Ex Parte BICKMORE et al - Page 3




             Appeal No. 2004-0171                                                              Page 3                
             Application No. 09/239,295                                                                              


                    A further understanding of the invention can be achieved by reading the following                
             claim.                                                                                                  
                           58. A document re-authoring system that automatically re-authors a                        
                    document, comprising                                                                             
                           a parse tree generating circuit;                                                          
                           a document size evaluation circuit; and                                                   
                           a transform circuit.                                                                      


                    Claims 1-3, 11, 18, 19, 24, 25, 51, 58, 61, and 62 stand rejected under 35 U.S.C.                
             § 102(e) as anticipated by U.S. Patent No. 5,887,133 ("Brown").  Claims 4, 5, 59, and                   
             60 stand rejected under § 103(a) as obvious over Brown and U.S. Patent No. 6,366,933                    
             ("Ball").  Claims 6-9, 17, 47-50, and 57 stand rejected under 35 U.S.C. § 103(a) as                     
             obvious over Brown and U.S. Patent No. 6,226,642 ("Berenice").  Claims 10 and 63-70                     
             stand rejected under § 103(a) as obvious over Brown, Berenice, and Spyglass,                            
             Concepts and Applications: Spyglass Prism (1997).2  Claim 20 stands rejected under                      
             § 103(a) as obvious over Brown and Spyglass.                                                            






                    2Although the examiner's statement of the rejection omits claims 64-70,                          
             (Examiner's Answer at 15), the claims depend from claim 63.  Accordingly, we include                    
             claims 64-70 in the same rejection as claim 63.                                                         







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