Ex Parte GROSS et al - Page 6



          Appeal No. 2004-0953                                       Page 6           
          Application No. 09/215,593                                                  

          providing storage for the version information.  The examiner adds           
          (answer, page 5) that Aoyama does not disclose a visual                     
          comparison of the various versions.  To make up for this                    
          deficiency of Aoyama, the examiner turns to Ogawa for a teaching            
          of comparing different versions on the same screen to ease the              
          editing process.  The examiner adds (answer, page 6) that both              
          Plantz and Aoyama do not disclose a system in which the documents           
          being edited are portable document file formats.  To overcome               
          this deficiency in Plantz and Aoyama, the examiner turns to Adobe           
          Acrobat 3.0 which allows users to edit a portable document file             
          (pdf).                                                                      
               We note at the outset that appellants do not dispute the               
          fact that the prior art references disclose all of the                      
          limitations of the claims, rather, appellants assert (brief, page           
          7) that there is no suggestion to combine the teachings of the              
          prior art, and that the references teach away from combination.             
          It is argued (brief, page 11) that even if the invention could              
          somehow be pieced together from various elements of the five                
          cited references, it would have been necessary to utilize the               
          claimed invention as a roadmap in order to do so.                           
              From our review of the entire record, we are in agreement               
         with appellants that the examiner has pieced together the                    





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