Appeal 2007-0770
Application 09/752,330
1 FINDINGS OF FACT
2 Claim 1 of the Mantena patent recites “electronically receiving a sales order
3 … obtaining an entitled price…… while the purchaser waits … automatically
4 returning the electronic order confirmation … wherein the order confirmation
5 comprises the entitled price.” Implicit, if not obvious, in claim 1 is that if the
6 order is received electronically it was sent electronically. Further, the claim recites
7 that the response to the sales order is an “order confirmation”, thus the sales order
8 is in among other things a request for an order confirmation. The claim further
9 recites that the order confirmation comprises the entitled price. Thus, we find that
10 claim 1 of Mantena patent implies that the sales order is a request for entitled price.
11
12 PRINCIPLES OF LAW
13 Although no issue under 35 U.S.C. § 101 is before this Board, the decisions
14 of our reviewing courts on this issue do provide useful guidance with respect to (a)
15 distinctions between “functional” and “non-functional” descriptive material, and
16 (b) how the distinctions impact the courts’ treatment of each type of descriptive
17 material.
18 When functional descriptive material is recorded on some computer-
19 readable medium, it becomes structurally and functionally interrelated to the
20 medium and will be statutory in most cases since use of technology permits the
21 function of the descriptive material to be realized. Compare In re Lowry, 32 F.3d
22 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994) (claim to data structure
23 stored on a computer readable medium that increases computer efficiency held
24 statutory) and In re Warmerdam, 33 F.3d 1354, 1360-61, 31 USPQ2d 1574, 1759
25 (claim to computer having a specific data structure stored in memory held statutory
26 product-by-process claim) with Warmerdam, 33 F.3d at 1361, 31 USPQ2d at 1760
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