Appeal 2007-0345
Application 09/812,417
(“images”) and therefore fail to recite statutory subject matter under 35
U.S.C. § 101.
Nothwithstanding the fact that nowhere in claim 23 is a computer
recited, the dissent nevertheless finds that there must be an implicit computer
implementation/process for the user to act with respect to the images.
Dissent, at 36 (emphasis added). But no computer implementation is
claimed – only a “display.” A display need not be a machine, let alone a
computer. A display is merely a visual representation of information.23
In essence, each of the recited four images merely depicts graphical
information that hardly requires the user to “act with respect to the images”
at all, let alone define a concrete functional relationship between the images
and other aspects of the invention which permit the invention’s functionality
to be realized. Rather, the images merely constitute non-statutory
descriptive material. Without more, reciting mere descriptive material
simply fails to define structural and functional relationships between the
descriptive material and other claimed aspects of the invention to permit the
invention’s functionality to be realized. See Interim Guidelines, 1300 Off.
Gaz. Pat. Office 142, 151 (Nov. 22, 2005).
The dissent’s finding of an “implicit” computer implementation in
claim 23 effectively engrafts a computerized functionality to the recited
limitations where none exists. But “implying” such computer manifestations
in claims that simply do not require – let alone recite – such implementations
is tantamount to impermissibly importing limitations from the specification
into the claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1323, 75
USPQ2d 1321, 1334 (Fed. Cir. 2005).
23 See P. 20, supra, of this opinion.
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