'
`
`i
`.
`
`I;
`
`Office Action Summary
`
`Applicant(s)
`
`Application No.
`09/364,935
`
`Examiner
`
`Rosenlund et al
`
`Art Unit
`
`i
`
`
`
`—- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address —-
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE
`THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of timei'may be available under the provisions of 37 CFR 1.136 la).
`mailing date of this communication.
`‘
`'
`- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty ISO) days will be considered timely.
`- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`Status
`
`3
`
`MONTH(S) FROM
`
`In no event, however, may a reply be timely filed after SIX (6) MONTHS from the
`
`1): Responsive to communicationls) filed on'
`
`2a) 3 This action is FINAL.
`
`2b)M This action is non-final.
`
`3) 3 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quay/e, 1935 CD. 11; 453 O.G. 213.
`Disposition of Claims
`
`4) 2i Claimis) 7-20
`
`
`
`is/are pending in the application.
`
`4a) Of the above, claimls)
`
`a
`
`.
`
`is/are withdrawn from consideration.
`
`
`
`5) :l 'Claim(s)
`
`6)@ Claimis) 7-20
`7) :l Claim(s)
`
`8) 3 Claims
`
`Application Papers
`
`I
`
`is/are allowed.
`
`is/are rejected. '
`is/are objected to.
`
`.
`
`are subject to restriction and/or election requirement.
`
`9) :l The specification is objected towby the Examiner.
`10):l The drawingls) filed on
`is/are a) El accepted or b)l:l objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`11):l The proposed drawing correction filed on
`
`is: a)D approved b)l:l disapproved by the Examiner.
`
`If approved, corrected drawings are required in reply to this Office action.
`
`12): The oath or declaration is objected to by the Examiner.
`
`'
`
`Priority under 35 U.S.C. §§ 119 and 120
`
`
`
`13):l Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 119(aI-(d) or if).
`all All b)D Some* CID None of:
`
`1. Cl Certified copies of the priority documents have been received.
`
`2. El Certified copies of the priority documents have been received in Application No.
`
`3. Cl Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*See the attached detailed Office action for a list of the certified copies not received.
`
`14)El Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).
`
`ml: The translation of the foreign language provisional application has been received.
`
`15lEl Acknowledgement is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
`Attachmentls)
`1)
`
`2 Notice of References Cited (PTO-892)
`
`)2 Notice of Draftsperson's Patent Drawing Review (PTO-948)
`
`_ Information Disclosure Statementlsl (PTO-1449) Paper Nols).
`
`
`
`2)
`3)
`
`4) 3 Interview Summary (PTO-413) Paper Nols).
`
`
`
`5) 3 Notice of Informal Patent Application (PTOA1 52)
`6) 3 Other:
`
`_
`
`U. 5. Patent and Trademark Office
`
`PTO-326 (Rev. 04-01)
`
`Office Action Summary
`
`Part of Paper No. 4
`
`PETITIONERS Ex. 1005, p. 1
`
`PETITIONERS Ex. 1005, p. 1
`
`

`

`Application/Control Number: 09/3 64,935
`
`Page 2
`
`Art Unit: 2622
`
`Part III DETAILED ACTION
`
`1.
`
`This application has been examined. Claims l-20 are pending.
`
`Notice to Applicant(s)
`
`Claim Rejections - 35 USC § 112
`
`2.
`
`The following is a quotation of the second paragraph of 35 U.S.C. 112:
`
`The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject
`matter which the applicant regards as his invention.
`
`3.
`
`Claim 4 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing
`
`to particularly point out and distinctly claim the subject matter which applicant regards as the
`
`invention.
`
`1
`
`4.
`
`Claim 4 recites the limitation "printing customer facility" in line 2 of the claim. There is
`
`insufficient antecedent basis for this limitation in the claim.
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness
`
`rejections set forthin this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`PETITIONERS Ex. 1005, p. 2
`
`PETITIONERS Ex. 1005, p. 2
`
`

