Appeal No. 2006-0688
Application No. 09/838,425
We will not sustain the examiner’s rejection of these claims as being directed to
non-statutory subject matter for essentially the reasons argued by appellants in the
briefs. As noted by appellants, claim 6 is in the form of means plus function. The
functions recited in claim 6 clearly cannot read on software only because the functions
can only be performed in cooperation with the computer hardware. Therefore, the
examiner’s position that the invention of claim 6 requires no hardware is simply
incorrect. With respect to claim 7, the examiner’s position seems to be that the claimed
invention includes within its scope an intangible embodiment. We agree with appellants
that claim 7 is directed to the medium which carries the instructions for performing the
method of claim 1. As noted by appellants, the courts have held that computer readable
media having instructions therein are directed to statutory subject matter.
We now consider the rejection of claims 1-7 under 35 U.S.C. § 103. In rejecting
claims under 35 U.S.C. § 103, it is incumbent upon the examiner to establish a factual
basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the examiner is expected to
make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17,
148 USPQ 459, 467 (1966). The examiner must articulate reasons for the examiner’s
decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). In
particular, the examiner must show that there is a teaching, motivation, or suggestion of
a motivation to combine references relied on as evidence of obviousness. Id. at 1343,
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