Ex parte STEPHEN P. CAPPS, et al. - Page 9





               Appeal No. 94-3636                                                                                                  
               Application 07/889,660                                                                                              

                    The examiner points to figure 6 and states that "Appellant should refer to the descriptive                     
            portion found in column 6 [sic, 4], lines 9-42 of Kita et al. which continuously refer to the CRT                      
            display" (Examiner's Answer, page 15).                                                                                 
                    The examiner does not explain what in figure 6 corresponds to the claimed "indicators,"                        
            "corresponding file selection button," or where the indicators "show[] the number of hits in the file                  
            corresponding to the selection button," which makes our job of reviewing the factual correctness of                    
            the rejection very difficult.  Since Kita does not search the files for a search string, Kita does not                 
            determine the number of hits or display the number of hits.  For this reason, we find that the                         
            "displaying" limitation is not anticipated by Kita.  As previously discussed, the examiner erred in                    
            finding that the cover and page search "keys correspond to applicant's selection button" (Examiner's                   
            Answer, page 15).  Nothing in figure 6 or the discussion thereof discloses indicators corresponding                    
            to the cover and page search keys (the selection buttons according to the examiner) or indicators with                 
            numbers as recited.                                                                                                    
                    The anticipation rejection of claims 1 and 5-14 is reversed because Kita fails to suggest the                  
            following limitations of representative claim 1:  (1) "searching the content of each searchable record                 
            of each file that is associated with a selection button . . . for the search string"; and (2) "displaying              
            on the screen display a plurality of indicators, each having a corresponding file selection button, and                
            each showing the number of hits in the file corresponding to the selection button."                                    
                                                       REVERSED                                                                    



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