Ex Parte Thieret et al - Page 4

                Appeal 2007-0719                                                                              
                Application 09/731,205                                                                        
                      Further, Appellants argue that the combination of Sorkin and Irie is                    
                improper because the Examiner has failed to show any motivation or                            
                suggestion to combine the cited references.  (Br. 6.)  Additionally,                          
                Appellants reiterate these same arguments against the Examiner’s rejection                    
                of claims 2 through 23.                                                                       
                The Examiner, in contrast, contends that as depicted in Figure 8,                             
                Sorkin substantially teaches the limitations of claim 1.  (Answer 2 and 3.)                   
                The Examiner further submits that Irie’s teachings complement Sorkin’s                        
                system.  (Answer 3.)  The Examiner therefore concludes that it would have                     
                been obvious to one of ordinary skill combine teachings of the cited                          
                references to arrive to the claimed invention.  Consequently, the Examiner                    
                concludes that the combination of Sorkin and Irie renders claims 1 through                    
                12 and 16 through 23 unpatentable.  (Id.)                                                     
                      Additionally, Appellants argue that the combination of Sorkin and Irie                  
                does not teach control data to include object-oriented rendering data which                   
                distinguishes text, pictures, and business graphics for enhancing document                    
                processing device operation, as recited in dependent claim 17.  (Br. 14.)                     
                Similarly, Appellants argue that the cited combination does not teach that                    
                the control data includes object-oriented rendering data such as page                         
                description language data about a document to be made, as recited in claim                    
                18.  (Br. 15.)  In response, the Examiner contends that Sorkin and Irie in                    
                combination with knowledge available in the prior art render claims 17 and                    
                18 unpatentable.                                                                              
                We affirm-in-part.                                                                            




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