`

`Application/Control Number: 09/364,935
`
`Page 3
`
`Art Unit; 2622
`
`6.
`
`Claims 1,2,3, 5, 6, 7, 8,9,10,11,,12,13,14,15,16, 17, 18, 19, and 20 are rejected
`
`under 35 U.S.C. 103(a) as being unpatentable over Jebens et a1 (Jebens) (U. S. 6,321,231) in view
`
`of Jecha et a1 (Jecha) (U. S. 6,247,011).
`
`With respect to claim 1, Jebens discloses a printing and publishing system comprising an
`
`end user facility (14) coupled to a communication network (figure 2), the end user facility page
`
`building operations including the construction of pages from images, text and data available via
`
`the network (which reads on the userpreparing a document) (column 2, lines 40-46); a printing
`
`facility coupled to the network (the printer in part 10 of figure 2), and a central service facility
`
`(10) coupled to the communication network (figure 2), the central service facility providing
`
`storage (column 9, lines 13-20), file processing (column 9, lines 46-60), remote access (to enable
`
`searching) (column 9, lines 30—36), and content management (column 9, line 30 to column 10, line
`
`52); the content management including the capture and archival (column 9, lines 13-29), retrieval
`
`and reuse (column 12, lines 25-65) of electronic (digital) files containing text (column 12, lines
`
`25-65); content management operations fiirther including the organization and cataloging of file .
`
`content (by filename) (column 9, lines 21-45) for browsing, searching and retrieving of files and
`
`data (column 12, lines 10—65).
`
`Jebens differs from claim 1 in that although he discloses converting the data to an Open
`
`Pre-press Interface file (column 10, lines 53-56), he does not clearly disclose prOviding pre—press
`
`services which provide imposition operations including the setting of pages on a particular plate as
`
`well as positioning and orientation of pages on the plate.
`
`PETITIONERS Ex. 1005, p. 3
`
`PETITIONERS Ex. 1005, p. 3
`
`

`

`Application/Control Number: 09/364,935
`
`Page 4
`
`Art Unit: 2622
`
`Jecha discloses a computerized pre-press system for the printing of documents prepared
`by a client (200) and stored in a server (202) (column 4, lines 54-61). “Pre-press” includes all
`
`printing operations prior to press work, including design and layout, typesetting/imagesetting,
`
`color separation, image assembly and platemaking. Therefore, it would have been Obvious to one
`
`of ordinary skill in the art at the time of the invention to have modified Jebens to provide pre—
`
`press services. It would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to have modified Jebens by the teaching of Jecha in order to give the user more control
`
`over how the final image is printed. 4
`
`With regard to claim 2, Jebens discloses the end user facility (14) comprises a
`
`communications routing device (43) coupling the end user device (14) to the network; a computer
`
`(46), and a proofer (50).
`
`1
`
`With respect to claims 3 and 8, Jebens discloses asynchronous transfer mode (column 6,
`
`lines 43-51).
`
`With regard to claim 5, Jebens discloses the central service facility (10) comprises a
`
`communication routing device (22); a server (32), and storage device (20 and 28).
`
`With respect to claim 6, Jebens discloses Ethernet ports (column 6, lines 38-51).
`
`With regard to claim 7, Jebens discloses a packet switched or cell switched network
`
`(which reads on the Internet, since the Internet is a packet switched network) (column 7, lines 1—
`
`21).
`
`PETITIONERS Ex. 1005, p. 4
`
`PETITIONERS Ex. 1005, p. 4
`
`

`

`Application]Control Number: 09/3 64,935
`
`Page 5
`
`Art Unit; 2622
`
`With respect to claim 9, Jebens discloses the central service facility is located remotely
`
`from the print facility the end user facility (figure 2).
`
`With respect to claims 10, 12, and 14, Jebens discloses storing files containing information
`
`relating to images text and data on a computer server (column 8, lines 3-36 and column 9, lines
`
`13-20) and providing the files to a remote client for designing of a page layout (column 5, lines
`
`11-22). Jebens differs from claims 10, 12, and 14 in that he does not clearly disclose generating a
`
`PDF file from the data and generating a plate ready file from the PDF file.
`
`Jecha discloses generating a PDF file from image data (column 4, lines 30-61) and ,
`
`' generating a plate ready file (which reads on a pre—press file) from the PDF file (column 4, lines
`
`54-61), and transmitting the data to a printer (column 4, lines 62-64), wherein the PDF file may
`
`be converted to Postscript (column 4, lines 54-61). Therefore, it would have been obvious to one
`
`of ordinary skill in the art at the time of the invention to have modified Jebens to generate a PDF
`
`file from the data and generate a plate ready file from the PDF file. It would have been obvious to
`
`one of ordinary skill in the art at the time of the invention to have modified Jebens by the teaching
`
`of Jecha in order to convert the data to a format which would be more easily processed by the
`
`9 W
`
`printer.
`
`ith respect to claims 11 and 13, Jebens discloses proving the file over the network to the
`
`user for revision of the page layout (column 5, lines 11-22).
`
`With regard to claim 15, Jebens discloses logging the files into content management
`
`database (database) (column 9, lines 13-60 and column 11, lines 4-13).
`
`PETITIONERS Ex. 1005, p. 5
`
`PETITIONERS Ex. 1005, p. 5
`
`

