Ex parte LINOFF et al. - Page 3





                 Appeal No. 97-0244                                                                                                                     
                 Application 08/042,357                                                                                                                 


                                                     i'= Ga  b  (sum over "j" from zero to N-1);j   j                                                                                   
                          E.       an encoded representation generating element for                                                                     
                                   using the values of each encoding group a  and                                                                       
                                                                                                             j                                          
                                   the value of the termination identifier "s" to                                                                       
                                   generate the encoded representation.                                                                                 


                          The following reference is relied on by the examiner:                                                                         
                 Kato et al.  (Kato)                                   5,168,533                                    Dec. 01,                            
                 1992                                                                                                                                   
                          Claims 3 and 4 stand rejected under 35 U.S.C. § 101 as                                                                        
                 being directed to non-statutory subject matter.  Claims 2, 5                                                                           
                 and 6  stand rejected under 35 U.S.C. § 103.  As evidence of2                                                                                                                             

                 obvious-ness, the examiner relies on Kato alone.                                                                                       
                          Rather than repeat the positions of the appellants and                                                                        
                 examiner, reference is made to the brief and the answers for                                                                           
                 the respective details thereof.                                                                                                        
                                                                     Opinion                                                                            
                          Turning first to the rejection of claims 3 and 4 as being                                                                     
                 directed to non-statutory subject matter within 35 U.S.C. §                                                                            

                          2As to claim 6, due to the entry of an amendment filed with the appeal                                                        
                 brief as noted at pages 1 and 2 of the answer, as well as an examiner's                                                                
                 amendment, paper no. 14, dated May 29, 1996, it appears the examiner considers                                                         
                 claim 6 to be part of the rejection under U.S.C. 103 once the dependancy                                                               
                 problem had been clarified by these papers.  Note the top of page 3 of the                                                             
                 answer as well as page 5 of the brief's grouping of the claims.                                                                        
                                                                           3                                                                            






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