Ex Parte Zettel et al - Page 12

                Appeal 2007-1361                                                                             
                Application 09/681,573                                                                       

                is itself transmitted to the DMS."  (Reply Br. 4.)  They further argue, "ATS                 
                discloses saving the converted PDF document to a location specified by a                     
                user, but ATS is silent on the accessed data file from which the PDF is                      
                created."  (Id.)                                                                             

                                         A. CLAIM CONSTRUCTION                                               
                      "Claims in dependent form shall be construed to include all the                        
                limitations of the claim incorporated by reference into the dependent claim."                
                37 C.F.R. § 1.75.  Here, dependent claim 5 recites in pertinent part the                     
                following limitations: "[t]he method of claim 1 wherein the step of                          
                publishing further comprises the step of transmitting the data file. . . ."                  
                For its part, claim 1 recites in pertinent part the following limitations:                   
                "publishing the data file in at least one publication format to a document                   
                management system."  Construing claim 5 in view of claim 1, the dependent                    
                claim requires transmitting the formatted data file to the DMS.  Contrary to                 
                the Appellants' argument, the dependent claim does not require transmitting                  
                the unformatted data.                                                                        

                                        B. OBVIOUSNESS ANALYSIS                                              
                      As found regarding claims 1-4, 7, and 25-29, teachings within the                      
                references themselves would have prompted a person of ordinary skill to                      
                combine a DMS with ATS' teaching of PDFWriter so as to disseminate a                         
                formatted data file to a DMS.  We also find that such a combination would                    
                have transmitted the formatted data file to the DMS.  Therefore, we affirm                   
                the rejection of claim 5 and of claim 6, which falls therewith.                              


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