Ex Parte Wiley - Page 6


               Appeal No. 2006-3037                                                                                                 
               Application No. 10/033,225                                                                                           

               remote storage device that may have limited access, but nevertheless can be specified                                
               by the user.  In this regard, even predetermined links to the forms website 170 and                                  
               remote database 175 would render such remote datastores “user-specified” since a                                     
               unique datastore -- and the path thereto via the global network -- would be inherently                               
               specified depending on the specific type of data the user desired to access.                                         
                       Because Czyszczewski expressly and inherently discloses all recited limitations                              
               of independent claims 1, 12, and 21, the examiner’s anticipation rejection of those                                  
               claims will therefore be sustained.  Since appellant has not separately argued the                                   
               patentability of dependent claims 4, 7-11, 14, 17-20, 22-25, and 27 with particularity,                              
               these claims fall with the independent claims.  See In re Nielson, 816 F.2d 1567, 1572,                              
               2 USPQ2d 1525, 1528 (Fed. Cir. 1987).  See also 37 CFR § 41.37(c) (I) (vii).                                         
                       Regarding claims 5, 6,2 15, 16, and 26, appellant argues that Czyszczewski does                              
               not disclose combining an electronic document generated at the multifunction device                                  
               with an electronic document the user-specified remote storage device as claimed [brief,                              
               pages 9-13; reply brief, pages 6, 7, and 9-11].  The examiner responds that                                          
               Czyszczewski’s multifunction device periodically checks the website to ensure that it                                
               has a current list of documents and that this feature meets the limitation calling for                               
               combining electronic documents as claimed [answer, pages 12-1                                                        






                                                                                                                                   
               2 In the claims appendix, claim 6 recites in pertinent part “…combining said accessed data said electronic document  
               from said user-specified remote storage device….” [claims appendix, emphasis added].  The limitation “said           
               accessed data,” however, was previously deleted in the amendment filed Apr. 21, 2005.  Accordingly, we presume       
               that the inclusion of “said accessed data” in the listing of claim 6 in the brief was an inadvertent typographical error.
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