Appeal No. 2005-0436
Application No. 09/185,212
inputting multiple images for each page. In particular, the
claims merely recite “image data” and “image basis” without any
reference to how the image data corresponds to a page. In
determining the scope of claim 1, limiting the term “image data”
to something necessarily less than a page, would have placed us
on the wrong side of the fine line between reading a claim in
light of the specification, and reading a limitation into the
claim from the specification. See Comark Communications, Inc. v.
Harris Corp., 156 F.3d 1182, 1186, 48 USPQ2d 1001, 1005 (Fed.
Cir. 1998). Here, although the specification allows the break up
of a page into multiple images, neither the specification
precludes an image data constituting a page image nor the claims
require multiple images for each page.
We further disagree with Appellants arguments based on the
use of a small card for storing and handling the image data and
find the Examiner’s stated reason for combining the references to
be reasonable. In fact, the motivation, suggestion or teaching
may come explicitly from statements in the prior art, the
knowledge of one of ordinary skill in the art, or, in some cases
the nature of the problem to be solved. See In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). The
enhancements made to the management table by combining Tanaka
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