`

`Application/Control Number: 09/364,935
`
`Page 6
`
`Art Unit: 2622
`
`With respect to claims 16, 18, and-19 Jebens discloses storing high resolution files on the
`
`computer (column 2, lines 64—67); generating low resolution files corresponding to the high
`
`resolution files (column 2, line 64 to column 3, line 1), and providing the low resolution files to a
`
`remote client for the designing of a page layout (column 5, lines 11-22).
`
`Jebens differs from claims 16, 18, and 19 in that he does not clearly disclose generating a
`
`PDF file from the data and generating a plate ready file from the PDF file.
`
`Jecha discloses generating a PDF file from image data (column 4, lines 30-61) and
`
`generating a plate ready file (which reads on a pre-press file) from the PDF file (column 4, lines
`
`54-61), and transmitting the data to a printer (column 4, lines 62-64), wherein the PDF file may
`
`be converted to Postscript (column 4, lines 54-61).' Therefore, it would have been obvious to one
`
`of ordinary skill in the art at the time of the invention to have modified Jebens to generate a PDF
`
`file from the data and generate a plate ready file from the PDF file. It would have been obvious to
`
`one of ordinary skill in the art at the time of the invention to have modified Jebens by the teaching
`of Jecha in order to convert the data to a format which would be more easily processed by the
`
`printer.
`
`With respect to claim 17, Jebens discloses the low resolution files are stored in the remote
`
`client (column 2, lines 64-67).
`
`With regard to claim 20, Jebens discloses logging the files into content management
`
`database (database) according to user attributes (column 9, lines 13-60 and column ll, lines 4-
`
`13).
`
`PETITIONERS Ex. 1005, p. 6
`
`PETITIONERS Ex. 1005, p. 6
`
`

`

`Application/Control Number: 09/3 64,935
`
`Page 7
`
`Art Unit: 2622
`
`7.
`
`The following is a quotation of 35 'U.S.C. 103(a) which forms the basis for all obviousness
`
`rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`8.
`
`Claim 4 is rejected under 35 U.S.C. 103(a) as being unpatentable over Jebens in view of
`
`Jecha as applied to claim 1 above, and further in view of Fujisawa et a1 (Fujisawa)(U. S.
`
`6.3 84,93 2).
`
`a
`
`With respect to claim 4, Jebens as modified differs from claim 4 in that he does not clearly
`
`disclose the printing facility comprises a communication routing device coupling the print facility
`
`to the network; a computer which performs impositioning operations 'and a platesetter which
`exposes a printing plate.
`1
`
`Fujisawa discloses a digital impositioning apparatus comprising a communication routing
`
`device (modem) coupling the print facility to the network; a computer (display device) which
`
`performs impositioning operations (column 14, lines 12—43) and a platesetter which exposes a
`
`printing plate (figure 6). Therefore, it would have been obvious to one of ordinarytskill in the art
`
`at the time of the invention to have modified Jebens as modified wherein the printing facility
`
`comprises a communication routing device coupling the print facility to the network; a computer
`
`which performs impositioning operations and a platesetter which exposes a printing plate. It
`
`would have been obvious to one of ordinary skill in the art at the time of the invention to have
`
`PETITIONERS Ex. 1005, p. 7
`
`PETITIONERS Ex. 1005, p. 7
`
`

