11 years ago

by Steven J. Hultquist, Principal

© 2013 Hultquist, PLLC

U.S. Patent and Trademark Office examiners routinely reject patent claims that recite nothing but the physical characteristics of a form of energy and the U.S. Court of Appeals for the Federal Circuit has held that transitory signal claims do not constitute statutory subject matter for patenting purposes (In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007)).  As a result, USPTO examiners often require applicants in patent applications dealing with signal processing to include the restriction of “non-transitory” in reference to the signals, e.g., electronic instructions processed in a computer.   

The subject of patent eligibility under the statutory subject matter categories of the Patent Law (35 USC 101) is currently a focus of judicial and administrative scrutiny, with the U.S. Supreme Court having issued decisions underscoring the non-patentable character of abstract ideas and laws of nature (e.g., Bilski v. Kappos, 561 U.S. ___ (2010) (affirming that “[l]aws of nature, physical phenomena, and abstract ideas” are unpatentable); and Mayo v. Prometheus, 566 U.S. ___ (2012) (holding unpatentable a process that the Court considered in effect an unpatentable law of nature).

Nonetheless, there are approaches to claiming forms of electromagnetic radiation that are fully consistent with applicable legal precedent and statutory requirements for patentable subject matter.

The U.S. Supreme Court considered electricity to be patentable subject matter in one of the so-called Telephone Cases, Dolbear v. American Bell Telephone Co., 126 U.S. 455 (1888), in which the Court construed and upheld the following claim:

5. The method of and apparatus for transmitting vocal or other sounds telegraphically, as herein described, by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sounds, substantially as set forth.

noting that

“electricity, one of the forces of nature, is employed; but electricity, left to itself, will not do what is wanted. The art consists in controlling the force as to make it accomplish the purpose. … [w]hat Bell claims is the art of creating changes of intensity in a continuous current of electricity, exactly corresponding to the changes of density in the air caused by the vibrations which accompany vocal or other sounds, and of using that electrical condition, thus created, for sending and receiving articulate speech telegraphically.”

The crux of the Supreme Court decision upholding the patentability of the claim therefore is the telegraphic instrumentality utilized for recited transmission of electrical undulations.

Consistent with such analytical framework, the Federal Circuit Court of Appeals in the Nuijten case suggested that tangible transferral structure and limitation of a physical medium will be sufficient to place into the category of patentable subject matter claims that are otherwise directed to a signal.

Accordingly, claiming an electromagnetic spectral emission in connection with a specified tangible/physical transferral structure for such emission would not contravene the foregoing precedent or its underlying logic. By extension, neither would the approach of claiming an electromagnetic spectral emission in connection with a specified tangible/physical receiving or detection structure. Still further, the spectral emission generator is susceptible to being claimed within the categories of 35 USC 101 as an apparatus, and the method of generating such electromagnetic spectral emission by the recited use of such apparatus, or of modulating or detecting such emission by recited use of specific apparatus, reside within the process category of 35 USC 101.

A variety of claim approaches is thus available for patenting non-naturally occurring  electromagnetic spectral forms.