Appeal No. 94-3999
Application 08/083,863
Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1377, 47 USPQ2d 1596, 1604 (Fed.
Cir. 1998). Accordingly, to the extent it is urged the claims are unstatutory because they are drawn to
a method of doing business, the rejection cannot be sustained.
The examiner’s position to the effect that the claims are unpatentable because they are directed
to an abstract idea is not persuasive because they do not merely define an abstract idea. The question
of whether claims encompass statutory subject matter should focus on the essential characteristics of
the subject matter, in particular, its practical utility. State Street Bank & Trust Co. v. Signature
Financial Group, Inc., supra. Here, claims 18-21 define a process of “computer implemented steps”
for controlling access to a particular resource within a computer system, and claims 22-24 define a
machine for controlling access to a particular resource within a computer system.
The Rejection under 35 U.S.C. § 112, Second Paragraph
As to this rejection, it is asserted that appellants claim steps as “activities which may be
performed”. The examiner contends that the functions as claimed are not positive limitations and render
the claims ambiguous. Purportedly, there is no requirement that any act be performed. Still further, the
examiner contends that it is not clear what is meant by the claim language “finite ordered series of
activities”.
With respect to the first-mentioned position of the examiner in the above paragraph, claims 22-
24 are apparatus claims having means plus function clauses. The three elements of
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