Appeal No. 2005-0509 Page 7
Application No. 09/449,237
With respect to independent claim 81, Appellant argues at pages 6-11 of
the brief, that the Examiner has erred in finding 1) the type of data in the
database is nonfunctional descriptive material, 2) the physical location (a fitness
center) where part of the method is performed is merely a field of use limitation,
and 3) the sponsorship status of the portal is nonfunctional descriptive material.
We note that Appellant also believes that the Examiner has read these limitations
out of the claims and may believe that these limitations are merely business
method limitations. On these two points we find nothing in the record before us
to support Appellant’s business method contention and rather than reading the
limitations out of the claims, we find that the Examiner has addressed each of the
three limitations listed above.
As to the type of data in the database, we find the Examiner’s position to
be the better. We find that the “wellness-related” data in the databases and
communicated on the distributed network does not functionally change either the
data storage system or communication system used in the method of claim 81.
Nonfunctional descriptive material cannot render nonobvious an invention that
would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339, 70
USPQ2d 1862, 1864 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385,
217 USPQ 401, 404 (Fed. Cir. 1983) (when descriptive material is not
functionally related to the substrate, the descriptive material will not distinguish
the invention from the prior art in terms of patentability).
Common situations involving nonfunctional descriptive material are:
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