Appeal No. 1997-1981
Application No. 08/298,547
insufficient evidence of prima facie obviousness or by rebutting the prima facie case with
evidence of secondary indicia of nonobviousness.” In re Rouffet, 149 F.3d 1350, 1355,
47 USPQ2d 1453, 1455 (Fed. Cir. 1998). Here, we find that appellants have not
overcome the prima facie case of obviousness by showing insufficient evidence by the
examiner of obviousness or by rebutting the prima facie case with secondary evidence.
Therefore, we will sustain the rejection of process claims 1 and 5 and dependent claim 6.
As pointed out by our reviewing court, we must first determine the scope of the
claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998). The examiner has addressed the language of the
claims in the rejection of independent claims 1 and 5 with citations to the applied
references.
Appellants argues that the prior art reference to Hartnett does not teach or suggest
image scaling and appends diagrams to the brief contrasting the results of the image
scaling of the filters. (See brief at pages 5-6.) The examiner states that this argument
does not address the limitations in claim 1. (See answer at page 5.) We agree with the
examiner, and we note that the language of claim 1 recites a “method of forming an image
scaling filter” rather than a method of filtering. Therefore, this argument is not persuasive.
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