Ex parte SHWARTS et al. - Page 23




          Appeal No. 97-1223                                        Page 23           
          Application No. 08/147,143                                                  


          miniature representation of the marked page.  (Appeal Br. at                
          13.)                                                                        


               We find the references would not have suggested the                    
          representation of bookmarks of claim 32.  The claim recites in              
          pertinent part “the bookmark buttons are represented in the                 
          navigation dialog box as miniature copies of the pages with                 
          which they are associated.”  (Appeal Br. at 6.)  Comparison of              
          the claim language to the references’ teachings evidences that              
          the references would not have suggested the claimed                         
          representation.  As aforementioned, one of ordinary skill in                
          the art would have understood Slate’s bookmarks to be                       
          represented by an icon or name.  Neither representation,                    
          however, would have suggested a miniature copy of a page.  For              
          the foregoing reasons, the examiner failed to show the                      
          references would have suggested representing a bookmark button              
          as in claim 32.  Accordingly, we find the examiner’s rejection              
          of this claim does not amount to a prima facie case of                      
          obviousness.                                                                










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