Appeal No. 1999-2714
Application No. 08/504,562
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
At the outset, we note that the examiner’s answer is quite unclear as to the
appropriate grounds of rejection of the claims in each of the grounds of the rejection
along with which claims (some are not listed in the statement of the rejections, but
addressed in the body of the rejection) are rejected over which reference(s). Rather
than remand the application again to the examiner after the oral hearing, we will address
the rejections using appellant’s brief and the reply brief as a guide to conclude that the
examiner has not established a prima facie case for any of the stated grounds of
rejection.
STATUTORY SUBJECT MATTER
The examiner maintains that the claims are directed to non-statutory subject
matter as being non-functional descriptive matter which are stored on a storage medium
or the like. (See answer at page 3.) The examiner maintains that the non-functional
descriptive matter “cannot exhibit any functional interrelationship with the way in which
computing processes are performed.” (See answer at page 3.) Appellant argues in the
second reply that the claims are similar to the claims in In re Lowry, 32 F.3d 1579, 32
USPQ2d 1031 (Fed. Cir. 1994), and that in accordance with State Street Bank &Trust
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