Appeal 2007-0770
Application 09/752,330
1 PTO may not disregard claim limitations comprised of printed matter. See
2 Gulack, 703 F.2d at 1384, 217 USPQ at 403; see also Diamond v. Diehr, 450 U.S.
3 at 191, 209 USPQ at 10. However, the Examiner need not give patentable weight
4 to descriptive material absent a new and unobvious functional relationship between
5 the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-
6 84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338, 70
7 USPQ2d 1862, 1863-64 (Fed. Cir. 2004) and or recent final decision in Ex parte
8 Curry 2005-0509 (Board. Pat. App. Inter. 2007, available at
9 http://des.uspto.gov/Foia/ReterivePdf?flNm=fd050509.pdf) (Affirmed, Rule 36,
10 CAFC 06-1003, June 2006).
11 ANALYSIS
12 As discussed above in the principles of law section we hold that the “non-
13 functional descriptive material” doctrine applies to computer implemented
14 inventions. Further, we note that Appellants have not presented any argument or
15 analysis functionally relating the limitation “entitled price” to the method, nor do
16 we find any. For this reason alone, Appellants’ arguments have not persuaded us
17 of error in the Examiner’s obviousness double patenting rejection of claims 1
18 through 48. Nonetheless, as discussed above we find that claim 1 of Mantena
19 patent does make obvious sending a request for an entitled price.
20 Appellants’ reply brief does not address the claim limitation of “real time”
21 with respect to the obviousness-type double patenting rejection, but rather
22 addresses it only with respect to the rejections under 35 U.S.C. § 103(a).
23 Nonetheless, as it was argued in the Brief we will address the issue as it applies to
24 both rejections. Appellants present an extrinsic definition of the term as “a level of
25 computer responsiveness that a user senses as sufficiently immediate or that
26 enables the computer to keep up with some external process.” Further, Appellants
7
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