Ex parte STEPHEN P. CAPPS et al. - Page 6




          Appeal No. 94-3603                                                           
          Application 08/001,121                                                       

          application file; and (4) claims 33-36, which are directed to                
          apparatus in means-plus-function language.  The examiner's                   
          statement that appellants have failed to present arguments in                
          support of the separate groups (Examiner's Answer, page 2) is in             
          error for the reasons stated by appellants (Reply Brief, page 3).            
          Nevertheless, since the examiner generally addresses the claim               
          limitations, we decide the case rather than remanding it.                    

          Obviousness                                                                  
               Appellant argues that Kita fails to teach nearly every                  
          element of the claims but limits the discussion to a few                     
          significant elements (Brief, page 10):  "Specifically, the patent            
          to Kita et al. fails to reasonably suggest the following elements            
          of all the claims:  (1) 'executing a selected search' (global or             
          local) as detailed in the claims, and (2) 'receiving a search                
          string selection input by interaction of a pointer with the                  
          display screen."  With respect to limitation (1), we note that               
          independent claim 20 recites only a string search, not a global              
          or local string search.  With respect to limitation (2), we note             
          that independent claim 33 does not recite "receiving a search                
          string selection input by interaction of a pointer with the                  
          display screen" but does recite a string search.                             



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