Ex Parte GILLIHAN et al - Page 5




              Appeal No. 2003-0549                                                                   Page 5                 
              Application No. 09/149,408                                                                                    


                                                        OPINION                                                             
                     Our opinion addresses the claims in the following order:                                               
                     •       claims 1, 5-11, 15, 16, and 20                                                                 
                     •       claim 21.                                                                                      


                                            A. CLAIMS 1, 5-11, 15, 16, AND 20                                               
                     Rather than reiterate the positions of the examiner or the appellants in toto, we                      
              focus on the main point of contention therebetween.  The examiner asserts, "Coleman                           
              discloses . . . enabling a user to apply formatting changes to less than all of the plurality                 
              of pages of the copy (column 2, lines 54-57 and the abstract, lines 6-12) . . . free from                     
              changing the original document (rotating or copying the document) (column 3, lines 37-                        
              40 and column 8, lines 1-5). . . ."  (Examiner's Answer at 4.)  The appellants argue,                         
              "Coleman discloses an interface in which modifications are performed on a page of the                         
              original document and a replica of the modified page is then created to reflect the                           
              changes to the original."  (Reply Br. at 4.)                                                                  


                     In addressing the point of contention, the Board conducts a two-step analysis.                         
              First, we construe the independent claim at issue to determine their scope.  Second, we                       
              determine whether the construed claims are anticipated or would have been obvious.                            










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