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Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

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BPAI Rejects Claims Under In re Nuijten

Ex parte Wahlbin (BPAI Jan. 13, 2010)

Today the Board of Patent Appeals and Interferences ("BPAI"), in a decision by Administrative Patent Judge Lorin, affirmed a rejection of claims related to a "computer implemented method for estimating liability in an accident."  The patent examiner had rejected the pending claims as obvious in light of a number of prior art references.

While the BPAI affirmed the examiner's rejection on obviousness grounds, it went one step further.  For certain claims, it issued a new ground of rejection.  Specifically, it rejected certain claims as "being directed to non-statutory subject matter."

The claims at issue recited a "computer-readable storage medium comprising program instructions."  The BPAI found, giving these claims their broadest reasonable construction, the claims encompassed "a signal."  The BPAI also stated its construction was consistent with the specification, "which describes that the computer readable storage medium includes '…signals such as electrical, electromagnetic, or digital signals …'"  Citing In re Nuijten, the BPAI explained that "[a] signal does not fit within at least one of the four statutory subject matter categories under 35 U.S.C. 101."