Computer programs are functional, and are patent eligible when recorded on computer-readable medium.

William Bodin and Derral Thorson invented a virtual camera and method for editing and browsing images for virtual cameras. Claims 17-24 were rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. For example, claim 17 claimed:

A computer program product for digital imaging, the computer program product comprising: a recording medium; means, recorded on the recording medium, for creating, in the virtual camera, an unedited image request for an unedited digital image; ...

The Examiner found these claims non-statutory because the claims were directed to the computer program product itself, which is not embodied on a computer readable medium. The Board of Patent Appeals and Interferences disagreed. First, the law:

Under § 101, there are four categories of subject matter that are eligible for patent protection: (1) processes; (2) machines; (3) manufactures; and (4) compositions of matter. 35 U.S.C. § 101. But even if a claim fits within one or more of the statutory categories, it may not be patent eligible. In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009).

“[A]n applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article” into a different state or thing. In re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008) (en banc), cert. granted, 77 U.S.L.W. 3442, 3653, 3656 (U.S. June 1, 2009) (No. 08-964); see also Gottschalk v. Benson, 409 U.S. 63, 70 (1972).

“[A] machine is a concrete thing, consisting of parts, or of certain devices and combination of devices. This includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.” Ferguson, 558 F.3d at 1364 (quoting In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007), reh’g denied en banc, 515 F.3d 1361 (Fed. Cir. 2008), and cert. denied, 129 S. Ct. 70 (2008)).

IBM, who owns the patent application, argued that the claims expressly include "a recording medium" and the means-plus-function clauses "record on the recording medium for digital imaging." The Board then explained:

Computer programs and data structures are deemed “functional descriptive material,” which impart functionality when employed as a computer component. When functional descriptive material is recorded on some computer-readable medium, it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized. Compare In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994) (claim to data structure stored on a computer readable medium that increases computer efficiency held statutory) with In re Warmerdam, 33 F.3d 1354, 1361-62 (Fed. Cir. 1994) (claim to computer having a specific data structure stored in memory held statutory product-by-process claim but claim to a data structure that referred to ideas reflected in nonstatutory process rather than referring to a physical arrangement of the contents of a memory held nonstatutory).

Finally, the Board found that the "recording medium" disclosed in the Specification was equivalent to a computer-readable medium, and thus the Examiner's rejection was reversed.

Ex parte Bodin, 2009-002,913 (BPAI Aug. 5, 2009)