Ex Parte George

Board of Patent Appeals and Interferences

Jul 31, 2007

10223466 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte PETER T. GEORGE
___________

Appeal No. 2007-0133
Application No. 10/223,466
Technology Center 3700
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ON BRIEF
___________

Decided: July 31, 2007
___________

Before ROBERT E. NAPPI, LINDA E. HORNER,
and ANTON W. FETTING, Administrative Patent Judges.
FETTING, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

This is a decision on Appellant’s Request for Reconsideration filed March 21,
2007. We treat the Request for Reconsideration as a request for rehearing under 37
C.F.R. § 41.52 (2006). The appeal was initially decided by a 3-judge panel
consisting of Judges Nappi, Horner, and Fetting. The panel sustained a rejection of
claims 1, 5 through 15, 35, and 37 as being unpatentable under 35 U.S.C. § 101.
The request seeks rehearing of the original panel’s decision sustaining the

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rejection. For reasons which follow, we (1) have considered the request on the
merits, but (2) decline to reverse our prior decision affirming the Examiner’s
rejection under 35 U.S.C. § 101.
ISSUE ON REHEARING
In the February 21, 2007 opinion we sustained the Examiner’s rejection of
the subject matter of claims 1, 5 through 15, 35, and 37 as being unpatentable
under 35 U.S.C. § 101. Claims 1 and 35 are independent. Appellant limits the
request for rehearing to two issues: whether a process whose steps are directed
solely to construction of a static chart is a method of predicting sleep and activity
levels, and whether a static chart is eligible patentable subject matter. According
to the Appellant, “claim 1 is not, as the Board suggests, a method of drawing a
chart. Rather, it is a method of predicting sleep and activity levels comprising
chart-making steps” (Request for Rehearing 1). Appellant reasons that a chart is
tangible and concrete (Request for Rehearing 2). Moreover, Appellant asserts the
chart resulting from the method of claim 1 is useful (Id.). In particular, the
Appellant contends:
the chart is useful and provides better information that the raw data
used to produce it (time at destination, time at starting location, and
the average [i.e. normal] sleep and wake drives). The chart can be
quickly used to determine when the traveler will be alert or tired.
(Request for Rehearing 3).
The issue is whether Appellant’s claims, which are nominally drawn to cover
methods of predicting sleep and activity levels by humans, involving no
technology and no transformation, are patentable subject matter under 35 U.S.C.
§ 101. So construed, Appellant’s claims appear to be unpatentable under section
101 because (i) they do not qualify as a process under section 101, as that term has
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been interpreted by case law, (ii) they seek to patent an abstract idea, and (iii) the
useful, concrete, and tangible result test does not apply here, but, even if it did, the
claims nevertheless do not meet that test
FACTS

Claim 1 is as follows:
1. A method of predicting sleep and activity levels, comprising
providing a chart, providing lines and shapes representing personal
daily wake drives and a sleep drive, providing on the chart indications
of time of day at a starting location, providing on the chart indications
of time of day at a destination location, displaying on the chart
personal daily wake drives and sleep drives related to the time of day
at the starting location and the time of day at the destination.

Claim 35 is as follows:
35. A method for predicting and planning activity levels after rapid
changes in time zones comprising providing representations of wake
drives in relation to representations of time of day at destination and
time zones east and west and providing representations of wake nadirs
at lower portions of the wake drive curve, slopes and arrows leading
and pointing toward the wake nadirs representing respectively photo
zones west and east and effects of exposure to light during times of
the photo zones.

The Specification teaches use of the charts by moving parts of a chart. The
Specification does not recite how to translate the chart representations into
predictions of sleep and activity levels after moving parts of the chart, although the
Specification provides general advice on sleep and nap times. Neither claims 1 nor
35 recite moving parts of a chart, nor do they recite a step that results in the
preamble prediction or planning, nor do they recite anything having to do with
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prediction outside of their preambles.

