Appeal No. 1998-0630
Application 08/231,655
which suggests that their teachings should be combined in the manner set forth in the final Office action,"
and in particular there are no reasons why the ordinary artisan would apply the video merchandising
system teachings of Yourick to the e-mail messaging and sorting system of Scannell. We find that there
is no reasonable explanation in the Answer or any other office action, as to how or why the references
would be combined to achieve the invention of appellants’ claims 1 to 30. The examiner’s reliance on
various portions of the references (Answer, top of page 6) for motivation to combine them is misplaced.
Our review of these references indicates merely that Scannell (column 2, lines 28 to 31) suggests
automatic message sorting, Sheth (page 349) suggests filtering information using a positive/negative
system, Yourick (column 1, lines 50 to 53) teaches it is desirable to identify a given user’s interests, and
the Chang (column 1, lines 51 to 57) suggests weighting rules to sort information. None of the applied
references teach or suggest how or why the information access features of one reference should be
applied to the specific teachings of the other references which are directed to entirely different types of
information access.
Appellants argue (Brief, pages 8 to 10) that the rejection of claims 1 to 30 is improper because
the examiner has not adequately shown that the cited references teach or suggest each and every
element as recited in combination in the claims. We agree. The examiner has failed to meet the
requirements for an Answer set forth in 37 CFR 1.193(a) and in MPEP 1208 of stating where in the
references each specific limitation of appellants’ claims is found, identifying any differences in the claims
8
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