Appeal No. 2001-2575
Application No. 09/074,545
that such combination is made only in terms of combining the
reduced chrominance data values and the run length encoding
compression as disclosed by Appellant. Normile merely discusses
compression of video images after transforming RGB representation
of images to UVY chrominance and luminance components (col. 3,
lines 44-67) while Kuroshima is concerned with storing compressed
image data at different resolutions (col. 6, line 62 through col.
7, line 22). Thus, the only possible suggestion to combine these
separate teachings must have come not from the references
themselves, but from the Appellant’s disclosure based on
impermissible hindsight. Whereas, we are required to make the
particular findings as to the reason the skilled artisan, with no
knowledge of the claimed invention, would have selected and
modified the prior art teachings for combination in the manner
claimed. In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,
1316-17 (Fed. Cir. 2000).
In view of our analysis above, we find that the Examiner has
failed to set forth a prima facie case of obviousness because the
necessary teachings and suggestions related to the claimed step
of reducing the number of chrominance data values and applying
the run length encoding to the reduced values are not shown.
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