Interference No. 103,587
conflict with the judicial precedent of Spina. Thus, Katayama’s claims 53-55 will be construed
in light of Katayama’s specification.
Claims 53 and 54 call for means for generating variable size dots and claim 55 calls for a
marking device which marks variable size dots. It is considered that Katayama’s involved
application supports these limitations for the same reason that we found, above, that Katayama’s
prior applications support the language “variable size dots” in count 2.
Patentabililty of Katayama’s Claims 42, 43, 48 and 49
Levien asserts that the senior party’s claims 42, 43, 48 and 49 are anticipated under
35 U.S.C. § 102 by the prior art to Fawcett (note 3, supra). In the alternative, Levien asserts the
above claims are unpatentable under 35 U.S.C. § 103 as obvious over the combination of
Fawcett and Floyd et al. (Flo yd).6 The junior party contends to the effect that all the positively
recited limitations of the claims are met by Fawcett, or in the alternative, by the combined
teachings of Fawcett and Floyd. It is urged that the term “variable size dot” at the end of the
claims is in a whereby (or thereby) clause which is not normally considered part of the claimed
combination. Citing Texas Instruments Inc.v. International Trade Commission, 988 F.2d 1165,
1172, 26 USPQ2d 1018, 1023 (Fed. Cir. 1993), Levien asserts that the functional language in a
whereby clause which characterizes the result of the elements recited is not normally considered
part of the claimed invention. Even if the whereby clause is part of the claimed invention and
entitled to weight, Levien argues it still fails to distinguish over the prior art because it lacks any
recitation that the size of the variable dots is controlled, or that the size is determined in a
recursive relationship based on a prior output.
6 R.W. Floyd et al., “An Adaptive Algorithm For Spatial Gray-scale, “17 Proceedings of the Society for Information
Display 75-77 (1976).
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