Ex Parte PAPIERNIAK et al - Page 15




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

          that the examiner equates "transforming" to "parsing,                        
          categorizing, indexing, and formatting."  The examiner admits                
          that these functions are not expressly taught in Gerace.                     
               Gerace discloses a method and apparatus for collecting and              
          analyzing information about Internet users, in particular, the               
          history of users viewing advertisements, including the number of             
          times viewed by a user ("hits"), the number of times selected for            
          further information by a user ("click through"), and/or the                  
          number of purchases initiated from display of the advertisement              
          to a user to provide for automatic targeting of audiences                    
          (col. 2, lines 35-52; col. 5, lines 26-40; col. 12, lines 11-15).            
          This information is stored in various objects, such as Ad Package            
          Object 33b (Fig. 5B, last four lines; col. 12, lines 7-21) and is            
          analyzed in various reports (col. 12, line 56, to col. 13,                   
          line 33).  With respect to step (c) of claim 1, the claimed "data            
          elements obtained in said step (b)" must refer to data elements              
          stored in the various ad packages.  However, as with the                     
          rejection of claim 1 over Hyodo, we fail to see how at least the             
          steps of "categorizing, indexing, and formatting the data                    
          elements" is inherent in Gerace: the data elements are already               
          categorized (e.g., "hit," "clickthrough," and "order" in Fig. 5)             
          and formatted and it is not apparent how indexing applies.                   
          Although the examiner is undoubtably correct that "parsing,                  
          categorizing, indexing, and formatting" were all well known in               

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