Ex Parte Giannetti - Page 7

                Appeal 2007-0469                                                                               
                Application 10/299,618                                                                         
                                                                                                              
                      We also agree with the Examiner that the claimed “second portion” of                     
                the data is fully met by the job ticket in Hicks.  The job ticket is appended to               
                the printer-independent language file and specifies other rendering                            
                characteristics (i.e., formatting) as noted above.  This “second portion” also                 
                specifies the formatting in a “platform independent” manner until it is                        
                converted into a specific form for the particular output device by the server,                 
                particularly the device specific assembler 22.                                                 
                      That is, the server effectively transforms the second portion to                         
                generate a platform dependent portion containing formatting specified in a                     
                platform dependent manner as claimed.  The server also effectively                             
                combines the “first portion” (printer-independent language file) with the                      
                platform-dependent portion (formatting) to generate output in a form tailored                  
                to the appropriate output device 16.                                                           
                      Even if we assume that the printer-independent language file and the                     
                job ticket appended thereto in Hicks constitute a single file, the scope and                   
                breadth of claim 1 does not preclude such a file.  Claim 1 recites, in pertinent               
                part, specifying data in two portions.  Such a data specification is fully met                 
                by a single file with multiple portions (e.g., a printer-independent language                  
                portion and an appended portion containing formatting).                                        
                      Even if the first and second portions are in a single file, the respective               
                first and second portions are not combined as claimed prior to further                         
                processing by the server since the data is not suitable for transmission to the                
                particular output device.  Upon further processing by the server, however,                     
                the claimed combination step is performed in generating output in a form                       
                tailored to the appropriate output device.                                                     



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