`

`Application/Control Number: 09/364,935
`
`Page 8
`
`Art Unit 2622
`
`modified Jebens as modified by the teaching of Fujisawa in order to be able to improve printing
`
`accuracy.
`
`9.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to Mark Wallerson whose telephone number is (703) 305-8581.
`
`Any inquiry of a general nature or relating to the status of this application should be
`
`directed to the Group receptionist whose telephone number is (703) 305-4700.
`
`Any response to this action sliould be mailed to:
`
`Commissioner of Patents and Trademarks
`
`Washington, DC 20231
`.,
`
`or faxed to:
`
`(703) 872-9314 (for formal communications intended for entry)
`
`(for informal or draft communications, Such as proposed amendments to be discussed at an
`
`interview; please label such communications "PROPOSED" or "DRAFT")
`
`or hand-carried to:
`
`PETITIONERS Ex. 1005, p. 8
`
`PETITIONERS Ex. 1005, p. 8
`
`

`

`Application/Control Number: 09/3 64,93 5
`
`Page 9
`
`Art Unit: 2622
`
`Crystal Park Two
`
`2121 Crystal Drive
`
`Arlington. VA.
`
`Sixth Floor (Receptionist)
`
`
`
`_ MARK WALLERSON
`
`PETITIONERS Ex. 1005, p. 9
`
`PETITIONERS Ex. 1005, p. 9
`
`

