Ex parte PARKER - Page 8




               Appeal No. 1998-2989                                                                                             
               Application No. 08/566,987                                                                                       


               With respect to claim 8, the examiner relies upon the combination of Bhargava and                                
               Ghosh to teach the use of the most significant bit as the state bit.  The examiner relies                        
               upon the teachings of Ghosh with respect to the use of the MSB to store the state of the                         
               grouping of pixels.  We agree with the examiner that in a binary image, there would have                         
               been a single bit to represent the state of the grouping of pixels.  Appellant argues that                       
               Ghosh teaches away from the use of a single bit because it teaches the use of gray scale                         
               value after the bit indicating the sameness of the grouping.  (See brief at page 19.)  We                        
               disagree with appellant.  Therefore, this argument is not persuasive, and we will sustain the                    
               rejection of claim 8.                                                                                            
               With respect to claim 9, appellant argues that the combination of Bhargava and Cornyn                            
               does not teach or suggest the claimed steps of moving diagonally and backing up                                  

               diagonally.  (See brief at page 19.)  We agree with appellant.  The examiner admits that                         
               Bhargava does not teach this step of identifying the orthogonal region.  The examiner                            
               relies upon the teachings of Cornyn and cites to columns 13 and 14.  We disagree with the                        
               examiner.  Cornyn merely teaches the comparison of prior adjacent pixels to a current                            
               pixel.  The immediate left and immediate above pixels are used.  Therefore, we disagree                          
               with the examiner that Cornyn suggests the use of diagonal movement, and we will not                             
               sustain the rejection of claim 9.                                                                                




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