Appeal 2007-1809
Application 09/774,013
Claim 7 is broader than claim 1 in two significant respects. First,
unlike claim 1, claim 7 does not require reading the image photoelectrically
to obtain an actual image after reading a defective image.3 Claim 7 merely
calls for, in pertinent part, reading a defective image and performing blemish
elimination processing on an actual image obtained by reading the image
photoelectrically.
Second, unlike claim 1, claim 7 does not require performing the
preprocessing step while the image is read photoelectrically.
In light of these key distinctions, we find claim 7 best represents the
subject matter recited in the first claim grouping. As such, we may consider
the patentability of claims in this grouping with respect to claim 7 alone.4
Nevertheless, we will also consider the rejection with respect to independent
claim 1 since all the arguments necessary to render this decision are of
record in this case.
Representative Claim 7
We now turn to the merits of the Examiner’s obviousness rejection of
representative claim 7. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner must make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966).
3 Claim 1 recites, in pertinent part, “reading a defective image…” and “then,
reading photoelectrically said image to obtain an actual image” (emphasis
added).
4 See 37 C.F.R. § 41.37(c)(1)(vii).
4
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