Appeal No. 2006-2194 Page 7
Application No. 09/866,925
computational method of identifying possible connectrons, which is entirely
separate from the physical experimentation process. First, the specification does
not appear to describe a process of computationally adding exogenous stimuli
and then looking at the level of connectron control. Second, such a claim would
not appear to be enabled as the specification does not teach an algorithm which
could perform such a calculation, nor does it teach what type of stimuli may be
applied, or the correlation between any such stimuli and connectron control.
We note that similar issues appear to exist for each of the remaining
independent claims.
Claims 28-37 all depend from claim 20, and state “[u]sing the method as
defined in claim 20.” A “use” or “using” claim, however, is not statutory subject
matter, and the claims should be rejected under 35 U.S.C. § 101. See MPEP
2173.05(q). In addition, the examiner may wish to also explore a rejection under
35 U.S.C. § 112, second paragraph, as it is unclear what method steps are being
added by these dependent claims to the method set forth in claim 20.
Again, these examples are not exhaustive, and the examiner should
undertake a more thorough analysis of all the claims as to whether they meet the
statutory requirements of § 101, § 102, § 103 and § 112.
FUTURE PROCEEDINGS
The case is being returned to the jurisdiction of the examiner for further
action not inconsistent with this opinion.
enablement requirement of that paragraph). We only discuss them together here for the sake of
expediency.
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