Ex parte THOMPSON - Page 5




          Appeal No. 1997-0810                                                        
          Application No. 08/512,072                                                  

          and highlighting (lines 11 and 12).  For “simultaneously”                   
          highlighting, the Examiner adds Wroblewski to the combination.              
          (Answer-pages 4-6.)                                                         







                    Appellant agrees with the Examiner with respect to                
          the step of extracting and displaying being disclosed in the                
          APA, but takes issue with the determining step.  (Brief-page                
          4.)                                                                         
          Appellant states:                                                           
               Certainly for a manual operation an operator, if he                    
               takes the time to identify which bit number is being                   
               marked by counting the bits, can then refer to a                       
               printout of the format and determine what bits make                    
               up the segment of which the marked bit is a part.                      
               But the invention is not concerned with a manual                       
               operation, as is readily apparent from the                             
               specification.  Therefore Applicant submits that the                   
               APA does not teach or suggest the determining step                     
               as recited in claim 1.  (Brief-page 4.)  (Emphasis                     
               added.)                                                                
                    This argument fails at the outset because Appellant               
          admits the APA teaches “determining” but relies on the                      
          specification to avoid a “manual determination”.  Since the                 

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