Ex parte KURODA et al. - Page 8


          Appeal No. 1997-0411                                       Page 8           
          Application No. 08/441,658                                                  


               Also similarly, independent claim 34 specifies in                      
          pertinent part the following limitations:                                   
                    34. A method for setting paper size, paper                        
               direction, and printing direction of a document in a                   
               document processing apparatus ... comprising the                       
               steps of:                                                              
                         ...                                                          
                         displaying a plurality of document                           
               information selecting menu items which correspond to                   
               said designated one of said categorized basic menu                     
               items, each ... item indicating a combination of                       
               paper size, paper direction and printing direction                     
               ...;                                                                   
                         designating one of said ... items for said                   
               document; and                                                          
                         performing an operation of setting paper                     
               size, paper direction and printing direction on said                   
               document according to said designated one of said                      
               ...  items.                                                            
          Giving claims 12, 18, and 34, their broadest reasonable                     
          interpretation, the claims recite permitting a user to select               
          the paper size, paper direction, and printing direction of a                
          document and the setting of all of them.                                    


               The examiner fails to show a teaching or suggestion of                 
          these limitations in the prior art.  Although he refers to the              
          “‘Banner mode of The Print Shop,’” (Examiner’s Answer at 3),                
          the examiner                                                                
          admits, “In the Banner mode format document information is                  
          fixed.”  (Id. at 6.)  Because the reference does not even                   







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