Appeal 2007-1202
Application 10/847,052
32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338, 70
USPQ2d 1862, 1863-64 (Fed. Cir. 2004) and or recent final decision in Ex parte
Curry 2005-0509 (Board. Pat. App. Inter. 2007, available at
http://des.uspto.gov/Foia/ReterivePdf?flNm=fd050509.pdf) (Affirmed, Rule 36,
CAFC 06-1003, June 2006).
ANALYSIS
Analysis related to anticipation rejection:
Claim 33 recites:
A signal for communicating between welding systems, comprising:
a signal for communicating between a remote system and a welder,
the signal comprises diagnosis information associated with a health status of
the welder, the diagnosis information comprising resident diagnosis
information internal to the welder.
Initially we note that claim 33 is directed to a signal. It does not appear that
the Examiner considered applying a rejection under 35 U.S.C. § 101. While we do
not now enter a rejection under 35 U.S.C. § 101, should there be further
prosecution of this application we encourage to the Examiner to consider whether
claim 33 is drawn to statutory subject matter. Nonetheless, the limitation of claim
33 which Appellants’ assert is not taught by Niedereder is “the diagnosis
information comprising resident diagnosis information internal to the welder.”
This limitation is directed to the information content of the signal. We do not find
that this information functionally relates to signal, but is rather just a description of
the type of information conveyed by the signal. As discussed above, non-
functional descriptive material does not distinguish a claimed invention from the
prior art. As discussed in our findings of facts, fact 1, Niedereder teaches a signal
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