Appeal No. 95-0633
Application 07/728,426
constitutes a practical application of the abstract idea or
mathematical algorithm because it produces a useful, concrete
and tangible result. Id. Since the claimed invention has
practical application for the reasons just discussed, we do
not sustain
the rejection of claims 22-25 under 35 U.S.C. § 101.
We now consider the rejection of claims 22-25 under the
second paragraph of 35 U.S.C. § 112. The examiner’s rejection
states the following:
As per claim 1 [sic, 22], “providing” is not a
physical step in a method claims [sic],
applicant must set forth the actual steps being
performed such as “generating” etc. [answer,
page 5].
Appellant responds that “providing” is just as definite as
“generating” [brief, page 3]. The examiner replies that
“providing” is not “analogous to generating because providing
can mean anything, and it is not definite because providing
can mean inputting, outputting, or defining, which concludes
that ‘providing’ is indeed indefinite” [answer, page 6].
We fail to see any indefiniteness in the step of
providing or why the step of generating would make the scope
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