Appeal 2007-2128
Application 09/757,006
January 8, 2001 -- a separate application was required to record data onto a
CD or DVD.
In any event, the inquiry with respect to claims 90 and 91 relates to
what the prior art would have suggested that the artisan do (i.e.,
obviousness), rather than what the artisan did (i.e., anticipation). While a
reference must enable someone to practice the invention in order to
anticipate under § 102, a non-enabling reference may qualify as prior art for
the purpose of determining obviousness under § 103. Symbol Techs., Inc. v.
Opticon, Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir.
1991).
CONCLUSION
In summary, the rejection of claims 85, 86, 88, and 89 under 35
U.S.C. § 102(b) and the rejection of claims 87, 90, and 91 under 35 U.S.C.
§ 103(a) are affirmed.
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