In re Nuijten

(Fed. Cir. 2007)

A claim directed to a signal by itself is unpatentable subject matter under 35 U.S.C. § 101 because it does not fall within one of the four statutory categories (i.e., a process, machine, manufacture or composition of matter), according to the Federal Circuit.

Nuijten filed a patent application directed to reducing distortion induced by the introduction of watermarks into signals. Claims in the application that were directed to a process of adding a watermark to a signal, an arrangement for embedding supplemental data in a signal, and a storage medium storing the signal were allowed. However, the Patent Office rejected claims directed to a signal embedded with the watermark as unpatentable subject matter.

Claim Construction

The Patent Office contended that claims directed to a signal are merely numerical information (e.g., data) without any physical embodiment. However, Nuijten argued that a signal must have a suffi cient physical substance to be discerned and recognized by a recipient. The Court stated that a signal implies signaling, i.e., the conveyance of information. Therefore, to convey information to a recipient, a physical carrier such as an electromagnetic wave is needed. However, even though the signal claims require some physical carrier of information, they do not in any way specify what carrier element is to be used. Therefore, according to the Court, the nature of the signal’s physical carrier is irrelevant to the signal claims at issue.

The Claims Are Not in Any Statutory Category

Nuijten, relying on State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1375 (Fed. Cir. 1998), argued that a claim does not need to fi t precisely into one of the four categories of statutory subject matter (i.e., process, machine, manufacture or composition of matter). Rather, Nuijten argued, the essential characteristics of the subject matter, in particular, and its practical utility should be considered. However, the Court stated that State Street does not hold the four statutory categories to be irrelevant, non-limiting or subsumed under some more overreaching question about patent utility. The Court stated that the claimed subject matter must fall into at least one category of statutory subject matter, but that it is irrelevant as to which category it falls into so long as some category has been satisfied. The Court stated that the four categories together describe the exclusive reach of patentable subject matter, and, if a claim covers material not found in any one of the categories, the claim falls outside the scope of patentable subject matter.

The Court found that the claimed signal did not fall within any of the four categories and is therefore unpatentable subject matter. More specifi cally, the Court found that the claimed signal was not a process because a process must cover an act or series of acts. The Court also found that the claimed signal was not a machine because it was not a concrete thing consisting of parts, or of certain devices or a combination of devices. Furthermore, the Court found that the claimed signal was not a manufacture because it was transitory and does not fit within the dictionary definitions of “manufacture” provided by the Supreme Court as being some tangible article or commodity. Finally, the Court found that the claimed signal was not a composition of matter because the signal was not a combination of substances.

Concurring and Dissenting Opinion

Judge Linn agreed with the majority that a signal, as used in the claims at issue, refers to something with a physical form. However, Judge Linn disagreed with the majority that the signal claims are not directed to statutory subject matter under 35 U.S.C. § 101.

Although Judge Linn agreed with the majority that the signal claims were not a machine, process or composition of matter as used in 35 U.S.C. § 101, he argued that the signal claim does satisfy the manufacture category. He stated that the Supreme Court’s definition of “manufacture” is not limited to tangible or nontransitory inventions. He argued that tangibility is not necessary to the meaning of “material” or “article,” and that many transitory inventions in the chemical arts have been held patentable. He also stated that the Supreme Court cases relied on by the majority did not address the tangibility of the subject matter, but rather whether it was made by man. Judge Linn concluded that the claimed signal is a manufacture because it is an article produced for use from raw materials by giving the materials new form.

Practice Tip: When filing a patent application that involves signals, it is recommended to include claims directed to a process of creating the signal and/or an apparatus that interacts with the signal.