Appeal No. 2006-2354 Page 11
Application No. 09/877,157
In re Warmerdam, 33 F.3d 1354, 1361-62, 31 USPQ2d 1754, 1759-60 (Fed. Cir.
1994) (claim to computer having a specific data structure stored in memory held
statutory product-by-process claim but claim to a data structure that referred to
ideas reflected in nonstatutory process rather than referring to a physical
arrangement of the contents of a memory held nonstatutory).
Non-functional descriptive material
When nonfunctional descriptive material is recorded on a computer-readable
medium, in a computer or on an electromagnetic carrier signal, it is not statutory
because no requisite functionality is present to satisfy the practical application
requirement. Merely claiming nonfunctional descriptive material, i.e., abstract
ideas, stored in a computer-readable medium, in a computer, on an electromagnetic
carrier signal does not make it statutory. See Diamond v. Diehr, 450 U.S. 175,
185-86, 209 USPQ 1, 7-8 (1981) (noting that the claims for an algorithm in Benson
were unpatentable as abstract ideas because “[t]he sole practical application of the
algorithm was in connection with the programming of a general purpose
computer.”) Such a result would exalt form over substance. In re Sarkar, 588
F.2d 1330, 1333, 200 USPQ 132, 137 (CCPA 1978) (“[E]ach invention must be
evaluated as claimed; yet semantogenic considerations preclude a determination
based solely on words appearing in the claims. In the final analysis under 101, the
claimed invention, as a whole, must be evaluated for what it is.”) (quoted with
approval in In re Abele, 684 F.2d 902, 907, 214 USPQ 682, 687 (CCPA 1982)).
See also In re Johnson, 589 F.2d 1070, 1077, 200 USPQ 199, 206 (CCPA 1978)
(“form of the claim is often an exercise in drafting”). Thus, nonstatutory music is
not a computer component, and it does not become statutory by merely recording it
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