Appeal 2007-0600
Application 09/943,535
Appellants argue that Nishioka selects a display mode based on other
factors which do not include the color format of the input data itself. (Br. 7
and Reply Br. 5). We agree with Appellants, but do not find that this
specific argument is commensurate in scope with the express language of
independent claim 1 which does not recite “factors.” Appellants argue that
the difference between Nishioka and the claimed invention is in the “how”
the determination is made (Br. 8 and Reply Br. 8). We cannot agree with
Appellants that the “how” in the determination is actually made based upon
the actual data as a factor in the determination since we do not find this level
of specificity in the language of independent claim 1. Therefore, Appellants'
argument is not persuasive, and we will sustain the rejection of independent
claim 1. Appellants have elected to group dependent claims 2, 5, 9, 10, and
12-14 with independent claim 1. Therefore, we will sustain the rejection of
those claims also.
35 U.S.C. § 103
At the outset, we note that to reach a proper conclusion under § 103,
the Examiner, as finder of fact, must step backward in time and into the
mind of a person of ordinary skill in the art at a time when the invention was
unknown, and just before it was made. In light of all the evidence, we
review the specific factual determinations of the Examiner to ascertain
whether the Examiner has convincingly established that the claimed
invention as a whole would have been obvious at the time of the invention to
a person of ordinary skill in the art. When claim elements are found in more
than one prior art reference, the fact finder must determine “whether a
person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem
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