Appeal No. 1997-3580
Application 08/400,002
copied a file from one location to another and then deleted
the original file (or deallocated the first location) at some
later date.
Although we are of the view that claim 5 includes
within its scope subject matter which is probably not
patentable to appellant (or anyone else), we decline to make a
rejection under 37 CFR § 1.196(b) in this decision because of
the lack of a factual record to support this view. Any
appropriate rejection and the presentation of arguments and/or
evidence should be developed by appellant and the examiner and
not by us. We invite the examiner to consider whether the
broadest reasonable interpretation of claim 5 (and other
claims) covers an invention which is rendered unpatentable by
the conventional copying step of a file followed at any time
by the conventional deleting step of the file.
In summary, we have not sustained the rejection of the
claims under 35 U.S.C. § 103 based on the references cited by
the examiner and the rationale proffered by the examiner for
combining the teachings of these references. Therefore, the
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