Ex parte STEPHEN P. CAPPS, et al. - Page 8





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

                    We also disagree with the examiner's finding that the search "keys correspond to applicant's                   
            selection button, and like appellants' claimed invention are found in the memory device" (Examiner's                   
            Answer, page 15).  The cover search keys 101-103 and page search keys 105-106 are used by the                          
            operator to manually turn the files to retrieve the desired picture information.  The files are not                    
            associated with these keys as recited in claim 1.                                                                      
                    Appellants argue that Kita does not search "the content of each searchable record of each file"                
            (emphasis added) (claim 1) because Kita "searches only certain records in memory (i.e. those within                    
            the narrowest category selected by the user)" (Brief, page 11).  We do not see where the examiner                      
            responds to this argument.  The examiner states that "the content of each searchable record of each                    
            file that is associated with the search key is then conducted" (Examiner's Answer, page 15), but does                  
            not explain how this happens in Kita.  As previously noted, Kita does not search the content of the                    
            image file for a search string.  Also, Kita is a hierarchical classification system which means that the               
            number of relevant object picture files decreases as the operator searches (the system does not search)                
            the category and sub-category menus.  This is not a search of all files.                                               
                    Appellants further argue that Kita fails to reasonably suggest the limitation of "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" (claim 1).  Appellants                   
            argue that figure 6 relied on by the examiner "fails to show the results of a find search" (Brief, page                
            11) and "it does not list files whose content matched a search string and it fails to indicate a particular            
            selection button in which a search 'hit' was found" (Brief, page 11).                                                  

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