Appeal No. 1998-0252
Application No. 08/555,795
972, 973 (Bd. Pat. App. & Int. 1985). To this end, the
requisite motivation must stem from some teaching, suggestion
or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and
not from the appellant's disclosure. See, for example,
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
The Rejection Of The Method Claims
We shall first consider the rejection of method claims 11
and 15-17 as being unpatentable over the combined teachings of
Colavito, Barber, and the admitted prior art. In the opening
pages of the specification, the appellant explains that health
care providers often have large filing systems containing the
records of thousands of patients, and that the prior art
systems typically arranged the files alphabetically by the
patient’s last name or numerically by social security number.
According to the appellant, the latter system suffers from the
fact that many patients either do not have a social security
number or cannot recall it, and the former gives rise to large
collections of the same names, such as John Smith, which
4
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