Appeal 2007-1250
Application 10/458,537
With regard to the dissent, we point out that the section of the MPEP
and the cases cited all involve devices wherein the issue was whether the
descriptive material had a functional relationship with the substrate upon
which it was placed. We agree that the structure of a data file does not
change with the type of data placed therein. However, we are not convinced
that the same analysis applies to method steps. Independent claim 1, for
example, recites a step of generating a data file with particular data therein.
The step of generating a data file with particular data is basically the step of
generating the particular data, and we find that such a step could change
depending on the type of data being generated. Accordingly, we disagree
with the dissent that the type of data recited in the claims is merely non-
functional descriptive material that cannot be given patentable weight.
ORDER
The decision of the Examiner rejecting claims 1 through 27 under
35 U.S.C. § 102(e) is reversed.
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