Ex parte IRVIN R. STRAUSS, et al. - Page 8

          Appeal No. 96-1534                                                          
          Application 07/888,991                                                      

          The Section 102 rejection of claims 25-30 is premised on                    
          the position that only one of the steps of the claims needs to be           
          satisfied for the claim as a whole to be met by Kuechler [answer,           
          page 14].  As we noted above, this position was staked out before           
          the claims were amended to read “any one of,” and the examiner              
          has not addressed the significance of this amendment.  Our                  
          interpretation is that the claims require that each of the                  
          substeps be capable of being carried out if the associated                  
          condition is satisfied.  The examiner has not identified where in           
          Kuechler a determination is made in response to a query regarding           
          the size of the database file and the decision to filter records            
          whenever the file is below a pre-selected size.  Since this step            

          will take precedence whenever the database file is below a pre-             
          selected size, an anticipatory reference must disclose this step            
          as being present.  Kuechler does not disclose this step.                    
          Since all the limitations of representative claim 28 are                    
          not fully met by the disclosure of Kuechler, we do not sustain              
          the rejection of claims 25-30 as anticipated by the disclosure of           
          We now consider the rejection of claims 25-30 under 35                      
          U.S.C.  103 as being unpatentable over the teachings of                    


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