Ex Parte YAMADA et al - Page 8



          Appeal No. 2001-2697                                                        
          Application No. 08/770,048                                 Page 8           

          discloses that the low resolution image is used to allow the                
          scanner to operate at high speed and reduce wait time for the               
          user, and McDonald uses low resolution editing to speed                     
          transmission and editing time.                                              
               Of note is the examiner's statement (answer, pages 8 and 9)            
          that one of ordinary skill in the art would have realized the               
          advantages of having more available memory space "in a case [sic]           
          memory space is a critical factor."  We make reference to the               
          answer for a complete statement of the examiner's position.                 
               From our review of McDonald and Zelten, we find no teaching            
          or suggestion to support the examiner's asserted motivation to              
          combine the references so as to free more space of the memory for           
          storing other data.  The examiner's statement that an artisan               
          would have realized the advantage of freeing more memory space in           
          the case that memory space is a critical factor is unsupported by           
          evidence because the examiner has not established that freeing up           
          memory space for other uses is a factor, much less a critical               
          factor.  The examiner has not pointed to any showing in McDonald            
          or Zelten that would suggest that freeing up more memory space              
          for storing other data is an issue recognized in either                     
          reference.                                                                  







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