ANALYSIS
i) Appellant’s claims appear to be unpatentable under section 101 because
they do not qualify as a process under section 101, as that term has been
interpreted by case law.
Appellant nominally claims a method for predicting sleep and activity levels.
The recited steps of claims 1, 5 through 15, 35, and 37 are drawn to methods of
drawing a chart. The end result of these claims is just that, a chart. See page 6 of
our February 6, 2006 decision and discussion infra.
These method claims differ from traditional process claims in several respects.
For example, the claims do not recite any particular way of implementing the steps,
nor do they require any machine or apparatus to perform the steps. In addition, the
method claims do not recite any electrical, chemical, or mechanical acts or results,
which are typical in traditional process claims. Furthermore, the claims do not call
for any physical transformation of an article to a different state or thing, nor do
they require any transformation of data or signals. A case involving the issue of
whether method claims with these characteristics qualify as statutory processes is
presently on appeal to the Federal Circuit: In re Comiskey, No. 2006-1286.
Principles of law relating to qualification as a statutory process

35 U.S.C. § 101 provides:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
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Our reviewing court further interpreted this as follows:
The Supreme Court has interpreted this statutory range of patentable
subject matter to be quite broad, but hardly universal. “In choosing
such expansive terms as ‘manufacture’ and ‘composition of matter,’
modified by the comprehensive ‘any,’ Congress plainly contemplated
that the patent laws would be given wide scope.” Diamond v.
Chakrabarty, 447 U.S. 303, 308 [206 USPQ 193] (1980). That wide
scope nevertheless excludes laws of nature, natural phenomena, and
abstract ideas. “Such discoveries are ‘manifestations of … nature, free
to all men and reserved exclusively to none.’” Id. at 309, (quoting
Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 [76
USPQ 280] (1948)). See also Diamond v. Diehr, 450 U.S. 175, 185
[209 USPQ 1] (1981); Parker v. Flook, 437 U.S. 584, 589 [198 USPQ
193] (1978).
“Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work.” Gottschalk v. Benson, 409
U.S. 63, 67 [175 USPQ 673] (1972).
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1359-60, 74
USPQ2d 1398, 1417-18 (Fed. Cir. 2005) (concurring opinion, Judge Gajarsa).The
scope of patentable subject matter under section 101 is broad, but not infinitely
broad. “Congress included in patentable subject matter only those things that
qualify as ‘any … process, machine, manufacture, or composition of matter, or any
… improvement thereof….’” In re Warmerdam, 33 F.3d 1354, 1358 (Fed. Cir.
1994) (quoting 35 U.S.C. § 101) (emphasis added). Thus, “[d]espite the oft-
quoted statement in the legislative history of the 1952 Patent Act that Congress
intended that statutory subject matter ‘include anything under the sun that is made
by man,’[citation omitted], Congress did not so mandate.” Id.
In the case where a claim is for a process, as opposed to a product, “[t]he line
between a patentable ‘process’ and an unpatentable ‘principle’ is not always clear.
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Both are ‘conception[s] of the mind, seen only by [their] effects when being
executed or performed.’” Parker v. Flook, 437 U.S. U.S. 584, 589 (1978) (quoting
Tilghman v. Proctor, 102 U.S. 707, 728 (1880)). “The holding that the discovery
of [Benson’s] method could not be patented as a ‘process’ forecloses a purely
literal reading of § 101.” Flook, 437 U.S. at 589. The Supreme Court has
recognized only two instances in which a method may qualify as a section 101
process: when the process “either [1] was tied to a particular apparatus or
[2] operated to change materials to a ‘different state or thing.’” Id. at 588 n.9
(quoting Cochrane v. Deener, 94 U.S. 780, 787-788 (1877) (“A process is...an act,
or a series of acts, performed upon the subject matter to be transformed and
reduced to a different state or thing”)). “[W]hen a claim containing [an abstract
idea] implements or applies that [idea] in a structure or process which, when
considered as a whole, is performing a function which the patent laws were
designed to protect (e.g., transforming or reducing an article to a different state or
thing), then the claim satisfies the requirements of § 101.” Diamond v. Diehr, 450
U.S. 175, 192 (1981); see also Gottschalk v. Benson, 409 U.S. 63, 70 (1972)
(“Transformation and reduction of an article ‘to a different state or thing’ is the
clue to the patentability of a process claim that does not include particular
machines.”).
The Supreme Court, however, presumably concerned about barring patents for
future, unforeseeable technologies, declined to rule on whether its precedent
foreclosed any other possible avenues for a method claim to qualify as a section
101 process: “It is argued that a process patent must either be tied to a particular
machine or apparatus or must operate to change articles or materials to a ‘different
state or thing.’ We do not hold that no process patent could ever qualify if it did
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not meet the requirements of our prior precedents.” Benson, 409 U.S. at 71.
Rather than rule on this question in Benson and Flook, the Supreme Court decided
those cases based on the abstract idea exception to patentability. Benson, 409 U.S.
at 71-72; Flook, 437 U.S. at 594-95.
Since Diehr, the Federal Circuit has reviewed several computer technology
