Ex Parte Dacosta - Page 10



          Appeal No. 2006-2208                                                        
          Application No. 10/782,265                                                  

               Upon a review of IBM-TDB and considering the arguments                 
          presented, we find ourselves convinced by Appellant that the                
          claim indeed requires the word selected from the closed caption             
          text, for which a list of related content is retrieved, be made             
          to flash.  Contrary to the Examiner’s position, the flashing of             
          the words in the closed caption text of IBM-TDB is merely based             
          on the type of emotion associated with how that word is spoken              
          and not on whether the word is selected by a user for receiving             
          information thereabout.  As the Examiner has failed to set forth            
          a prima facie case of obviousness, the 35 U.S.C. § 103 rejection            
          of claims 10 and 14-16 over Thomsen and IBM-TDB cannot be                   
          sustained.                                                                  
          With respect to the rejection of the remaining claims, we                   
          note that the Examiner further relies on other prior art                    
          references for the additional features recited in the dependent             
          claims.  However, the Examiner has not pointed to any convincing            
          rationale in modifying the combination of Wasilewski, Isoe and              
          Brodsky or the combination of Thomsen and IBM-TDB with the                  
          teachings of these references that would have overcome the                  
          deficiencies of the applied prior art as discussed above with               
          respect to claims 1 and 10.  Accordingly, we do not sustain the             
          35 U.S.C. § 103 rejection of claims 3, 4, 7 and 9 over                      
                                         10                                           




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