Appeal No. 96-0809
Application 08/197,677
information medium of claim 1 is not structurally different
from the information medium of Ando. The examiner also simply
concludes that it would have been obvious to store the
information content of claim 1 on an information medium.
Appellants argue that the claimed information structure
cannot be ignored, citing In re Lowry, 32 USPQ2d 1031 (Fed.
Cir. 1994), and that the examiner
has presented no evidence for his conclusion that the claimed
information content would have been obvious to one having
ordinary skill in the art [brief, pages 18-21]. The examiner
responds that, unlike appellants’ information, Lowry’s data
structures were physical entities and that appellants’ claims
are governed by the rule established in In re Gulack, 703 F.2d
1381, 217 USPQ 401 (Fed. Cir. 1983) [answer, pages 7-8].
Although we agree with the examiner that the Lowry
data structures are not exactly the same as appellants’
information blocks and jump commands, we also agree with
appellants that the current state of the law on this subject
and the official PTO position is that claims such as the ones
before us require the examiner to consider the content of the
information for purposes of applying prior art rejections. In
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