Ex Parte Thieret et al - Page 13

                Appeal 2007-0719                                                                              
                Application 09/731,205                                                                        
                motivated to combine Sorkin and Irie to yield the invention, as recited in                    
                claims 17 and 18.  It follows that the Examiner erred in rejecting claims 17                  
                and 18 as being unpatentable over Sorkin and Erie.                                            

                                            Claims 19 through 21                                              
                As set forth in the findings of facts section above, we have found that                       
                Sorkin teaches a distributed system having a client computer configured in                    
                parallel with a printer and a server.  The client computer can bypass the                     
                server to directly exchange control data with the printer, as required by claim               
                19.  Alternatively, the client can transmit job data (independently from the                  
                control data) to the printer via the server.  (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 independent claim 19.  We further                      
                agree with the Examiner that one of ordinary skill in the art would have                      
                been motivated to combine the cited references to yield the claimed                           
                invention.  It follows that the Examiner did not err in rejecting claim 19 as                 
                being unpatentable over Sorkin and Erie.                                                      
                Appellants did not offer separate arguments against the rejection of                          
                claims 20 and 21.4  Therefore, they fall together with independent claim 19.                  
                See 37 C.F.R. § 41.37(c)(1)(vii)(2004.)                                                       

                                                                                                             
                4 We note that neither Appellants’ Brief nor the Reply Brief discusses the                    
                rejection of claim 21.  Further, we also note that claim 21 improperly                        
                depends on claim 14.  It appears that claim 21 should have depended upon                      
                claim 20.  We leave it to the Examiner to address this formality.                             
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