Appeal No. 96-0542
Application 08/025,603
second process and the second information was the transfer
border. Finally, the examiner observed that the third process
was the determination by the second window in Peters if it
could accept the first information [answer, pages 10-12].
Appellants responded to the new reading of claim 1 on Peters
by pointing out what they perceived as major errors in the
examiner’s analysis of Peters [reply brief]. The examiner did
not respond to the reply brief.
We do not sustain the examiner’s rejection of
independent claim 1 for the same reasons basically offered by
appellants. The examiner’s analysis is based on the
obviousness of achieving what appellants have done rather than
on the specific recitations of the claims. In other words,
the examiner has really only demonstrated that performing
translations of data for compatibility between different
applications would have been obvious. When the specific
limitations of independent claim 1 are considered, however,
the examiner’s analysis suffers all the deficiencies observed
by appellants. We agree with appellants that even if the
examiner’s analysis is accepted at face value, the applied
prior art does not meet the recitations of independent claim
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