Ex parte DUKE-MORAN et al. - Page 7

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

          prior art reference.  The examiner has failed to point to                   
          anything specific in Biles which discloses or teaches                       
          categorizing and associating keywords with predetermined topics.            
          Even if Biles discloses such a feature, the examiner has failed             
          to carry his initial burden in pointing out where and how the               
          prior art meets the claimed feature.  We decline to conduct                 
          examination in the first instance to fill in the gaps and to make           
          up for deficiencies in the rejection.  Thus, on this record, the            
          examiner has failed to demonstrate that Biles discloses                     
          categorizing and associating keywords with predetermined topics.            
               Even if we, for argument purposes, assume that “keyword” can           
          be met by the descriptor phrase in Biles, the examiner still has            
          made reversible errors in connection with several other features            
          of the claimed invention.                                                   
               With respect to claim 6 which requires that the list of                
          topics include age level information for individuals, the                   
          examiner concluded, without citing any supporting evidence, that            
          "the list includes age level information for individuals would              
          have been an obvious [design] choice to implement in order to               
          meet the user need" (answer at 4).  Without the examiner's having           
          cited any evidence to support his view, we find the examiner's              
          position to be mere speculation and without merit. The same is              


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