Appeal 2007-0435
Application 10/082,794
to be known as nonfunctional descriptive material, as discussed in Manual of
Patent Examining Procedure (MPEP) § 2106.01 (8th Ed., Rev. 5, Aug.
2006).2 Appellants also seem to rely on the intended use of what the source
code may cause a compiler to do. The final step of claim 1, however, is
“specifying” annotations. The claim is not limited to any compiler function;
nor, for that matter, limited to any type of machine function.
The content of the nonfunctional descriptive material carries no
weight in the analysis of patentability over the prior art. Cf. In re Ngai, 367
F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (“‘[w]here the
printed matter is not functionally related to the substrate, the printed matter
will not distinguish the invention from the prior art in terms of
patentability,’” (quoting In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401,
404 (Fed. Cir. 1983)); In re Lowry, 32 F.3d 1579, 1583, 32 USPQ2d 1031,
1034 (Fed. Cir. 1994) (“Lowry does not claim merely the information
content of a memory. . . . [N]or does he seek to patent the content of
information resident in a database.”).
BEA is thus sufficient to show anticipation of the subject matter of
instant claim 1. We sustain the § 102(b) rejection of claim 1.
Appellants rely on the arguments in support of claim 1 in response to
the rejection of the remainder of the claims over the applied prior art.3
2 As explained in the referenced MPEP section, an invention directed to a
mere program listing is nonstatutory. The Examiner should evaluate the
claims under contemporary 35 U.S.C. § 101 Office guidelines in the event of
further prosecution of claims similar to instant claim 1.
3 Appellants repeat language of claim 16 (Br. 11), which is not an argument
for separately patentability. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”). Moreover, Appellants do
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