Appeal No. 2004-0786
Application No. 08/935,116 Page 5
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of non-statutory subject
matter, anticipation, obviousness and obviousness-type double
patenting, relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, appellants' arguments
set forth in the briefs along with the examiner's rationale in
support of the rejections and arguments in rebuttal set forth in
the examiner's answer. Upon consideration of the record before
us, we affirm-in-part, and enter a new ground of rejection, under
37 CFR § 1.196(b), of claim 33 under 35 U.S.C. § 102.
We begin with the rejection of claims 33-39 under 35 U.S.C.
§ 101 as being drawn to non-statutory subject matter. The
examiner's position (answer, page 2) is that the claims are drawn
to non-functional descriptive matter, and that the invention
recites stored transaction data which does not produce a useful,
concrete or tangible result. Appellants assert (brief, page 35)
that the claims define a statutory novel composition of matter
whose utility resides in the ability of the computer system to
retrieve representations of the data and the associations between
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