Appeal No. 1999-0013
Application No. 08/649,972
heterogeneous network. This is generally a Computer Aided Software Engineering
(CASE) tool. (See Lubkin at columns 1-3.) The examiner maintains that Lubkin teaches at
col. 12, line 60, maintaining a list of information available within the system (see answer at
page 6), but we do not see the examiner’s point here with respect to the claimed invention.
We agree with the examiner that all aspects of software, hardware, and firmware would
have been required to be involved in the successful design of an operational computer
system since they are all required. (See answer at page 6.) Here, the examiner has not
addressed the invention as recited in the language of claim 1. As pointed out by our
reviewing court, we must first determine the scope of the claim. "[T]he name of the game
is the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir.
1998). We find that the examiner has not provided a teaching or convincing line of
reasoning why one skilled in the art would have desired to modify the teachings of Jones,
APA and Lubkin to achieve a system for retrieving, organizing and displaying data in a
complex system.
Since we find that the teachings of neither Jones nor APA concerning HyperCard
technology teaches the discrete limitations of the claimed invention, and the examiner has
not relied upon the teachings of Lubkin beyond teaching a software tool in a “complex
software system,” we cannot sustain the rejection of claim 1, since the examiner has not
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