Ex parte Curry

Informative decision only: persuasive authority, not binding precedent. When a claimed method, computer or storage medium differs from the prior art only in the content of the data (here "wellness-related" data) or a label (here a portal's "sponsored" status) that does not functionally change the data storage or communication system or the portal's structure or functionality, the Board may treat that difference as nonfunctional descriptive material that cannot render the claim nonobvious. The Board found that a fitness-center location differing only by intended use does not distinguish structure over the prior art. No prior Board precedent is named in the decision as directly addressed on this issue; the Board applies Federal Circuit authority on nonfunctional descriptive material. For an examiner, the decision supports finding that the type of data stored or communicated, a location's intended use, or a label on a portal adds nothing patentable when the prior art already supplies the structure and function. For an appellant, arguing that such limitations were read out of the claims fails unless the appellant shows the material functionally changes the system or process. The Board relied on In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004), and cited In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983), and CCPA intended-use cases (In re Pearson, In re Yanush, In re Casey). LEGAL TEST OR STANDARD: Nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious. The Board asked whether the material functionally changes the system or process, and whether it alters how the machine functions (the descriptive material does not reconfigure the computer) or how the process steps are performed to achieve the utility of the invention. Statements of intended use do not serve to distinguish structure over the prior art. TRIGGERING FACTS: Claim 81 recited a method of providing wellness-related services with wellness-related databases, a portal sponsored by and located at a fitness center, and a determination of whether the portal was sponsored. The Board found that the data did not functionally change the storage or communication system. It found the fitness center did not differ structurally from Baker's school and differed only by intended use. It found the sponsored or unsponsored label did not change the portal's structure or functionality, because Baker taught differing access rights based on location data including portal addresses. KEY QUOTE: "Nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious." (p. 7) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board followed In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004), and cited In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983). PRACTICE TIP: When claims rest on the type of data, a location, or a status label, argue and show in the brief how the limitation functionally changes the system or process. Argue each claim group separately, because arguments not made are waived and unargued claims are grouped under a representative claim.