2100 Patentability

2106.03, I: clarify Nuijten paragraph "tangible" explanation

Please see MPEP 2106.03, I. (Jan. 2018), at 18, right column. The second non-bulleted paragraph (“paragraph A”) begins: “Even when a product has a physical or tangible form, it may not fall within a statutory category” (at 2100-19). Since paragraph A solely relates to Nuijten,* I suggest revising paragraph A to expressly relate to signals, and to clarify the meaning of “tangible.” For example, I propose revising paragraph A, up to the first citation, as follows ([[deletions]], __insertions__):

 

__A transitory, propagating signal is real and can be measured. However, it does not have a__ [[Even when a product has a]] physical or tangible __(i.e., material)__ form, [[it may not]] __and therefore does not__ fall within a statutory category. For instance, a transitory signal [[, while physical and real,]] does not possess concrete structure that would qualify as a device or part under the definition of a machine, is not a tangible __(i.e., material)__ article or commodity under the definition of a manufacture (even though it is man-made and physical in that it exists in the real world and has [[tangible]] __perceptible__ causes and effects), and is not composed of matter such that it would qualify as a composition of matter. * * *

 

Merriam-Webster gives two senses for “tangible”: palpable and material. The Nuijten decision uses both senses of the word. The Nuijten court stated that a “transient electric … transmission … exists in the real world and has tangible causes and effects.” 500 F3d 1346, 1356. However, the court found the “claimed signals” were non-statutory, because “any tangibility arguably attributed to a signal is embodied in the principle that it is perceptible … signals within the scope of the claim do not themselves comprise some tangible article or commodity.” Id. Nuijten therefore distinguishes “tangible … effects” (palpability) from a “tangible article” (materiality). Id. A “signal” is palpable, but is not material, so is non-statutory.

 

Paragraph A does not reflect this distinction. Paragraph A states that a “product” with a “tangible form … may not fall within a statutory category.” MPEP, supra. However, Nuijten found that the signals at issue did not have a “tangible form.” Nuijten at 1356. Therefore, the first sentence of paragraph A does not conform to the cited holding and should be amended. Thanks for considering this request!

 

* Paragraph A also cites Mentor Graphics, which simply applies the holding of Nuijten.

 

(As always, all opinions herein are my own and not those of my employer, any client, or any other party).

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Idea No. 235