Ex Parte LOH et al - Page 3



         Appeal No. 2003-0227                                                       
         Application No. 09/428,871                                                 

              accessing a digital image based on the functional path                
              name directory and producing a print from the digital image.          
                                   THE REFERENCES                                   
         Craig                              5,790,176       Aug.  4, 1998           
         Garfinkle et al. (Garfinkle)       6,017,157       Jan. 25, 2000           
         (filed Dec. 24, 1996)                                                      

                                   THE REJECTION                                    
              Claims 1-90 stand rejected under 35 U.S.C. § 103 as being             
         unpatentable over Garfinkle in view of Craig.                              
                                      OPINION                                       
              We reverse the aforementioned rejection.  We need to address          
         only the independent claims, i.e., claims 1, 21, 37, 45, 51, 57,           
         63, 71, 76, and 87.                                                        
              The appellants state (brief, page 5), and the examiner                
         agrees (answer, page 3), that the claims stand or fall together.           
         The claims, however, cannot stand together because different               
         inventions are claimed.  Independent claims 1, 21, 45, 51, 57, 71          
         and 76 are directed toward a system, method or protocol for                
         multi-tier digital image data storage, whereas independent                 
         claims 37, 63 and 87 are directed toward a method or protocol for          
         using a unique file identification value to access a digital               

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