Ex Parte INOUE et al - Page 5




          Appeal No. 1999-2687                                                        
          Application 08/174,353                                                      


          Appellants’ second point in the request is that the                         
          previous decision ignores the significance of the still image               
          claim language.  Specifically, appellants argue that Wilson                 
          cannot be used with still images and Hamada does not teach shake            
          correction at a later time [request, pages 4-5].                            
          In the original brief, appellants simply argued that the                    
          applied prior art did not teach a reproducing apparatus in which            
          a still image is reproduced from a developed film and corrected             
          based on shake information of the still image.  They supported              
          this argument by noting that Hamada corrected for shake before              
          the film was developed and Wilson corrected the video signal                
          during the buffering function [brief, pages 29-30].  The examiner           
          clearly responded to this argument [answer, pages 24-25].                   
          Although appellants filed a reply brief as noted above, they                
          never addressed the examiner’s response nor made any further                
          mention of the separate patentability based on a still image.               
          To the extent that this request asks that we change the                     
          previous decision based on the fact that the claimed image is a             
          still image, we decline to do so.  As noted in the previous                 
          decision, we only considered those arguments actually made by               
          appellants in the brief.  To the extent that appellants argued              
          the patentability of claims containing a recitation of still                

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