Appeal 2007-1696
Application 10/230,745
stating that Poynor discloses a substitute edit request for one or more
characters that differs from the edit operation requested by the user (Br. 6).
The Examiner’s position is that Poynor’s approach, in which the computer
system suggests that the user edit subsequent instances of a selected text
string in the same manner as that selected, meets the claim limitation
(Answer 8). The Examiner’s stated rationale is that the suggested edits
differ from the original edit because they are concerned with characters
different (in position, if not in content) from those originally selected by the
user (Answer 8). Appellants argue that Poynor suggests edits to other
instances of the same characters that appear elsewhere in the document (see
FF 5), but gives no hint of doing anything other than making the requested
edit to the characters being edited by the user exactly as the edit is requested
by the user (Br. 6).
We agree with Appellants. The claims recite (a) “creating a substitute
edit request” (b) “for the one or more characters” (c) “that differs from the
edit operation requested by the user.” Giving these terms their broadest
reasonable interpretation, the system of Poynor teaches sub-element (a), in
that its suggestions to edit other instances of the text string selected by a user
(FF 5) do constitute at least potential edits of a part of the document
different from the particular part the user selected. Sub-element (b), “for the
one or more characters,” refers back to the earlier limitation of the user’s
request “to edit one or more characters.” “The” one or more characters can
thus only mean the particular, exact characters the user chose to edit. If, as
argued by the Examiner, one reads “substitute edit request” to cover the
other instances of the same text string in other places in the document, such
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