Appeal No. 1999-1635
Application No. 08/892,443
of claims 3 through 5, 17, 23 and 29 through 37.
Appellants argue inter alia (brief, pages 16 and 18)
that Butterfield’s method and apparatus differs from the
claimed method and apparatus in that NTSC encoding with
color matrixing is used in the reference. All of the
claims on appeal expressly state that all processing is
performed without color matrixing.1
In view of the holding in In re Karlson, 311 F.2d
581, 584, 136 USPQ 184, 186 (CCPA 1963) that “omission
of an element and its function in a combination is an
obvious expedient if the remaining elements perform the
same functions as before,” the examiner is of the opinion
(paper number 21, page 4) that it would have been obvious
for one of ordinary skill in the art to eliminate
Butterfield’s NTSC encoding without interfering with the
color image synthesis of the apparatus. When Butterfield
is considered as a whole, it is quite clear that the NTSC
encoding that the examiner would cavalierly discard from
Appellants’ originally filed disclosure and claims never expressly state that1
the colors are combined “without color matrixing.” If there is a written
description problem with this phrase in the claims, then we leave it to the
examiner to resolve with the appellants.
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