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[X_Factor]

Is there a 112 issue with the preamble "Apparatus comprising a storage medium tangibly embodying program instructions." This is a Beauregard claim preamble. Can such preamble recite an "apparatus"?

[khazzah]

Is there a 112 issue with the preamble "Apparatus comprising a storage medium tangibly embodying program instructions." This is a Beauregard claim preamble. Can such preamble recite an "apparatus"?

There are a million ways to phrase a "computer readable medium" claim. I don't see anything wrong with using "apparatus" in this manner. My guess is "apparatus" was included to show this fits into one of the well-known statutory classes.

That said, I don't see any difference in scope between the claim above and the simpler claim "a storage medium tangibly embodying program instructions."

Is there a 112 issue ?

Too vague. Are you referring to Written Description, Enablement, or Indefiniteness?

[X_Factor]

Is there a 112 issue ?

Too vague. Are you referring to Written Description, Enablement, or Indefiniteness?

I was referring to indefiniteness because it is unclear whether this is an "apparatus" claim or a "computer-readable medium" claim. Or, are they both the same? Usually, it's either an apparatus or a computer-readable medium/an article of manufacture/a computer program product. I've just never seen a claim written with both apparatus and computer-readable medium combined.

[JimIvey]

There are a million ways to phrase a "computer readable medium" claim. I don't see anything wrong with using "apparatus" in this manner. My guess is "apparatus" was included to show this fits into one of the well-known statutory classes.

Really?  I've only counted 932 so far but I don't doubt your numbers.  ;-)

I agree with Karen and I don't see any immediate problems with the language in the OP.

However, it you really want to go with literal 112 language, I would use "article" or "article of manufacture" rather than "apparatus" or "machine".  My understanding is that the latter have moving parts whereas the former do not.

Hmmm....  Now that I think about it, I had a CD in mind as I wrote that.  A hard disk drive would include moving parts and therefore would be better suited by "apparatus".  Not sure where RAM would fit.  Technically, no "parts" move, but it does change state so something moves (unlike a CD, though it does change state when you first burn it).

My personal practice is to use something like "A computer readable medium that is useful in conjunction with a computer and on which are stored computer instructions that, when executed by the computer, cause the computer to [do preamble stuff] by at least: [method steps]."  I don't think I've ever seen a 112 rejection (or a 101 rejection) on that form.

Regards.

[JustAnotherExaminer]

Is there a 112 issue with the preamble "Apparatus comprising a storage medium tangibly embodying program instructions." This is a Beauregard claim preamble. Can such preamble recite an "apparatus"?

This claim fails the current guidelines for 35 USC 101.

The issue is that your "apparatus" only comprises one element, and could therefore be anything that is only the one element.  And this one element is a "storage medium", which isn't necessarily physical structure.  It doesn't matter what your claim is nominally called, but rather what is comprises or significant physical structure modification in the preamble.

Ways to fix this:

Example 1:
A non-transitory computer readable storage medium comprising instructions that, when executed by a processor, perform the following method:
A, B, C.

Example 2:
An apparatus comprising:
a memory;
a processor configured to perform the following:
A, B, C.

[khazzah]

Is there a 112 issue with the preamble "Apparatus comprising a storage medium tangibly embodying program instructions." This is a Beauregard claim preamble. Can such preamble recite an "apparatus"?

This claim fails the current guidelines for 35 USC 101.

Thanks for JustAnEx for flagging this. The PTO does see a huge difference between the qualifiers "storage" and "non-transitory".