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 NextLast modified: November 3, 2007