Appeal No. 2005-0509 Page 8
Application No. 09/449,237
- a computer-readable storage medium that differs from the prior art
solely with respect to nonfunctional descriptive material, such as
music or a literary work, encoded on the medium,
- a computer that differs from the prior art solely with respect to
nonfunctional descriptive material that cannot alter how the
machine functions (i.e., the descriptive material does not
reconfigure the computer), or
- a process that differs from the prior art only with respect to
nonfunctional descriptive material that cannot alter how the process
steps are to be performed to achieve the utility of the
invention.
Thus, if the prior art suggests storing a song on a disk, merely choosing a
particular song to store on the disk would be presumed to be well within the level
of ordinary skill in the art at the time the invention was made. The difference
between the prior art and the claimed invention is simply a rearrangement of
nonfunctional descriptive material.
As to the physical location (in a fitness center) being merely a field of use
limitation, again we find the Examiner’s position to be the better. We find that the
claimed fitness center does not differ structurally from the school taught by Baker
(column 1). We find that they differ solely based on their intended use.
Appellant himself reinforces this in the specification at page 2, where he
discloses the portal could be in either a fitness center or a shopping mall.
Clearly, the fitness center and shopping mall are the same structurally and differ
only as to their intended uses. Statements of intended use do not serve to
distinguish structure over the prior art. See In re Pearson, 494 F.2d 1399, 1403,
181 USPQ 641, 644 (CCPA 1974); In re Yanush, 477 F.2d 958, 959,
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