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Is Data Real or Abstract Part III: When Real, Physical and Tangible Isn’t Good Enough Under Section 101: In re Nuijten Revisited

In two recent postings I have been exploring the distinction between real and abstract data and how those distinctions play into the question of patentable subject matter under Section 101.  My thoughts on this topic included observing that “data” has both real and abstract connotations – it is real when it is processed in a computer (how else could it be processed?) but on the other hand the data typically represents some other entity, be it a physical entity such as a machine part in a CAD system, or an abstract idea, such as a human language word in an electronic dictionary.  I further observed that it’s important to keep these distinctions in mind when drafting claims so that at least some claims are limited to processing real data, as opposed to speaking only in terms of abstract data.

So, if data is “real” and therefore not abstract, and therefore tangible, how can it be that data encoded in the “signal” of claim 14 in In re Nuijten not be statutory?  After all, it has to be real because it can be received and decoded.  Here is the claim:

14. A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.

I was surprised to find in reading the Nuijten decision it did indeed, according to at least one way to look at it, turn on the notion of whether the claim at issue was limited to covering a real, tangible signal, as opposed to a signal that was “devoid of matter.”  (page 17).   In essence, the Federal Circuit found:

1)      The “signal” claimed by Nuijten did indeed require a physical carrier

2)      The “signal” limitation was all-encompassing enough to cover electromagnetism as the physical carrier

3)      Electromagnetism is not “matter” as required under 101 to qualify as an “article of manufacture” or as a “composition of matter”

4)      The electromagnetism is fleeting and transient, although this characteristic was not necessary to support the reasoning of the case

So, is this good reasoning?  Can something “physical” not be “matter” under Section 101?  Is electromagnetism not “matter” within the scope of Section 101? 

It is interesting to note that the CAFC first grapples with whether claim 14 actually claims something physical at all, and concludes that it does, even thought the Board had found it did not:

“the signal . . . has no concrete tangible physical structure”; and “not composed of matter and [therefore] clearly not a ‘composition of matter.’”

“[t]he signal does not have any physical structure or substance and does not fit the definition of a ‘manufacture’ which requires a tangible object.”

The CAFC found otherwise, that the “signal” of claim 14 required a “physical carrier”:

“Nuijten’s position on this issue is correct in a limited way. A “signal” implies signaling—that is, the conveyance of information. To convey information to a recipient a physical carrier, such as an electromagnetic wave, is needed. Thus, in order to be a “signal,” as required by the claim, some carrier upon which the information is embedded is required. See Arrythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 1059 (“The view that there is nothing necessarily physical about ‘signals’ is incorrect.” (quotation marks omitted)).

However, while the claims are limited so as to require some physical carrier of information, they do not in any way specify what carrier element is to be used. The only limitations in Claim 14 address the signal’s informational content. Specifically, the signal must encode some supplemental data, it must have been encoded according to a “given encoding process,” and a sample, or single data point, located before the location of the supplemental data must be different from the original. The text of the claims is not limited by any specified physical medium, nor do the dependent claims add any physical limitations. They again require only that the signal carry certain information—a watermark, video, or audio. Therefore, any tangible means of information carriage will suffice for all of the claims at issue. Nuijten’s claims can of course be embodied by conventional, known means, such as electrical signals, modulated electromagnetic waves, and pulses in fiber optic cable. So long as some object or transmission carries the information specified by Nuijten’s claim, it falls within that claim’s scope regardless of its physical form. In summary, some physical form for the signal is required, but any form will do, so long as a recipient can understand the message—the nature of the signal’s physical carrier is totally irrelevant to the claims at issue.”

However, the CAFC appears to do a logical 180 later in the opinion, when it says that, in essence, the “signal” of claim 14 is not necessarily physical matter sufficient to qualify as an “article of manufacture” or a “composition of matter.”

“All signals within the scope of the claim do not themselves comprise some tangible article or commodity. This is particularly true when the signal is encoded on an electromagnetic carrier and transmitted through a vacuum—a medium that, by definition, is devoid of matter. Thus, we hold that Nuijten’s signals, standing alone, are not “manufacture[s]” under the meaning of that term in § 101.”

This is very interesting reasoning.  Let’s take a look at it:

1)      The “signal” of claim 14 does require a “physical carrier” which can be electromagnetic

2)      The electromagnetic “signal” can travel through a vacuum

3)      A vacuum is devoid of “matter”

4)      Therefore, the “signal” at least in one form within the meaning of the claim cannot be made of “matter”

5)      Because the “signal” is not necessarily limited to “matter”, it can’t be an article of manufacture

And, by extension, the CAFC is saying that something “physical” is not necessarily “matter” sufficient to qualify an invention as an “article of manufacture.”

So, is this really logical?  Can something that is admittedly “physical” not be “matter.”  Webster’s Merriam dictionary says:

1)      “Physical” means  “having material existence : perceptible especially through the senses and subject to the laws of nature <everything physical is measurable by weight, motion, and resistance — Thomas De Quincey> b : of or relating to material things.”   

2)      “Matter” means “the substance of which a physical object is composed b : material substance that occupies space, has mass, and is composed predominantly of atoms consisting of protons, neutrons, and electrons, that constitutes the observable universe, and that is interconvertible with energy”

3)      “Electromagnetism” means a fundamental physical force that is responsible for interactions between charged particles which occur because of their charge and for the emission and absorption of photons, that is about a hundredth the strength of the strong force, and that extends over infinite distances but is dominant over atomic and molecular distances —called also electromagnetic force”

Realizing that electromagnetic energy is “intercovertible” with “matter,” the Federal Circuit added in footnote 8: “We recognize the wave-particle duality as applied to electromagnetic energy. However, the fact that photons traveling at or near the speed of light behave in some ways like particles does not make them tangible articles.”

Well, to answer the question of whether it is logical to say that electromagnetism is “physical” and yet not be “matter” I would have to say yes, so long as you accept that an electromagnetic particle has no mass and therefore cannot be not “matter” by definition.

Interestingly, the In re Nuijten decision introduces yet another facet to the “abstract” vs. “tangible” analysis used to separate subject matter under Section 101:  the notion that tangible isn’t enough, that the tangibility has to be found in some kind of “matter” and not just a “force” like electromagnetism, or some other physical realm that has no matter.

So, coming full circle to the issue of whether “data” is real or intangible in nature, the question arises if the Nuijten court would have found the state of a charge in a transistor, or the magnetic state of a disk, to be “matter” or simply an intangible force.  I think here the answer is clear:  electrical charges in a circuit result from electrons, which do have mass, and magnetic storage is the result of the orientation of magnetic poles of atoms, which do have physical existence and mass.  Further, optical storage results in physical changes to the medium.  So, where data is stored in these and other physical forms it is “matter” within the logic of Nuijten.

Perhaps most importantly, the lesson to take away from Nuijten is to avoid, at least for now, attempting to claim data that is stored or encoded only into a medium that has no “matter.”  If you claim a form of signal that does have “matter”, then In re Nuijten arguably does not apply.  For example, a digital form of the signal in Nuijten, stored in a computer memory or on a magnetic disk, does have mass and is matter and therefore outside the prohibition of Nuijten.

As to the question of whether In re Nuijten asked the right questions to arrive at its result, or took too limited a view of what an “article of manufacture” should be under Section 101, tune in later and I will give you my view on that.

Principal & Chief Innovation Officer

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