Appeal No. 2002-1079
Application No. 09/124,540
agent. In the current version of Object Lens, two other kinds of automatic
triggers are available: Daily at Midnight, and On the Hour.
Malone col. 11, ll. 6-17.
After consideration of the entirety of the Malone reference, we agree with
appellants that Malone fails to anticipate (i.e., fails to disclose each and every limitation)
of the claimed invention. Malone discloses that, upon retrieving new mail, a link may be
inserted into a New Mail folder. However, the mere “fact that new messages are
stored,” as alleged by the rejection, fails to disclose or suggest the step of “permitting a
user to create an information node in the overlay representing the digital information
object.” Although a link may be automatically, or manually, placed into a folder that
relates to a new mail message, the examiner has not shown any further step disclosed,
expressly or inherently, by Malone permitting a user to create an information node in
the folder that represents the digital information object (i.e., the mail message).
Moreover, we agree with appellants that Malone’s disclosure of identifying newly arrived
mail does not teach, as presently claimed, determining if a digital information object
includes at least one concept in common with concepts expressed in at least one
concept node.
The statement of the rejection against independent claim 10 (Final Rejection at
6) asserts that claim 10 “is essentially a combination of claims 1, 5 and 6,” and does not
further address the limitations of claim 10. Claim 10 is clearly different in scope from
the invention of claims 1, 5, and/or 6. We agree with appellants that the rejection fails
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