Ex Parte Ingram et al - Page 3



          Appeal No. 2004-2266                                                         
          Application No. 09/847,999                                                   
                             Published Patent Application                              
          Jain                     US 2003/0030679 A1        Feb. 13, 2003             
                                                   (filed Jan. 6, 2000)                
                                Symposium Proceedings                                  
          Dale Newfield et al. (Newfield), “Scratchpad: Mechanisms for                 
          Better Navigation in Directed Web Searching,” Proceedings of the             
          11th annual ACM symposium on User Interface Software and                     
          Technology, 1998, pp. 1-8.                                                   
                                                                                      
               Claims 31-33 stand rejected under 35 U.S.C. § 103(a) as                 
          being unpatentable over Newfield, Gennaro and Jain.                          
               Claims 31-33 stand provisionally rejected under 35 U.S.C.               
          § 101 as claiming the same invention as that of claims 174, 175              
          and 176 of copending Application No. 09/594,786.                             
               We make reference to the answer (Paper No. 19, mailed March             
          23, 2004) for the Examiner’s reasoning and to the appeal brief               
          (Paper No. 18, filed February 17, 2004) and the reply brief                  
          (Paper No. 21, filed May 28, 2004) for Appellants’ arguments                 
          thereagainst.                                                                
                                       OPINION                                         
               With respect to the 35 U.S.C. § 101 rejection, we note that             
          Appellants have not contested the position presented by the                  
          Examiner (brief, page 9).  Accordingly, we sustain the 35 U.S.C.             
          § 101 rejection of the claims pro forma.                                     
               Appellants argue that, instead of visual generation of                  
          options upon designation of a hyperlink, Newfield only allows                
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