Appeal No. 2004-1031
Application No. 09/448,952
The obviousness rejection of claims 5 and 7 through 11 is
likewise sustained because appellants have chosen to let these
claims stand or fall with claim 1 (brief, page 5). The obviousness
rejection of claim 4 is sustained because appellants have not
presented any patentability arguments for this claim apart from
those presented for claim 1 (brief, page 30).
The obviousness rejections of claims 12 through 14, 16 through
28 and 30 through 41 are reversed because we agree with the
appellants’ arguments (brief, pages 12 through 16) that the
examiner has not presented a convincing line of reasoning for
modifying the film/movie image teachings of Dieterich with the
medical image teachings of Kohm. The examiner’s reasoning (i.e,
“improving image quality, depending on the modality”) (final
rejection, page 3) is nothing more than the examiner’s unsupported
opinion. The factual question of motivation should be resolved
based on evidence of record, and not on the subjective belief and
unknown authority expressed by the examiner. In re Lee, 277 F.2d
1338, 1343-44, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). As indicated
supra, the teachings of Kohm would have only suggested that the
tone of the film/movie images in Dieterich be adjusted based upon
the descriptive data. Stated differently, nothing in the applied
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