Appeal No. 2004-1413
Application No. 09/475,941
With respect to independent claims 7, 9 and 11, the examiner summarily includes
these claims as rejected under the same basis as dependent claim 4. We find that
independent claims 7, 9 and 11 do not recite the same two-step process of how to
manipulate the open windows and bring one to the top to determine if an auto-fill
function is desired to be performed and to perform the auto-fill. Here, the two steps and
apparatus performing these two steps are for generating a list of selectable elements
and designating one of these selectable elements to be moved to the top of the
desktop. While the examiner does not specifically address this difference in these
claims from independent claim 1, we find that Root alone teaches the invention recited
in independent claim 7. Specifically, Figures 6A-D teach that there may be multiple
open windows and the pull down menu 640 for the task list which designates the
application for insertion of data and the user selecting the focus button 635 which
moves the target application window to the top of the desktop. (See Root at columns
6-7.) Therefore, we find that Root teaches and fairly suggests the invention as recited
in independent claim 7. Since independent claim 7 does not recite a step or element
that realizes an auto-fill function, we find that the preamble merely sets forth an
intended field of use limitation which does not limit the claimed apparatus. Similarly, we
find that Douglas teaches the invention of independent claim 7 for the reasons set forth
by the examiner in the discussion of independent claim 1. While we do not find that
Douglas teaches or suggests the invention as recited in independent claim 1, we find
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