Appeal No. 2006-2638
Application No. 10/095,616
When questioned at the oral hearing about the above-noted disclosure in Kura
regarding a Awritable@ transponder, appellants= representative referred to paragraphs 6
and 7 of the reference. Kura does teach therein that information could be lost if a
memory incorporated into an endoscope were damaged. The teaching at paragraphs 6
and 7 does not, however, erase or abrogate the clear teaching later in the reference that
information may be written to a memory device affixed to the endoscope. Considered
together, the teachings seem to indicate that one should not rely on a memory in an
endoscope as the sole repository of critical information. Kura does teach, however,
storing (possibly redundant) information to a memory device affixed to an endoscope.
As for the content of the information recited in instant claim 13 (endoscope
parameters, endoscope use history data, modified endoscope use history data), we find
the claimed content to be in the form of nonfunctional descriptive material as defined in
Manual of Patent Examining Procedure (MPEP) ' 2106 (8th Ed., Rev. 5, Aug. 2006).
The information content of the particular data that may be received and stored does not
change the underlying function of the transponder/transceiver or the memory. The
content of the nonfunctional descriptive material carries no weight in the analysis of
patentability over the prior art. Cf. In re Lowry, 32 F.3d 1579, 1583, 32 USPQ2d 1031,
1034 (Fed. Cir. 1994) (ALowry does not claim merely the information content of a
memory. . . .@).
The evidence provided by the examiner is thus sufficient to demonstrate the
prima facie unpatentability of the subject matter as a whole of instant claim 13. We
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