Ex parte SMILEY - Page 15




          Appeal No. 96-1898                                                          
          Application No. 07/921,826                                                  


               The issue here is whether Burns teaches a navigator                    
          connected to the database for enabling browsing among objects               
          and relationships independent of the database.  The examiner                
          contends that such browsing is taught by Burns, although the                
          examiner never explains where, in Burns, there is a teaching                
          of the “independent” limitation.  Appellant argues that Burns               
          merely suggests a database dependent browser but never                      
          elucidates as to why Burns is considered to be a database                   
          dependent browser as opposed to a browser independent of the                
          database.                                                                   
               We make no representation, one way or another, as to the               
          teaching of Burns since we will not sustain the rejection of                
          claim 23 under 35 U.S.C. 103 for technical reasons.  That is,               
          for reasons, infra, we make a new ground of rejection of claim              
          23 under 35 U.S.C. 112, second paragraph (as well as under the              
          first paragraph) and, as such, we will not speculate as to the              
          meaning of claim limitations in order to apply prior art.  In               
          re Steele, supra.                                                           






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