`

`Form PTO 948 (Rev. 8-98)
`
`I U.S. DEPARTMENT OF COMMERCE - Patent and Trademark Office
`
`Application No.
`
`
`
`‘ NOTICE OF DRAFTSPERSON s
`’
`* PATENTDRAWING REVIEW
`
`a
`
`The drawing(s) filed (insert date)
`are:
`A. 1:] approved by the Drafts er
`under 37 CFR 1.84 or 1.152.
`B.bgkobjected to by the Draftsperson under 37 CFR 1.84 or 1.152 for the reasons indicated below. The Examiner will require
`ssion of new, corrected drawings when necessary, Corrected drawing must be‘sumitted according to the instructions on the back of this notice.
`
`1‘
`
`. DRAWINGS. 37 CFR1.84(a)2 Aeoeptable categories of drawings:.
`Black ink Color
`.
`7
`___Color drawings are not acceptable until peliton is granted.
`mFists)
`__-___ Pencil and non black ink not permitted. Fig(s)
`. PHOTOGRAPHS. 37 CFR 1.84 (b)
`1 full—tone set is required. Fig(s)
`Photographs not properly mounted (must use brystol board or
`photographic double--weight paper). Fig(s)
`Poor quality (half-tone). Fig(s)
`. TYPE OF PAPER. 37 CFR 1.84(e)
`__ Paper not flexible, strong, white, and durable.
`Fig(s)
`Erasu res, alterations overwritings, interlineaiions,
`folds, copy machine marks not accepted Fig(s)
`____Mylar, velum paper is not acceptable (too thin).
`FigtS) _. __ ._ .
`. SIZE OF PAPER. 37 CFR I.84(f): Acceptable sizes:
`_ 21.0 cm by 29.7 cm (DIN size A4)
`___21.6 cm by 27.9 cm (8 1/2 x11 inches)
`___— All drawing sheets not the same‘ size.
`Sheet(s)
`. ___Drawings sheets not an acceptable size. Fig(s)
`. MARGINS. 37 CFR 1.84(g): Acceptable margins.
`Top 2.5 cm belt 2.5cm Right 1.5 cm Bottom 1.0 Cm
`SIZE. A4 Size
`,
`Top 2.5 cm Left 25 em Right 1.5 cm Bottom.1.0 cm
`SIZE: 81/2X 11
`
`'
`
`'
`
`. ARRANGEMENT 0F VIEWS. 37 CFR 1.134(1)
`Words do not appear on a horizontal, left-to-right fashion
`when page is either upright or turned so that the top
`becomes the right side, except for graphs. Fig(s)
`. SCALE. 37 CFR1.84(k)
`Scale not large enough to show mechanism without
`crowding when drawing is reduced in size to two—thirds in
`reproduction.
`Fists)
`. CHARACTER OF LINES, NUMBERS & LETTERS.
`37 CFR 1. 84(1)
`Lines numbers & letters not uniformly thick and well
`defined,clean, durable, and black (poor line quality).
`Fig(s)
`. SHADING 37CFR1.84(m)
`Solid black areas pale. Fig(s)
`Solid black shading not permitted. Fig(s)
`. Shade lines, pale, rough and blurred. Fig(s)
`I. NUMBERS, LETTERS, & REFERENCE CHARACTERS.
`37 CFR 1.84(p)
`Numbers and'reference characters not plain and legible.
`Fig(s)
`.
`__ Figure legends are poor. Fig(s)
`Numbers and reference characters not oriented in the
`same direction as the View. 37 CFR 1.8,4(p)(1)
`Fig(5) __.__ __
`___English alphabet not used. 37 CFR 1.84(p)(2)
`Figs ‘
`__ Numbers, letters and reference characters must be at
`.32 cm (1/8 inch) in height. 37 CFR 1.84(p)(3)
`Fi2(5)
`. LEAD LINES. 37 CFR1.84(q)
`Lead lines cross each other. Fig(s)-
`-———- Lead lines missing. Fig(s)
`. NUMBERING OF SHEETS OF DRAWINGS. 37 CFR 1.84(t)
`Sheets not numbered consecutively, and in Arabic numerals
`beginning with number 1. Sheel(s)
`. NUMBERING OF VIEWS. 37 CFR 1.84(u)
`Views not numbered consecutively, and in Arabic numerals,
`beginning with number 1. Fig(s)
`. CORRECTIONS. 37 CFR 1.84(w)
`Corrections not made from prior PFC—948
`dated
`
`least
`
`. DESIGN DRAWINGS. 37 CFR 1.152
`Surface shading shown not appropriate. Fig(s)
`___Solid black shading not used for color contrast
`
`”F'RS)
`
`Mar '
`
`'
`_
`Leno)
`Bottom (B)
`
`not acceptable. Fig
`opm
`Right (R)
`. VIEWS 37 CFR 1. 84(h)
`REMINDER: Specification may require revision to
`correspond to drawing changes
`Partial views. 37 CFR 1 .84(h)(2)
`___Brackets needed to show figure as one entity
`FMS) __.__._..
`___Views not labeled separately or properly.
`Fists)
`_ _
`-
`Enlarged view. not labeled separetel y or properly.
`Fists)
`. SECI‘IONAL VIEWS. 37 CFR 1.84 (h)(3)
`Hatching not indicated for sectional portions of an object.
`Fists) __._____
`__ Sectional designation should be noted with Arabic or
`Roman numbers. Fig(s)
`
`COMMENTS
`
`
`
` REVIEWER
`
`TELEPHONE NO.
`
`1 mm.
`
`PETITIONERS Ex. 1005, p. 10
`
`PETITIONERS Ex. 1005, p. 10
`
`

`

`
`
`Art Unit
`
`Mark Wallerson
`2622
`Page 1 of 1
`
`
`Application/Control No.
`09/364,935
`
`‘
`
`ApplicantisHPatent Under Reexam
`Rosenlund et al
`
`
`
`Examiner
`
`
`
`6,384,932 Fujisawa at al 5/2002
`
`
`
`
`6,321,231
`.J— 11/2001
`.
`Jebens et ai
`
`6,247,011 Jecha et ai 6/2001
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`.
`.
`.
`Date
`Document Number
`
`Classrfication
`CF’UMW
`MM-YYYY‘
`Countr Code-Number-Kind Code
`
`
`FOREIGN PATENT DOCUMENTS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Include. as applieable: Author, Title. Date, Publisher, EditiOn or Volume, Pertinent Pages
`
`NON-PATENT DOCUMENTS
`
`
`
`
`
`" A copy of this reference is not being furnished with this Office action. See MPEP § 707.05(a).
`U. 8. Patent and Trademark Office
`
`1 Dates in MM-YYYY format are publication dates.
`
`2 Classifications may be U.S. or foreign.
`
`PTO-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 4
`
`PETITIONERS Ex. 1005, p. 11
`
`PETITIONERS Ex. 1005, p. 11
`
`

