Appeal No. 2006-2541
Application No. 09/832,438
rejection pursuant to 37 CFR § 41.50(b) against claims 1, 3 through 15, 17
through 29 and 31 through 42 under 35 U.S.C. § 112, second paragraph.
Rejection of claims 1 and 3 through 14
under 35 U.S.C. § 101.
Appellants argue, on pages 10 and 11 of the Brief, that independent
claim 1’s recitation of calculating a profit for processing requests is a
concrete and tangible result. On page 11 of the Brief, Appellants argue that
independent claim 1 recites a “practical application by allocating computing
system resources based upon whether a revenue or penalty is generated by
each processing request and not ‘merely manipulate an abstract idea’ as the
Examiner alleges.” Appellants, thus conclude that independent claim 1
recites statutory subject matter as it recites a method which produces
concrete, useful and tangible results.
On page 9 of the Answer, the Examiner states:
In order for allocating to be statutory the result would require the
physical distribution of resources and not the simple act of assigning
which resources are to be operated, which may be carried out mentally
without any useful, concrete or tangible result. The Appellant's [sic]
specification lacks a definition that would otherwise state allocating to
be anything other than the mental assigning of which resource to be
operated.
We disagree with the Examiner’s rationale. The standard for
reviewing claims for statutory subject matter is set forth in the Interim
Guidelines for Examination of Patent Applications for Patent Subject Matter
Eligibility (1300 Off. Gaz. Pat. Office 142 (Nov. 22, 2005)). The guidelines
first require a determination as to whether the claims as a whole are directed
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