Appeal No. 2006-2354 Page 10
Application No. 09/877,157
words, the question before us is whether patentable weight should be accorded to
the claim limitations that recite a “privacy” policy.
Functional versus non-functional descriptive material
Descriptive material can be characterized as either “functional descriptive
material” or “nonfunctional descriptive material.” Exemplary “functional
descriptive material” consists of data structures and computer programs, which
impart functionality when employed as a computer component. “Nonfunctional
descriptive material” includes but is not limited to music, literary works and a
compilation or mere arrangement of data. If we find that the underlying privacy
data elements used to generate the claimed privacy policy are nonfunctional
descriptive material, then the question before us is whether a claim that differs
from the prior art solely as to non-functional descriptive material is unobvious
under 35 U.S.C. § 103. Although no issue under 35 U.S.C. § 101 is before this
Board, the decisions of our reviewing courts on this issue do provide useful
guidance with respect to (a) distinctions between “functional” and “non functional”
descriptive material, and (b) how the distinctions impact the courts’ treatment of
each type of descriptive material.
Functional descriptive material
When functional descriptive material is recorded on some computer-readable
medium, it becomes structurally and functionally interrelated to the medium and
will be statutory in most cases since use of technology permits the function of the
descriptive material to be realized. Compare In re Lowry, 32 F.3d 1579, 1583-84,
32 USPQ2d 1031, 1035 (Fed. Cir. 1994) (claim to data structure stored on a
computer readable medium that increases computer efficiency held statutory) with
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