Appeal 2007-2128
Application 09/757,006
claim reflects no more than the predictable use of prior art elements
according to their established functions. We are not persuaded that the
subject matter as a whole of instant claim 87 would have been nonobvious to
the artisan at the time of invention. We sustain the § 103(a) rejection of
claim 87.
We also sustain the § 103(a) rejection of claims 90 and 91 over MS
Win and the Examiner’s Official Notice. The claims differ from MS Win in
reciting that the recording control element causes the files in said defined
area to be “burned” (stored) onto a DVD or CD, rather than stored on a
(removable) floppy disk or fixed disk. Appellants do not deny that storing
file data on a removable storage medium such as a DVD or CD was well
known in the art. We find the combination of MS Win and Official Notice
sufficient to show suggestion for a graphical user interface as claimed, i.e.,
the simple substitution or addition of control elements for storing files to
other known types of removable storage media.
Appellants allege that in 1998 a separate application was required to
record data onto a CD or DVD with the prior art operating system shown by
MS Win. (Br. 5.) We might accept that to be true, but Appellants do not
allege that on or about the time of invention -- the prima facie date of
substrate, the printed matter will not distinguish the invention from the prior
art in terms of patentability,’” (quoting In re Gulack, 703 F.2d 1381, 1385,
217 USPQ 401, 404 (Fed. Cir. 1983)); In re Lowry, 32 F.3d 1579, 1582, 32
USPQ2d 1031, 1033 (Fed. Cir. 1994) (“Lowry does not claim merely the
information content of a memory. . . . [N]or does he seek to patent the
content of information resident in a database.”). See also Manual of Patent
Examining Procedure (MPEP) § 2106.01 (8th Ed., Rev. 5, Aug. 2006).
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