Appeal 2007-1202
Application 10/847,052
abstract ideas, stored in a computer-readable medium, in a computer, or on an
electromagnetic carrier signal does not make it statutory. See Diamond v. Diehr,
450 U.S. 175, 185-86, 209 USPQ 1, 7-8 (1981) (noting that the claims for an
algorithm in Benson were unpatentable as abstract ideas because “[t]he sole
practical application of the algorithm was in connection with the programming of a
general purpose digital computer.”). Such a result would exalt form over
substance. In re Sarkar, 588 F.2d 1330, 1333, 200 USPQ 132, 137 (CCPA 1978)
(“[E]ach invention must be evaluated as claimed; yet semantogenic considerations
preclude a determination based solely on words appearing in the claims. In the
final analysis under § 101, the claimed invention, as a whole, must be evaluated for
what it is.”) (quoted with approval in In re Abele, 684 F.2d 902, 907, 214 USPQ
682, 687 (CCPA 1982)). See also In re Johnson, 589 F.2d 1070, 1077, 200 USPQ
199, 206 (CCPA 1978) (“form of the claim is often an exercise in drafting”).
Thus, nonstatutory music is not a computer component and it does not become
statutory by merely recording it on a compact disk. Protection for this type of
work is provided under copyright law.
When presented with a claim comprising descriptive material, an Examiner
must determine whether the claimed nonfunctional descriptive material should be
given patentable weight. The Patent and Trademark Office (PTO) must consider
all claim limitations when determining patentability of an invention over the prior
art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983). The
PTO may not disregard claim limitations comprised of printed matter. See
Gulack, 703 F.2d at 1384, 217 USPQ at 403; see also Diamond v. Diehr, 450 U.S.
at 191, 209 USPQ at 10. However, the Examiner need not give patentable weight
to descriptive material absent a new and unobvious functional relationship between
the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84,
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