Appeal No. 2001-1469
Application No. 09/001,284
disclosure of Orphanoudakis, we do not sustain the examiner’s rejection of the claims
on appeal. Therefore, the decision of the examiner rejecting claims 1-11 and 13-18 is
reversed.
Since we have reversed the anticipation rejection in this case as fundamentally
flawed because it requires a consideration of two references, we also remand this
application to the examiner for a consideration of whether prosecution of this application
should be reopened to make an appropriate rejection based on the prior art of record or
on any other prior art. We do this in part to ensure that the proper scope of the claimed
invention has been considered and that the factual findings necessary to support any
rejection are properly of record in this case.
Our first observation is that the independent claims on appeal do not recite that the
plurality of storage devices (claim 1) or the storage device (claims 6 and 7) represent a
hierarchical storage system. Each of the independent claims only requires that a
storage device be selected by analyzing patient diagnostic information. Thus, the other
critical factual question in this appeal is what is meant by the term “patient diagnostic
information.” Any additional rejection of these appealed claims should include a finding
as to what is the broadest reasonable interpretation of this term and how the applied
prior art is deemed to meet, teach or suggest this claimed term. The present record
suggests that appellant and the examiner may have different views of what this term
includes, but any such differences have not been fully explored because of the
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