Ex parte BEER et al. - Page 7




          Appeal No. 97-2538                                                          
          Application 08/280,907                                                      

               Having identified the limited space within Fleming’s                   
          dispenser object icon 27 as the template area pane which                    
          creates template objects from any object copied into it, the                
          examiner has identified no empty space within that template                 
          area pane into which an object from within the pane can be                  
          copied.  No explanation has been provided as to why one with                
          ordinary skill in the art would have been motivated to do away              
          with Fleming’s object dispenser 27 and make a large section of              
          Fleming’s client area 19 an area pane capable of reproducing                
          objects dropped anywhere within it and objects copied from an               
          object that is already within the pane.  Fleming’s feature of               
          dragging objects out of the object dispenser icon is                        
          insufficient to satisfy the specific copying features of the                
          appellants’ claimed invention, even assuming that Fleming’s                 
          objects are template objects.                                               
               For the foregoing reasons, the rejection of claims 1-10                
          and 12-21 under 35 U.S.C. § 103 as being unpatentable over                  
          Bloomfield ‘710, Bloomfield ‘911, and Fleming cannot be                     
          sustained.                                                                  





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