Appeal No. 2006-0979
Application No. 08/818,185
the same reasons argued by the appellant in the brief. Because claims 34-
36 and 39 stand or fall together with representative claim 33, we will also
reverse the examiner’s rejection of these claims.
In summary, we agree with appellant that the examiner has failed to
meet his/her burden of presenting a prima facie case of obviousness.
Therefore, we will not sustain the examiner’s rejection of any of the claims
on appeal. Accordingly, the decision of the examiner rejecting claims 1-9,
11, 15-36 and 39 is reversed.
Lastly, we note that “signal bearing media” is recited in independent
claims 21 and 28. We further note that the support found in the instant
specification broadly encompasses “transmission type media such as digital
and analog communication links,” thus appearing to encompass a signal
encoded with functional descriptive material [instant specification, page 21,
¶1]. We note that under the PTO’s “Interim Guidelines for Examination of
Patent Applications for Patent Subject Matter Eligibility” [OG, 22 Nov. 2005],
a claim reciting a signal encoded with functional descriptive material does
not appear to fall within any of the categories of patentable subject matter
set forth in §101. Accordingly, we leave it to the examiner to consider
whether a rejection under 35 U.S.C. § 101 is appropriate for instant claims
21-32.
15
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007