Appeal 2007-1302
Application 09/818,003
document. In addition to the document identifier 46, the document
parameters 48 include the document name 482, where the discussion of this
figure at column 8, lines 9 through 26 plainly indicates that this document
name component includes the title of the document. In this respect only
then, the Examiner’s views expressed in the Answer that Eldridge does not
disclose the capture of actual data of a document is misplaced. In this
respect as well, we note, as indicated by the remarks from the panel during
the oral hearing, that the feature of capturing the information from the
document in representative independent claim 1 on appeal is not recited in
the claim to be done by the handheld device itself. Appellant’s remaining
arguments in the principal Brief on appeal appear to hinge in part upon these
incorrect assertions with respect to Eldridge.
Appellant’s view at page 10 of the principal Brief on appeal that there
is no suggestion in Eldridge to replace the tokens with actual document data
and that there is no suggestion in this reference to add actual document data
to the token is misplaced in two respects. First, the reference does teach
that the tokens contain actual document data in the figure 3B version of the
tokens. Moreover, the Examiner’s position has not asserted that Eldridge
teaches this even though we have determined that it does. Likewise,
Eldridge can hardly be said to teach away from sending actual document
data as urged at the bottom of page 10 of the principal Brief on appeal.
Similarly, the view expressed at the bottom of page 11 of the principal Brief
that the entire purpose of Eldridge is to avoid storing document data is
incorrect in view of this teaching we have noted here. Lastly, the view at
page 12 of the principal Brief on appeal that the token in Eldridge is not
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