Ex parte SHWARTS et al. - Page 24




          Appeal No. 97-1223                                        Page 24           
          Application No. 08/147,143                                                  


               Relevant to claim 33, the examiner notes Capps teaches                 
          scroll buttons 66a and 66b.  (Examiner’s Answer at 5.)  We                  
          find the references would not have suggested the button of                  
          claim 33.  The claim recites in pertinent part “the navigation              
          dialog box includes a button which when selected changes the                
          current page to the page that had most recently been displayed              
          before the current page.”                                                   


               Comparison of the claim language to the references’                    
          teachings evidences the references would not have suggested                 
          the claimed button.  Capps scroll buttons are not located in a              
          navigation dialog box.  The references would not have                       
          suggested such a location.  For the foregoing reasons, the                  
          examiner failed to show the references would have suggested                 
          the button of claim 33.  Accordingly, we find the examiner’s                
          rejection of this claim does not amount to a prima facie case               
          of obviousness.                                                             


               Regarding claim 34, the examiner rejects the claim under               
          the same rationale used to reject claims 1-13 and 39.                       
          (Examiner’s Answer at 7.)  We find the references would not                 







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