Appeal No. 97-0673
Application 08/143,370
detected size and a stored reference size of particles. In
any event, the subject at hand concerns not a comparison of
sizes but a comparison of the detected image shape with stored
reference shapes. The appellants are correct that Longobardi
does not even mention image shape detection. It cannot be
said that Longobardi reasonably would have suggested to one
with ordinary skill in the art comparing the detected image
shape of Kamiwano with a stored reference shape.
It may be true that known means exists which can be
employed to compare a detected image shape with a stored
reference shape, as is suggested by the examiner (answer at
page 3, lines 21-23). But that does not alone provide the
motivation to make the comparison. The mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification. In
re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992). Here, the examiner relied on Longobardi for that
motivation, but as discussed above, Longobardi is insufficient
in that regard.
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