Appeal No. 96-0542
Application 08/025,603
1. The mere desire to have compatibility between the data of
different application programs is not sufficient to render
obvious the specific invention recited in claim 1. Therefore,
we do not sustain the rejection of claim 1 or of independent
claim 17 which is grouped therewith.
Independent claims 11 and 13 stand rejected on the
collective teachings of Peters, Future and O’Connor. O’Connor
was cited by the examiner after he determined that additional
recitations of claims 11 and 13 were equivalent to a
"handshaking" operation, and O’Connor was said to teach the
obviousness of such handshaking operations. Appellants argue
that the "handshaking" operation has nothing to do with their
claims, and the examiner has not properly addressed the
specific recitations of the claims. We agree with appellants.
There is no basis for combining the teachings of O’Connor with
those of Peters based on calling appellants’ invention
something that it is not. O’Connor also would not overcome
the deficiencies already noted in the rejection based on
Peters and Future only. Therefore, we do not sustain the
rejection of independent claims 11 and 13.
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