Ex Parte Yamada et al - Page 3



          Appeal No. 2003-1392                                                        
          Application No. 09/593,867                                                  

          as being unpatentable over Iwabuchi.                                        
               Reference is made to the brief (paper number 13), the final            
          rejection (paper number 8) and the answer (paper number 14) for             
          the respective positions of the appellants and the examiner.                
                                       OPINION                                        
               We have carefully considered the entire record before us,              
          and we will sustain the anticipation rejection of claims 1                  
          through 4, and the obviousness rejection of claims 5 through 8.             
               Turning first to the anticipation rejection, appellants’               
          sole challenge to the rejection is that Iwabuchi is incapable of            
          “displaying a plurality of stored images simultaneously so that             
          the operator can select one of them to return to” (brief, page              
          4).  We agree with the appellants’ argument (brief, page 5) that            
          Iwabuchi is incapable of displaying “more than one stored image             
          at one time.”  Although Iwabuchi stores a plurality of specimen             
          images in the storage unit 16 (Figure 2; column 2, lines 52                 
          through 55), Iwabuchi selects only one of the stored images and             
          displays that stored image simultaneously with a live or real-              
          time enlarged image of the specimen (Figures 2 and 4; column 2,             
          line 61 through column 3, line 7).  Notwithstanding our agreement           
          with the appellants concerning the teachings of Iwabuchi, we find           
          that appellants’ argument concerning claim 1 on appeal is not               
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