Appeal No. 2003-1654 Page 7
Application No. 09/439,310
and does not assess whether the claim as a whole, including the subject matter recited
in claim 1 from which claim 4 depends, is directed to patentable subject matter. We
note that the examiner has not rejected claim 1, from which claim 4 depends, as being
directed to non-statutory subject matter, thereby seemingly indicating that the examiner
was of the opinion that claim 1 is directed to patentable subject matter under 35 U.S.C.
§ 101. This being the case, it is not apparent to us how the further limitation in
dependent claim 4 to the first readiness review step recited in claim 1 can render the
seemingly otherwise patentable subject matter of claim 1 non-statutory2 and the
examiner’s explanation sheds no light on this apparent inconsistency. We thus cannot
sustain the examiner’s rejection of claim 4 under 35 U.S.C. § 101 on the basis of the
explanation offered by the examiner.
As discussed above, the examiner’s rationale in rejecting dependent claim 4 and
not claim 1 from which claim 4 depends under 35 U.S.C. § 101 as being directed to
non-statutory subject matter is not clear to us. We remand the application to the
examiner under 37 CFR § 1.196(a) to consider and evaluate the claimed subject matter
as a whole, including the subject matter of independent claim 1, as well as the subject
matter of dependent claims 2 and 4, to determine if the claims are directed to
2 We note that appellants’ specification discloses (page 5) that the first assurance review and all
subsequent reviews are defined to mean “conducting a meeting to inspect, view, examine, or the like,
written materials.” Thus, all of the review performing steps recited in claim 1 comprise such meetings.
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