Ex Parte Simpson et al - Page 9

                Appeal 2007-0781                                                                               
                Application 10/003,150                                                                         

                E. CONCLUSION OF LAW                                                                           
                      On the record before us, Appellants have shown that the Examiner                         
                erred in rejecting claim 1 as being anticipated over Garfinkle.                                

                The rejection of claim 12 under 35 U.S.C. § 103(a) as being over Garfinkle                     
                in view of Official Notice.                                                                    
                      Claim 12 reads as follows:                                                               
                      12. The method of claim 114, wherein the printing service is                             
                      supported by a printing device having an embedded server.                                
                      In rejecting claim 12, the Examiner focuses solely on the subject                        
                matter set forth in claim 12. The subject matters of claims 1 and 11 from                      
                which claim 12 depends, and which claims 12 includes, are not addressed.                       
                Answer 4. We presume therefore that, with respect to the subject matter of                     
                claims 1 and 11, the Examiner maintains that Garfinkle describes, for                          
                example, explicitly or inherently, the claimed “network-based printing                         
                service” to retrieve a scaled-down version of a full-sized document to be                      
                printed from at least one store via a network. Since, for the reasons we                       
                discussed supra, we do not find that Garfinkle explicitly or inherently                        
                describes at least the claimed “network-based printing service” to retrieve a                  
                scaled-down version of a full-sized document to be printed from at least one                   
                store via a network, we can not sustain this rejection.                                        




                                                                                                              
                4 “11. The method of claim 1, wherein receiving print option selections                        
                comprises receiving user selections with a web site of the network-based                       
                printing service.”                                                                             

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