Appeal No. 2006-1187
Application No. 10/056,832
Appellants further present arguments based upon Ex parte Bowman, 61
USPQ2d 119 (Bd. Pat. App. & Int. 2001).
The examiner’s response, on pages 4 and 5 of the answer, rely heavily
upon a finding that the claims are not within “the technological arts.” Additionally,
the examiner finds that the claims recite an abstract idea and preempt all uses of
the abstract idea. The examiner states:
[A] look at the claims reveals that all of the recited steps are generic in
nature and cover every possible way of performing the claimed steps.
This is direct evidence that the claimed invention is directed to nothing
more than an abstract idea.
While we concur with the examiner’s determination that representative
claim 1 is directed to non-statutory subject matter, we disagree with part of the
examiner’s analysis to support this conclusion. Specifically, as stated in our
recent precedential decision in Ex parte Lungren, 76 USPQ2d 1385 (Bd. Pat.
App. & Int. 2005), “there is currently no judicially recognized separate
‘technological arts’ test to determine patent eligible subject matter under §101”
Lungren at 76 USPQ2d 1388. Accordingly, we provide the following rationale
to support our decision to affirm the examiner’s rejection of claim 1 under
35 U.S.C.§ 101 and as our rationale differs from that relied upon by the examiner
we designate it as a new grounds of rejection pursuant to 37 CFR § 41.50(b).
35 U.S.C. § 101 provides:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefore, subject
to the conditions and requirements of this title.
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