Ex Parte GILLIHAN et al - Page 12




              Appeal No. 2003-0549                                                                Page 12                 
              Application No. 09/149,408                                                                                  


              manipulation of an image of the page."  (Reply Br. at 5.)  They further argue, "it is clear                 
              from the Coleman disclosure that the modifications are not being made 'free from                            
              changing the original electronic document' as recited in the claims."  (Id. at 4.)                          


                                                 a. Claim Construction                                                    
                     "[L]imitations are not to be read into the claims from the specification."  In re Van                
              Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) (citing In re                             
              Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)).  Here, claim 21                           
              recites in pertinent part the following limitations: "change the format of a page, but not                  
              all pages of said copy, by applying, at least . . . rotation of image. . . ."  Contrary to the              
              appellants' arguments, the claim requires neither "reformatting (page rotation) by                          
              manipulation of an image of the page," (Reply Br. at 5), nor "that . . . modifications                      
              are . . .  made 'free from changing the original electronic document'. . . ."  (Id. at 4.)                  
              Giving the claim its broadest, reasonable construction, the limitations further require                     
              reformatting a page of the copy of the electronic document.                                                 


                                             b. Anticipation Determination                                                
                     As mentioned regarding claims 1, 5-11, 15, 16, and 20, Coleman discloses that                        
              "various system processes may be performed on the current page of a stack," col. 7,                         









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