Ex Parte Kappel et al - Page 13



                Appeal 2007-0226                                                                                  
                Application 09/823,866                                                                            
                       Appellants argue that the Examiner's "statement regarding                                  
                combination and alleged motivation does not address the issue of limiting                         
                translation from one view to another if the at least two objects are address                      
                classes, as specifically recited in each of the subject pending claims"                           
                (Br. 13).  Appellants also argue that since Schmidt already provides                              
                bi-directional interoperability and there is no reason to add it (id.).                           
                       The Examiner's Answer does not respond to these arguments.                                 
                       We will not sustain the rejection.  The Examiner has not shown                             
                translation of "address classes" from one view to another.  The rejection                         
                concludes that "it would have been obvious to also represent address related                      
                functions by corresponding objects/classes" (Final Rejection 4) and then                          
                concludes that it would have been obvious to provide translation.  It is not                      
                clear that Foody discloses translation from one view to another, but, if so,                      
                there appears to be no reason why one skilled in the art would have had a                         
                reason to make such modifications to provide bi-directional interoperability.                     
                Accordingly, the rejection of claims 5, 10, 15, and 20 is reversed.                               
                       It is not clear that the limitation that "the at least two objects are                     
                address classes" in the instant claims is accurate.  The Specification                            
                describes that if there are no exported classes, "[t]he use of objects that                       
                address classes must then employ some form of translation from one view to                        
                another" (page 12, ll. 23-24).  This seems to say that "objects address                           
                classes" ("address" used as a verb) rather than "objects are address classes"                     
                ("address" used as an adjective).  Rather than enter a new ground of                              

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