Appeal No. 1997-3662
Application No. 07/964,342
After careful review of the Preuss reference, in light of
the arguments of record, we are in agreement with Appellants’
position as stated in the Brief. We note that the relevant
portion of independent claim 1 recites:2
coding the image data by replacing the
image data with codewords indicative of a white
run-length or a black run-length,
representing color information of a color
other than white or black by combining specific
codewords among said codewords, . . .
We find no disclosure in Preuss that would teach the
specifics of this claim language. We agree with Appellants
that the claimed invention involves more than the mere
substitution of one color for another as suggested by the
Examiner. Moreover, we find that no suggestion exists in
Preuss for combining black and white codewords to produce
color image data other than black or white. Further, the
Examiner has provided no indication as to how and in what
manner the disclosure of Preuss would be modified to arrive at
the claimed invention. In our view, the only reason on the
record for the skilled artisan to modify Preuss in the manner
2Similar recitations appear in each of the other appealed
independent claims 5, 9, 13, and 18.
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