Ex Parte Zettel et al - Page 18

                Appeal 2007-1361                                                                             
                Application 09/681,573                                                                       

                      Here, claim 16 recites in pertinent part the following limitations:                    
                            (D) route the electronic data file to a converter                                
                      configured to convert the electronic data file directly into at                        
                      least one of a number of publication formats compatible with a                         
                      document management system; and                                                        
                            (E) transmit the at least one converted data file to at least                    
                      one publication system capable of publishing the converted data                        
                      file in the at least one publication format to the document                            
                      management system.                                                                     
                Although the Appellants indicate that these limitations correspond to                        
                Paragraphs 9, 12, and 32 of their Specification (Br. 5-6), they fail to map the              
                the claimed "converter," "publication system," and "document management                      
                system" to specific items described therein.3                                                

                      Furthermore, the following omissions of key elements have stymied                      
                our attempt to map the claimed "converter," "publication system," and                        
                "document management system" to specific items described in the                              
                paragraphs cited by the Appellants.  The first paragraph cited thereby                       
                discloses "publishing electronic documents to a document management                          
                system" (Specification ¶0009); the last paragraph, a "document management                    
                system's generation of document parameters. . . ."  (Id. ¶0032.)  Neither                    
                paragraph, however, mentions a "converter," "converting," or a "publication                  
                system."                                                                                     


                                                                                                            
                3 Such a mapping "is [always] considered important to enable the Board to                    
                more quickly determine where the claimed subject matter is described in the                  
                application."  M.P.E.P. § 1206.                                                              
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