Ex Parte Eisen - Page 5

               Appeal 2007-2514                                                                           
               Application 10/034,255                                                                     

               of references fails to teach or suggest including a hyperlink for each entry in            
               the reusable list, as recited in each of independent claims 1, 8, 15, 23, and              
               24.  Thus, another issue is whether the Examiner's proposed combination of                 
               references includes all elements of the claimed invention.                                 
                     The Examiner (Answer 4) admits that "Huang fails to explicitly                       
               disclose: receiving input from the user to create a reusable list of the                   
               selected entries and to store the list in a system clipboard in response to the            
               input received from the user."  The Examiner asserts (Answer 4) that                       
               Outlook 2000 teaches creating a reusable list by copying selected email                    
               entries.  Then the Examiner states (Answer 4) that Barnes teaches copying                  
               information to a clipboard to avoid disturbing the original.                               
                     Assuming that the combination of Huang and Outlook 2000 provides                     
               for creating a reusable list of selected entries, we find no reason why the                
               skilled artisan would copy that list to a system clipboard.  Barnes discloses              
               (Barnes 60) that in Windows, cutting information removes the information                   
               from its original location and places it on the clipboard, whereas copying                 
               information leaves the original alone and places a copy on the clipboard.                  
               Thus, Barnes does not suggest using a clipboard to protect the original, but               
               rather teaches that copying rather than cutting preserves the original.                    
               Nonetheless, even if the Barnes disclosure could be read as teaching that                  
               copying to a clipboard leaves the original document undisturbed, the claimed               
               invention (for each independent claim) requires including a hyperlink with                 
               each entry so as to link to "a current version of a document associated with               
               the hyperlink."  Thus, the claimed invention allows original documents to be               
               modified, which seems to conflict with the Examiner's reasoning of letting                 
               the original documents remain undisturbed.                                                 

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