Ex Parte CARTER et al - Page 4



          Appeal No. 2001-0584                                                        
          Application No. 09/034,067                                                  

               We REVERSE.                                                            

               We do not agree with appellants’ argument regarding “finding           
          servers.”  While Janssen’s preferred embodiment relates to                  
          locally stored databases in a kiosk, the reference also suggests,           
          at column 8, lines 51-53, that the search system “may be utilized           
          on on-line services.”  We agree with the examiner that searching            
          on on-line services would inherently entail the finding of                  
          servers.                                                                    
               However, we do agree with appellants, and so will reverse              
          the rejection of the claims, that Janssen does not teach or                 
          suggest “assembling a package,” as claimed.  Janssen does produce           
          a package as a result of the search but since all of the packages           
          in Janssen appear to be pre-assembled, with the search merely               
          identifying the most favorable pre-assembled package, Janssen               
          cannot anticipate the claimed subject matter, including                     
          “assembling a package,” as claimed.                                         
               In accordance with the instant disclosure, and appellants’             
          arguments, “assembling a package” is interpreted as actually                
          constructing, or putting together, a package from separate,                 
          related items.  Since there is no “assembling” in Janssen,                  
          because the packages obtained as a result of the search are                 
                                         -4–                                          




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