Ex parte Nehls

When a claim to a computer-based system differs from the prior art system only in the content of the sequence data stored in its data storage means, and that data does not functionally change how the computer performs the search (the system compares a target sequence to the database the same way regardless of which sequences it holds), the Board may treat the data as nonfunctional descriptive material that lacks patentable weight and cannot render the system nonobvious. The Board reached this on the ground that no new and unobvious functional relationship exists between the recited SEQ ID NOs and the computer. A different output from different data does not make the data functional. No prior precedent directly addressed this issue in the text, which relies on Federal Circuit printed-matter cases and on Board decisions Ex parte Curry and Ex parte Mathias, which it describes as reaching the same conclusion for computer-implemented methods. For the examiner, a rejection can rest on a reference that discloses the same computer, search and retrieval structure, with the data content treated as carrying no patentable weight. For the applicant, reciting particular sequences, even novel ones, in the storage means will not distinguish the system unless the applicant shows the data changes how the system functions or that the claim differs from the prior art in more than data content. The Board relied on In re Gulack, In re Ngai, and In re Lowry, and also contrasted In re Warmerdam. Note that the panel was split, with two judges concurring in the result and dissenting from the obviousness holding. LEGAL TEST OR STANDARD: Following In re Gulack and In re Ngai, the Board asked whether the claimed system differs from the prior art in a nonobvious way, that is, in more than the content of nonfunctional descriptive material. The critical question is whether there exists any new and unobvious functional relationship between the descriptive material (the SEQ ID NOs) and the substrate (the computer system). Material is functional if it functionally affects the process, as with Lowry's data structures that increased efficiency, and not if the computer and the data do not depend on each other for their function. TRIGGERING FACTS: Claim 13 recited a data storage means with at least 18 contiguous nucleotides of any of SEQ ID NOS:9-1,008, plus search means and retrieval means. Appellants did not dispute that Altschul teaches the data storage, search and retrieval means. Altschul did not disclose the recited sequences, so the claim differed from the prior art only in the content of the stored data. There was no evidence the SEQ ID NOs changed the efficiency, accuracy or any other characteristic of the comparison. Applicants avoid the rule by showing the data functionally changes the system or that the claim differs in more than data content. KEY QUOTE: "Descriptive material is not functional merely because it results in different outputs when acted on by a computer program." (p. 14, n.5) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is overruled. The Board follows Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005), aff'd (Fed. Cir. Appeal No. 2006-1003, aff'd Rule 36 June 12, 2006), and Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005), aff'd 191 Fed.Appx. 959 (Fed. Cir. 2006). It applies In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983), and In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004), and distinguishes In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994), and In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994). PRACTICE TIP: When claiming a computer system whose only novelty is stored data, such as sequences, do not rely on the data content to distinguish prior art. Recite and prove a functional relationship, such as data that changes how the system operates or its efficiency or accuracy. Alternatively, claim structural or algorithmic differences, since the Board will give no patentable weight to data content alone.