Ex Parte BOLDL - Page 4




          Appeal No. 2001-1352                                                        
          Application 08/802,828                                                      


               As disclosed and depicted in specification Figure 6, in                
          response to the generation of an insert signal from the insert              
          key 8 in Figure 1, a pointing vector generator generates a block            
          of pointing vectors 29 in Figure 6 having a respective first                
          address signal (n) which specifies the location where dictated              
          insert should be inserted in the data file (F), and a second                
          address signal (p) which indicates the beginning address of an              
          available portion of addressable memory for actually storing the            
          insert itself.  Although not set forth in independent claims 1              
          and 13 on appeal, a third address vector location (q) identifies            
          the ending address of the dictated insert.                                  
               It is thus apparent that the dispute revolves around the               
          stated first and second address signals generated by the claimed            
          pointing vector generator means in representative independent               
          claim 1 on appeal.  Corresponding features are recited in                   
          independent claim 13 on appeal as well.  It is this clause at the           
          end of representative claim 1 on appeal that appellant rightly              
          argues that the examiner has not proven to be taught or suggested           
          among the prior art applied.  Appellant's arguments do not                  
          dispute the proper combinability within 35 U.S.C. § 103 of the              
          references relied upon, but only assuming a proper combination is           


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