Application No. 2006-3067
Appeal No. 09/952,953
claim 21 as representative of all the claims subject to this rejection. Appellants argue
that although they have acknowledged that multifunction printing devices were known in
the art, that send and copy options have been displayed on such devices through
scrolling menus, and that overlapping menus in general are old, the examiner has failed
to make specific factual findings with respect to the motivation to combine the applied
references. Appellants argue that neither Nomura nor Inoue say anything about the use
of overlapping menus for the diverging menu trees needed in a multifunction device.
They assert that neither reference teaches the claimed second menus being displayed
in response to a send or copy option. Appellants argue that although Inoue teaches the
benefits of overlapping menus in general, this is insufficient to support the rejection
because Inoue does not contemplate the circumstance in which overlapping menus
could or should be used for diverging menu trees such as recited in the claimed
invention [brief, pages 5-7].
The examiner responds that appellants are attacking references for teachings that
they are not being relied on. The examiner notes that Inoue was cited only for its
teaching of displaying menus in an overlapping manner. The examiner also asserts that
this overlapping display would replace the display of the menu trees of the admitted
prior art. The examiner notes that navigation through the menu trees of the admitted
prior art would be improved through the use of Inoue’s overlapping menus for reasons
taught by Inoue [answer, pages 6-8].
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