Ex Parte Keohane et al - Page 10


               Appeal No. 2006-3121                                                                         
               Application No. 10/165,083                                                                   


                      For at least the above reasons, we will sustain the examiner’s rejection of           
               independent claims 1, 17, 23-25, and 29-31.  Since appellants have not                       
               separately argued the patentability of dependent claims 2, 4, 6-8, 10, 18, and 20-           
               22, these claims fall with independent claims 1 and 17.  See In re Nielson, 816              
               F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987).  See also 37 CFR                      
               § 41.37(c)(vii).                                                                             
                      We will also sustain the examiner’s rejection of claims 3 and 5.2  The                
               scope and breadth of the term “window manager” does not preclude the                         
               windows-based functionality of Word to automatically request and extract “source             
               information” (footnotes and associated text) responsive to copy and paste                    
               operations as claimed.                                                                       
                      Regarding claims 9, 19, and 32-34,3 we find that the limitation calling for           
               “automatically setting up a footnote” is reasonably suggested by Word’s ability to           
               automatically initiate, assign, locate, and organize footnotes.  In short, the scope         
               and breadth of the claim language does not preclude such functionality.                      
               Therefore, we will sustain the examiner’s rejection of claims 9, 19, and 32-34.              
                      We next consider the examiner’s rejection of claim 31 under 35 U.S.C.                 
               § 101 as being directed to non-statutory subject matter.  The examiner argues                
               that the scope and breadth of the preamble of claim 31, particularly when read in            
               light of the specification, encompasses non-statutory subject matter in the form of          
               transmission-type computer readable media.  Specifically, the preamble of claim              
                                                                                                            
               2 Appellants indicate that claim 3 exemplifies the claims in this group [brief, page 15].    
               3 According to appellants, claim 9 exemplifies the claims in this group [id.].               

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