Appeal 2007-1696
Application 10/230,745
as implemented in Poynor, then by definition the “substitute edit request”
does not apply to “the one or more characters” the user selected. Poynor thus
does not teach sub-element (b). Sub-element (c) calls for a different edit
operation than requested by the user. Poynor fails to meet this sub-element
as well, because Poynor’s suggestions prompt the user to make the same edit
operation he just made at another spot in the document (para. [0021],
[0022]).
The Examiner argues further that Appellants’ arguments regarding the
references’ failure to teach “a substitute edit for the characters that are the
subject of the user’s current edit request” or “making any edit that is not
requested by the user” are not relevant, because the features upon which
Appellants rely are not recited in the rejected claims (Answer 8, 9). We are
not persuaded by the Examiner’s position, because for the reasons noted
supra we believe Appellants’ arguments accurately reflect the content of the
claims.
We therefore find that neither Peck nor Poynor teach the claim
limitations at issue. Because the limitations appear in every claim, we
reverse the rejection of claims 1, 2, 4-7, 9, 10, and 12-24 under 35 U.S.C.
§ 103(a).
NEW GROUNDS OF REJECTION
Rejection of claims 10 and 17-20 under 37 C.F.R. § 41.50(b).
We make the following new grounds of rejection using our authority
under 37 C.F.R. § 41.50(b).
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