Ex parte JAIN - Page 13




          Appeal No. 97-2477                                                           
          Application 08/212,908                                                       

          paths as defined by the appellant.  Furthermore, the examiner                
          has not explained how or whether such data path information                  
          and control path information are merged in Watkins or both                   
          included in a defined attribute for a descriptor icon.  As a                 
          whole, the examiner’s position is largely disjointed and does                
          not put together a persuasive case for prima facie                           
          obviousness.  Note further that Dunn and Watkins are separate                
          prior art references and the examiner has not put forth                      
          sufficient reasons to combine their teachings insofar as the                 
          claim features of data paths and control paths are concerned.                
               The appellant has also set forth a facially plausible                   
          explanation as to why the state table 318 in Watkins is not                  
          attributable to any particular icon and why data path and                    
          control path information in Watkins do not appear to be merged               
          or both included as an attribute of an icon.  With regard to                 
          those arguments of the appellant, the examiner has provided no               
          answer.  It should also be noted that claim 1 requires the use               
          of a pull-down menu which is activated by icons which have                   
          been placed upon a graphical display to define a list of                     
          attributes to the icons.  No such pull-down menu in the                      
          applied prior art has been properly identified by the                        

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