Appeal No. 2004-2198
Application No. 10/047,925
combine Official Notice. It appears to us that the examiner has not set
forth any classic type of motivation to modify anything, merely that the
CACI fails to expressly teach the subject matter of claims 4-6.
The teachings at pages 4 and 5 of CACI Limited Home Page
themselves teach the modifiability of the subject matter referred to in
claims 4-6 recited in claim 1 on appeal, that is, the generation of the
tracing. Even though we recognize that the examiner’s position would
have been better expressed within 35 U.S.C. § 103 by the citation of an
additional reference, claims 4-6 identify methodologies and structural
elements to provide the tracing operation of method claim 1 on appeal.
The manner in which the examiner has chosen to articulate a rejection
within 35 U.S.C. § 103 of claims 4-6, although highly disfavored by us, is
coextensive with the manner in which appellant has chosen to disclose his
reliance upon prior art personal computers and well known prior art input
devices of these claims for the entry of the tracing operations that are only
generally taught in the reference. More specifically, maps are specifically
taught at pages 4 and 5 of the reference and even at the top of page 4
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