Ex Parte WASHINGTON et al - Page 4




              Appeal No. 1999-2615                                                                                        
              Application No. 08/644,120                                                                                  

              obviousness.  The independent claims 31, 44, 53, 60 and 61 contain many elements                            
              yet the examiner merely alleges that these elements are present in Cain without                             
              specifically pointing out where such elements are found.  For example, with regard to                       
              claim 31, the examiner alleges that all of the elements are disclosed in Cain except for                    
              the last “applying . . .” step.  However, the only specific reference to Cain is to column 9,               
              lines 5-67,  and to Figures 4A-4F.  The examiner does not specifically correlate the                        
              claimed elements to particular portions of column 9 of Cain.                                                
                     We have reviewed the portion of Cain cited by the examiner and we find nothing                       
              therein about “creating a second internal control object in response to said selecting                      
              said control for said editing transaction, wherein said second internal control object is a                 
              copy of said first.”  If there is no creation of a second internal control object, then there               
              can be no “displaying said second internal control object . . .” and there can be no                        
              “changing said second internal control object...” or “displaying said changed second                        
              internal control object,” as claimed.                                                                       
                     Moreover, even assuming, arguendo, that all of the claimed elements but for the                      
              last element in claim 31 are shown in Cain, the examiner has provided no convincing                         


              rationale establishing a motivation for making the proposed combination wherein                             
              anything taught by Li would have led the artisan to provide that teaching to the Cain                       
              system.  The examiner’s reasoning that the combination would have been made “in                             
              order permitting a user to efficiently create an application utilizing a plurality of objects               
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