Appeal No. 2003-0637
Application No. 09/103,414
entire generation process. From our review of the teachings of Lin, we agree that Lin
does not teach or suggest “updating without direct manual intervention the entry in the
TOC document in response to an edit to the selected part of the target document” as
required by independent claim 1.
Throughout the reply brief appellants argue that all of the claim limitations are
not met and that the examiner has not provided a convincing line of reasoning for
combining the various teachings. (See reply brief at pages 2-5.) We agree with
appellants that the examiner has found various terms and concepts in appellants’
claimed invention, but the examiner has not provided a convincing line of reasoning to
modify the separate teachings and to combine those modified teachings to arrive at the
invention recited in independent claim 1. Therefore, we will not sustain the rejection of
independent claim 1 and its dependent claims. With respect to the examiner’s reliance
upon the teachings of Sotomayor and DeRose for dependent claims, we do not find
that the teachings of Sotomayor and DeRose remedy the above noted deficiencies.
Similarly, we do not find that the examiner has established a prima facie case of
obviousness of independent claim 13 and its dependent claims.
With respect to independent claim 20, we find similar deficiency in the
examiner’s prima facie case of obviousness and do not find that the teachings of
DeRose remedy the above deficiencies. Therefore, we will not sustain the rejection of
independent claim 20 and its dependent claim.
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