Appeal No. 2001-0653
Application 08/820,736
For the reasons discussed above, appellants have not shown
any error in the rejection of claim 1 in Group 1. The rejection
of claims 1, 3, 4, 20-22, 32, 34, and 40 is sustained.
Group 2 - Claim 33
The examiner points, without explanation, to Profiler,
pages 130-132 (Paper No. 7, p. 14). These pages cover a section
entitled "Who pays for loops?" It is not explained, nor do we
understand, how this section is intended to be applied against
the limitations of claim 33.
Appellants argue that Profiler discloses storage of profile
data on a program-by-program basis and therefore does not suggest
the use of module specific files (Br11).
The examiner responds that Profiler captures the same
information, but uses a different data structure (EA31). The
examiner states that "[d]ata structures are not patentable and
the Examiner holds the functionality equivalent" (EA31).
We agree with the examiner that Profiler captures the same
information as claimed: count information for each procedure
within each module. However, while data structures per se are
non-statutory subject matter, see In re Warmerdam, 33 F.3d 1354,
1361-62, 31 USPQ2d 1754, 1760 (Fed. Cir. 1994), it is not true
that data structure limitations in a claim to a product can be
disregarded, see In re Lowry, 32 F.3d 1579, 1582, 32 USPQ2d 1031,
1034 (Fed. Cir. 1994). The so-called "point of novelty" approach
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