Appeal 2007-1361
Application 09/681,573
The Examiner does not allege, let alone show, that the addition of
Bendik or Ouchi cures the aforementioned deficiency of Alam. Absent a
teaching or suggestion of simultaneously transforming the content of the
electronic media into more than one format, we are unpersuaded of a prima
facie case. Therefore, we reverse the rejection of claim 12.
VI. CLAIMS 16-23
Here, the Appellants argue claims 16-23, which are subject to the
same ground of rejection, as a group. (Br. 16-17.) We select claim 16 as the
sole claim on which to decide the appeal of the group.
The Examiner finds that ATS discloses "converting data directly from
one format into a publication format (page 3, number 1- page 5, number 7)"
(Answer 11) and "transmit[ing] the converted data to at least one publication
system capable of publishing the data file into a publication format (page 5,
number 7)." (Id.) The Appellants argue that "the Adobe PDFWriter
generates a PDF document, but ATS fails to disclose a converter together
with at least one publication system." (Br. 17.) Therefore, the issue is
whether the combined teachings of ATS and Bendik would have suggested
a converter and a DMS, one or both constituting a system for disseminating.
A. CLAIM CONSTRUCTION
"Claims must be read in view of the specification, of which they are a
part." Markman v. Westview Instruments, Inc., 52 F.3d 967, 979, 34
USPQ2d 1321, 1329 (Fed. Cir. 1995) (en banc).
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