Appeal 2007-2091
Application 10/191,161
Examiner. As a consequence of our review, we make the determinations
that follow.
While we note that Appellants have not provided the requisite
Summary of the Claimed Invention for independent claim 5, which contains
means plus function limitations, we will not remand the case for clarification
since Appellants have not provided separate arguments for patentability with
respect to independent claim 5 (see 37 CFR § 41.37(c)(1)(v)). We leave it to
the Examiner and Appellants to determine the appropriate correlation of the
corresponding structure, acts, and materials in the Specification for these
claim limitations.
Obviousness-Type Double Patenting
With respect to the rejection of claims 1-9 under obviousness-type
double patenting, Appellants maintain that only the claims of the patent
application may be relied upon. Appellants contend that here the claims of
the copending application do not suggest the method and the system recited
in the present claims as amended (Br. 8). Appellants contend that there is no
suggestion to be found in the claims of the ‘538 application which would
provide any incentive to one skilled in the art to tailor the output from the
transaction server to the spatial resolution or color depth of a printer in order
to arrive at the subject matter of claims 1-9 of the present application.
Appellants argue that the Examiner has conceded that the ‘538 application
claims do not “disclose that the data is tailored to at least the spatial
resolution of a printer” (Br. 10). Appellants argue that the Examiner’s
reliance on Kaneko is in error and that the Examiner’s reliance upon an
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