Ex parte VENKATESWAR et al. - Page 5




             Appeal No. 1997-4025                                                                                 
             Application 08/340,958                                                                               


                    Yoshida’s threshold value is obtained by reducing a                                           
             highest input signal (col. 3, line 67 - col. 4, line 3; col.                                         
             4, lines 19-29).  Yoshida does not determine a minimum                                               
             exposure level, based upon the number and position of ON                                             
             defects, to be added to all exposure level values as recited                                         
             in appellants’ claim 1.                                                                              
                    The examiner has not pointed out where the applied                                            
             references disclose or would have fairly suggested, to one of                                        
             ordinary skill in the art, determining a minimum exposure                                            
             level, based upon the number and position of ON defects, and                                         
             adding the minimum exposure level to all of a latent image as                                        
             required by appellants’ claim 1.  Consequently, the examiner                                         
             has not carried his burden of establishing a prima facie case                                        
             of obviousness of the method in appellants’ claim 1.  The                                            
             examiner’s rejections, therefore, are reversed.                                                      
                                                   DECISION                                                       
                    The rejections of claim 1 under 35 U.S.C. § 103 over                                          
             Tokuhara in view of Henley, Mochizuki, Endo, Yoshida and                                             
             Florence, and over Tokuhara in view of Henley, Noguchi, Endo,                                        
             Yoshida and Florence, are reversed.                                                                  


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