Appeal No. 1997-4452
Application No. 08/653,978
one of ordinary skill in the art to show the obviousness and triviality of the various
conversions between resolutions.” (See answer at pages 7-8.) Furthermore, the examiner
maintains that the claim limitations not specifically addressed by the examiner “either (1)
are inherent in the references or (2) were well-known to one of ordinary skill in the art
having the ability to interpret the references.” (See answer at page 8.) We disagree with
the examiner. For example, the examiner states that the Kang discloses “mezzanine
outline data (intermediate resolution input image -- column 3, line 3)” (answer, page 4).
We disagree with the examiner. The “intermediate resolution input image” described in
Kang is a bitmap image rather than an outline as the examiner maintains. (See Kang col.
1, line 2 and figures 1-5.) The examiner has indiscriminately combined various portions of
different teachings without providing a line of reasoning why the skilled artisan would have
performed the portion of bit-mapped processing while still in the outline format rather than
in the bitmap format as taught by Kang.
When it is necessary to select elements of various teachings in order to form the
claimed invention, we ascertain whether there is any suggestion or motivation in the prior
art to make the selection made by the appellants. Obviousness cannot be established by
combining the teachings of the prior art to produce the claimed invention, absent some
teaching, suggestion or incentive supporting the combination. The extent to which such
suggestion must be explicit in, or may be fairly inferred from, the references, is decided on
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