Appeal No. 96-2552
Application 08/161,816
(Paper No. 17), the Reply Brief (Paper No. 19), and the
Supplemental Reply Brief (Paper No. 21) for a statement of
appellant's position.
OPINION
The Federal Circuit recently held that there is no
special "business method" exception to § 101. State Street,
149 F.3d at 1375-77, 47 USPQ2d at 1602-04, 1998). For this
reason alone the examiner's rejection must be reversed based
on superseding case law. In addition, however, we have
several other comments regarding the rejection.
First, the examiner does not come to grips with the
apparatus nature of independent claims 1, 26, and 27. Claims
in apparatus form conventionally fall into the 35 U.S.C. § 101
statutory category of a "machine." The exceptions to § 101,
such as mathematical algorithms per se and "business methods"
(to the extent such an exception was recognized before State
Street), applied to "processes" under § 101 because processes
are abstract in the sense that they do not have to be
performed with any particular apparatus. To the best of our
knowledge, only apparatus claims drafted in means-plus-
function language under § 112, sixth paragraph, were ever
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