Appeal 2007-2514
Application 10/034,255
the first issue is whether the language "the list can be" and "the list is able"
renders the claims indefinite.
As pointed out by Appellant (Br. 8-9), the language in question
describes a characteristic of the list, the ability to be pasted into another
document. The language does not imply an additional step to the method.
Further, the plain meaning of the language is clear. Therefore, we cannot
sustain the rejection of claims 1 through 25 under 35 U.S.C. § 112, second
paragraph.
Appellant contends (Br. 10) that the Examiner's rationale for
combining the references contradicts the claimed invention and, therefore, is
improper. Specifically, the Examiner asserts (Answer 4) that it would have
been obvious to copy a list from email to the clipboard because Barnes
teaches that copying data to the clipboard protects and preserves the original
files attached to the email so that the user can use those files without
damaging the original files. Appellant contends (Br. 10) that preserving the
original file is in direct contrast to the claimed "displaying a current version
of a document associated with the hyperlink, including any changes made to
the document subsequent to creating the reusable list," which appears in
each of independent claims 1, 8, 15, 23, and 24. One issue, therefore, is
whether the Examiner's rationale for copying the reusable list to the
clipboard contradicts the claimed invention.
Appellant further contends (Br. 11) that the combination of references
fails to teach or suggest all of the claimed elements. In particular, Appellant
contends (Br. 11) that the combination lacks creating the reusable list and
storing it in the system clipboard, as recited in each of independent claims 1,
8, 15, 23, and 24. Lastly, Appellant contends (Br. 13) that the combination
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