Ex Parte Sonoda - Page 4

              Appeal 2007-1809                                                                     
              Application 09/774,013                                                               
                                                                                                  
                    Claim 7 is broader than claim 1 in two significant respects.  First,           
              unlike claim 1, claim 7 does not require reading the image photoelectrically         
              to obtain an actual image after reading a defective image.3  Claim 7 merely          
              calls for, in pertinent part, reading a defective image and performing blemish       
              elimination processing on an actual image obtained by reading the image              
              photoelectrically.                                                                   
                    Second, unlike claim 1, claim 7 does not require performing the                
              preprocessing step while the image is read photoelectrically.                        
                    In light of these key distinctions, we find claim 7 best represents the        
              subject matter recited in the first claim grouping.  As such, we may consider        
              the patentability of claims in this grouping with respect to claim 7 alone.4         
              Nevertheless, we will also consider the rejection with respect to independent        
              claim 1 since all the arguments necessary to render this decision are of             
              record in this case.                                                                 

                                      Representative Claim 7                                       
                    We now turn to the merits of the Examiner’s obviousness rejection of           
              representative claim 7.  In rejecting claims under 35 U.S.C. § 103, it is            
              incumbent upon the Examiner to establish a factual basis to support the legal        
              conclusion of obviousness.  See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d            
              1596, 1598 (Fed. Cir. 1988).  In so doing, the Examiner must make the                
              factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1,            
              17, 148 USPQ 459, 467 (1966).                                                        
                                                                                                  
              3 Claim 1 recites, in pertinent part, “reading a defective image…” and “then,        
              reading photoelectrically said image to obtain an actual image” (emphasis            
              added).                                                                              
              4 See 37 C.F.R. § 41.37(c)(1)(vii).                                                  

                                                4                                                  

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next

Last modified: September 9, 2013