Ex parte MOTOKADO et al. - Page 6




                Appeal No. 97-1010                                                                                                      
                Application 08/147,815                                                                                                  


                        The examiner finds the multiply by "n" feature in claim 2 of Ohno (answer at page 8).  But a                    

                close reading of Ohno’s claim 2 reveals only a scaling operation in which both the origin coordinate                    

                data and the local border data of each basic element are multiplied by a common magnification factor.                   

                There is no description or suggestion that only the origin data, not the local border data, is multiplied,              

                after which the product thereof is added to the local border data, as the examiner evidently determined                 

                in a conclusory manner without supporting evidence.                                                                     

                        It appears, however, that both the examiner and the appellants erroneously assumed that "n" is                  

                an integer greater than one.  Note that on page 25 of the specification, it is stated that while the origin             

                coordinates of the partial patterns are set in a 256 X 256 coordinate system in the preferred                           

                embodiment (where n apparently equals 4, see page 15 of the specification), it may also be set in a                     

                1024 X 1024 coordinate system (where n evidently equals 1).                                                             

                        In the case of n = 1, which is within the scope of these claims, the multiply by n feature                      

                effectively reduces to an identity function and the claims would merely require that the origin of the                  

                partial patterns to be set in the character coordinate system and the start points of each basic element in             

                the partial pattern to be defined in the element coordinate system as an offset from the element origin.                

                In this manner, it would have been obvious to one with ordinary skill in the art that the absolute start                

                points of the basic elements are derived by adding the offsets from the origins of the partial patterns to              

                the origins of the partial patterns times 1.  On page 18 of the brief, the appellants already                           


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