`

`
`
`Appllcant:
`Title:
`
`Scott R. Rosenlund et a1.
`SYSTEM AND METHOD OF
`PROVIDING PUBLISHINGAND
`PRINTIN'G SERVICES VIA A
`COMMUNICATIONS NETWORK
`
`Appl. No.:
`
`09/364,935
`
`Filing Date:
`
`‘
`
`07/30/1999
`
`“ Examiner: Wallerson, Mark E
`
`MW«9702)
`
`Atty. Dkt. No. 014530—0269
`
`
`
`
`l:Rik-“Tiglfigax't';""""""""""""“‘1
`is correspondence is being deposited
`ere y certi y t at t
`
`3.122.329.3253?cili‘iial‘ii‘i'n ii'fifipewhhdrfifiél‘é'iflf
`
`:llail Sta: NEON-f5}? AMENDM'ENTA Qornmissionar
`for
`oztfgatséa‘gbelriv‘ 50, Alexandria, Virginia 223134450,
`
`Paul S. Hunter
`
`
`
`(“-518 {1
`’25::y J
`
`(Signet
`
`re)
`
`(Date of De osit)
`
`"mm""""mewxxw‘nw‘w“m“”2“
`
`Art Unit:
`
`2622
`
`AMENDMENT TRANSMITTAL
`Mail Stop NON-FEE AMENDMENT
`
`Commissioner for Patents
`
`PO Box 1450
`
`Alexandria, Virginia 22313—1450
`
`Sir:
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`FEB 1 2 200
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`Transmitted herewith is an amendment in the above-identified application.
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`The fee required for additional claims is calculated below:
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`Claims
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`' Total Claims:
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`20
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`Independents:
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`First presentation of any Multiple Dependent Claims: +
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`CLAIMS FEE TOTAL =
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`003.471284.1
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`PETITIONERS Ex. 1005, p. 12
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`PETITIONERS Ex. 1005, p. 12
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`Atty. Dkt. No. 014530-0269
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`[
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`$11000
`] Statutory Disclaimer Fee under 37 C.F.R. 1.20(d):
`CLAIMS, EXTENSION AND DISCLAIMER FEE TOTAL:
`Small Entity Fees Apply (subtract V2 of above):
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`TOTAL FEE: $0.00
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`The Commissioner is hereby authorized to charge any additional fees which may be
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`required regarding this application under 37 C.F.R. §§ 1.16-1.17, or credit any
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`overpayment, to Deposit Account No. 50-2350. Should no proper payment be enclosed
`herewith, as by a check being in the wrong amount, unsigned, post-dated, otherwise
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`improper or informal or even entirely missing, the Commissioner is authorized to charge
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`the unpaid amount to Deposit Account No. 50—2350. If any extensions of time are needed
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`for timely acceptance of papers submitted herewith, applicant hereby petitions for such
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`extension under 37 C.F.R. §l.136 and authorizes payment of any such extensions fees to
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`DepositAccount No. 50-2350.
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`Please direct all correspondence to the undersigned attorney or agent at the address
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`indicated below.
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`W
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`Respectfully submitted,
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` Date
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`FEE 7/ 9-907
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`FOLEY & LARDNER
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`Paul 3. Hunter
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`150 East Gilman Street
`P. O. Box 1497
`Madison, Wisconsin 53701-1497
`Telephone:
`(608) 258-4292
`Facsimile:
`(608) 258-4258
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`Attorney for Applicant
`Registration No. 44,787
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`'
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`003.471284.1
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`PETITIONERS Ex. 1005, p. 13
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`PETITIONERS Ex. 1005, p. 13
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`

