Appeal 2007-1695
Application 10/418,835
material (i.e., information) and the substrate, we find no physical substrate
explicitly claimed (e.g., a computer or computer-readable medium). We
note that the recited “database” may be broadly read on a collection of data
in the abstract, as discussed supra. Therefore, in considering the recited
steps of obtaining and processing information, we give no patentable weight
to the specific types of information recited in claim 6. Thus, we broadly
construe the information recited in claim 6 as mere data (i.e., descriptive
material in the abstract).
We note that descriptive material can be characterized as either
“functional descriptive material” or “nonfunctional descriptive material.”
Exemplary “functional descriptive material” consists of data structures and
computer programs, which impart functionality when employed as a
computer component. In contrast, “nonfunctional descriptive material”
includes but is not limited to music, literary works and a compilation or
mere arrangement of data.
We acknowledge that the Patent and Trademark Office (PTO) must
consider all claim limitations when determining patentability of an invention
over the prior art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404
(Fed. Cir. 1983). With respect to information in printed form, the PTO may
not disregard claim limitations comprised of printed matter. See Gulack,
703 F.2d at 1384-85, 217 USPQ at 403; see also Diamond v. Diehr, 450
U.S. 175, 191, 209 USPQ 1, 10 (1981). However, the Examiner need not
give patentable weight to descriptive material absent a new and unobvious
functional relationship between the descriptive material and the substrate.
See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir.
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