Appeal 2007-1154
Application 09/367,950
Statutory subject matter:
The Examiner should also take this opportunity to clearly explain
whether the claim constitutes a statutory process. Claim 13 requires only
one positive step – instruct a patient to inhale a composition on demand.
According to Appellant what happens after the patient is instructed to inhale
the composition is not an element of the claim (Oral Hearing Transcript 11:
4-8). According to Appellant this step can be performed by any number of
routes, including printed matter (e.g., a product insert accompanying an
inhaler) (Oral Hearing Transcript 2: 21-24). Stated differently, this claim
appears to be directed to the manipulation of an abstract idea (e.g., the
communication of a concept) without any requirement that a practical
application actually be associated with this abstract idea. In this regard, we
note that “[a] process is . . . an act, or a series of acts, performed upon the
subject matter to be transformed and reduced to a different state or thing.”
In re Schrader, 22 F.3d 290, 293-94, 30 USPQ2d 1455, 1459 (Fed. Cir.
1994), citation omitted. (See also State Street Bank & Trust Co. v.
Signature Financial Group Inc., 149 F3d 1368, 1373, 47 USPQ2d 1596,
1601 (Fed. Cir. 1998) holding that a claimed system was statutory subject
matter because it produced “a useful, concrete and tangible result.”)
Accordingly, we remand the application to the Examiner to clearly
explain what subject matter the claimed process is transforming or reducing
into a different state or thing.
CONCLUSION
In summary, we reverse the rejection under enablement provision of
35 U.S.C. § 112, first paragraph and remand the application for further
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