Appeal No. 2006-1523
Application No. 09/793,687
through 19 and 21 through 24 under 35 U.S.C. § 103 (a). However, we will not
sustain the examiner’s rejection of claims 1, through 6, 8, 9, 11 and 14 through 26 under
35 U.S.C. § 101, nor will we sustain the examiner’s rejection of claims 4, 11, 20, 25 and
26 under 35 U.S.C. § 103.
Rejection of claims 1, through 6, 8, 9, 11 and 14 through 26
under 35 U.S.C. § 101.
Appellant argues, on page 15 of the brief, that each of the independent claims
recites steps performed on a computer, an apparatus, thus the claims are drawn to
statutory subject matter. On pages 1 and 2 of the reply brief, appellant argues that the
examiner’s rejection is improperly based upon a “technological arts” standard.
The examiner’s rejection, on pages 6 through 9 of the answer, applies a
technological arts standard. Further, on pages 8 and 9 of the answer, the examiner finds
that the claims are drawn to subject matter which “produces a useful, concrete and
tangible result” nonetheless the examiner maintains the rejection as the claims are not
within the technological arts. On page 18 of the answer, the examiner states that the
claims recite the limitation “at a computer” not “on a computer” as such the claims are
broad and include the situation where a person sitting at a computer manually performs
the steps, thus the examiner considers the claims to not be within the technological arts.
We disagree with the examiner’s rationale. As stated in our recent precedential
decision in Ex parte Lungren, 76 USPQ2d 1385 (Bd. Pat. App. & Int. 2005), “there is
currently no judicially recognized separate ‘technological arts’ test to determine patent
eligible subject matter under §101” Lungren at 76 USPQ2d 1388. The appropriate
analysis for a rejection under §101 can be found in the Interim Guidelines for
Examination of Patent Applications for Patent Subject Matter Eligibility, 1300 Off. Gaz.
Patent and Trademark Off. (O.G.) 142, 152 (Nov. 22, 2005). Thus, as the examiner’s
basis for rejecting the claims under §101 is based upon a “technological arts” test which
is not judicially recognized, we will not sustain the examiner’s rejection of claims 1
through 6, 8, 9, 11 and 14 through 26 under 35 U.S.C. § 101.
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