Appeal No. 2006-1187
Application No. 10/056,832
“causing the creation of a certificate of ownership associating the owner with the
replica” and “causing the creation of a replica” both of which are steps that result
in the physical transformation of an item. As such, the claim is not drawn to an
abstraction and does not fall within one of the aforementioned § 101 judicial
exceptions. Accordingly, we will not sustain the examiner’s rejection of claim 52
under 35 U.S.C. § 101.
Rejection of claim 51 under 35 U.S.C. §112, first paragraph, as failing
to comply with the written description requirement.
Appellant argues, on pages 11 and 12 of the brief, that the step of
“offering to the purchaser at the time of the sale of the product an opportunity to
receive a replica of the product” is supported by several passages in the
specification. Specifically, appellant points to figures 2, 4 and the passages on
page 3, lines 22 through 30 and page 7, lines 13 through 16.
The examiner states, on page 8 of the answer, that the limitation is not
inherent to the disclosure in the appellant’s specification. Further, the examiner
states:
The citation describing figure 4 at best indicates that the offering is made
after the product is purchased and does not support the making of the
offer at the time of purchase. Step 410 is the purchasing of the product.
Step 420 is offering the purchaser an opportunity to buy a replica that
portrays the purchased (past tense) product 4. If you are offering a replica
for purchase at the same time as purchasing the product, how can the
product be referred to as being “purchased”, which is past tense?
We disagree with the examiner’s rationale. We note that appellant’s
specification, on page 3, line 29 through page 4, line 2, states:
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