Appeal 2007-2020
Application 10/028,906
potential malware, “clearly a functional set of acts being performed.”
(Reply Br. 2.) With respect to claims 27-39, Appellants submit that they
clearly claim a data processing apparatus for reviewing files for potential
malware comprising “logging logic…weighting table logic…[etc.].” (Id. 3.)
In a § 101 analysis, the critical question must be answered: “What did
the applicant invent?” Arrhythmia Research Technology, Inc. v. Corazonix
Corp., 958 F.2d 1053, 1059, 22 USPQ2d 1033, 1038 (Fed. Cir. 1992)
(quoting In re Grams, 888 F.2d 835, 839, 12 USPQ2d 1824, 1827 (Fed. Cir.
1989)). A § 101 inquiry is directed to the determination of whether the
claimed subject matter as a whole is a disembodied mathematical concept
representing nothing more than a “law of nature” or an “abstract idea,” or if
the mathematical concept has been reduced to some practical application
rendering it “useful.” AT&T Corp. v. Excel Communications Inc., 172 F.3d
1352, 1357, 50 USPQ2d 1447, 1451 (Fed. Cir. 1999) (citing In re Alappat,
33 F.3d 1526, 1544, 31 USPQ2d 1545, 1557 (Fed. Cir. 1994) (en banc)).
Appellants’ response to the rejection does not demonstrate the
Examiner’s position to be in error. With respect to claims 1 through 13, it is
unclear to what “functional set of acts” Appellants may be referring.
Representative claim 1 recites a “computer program product.” Appellants
have not shown that a computer program listing per se cannot be considered
a computer program product.
Claim 1 goes on to recite that the “product” is “for operating a
computer to review files for potential malware.” A computer program
listing per se can be considered to be “for operating a computer” to perform
specified functions, because after the program is compiled and reduced to
machine-executable form the computer may perform the functions. Further,
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