Ex Parte Burnhouse et al - Page 22

                Appeal 2007-0345                                                                             
                Application 09/812,417                                                                       
                                                                                                            
                      Regarding claim 3, the claimed return and help features merely recite                  
                desired results intended to be achieved by the method.  However, the claim                   
                fails to recite any structure, physical step, or machine to perform the claimed              
                method steps.20  Likewise, claims 6-8 fail to recite any structure, physical                 
                step, or machine to perform the claimed method steps.21                                      
                      In short, claims 1-4 and 6-8 are so broad that they are directed to the                
                abstract idea itself, rather than a practical implementation of the concept.  In             
                addition, the claims are “so abstract and sweeping” that they would “wholly                  
                pre-empt” all applications of the notion of visually representing a future                   

                                                                                                            
                20 Although the dissent states that the return and help features in                          
                combination with navigating “seems…to be [a] statutory computer-                             
                implemented process,” Dissent, at 35, merely allowing a user to navigate                     
                hardly requires a machine.  Indeed, a user can “navigate” merely by                          
                following instructions or a perusing a list of items.  See, e.g., P. 27-28, infra,           
                of this opinion (citing one example of a implementing the recited steps of                   
                claim 1 without a machine).  In short, no machine is required to navigate to                 
                either a “preference menu” or “dependent help categories” – mere                             
                descriptive material that likewise does not require a machine, much less a                   
                computer, to implement or display.                                                           
                21  The dissent finds the recited recording, notifying, and display prevention               
                steps as computer-implemented process steps.  Dissent, at 36.  But no                        
                machine, let alone a computer, is required to implement these steps.  Each of                
                these steps could be implemented without a machine in the context of the                     
                example noted on P. 27-28, infra, of this opinion (citing one example of a                   
                implementing the recited steps of claim 1 without a machine).  As we note in                 
                that example, the student can select a number of specified options (“future                  
                program actions”) on a printed form including taking the course for credit                   
                which would result in “recording” the future program in the student’s                        
                academic record.  Additionally, notifying the user of the display schedule of                
                the selected future program could be implemented merely by the university                    
                indicating course availability.  Moreover, preventing the display of a                       
                selected future program (e.g., selected course) could be implemented by                      
                merely not including the selected course in a printed list.                                  
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