Appeal 2007-0770
Application 09/752,330
1 (claim to a data structure per se held nonstatutory).
2 When non-functional descriptive material is recorded on some computer-
3 readable medium, in a computer or on an electromagnetic carrier signal, it is not
4 statutory since no requisite functionality is present to satisfy the practical
5 application requirement. Merely claiming non-functional descriptive material, i.e.,
6 abstract ideas, stored in a computer-readable medium, in a computer, on an
7 electromagnetic carrier signal does not make it statutory. See Diamond v. Diehr,
8 450 U.S. 175, 185-86, 209 USPQ 1, 7-8 (1981) (noting that the claims for an
9 algorithm in Benson were unpatentable as abstract ideas because “[t]he sole
10 practical application of the algorithm was in connection with the programming of a
11 general purpose computer.”). Such a result would exalt form over substance. In re
12 Sarkar, 588 F.2d 1330, 1333, 200 USPQ 132, 137 (CCPA 1978) (“[E]ach
13 invention must be evaluated as claimed; yet semantogenic considerations preclude
14 a determination based solely on words appearing in the claims. In the final analysis
15 under 101, the claimed invention, as a whole, must be evaluated for what it is.”)
16 (quoted with approval in Abele, 684 F.2d 902, 907, 214 USPQ 682, 687 (CCPA
17 1982)). See also In re Johnson, 589 F.2d 1070, 1077, 200 USPQ 199, 206 (CCPA
18 1978) (“form of the claim is often an exercise in drafting”). Thus, nonstatutory
19 music is not a computer component and it does not become statutory by merely
20 recording it on a compact disk. Protection for this type of work is provided under
21 copyright law.
22 When presented with a claim comprising descriptive material, an Examiner
23 must determine whether the claimed nonfunctional descriptive material should be
24 given patentable weight. The Patent and Trademark Office (PTO) must consider
25 all claim limitations when determining patentability of an invention over the prior
26 art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983). The
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