Ex parte DUKE-MORAN et al. - Page 6

          Appeal No. 97-0628                                                          
          Application 07/992,428                                                      

          The examiner cites to column 42, line 65, to column 43, line 2,             
          as evidence that Biles discloses categorizing and associating               
          keywords with predetermined topics (answer at 5).  However, the             
          referenced portion of Biles refers to descriptor phrases which              
          describe the significance of a corresponding topology number                
          representing a topic.  In column 10, lines 30-32, Biles states:             
          "The Descriptor field 11 is a sixty-character alphanumeric                  
          phrase which describes the topic."  The descriptor phrases                  
          are not probable or anticipated text words in an article.                   
               In response to the appellants' pointing out that the                   
          descriptor phrases merely describe a predetermined topic and thus           
          are not the keywords in the context of the claimed invention, the           
          examiner stated (answer at 6):                                              
               The Examiner respectfully disagrees because Biles                      
               teaches a data storage and retrieval system that                       
               facilitates collecting, cataloging, storing, searching,                
               locating, querying, classifying, retrieving and                        
               displaying information regarding all aspects of human                  
               thought and endeavor.  The system uses topology number                 
               to search the composite Catalog Data Base, which is                    
               self-indexing catalog that identifies the topics for                   
               which Subject Data Base records exist, to select the                   
               records related to the topics in question.  Therefore,                 
               Biles must discloses the claimed categorizing and                      
               associating the keywords with one of the predetermined                 
          The examiner's position is without merit.  It is based on mere              
          speculation and generalities, rather than specifics in the cited            


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