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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Wednesday
Mar172010

BPAI Finds Broadest Reasonable Construction of "Computer Program Product" Includes Non-Statutory Subject Matter

Ex parte Peyrelevade (BPAI Mar. 17, 2010)

Today, the BPAI reversed an examiner's final rejection of claims and entered a new ground of rejection of claims related to a module that may be used in multiple websites.  While the BPAI found that the applicant overcame the prima facie showing of anticipation and obviousness of the claims at issue, the BPAI entered a new ground of rejection of certain claims as being directed to non-statutory subject matter.

These claims recited a "computer program product" that includes code.  Giving the claims their broadest reasonable interpretation, the BPAI found that the claims "encompass[] a computer program per se … [and] also encompass[] the computer program product being embodied on a carrier wave" since the claims recited "the open transitional phrase 'comprising and do[] not preclude the computer program product from being embodied in a carrier wave."  Citing In re Nuijten along with two documents available on the USPTO website, "Subject Matter Eligibility of Computer Readable Media" and "Interim Examination Instructions for Evaluating Subject Matter Eligibility under 35 U.S.C. 101", the BPAI found that the claims encompassed both a computer program per se as well as a signal, and were therefore directed to non-statutory subject matter.