Appeal No. 2001-1469
Application No. 09/001,284
reference to be combined with the published article in support of a rejection under 35
U.S.C. § 102. On the facts of this case, it is clear that the examiner is relying on Huang
to provide teachings which are missing from Orphanoudakis and that do not necessarily
follow from the disclosure of Orphanoudakis. In the final rejection, the examiner
admitted that Orphanoudakis does not specifically disclose automatically selecting the
storage device by analyzing patient diagnostic information, but the examiner found that
Orphanoudakis discloses this operation anyway based on the cited reference to Huang.
The examiner and appellant disagree on what is taught by Huang. The very fact that
the examiner and appellant dispute what is disclosed by Huang is evidence that Huang
is not being relied on merely to explain the meaning of a term or to show an inherent
characteristic. Notwithstanding the examiner’s assertion that Huang does simply
provide an inherent characteristic of Orphanoudakis, we agree with appellant that
Huang has been improperly used in this anticipation rejection.
When the rejection is considered using only the disclosure of Orphanoudakis, we
also agree with appellant that the selection of a storage device in Orphanoudakis is not
clearly determined using patient diagnostic information. Orphanoudakis appears to
move data between storage devices based on previously obtained data from models
which show how often data is typically accessed during hospital stays.
Since all the features of the claimed invention are not found entirely within the
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