Ex Parte BORTNIKOV et al - Page 19




          Appeal No. 2001-0653                                                        
          Application 08/820,736                                                      

          where the non-statutory subject matter in a claim (e.g., a                  
          mathematical algorithm per se) is ignored has been consistently             
          rejected, see Diamond v. Diehr, 450 U.S. 175, 188-89, 209 USPQ 1,           
          9 (1981) (claims must be considered as a whole), with the                   
          possible exception of printed matter where it bears no functional           
          relationship to the substrate on which it is printed, see                   
          In re Gulack, 703 F.2d 1381, 1386, 217 USPQ 401, 404 (Fed. Cir.             
          1983).  Further, it was improper for the examiner to dismiss the            
          differences by just stating that the data structures are                    
          functionally equivalent.  The issue is not equivalence, but                 
          obviousness.  See In re Edge, 359 F.2d 896, 898, 149 USPQ 556,              
          557 (CCPA 1966); In re Ruff, 256 F.2d 590, 599, 118 USPQ 340, 348           
          (CCPA 1958) (the equivalence must be disclosed in the prior art             
          or be obvious within the terms of § 103).  Nevertheless, we                 
          conclude that the subject matter of claim 33 would have been                
          obvious to one of ordinary skill in the computer programming art.           
               Initially, we clarify the issue.  Claim 33 recites: "The               
          method of claim 32 further comprising the steps of: creating a              
          profile file for each module counter area; and including within             
          each profile file said count information collected for each                 
          relevant procedure counter area."  A "file" is defined in                   
          computer science as "a collection of bytes stored as an                     
          individual entity."  Thus, claim 33 requires that each module               
          counter area (MCA) is a separate profile data file as shown in              

                                       - 19 -                                         





Page:  Previous  12  13  14  15  16  17  18  19  20  21  22  23  24  25  26  Next 

Last modified: November 3, 2007