Appeal No. 2006-3121
Application No. 10/165,083
For at least the above reasons, we will sustain the examiner’s rejection of
independent claims 1, 17, 23-25, and 29-31. Since appellants have not
separately argued the patentability of dependent claims 2, 4, 6-8, 10, 18, and 20-
22, these claims fall with independent claims 1 and 17. See In re Nielson, 816
F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987). See also 37 CFR
§ 41.37(c)(vii).
We will also sustain the examiner’s rejection of claims 3 and 5.2 The
scope and breadth of the term “window manager” does not preclude the
windows-based functionality of Word to automatically request and extract “source
information” (footnotes and associated text) responsive to copy and paste
operations as claimed.
Regarding claims 9, 19, and 32-34,3 we find that the limitation calling for
“automatically setting up a footnote” is reasonably suggested by Word’s ability to
automatically initiate, assign, locate, and organize footnotes. In short, the scope
and breadth of the claim language does not preclude such functionality.
Therefore, we will sustain the examiner’s rejection of claims 9, 19, and 32-34.
We next consider the examiner’s rejection of claim 31 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. The examiner argues
that the scope and breadth of the preamble of claim 31, particularly when read in
light of the specification, encompasses non-statutory subject matter in the form of
transmission-type computer readable media. Specifically, the preamble of claim
2 Appellants indicate that claim 3 exemplifies the claims in this group [brief, page 15].
3 According to appellants, claim 9 exemplifies the claims in this group [id.].
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