Ex Parte TANAKA et al - Page 9




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



                not dispositive of the issues since the claim merely broadly requires a compensatory                                           
                value corresponding to differences of servo characteristics.  The actual language of the                                       
                claim is broader than appellants' arguments and clearly is met by the teachings of the                                         
                ROM 93 in Minami.  Therefore, the decision of the examiner rejecting claims 1, 2, 4, 5,                                        
                7 and 10 through 14 under 35 U.S.C. § 102 as being anticipated by Minami is                                                    
                sustained.                                                                                                                     
                         Turning next to the rejection of claims 1, 2, 7 and 10 through 14 as being                                            
                anticipated by Horie under 35 U.S.C. § 102, it is also sustained and only independent                                          
                claim 1 on appeal again is argued.  Once again, appellants present arguments only as                                           
                to the nonvolatile memory means clause.  We agree with the examiner's assessment                                               
                that ROM 11 of the embodiments shown in Figures 1, 6, 7 and 10 corresponds to the                                              
                claimed nonvolatile memory means claimed.  As noted by the examiner, the discussion                                            
                at column 3, lines 56 through 62 indicates that ROM 11 stores “a predetermined                                                 
                standard value” as a base starting point  for use by the CPU 8 for determining                                                 
                the ultimate offset correction signals.  This predetermined standard value is referenced                                       
                in the discussion at column 2, lines 1 through 13 as well as the last sentence of the                                          
                abstract.  Similar references to this standard value are made at column 4, lines 38                                            
                through 40; column 5, lines 59 through 61; the discussion in the entire paragraph at                                           
                column 6, lines 36 through 50; the discussion at column 7, lines 21 through 25 and the                                         
                discussion at column 8, lines 31 through 33.  It is thus apparent that the predetermined                                       
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