Appeal 2009-3941
Application 10/334,370
CONCLUSION
On the record before us, Appellants have failed to show that the
Examiner has erred in rejecting claims 1-4, 20, and 22-24. However, we
found error in the Examiner’s rejection of claims 5-8 and 25-28. In view of
our analysis above, we sustain the 35 U.S.C. § 102 rejection of claims 1, 3,
4, 20, 23, and 24 over Brown and the 35 U.S.C. § 103 rejection of claims 2
and 22 over Brown and Yanagihara. However, we do not sustain the
35 U.S.C. § 102 rejection of claims 5-8 and 25-28.
NEW GROUND OF REJECTION
We enter the following new rejection of claims 1, 2, and 5-8 under the
provisions of 37 CFR § 41.50 (b).
Claims 1, 2, and 5-8 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
In performing the method steps of claim 1, there is no requirement
that a computer be used. The only recitation of “computer” or “host” relates
to the source or destination of data transmission. For example, a document
is received from a host and a subset of said categories is returned to the host.
The claim is 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 this claim 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
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