Ex parte PASCOE - Page 4




          Appeal No. 97-1355                                                          
          Application 08/072,826                                                      

               The examiner incorrectly found (answer at 5), however, that            
          aside from the absence of selection of a scrubber container, the            
          only difference between the claimed invention and Petaccia is the           
          claimed invention's dropping of one container into another.  The            
          pertinent limitation of claim 1 is this: "dropping said scrubber            
          container onto at least one other user selected container                   
          displayed on the computer system, said at least one other                   
          container having stored therein a plurality of documents."  The             
          appellant has not simply claimed the dropping of one container              
          into another.  Instead, the claimed invention requires the                  
          dropping of a particular kind of container, the "scrubber                   
          container" which is associated with a predefined user designated            
          criteria for deletion, into a container containing documents.               
               The examiner has overlooked an important difference between            
          the claimed invention and Petaccia.  In the claimed invention,              
          the predefined user designated criteria for deletion is a                   
          characteristic of and associated with the scrubber container.  As           
          claimed, a user first selects the scrubber container and then               
          drops the scrubber container into a document holding container.             
          When that occurs, the system automatically searches for documents           
          satisfying the criteria for deletion.  In contrast, Petaccia does           
          the reverse as will be explained below.                                     


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