Appeal 2007-1250
Application 10/458,537
nonfunctional descriptive material, as discussed 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 Ngai, 367 F.3d 1336,
1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (“‘[w]here the printed matter
is not functionally related to the substrate, the printed matter will not
distinguish the invention from the prior art in terms of patentability,’”
(quoting In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir.
1983)); 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.
. . . [N]or does he seek to patent the content of information resident in a
database.”).
It is therefore my view that Daga’s disclosure of the golden timing
constraints teaches the claimed data file, as recognized by both Appellants
and the majority. It is further my view that the plurality of all possible
sources of a generated clock included in the circuit is directed to the content
of the generated data file. Therefore, it carries no patentable weight. That
is, Daga’s teachings are sufficient to anticipate claim 1. Thus, I cannot agree
with the majority’s reversal of the Examiner’s rejection. Accordingly, I
would affirm Examiner’s prior art rejection of the claims as being
anticipated by Daga.
generated data file were ever used to accomplish anything. Further, there is
no indication as to how these two steps are related.
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