BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
Paper No. 12
MAILED
Dec 22 1997
GROUP 2500
Frank Bonczyk
For Appellant
EXAMINER'S ANSWER
This is in response to appellant's brief on appeal filed November 1. 1997
A statement identifying the real party in interest is contained in the brief.
A statement identifying the related appeals and interferences which will directly affect or be directly affected by or have a bearing on the decision in the pending appeal is contained in the brief.
The statement of the status of the claims contained in the brief is correct.
The appellant's statement of the status of amendments after final rejection contained in the brief is correct.
The summary of invention contained in the brief is correct.
The summary of the invention contained in the brief is correct.
The appellant's statement of the issues in the brief is correct.
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The rejection of claims 1, 9, 11, and 14 stand or fall together because appellant's brief does not include a statement that this grouping of claims does not stand or fall together and reasons in support thereof. See 37 CFR 1.192 (c) (7).
The copy of the appealed claims contained in the Appendix to the brief is correct.
No prior art is relied upon by the examiner in the rejection of the claims under appeal. No new prior art has been applied in this examiner's answer.
Claims 1, 9, 11, 12, and 14 stand rejected under 35 U.S.C. 101. This rejection is set forth in prior Office action, Paper No. 2.
This examiner's answer does not contain any new ground of rejection.
The Examiner was mistaken in understanding this invention as a model of naturally occurring article; however, the invention is still claimed as a conceptual model completely divorced from any physical structure. According to the brief, the claims are intended to cover such disparate articles as subatomic particles, a "programmable primary life form, a programmable primary memory system, or a programmable DNA structure, or a programmable biotic computer." It is not clear what these things have in common that they could be claimed in a single invention. The nature of the invention was made even more obscure by Appellant's deliberate avoidance, described on page 8 of the brief, of conventional names of elements and structures so as not to limit the invention. (The claims were not rejected under 35 U.S.C. 112 as not being enabling to a person having ordinary skill in the art only because the non statutory subject matter made the question of enablement irrelevant.) In fact,
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Appellant attempted to claim in claim 19 (which was obje3ted to because of dependency problems) any symbolic representation of the invention. A structure which is nothing more than a way of describing the manipulation of abstract ideas is not statutory subject matter under 35 U.S.C. 101. See Warmerdam, 31 USPQ2d at 1760.
As the supreme Court held in Diamond v. Chakrabarty, cited by Appellant on page 5 of the brief, :…the production of articles for use from raw materials prepared by giving to these materials new forms, qualities, properties or combinations whether by hand, labor, or machinery is a manufacture under Section 101." There are no raw materials given new forms, qualities, properties, or combinations by hand, labor, or machinery to produce articles claimed in the instant application. Instead, the claims are directed to deliberately abstract ideas, divorced from any physical structure. Diamond v. Chakrabarty explicitly reaffirmed that abstract ideas (along with laws of nature and physical phenomena) cannot be patentable subject matter.
For the above reasons, it is believed that the rejections should be sustained.
Respectfully submitted,
Jb
December 11, 1997
Frank Bonczyk
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