Appeal No. 97-0171
Application No. 08/187,290
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the Examiner. As a consequence of
our review, we make the determinations which follow.
Appellants argue that
[Mihm] does not disclose or suggest the editing feature in the context recited
in claims 1 and 18. That is, while the electronic document in Mihm. et al. may
be an edited version of an original electronic document, there is absolutely
no teaching in this reference that the original electronic document was
obtained from reading a coded [graphical] symbol on the original document,
as recited in claims 1 and 18. Specifically, there is no mention in Mihm et al.
of reading a ZIP CODE in order to edit or change the graphic data of the ZIP
CODE and then print the edited graphic data as an edited ZIP CODE on a
document. Consequently, there is absolutely no motivation that can be
gleaned from these references for applying any of the teachings of Mihm. et
al. to the combined disclosures of Duthion and Bockholt et al. (See brief at
page 6.)
We agree with appellants.
As pointed out by our reviewing court, we must first determine the scope of the
claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998).
Clearly the Examiner understands the limitations set forth in claim 1 since the
Examiner correctly paraphrases the invention set forth in claim 1 as “[t]he underlying
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