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`IN THE UNITED STATES PATENTAND TRADEMARK OFFICE
`W337.“.................M3
`
`Atty. Dkt. N0. 014530-0269
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`CERTIFICATE or MAILING
`I hereby certify that this correspondence is being deposited
`with the United States Postal Service with sufficient
`postage as First Class Mail
`in an enveiope addressed to:
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`i!
`i
`i
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`
`
`Applicant:
`
`Title:
`
`Appl. No.:
`Filing Date:
`
`ROSENLUND, et a1.
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`SYSTEM AND METHOD OF
`PROVIDING PUBLISHING AND
`PRINTING SERVICES VIA A
`COMMUNICATIONS NETWORK
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`
`
`09/364,935
`‘
`(Sign.
`,9,
`V
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`07/30/1999 %
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`'
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`i i i
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`
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`3323;533:1312;teats;LE;55.2w?”
`Paul 8. Hunter
`(Printed Na ne
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`
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`Examiner: Wallerson, Mark E.
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`Art Unit:
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`'
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`2622
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`9
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`AMENDMENTANDREPLYUNDER 37 CFR 1.116
`~
`4
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`.._
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`RECEiVED »
`FEB 1 2 ZUM
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`MAIL STOP NON-FEE AMENDMENT
`Commissioner for Patents
`7.
`.
`-~
`PO Box 1450
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`‘
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`Alexandria, Virginia 22313-1450
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`Sir:
`
`Technology Center 2600
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`,
`
`,
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`This communication is responsive to the Final Office Action dated December 18, 2003,
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`concerning the above-referenced patent application, making February 18, 2004, two months from
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`the mailing date. Accordingly, this Amendment and Reply is timely filed.
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`Amendments to the Claims are reflected in the listing of claims which begins on page 2
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`of this document.
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`Remarks/Arguments begin on page 6 of this document.
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`Please amend the application as follows:
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`etc-7%5,2;
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`”W29/7/09
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`003.466370.1
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`PETITIONERS Ex. 1005, p. 14
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`PETITIONERS Ex. 1005, p. 14
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`Atty. Dkt. No. 014530—0269
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`Amendments to the Claims:
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`This listing of claims will replace all prior versions, and listings, of claims in the application:
`
`Listing of Claims:
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`In accordance with 37 CFR § 1.121, please substitute for original claims 1—20, the
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`following rewritten versions of the same claims, as amended.
`
` Please amend the following claims.
`
`1.
`
`, (Currently amended): A printing and publishing system providing prepress,
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`content management, infrastructure, and workflow services to system subscribers in real time
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`using a communication network, the printing and publishing system comprising:
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`an end user facility coupled to a communication network, the end user facility providing
`page building operations, the page building operations including the design and construction of
`pages from images, text, and data available via said communication network and the generation
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`of a portable document format 1 EDF) file;
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`a printing company facility coupled to said communication network, the printing
`company facility providing imposition operations and generating aplate-ready file from said PDF
`' file, the imposition operations including the setting ofpages on a particular plate as well as
`positioning and orientation of pages on said plate; and
`
`a
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`‘
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`a central service facility coupled to said communication network, the central service
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`facility providing storage, file processing, remote access, and content management operations;
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`the content management operations including the capture, organization, archival, retrieval, and
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`reuse of electronic files containing any one of text, graphics, photos, artwork, full pages, audio,
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`video, and completed projects; content management operations further including the organization
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`and cataloging of file content for browsing, searching, and retrieving of files and data.
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`2.
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`(Original): The printing and publishing system of claim 1, wherein the end user
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`facility further comprises a communication routing device coupling the end user facility to the
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`communication network, a computer which performs page building operations, and a proofer
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`which provides printed samples of pages.
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`0034663701
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`7)?
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`PETITIONERS Ex. 1005, p. 15
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`PETITIONERS Ex. 1005, p. 15
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`Atty. Dkt. No. 014530-0269
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`3.
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`(Original): The printing and publishing system of claim 2, wherein the routing
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`device is connected to an asynchronous transfer mode (ATM) switch.
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`4.
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`(Previously Presented): The printing and publishing system of claim 1, wherein
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`the printing company facility further comprises a communication routing device coupling the
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`printing company facility to the communication network, a computer which performs imposition
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`operations, and a platesetter which exposes a printing plate.
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`5.
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`(Original): The printing and publishing system of claim 1, wherein the central
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`service facility further comprises a communication routing device coupling the central service
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`facility to the communication network, a server which performs content management operations,
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`and storage devices which contain electronic files.
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`6.
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`(Original): The printing and publishing system of claim 1, wherein the central
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`service facility further comprises a network including fast Ethernet and communication ports.
