Appeal 2007-1164
Application 10/170,131
As in Lowry, the structural coordinates stored within the
presently claimed computer are processed by the computer;
indeed, they are essentially unintelligible to the human mind,
and should not be considered as mere printed matter. Thus,
under the logic of In re Lowry, the Patent Office improperly
relies on In re Gulack, in not according the structural
coordinates patentable weight.
(Br. 6-7, footnote omitted.)
We disagree with Appellants’ reading of Lowry. We agree instead
with the Examiner that
Lowry is not analogous to the instant case. . . . [T]he Court held
that . . . “Lowry’s ADOs do not represent merely underlying
data in a database.” In other words, because Lowry’s ADOs
were functionally interrelated with the memory of the computer
to increase computer efficiency, the data were not held to be
merely non-functional descriptive material. In contrast to
Lowry, the data of Table 1 have no such functional relationship
with the computer.
(Answer 8-9.)
Appellants also argue that the data recited in claim 24 is functional
descriptive matter under In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed.
Cir. 2004):
The machine readable structural coordinates enable the
computer to display a three-dimensional representation of the
HCV NS5B protein. . . . The encoded structural coordinates,
being unintelligible to the human mind, could not achieve this
utility without the computer, and the computer would similarly
be unable to achieve this utility without the structural
coordinates. Thus, since the computer and structural
coordinates have an interdependent functional relationship, the
reasoning of In re Ngai compels a finding that the structural
coordinates can not be ignored in an obviousness rejection
simply because they do not perform the specific function of
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