Ex parte Halligan

In setting up the obviousness analysis, the BPAI in Halligan wrote:

The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

When presented with a claim including nonfunctional descriptive
material, an Examiner must determine whether such material should be
given patentable weight. The Patent and Trademark Office (PTO) must
consider all claim limitations when determining patentability of an invention
over the prior art. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).

The BPAI also cited In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994), for the proposition:
The burden of establishing the absence of a novel,
nonobvious functional relationship rests with the PTO.

The appellants did win on some points:

Based on this new ground of
rejection, we reverse pro forma the Examiner’s rejections of: claims 1-70
and 121 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter; claims 8-31, 49-56, and 69 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter; claims 1, 3-35, 37-39, 43, 44, 47-57, 60-63,
67-70, and 121 under 35 U.S.C. § 102(e) as anticipated by Donner; claims 1-
41, 43, 44, 47-57, 60-63, 67-70, and 121 under 35 U.S.C. § 102(e) as
anticipated by Eder; claims 42, 45, 46, 58, 59, and 64-66 under 35 U.S.C.
§ 103(a) as unpatentable over Donner, Eder, and Haber; and claims 2, 40,
and 41 under 35 U.S.C. § 103(a) as unpatentable over Donner and Eder.



The Halligan court referred to Bilski:

The law in the area of patent-eligible subject matter for process claims
has recently been clarified by the Federal Circuit in In re Bilski, No. 2007-
1130, __ F.3d __, 2008 WL 4757110 (Fed. Cir. Oct. 30, 2008) (en banc).
The en banc court in Bilski held that “the machine-or-transformation test,
properly applied, is the governing test for determining patent eligibility of a
process under § 101.” Id. at *7. The court in Bilski further held that “the
‘useful, concrete and tangible result’ inquiry is inadequate [to determine
whether a claim is patent-eligible under § 101.]” Id. at *9.