Appeal 2007-1164
Application 10/170,131
“imposing a change in the processing steps performed by the
computer.”
(Br. 7-8.)
Again, we think the Examiner’s view of the case law is the better one:
The structural coordinates as recited in claim 24 are analogous
to the instructions in In re Ngai. The Ngai Court held that “the
printed matter in no way depends on the kit, and the kit does
not depend on the printed matter.” Similarly, the recited
structural coordinates are not functionally related to the
computer because the computer functions the same way
regardless of whether the machine readable medium of the
computer comprises the structural coordinates of Table 1 or not.
(Answer 11.)
Finally, Appellants argue that “there are strong public policy reasons
for reversing the obviousness rejection” (Br. 8). Specifically, Appellants
argue that the rejection “would prevent the Appellants from realizing the full
benefit of the exclusionary rights” to their invention (id.) and “the present
rejection would also place in question the validity of any patents . . . granted
by the Patent Office before it published its present policy” (id. at 9).
Neither of Appellants’ policy-based rationales compel reversing the
rejection. As to the first point, the limits of an inventor’s patent rights are
determined by the patent laws, as interpreted by the courts. The USPTO’s
role is to administer those laws, as interpreted, as accurately as it can. As we
read the court’s interpretation of the law, Appellants’ “exclusionary rights”
to their invention do not extend to the computer defined by claim 24.
As to the second point, the USPTO’s mission to accurately apply the
patent laws requires it to review and adjust its examination standards now
and then. Sometimes, that will result in rejections of subject matter that
6
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013