Appeal No. 1997-1012
Application No. 08/115,937
Claims 1, 3, 4, 8, 11, 13, 14, 18, 21-22, 24 and 28 stand rejected under 35 U.S.C. §
103 as being unpatentable over Kawai in view of Strong and Cannon. Claims 10, 20 and
30 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kawai, Strong and
Cannon in view of Katz.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and the
appellants regarding the above-noted rejections, we make reference to the Examiner's
answer (Paper No. 16, mailed April 25, 1996) for the Examiner's complete reasoning in
support of the rejections, and to the appellants’ brief (Paper No. 14, filed February 29,
1996) for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the Examiner. As a consequence of
our review, we make the determinations which follow.
Assuming arguendo that the combination is proper, we do find that the Examiner
has not set forth a prima facie case of obviousness. The Examiner has set forth that
the prior art applied against the claims teaches the claim limitation with respect to the
“thesaurus means for expanding the list of search descriptors by including equivalent
words for the search descriptors.” The Examiner argues that Strong teaches this claim
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