Ex Parte WADA et al - Page 7




              Appeal No. 2001-1420                                                                                        
              Application No. 08/988,453                                                                                  

              specification.  We find no convincing rationale as to how Dir’s teaching may be properly                    
              combined with Takahashi’s description of driving an optical printhead -- i.e., with pixels                  
              having only two states -- so as to arrive at the subject matter of claim 1 or claim 13.                     
                     With regard to instant claim 12, appellants point out (Brief at 6) that the rejection                
              fails to make the requisite factual findings as to how the prior art is to be applied.  The                 
              examiner responds (Answer at 8) that the artisan would recognize that Dir’s “teaching of                    
              dividing half-tone cells 105 into sixteen sub-cells suggests that the data representing                     
              half-tone cells 105 are broken down into smaller data bits and of course, an image is                       
              then printed based on the broken-down image data, as taught by Dir et al. in figures 1                      
              and 7.”  Appellants respond in turn (Reply Brief at 1-2) that the examiner’s assertions                     
              do not speak to the specific requirements of claim 12.                                                      
                     Claim 12 requires, as a first step, converting an n-bit image data for one pixel                     
              into a plurality of sets of m-bit data, wherein m is larger than 1 but smaller than n.  For                 
              at least the reason that Dir does not disclose or suggest converting image data for one                     
              pixel into a plurality of sets of data, we agree with appellants that the specific                          
              requirements of the claim have not been shown as obvious in view of the prior art                           
              applied.                                                                                                    
                     Since the prior art relied upon does not establish prima facie obviousness of the                    
              subject matter of any of the independent claims (1, 12, and 13), we do not sustain the                      
              section 103 rejection of claims 1-15.                                                                       


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