Appeal 2007-0719
Application 09/731,205
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 53, 31 USPQ2d 1130,
1131 (Fed. Cir. 1994). Our reviewing Court has also held that teaching an
alternative or equivalent method does not teach away from the use of a
claimed method. In re Dunn, 349 F.2d 433, 438, 146 USPQ 479, 483
(CCPA 1965). In this case, at the time of the invention, the ordinarily
skilled artisan would not have been discouraged from following the paths set
out in Sorkin and Irie. Rather, the ordinarily skilled artisan would have
looked to the teachings of the cited references to enhance the processing of
documents in a distributed system. Therefore, it is our view that the
ordinarily skilled artisan would have been motivated to combine the
teachings of Sorkin and Irie to yield the invention as recited in independent
claim 1. It follows that the Examiner did not err in rejecting claim 1 as
being unpatentable over Sorkin and Erie.
Appellants did not offer separate arguments against the rejection of
claims 2 through 6. Therefore, they fall together with independent claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii)(2004.)
Claims 7 through 16
As set forth in the findings of facts section above, we have found that
Sorkin teaches the client computer directly communicates control data to the
printer independently from the job data, as recited in independent claim 7.
(Findings of facts 7 through 9.) We have also found that Irie teaches a
server for translating job data received from the client before they are
forwarded to the network printer. (Finding of fact 10.) We agree with the
Examiner that the Sorkin-Irie combination teaches the limitations of
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