Ex Parte MURRAY et al - Page 6




            Appeal No.  2004-0963                                                                             
            Application No. 09/384,088                                                                        

                   considered a single character.  For at least this additional                               
                   reason, Appellants respectfully submit that claim 1 is patentable                          
                   over Tateno in view of Halstead.                                                           
                   In accordance with the examiner’s position, it is noted that the                           
            examiner views Tateno as not teaching any part of the evaluating step b                           
            (as set forth in representative independent claim 1 on appeal  argued in                          
            the above-noted portions of the brief).  From our study of the reference,  it                     
            clearly focuses only upon searching through a tagged document for the                             
            location of any desired words rather than any specific characters                                 
            comprising words as is required such as in the comparison operation in  the                       
            evaluation step of representative claim 1 on appeal.                                              
                   Correspondingly, even the title of Halstead “Identification of words in                    
            Japanese text by a computer system” focuses only upon words and parts                             
            of words, such as morphemes (including prefixes, stems and postfixes as                           
            portions of words).  Halstead does not exclusively deal with any individual                       
            character comparisons.  The initial states in the abstract of Halstead’s                          
            patent emphasizes this as well as the discussion at column 3, lines 55-57                         
            which indicates that the invention in Halstead is concerned with word                             
            breaking for breaking a text string of Japanese into separate words and                           
                                                     -6-                                                      





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