Ex Parte SHINAL - Page 9




          Appeal No. 2002-1868                                                         
          Application 09/059,033                                                       

          Claim 10                                                                     
               Claim 10 recites: "The method of claim 1, wherein applying              
          commands further comprises: storing information for the command              
          that is used to produce a macro corresponding to the command."               
               The examiner admits that Yuasa does not disclose this                   
          limitation (FR6; EA7-8).  The examiner finds that Dwyer teaches              
          this limitation because the transfer DAT tape to album icon 33d              
          calls a macro that performs the function (FR6; EA8) and concludes            
          that it would have been obvious to store information for the                 
          command that is used to produce a macro in Yuasa because, "[b]y              
          doing so, the system would enhance and provide a friendly tool to            
          end users in terms of information storage while preforming [sic,             
          performing] another task" (FR7; EA8).                                        
               Appellant argues that the examiner admits that Yuasa does               
          not describe claim 10 and Dwyer's discussion pertains to a tool              
          that transfers images in digitized format to an album and "[t]his            
          does not suggest information used to form a macro" (Br8).                    
               The examiner expands on the teachings of Dwyer (EA23-24),               
          but we do not consider this to address appellant's argument.                 
               We do not understand the examiner's rationale or how the                
          macro in Dwyer corresponds to the claim limitation of storing                
          information that is used to produce a macro.  The statement of               
          motivation does not provide motivation for the specific                      
          modificaton, but is merely a general benefit to be achieved.                 

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