Ex parte EDWARDS et al. - Page 9




              Appeal No. 98-1396                                                                                       
              Application 08/300,666                                                                                   


              Appellants summarily argue by listing distinctions which paraphrase intended claim                       
              limitations which are purported to correspond to the claims.  (See brief at pages 11-12).                
              We do not find that appellants have provided a clear representation of the limitations as                
              they appear in the varied claims before us for review.                                                   
                     We conclude that it would not have been obvious to one of ordinary skill in the art at            
              the time of the invention to combine the teachings of Ohuchi with those of Hackett                       
              as asserted by the Examiner.  The Examiner states that  "it would have been obvious    . . .             
              to incorporate such specific circuitry in Ohuchi's system . . . as taught by Hackett et al."             
              (See answer at page 7.)  Ohuchi discloses a hardwired shrinking circuit where the ROM is                 
              not used in the scaling of the data.  The ROM is used in the packing operation rather than               
              the scaling of the data.  Furthermore, Hackett does not specifically disclose the use of a               
              ROM.  Hackett teaches the storage of a value of the number of pixels in the data register B              
              and storage of a number of pixels needed to complete a grouping in                                       
              register A.  (See Fig. 5.)  These registers do not function in the same manner as the                    


              ROM in the claimed invention which has the new pixel data stored in the ROM at                           
              prescribed addresses and the current pixel is input to a prescribed address, to read out                 
              the new pixel value.  Therefore, one of ordinary skill in the art of scaling images would not            
              have been motivated by the register teachings of Hackett to modify Ohuchi to arrive at the               


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