Appeal No. 2006-1187
Application No. 10/056,832
18, 20, 22, 25, 29 and 30 under 35 U.S.C. § 103. Additionally, we enter a new
ground of rejection against claim 33 under 35 U.S.C. § 102.
Rejection of claims 1, 3 through 20, 22 through 32 and 49 through 52
under 35 U.S.C. 101
Initially we note that appellant’s arguments on pages 7 through 11 of the
Brief, present separate arguments for four groups of claims. Accordingly, we will
group the claims as argued by appellant. Group A consists of claims 1, 3
through 7, 9 through 12, 14 through 20, 22, 24 through 32, 49 and 51, with claim
1 as the representative claim. Group B, consists of claims 8 and 13, with claim 8
as the representative claim. Group C consists of claim 23 and Group D consists
of claim 52.
Group A (rejection under 35 U.S.C. 101).
Appellant argues that the examiner, in applying a two part test of whether
the invention is in the technological arts and whether the invention produces
useful, concrete and tangible results, misapplied the law regarding 35 U.S.C.
§ 101. See brief pages 7 and 8. Appellant asserts that the proper test as set
forth in State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F3d
1368 (Fed. Cir. 1998) is whether the claimed invention is useful and produces
concrete and tangible results. Appellant argues:
[T]he methods of each of independent claims 1 and 51 are useful in that
they provide a service that many purchasers may find valuable. [Footnote
omitted.] The claimed methods also produce concrete and tangible
results as they result in the transfer of a replica of a purchased product to
the purchaser.
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