Appeal Number: 2007-0133
Application Number: 10/223,466
rejection. For reasons which follow, we (1) have considered the request on the
merits, but (2) decline to reverse our prior decision affirming the Examiner’s
rejection under 35 U.S.C. § 101.
ISSUE ON REHEARING
In the February 21, 2007 opinion we sustained the Examiner’s rejection of
the subject matter of claims 1, 5 through 15, 35, and 37 as being unpatentable
under 35 U.S.C. § 101. Claims 1 and 35 are independent. Appellant limits the
request for rehearing to two issues: whether a process whose steps are directed
solely to construction of a static chart is a method of predicting sleep and activity
levels, and whether a static chart is eligible patentable subject matter. According
to the Appellant, “claim 1 is not, as the Board suggests, a method of drawing a
chart. Rather, it is a method of predicting sleep and activity levels comprising
chart-making steps” (Request for Rehearing 1). Appellant reasons that a chart is
tangible and concrete (Request for Rehearing 2). Moreover, Appellant asserts the
chart resulting from the method of claim 1 is useful (Id.). In particular, the
Appellant contends:
the chart is useful and provides better information that the raw data
used to produce it (time at destination, time at starting location, and
the average [i.e. normal] sleep and wake drives). The chart can be
quickly used to determine when the traveler will be alert or tired.
(Request for Rehearing 3).
The issue is whether Appellant’s claims, which are nominally drawn to cover
methods of predicting sleep and activity levels by humans, involving no
technology and no transformation, are patentable subject matter under 35 U.S.C.
§ 101. So construed, Appellant’s claims appear to be unpatentable under section
101 because (i) they do not qualify as a process under section 101, as that term has
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