cases, and in acknowledgment of the innovations occurring in this technological
field, identified a third category of method claims that qualify as a “process.”
Extrapolating from the Supreme Court’s “transformation and reduction of an
article” test, the Federal Circuit has held that transformation of intangible subject
matter (i.e., data or signals) may also qualify as a § 101 process. See, e.g., State
Street, 149 F.3d at 1373. Responding to the argument that process claims must
recite a “physical transformation,” the Federal Circuit in AT&T ruled that “physical
transformation” “is not an invariable requirement, but merely one example of how
a mathematical algorithm may bring about a useful application.” AT&T, 172 F.3d
at 1358. Quoting the Supreme Court’s language, “e.g., transforming or reducing
an article to a different state or thing” from Diehr, the AT&T court noted the usage
of “e.g.” “denotes an example, not an exclusive requirement.” Id. at 1359. AT&T
went on to cite the transformation of intangible data signals in the method claim of
Arrhythmia Research Technology Inc. v. Corazonix Corp., 958 F.2d 1053 (Fed.
Cir. 1992), as an example that qualifies as a § 101 ‘process” in addition to the
Supreme Court’s test. See id. at 1359.
Accordingly, the Federal Circuit has consistently used its own “data
transformation” test in assessing the eligibility of various machine-implemented
claims. In Alappat, the Court held that “data, transformed by a machine” “to
produce a smooth waveform display” “constituted a practical application of an
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abstract idea.” State Street, 149 F.3d at 1373. In Arrhythmia, the Court held “the
transformation of electrocardiograph signals” “by a machine” “constituted a
practical application of an abstract idea.” Id. Likewise, in State Street, the Court
held that “the transformation of data” “by a machine” “into a final share price,
constitutes a practical application of a mathematical algorithm.” Id. Thus, while
Diehr involved the transformation of a tangible object - curing synthetic rubber –
the Federal Circuit also regards the transformation of intangible subject matter to
similarly be eligible, so long as data or signals represent some real world activity.
We view this “data transformation” test as an appropriate way to evaluate subject
matter eligibility.
The Federal Circuit has never held or indicated that a non-machine
implemented process involving no transformation can qualify as a “process” under
§ 101. In fact, confronted with such claims, it has rejected them consistently. See
In re Schrader, 22 F.3d 290 (Fed. Cir. 1994); In re Grams, 888 F.2d 835 (Fed. Cir.
1989) (rejecting claims to method of evaluating a system that incorporated a
mathematical algorithm, where the only physical step was a data gathering step
that was not tied to the algorithm); In re Maucorps, 609 F.2d 481, 484 (CCPA
1979); In re Meyer, 688 F.2d 789, 796 (CCPA 1982); see also In re Alappat, 33
F3d 1526, 1543 (Fed. Cir. 1994) (en banc) (“Maucorps dealt with a business
methodology for deciding how salesmen should best handle respective customers
and Meyer involved a ‘system’ for aiding a neurologist in diagnosing patients.
Clearly, neither of the alleged ‘inventions’ in those cases falls within any § 101
category.”)
In Schrader, the court affirmed the 101 rejection of a method of competitively
bidding on a plurality of related items, relying in part on the Freeman-Walter-
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Abele (“FWA”) test. However, consistent with Arrhythmia, Alappat, State Street,
and AT&T, the court also inquired into whether Schrader’s non-machine
implemented method claim performed any kind of transformation. Schrader, 22
F.3d at 294 (“we do not find in the claim any kind of data transformation.”). The
court then distinguished Schrader’s claim from the statutorily eligible claims in
Arrhythmia, In re Abele, 684 F.2d 902 (CCPA 1982), and In re Taner, 681 F.2d
787 (CCPA 1982), pointing out that in these cases, “[t]hese claims all involved the
transformation or conversion of subject matter representative of or constituting
physical activity or objects. Id. (emphasis in original). Schrader expressly
concludes that “a process claim [in] compliance with Section 101 requires some
kind of transformation or reduction of subject matter.” Id. at 295. In sum, the
Federal Circuit has never ruled that methods without any transformation or
machine implementation are eligible, and appears in Schrader to have rejected that
proposition. Accordingly, we do not find that the boundaries of “process” should
be so expansive as to accommodate all “useful” methods.
Analysis of why claims 1, 5 through 15, 35 and 37 do not qualify as a
statutory process
Following Schrader, Appellant’s claims are unpatentable under section 101.
The claims are similar to those rejected in Schrader, while distinguishable from
Arrhythmia, Alappat, State Street, and AT&T. Appellant acknowledges that the
claims do not require any machine to carry out the invention (Specification
1:Summary of the Invention). The claims do not transform any article to a
different state or thing. Nor do the claims recite a machine that employs a
mathematical algorithm to transform data. The final chart produced by the claims,
while perhaps “useful” in one sense as a template in the graphic arts, is simply not
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the product of any transformation as understood in the case law of useful arts.
Accordingly, the claims fail to meet any of the conditions set forth in the case law
of either the Supreme Court or the Federal Circuit.

