Appeal 2006-1601
Application 09/828,579
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 Sec. 101,
the claimed invention, as a whole, must be evaluated for what it is.")
quoted with approval in Abele, 684 F.2d at 907, 214 USPQ at 687).
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 on a compact disk. Protection
for this type of work is provided under the copyright law.
Id. For the reasons supra, we conclude that claim 11 is directed to non-statutory
subject matter.
Claims 12-15 each recite a “medium” and “logic” for performing a function.
The “medium” and “logic” of these claims share the same interpretations as
discussed supra for “medium” and “logic” in claim 11. For the reasons supra, we
conclude that claims 12-15 are also directed to non-statutory subject matter.
(b)
Alternative Theory of the § 101 Rejection of claims 11-15
Even if we were to adopt Appellant’s narrower definition of “logic” (Br. 10)
in construing claims 11-15, we reach the same ultimate conclusion. Appellant’s
“medium” includes paper, and a paper with printed logic in the form of computer
instructions is still a paper printed with nonfunctional descriptive material.
Appellant’s Specification supports this because at least three separate steps
(scanning, compiling, and interpreting) are required before the descriptive material
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