Ex parte PARKER - Page 10




               Appeal No. 1998-2989                                                                                             
               Application No. 08/566,987                                                                                       


                              NEW GROUND OF REJECTION under 37 CFR § 1.196(b)                                                   

               Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over Bhargava.                                     
               Due the similarity in claims 15-20 to claims 1-14, we do not see the examiner’s rationale in                     
               not applying the teachings of Bhargava and Lund to the remainder of claims 15-20.  As an                         
               example we will address claim 15 alone under 35 USC § 103(a) and leave it to the                                 
               examiner’s discretion to consider dependent claims 16-20.                                                        
               As discussed above with respect to claims 1 and 13, the methodology of Bhargava                                  
               applied to binary image data would have suggested the invention as recited in steps (a) -                        
               (f) to one of ordinary skill in the art at the time of the invention.  Bhargava would have                       
               suggested the identification of orthogonal shaped regions with common state with binary                          
               image data.  Bhargava discloses the determination and encoding of the dimensions or                              
               size of the region.  The encoded shape and size would then be stored as a                                        

               precompressed image and then the image would be compressed again when it is                                      
               Huffman encoded for transmission.                                                                                


                                                       CONCLUSION                                                               

               To summarize, the decision of the examiner to reject claims 1-8, 12-14 and 21  under                             
               35 U.S.C. § 103 is affirmed and the decision of the examiner to reject claims 9-11 and 15-                       
               20 under 35 U.S.C. § 103 is reversed.                                                                            


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