Appeal No. 2006-1569 Page 7
Application No. 10/159,997
We have already found, however, that Honkura does not disclose a method
meeting all the limitations of claim 1. The examiner has pointed to nothing in Sun that
would remedy the deficiencies discussed above. We reverse the rejection under 35
U.S.C. § 103 because the examiner has not adequately explained how the combined
references teach or would have suggested a method meeting all the limitations of the
instant claims.
5. Statutory subject matter
The examiner rejected claims 1-4 under 35 U.S.C. § 101 “because the claimed
invention is directed to non-statutory algorithm type subject matter.” Examiner’s
Answer, page 3. The examiner reasoned that the
claims are directed to a computer method comprising processes
performed within a computer system without resulting in any physical
transformations outside of said computer. A method wherein the
transformation of signals or data inside a computer without a means for
transforming said data to produce a useful, concrete, and tangible result is
regarded as being non-statutory. (MPEP § 2106 (IV)(B)(2)(b)).
Id.
We will reverse this rejection. The examiner appears to rely on a bright-line rule
that a computer-based method must result in a physical transformation outside the
computer in order to be considered to produce a useful, concrete, and tangible result
and thereby satisfy 35 U.S.C. § 101. The examiner cites the Manual of Patent
Examining Procedure § 2106(IV)(B)(2)(b) as the source of this perceived rule. That
section of the MPEP does not support the rule the examiner appears to rely on. It
states that “[t]o be statutory, a claimed computer-related process must either: (A) result
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