Appeal No. 1999-2641
Application No. 08/644,119
in the GUI and providing facility for cutting and pasting object while preserving
any attach properties and methods [sic] [answer-page 4].
This is exactly the reasoning employed by the examiner in related Appeal No.
99-2615 and here, as there, we find that the examiner has failed to establish a prima
facie case of obviousness with regard to the instant claimed subject matter.
Independent claims 18, 36, 43, and 44 contain many elements, yet the examiner
merely alleges that these elements are present in Cain without specifically pointing out
where such elements are found. For example, with regard to claim 18, the examiner
alleges that all of the elements are in Cain except for the step of displaying a copy of
the control in the preview window in response to selecting that control for an editing
transaction. However, the only specific reference to Cain is to column 9, lines 5-67, and
to Figures 4A-4F. The examiner does not specifically correlate the claimed elements to
particular portions of column 9 of Cain.
We have reviewed the portion of Cain cited by the examiner and we find nothing
therein about “displaying a preview window on the display screen, wherein said preview
window is automatically displayed in response to said user input selecting said control
for said editing transaction.” We recognize that the examiner relies on Li for the display
of a copy of a control in a preview window in response to selecting the control for an
editing transaction. However, the examiner’s rationale appears to rely on Cain at least
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