Appeal No. 2005-1895
Application 08/861,989
made, based on evidence of record, but must also explain the reasoning by which the
findings are deemed to support the agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344,
61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
With respect to independent claim 25, Appellants argue at pages 6-7 of the brief, that
contrary to the Examiner’s position, because Behr transmits such limited information
(information about a single route) there is no motivation to combine Behr with Hornbuckle.
The Examiner counters this at page 8 of the answer stating, “[b]eyond the motivation to
secure the purchased data for use only by the authorized/paying user, the GPS user may
desire privacy for his selected route details/updates.” We find Appellants’ argument
unpersuasive. As was pointed out by the Examiner in the rejection, Behr also teaches
updating programs at column 22, lines 9-12. Clearly, the transmitted data of Behr is not as
limited as argued by Appellants.
Appellants also argue at page 8 of the brief that Behr does not teach “payment
authorization information.” We find this argument unpersuasive for at least the reasons set
forth by the Examiner in the answer at page 7-8. Additionally we note that as used in claim
25, the “payment authorization information” is merely nonfunctional descriptive material
without any functional relationship to the rest of the claim. 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
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