Since Bilski, the USPTO has been understandably struggling with its patentable subject matter procedures. This is especially true in the area of computer software.
U.S. Patent No. 8,196,213 issued this week to Microsoft and is directed to a method of verifying un-trusted code. The original application included claims directed toward “a computer readable storage medium” loaded with varous instructions arranged in a novel manner. In July 2011, however, the examiner and the art unit’s Supervising Patent Examiner (SPE) mailed a final rejection of the claim based upon their conclusion that the claim impermissible encompassed unpatentable subject matter under 35 U.S.C. 101. The examiners reasoned that the storage medium classification was broad enough to include signals and that signals are unpatentable under Section 101. See 1351 Off. Gaz. Pat. Office 212 (Feb 23, 2012).
In response, Microsoft amended the claims – adding an express limitation that excludes signals. The amended claim begins: “1. A computer readable storage medium excluding signals . . . ” This change satisfied the PTO and the patent quickly issued.
The original patent document never discusses signals and only defines computer readable media by reference to various elements “which can store data that is accessible by a computer, such as magnetic cassettes, flash memory cards, digital video disks, Bernoulli cartridges, random access memories (RAMs), read only memories (ROMs) and the like may also be used in the exemplary operating environment.”
The Question: Should the PTO have rejected the amendment for failing the written description requirement?