Appeal No. 2004-0953 Page 7
Application No. 09/215,593
invention set forth in appellants claims by using the claimed
invention as a roadmap. The examiner (answer, page 3) relies
upon the primary reference to Smith for a system of delivering a
portable document format to a server. The examiner goes on to
piece together the other elements of the claim, with the four
secondary references; i.e., the examiner relies upon Plantz for
an Internet-based group publishing system with a plurality of
authors and editors, as well as for access control, and relies
upon Aoyama, Ogawa and Adobe for teachings of the assignment of
version numbers, storage of all versions, simultaneous visual
comparison of different versions, and the documents being edited
in pdf format. Turning to the additional references, while they
are combinable among themselves, we find no teaching to combine
these references with Smith and Plantz to arrive at appellants'
invention, other than from reliance on appellants' disclosure.
We are not persuaded by the examiner's assertion (answer,
page 4) that "[b]oth Plantz and Smith are of analogous art in the
field of document processing," as the apparent motivation for
combining the teachings of the prior art to arrive at the claimed
invention. The mere fact that the prior art references are
analogous and could be modified in the manner suggested by the
Examiner does not make such a modification obvious unless the
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