Ex parte BAUMGART et al. - Page 22




          Appeal No. 95-1217                                                          
          Application 08/039,674                                                      


               b.  Claims 7 through 11                                                
               The rejection of claim 7 is based upon the teachings of                
          the Corwin et al. and Fukumizu, as applied to claim 1, taken                
          in view of Crimmins et al.  We reverse the rejection of claim               
          7, and of dependent claims 8 through 13, because the Examiner               
          has not shown that there is a motivation to combine Crimmins                
          et al. with Corwin                                                          
          et al. and Fukumizu.  See In re Rouffet, 47 USPQ2d 1453, 1456               
          (Fed. Cir. 1998) (holding that, when a rejection is based on a              
          combination of prior art references, there must be some                     
          teaching, motivation, or suggestion to combine the                          
          references).                                                                
               Claim 7 recites that the digitized video image is                      
          processed "in a plurality of parallel processing chains" and                
          that "one or more of the processing chains includes a                       
          numerical inversion operation for inverting the shading within              
          the image such that a relatively dark image on a relatively                 
          light background becomes equivalent to a relatively light                   
          image on a relatively dark background."  The Examiner stated                
          that Crimmins et al. discloses the concept of numerical                     
          inversion that is recited in claim 7.  In the Examiner’s view,              
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