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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