Appeal 2007-0345
Application 09/812,417
Significantly, we have other independent claims before us on appeal,
claims 9 and 17, where there is no question that statutory subject matter is
recited. For these claims, certainly no “implication” of a computer
implementation is needed to pass muster under § 101.24
As a practical matter, we need not – and indeed must not – resort to
“implying” computer implementations in claim language to transform
otherwise nonstatutory subject matter into that which is statutory. As claims
9 and 17 amply demonstrate, the invention on appeal before us is certainly
capable of being claimed in a manner that easily meets the threshold of
§ 101. To this end, the claim drafter is in the best position to ensure that this
is done. That is, the claim drafter must ensure that statutory subject matter is
explicitly recited in the claims and is not left to implications by the Examiner
or the Board.
DECISION
We have sustained the Examiner's prior art rejection with respect to
all claims on appeal. Moreover, we have entered a new grounds of rejection
under new grounds of rejection under 37 C.F.R. § 41.50(b) for claims 1-4, 6-
8, and 23-28 as failing to recite statutory subject matter under 35 U.S.C.
24 In stark contrast to the mere images recited in claim 23, independent claim
17, for example, recites concrete machine-implemented functionality that
amply meets the requirements of § 101. Claim 17 recites, among other
things, “an input to receive user input” and a “processor coupled to the input
and the display.” Also, the processor is configured to implement the five
recited functions. This clear machine implementation easily meets the
threshold of statutory subject matter under § 101 -- a point indeed not in
dispute. But such a concrete recitation is a far cry from the mere images
recited in claim 23.
30
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