Ex Parte Rollins et al - Page 5



           Appeal No. 2006-2076                                                                     
           Application No. 09/747,651                                                               
           35 U.S.C. § 112, second paragraph.                                                       
                                   Rejections over prior art                                        
                 We need to address only the independent claims, i.e., claims                       
           1, 15 and 29.  These claims require that a user at a client                              
           requests from an intermediary an electronic document located at a                        
           first address at a server.  For this claim requirement the                               
           examiner relies upon Markus ‘042 (answer, page 4).                                       
                 Markus ‘042 discloses that an external entity (user)                               
           instructs a document browser to request a document from a server                         
           which returns the document to the browser (col. 3, lines 21-25).                         
           The user then activates a form autofill trigger located in the                           
           document, thereby causing the document browser to contact a                              
           selective proxy which contacts the same server, requests from the                        
           server the same document, fills in the document, and sends the                           
           filled-in document to the document browser which displays it to                          
           the user (col. 3, lines 25-44).                                                          
                 The examiner argues that “[t]he autofill trigger serves as a                       
           request for the document located at a first address on the                               
           document server because the trigger results in the document being                        
           retrieved” (answer, page 9).                                                             


                 The appellants’ claims do not merely require that a request                        
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