Ex Parte Tieu - Page 8

               Appeal 2007-3939                                                                            
               Application 10/448,725                                                                      

               analysis above, we sustain the 35 U.S.C. § 102 rejection of claims 1-6 and 8-               
               19 as anticipated by Calfee. 2                                                              

                                               DECISION                                                    
                      The decision of the Examiner rejecting claims 1-6 and 8-19 under                     
               35 U.S.C. § 102 is affirmed.                                                                
                      No time period for taking any subsequent action in connection with                   
               this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).                              






                                                                                                          
               2    We observe that claims 1 and 9 recite method steps and functions to                    
               be performed by an apparatus, describing mainly a concept without                           
               indicating how the steps are implemented.  These claims are merely drawn                    
               to “disembodied abstract ideas,” which do not have any “real world effect”                  
               until they are implemented.  The absence of any transformation of physical                  
               subject matter according to the definition of a process under 35 U.S.C.                     
               § 101, places these claims on the other side of the line defining statutory                 
               subject matter.  A case involving this issue is presently on appeal to the                  
               Federal Circuit: In re Bilski, No. 2007-1130 (to be argued Oct. 1, 2007).                   
               Additionally, in performing the method steps of claim 1, there is no                        
               requirement that a computer be used.  Therefore, the claimed subject matter                 
               may be performed using only human intelligence, which has recently been                     
               held to be non-statutory.  In re Comiskey, No. 2006-1286, Slip Op. at 21                    
               (Fed. Cir. Sep. 20, 2007).  We do not need to reach the issue of whether                    
               claims 1 and 9 encompass non-statutory subject matter since we affirm the                   
               Examiner’s decision rejecting these claims.  However, we encourage the                      
               Examiner to consider patentability of the allowed claims 7 and 20, which are                
               dependent upon claims 1 and 9, under Section 101 in the event the                           
               prosecution of these claims is reopened.                                                    
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