Ex Parte ORLOFSKY - Page 5




            Appeal No. 2000-0377                                                                         
            Application 08/777,841                                                                       

            the Examiner has not shown where Hotka teaches the limitation of                             
            "examining a group of the electronic circuits and identifying the                            
            type of each electronic circuit within the group" in claim 1,                                
            paragraph (b)(i).  It is argued that Yamada does not transmit                                
            data indicating the "type" of electronic circuit within the group                            
            as recited in paragraph (b)(ii), but only transmits data                                     
            indicating the "type" of push-button (round or square) which is                              
            to be displayed, and does not transmit "image-data corresponding                             
            to specific types" as recited in paragraph (b)(iii) (Br10-11).                               
            It is argued that the Examiner's rationale in the final rejection                            
            ("ease of information retrieval for the user") merely sets forth                             
            a supposed characteristic of the combination of references and                               
            does not provide a motivation for combining the references in the                            
            first place (Br14).  Moreover, it is argued that the "ease of                                
            use" rational is purely conclusory (Br14-15).  Appellant further                             
            argues that providing transmission of information in Hotka is not                            
            valid motivation since Hotka already provides this function                                  
            (Br15) and such modification would change the principle of                                   
            operation of Hotka (Br16).                                                                   
                  Hotka discloses that a communications node (shown as 1633 SX                           
            in figure 1) includes a bay that consists of one or more shelves                             
            of various subcomponents.  For example, the OFFICE02 node 14                                 
            (figures 1 and 2), as shown in figure 3, has Bay 2, designated by                            
            block 72 and includes the shelves that bracket 78 bounds, and                                

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