiming that, because the claimed signal lacked physical properties, it did not fall within the four categories of patentable inventions, and was otherwise an unpatentable abstract idea.

The BPAI decided that if signals fall within any category of Section 101, they are "manufactures." As such, manufactures should be limited to tangible articles, and electrical signals per se are intangible energy and not tangible items. As a result, the Board concluded that "to the extent [some of the] claims might be construed to imply an electrical signal . . . an electrical signal per se does not fit within any of the statutory categories of 35 U.S.C. 5 101."

While the application isn't published yet, the claim reads as follows:

14. A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.

In the brief, the IPO argues that "[t]he category of manufactures is not limited to tangible things, and, even assuming it is, electrical signals are tangible, man-made things. Therefore, electrical signals, as manufactures, clearly constitute patentable subject matter."

To see further details, view the IPO's brief here.