Ex Parte YAMADA et al - Page 7



          Appeal No. 2001-2697                                                        
          Application No. 08/770,048                                 Page 7           

          one of ordinary skill in the art to achieve a method of                     
          reproducing a composite image as recited in claim 2.                        
          Specifically, appellants assert (brief, page 13) that McDonald              
          teaches scanning the image once at high resolution and                      
          subsequently converting the image to a lower resolution for                 
          editing in order to speed the transmission and editing process.             
          It is further argued (id.) that Zelten does not have any                    
          teachings regarding the incorporation of features into a scanned            
          image such as text, margins, etc.  Appellants further argue                 
          (brief, page 14) that the image editing and reproduction                    
          techniques of McDonald and Zelten are mutually exclusive and that           
          “[a]dditionally, since McDonald initially scans the image at a              
          high resolution suitable for final processing and is able to                
          convert it to a lower resolution for processing and editing,                
          there is no motivation to perform a first lower resolution scan             
          and a second higher resolution scan for image processing and                
          reproduction.”                                                              
               With respect to the examiner's assertion (answer, page 6)              
          that the motivation to combine McDonald and Zelten is to free               
          memory space for storing other data, appellants (reply brief,               
          pages 3-5) argue to the effect that neither McDonald nor Zelten             
          provide any teachings regarding freeing memory because Zelten               






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