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`7.
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`(Original): The printing and publishing system of claim 1, wherein the
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`communicationnetwork includes any one of data packets associated with a packet switched
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`network and data cells associated with a cell switched network.
`.{
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`8.
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`(Original): The printing and publishing system of claim 7, wherein the cell
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`switched network comprises an asynchronous transfer mode (ATM) network.
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`9.
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`(Original): The printing and publishing systemof claim 1, wherein the central
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`service facility are remotely located from the end user facility and printing customer facility.
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`10-.
`(Original): A method of providing printing and publishing services to a remote
`client in real timeusing a communication network, the method comprising:
`‘
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`storing files on a computer server, the files containing information relating to images,
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`text, art, and data;
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`providing said files to a remote client for the designing of a page layout;
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`generating a portable document format (PDF) file from the designed page layout;
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`003.466370.1
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`PETITIONERS Ex. 1005, p. 16
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`PETITIONERS Ex. 1005, p. 16
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`generating a plate-ready file from said PDF file; and
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`providing said plate-ready file toa remoteprinter.
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`Atty. Dkt. No. 014530-0269
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`11.
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`(Original): The methodof claim 10, further comprising providing said PDF file to
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`said remote client for proofing and revision of the page layout.
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`12.
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`(Original): The method of claim 10, wherein the step of providing said plate-
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`ready file to a remote printer comprises communicating said plate—ready file to said remote
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`printer via a communication network.
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`13.
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`1 (Original): The method of claim 10, wherein the step of providing said files to a
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`remote client for the designing of a page layout comprises providing access to a database
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`containing said files over a communication network.
`'1‘
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`14.
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`(Original): The method of claim 10, wherein the step of generating a plate-ready
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`file from said'PDF file comprises converting said PDF file to a PostScript file.
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`15.
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`(Original): The method of claim 10, wherein the step of storing files on a
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`computer server comprises logging said files into a content management database.
`1
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`16.
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`(Original): A method of providing printing and publishing services to a remote
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`client performing any one of page layout designing and plate press printing where said printing
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`and publishing services are provided in real time using a wide area communication network, the
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`method comprising:
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`storing high resolution files on a computer server;
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`generating low resolution files corresponding to said high resolution files;
`providingsaid low resolution files to a remote client for the designing of a page layout;
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`generating a portable document format (PDF) file from the page layout designed by said
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`remote client;
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`providing said PDF file to said remote client; and
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`providing a plate—ready file to a remote printer.
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`0034663701
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`PETITIONERS Ex. 1005, p. 17
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`PETITIONERS Ex. 1005, p. 17
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`17.
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`(Original): The method of claim 16, wherein the low resolution files are stored in
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`a storage device at said remote client.
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`Atty. Dkt. No. 014530-0269
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`18.
`(Original): The method of claim 16, wherein the step of generating a portable
`document format (PDF) file from the page layout designed by said remote client comprises
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`receiving a PostS cript file from said remote client via the communication network; and swapping
`said low resolution files used in said page layout with said high resolution files.
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`19.
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`(Original): The method of claim 16, wherein the step ofproviding a plate—ready
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`file to a remote printer comprises converting the format of the PDF file to a plate-ready file
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`format and communicating the plate-ready file to the remote printer via the communication link.
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`20.
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`(Original): The method of claim 16, wherein the step of storing files on a
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`computer server comprises logging said files into a content management database according to
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`-
`user profiles and attributes.
`MM
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`0034663701
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`PETITIONERS Ex. 1005, p. 18
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`PETITIONERS Ex. 1005, p. 18
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`Atty. Dkt. No. 014530-0269
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`REMARKS
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`Applicant respectfully requests reconsideration of the present application in view of the
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`foregoing amendments and in view of the reasons which follow.
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`Claims 1-20 are now pending in this application.
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`Rejection under 35 U.S.C. § 103
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`In Section 4 of the Office Action, Claims 1-3 and 5-20 are rejected under 35 U.S.C. §
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`103(a) as being unpatentable over US. Patent 6,321,231 (Jebens et al.) in view of U.S. Patent
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`6,348,932,011 (Fujisawa). Applicants assumes that Claim 4 was similarly rejected because it is
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`otherwise not addressed. Applicants respectfully traverse the rejection. Neither Jebens et a1. nor