Appeal 2007-1416
Application 09/881,791
record” which was held insufficient under 35 U.S.C. § 101. In re Schrader,
22 F.3d 290, 294 (Fed. Cir. 1994).
We thus find that claims 1 to 7 are rejected under 35 U.S.C. § 101 for
being non-statutory.
Ordinarily, in accordance with the guidance of Comiskey and other
cases, the determination of patentable subject matter is a “predicate” issue.
However, in view of the obviousness issue being the reason the instant case
is before this Board, we will affirm the extant rejection under 35 U.S.C.
§ 103 as well as apply the rejection under 35 U.S.C. § 101.
DECISION
We have sustained the Examiner's prior art rejection with respect to
claims 1 to 20, all the claims on appeal. Moreover, we have entered a new
grounds of rejection under 37 C.F.R. § 41.50(b) for claims 1 to 7 as failing
to recite statutory subject matter under 35 U.S.C. § 101.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (amended effective Sept. 13, 2004, by final rule notice
69 Fed. Reg. 49,960 (Aug. 12, 2004), 1286 Off. Gaz. Pat. Office 21 (Sept. 7,
2004)). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims
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