Ex Parte WASHINGTON et al - Page 6




              Appeal No. 1999-2641                                                                                        
              Application No. 08/644,119                                                                                  

                     does not even begin to suggest a preview window, much less a preview                                 
                     window in which a copy of the control is displayed in response to an editing                         
                     transaction for the control.  Although Cain in claim 1 does refer to the copying                     
                     of an object into system memory (the object therefore being undisplayed), the                        
                     copying takes place in response to user input requesting copying, not user                           
                     input requesting an editing transaction, See Cain column 20, lines 60-65.  In                        
                     Cain, selecting an object for an editing transaction allows the user only  to                        
                     directly edit the selected object.  The selection of an object for an editing                        
                     transaction in Cain does not cause automatic display of a preview window                             
                     or automatic display of a copy of the object.                                                        
                     We agree.                                                                                            
                     In fact, referring to the portion of Cain cited by the examiner, appellants                          
              contend that Cain teaches nothing more than the prior art over which the instant                            
              claimed subject matter is an improvement and that the cited portion discloses only that                     
              objects are placed in forms and the object’s properties are then edited through a pop-up                    
              menu and a property window.  Again, we agree.  There is nothing in the cited portion of                     
              Cain, or any other portion of Cain, as far as we can tell, that suggests the claimed                        
              “preview window in which is displayed the copy of the control in the preview window.”                       




                     The examiner’s response is that the instant claims are broad in nature and that                      
              the claim requirement of displaying a copy of the control in a preview window wherein                       
              the copy is automatically displayed in the preview window in response to a user input                       
              selecting a control for an editing transaction “can be interpreted as simply in the                         
              computer-implemented method for editing a control in a computer system in which the                         

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