Appeal No. 2006-1595
Application No. 09/798,484
realized” [id.; see also MPEP § 2106(IV)(B)(1)]. Therefore, the functional
descriptive material recited in conjunction with the computer-readable medium
claimed in claims 22 and 23 constitutes statutory subject matter. We disagree
with the examiner that merely because the scope and breadth of the term
“computer-readable medium” could possibly encompass a carrier wave and that
the specification ostensibly did not preclude such a possibility, claims 22 and 23
are therefore non-statutory. As the appellants indicate, the specification hardly
supports such an expansive interpretation. In short, the examiner’s analysis is
merely speculative and is not consistent with the specification. Accordingly, we
will not sustain the examiner’s rejection of claims 22 and 23 under 35 U.S.C.
§ 101.
Since we do not sustain the examiner's rejection of independent claims 1,
7, and 12 under 35 U.S.C. § 101, we likewise do not sustain the examiner's
rejection of dependent claims 2-6, 8-11, and 13-20.
We next consider the examiner’s rejection of claims 1-6, 12-20, and 22
under 35 U.S.C. § 103(a) as being unpatentable over Burgoon in view of Parson.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See In
re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). The
examiner must articulate reasons for the examiner’s decision. In re Lee, 277
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