Non-functional descriptive material not carrying patentable weight (MPEP 2111.05)

Further, the Examiner alleges that “the specifics of the information (second ran and available frequencies) that are being received/acquired are considered as non-functional descriptive material not carrying patentable weight. See MPEP 2111.05.”  Applicant respectfully disagrees for the following reasons.

First, M.P.E.P. § 2111.05 states, “Since a claim must be read as a whole, USPTO personnel may not disregard claim limitations comprised of printed matter.” (emphasis added.)  Specifically, M.P.E.P. § 2111.05 states, “The first step of the printed matter analysis is the determination that the limitation in question is in fact directed toward printed matter.” 

However, the Examiner has not made a determination that the limitation in question (the information about the second RAN and its available frequencies) is in fact directed toward printed matter.

Second, M.P.E.P. § 2111.05 further states, “[O]nce it is determined that the limitation is directed to printed matter, [the examiner] must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight.” Id. at 850, 117 USPQ2d at 1268.” (citing In re DiStefano, 808 F.3d 845). 

Even if the limitation in question is determined as corresponding to the printer matter, the limitation is question is functionally or structurally related to the associated physical substrate, such as a processing unit 125, a computer program 126, and a storage medium 127 illustrated in Figure 7 and explained in paragraph [0088] of the present application publication.

Third,  MPEP 2111.05 (III) specifically states, “Where the programming performs some function with respect to the computer with which it is associated, a functional relationship will be found. For instance, a claim to computer-readable medium programmed with attribute data objects that perform the function of facilitating retrieval, addition, and removal of information in the intended computer system, establishes a functional relationship such that the claimed attribute data objects are given patentable weight.” 

The limitation in question is the information about the second RAN and its frequencies, which corresponds to the attribute data objects mentioned in MPEP 2111.05 (III). As illustrated in Figure 7 and explained in paragraph [0088] of the present application publication, the limitation in question is associated with the computer system comprising the processing unit 125, the computer program 126, and the storage medium 127.  Since the functional relationship between the limitation in question and the computer system is found, the limitation in question should be given patentable weight under MPEP 2111.05 (III).

Further, the Examiner alleges that “the specifics of the information (second ran and available frequencies) that are being received/acquired are considered as non-functional descriptive material not carrying patentable weight. See MPEP 2111.05.”  Applicant respectfully disagrees for the following reasons.

First, M.P.E.P. § 2111.05 states, “Since a claim must be read as a whole, USPTO personnel may not disregard claim limitations comprised of printed matter.” (emphasis added.)  Specifically, M.P.E.P. § 2111.05 states, “The first step of the printed matter analysis is the determination that the limitation in question is in fact directed toward printed matter.” 

However, the Examiner has not made a determination that the limitation in question (the information about the second RAN and its available frequencies) is in fact directed toward printed matter.

Second, M.P.E.P. § 2111.05 further states, “[O]nce it is determined that the limitation is directed to printed matter, [the examiner] must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight.” Id. at 850, 117 USPQ2d at 1268.” (citing In re DiStefano, 808 F.3d 845). 

Even if the limitation in question is determined as corresponding to the printer matter, the limitation is question is functionally or structurally related to the associated physical substrate, such as a processing unit 125, a computer program 126, and a storage medium 127 illustrated in Figure 7 and explained in paragraph [0088] of the present application publication.

Third,  MPEP 2111.05 (III) specifically states, “Where the programming performs some function with respect to the computer with which it is associated, a functional relationship will be found. For instance, a claim to computer-readable medium programmed with attribute data objects that perform the function of facilitating retrieval, addition, and removal of information in the intended computer system, establishes a functional relationship such that the claimed attribute data objects are given patentable weight.” 

The limitation in question is the information about the second RAN and its frequencies, which corresponds to the attribute data objects mentioned in MPEP 2111.05 (III). As illustrated in Figure 7 and explained in paragraph [0088] of the present application publication, the limitation in question is associated with the computer system comprising the processing unit 125, the computer program 126, and the storage medium 127.  Since the functional relationship between the limitation in question and the computer system is found, the limitation in question should be given patentable weight under MPEP 2111.05 (III).

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s