ii) Appellant’s claims appear to be unpatentable under section 101 because
they seek to patent an abstract idea.
Principles of law defining abstract idea
The Supreme Court has held that “[e]xcluded from such patent protection
are laws of nature, natural phenomena, and abstract ideas.” Diehr, 450 U.S. at 185.
“An idea of itself is not patentable.” Diehr, 450 U.S. at 185 (quoting Rubber-Tip
Pencil Co. v. Howard, 20 Wall. 498, 507, 22 L.Ed. 410 (1874); Benson, 409 U.S.
at 67 (“[M]ental processes, and abstract intellectual concepts are not patentable.”);
see also id. at 71 (“It is conceded that one may not patent an idea.”). In contrast,
“[i]t is now commonplace that an application of a law of nature or mathematical
formula [or abstract idea] to a known structure or process may well be deserving of
patent protection.” Diehr, 450 U.S. at 187 (emphasis in original).
Clever claim drafting cannot circumvent these principles. That is, even
when a claim appears to apply an idea or concept as part of a seemingly patentable
process, one must ensure that it does not in reality seek patent protection for that
idea in the abstract. Diehr, 450 U.S. at 191. Similarly, one cannot patent a process
that comprises “every substantial practical application” of an abstract idea, because
such a patent “in practical effect would be a patent on the [abstract idea] itself.”
Benson, 409 U.S. at 71-72.1 Such limitations on process patents are important

1 The observation in State Street that “[w]hether the patent’s claims are too broad
to be patentable is not to be judged under § 101, but rather under §§ 102, 103, and
112” did not, nor could it, overrule the Supreme Court’s pre-emption doctrine. See
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because without them, “a competent draftsman [could] evade the recognized
limitations on the type of subject matter eligible for patent protection.” Diehr, 450
U.S. at 192.
Analysis of holding appellants claims as drawn to abstract ideas
Because Appellant’s claims 1, 5 through 15, 35, and 37 are completely
untethered from any sort of structure or physical step, they are directed to a
disembodied concept. In other words, the claim is nothing but a disembodied
abstract idea until it is instantiated in some physical way so as to be limited to a
practical application of the idea. For example, the claims do not specify whether
the “predicting sleep and activity levels” is a computer, a human, or some other
implementation. Nor does the claim recite who or what is performing the step of
“providing” the chart, or the step of “providing lines and shapes.” Instead, those
limitations merely describe steps or goals of the concept. Just as the concept of
inserting a chart drawing step into a prediction method is an abstract idea, so too is
the notion to insert another chart element identifying what that element will be.
“Accordingly, the claim is so broad that it is directed to the abstract idea itself,
rather than a practical implementation of the concept. In addition, the claims are
“so abstract and sweeping” that they would “wholly pre-empt” all applications of
the notion of having a chart drawn to a sleep and activity prediction method. See
Benson, 409 U.S. at 68-72; see also Alappat, 33 F.3d at 1544 (quoting Benson).
It is true that process claims are not necessarily required to recite the means
or structure for performing the claimed steps. See, e.g., AT&T, 172 F.3d at 1359.
But process claims that do not require any machine implementation, and thus are

