Ex parte WILLIAM S. MILLER - Page 6




          Appeal No.  94-1490                                                         
          Application 08/135,833                                                      


          Canon article's UNDO key function in the manner of an "End" key             
          when the cursor is at a position other than the last character              
          position and, when operated again, to delete the displayed last             
          character and move the cursor back one position.  As a result, we           
          will not sustain the rejection of any of the appealed claims over           
          the Canon article.                                                          
                    Turning now to the second ground of rejection, Figure 4           
          of Kobayashi, the principal reference, shows a communication                
          console 40 including a display device 42 and a keyboard portion             
          47, which does not include an Undo key.  As evidence of the                 
          obviousness of providing Kobayashi's console with an Undo key,              
          the examiner alternatively relies on the Undo keys disclosed in             
          Kaufman (col. 6, line 63 to col. 7, line 2), Hahn (col. 11, lines           
          1-14), and DeAguiar (col. 23, lines 3-31 and col. 27, lines 60-             
          63).  However, as none of the Undo keys disclosed in these                  
          references perform the claimed functions, the examiner again                
          argues that it would have been obvious to use the Undo key to               
          perform the functions of a known End, Delete, and Space Bar keys.           
          This rejection accordingly fails for the same reason as the                 
          rejection based on the Canon article, i.e., the absence of any              
          apparent motivation to combine the teachings in a manner that               
          satisfies the requirements of the claim.                                    

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