Ex parte ONO - Page 5




              Appeal No. 1997-0521                                                                                        
              Application No. 08/105,839                                                                                  

              remedy the deficiency in Tolin alone.  Hence, we cannot sustain the rejection of claim 2                    
              and its dependent claims 3-6, 9 and 10.                                                                     
                     With respect to claim 8, the examiner adds Bowles with Tolin.  Appellant argues                      
              that the deficiencies in Tolin alone are not remedied by Bowles.  We agree with appellant.                  
              While Bowles is the closest prior art to translating computer programs from  one computer                   
              language into another computer language, the examiner has not identified a conversion                       
              rule input means which produces a conversion model created by inputting statements in                       
              said original language, and inputting the functional equivalent of said original language                   
              statements in said target language.  Bowles is silent as to how the model and rules are                     
              generated, and is concerned with the multipass functioning of the translator.  Moreover, the                
              examiner has not provided any cogent line of reasoning why or how a skilled artisan would                   
              have known how to input the model and rules.  Nor has the examiner provided any                             
              suggestion or motivation to combine the teachings beyond the motivation to convert plural                   
              statements into singular                                                                                    
              statements.  (See answer at page 8.)  Therefore, we cannot sustain the rejection of claim 8                 
              under the combination of Tolin and Bowles.                                                                  
                                                     CLAIMS 11-15                                                         

                     Appellant argues that the examiner has not identified the basis of the rejection of                  
              claims 11-15 in the final rejection.  (See brief at page 11.)  We agree with appellant.  The                
              examiner is under a duty to set forth the grounds upon which the claims are denied                          

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