Appeal No. 2005-1636
Application No. 09/726,272
Thus, the examiner finds that any registering in the prior art
would meet the claimed invention (answer, pages 15-16).
Appellant responds that the examiner cannot ignore specific
claim language by asserting that it is non-functional descriptive
material. Appellant argues that the claimed agreement is not
non-functional descriptive material in any case. Appellant also
points out that the registering step is claimed to occur before
the receiving, transmitting and recording steps of claim
37 (reply brief, pages 6-8).
We will not sustain the examiner’s rejection of claims
38, 39, 50, 51, 62 and 63 for essentially the reasons argued by
appellant in the briefs. The examiner has not properly used the
non-functional descriptive material analysis. The claimed
invention is not related to printed matter on a substrate. The
type of information registered in the step or means of the
claimed invention cannot be ignored in analysis of these claims
under 35 U.S.C. § 103.
Although appellant argues many of the other dependent
claims separately, since dependent claims 40-46, 52-58 and 64-70
depend from claims 38, 50 and 62 respectively, we also do not
sustain the rejection of these claims for reasons discussed above
with respect to claims 38, 50 and 62.
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