Appeal No. 1996-3078
Application 08/184,417
406, 407 n.3 (CCPA 1970). Hedlund et al. and Yoshida et al. have not been positively included in any
statement of the rejection, and thus we find Hedlund et al. and Yoshida et al. not to be relied upon in
the rejection of claims 10 and 23.
Rather than repeat the positions of appellants and the examiner, reference is made to the Briefs
and the Answers for the respective details thereof.
OPINION
In reaching our conclusion on the issues raised in this appeal, we have carefully considered
appellants’ specification and claims, the prior art, the respective viewpoints of appellants and the
examiner, and all other evidence of record. As a consequence of our review, we are in agreement with
appellants (Brief, pages 10 to 11) that the claims on appeal meet the requirements of 35 U.S.C. § 112,
second paragraph. We are also in agreement with appellants that claims 1 to 29 are nonobvious under
35 U.S.C. § 103 over appellants’ admitted prior art in the specification, and that claims 8 and 21 are
nonobvious under 35 U.S.C. § 103 over appellants’ admitted prior art in the specification in view of
Rosen.
We find, for the reasons that follow, that the feature recited in claims 1 to 29 on appeal, of
providing means responsive to a user designation of a file type to determine a physical format type for
the file from plural available physical format types, is neither taught nor would have been suggested by
the prior art explicitly applied by the examiner. Accordingly, we will reverse the decisions of the
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