Appeal No. 1998-3393
Application No. 08/763,326
image data processing disclosure of Godshalk. According to the
Examiner (Answer, page 4), Godshalk discloses the claimed
invention except for the determination of thresholds for the
less significant bits of an image pixel based on the previously
determined most significant bit threshold. To address this
deficiency, the Examiner turns to Itoh and cites a passage at
column 2, lines 27-35 as providing motivation to the skilled
artisan to make the combination.
After reviewing the arguments in response, we are in
general agreement with Appellants that the Examiner has not
established a prima facie case of obviousness. In our view, the
excerpt from Itoh cited by the Examiner is nothing more than a
summarization of Itoh’s technique of adding error compensation
data to lower resolution image layers to obtain successively
higher resolution images. The Examiner has provided no
indication as to how and where the skilled artisan might have
found it obvious to apply the teachings of Itoh to modify
Godshalk to arrive at the particular threshold determination
procedure of the claimed invention. The mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior
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