Appeal Number: 2007-0133
Application Number: 10/223,466
subject matter, because [it is] non-statutory…” In re Miller, 418 F.2d 1392, 1396,
164 USPQ 46, 49 (CCPA. 1969).The chart is no more than an abstract
representation of the ideas behind the drawing contents. This is no more directed
toward a concrete, tangible and useful result than was the gray scale in Abele. See
In re Abele, 684 F.2d 902, 909, 214 USPQ 682, 685 (CCPA 1982) (where the
claim presented “no more than the calculation of a number and display of the
result, albeit in a particular format.”)
Appellant’s Arguments
The Appellant argues that predicting sleep patterns is a useful, concrete and
tangible result. We need not reach that question because, as explained supra, the
“useful, concrete, and tangible result” test does not apply to the present claims.
Further, even if one were to apply the “useful, concrete, and tangible result” test,
the claims would not be patentable because the claimed method does no more than
instruct one how to draw a chart. The prediction of sleep and activity is recited in
the preamble and is merely a field of use limitation. Moreover, the claims do not
recite how to achieve such a use from the steps recited. Thus, whether predicting
sleep patterns is useful is moot because it is not part of the actual claim scope. See
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d
1161, 1166 (Fed. Cir. 1999) (citations omitted) (“If … the body of the claim fully
and intrinsically sets forth the complete invention, including all of its limitations,
and the preamble offers no distinct definition of any of the claimed invention's
limitations, but rather merely states, for example, the purpose or intended use of
the invention, then the preamble is of no significance to claim construction because
it cannot be said to constitute or explain a claim limitation.”).
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