Appeal 2007-1361
Application 09/681,573
Here, the Appellants argue claims 1-4 and 7, which are subject to the
same ground of rejection, as a group. (Br.2 8-12). We select claim 1 as the
sole claim on which to decide the appeal of the group. With this
representation in mind, rather than reiterate the positions of the parties in
toto, we focus on the issues therebetween.
A. PUBLICATION FORMAT
The Examiner finds, "By allowing conversion to a PDF, the limitation
of selecting a publication format via a publication enabler, which is only
required to be capable of converting a data file into at least one publication
format in response to a publication instruction is met." (Answer 17.) The
Appellants argue, "PDFWriter, as disclosed in ATS, does not make any
publication format choice available to a user for selection thereof." (Br. 11.)
Therefore, the issue is whether ATS selects at least one format for
dissemination.
"Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art." Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933, 69 USPQ2d 1283, 1286 (Fed.Cir. 2003) (internal
citations omitted).
2 We rely on and refer to the Appeal Brief of Oct. 18, 2006 in lieu of the
briefs of June 16, 2006 and March 9, 2006 because the latter briefs were
defective. These latter briefs were not considered in deciding this appeal.
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