Ex Parte Thieret et al - Page 12

                Appeal 2007-0719                                                                              
                Application 09/731,205                                                                        
                independent claim 7.  We further agree with the Examiner that one of                          
                ordinary skill in the art would have been motivated to combine the cited                      
                references to yield the claimed invention.  It follows that the Examiner did                  
                not err in rejecting claim 7 as being unpatentable over Sorkin and Erie.                      
                Appellants did not offer separate arguments against the rejection of                          
                claims 8 through 16.  Therefore, they fall together with independent claim 7.                 
                See 37 C.F.R. § 41.37(c)(1)(vii)(2004.)                                                       

                                              Claims 17 and 18                                                
                      As set forth above, claim 17 requires that the control data include                     
                object-oriented rendering data including text, pictures, business graphics for                
                enhancing document processing operations while claim 18 requires the                          
                control data to further include page description language data about a                        
                document to be made.  As detailed in findings of fact section above, we have                  
                found that Sorkin teaches the client and printer directly exchange control                    
                data to include rendering data for configuring, setting up and monitoring the                 
                printer.  (Finding of fact 9).  We have found, however, that the control data                 
                to be directly communicated to the printer, as taught by Sorkin, does not                     
                particularly deal with object rendering data that includes text, graphics and                 
                description language about a document to be made.  Rather, it is generally                    
                limited to configuration or setup data, which does not particularly deal with                 
                specific documents.  Therefore, we do not agree with the Examiner that one                    
                of ordinary skill in the art would have readily recognized that data exchange                 
                for setting up and configuring a printer would necessarily include object-                    
                oriented rendering data as recited in claims 17 and 18.  We further do not                    
                agree with the Examiner that the ordinarily skilled artisan would have been                   

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