Appeal No. 96-1928
Application 07/504,679
combinability issue of the two major references, Vincent and
Heckel, and excluding the reasoning advanced by appellants
that Vincent teaches away from the combination, we reverse the
examiner's initial stated rejection under 35 U.S.C. § 103 and,
as such, the second stated rejection under 35 U.S.C. § 103
involving LisaList to reject additional claims.
From our detailed study of Vincent and Heckel, we find
ourselves in general agreement with these assertions made by
appellants in the brief and reply brief respectively:
The Examiner's prima facie case is defective.
The Examiner asserts without basis that Vincent not
being able to selectively expand fields is a
limitation of Vincent. Vincent makes no suggestion
that this is a limitation and the Examiner provides
no basis to suggest it is. As Vincent has the
capability with its Day Screen to expand and display
in full all fields simultaneously, there is no there
is no [sic] motivation to selectively expand fields.
When considered as a whole, Vincent teaches the non-
selectively expanding the display field.
Specifically, it teaches the Day Screen (Fig. 2)
which simultaneously displays all of the fields in
full including those compressed down to a single
character and the NOTE field which may only be
“partially” shown.
Thus Vincent's solution to the problem of showing
compressed fields is to display all fields at once.
Vincent's solution is a different solution to a
different field expansions problem from that taught
in the `857 patent. The Examiner asserts without
any basis that Vincent has a limitation which which
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