Ex Parte PAULSEN et al - Page 7




             Appeal No. 2000-0810                                                                                     
             Application 08/699,412                                                                                   

                    Accordingly, it is without adequate basis for the examiner to find that “Kucera is                
             directed to mathematically determining the genre of a document based on the tallying                     
             [of] the number of familiar words in a body of text.”  The scope and content of Kucera                   
             has been misstated by the examiner.                                                                      
                    Secondly, each of claims 1, 8 and 16 requires a plurality of tables each of which                 
             containing a selection of most frequently used words in a respective candidate                           
             language.  With regard to this feature, the examiner relied on Kucera’s teaching of only                 
             a single list of frequently used words in the language in which the document is written.                 
             The examiner’s position is that a mere duplication of parts is well within the basic                     
             knowledge and skill possessed by one with ordinary skill in the art.  That view is without               
             merit, as applied to the situation here.                                                                 
                    The examiner has articulated no reason for one with ordinary skill in the art to                  
             extend Kucera’s system to having multiple lists of frequently used words, one list for a                 
             different candidate language as is required by the appellants’ claims.  An example of                    
             mere duplication of the sort the examiner refers to would be using two shorter lists                     
             instead of one long list, or using three or four bolts instead of two bolts to fasten two                
             plates together.  Here, the idea of having multiple word tables where each word table is                 
             associated with a different candidate language and stores a frequently used word                         
             belonging to that candidate language cannot be regarded as a mere duplication of                         
             parts, because no structure initially exists in Kucera’s system for processing documents                 
             in a second candidate language.  Where there is nothing to begin with for a second                       
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