Friday, January 18, 2013

Nonfunctional descriptive material

from within Ex parte VAN BERKEL

“[A] machine is a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’ This ‘includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.’” Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009) (quoting In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007), reh’g denied en banc, 515 F.3d 1361 (Fed. Cir. 2008), cert. denied, 129 S. Ct. 70 (2008)).

Nehls is quoted:

In a precedential Opinion, an expanded Board panel held that nonfunctional descriptive material (sequence data) did not distinguish the claimed computer-based system from a prior art system that was the same except for its sequence data. See Ex parte Nehls, 88 USPQ2d 1883, 1887-88 (BPAI 2008) (precedential).3 It follows that Appellants have not shown error in the Examiner’s rejection of claim 1 as being anticipated by Erdogan.


See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), aff’d 191 Fed. Appx. 959 (Fed. Cir. 2006) (stating if a claimed phrase cannot alter how the process steps are to be performed to achieve the utility of the invention or merely states an intended use or purpose for the data, it is not entitled to patentable weight)


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