Ex Parte TANAKA et al - Page 8




                Appeal No. 1998-2479                                                                                                           
                Application 08/419,512                                                                                                         



                recited and then stored in the ROM 93 itself.  The rule that anticipation requires that                                        
                every element of a claim appears in a single reference accommodates situations where                                           
                the common knowledge of “technologists” is not recorded in a reference, i.e., where                                            
                technical facts are known to those in the field of the invention.  Continental Can Co. v.                                      
                Monsanto Co.,   948 F.2d 1264, 1269, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991).                                                 
                Similarly, In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995),                                            
                confirms the longstanding interpretation that the teachings of a reference may be taken                                        
                in combination with knowledge of the skilled artisan to put the artisan in possession of                                       
                the claimed invention within 35 U.S.C. § 102 even though the patent does not                                                   
                specifically disclose certain features.  We add to this discussion the background of the                                       
                invention assessment that in the prior art to Minami the offset values utilized were                                           
                determined manually and apparently individually according to the discussion in the                                             
                paragraph bridging columns 1 and 2.                                                                                            
                         Appellants' view expressed at the bottom of page 15, for example, of the brief                                        
                that the offset data in ROM 93 of Minami is not the compensatory data of the present                                           
                invention is misplaced.  We disagree with this assessment because appellants' own                                              
                discussion beginning at specification page 12, and particularly the discussion at the top                                      
                of page  15 and the entire page 16 indicates that offset data is determined and placed                                         
                into appellants' memory 25 such as in Figure 4 of the disclosed invention.  That                                               
                Minami's offset data corresponds to maximum peak values of the track error signal is                                           
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