Appeal No. 1998-2848
Application 08/398,862
1, as a whole, does not recite statutory subject matter.
Although claim 1 is directed to a "system" in the preamble,
this is not determinative of statutory subject matter. See
In re Walter, 618 F.2d 758, 205 USPQ 397 (CCPA 1980) (system
claims and method claims held nonstatutory).
Appellant argues that the § 101 rejection is untimely and
puts an undue burden on Appellant (Br12-13). While it is
unfortunate that the Examiner did not enter the § 101
rejection until the third Office action, there is nothing that
can be done. Examiners are charged with making sure that an
"applicant is entitled to a patent under law," 35 U.S.C.
§ 151. A statutory ground of rejection cannot be dismissed
just because it was not entered earlier.
Appellant argues (Br13): "The Examiner's proposition
'that the Applicant has intentionally avoided claiming the
mechanism or medium that is interrelated with the data
structure' is pure speculation without any factual basis and,
moreover, is apt to offend Applicant and his Counsel." The
claims define what Appellant regards as his invention.
35 U.S.C. § 112, second paragraph. Since claim 1 does not
recite any substrate medium on which the computer program and
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