Appeal No. 97-0171
Application No. 08/187,290
combination in the answer or in the final rejection. The final rejection merely concludes on
page 6 that the
editing would “allow[s] the operator to easily insert a line of music scores, or any other
important information (such as notes, modifications, memos, etc.) into the original
document.” Alternatively, Mihm does not provide motivation for this type of editing. Mihm
merely teaches the skilled artisan to append a bar code to a document which did not
previously contain a bar code.
The Examiner states the teachings of Mihm as follows:
Another difference is that both Duthion and Bockholt fail to disclose the claimed
editing system, the edited text data translator, and the printer for printing the edited
symbol data. Mihm et al., on the other hand, disclose all of the missing features.
Mihm et al. disclose a method and an apparatus for inserting graphical data into a
page of document and then prints the edited document. According to Mihm et al.,
the system generates graphical symbols from the editing text, insert these symbols
into a document page, and then sends the edited document page to a printer for
printing (see the abstract and any other corresponding section). This system allows
a quick and a reliable method for updating and editing information. It would have
been an obvious expedient for one with ordinary skill to incorporate an editing
system and the associating means and functions into Duthion/Bockholt et al.'s
system. The motivation is that it allows the operator to easily insert a line of music
scores, or any other important information (such as notes, modifications, memo,
etc.) into the original document. (Emphasis added.) (See answer at pages 5-6.)
Upon close review of the Mihm reference, we do not find that Mihm teaches the
editing of the information content of the original document, as discussed above. Rather,
Mihm merely discloses a system for “inserting bar code graphics information representing
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