Ex Parte HIRAIWA - Page 4




          Appeal No. 2004-1548                                                        
          Application 09/127,954                                                      

               We agree with appellant that claims 7, 10, and 20 include              
          limitations not found in claim 1 and, thus, do not stand or fall            
          together with claim 1.  Since the examiner provides a token                 
          argument for these other claims, we will not remand for the                 
          examiner to address these claims.                                           

          Group 1: Claims 1-6, 8, 9, and 19                                           
               The examiner finds that Matsumoto substantially discloses              
          the invention of claim 1 including a network system for managing            
          information about documents stored thereon (R2).  The examiner              
          finds that Matsumoto does not describe the storage device or the            
          meta-information table being integrated in the server machine,              
          but that Hashimoto discloses an analogous collection/presentation           
          system where the server has document data 110, a document                   
          information management unit 113 and a document database 114 (R3).           
          The examiner concludes that it would have been obvious to                   
          integrate these items into Matsumoto's server to "expedite the              
          retrieval of requested documents on the server" (R3).                       
               Appellant argues (Br5):                                                
               [B]ased on the teachings of Matsumoto, there would be no               
               motivation to add document storage capability to the server            
               of Matsumoto because storing documents in the server is not            
               necessary for operation of the system described in                     
               Matsumoto.  In Matsumoto documents are created by a client 1           
               and the documents are stored on the external memory 16 of              
               the client 1.  In Matsumoto, the server would not expect the           
               client to make a request for the stored documents, since the           
               documents are stored on the external memory 16 of the                  
               client 1 and not on a document storage unit of the                     

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