Appeal No. 2002-1324
Application No. 09/024,111
It is the examiner’s position that the abstract, title and column 1, lines 8-35 of
Schwartz teaches the subject matter of the preamble and the “retrieving the file” of
instant claim 1. With regard to the claimed “generating a second set of program code
from the first set of program code,” the examiner alleges that this is “inherent” in
Schwartz. The examiner points to the “ripple effect” disclosure in column 1 of Schwartz,
and particularly refers to “changes to related documents.” Finally, the examiner
identifies column 1, lines 36-66, and column 2, lines 9-14, of Schwartz as the claimed
“associating the second set of program code with the file using a file attribute.”
While we appreciate the examiner’s efforts to particularly identify portions of
Schwartz allegedly corresponding to the claimed elements, we do not agree with the
examiner’s assessment. In particular, while the examiner apparently is equating the
data “files” of Schwartz with the claimed sets of “program code,” data files are not sets
of program code and, in our view, it is not reasonable to allege that they are identical.
Since Schwartz does not disclose any type of “program code,” it is unreasonable
to conclude that the reference discloses or suggests the claimed generation of a
second set of program code from a first set of program code. Moreover, the examiner’s
allegation of “inherency” is not well founded since inherency means that the alleged
function must, of necessity, occur. A finding of inherency cannot be based on
speculation and/or a finding that something might happen.
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