Appeal No. 2006-3134
Application No. 10/157,603
anticipation (or obviousness) in the written record before this panel. Therefore, we will
not sustain the Examiner rejection of independent claim 1 and its dependent claims.
Similarly, with respect to independent claim 8, Appellants argue that “Sahota does
not teach or suggest receiving a document reference and processing instructions
associated with that document from the same device” (Br. 6 and 9). We do not find that
the Examiner has set forth a prima facie case of anticipation since the Examiner merely
relied upon the statement of the rejection for independent claim 1 which does not address
the use of a reference for an electronic document and use thereof to retrieve the electronic
document (Answer 8).
With respect to independent claim 13, Appellants argue that Sahota fails to teach or
suggest “communicating an electronic document and processing instructions associated
with the electronic document to a document formatting system (Br. 6 and 11). Here, we
find that independent claim 13 does not contain the same limitation as discussed above,
yet Appellants seem to also rely upon the “same device” argument. We cannot agree
with Appellants and find that the Examiner has set forth a clearer argument and
correlation of the claim limitations. We note that the instant claim language does not
contain clear express or functional references that establish processing interrelationships
as with the “same device” as with independent claims 1 and 8. The Examiner sets forth
the interpretation of the teachings of Sahota at pages 10-12. Here, we find that the
Examiner’s correlation is sufficient to show that Sahota teaches the invention as recited
in independent claim 13 and has established a prima facie case of anticipation.
Therefore, we look to Appellants’ briefs for rebuttal. We find only a brief argument at
pages 11-12 of the Appeal brief and no argument in the Reply brief. Therefore, we find
that Appellants have not shown error in the prima facie case of anticipation, and we will
sustain the rejection of independent claim 13 and its dependent claims 14-16 and
independent claim 31 which Appellants elected to group therewith.
Additionally, with respect to independent claim 13, we find that the claim does not
require a same device from which the document is received. Additionally, we note that
independent claim 13 is an apparatus with instructions, but no express/required sequence
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