Appeal No. 1998-1339
Application 08/024,305
patterns, it has not been adequately accounted for by the
examiner why it would have been obvious to one of ordinary
skill in the art to have such scanning performed
simultaneously as opposed to sequentially.
It appears that the examiner has ignored the simultaneous
scanning aspect of the appellants’ invention. Note the
following statement in the examiner’s answer on page 6, lines
12-15:
The gist of the invention is to provide an image
encoder as a whole which is capable of providing
multi-pattern scanning and that one of the patterns
can be adaptively selected to yield the best coding
efficiency (see “Specification”, p.6, lines 24-26).
It is believed that Gharavi substantially teaches
this aspect.
It is inappropriate for the examiner to generalize the
claimed invention to some broader “gist” at the expense of
eliminating a claimed feature of the appellants’ claimed
invention, i.e., simultaneous scanning according to a
plurality of different scanning patterns to provide respective
coded versions thereof. There is no legally cognizable “gist”
or “heart” of the invention in a combination patent. Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1565, 19 USPQ2d 1111, 1118
(Fed. Cir. 1991). Each feature of the appellants’ claimed
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007