Appeal No. 1998-2680
Application 08/681,653
attribute and/or style of the customer generated digital image with the design attribute
and/or style of the prestored digital images [answer, page 9]. The examiner asserts that
appellants’ admitted prior art in the specification shows that this limitation is directed to
what one of ordinary skill in the art would have known and is not patentable [id., pages 9-
10].
With respect to each of independent claims 1, 5 and 9, appellants argue that
Watkins not only fails to teach the comparing step as acknowledged by the examiner, but
also fails to teach the step of automatically selecting a prestored digital image as recited
in those claims. Appellants also argue that the section of the specification relied on by the
examiner does not constitute an admission that the claimed comparison step followed by
the claimed automatic selection of a prestored digital image was known in the art [brief,
pages 2-7].
The examiner disputes both of appellants’ assertions that Watkins does not teach
the claimed step of automatically selecting a prestored digital image and that the missing
steps of the claimed invention are admitted to be prior art in appellants’ specification
[answer, pages 14-20].
With respect to appellants’ first argument, we agree with appellants that Watkins
does not teach or suggest the step of automatically selecting a prestored digital image as
recited in independent claims 1, 5 and 9. The flowchart for Watkins’ method is shown in
Figure 2. The first step of this method is for the user or consumer to visually examine and
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