Ex parte STEPHEN P. CAPPS, et al. - Page 3





               Appeal No. 94-3636                                                                                                  
               Application 07/889,660                                                                                              

                    Claim 1 is reproduced below.2                                                                                  
                           1.  A method of controlling a screen display with an input pointer to search the                        
                    contents of a memory device for a pen-based computer system, where the contents of the                         
                    memory device comprise one or more files, where each file comprises one or more records,                       
                    and where each file has an associated file selection button provided as part of the computer                   
                    system, comprising the steps of:                                                                               
                           receiving a search string which has been written or selected on the screen display with                 
                    the pointer;                                                                                                   
                           searching the content of each searchable record of each file that is associated with a                  
                    selection button in the memory device for the search string;                                                   
                           determining the number of hits in each file; and                                                        
                           displaying on the screen display a plurality of indicators, each having a corresponding                 
                    file selection button, and each showing the number of hits in the file corresponding to the                    
                    selection button.                                                                                              

                    The examiner relies on the following reference:                                                                
                    Kita et al. (Kita)      5,172,245       December 15, 1992                                                      
            (effective filing date October 16, 1987)                                                                               

                    Kita discloses an image storage and retrieval system using hierarchical category and                           
            sub-category menus.  The data storage arrangement is shown in figure 5.  The bit data storage region                   
            82 stores primary information 82a such as image information.  The code data storage region 81 stores                   
            secondary information, which is retrieval information for retrieving the primary information, and is                   


                  2                                                                                                                
                 Note that the copy of claim 1 in the amendment received October 4, 1993 (Paper No. 8),                            
               and the copy of claim 1 in the appendix to the appeal brief miscopies "comprising the steps of"                     
               from original claim 1 to "comprising the step of."                                                                  
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