Ex Parte YAMADA et al - Page 6



          Appeal No. 2001-2697                                                        
          Application No. 08/770,048                                 Page 6           

          generation of the image composing conditions, the memory space              
          required to store the image data is reduced since the image is at           
          low resolution, freeing more space of the memory for storing                
          other data.”  The examiner further asserts (answer, page 8) that            
          because McDonald discloses using a low resolution image for                 
          displaying and composition correction, and Zelten disclosed a low           
          resolution image for displaying and image enhancing, that this is           
          motivation to combine the teachings of McDonald and Zelten.  The            
          examiner additionally asserts (answer, page 6) that neither                 
          McDonald nor Zelten explicitly discloses that the desired image             
          composition includes types of text, margin information,                     
          composition size information, and composition image information.            
          The examiner takes Official notice that these image composition             
          features are well known in the art.  The examiner asserts                   
          (answer, page 7) that because McDonald discloses that any number            
          of software applications for desktop publishing can be utilized             
          in composing the composite image, that it would have been obvious           
          to include the desired image composition in McDonald and Zelten.            
          Appellants assert (brief, pages 11-14) that the examiner has                
          failed to establish motivation for combining McDonald and Zelten.           
          Appellants argue that the examiner is using hindsight and has not           
          pointed to any portions of McDonald or Zelten that would direct             






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