Ex parte MILLER et al. - Page 8




          Appeal No. 1997-4354                                                        
          Application 08/177,296                                                      


          window 14 is designated when a pointer is used to define a                  
          porthole area therein (column 5, lines 14-22).  A representation            
          of a desired feature within the selected area of window 14 is               
          displayed in porthole 16 and the graphical user interface element           
          12 is restored when it is brought back to the top of the display.           
          We agree with the examiner that the above subject matter of the             
          claim is anticipated by Diefendorff.                                        
          However, the last paragraph of claim 1 requires “displaying                 
          said user-selected representation within said selected area within          
          said graphical user interface element of said window whenever said          
          window is open”.  The reference does not meet this recitation               
          because it is not established that the user-selected                        
          representation in porthole 16 is disclosed as displayed within              
          element 12 whenever said window is open.  The disclosure at column          
          5, lines 25-27, of Diefendorff which                                        
          is relied on by the examiner to meet this limitation does not               
          establish that the user-selected representation is displayed more           
          than once and the examiner has provided no rationale why the                
          display of the type claimed would occur whenever window 14 is               
          opened.                                                                     



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