Ex parte SUTHA et al. - Page 11




          Appeal No. 1998-1110                                                        
          Application No. 08/391,263                                                  


          relied upon by                                                              


          the Examiner fails to teach these limitations, for the same                 
          reasons specified with respect to claim 1.                                  
          Claims 3 and 5 recite the reverse process, a method for                     
          image expansion, including first and second parallel                        
          separation into first and second aggregates or "subsets," each              
          aggregate or subset including copies of fewer picture elements              
          than the "representation" or prior aggregate being expanded to              
          form it. The prior art relied upon by the Examiner teaches                  
          decompression by processes inverse to those used for                        
          compression.  Thus, none of the references relied upon teach                
          parallel separation into second aggregates or subsets, each                 
          including copies of fewer picture elements than each of the                 
          first aggregates or subsets.  We therefore fail to find that                
          the combination proposed by the Examiner would have resulted                
          in the invention claimed in claims 2-5 and 8-10.                            
          The Federal Circuit states that "[t]he mere fact that the                   
          prior art may be modified in the manner suggested by the                    
          Examiner does not make the modification obvious unless the                  


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