Appeal 2006-3356
Application 10/244,722
broadly claimed. “A reference anticipates a claim if it discloses the claimed
invention ‘such that a skilled artisan could take its teachings in combination
with his own knowledge of the particular art and be in possession of the
invention.’” In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701
(Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929, 936, 133 USPQ 365,
372 (CCPA 1962)).
Third, the particular claimed formats (MFS, XML) do not change the
underlying function of the machine receiving a request and returning a
response. The data that are received and returned consist of what has come
to be known as nonfunctional descriptive material, as described in Manual of
Patent Examining Procedure (MPEP) § 2106.01 (8th Ed., Rev. 5, Aug.
2006). 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) (“Lowry does not
claim merely the information content of a memory.”). The process of claim
29 is anticipated by the process described by Najmi; the particular formats of
the data processed have no function in the invention claimed.
Appellants further allege (Br. 6) that Najmi fails to describe
translating a request to MFS XML at least in part using a MFS message
input descriptor, as recited in instant claim 1. While the reference describes
translating requests between different formats, Najmi does not use the literal
term “MFS message input descriptor.” However, the correspondence
mapping between two different formats is sufficient to meet the terms of
“message input descriptor” (and “message output descriptor”). Further, as
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