Ex parte BERRY et al. - Page 4




          Appeal No. 96-1396                                                          
          Application 08/176,335                                                      


          rebuttal set forth in the examiner’s answer.                                
          It is our view, after consideration of the record                           
          before us, that claims 1-15 particularly point out the                      
          invention in a manner which complies with 35 U.S.C. § 112.  We              
          are also of the view that the rejection as formulated by the                
          examiner does not support the obviousness of the invention in               
          the manner suggested by the examiner.  Accordingly, we reverse              
          the examiner’s rejections.  Nevertheless, we add a new                      
          rejection of independent claims 1, 6 and 11 using our                       
          authority under 37 CFR § 1.196(b).                                          
          We consider first the rejection of claims 1-15 under                        
          the second paragraph of 35 U.S.C. § 112.  The examiner’s                    
          rejection states the following:                                             
                        The recitation of "each of said                              
                         actionable objects represented by a                          
                         different icon, having data and                              
                         procedural information and being                             
                         operable independent of said menu bar                        
                         icon; and means for sending a                                
                         selection message to the one or more                         
                         associated actionable objects in                             
                         response to operator selection of the                        
                         menu bar icon" in claims 1, 6 and 11                         
                         is confusing since if actionable                             
                         objects are operable independent of                          
                         the menu bar icon, the actionable                            
                         objects will not have response to the                        
                         selection of the menu bar icon                               
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