Appeal 2007-0469
Application 10/299,618
New Grounds of Rejection Under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter new grounds of rejection under
35 U.S.C. § 101 for claims 18-22, 24, and 25. 35 U.S.C. § 101 provides:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
Claims 18-22, 24, and 25 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter.
Independent claim 18 merely recites a data structure with two
portions: (1) a platform-independent portion, and (2) a portion with
formatting information. The claimed data structure, however, merely
constitutes descriptive material per se and is therefore not statutory.
A “data structure” is defined as “[a] physical or logical relationship
among data elements, designed to support specific data manipulation
functions.” In re Warmerdam, 33 F.3d 1354, 1362, 31 USPQ2d 1754, 1760
(Fed. Cir. 1994). Significantly, the claimed data structure does not define
any structural and functional relationships between the data structure and
other claimed aspects of the invention that permit the data structure’s
functionality to be realized. See Interim Guidelines for Examination of
Patent Applications for Patent Subject Matter Eligibility, 1300 Off. Gaz.
Pat. Office 142, 151 (Nov. 22, 2005) (“Interim Guidelines”). Although the
data structure of claim 18 is “accessible by a processing apparatus for
processing and subsequent transmission to a data-receiving device,” such a
functional recitation hardly distinguishes the claimed data structure from
mere descriptive material which would also be so accessible.
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