Appeal No. 2006-1595
Application No. 09/798,484
carrier wave signals are non-statutory, and (2) nothing in the specification
precludes claims 22 and 23 from encompassing such carrier waves, the claims
must therefore be non-statutory [answer, page 12].
Appellants respond that computer software constitutes patentable subject
matter, and the examiner’s conclusion that the claims recite “form over
substance” is an improper basis for rejecting claims under § 101 [brief, page 4;
reply brief, page 5]. Appellants further note that the preambles of independent
claims 1 and 7 recite practical applications of the claimed subject matter [brief,
page 5]. Regarding claims 22 and 23, appellants argue that a computer-
readable medium constitutes statutory subject matter and cite numerous patents
claiming such a medium [brief, pages 6 and 7]. Appellants emphasize that
merely because a claim term is not explicitly defined in the specification does not
permit the examiner to adopt any definition that the examiner chooses. Rather,
claim terms must be supported by -- and consistent with -- the specification [brief,
page 8]. In this regard, appellants note that the specification does not support a
carrier wave embodiment [reply brief, page 5].
We will not sustain the examiner’s rejection of claims 1-23 under 35
U.S.C. § 101. The express language of 35 U.S.C. § 101 defines four categories
of patentable subject matter: (1) processes; (2) machines; (3) manufactures; and
(4) compositions of matter. The statute includes essentially “anything under the
sun made by man.” Diamond v. Chakrabarty, 447 U.S. 303, 308-09, 206 USPQ
193, 197 (1980). However, certain judicially-recognized exceptions -- namely
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007