State Street, 149 F.3d at 1377. Rather, pre-emption was not at issue in State Street
since the claim in that case was particularly confined to a machine implementation,
and did not suffer from the same defect as Appellant’s claims.
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intrinsically more abstract than product claims or method claims reciting structure,
will often need to recite some sort of transformation act in order to clearly show
that the method claim is for some specific application of the idea and represents
something more than just a concept. See, e.g., id. at 1358 (noting that “AT&T’s
claimed process” uses “switching and recording mechanisms to create a signal
useful for billing purposes.”). Here, Appellant’s claims lack the “particularly
claimed combination of elements” recited in Alappat’s claim, the transformation of
data by a machine recited in State Street’s claim, the transformation of electrical
signals in Arrhythmia’s method claim, or the transformation of data useful for
billing purposes in AT&T’s method claim, and therefore lacks those characteristics
that separate a practical application of an idea from just the idea itself.

iii)Appellant’s claims appear to be unpatentable under section 101 because
(iii) the useful, concrete, and tangible result test does not apply here, but, even if it
did, the claims nevertheless do not meet that test.
Principles of Law relating to the Federal Circuit’s “Useful, Concrete, and
Tangible Result”
State Street’s “useful, concrete, and tangible result” test is limited to
machines and machine-implemented methods that transform data. As discussed,
supra, the development of the Federal Circuit’s data transformation test was in
response to a series of cases concerning the eligibility of machines and machine-
implemented methods employing a mathematical algorithm. In assessing the
eligibility of these specific types of claims, the court adopted a rule requiring such
claims to produce a “useful, concrete, and tangible result.” State Street, 149 F.3d
at 1373. The cases applying the useful, concrete, and tangible result test have all
been confined to machine implementation of mathematical algorithms. Thus, the
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Federal Circuit has never stated that this is the general test for patent eligibility. In
other words, any claim that might arguably yield a “useful, concrete, and tangible
result” is not necessarily statutory subject matter.
Specifically, the “useful, concrete, and tangible result” test first appeared in
Alappat, which states: “This [claimed invention] is not a disembodied
mathematical concept which may be characterized as an ‘abstract idea,’ but rather
a specific machine to produce a useful, concrete, and tangible result.” Id., 33 F.3d
at 1544. The Court in Alappat thus devised a standard to partition patentable
inventions using mathematical algorithms from claims for disembodied
mathematical concepts. State Street also involved claims to a machine employing
a mathematical algorithm, but in this instance for managing a mutual fund
investment portfolio. Finding the claim to be valid under § 101, State Street held
that “transformation of data Y by a machine through a series of mathematical
calculations into a final share price, constitutes a practical application of a
mathematical algorithm, formula, or calculation, because it produces ‘a useful,
concrete and tangible result.’“ Id. at 1373. Likewise, AT&T also ties this test to
applications of mathematical algorithms: “Because the claimed process applies the
Boolean principle to produce a useful, concrete, and tangible result without pre-
empting other uses of the mathematical principle, on its face the claimed process
comfortably falls within the scope of § 101.” AT&T, 172 F.3d at 1358; see also id.
at 1361 (concluding that “the focus is understood to be not on whether there is a
mathematical algorithm at work, but on whether the algorithm-containing
invention, as a whole, produces a tangible, useful result.”).
However, the Federal Circuit has never suggested that its “useful, concrete,
and tangible result” test was applicable outside the context of data transformation
using a mathematical algorithm. Rather, the Federal Circuit has consistently and
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specifically linked this test to inventions that perform “a series of mathematical
calculations” to transform data. Indeed, the Federal Circuit recently noted that the
test was specifically devised to handle eligibility issues for claims encompassing
mathematical algorithms, thereby suggesting that it is not a general test for
eligibility. See NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1324 (Fed.
Cir. 2005) (“The requirement that a process transform data and produce a ‘tangible
result’ was a standard devised to prevent patenting of mathematical abstractions”
(citing AT&T, 172 F.3d at 1359) (emphasis added)). Accordingly, the best reading
of the precedent may limit that test to machines and machine-implemented
methods using mathematical algorithms to transform data, rather than embracing it
as a general test for eligibility.
Analysis of why the useful, concrete, and tangible result test does not apply
and even if it did, the claims nevertheless do not meet that test
Accordingly, our understanding of the precedents at present is: Any
computer program claimed as a machine implementing the program (Alappat, State
Street) or as a method of a machine implementing the program (AT&T), is
patentable if it transforms data and achieves a useful, concrete and tangible result
(State Street, AT&T). Exceptions occur when the invention in actuality pre-empts
an abstract idea, as in a mathematical algorithm (Benson, 409 U.S. at 71-72).
Because Appellant’s claims do not entail a machine implementing a mathematical
formula to transform data, the “useful, concrete, and tangible result” test is
irrelevant to considering the eligibility of Appellant’s claims.
Furthermore, even if the concrete, and tangible result test were applied, the
claims do not meet the test as they are directed to printed matter. As discussed
supra independent claims 1 and 35 are directed to methods of drawing a chart. A
chart is no more than printed matter. “[P]rinted matter by itself is not patentable
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subject matter, because [it is] non-statutory…” In re Miller, 418 F.2d 1392, 1396,
164 USPQ 46, 49 (CCPA. 1969).The chart is no more than an abstract
representation of the ideas behind the drawing contents. This is no more directed
toward a concrete, tangible and useful result than was the gray scale in Abele. See
In re Abele, 684 F.2d 902, 909, 214 USPQ 682, 685 (CCPA 1982) (where the
claim presented “no more than the calculation of a number and display of the
result, albeit in a particular format.”)

