Appeal No. 2006-0637
Application 10/122,251
OPINION
We have carefully considered the entire record before us,
and we will reverse the 35 U.S.C. § 101 rejection of claims 6
through 10, and the 35 U.S.C. § 102(b) rejection of claims 1
through 20.
Turning first to the non-statutory subject matter rejection
of claims 6 through 10, the examiner states (answer, page 3)
that:
Claims 6-10 are not limited to tangible
embodiments. In view of Applicant’s disclosure[.]
Specification page 8, line(s) 24-26, the medium is not
limited to tangible embodiments, instead being defined
as including both tangible embodiments (e.g., random
access memory and disk) and intangible embodiments
(e.g., instructions transmitted over a network). As
such, the claim is not limited to statutory subject
matter and is therefore non-statutory.
The examiner’s contentions to the contrary notwithstanding,
the non-statutory subject matter rejection applies to the claimed
invention, and not to the disclosed invention. Stated
differently, the disclosure of a so-called intangible embodiment
(i.e., instructions transmitted over a network) (specification,
page 8, lines 24 through 26) that the examiner considers to be
directed to non-statutory subject matter does not detract from
the tangible embodiment (i.e., random access memory and disk)
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