Appeal 2007-1105
Application 09/731,912
1 On appeal, Appellant bears the burden of showing that the Examiner
2 has not established a legally sufficient basis for combining the teachings of
3 Giljum with those of Chang.
4 Appellant may sustain this burden by showing that, where the
5 Examiner relies on a combination of disclosures, the Examiner failed to
6 provide sufficient evidence to show that one having ordinary skill in the art
7 would have done what Appellant did. United States v. Adams, 383 U.S. 39
8 (1966); In re Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir.
9 2006); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick,
10 Co., 464 F.3d 1356, 1360-61, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006).
11
12 § 103 ANALYSIS
13 With respect to claims 1, 12, and 20, Appellant argues Chang and
14 Giljum do not disclose or suggest “storing editable template information or
15 formatting information within the electronic document.” (Br. 3:4-5). We
16 disagree. Our Findings of Fact 7-9 show that Appellant is clearly in error.
17 We find that, in Chang, the template, formatting, and content information in
18 the electronic document are all editable and that Appellant discloses editing
19 content information using the same content information editor as in Chang
20 (Specification 4:31-32). Appellant’s claims differ from Chang only with
21 respect to the type of editor used to edit template or formatting information.
22 With respect to claims 1, 12, and 20, Appellant also argues Chang and
23 Giljum do not disclose or suggest the selected (and edited) portion includes
24 “template information or formatting information” (Br. 3:6-13). Again we
25 disagree. Chang teaches Appellant’s claimed invention (Findings of Fact
26 3-6) except for the specific information to be selected and edited being
8
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Last modified: September 9, 2013