Appellant’s Arguments
The Appellant argues that predicting sleep patterns is a useful, concrete and
tangible result. We need not reach that question because, as explained supra, the
“useful, concrete, and tangible result” test does not apply to the present claims.
Further, even if one were to apply the “useful, concrete, and tangible result” test,
the claims would not be patentable because the claimed method does no more than
instruct one how to draw a chart. The prediction of sleep and activity is recited in
the preamble and is merely a field of use limitation. Moreover, the claims do not
recite how to achieve such a use from the steps recited. Thus, whether predicting
sleep patterns is useful is moot because it is not part of the actual claim scope. See
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d
1161, 1166 (Fed. Cir. 1999) (citations omitted) (“If … the body of the claim fully
and intrinsically sets forth the complete invention, including all of its limitations,
and the preamble offers no distinct definition of any of the claimed invention's
limitations, but rather merely states, for example, the purpose or intended use of
the invention, then the preamble is of no significance to claim construction because
it cannot be said to constitute or explain a claim limitation.”).
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The Appellant argues the chart is useful because it provides better information
than the raw data. The chart can be quickly used to determine when the traveler
will be alert or tired. However, the Appellant merely asserts in this argument that
the chart presents useful information, as would a printed handbook or table, not
that it performs anything useful. Further, nothing in the claim limits the claimed
subject matter to data describing actual measurements2 of real world data. The
Appellant also argues that a chart is concrete and tangible. While the substrate on
which the chart is drawn may be a physical structure, the chart itself is no more
than a pattern that is presented on the substrate and in itself is insubstantial.
The Appellant argues that as in State Street, id., data is transformed. In State
Street, data was physically entered into a computer system that executed electrical
processes upon the data to transform the data into actual share prices that were
relied upon by regulatory agencies. Id. at 1373, 47 USPQ2d at 1602. In the claims
at hand, data is drawn in the form of a static chart. There is no electrical process
that converts one signal into another in the claims at issue.
Thus, we find the Appellant’s arguments to be unpersuasive.

2 Although the claims refer to “representing personal” data, the elements are just
that, representations of such data, not measurements of actual personal data. The
specification at 5 discloses that “[t]hese instructions assume a normal sleep-wake
cycle . . . .”
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DECISION
Appellant’s request is granted to the extent that the decision has been
reconsidered. The request is denied with respect to reversing the decision as to the
rejection of claims 1, 5 through 15, 35, and 37 under 35 U.S.C. § 101 as directed to
non-statutory subject matter. This decision supplements our February 21, 2007
opinion, and to the extent that it differs, this opinion supersedes the February 21,
2007 opinion. The rejection of claims 1, 5 through 15, 35, and 37 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter is sustained.
Since we have relied on reasons for unpatentability under 35 U.S.C. § 101
different from the Examiner’s, we designate our affirmance of the Examiner’s
rejection as a new rejection within the meaning of 37 C.F.R. § 41.50(b) (2006).
Our decision is not a final agency action.
37 C.F.R. § 41.50(b) provides that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new rejection:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the Examiner,
in which event the proceeding will be remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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Application Number: 10/223,466
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).

DENIED
41.50(b)

jlb

James C. Wray
Suite 300
1493 Chain Bridge Road
McLean, VA 22101

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