Appeal No. 1996-3078
Application 08/184,417
precise in light of the disclosure and the prior art. Accordingly, we will not sustain the rejection of
claims 1 to 29 under 35 U.S.C. § 112, second paragraph.
Rejection of Claims 1 to 29 Under 35 U.S.C. § 103:
We turn next to the question of patentability of claims 1 to 29 under § 103 over appellants’
admitted prior art in the specification. We agree with appellants’ principal argument (Brief, pages 8 to
9), that the admitted prior art in the specification fails to teach or suggest providing a user interface
which allows a user to designate a file type along with means responsive to such designation for
determining a physical format type for the file from amongst plural available physical format types and
then storing the file on a direct access storage device in conformance with the determined physical
format type. Specifically, we cannot agree with the examiner that appellants’ admitted prior art (pages
2 to 3 and page 8) taught or would have suggested the recited "means responsive to user designation . .
." (independent system claim 1 on appeal) or the step of "responsive to user designation of the file type
for a file determining . . ." (independent method claim 14 on appeal). We find that pages 2 to 3 of the
specification merely admits that it was known in the prior art to store data in different physical formats
such as spiral (e.g., for video data) and concentric tracks (e.g., for textual data), and that page 8 of the
specification merely admits that it was known in the prior art to provide an interface for user selected
programs/procedures in an operating system to invoke applications in a data processing system.
Nowhere in the admitted prior art in the specification is there any indication that it was known to
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