Ex parte MILLER et al. - Page 9




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


          Furthermore, one would expect that window 14 of Diefendorff would           
          be displayed without graphical user interface element 12 in the             
          ordinary course of computer usage and, thus, the user-selected              
          representation would not be displayed within a graphical user               
          interface element 12 in that case.                                          
          Claim 8 requires means for displaying said user-selected                    
          representation within said graphical user interface element                 
          whenever said graphical user interface element is displayed.  This          
          requirement is not met in Diefendorff essentially for the reasons           
          that the corresponding limitation in claim 1, considered above, is          
          not met.  It is not established that a user-selected                        
          representation is displayed within element 12 whenever the element          
          is displayed.  In fact, Diefendorff teaches away from such a                
          function in that the reference teaches at column 1, lines 32-34,            
          “Sometimes it is desirable for an operator to be able to observe a          
          part of a particular window which is otherwise covered.”                    
          Claim 8 is not rejected as obvious over Diefendorff and the                 
          examiner has provided no rationale why one of ordinary skill in             
          the art would have modified the teachings of the reference to               
          provided the above means for displaying.                                    



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