Ex Parte PAPIERNIAK et al - Page 14




          Appeal No. 2002-1844                                                         
          Application 08/975,428                                                       

          the online access log and the telephone service access log can be            
          said to be transformed and then stored back in the data storage.             
          The data in the access logs are not changed or transformed in any            
          way; the program just uses the data in the logs.  And, as stated             
          in connection with claim 1, we do not find the steps of parsing,             
          categorizing, indexing, and formatting to be obvious or inherent             
          in Hyodo.  Accordingly, we conclude that the examiner has failed             
          to establish a prima facie case of obviousness as to claim 16 and            
          it is not necessary to address the rest of the limitations or the            
          rest of appellants' arguments.  The rejection of claims 16-22 and            
          33-35 over Hyodo is reversed.                                                

          Gerace                                                                       
               Appellants argue (Br23): (1) Gerace is nonanalogous art;                
          (2) there is no suggestion or motivation to modify Gerace as                 
          suggested by the examiner; and (3) even if Gerace were                       
          modifiable, it would still fail to disclose or teach all                     
          limitations of the rejected claims, especially step (b) of                   
          claim 1 and the mapping module searching for data of claim 16.               
               As with the rejection over Hyodo, the determinative issue is            
          whether the functions of "parsing, categorizing, indexing, and               
          formatting the data elements" in claim 1 are inherent in Gerace              
          and would have been obvious, and whether the "transforming"                  
          function of the mapping module in claim 16 is inherent or would              
          have been obvious.  As with the rejection over Hyodo, we assume              
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