Appeal 2007-1416
Application 09/881,791
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 20.
OTHER ISSUES
New Grounds of Rejection Under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 101 of claims 1 to 7. The basis for each is set forth in detail
below.
35 U.S.C. § 101 provides:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
Rejection of Claims 1-7 Under 35 U.S.C. § 101
Claims 1 to 7 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter. We note that claims 1
to 7, given their broadest reasonable interpretation, do not require computer
or machine implementation. The issue is whether these claims, which cover
a method of indicating testable assertions in a computer program’s
specification, involve a transformation or related process involving the other
three statutory categories (machine, manufacture, or composition of
matter),4 and recite patentable subject matter under 35 U.S.C. § 101. Giving
4 “A machine is a concrete thing, consisting of parts, or of certain devices
and combination of devices.” Burr v. Duryee, 68 U.S. 531, 570 (1863). The
term “manufacture” refers to “‘the production of articles for use from raw or
prepared materials by giving to these materials new forms, qualities,
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