Ex parte SWARTZ et al. - Page 8




              Appeal No. 97-0171                                                                                         
              Application No. 08/187,290                                                                                 


              a complete zip code.”  (See abstract.)  Mihm does not disclose that the system edits the                   
              document or changes a bar code which is already in the document.                                           


                     The language of claim 1 requires that                                                               
                     the graphical symbol encoding data representing the original document                               
                     information . . .                                                                                   
                     an editing system connected to receive the document information data from                           
                     the translator and produce edited document information data;                                        
                     an edited document information data translator for translating the edited                           
                     document information data to edited symbol data; and                                                
                     a printer for printing the edited document information data as edited                               
                     document information on an edited document and printing the edited symbol                           
                     data as an edited graphic symbol on the edited document at a single                                 
                     location disassociated from the edited document information printed on the                          
                     edited document.                                                                                    
              If the system of Mihm were to read a bar code and edit the content thereof and generate a                  
              new bar code of the changed information, this would be a teaching of editing as set forth in               
              claim 1.  We do not find such a teaching in Mihm and the Examiner has not cited to any                     
              portion of the reference beyond “(see the abstract and any other corresponding section).”                  
              (See answer at page 5.)   Furthermore, Mihm retrieves the document information in                          
              electronic form which is print ready and then evaluates the document for the zip code                      
              information and appends the bar code thereto.   (See Mihm at col. 20 and claim 1.)  Using                  
              the Examiner’s interpretation of Mihm, the document information could only be the actual                   

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