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
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