Appeal 2007-1164
Application 10/170,131
2. PRIOR ART
The Examiner relies on the following reference:
Kim US 6,183,121 B1 Feb. 6, 2001
3. OBVIOUSNESS
Claims 24 and 26 stand rejected under 35 U.S.C. § 103 as obvious in
view of Kim. The Examiner points to Kim’s disclosure of “a computer
comprising a machine-readable data storage medium, a working memory, a
central processing unit, and a display for generating a three-dimensional
representation of HCV helicase. See particularly claim 1 and Figure 2”
(Answer 4). The Examiner acknowledges that Kim “does not teach
machine-readable data comprising the structure coordinates of Table 1,” but
concludes that “the machine-readable data required by the claimed computer
is given no patentable weight as it is considered to be non-functional
descriptive material” under In re Gulack, 703 F.2d 1381, 217 USPQ 401
(Fed. Cir. 1983) (Answer 4).
We agree with the Examiner’s analysis and conclusion.
Appellants do not dispute that Kim’s computer differs from that of
claim 24 only in the contents of the stored data. Appellants argue, however,
that under In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994), the
data recited in claim 24 should be considered functional descriptive material:
[T]he Lowry panel noted that since Gulack and other printed
matter cases related to “‘arrangements of printed lines or
characters, useful and intelligible only to the human mind’”,
these cases had “no factual relevance” to a claimed invention in
which the information is “‘processed not by the mind but by a
machine, the computer.’”
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