Appeal No. 2003-1842 Page 8
Application No. 09/179,290
The absence of using the same color look-up table for a source image and an
output image negates anticipation. Therefore, we reverse the anticipation rejection of
claim 2 and of claims 3-5, which depend therefrom.
B. CLAIMS 6 AND 7
Under 37 C.F.R. § 41.50(b) (2004), we enter a new ground of rejection against
claims 6 and 7. 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). Furthermore, "[c]laims in
dependent form shall be construed to include all the limitations of the claim incorporated
by reference into the dependent claim." 37 C.F.R. § 1.75.
Here, reciting in pertinent part "[a] method according to Claim 1," claim 6
depends from claim 1. Claim 1, however, has been canceled. (Paper No. 18 at 1.)
Because it depends on a canceled claim, we are unpersuaded that one skilled in the art
would understand the bounds of claim 6 when read in light of the specification.
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