Ex Parte Giannetti - Page 5

                Appeal 2007-0469                                                                               
                Application 10/299,618                                                                         
                                                                                                              
                Hicks does not disclose the limitations of independent claim 1 which call                      
                for, in pertinent part, specifying data in (1) a first format-independent                      
                portion, and (2) a second platform-independent portion containing                              
                formatting information that is transformed to a platform-dependent portion.                    
                Appellant notes that Hicks teaches (1) creating and embedding formatting                       
                instructions in the document at the start of the process; (2) providing                        
                instructions in a printer-independent language; and (3) determining the                        
                appropriate printer to handle the document.  Appellant, however, emphasizes                    
                that the printer-independent language file already contains the formatting                     
                information for the document (Br. 9).  According to Appellant, the document                    
                in the printer-independent language and the appended job ticket comprise                       
                the entire file that is transmitted to the system server; therefore, formatting                
                information must be in the document or else the information is non-existent                    
                (Br. 10).                                                                                      
                      The Examiner argues that claim 1 is fully met by Hicks since, among                      
                other things, the claimed “first portion” corresponds to the electronic                        
                document in the printer-independent language file in Hicks, and the “second                    
                portion” as claimed corresponds to the job ticket that is appended to the                      
                printer-independent file.  The Examiner emphasizes that the job ticket                         
                contains specific information concerning the desired output presentation                       
                including “rendering characteristics.”  These rendering characteristics,                       
                according to the Examiner, constitute formatting for the first portion (i.e., the              
                printer-independent language file).  The Examiner notes that once the job                      
                ticket is appended to the electronic document, it is routed to a device-                       
                specific assembler (i.e., a transform) that changes the data to a device-                      
                specific form that is sent to the appropriate output device (Answer 13-15).                    

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