Appeal No. 1999-0486
Application No. 08/633,389
digitizing the R, G, B signals of the image signal and the brightness signal, we do not
see any objective suggestion from the prior art for changing the feedback control that is
taught by Webb, and thus no suggestion for the “digital processor” as claimed.
We therefore cannot sustain the section 103 rejection of claims 1-4 and 8-12 as
being unpatentable over Webb and Nakakuki. Since Ito as applied fails to remedy the
deficiencies with respect to the basic combination of Webb and Nakakuki, we also do
not sustain the section 103 rejection of claim 5 as being unpatentable over the
combination of Webb, Nakakuki, and Ito. We do, however, enter new grounds of
rejection against claim 5, below.
New Grounds of Rejection -- 37 CFR § 1.196(b)
We enter the following new grounds of rejection against the claims in
accordance with 37 CFR § 1.196(b): claim 5 is rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicants regard as the invention, or, in the alternative, under 35
U.S.C. § 112, first paragraph, as the disclosure fails to provide written description for
the invention now claimed.
The function of claims is (1) to point out what the invention is in such a way as to
distinguish it from the prior art; and (2) to define the scope of protection afforded by the
patent. In re Vamco Mach., Inc., 752 F.2d 1564, 1577 n.5, 224 USPQ 617, 635 n.5
(Fed. Cir. 1985). The legal standard for definiteness is whether a claim reasonably
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