Patent It Yourself - PDF Archive

ChAPtER 13 | GETTING THE PTO TO DELIVER | 373
Appn. Number 07/910,721 (Schwartz et al) GAU 3303 Amnt. A contd. 8 of 13
However in general, to create a group of gray levels (‘A’) that are different than gray levels of another group
(‘B’) and the gray levels of still another group (‘C’), the procedure of creating the gray levels of group ‘A’
must take into account the values of the gray levels of groups ‘B’ and ‘C’ to prevent ambiguity. Hashim
does not do this, but applicants do.
When Hashim creates (modifies) his gray levels [step (4) above] he considers only gray levels within the
image that he modifies (Hashim, col. 2, 1. 57 to col. 3, 1. 18). He does not consider nor is he aware of the
gray levels of step (1) above when he performs his modification step (4). Therefore, he cannot have any
assurance that ambiguity is prevented. Whatever algorithm he uses to operate on the equalized histogram,
this is then scanned to ascertain the positions of the edges (col. 3, 11. 10 to 18); it is NOT done to prevent
ambiguity.
With regard to the compression of the histogram vectors, applicants perform this for the first time. Until
now no one ever thought of compressing histogram vectors and suggested same, much less actually did it.
Applicants’ method identifies and maps coordinates using gray levels. Using this, one may create a very
long histogram vector, or a large number of short histograms. By compressing the histogram vector,
applicants save valuable processing time and storage space. As stated, this procedure was not done before,
so neither it nor its concomitant advantages were known or appreciated.
1. Hashim and Gaborski Do Not Contain Any Justification to Support Their Combination, Much Less
in the Manner Proposed
With regard to the proposed combination of Hashim and Gaborski, it is well known that in order for any
prior-art references themselves to be validly combined for use in a prior-art § 103 rejection, the references
themselves (or some other prior art) must suggest that they be combined. E.g., as was stated in In re
Sernaker, 217 U.S.P.Q. 1, 6 (C.A.F.C. 1983):
“[P]rior art references in combination do not make an invention obvious unless something in the
prior art references would suggest the advantages to be derived from combining their teachings.”
That the suggestion to combine the references should not come from applicant was forcefully stated in
Orthopedic Equipment Co. v. United States, 217 U.S.P.Q. 193, 199 (C.A.F.C. 1983):
“It is wrong to use the patent in suit [here the patent application] as a guide through the maze of
prior art references, combining the right references in the right way to achieve the result of the
claims in suit [here the claims pending]. Monday morning quarterbacking is quite improper when
resolving the question of nonobviousness in a court of law [here the PTO].”
As was further stated in Uniroyal, Inc. v. Rudkin-Wiley Corp., 5 U.S.P.Q.2d 1434 (C.A.F.C. 1988), “[w]here
prior-art references require selective combination by the court to render obvious a subsequent invention,
there must be some reason for the combination other than the hindsight gleaned from the invention
itself … Something in the prior art must suggest the desirability and thus the obviousness of making the
combination.” [Emphasis supplied.]
In line with these decisions, recently the Board stated in Ex parte Levengood, 28 U.S.P.Q.2d 1300
(P.T.O.B.A.&I. 1993):
Fig. 13E/8—Sample “Regular” Amendment