Appeal No. 2006-2354 Page 14
Application No. 09/877,157
data elements. Unlike in Lowry, the data in the present case does not impose any
functional requirements on the claimed method or otherwise depend functionally
on the information content of the data elements. Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise been
obvious. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir.
1983) (when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention form the prior art in terms of
patentability). See also Ex parte Curry, [cite], aff’d. In re Curry, [Westlaw cite]
(Fed. Cir. Mar. 10, 2006) (treating data as nonfunctional descriptive material).
We find this case similar to In re Bernhart, 417 F.2d 1395, 163 USPQ 611
(CCPA 1969) in which the court found a claimed method obvious in view of the
prior art where the only difference was the addition of a step of applying the
computer output to a plotting apparatus. The court found that any person would
know how to take the computer output and use it to control a drafting machine. Id.
In this case, the only difference in the claimed steps and the prior art is the step of
generating a privacy policy. This step is described in the specification as
generation of a list of all of the selected data elements in the policy. Specification,
page 15, lines 28-30. As demonstrated in the teachings of both Moriconi and
Abraham, a person skilled in the art at the time of the invention would know how
to take the policy groups and the selected data elements therein and generate a list
of these data elements. We find that the fact that the data elements in the list relate
to privacy, rather than security, is not a patentable distinction, because the content
of the data elements does not functionally relate to how they are displayed or
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