Appeal 2007-0345
Application 09/812,417
dissent has in effect imported limitations from the specification into the
claims. Such a practice, however, has been repeatedly denounced by the
Court of Appeals for the Federal Circuit. See Phillips v. AWH Corp., 415
F.3d 1303, 1323, 75 USPQ2d 1321, 1334 (Fed. Cir. 2005) (“[A]lthough the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those
embodiments...[C]laims may embrace different subject matter than is
illustrated in the specific embodiments in the specification.”) (citations and
internal quotation marks omitted).
Claim 2 also does not recite statutory subject matter under section
101. Significantly, the claim does not recite any structural limitation to
perform the recited method steps, but merely recites that the indicator is an
“action-descriptive icon.” An “icon” is defined is “[a] sign (as a word or
graphic symbol) whose form suggests its meaning.”18 Without more, merely
broadly reciting an “icon” -- a symbolic sign -- simply does not cure the
deficiencies noted above in connection with claim 1.19
require the steps to be performed on a computer – a machine implementation
which would at least minimally satisfy the requirements of
§ 101. In such a case, the claimed display, menu, and indicator elements
would be in the context of a computer implementation which would, at a
minimum, provide the requisite transformation of data via a computer.
18 Merriam-Webster Online Dictionary, at http://www.m-w.com (last visited
Mar. 25, 2007).
19 The dissent essentially equates the recitation of an icon with the monitor
display screen of claim 5 – a machine implementation that we find statutory.
See Dissent, at 35; see also P. 27 n.22, infra, of this opinion. But merely
displaying an icon – a mere symbol – hardly requires a machine, let alone a
monitor display screen.
21
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