Ex parte AMMIRATO et al. - Page 6




         Appeal No. 1999-2076                                                    
         Application No. 08/597,794                                              


         identifying changes between different versions of user-named            
         blocks of cells and we find nothing within the teachings of             
         any of the three applied references remotely suggesting                 
         identifying changes between different versions of such cells.           
         Nor do we find the “automatic” nature of the claimed invention          
         suggested by any of the applied references.  The instant                
         claims require “automatically determining by the system                 
         cells...which have been changed...”  The examiner’s response            
         is to merely allege that automation of a manual process is              
         “inherently obvious” [answer-page 5].  However, the instant             
         claims do not merely require simply that a process heretofore           
         applied manually be applied automatically.  The claims in               
         question require a specific tracking of different versions of           
         a data model “automatically” and that it is “automatically”             
         determined “by the system” that cells of the data model have            
         changed.  If this is obvious over the applied references, the           
         examiner must set forth a coherent rationale in more detail             
         than that it is “inherently obvious” to do so.                          
              We have not sustained the rejection of claims 1-34 under           
         35 U.S.C. 103 and we have remanded the case back to the                 
         examiner for a determination as to whether the terminal                 
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