Appeal No. 2002-2177 Page 17
Application No. 08/777,424
representing a plurality of different images. The examiner does not allege, let alone
show, that the addition of Adobe cures the implicit deficiency of Taniguchi. Absent a
teaching or suggestion that an image editing device concurrently displays a window
allowing a user to input data for correcting an automatically generated layout of images,
corrects at least one of the images of the layout, and sequentially inputs digital data
representing a plurality of different images, we are unpersuaded of a prima facie case
of obviousness. Therefore, we reverse the obviousness rejection of claim 16 and of
claim 25, which falls therewith.
E. CLAIMS 11 AND 22
Under 37 C.F.R. § 1.196(b) (2003), we enter a new ground of rejection against
claims 11 and 22. The second paragraph of 35 U.S.C. § 112 requires that a
specification conclude "with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention." "The test for
definiteness is whether one skilled in the art would understand the bounds of the claim
when read in light of the specification." Orthokinetics Inc., v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986).
Here, claim 11 recites in pertinent part the following limitations: "said automatic
layout unit includes, in an automatic layout operation thereof, selection of one of a
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