Appeal No. 2003-1654 Page 6
Application No. 09/439,310
The rejection under 35 U.S.C. § 101
The examiner’s basis for rejecting claim 4, which depends from claim 1, as being
directed to non-statutory subject matter, as stated on page 3 of the answer, is that
[d]ependent claim 4 cites limitations regarding a readiness
review that is performed by conducting a meeting. Although
the claimed subject matter may at times produce a useful
and tangible result, it does not produce a concrete result.
That is, the subject matter contained within the claims
merely relates an intention to produce result i.e. tangible
written reports or to verify the existence of said reports, but
the results are not concrete because the outcome of the
meeting is not predictable or repeatable. That is, the results
of each meeting would most likely change from meeting to
meeting. As affirmed above, the subject matter contained
within the claims merely relates a thought process and not a
physical device such as a computer or computer software
that would produce or organize such written reports or
establish whether the reports exist at all. Consequently, the
claim language as written does not meet the requirements
for statutory subject matter.
It is well established that, in assessing whether a claim is directed to patentable
subject matter under 35 U.S.C. § 101, the dispositive issue is whether the claim as a
whole is directed to patentable subject matter; it is irrelevant that a claim may contain,
as part of the whole, subject matter which would not be patentable by itself. See, e.g.,
State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1374
n. 6, 47 USPQ2d 1596, 1601 n. 6 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 851 (1999).
In this case, the examiner’s rejection focuses merely on one step of the claimed method
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