Appeal No. 2005-0444
Application No. 10/025,671
elements in the prior art, but also show “some objective teaching
in the prior art or that knowledge generally available to one of
ordinary skill in the art would lead the individual to combine
the relevant teachings of the references.” In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
A review of Hsu and Hyatt confirms that neither reference
teaches compressing image data by discarding pixels along a
direction parallel to an edge while maintaining pixels along a
direction perpendicular to the edge, as recited in claim 1. Both
discarding and maintaining pixels are for compressing image data
which is also recited in the body of the claim as being used for
the step of decompressing. Therefore, we disagree with the
Examiner’s assertion that the treatment of the pixels in a
parallel direction compared to a perpendicular direction with
respect to the edge is not linked to the step of synthesizing.
Where a patentee uses the claim preamble to recite structural
limitations of his claimed invention, the PTO and courts give
effect to that usage. See Bell Communications Research, Inc. v.
Vitalink Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816,
1820 (Fed. Cir. 1995); Corning Glass Works v. Sumitomo Elec.
U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir.
1989). Here, although discarding and maintaining the pixels
appear only in the preamble of the claim, they are affirmative
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