Appeal No. 2000-0580
Application No. 09/025,347
rejection does not provide any guidance as to what differences the examiner ascertained
between Corder and the claimed subject matter. Further, the examiner's comments in the first2
advisory action (Paper No. 8) to the effect that "Corder teaches all of the structural features of
the present invention" and that "it would have been obvious to one skilled in the art to use these
features in the order suggested by the applicant" are not particularly enlightening in this regard.
We find even more perplexing the examiner's explanation in the attachment to the second
advisory action (Paper No. 10) that
Corder teaches all of the independent structural features of the invention claimed
but fails to specifically recite the ability of these to perform the tasks suggested in
the functional language of the applicant's apparatus claims. However, the
invention of Corder is capable of demonstrating all of the specific tasks of the
invention claimed.
In short, the examiner's position with regard to the differences between the claimed subject
matter and the disclosure of Corder is not clear from the record. Our analysis of the
differences between Corder and the claimed subject matter follows.
Corder discloses a computer instructional system and method for improving
communication skills comprising a library of stored letters, words and phonetic sounds that
make up words, as well as their phonograms (symbols representing the sounds of the
language), which are used, inter alia, to instruct students in the syllabication of words (see
2In making a determination as to obviousness, after the scope and content of the prior art are determined,
the differences between the prior art and the claims at issue are to be ascertained. See Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
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