The USPTO has suggested amending any claim that is drawn to a computer readable media that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 USC § 101 by adding the limitation “non transitory” to the claim. The Notice isavailable here.
The suggestion follows the case of In Re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), in which signals were claimed that were watermarked. That is, the original signals were manipulated so as to imbed the signal with additional data. Because patent claims during examination at the USPTO are interpreted as broadly as possible, if claims are not limited to being non-transitory, the USPTO will reject them as being non-patentable subject matter.
The only situation where the suggested amendment could raise issues of new matter, is when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment.
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