Ex parte BENDER et al. - Page 6




         Appeal No. 1998-1853                                                      
         Application No. 08/397,292                                                


         conclude that the                                                         
         examiner has not made out a prima facie case in rejecting the             
         claim.  We find that the examiner does not explain what                   
         constitutes the claimed different uses of the computer                    
         solutions in Dworkin and how the selection of a use provides a            
         display of the solution subset for that use.  If the examiner             
         considers various vendors (Figure 1) as the various users,                
         then the                                                                  







         selection of a vendor displays a menu which again requires an             
         input from the user.  Without the input from the user,                    
         Dworkin’s                                                                 
         software program does not proceed further.  We are at a loss              
         to                                                                        
         understand how the examiner meets the claimed limitation of               
         “means, responsive to user selection of one or more of said               
         uses for identifying a subset of said computer solutions                  
         corresponding to the selected uses.”  We agree with                       
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