Appeal No. 1997-4354
Application 08/177,296
claim 15 must have. It was the examiner’s burden to find in the
prior art the existence of processes capable of performing the
respective functions. Accordingly, we will not sustain the
rejection of claims 15-21 under 35 U.S.C. § 112, second paragraph.
We will not sustain the rejection of claims 15-21 under
35 U.S.C. § 101 on the ground that they are directed to
subprocesses, which constitute non-statutory subject matter.
The examiner’s position appears to be that subprocesses
are abstract ideas and that such ideas are excluded from patent
protection. However, ideas are not abstract if they are reduced
to a practical application. State St. Bank & Trust Co. v.
Signature Fin. Group, Inc., 149 F.3d 1368, 1373, 47 USPQ2d 1596,
1601 (Fed. Cir. 1998). Here, the practical application is as
recited in the preamble of claim 15, which is “to customize a
structural non-content portion of an element of a graphical user
interface”.
After consideration of the positions and arguments presented
by both the examiner and the appellants, we have concluded that
the rejection of claims 15, 20 and 21 under 35 U.S.C. § 102 over
Diefendorff should be sustained but that the rejection of claims
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