Ex Parte BINNIG et al - Page 9



          Appeal No. 2003-0750                                                        
          Application 09/310,650                                                      


          dependent claims 95, 96, 112, 113, and 116 (based on the                    
          combination of Nagao and Suda, we do not sustain these rejections           
          as well.  In addressing the limitations in these dependent                  
          claims, which are directed to various specific features such as             
          weighted pointers and input and output string processing, the               
          Examiner looks to Wical and Suda to remedy these deficiencies in            
          Nagao.  For all of the reasons discussed supra, however, the                
          Examiner has failed to establish a prima facie case of                      
          obviousness since we find no teaching or suggestion in Wical or             
          Suda that would overcome the innate deficiency of Nagao in                  
          disclosing the particular claimed feature of “hierarchically                
          arranged semantical units which are similar across hierarchies,”            
          a feature present in each of independent claims 56 and 109.                 
               Lastly, we also do not sustain the Examiner’s 35 U.S.C.                
          § 103(a) rejection of independent claim 98, as well its dependent           
          claims 99-108, in which Krawchuk is added to the combination of             
          Nagao and Wical.  We agree with Appellants (Reply Brief, pages 6            
          and 7) that Krawchuk, applied by the Examiner to address the                
          fractal database feature of independent claim 98, is directed to            
          a fundamentally different problem than that of the hierarchically           


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