Appeal 2007-1319
Application 09/797,017
directed to non-statutory subject matter.2 Nor did the Examiner reject any of
the dependent claims under § 101.
We therefore designate a new ground of rejection (37 C.F.R.
§ 41.50(b)) applied against the remainder of the claims (24-27, 29-33, 36-40,
42-44, and 68-82) under 35 U.S.C. § 101 as being directed to non-statutory
subject matter. The subject matter of instant claim 30 does nothing to impart
functionality to a machine, for the same reasons that claim 28 does nothing.
All of the dependent claims, at best, merely recite differing arrangements of
data.
Additionally, as we have determined that the claimed invention is
directed to a mere arrangement of data (i.e., non-functional descriptive
material), we designate a new ground of rejection of claims 24-33, 35-44,
and 68-82 under 35 U.S.C. § 102(e) as being anticipated by Krishnan. The
claims are anticipated by any computer-readable medium having data stored
thereon. See In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed.
Cir. 2004) (“‘[w]here the printed matter is not functionally related to the
substrate, the printed matter will not distinguish the invention from the prior
art in terms of patentability,’” quoting In re Gulack, 703 F.2d 1381, 1385,
217 USPQ 401, 404 (Fed. Cir. 1983)); In re Lowry, 32 F.3d 1579, 1583, 32
USPQ2d 1031, 1034 (Fed. Cir. 1994) (“Lowry does not claim merely the
information content of a memory. . . . [N]or does he seek to patent the
content of information resident in a database.”). See also MPEP § 2106.01,
p. 2100-17 (“USPTO personnel need not give patentable weight to printed
2 Claim 30 differs from claim 28 only in the “wherein” clause relating to the
“specified event.”
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