Ex parte TSUTAMORI et al. - Page 5




          Appeal No. 1998-2990                                                        
          Application No. 08/433,642                                                  


          pattern and Endo may teach drawing additional patterns on a                 
          screen, neither reference teaches or suggests how to process                
          the data in regions defined by these additional patterns”                   
          (reply brief, page 2).  We agree.  The examiner’s “circular”                
          reasoning lacks supporting evidence as well as a discussion of              
          how non-circular images are to be processed by the combined                 
          teachings of Poulsen and Endo.  Since “there is no suggestion               
          to combine Endo’s pattern drawing technique with Poulsen’s                  
          device” (brief, page 5), the examiner has failed to present a               
          prima facie case of obviousness.  As a result thereof, the 35               
          U.S.C. § 103(a) rejection of claims 1 through 6, 8 through 12,              
          15, 16, 21 through 26 and 28 through 31 is reversed.                        
               The 35 U.S.C. § 103(a) rejections of claims 7, 13, 14, 17              
          through 20 and 27 are likewise reversed because the teachings               
          of Lee and Shiraishi fail to cure the noted shortcoming in the              
          teachings of Poulsen and Endo.                                              
                                      DECISION                                        
               The decision of the examiner rejecting claims 1 through                
          31 under 35 U.S.C. § 103(a) is reversed.                                    
                                      REVERSED                                        


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